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.”

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."

Working from home may mean working without convenient access to common office equipment such as printers and scanners.  As such, the situation lends itself to taking advantage of the USPTO’s acceptance of electronic “S-signatures” wherein documents can be signed without being printed.

When a company wants to protect the appearance or configuration of a product, trade dress intellectual property protection most immediately comes to mind. This is sensible. But, other types of protection, copyright and design patents, can each provide their own unique advantages.

When seeking to register a federal trademark registration that covers beer, you not only need to search for the same or similar marks that are used with the same goods (beer) but also look for marks that are used with commercially related goods (wine and spirits).

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.

The United States Patent and Trademark Office’s (USPTO) new rule requiring foreign-domiciled trademark applicants, registrants, or trademark-proceeding parties to be represented by a U.S. attorney (84 FR 31498) took effect on August 3, 2019. The USPTO issued an accompanying initial Examination Guide in early August to help implement the rule. After taking into account responses …

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 United States, unlike many other countries, requires proof of use before a trademark registration will be granted.  Applicants can still file an application before use commences, provided that the applicant has a bona fide intent to use a mark, but the trademark registration still will not issue until acceptable use evidence is submitted. …

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.

Fashion designers could be left defenseless against copycats if the US Supreme Court rules that certain features are not protected under the Copyright Act.  The Supreme Court will soon hear oral argument in Varsity Brands, Inc. v. Star Athletica, LLC.