Patent and Trademark Office (PTO)

Supreme Court Again Strikes Down Trademark Restrictions

Yesterday the United States Supreme Court announced its decision in Iancu v. Brunetti, holding that prohibiting trademarks that consist of or comprise immoral or scandalous matter(1) violates the First Amendment. The majority, written by Justice Kagan, centered its finding on the fact that the Act’s “immoral or scandalous” criterion is viewpoint-based which results in viewpoint-discriminatory application. In other words, a Patent and Trademark Office (“PTO”) Examiner must issue registrations from an impartial perspective, not from their own judgment. For example, a PTO trademark examiner would allow marks that support society’s ideas of decency and morality, but reject marks that do not align with those concepts.


Continue Reading

soccer ballWhile all soccer eyes are on Russia, a company in Reno, Nevada has filed two new applications for the trademarks WORLD CUP 2026 – FAN INFO and WORLD CUP 2026 – U.S. TICKETS, just one day after North America was announced as the host of the World Cup in 2026. Also interesting to note is FIFA’s pending application for the mark USA 2026 was filed almost one year before North America was publicly announced as the 2026 host. What does this teach us? A company can gather a lot of competitive intelligence about a competitor or an industry simply by monitoring the trademark records at the U.S. Patent and Trademark Office (USPTO). And the beauty of it all is that searching the records of the USPTO is absolutely free here. One simple search would have told the Nevada company that FIFA already has a registration for the mark WORLD CUP, likely a significant impediment to the registration of these marks.
Continue Reading

Congress’ passage of the America Invents Act (AIA) in 2011 created a new process for challenging the validity of issued patents. This new process is filed with the very governmental agency that originally issued the patent. Called Inter Partes Review (IPR), hundreds of issued patents have been invalidated, in whole or in part, using the new proceeding. On April 24, 2018, the Supreme Court handed down two decisions directly relating to IPRs. In the first, it upheld the IPR process as constitutional. In the second, it provided additional direction to the Patent Trial and Appeals Board (“PTAB”), which oversees and decides IPRs.
Continue Reading

patent law gavelOn February 23, 2018, in In re Silver, the Supreme Court of Texas conditionally granted mandamus relief and vacated the trial court’s order compelling production of emails between an inventor and his non-lawyer registered patent agent. In re Silver, Case No. 16-0682, 2018 WL 1022470 (Tex. February 23, 2018). The court held that a client’s communications with a patent agent, made to facilitate the agent’s provision of authorized legal services to the client, are privileged under Texas Rule of Evidence 503 (attorney-client privilege). The ruling marked the first time a state high court weighed in on the issue.

Continue Reading

Inter Partes Review (IPR), created by the Leahy-Smith America Invents Act (AIA), 125 Stat. 284 (2011), has become a prominent part of patent litigation. Accused infringers can challenge asserted patents based on printed prior art by petitioning the Patent Trial and Appeal Board (PTAB) to “institute” an IPR “trial.” An IPR before the PTAB is an administrative proceeding with no right to a jury trial on patent validity. If instituted, non-Article III judges receive evidence and arguments and determine whether the patent is valid. Many IPRs arise out of pending District court patent infringement litigation and parties to an IPR proceeding can be estopped from re-litigating issues that were raised or could have been raised in the PTAB. At the discretion of the federal judge, district court litigation may be stayed pending the outcome of the IPR. Ultimately, IPRs can be less expensive than district court validity determinations and often contribute to efficient resolution of patent disputes.
Continue Reading

trademarkFor many new companies, coming up with a unique name is not easy. As a result, companies often fall back on the family name of one of the founders as an easy and identifiable way to enter the marketplace. Companies may now want to rethink that approach given the U.S. Patent and Trademark Office’s (PTO’s) new examination guidelines for trademarks incorporating surnames.

Continue Reading

footballThe New England Patriots football organization is a model of success and efficiency in pro football, winning five Super Bowls and appearing in two others in the past sixteen years. The team’s rosters are frequently composed of no-name role players and former stars willing to accept less salary for a chance to play for a championship.  They draft smartly, don’t overpay players and have managed to hold onto star quarterback Tom Brady.  In short, they demonstrate vision and planning to ensure success.

These traits apply to the team’s approach toward trademark protection as well. Two days after winning this year’s Super Bowl, the Patriots filed intent-to-use (“ITU”) trademark applications to register BLITZ FOR SIX and NO DAYS OFF for, among other things, clothing and entertainment services. The Patriots had not used the marks before; these are marks that the team intends to use in its quest for a sixth Super Bowl championship.


Continue Reading

Infrigement of patents

A tactic sometimes used by a well-established competitor against a startup is to accuse the startup of patent infringement. Unless the startup has deep pockets, it cannot really afford to defend a patent lawsuit – an expense that often runs into the millions of dollars if the case goes to trial. The startup is fragile at this juncture, can be terrified about the prospect of a patent suit, and sometimes negotiates a settlement where the competitor receives rights to use the startup’s technology at less than fair value.
Continue Reading

intellectual property patent trademark, copyrightAll businesses but especially startups should become acquainted with the patent process. All too often this happens after the horse has left the barn and it’s just too late. This short introduction should help you to protect your right to get a patent.

You may be asking yourself “Why bother? Who cares?” The answer to that is pretty simple. Patents add value to your enterprise. Patents also indicate that your invention is more than a routine development. Patents give you the right to stop others from using your invention unless they obtain a license from you (a source of income). Also, someday you may be targeted by another patent-holder, and having patents of your own that others want to use can help to solve the problem (cross-licensing). The downside of a patent is that it constitutes a public disclosure of your invention. But how long can you keep it secret anyway?


Continue Reading

Boardroom PeopleA startup’s failure to properly protect its intellectual property (IP) prior to presenting its pitch deck or making other outside disclosures (like at @TechweekKC) can sometimes have unintentionally devastating effects.  This is particularly true for IP rights that are not afforded common law protection.
While the experience of pitching to angel investors and venture capitalists can be exhilarating, below are four reasons why startups should take a step back and protect their IP prior to pulling the curtain open.


Continue Reading