In the runup to the issuance of the U.S. Supreme Court opinion in Andy Warhol Foundation for the Visual Arts, Inc. v. Goldsmith,[1] which is due sometime in the spring 2023, which will deal with the major issue of transformative use as part of first factor in the four-factor test for fair use under U.S. …
Fed Circuit is Irritated by Renegade Judge Albright
In In re Apple Inc.,[1] the Court of Appeals for the Federal Circuit granted Apple’s petition for writ of mandamus ordering the judge presiding over its district court patent infringement case, Alan D. Albright, in the Western District of Texas, rule on its motion to transfer venue before disposition of any discovery on the merits. This …
Registered Trade Dress Protectible Even if Many Features of Product Design Are Functional
The Court of Appeals for the Federal Circuit ruled on November 9, 2022, in SoClean, Inc. v. Sunset Healthcare Solutions, Inc.,[1] in a decision involving trade dress, a sub-category of trademark law. SoClean owned a registration for the trade dress of the sanitization devices under U.S. Trademark Reg. No. 6,080,195 (“’195 registration”). SoClean sued Sunset …
New Response Deadline Rule Soon to Take Effect
As part of the implementation of the Trademark Modernization Act (TMA) of 2020, the new USPTO rule (formerly 37 C.F.R. §2.62(a)) to respond to trademark office actions will drop from the former six-month period to three months, with the option to file an extension of time to respond for an additional, and final, three months. …
Comments Due on §101 Patent Eligibility Guidance
Back in July 2022, the new Director of the USPTO, Kathi Vidal, announced that the USPTO would be seeking comments on its anticipated guidance on §101 patent-eligibility. The deadline for those comments is rapidly approaching on September 15, 2022. The announcement was made against the backdrop of the USPTO’s release of a report to Congress …
USPTO Begins ID Verification for Trademark Applications
On June 30, 2022, the USPTO’s new Director, Kathi Vidal, discussed the new identity verification requirements for filing of new trademark applications, commencing on August 6, 2022 (just in five days from now). The new ID verification follows from the Trademark Modernization Act and the USPTO’s crackdown on fraudulent trademark applications and fraud-upon-the-office issues which …
Sequence Listing Big Bang Date Has Arrived
July 1, 2022 is the so-called “Big Bang” deadline for new PCT applications which disclose nucleotide and/or amino acid sequences to be filed using the new WIPO’s ST.26 Standard, rather than the previous ST.25 Standard. WIPO, or World Intellectual Property Organization, is the international agency that administers the Patent Cooperation Treaty (PCT), and had announced …
New Copyright Claims Board to Accept Claims
The U.S. Copyright Office announced that it will begin accepting claims at the newly-created Copyright Claims Board (CCB), today, June 16, 2022. The CCB is the small claims tribunal at the Copyright Office created as part of the CASE Act, and is an attempt to provide a lower cost option for copyright holders to seek …
USPTO Terminating Agreement with Rospatent
Just as the war in Ukraine resulting from Russia’s invasion has passed 100 days, the United States Patent and Trademark Office (USPTO) announced it will terminate its agreement with its Russian counterpart, the Russian Federal Service for Intellectual Property, Patents and Trademarks (aka Rospatent), effective December 1, 2022. Rospatent will no longer function as either …
USPTO Updates Exam Guide for Generic Marks
On May 23, 2022, the U.S. Patent and Trademark Office updated its exam guideline for examining generic marks, Examination Guide 1-22. The guideline clarifies that the establishment of a prima facie case of generic marks will be based on the reasonable basis standard, which is the same standard used for other substantive refusals of trademark …