Lewis Roca Blog

Over the years many clients have forwarded to us scam trademark mailings. These mailings come from various official-sounding sources, all of which seek money to allegedly take action regarding the client’s trademarks. However, we have learned of a new, bolder scam.  We have multiple reports of clients receiving telephone calls claiming to be from the United States Patent and Trademark Office (USPTO). The caller claims an immediate payment is needed to maintain a trademark filing, when no such payment is in fact needed. The caller is armed with specific data about the filing (which is all public record) and often calls within a day or two of when an application is filed. One caller even spoofed the USPTO telephone number, and pointed their potential victim to that number on the USPTO website in an effort to legitimize their claims.

On June 21, 2022, The Ohio State University (OSU) obtained a federal trademark registration (U.S. Reg. No. 6,763,118) for the standard character mark THE for “t-shirts, baseball caps, and hats; all of the foregoing being promoted, distributed, and sold through channels customary to the field of sports and collegiate athletics.”

The Metaverse is a virtual environment whose digital attributes persist even if the user is not logged online. What makes the Metaverse more complex is its integration with new technology. Wearable technology such as the Oculus give the Metaverse the capability to virtualize almost all facets of the real world. The similarities to the real world and high functionality can lead to legal issues, including trademark issues.

A new internet frontier is opening, one that is not associated with or controlled by the Internet Corporation for Assigned Names and Numbers (ICANN) and shares little in common with the more well-known and used TLDs such as .com, .net, .org., and .biz.

An eye towards sustainability has always been at the forefront of the renewable energy industry, but in many cases, technology was not able to catch up to the good intentions of the industry until recently.

In a 5-4 decision written by Justice Kagan (joined by Chief Justice Roberts and Justices Breyer, Sotomayor and Kavanaugh) in Minerva Surgical, Inc. v. Hologic, Inc. (June 29, 2021), the Supreme Court reined in the doctrine of assignor estoppel.

The United States Patent & Trademark Office has enacted a Final Rule that will increase the
fees for filing trademark applications, maintaining trademark registrations and filing
oppositions and cancellations before the Trademark Trial and Appeal Board, effective
January 2, 2021.

Not all patent owners exploit their patents by making and selling products. Rather, some monetize their patents through licensing in which case the entities are referred to as “Non-Practicing Entities” or "NPEs." Some NPEs own strong and valid patents, and engage in commercially reasonable licensing activities.

Social media influencers' name, image and likeness can be protected by “the right of publicity.” Intellectual property attorneys Oliver Bajracharya and Drew Wilson address the legal issues surrounding the right of publicity and how the law views this “right” which differs from state to state.

IP attorneys Tom Daly & Drew Wilson discuss three intellectual property tools that protect the art and design of products.

IP attorneys Tom Daly & Drew Wilson discuss three intellectual property tools that protect the art and design of products. Design patents play a role in ensuring a product’s brand and life cycle is protected. Knowing what protection you need for your specific product can be a game-changer for your business. Whether you are a startup or an established business launching a new product, this series can help you determine the best tools to protect the intellectual property of your products.

IP Attorneys Tom Daly & Drew Wilson discuss three intellectual property tools that protect the art and design of products. Copyright, trade dress and design patents all play a role in ensuring  a product’s brand and life cycle is protected.

Neil Young recently filed a copyright infringement suit against Donald Trump’s re-election campaign. Young alleges that the use of his songs Rockin’ in the Free World and Devil’s Sidewalk at Trump campaign rallies and political events including Trump’s recent rally in Tulsa, Oklahoma on June 20, 2020 were done without permission and constitute copyright infringement.

Can a generic word combined with “.com” ever be eligible for trademark protection in the United States? Yes, under the Supreme Court’s 8-1 decision in United States Patent And Trademark Office v. Booking.com  B.V., issued today.

Businesses small and large have been impacted in myriad ways by the COVID-19 crisis but some businesses have responded by reinventing themselves by making products or providing services to meet the new demands of COVID-19.

Taking a few small steps to set up your company’s Digital Millennium Copyright Act agent can provide significant protection against copyright claims.

The USPTO has twice announced extensions of certain trademark and patent deadlines in accordance with the Coronavirus Aid, Relief, and Economic Security Act (CARES Act). The most recent extensions will lapse on May 31, 2020, but the USPTO will continue to offer some relief.

The USPTO has announced extensions of certain patent and trademark deadlines in accordance with the Coronavirus Aid, Relief, and Economic Security Act (CARES Act). Under some conditions, discussed below, deadlines for filing certain patent and trademark related documents and paying certain required fees that would otherwise have been due between March 27 and May 31 may now be filed on or before June 1.

The Supreme Court today resolved a long-standing circuit split, unanimously holding that willfulness is not a requirement for an award of profits in a trademark infringement lawsuit. The case is Romag Fasteners, Inc. v. Fossil, Inc., No. 18-1233 (April 23, 2020).

On April 8, 2020, the Federal Circuit vacated the decision of the Trademark Trial and Appeal Board (the "TTAB") - which had denied registration of Forney's multi-color product packaging mark - and held that "color marks can be inherently distinctive when used on product packaging, depending upon the character of the color design."

A new adult-themed domain name blocking mechanism has announced a promotional price incentive that expires on December 31, 2019. We recommend considering this option for your most valuable marks.

In Curver v. Home Expressions, decided on September 12, 2019, the Federal Circuit affirmed the dismissal of Curver’s design patent infringement suit against Home Expressions. The Federal Circuit held that “claim language can limit the scope of a design patent where the claim language supplies the only instance of an article of manufacture that appears...

