There are several new season-appropriate trademarks and service marks registered this year on the Principal Register by the USPTO. WHITE CHRISTMAS®, on September 10, 2019, in International Class 41, for charitable services, namely, providing toys to needy children. It is a standard character mark. The registrant is Labor of Love Mission of North Tazewell, Virginia. …
Category: trademark
SCOTUS Watch: High Court Strikes Down USPTO Attorney’s Fees
On December 11, 2019, the U.S. Supreme Court affirmed the Court of Appeals for the Federal Circuit’s en banc ruling in Peter v. NantKwest, Inc.,[1] holding that the USPTO was not entitled to attorney’s fees under the 35 U.S.C. §145. Our discussion of the Fed Circuit’s en banc opinion, affirmed by the Supreme Court, was …
Trademarks Post-Tam & Brunetti
Two recent U.S. Supreme Court decisions in Matal v. Tam,[1] decided in 2017, and Iancu v. Brunetti,[2] decided this past May, both dealt with registration of trademarks under 15 U.S.C. §1052(a) (§2(a)) that ran afoul of the First Amendment’s freedom of speech clause. 2(a) reads: No trademark by which the goods of the applicant may …
Constitution Day
Today is Constitution Day. On this day, September 17, 1787, the U.S. Constitution was signed thirty-nine Founding Fathers, ushering the birth of the United States. Several clauses in the Constitution have direct import to intellectual property. Article I, Section 8, Clause 8 is the Patent and Copyright Clause, which is the basis of U.S. patent …
Update: USPTO Issues Revised Counsel Rules
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 …
New TM Counsel Rules Creating Problems with Immigration Requirements
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 …
Fed Circuit Watch: Fed Circuit Declines to Expand Design Patent Law
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 …
SCOTUS Watch: Bar on Immoral and Scandalous Marks Violates First Amendment
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 …
CannabIP: Second Circuit Refuses to Dismiss CBD Reclassification Case
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 …
CannabIP: Developments in Cannabis Legalization and Effect on IP
As the new year opens, there have been some developments in legalization of cannabis use, both medicinally and recreationally. First, on the international front, South Korea legalized cannabis for medical use in late 2018. The South Korean National Assembly passed legislation to amend the Drug Narcotics Act to allow for the sale, import, and export …