Update: USPTO Issues Revised Counsel Rules

trademark

On September 5, 2019, the U.S. Patent and Trademark Office issued a revised Examination Guidelines 4-19, “Requirement of U.S.-Licensed Attorney for Foreign-Domiciled Trademark Applicants and Registrants.”  The Exam Guidelines 4-19, originally effective on August 3, 2019, were new formal requirements for trademark applications originating by applicants domiciled outside the United States.  The rules originally required …

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New TM Counsel Rules Creating Problems with Immigration Requirements

trademark

The USPTO promulgated new rules on August 3, 2019, requiring foreign entities applying for a trademark registration to retain U.S.-based counsel for filing and prosecution of the trademark application.  The new rule specifically requires all trademark applicants to retain a U.S.-admitted attorney to handle all trademark matters before the USPTO.  The rule was aimed at …

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Fed Circuit Watch: Fed Circuit Declines to Expand Design Patent Law

design fed circuit watch functionality patent patent exhaustion doctrine right to repair

On July 23, 2019, the Court of Appeals for the Federal Circuit publicly released an intriguing design patent ruling involving design patents covering Ford’s F-150 truck.  In Automotive Body Parts Assn. v. Ford Global Techs., LLC,[1] the Fed Circuit declined to expand trademark law’s functionality doctrine to design patent law, and also declined to create …

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SCOTUS Watch: Bar on Immoral and Scandalous Marks Violates First Amendment

1st amendment scotus watch section 2(a) trademark

On June 24, 2019, the U.S. Supreme Court handed down Iancu v. Brunetti,[1] dealing with the Lanham Act’s Section 2(a) bars to trademark registration’s collision against the First Amendment brick wall; the Justices in a 6-3 vote struck down the immoral and scandalous clause of §2(a) in a somewhat mixed-up and divided Court.  Brunetti is …

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CannabIP: Second Circuit Refuses to Dismiss CBD Reclassification Case

Cannabis IP patent trademark

On May 30, 2019, the Court of Appeals for the Second Circuit in Washington v. Barr,[1] refused to dismiss outright a case where the plaintiffs alleged marijuana’s classification on the Drug Enforcement Agency (DEA)’s Schedule I list of the Controlled Substance Act (CSA) of the poses a “serious, life-of-death threat to their health.”  The Second …

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