The impetus for the upcoming August 3, 2019 rule change requiring all foreign-domiciled trademark applicants and registrants to retain licensed counsel in the United States is an increase in foreign trademark applicants acting pro se and who are failing to comply with the rules of the United States Patent and Trademark Office (“USPTO”)....

By Kyle Kellar and Christopher Underwood Last week, the Federal Circuit, in Forum US v. Flow Valve[i], affirmed the lower court’s ruling invalidating a reissue patent because the broadened claims added in the reissue failed to satisfy the original patent requirement under 35 U.S.C. § 251. As a brief refresher, the original patent requirement requires that …

Continue reading "The Federal Circuit Clampsdown on Broadening Reissues – Or Does It?"

The post The Federal Circuit Clampsdown on Broadening Reissues – Or Does It? appeared first on The Intellectual Property Blog.

What exactly is an “immoral” or “scandalous” trademark, and should the government be the arbiter of making such a determination? In the second landmark trademark decision in two years, the Supreme Court invalidated the Lanham Act’s prohibition on registering “immoral” or “scandalous” trademarks. Iancu v. Brunetti, 588 U.S. ___ (2019). The Court’s decision expands the …

Intellectual Property attorney Drew Wilson details the difficulties of ongoing IP conflicts between major brands and somewhat underground edibles manufacturers. The article was originally published in the April edition of Los Angeles Lawyer Magazine. Read the full article by clicking here.

The post Cap’n Crunch vs. Kap’n Kronik appeared first on The Intellectual Property Blog.

Trademark and IP litigation attorney Michael McCue shares his thoughts on the growth and importance of IP-related legal services in Nevada with Nevada Business Magazine. Read the full article by clicking here.

The post Protecting Your Intellectual Property – Law Practices Booming appeared first on The Intellectual Property Blog.

On November 9, 2018, in Arista Networks, Inc. v. Cisco Systems, Inc., the Federal Circuit held that assignor estoppel does not apply in inter partes review (IPR) proceedings. In this case, a former employee of Cisco Systems, Inc. (“Cisco”), who had assigned his invention as patented (U.S. Patent No. 7,340,597 – “the ‘597 patent”) to Cisco, …

In a recent opinion [DSS Technology Management. v. Apple Inc., (Fed. Cir. 3/23/2018)], the Federal Circuit iterated that the Patent Trial and Appeal Board (“the Board”) must provide additional rationale beyond “ordinary creativity” and “common sense” for modifying a single reference for rendering a claim invalid. Reference to the “ordinary creativity” of the ordinary skilled …

In a most recent opinion, the Federal Circuit makes it clear that unless it chooses to exercise its waiver rights under 37 CFR 42.5(b), the Patent Trial and Appeal Board (“the Board”), consistent with the PTO guidelines, is obligated to dismiss new arguments and evidence presented for the first time during the oral argument phase …

For those unfamiliar, Grumpy Cat is a “viral meme” of a “stern-looking house cat named Tardar Sauce.”1 A former Time Warner cable technician first posted the photo of his sister’s “Grumpy Cat” on Reddit in September 2012.

Intellectual property partner, Warren Bleeker, was recently quoted in the San Fernando Valley Business Journal on the valuation associated in a copyright case involving the violation of Microsoft Corp.’s intellectual property rights.

Supreme Court of the United States On November 27, 2017, the U.S. Supreme Court heard oral argument in Oil States Energy Services LLC v. Greene’s Energy Group, LLC, a case examining the constitutionality of inter partes review proceedings before the United States Patent and Trademark Office (“PTO”). Specifically, the case addresses the question “[w]hether inter …

A noted designer and illustrator who worked on “Star Trek: The Next Generation,” has filed a lawsuit over the destruction of his Los Angeles “Six Heads” mural, alleging violation of the Visual Artists Rights Act (VARA) and the California Art Preservation Act. The case is Thrasher v. Siegel et al., case number 2:17-cv-03047, in the […]

On March 22, 2017, the United States Supreme Court issued a much-anticipated opinion in Star Athletica, LLC v. Varsity Brands, Inc.  At issue was whether the surface decorations on cheerleading uniforms are copyright eligible, even though the shape of the uniforms are useful articles, and not copyright eligible.

California recently enacted a bill prohibiting concessionaires from claiming trademark rights in a mark that “incorporates or implies an association with a state park venue, or its historical, cultural, or recreational resources.” The full text of the California Heritage Protection Act, AB 2249, can be found at https://leginfo.legislature.ca.gov/faces/billNavClient.xhtml?bill_id=201520160AB2249.  The bill, which goes into effect January […]

As data breaches increase in profile and frequency, lawmakers are struggling to protect their citizens from cybercrime.  Within the past year, at least four states have beefed up their data security statutes to provide greater consumer protection.   According to a May 2016 summary by the National Conference of State Legislatures, more than 25 states in 2016 […]

According to a recent Federal Trade Commission (“FTC”) blog post, consumers should think twice before connecting their cell phones to a rental car.   The FTC warns that the vehicle could record all kinds of data, including your personal contacts, location, web browsing, and even your text messages. This blog post written by an FTC staff attorney […]

In January a judge in the Northern District of California dismissed a complaint which asked that a monkey named Naruto be the owner of a copyright in a photograph. The order of dismissal can be downloaded here. The court held that there was no standing under the Copyright Act since a monkey is not an “author,” […]