Articles in Intellectual Property

Coming Soon: Key 2019 Canadian Trademark Change Drops Proof of Use Requirement

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Amendments to Canada’s Trademarks Act will come into effect on June 17, 2019 (the “coming into force date”, or “CIF”). Also the Canadian Intellectual Property Office (“CIPO”) will be temporarily deactivating all online services for several days prior to June 17 – so plan in advance for electronic processing before the CIF (or be prepared to make paper filings, where Read More

Can Arbitration Fix the Patent System?

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Patent litigation has now become a much more complex, expensive and timely endeavor—especially at the Patent Trial and Appeal Board (PTAB). Patent litigators must deal with an overly complex Inter Partes Review (IPR) system as a result of the Supreme Court’s SAS decision[i], new amendment process[ii] and evolution of the BRI standard[iii].A costly and complicated PTAB proceeding and lengthy appellate process make arbitration Read More

Federal Registration of Trademarks to Protect Intellectual Property

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Advantages over common law trademark rights include instant nationwide protection, effective notice to competitors, and ease of assigning, licensing, and defending. Unlike with patents, there are common law legal protections with trademarks whether or not a mark is registered with the Trademark Office. In the United States, common law trademark rights automatically take effect upon actual use of the trademark Read More

Supreme Court Rules Works Must Be Registered Before Copyright Owners May Sue

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Introduction On March 4, 2019, the Supreme Court unanimously held in Fourth Estate Public Benefit Corp. v. Wall-Street.com, LLC, et al., that the statute requiring copyright owners to register their works before suing means that no suit for infringement can be brought until the Copyright Office officially approves the copyright claimant’s application for registration (or officially rejects the application), and that Read More

Trademarks – Use Them (Properly) or Lose Them

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How a trademark is used must be managed carefully to protect its value and avoid losing rights and registrations. To acquire and maintain trademark rights, it comes down to use of the mark. If the mark is no longer used, no longer used in association with all of the goods/services identified in registration for the mark, or if the mark Read More

Informational Perhaps, But Not a Trademark!

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Recent Wal-Mart case before Trademark Trial and Appeal Board shows registering informational slogans remains a difficult endeavor One area of trademark law that continuously puzzles people is the tension between having a word or phrase associated with a product or service that is “informational” in that it immediately conveys to the consumer exactly what the product or service is, verses Read More

USPTO PROPOSES REQUIREMENT OF U.S.-LICENSED ATTORNEY FOR FOREIGN TRADEMARK APPLICANTS AND REGISTRANTS

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The U.S. Patent and Trademark Office (USPTO) is proposing to impose new obligations on many trademark applicants and registrants. In a notice of proposed rulemaking (NPRM) issued February 15, 2019, the agency said it is looking to require that any trademark applicant or registrant whose domicile or principal place of business is not located within the United States (U.S.) or its Read More

Use of Arbitration In Place of Inter Partes Review Proceedings

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An IPR might be more efficiently accomplished through arbitration than through a PTAB proceeding, so it should be considered by practitioners. An inter partes review (IPR) might be more efficiently accomplished through arbitration than an IPR through a Patent Trial and Appeal Board (PTAB) proceeding, so it should be considered by practitioners. An IPR Arbitration process can be completed in less time Read More

Patent Office Issues New Examiner Guidance on Subject-Matter Eligibility

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The U.S. Patent and Trademark Office (USPTO) has issued its highly anticipated guidance on determining when subject matter is ineligible for patenting. The stated goal of this guidance is to promote clarity, consistency, and predictability in how 35 U.S.C. 101 is applied during patent examination. The new guidance supersedes prior guidance and ostensibly makes it more difficult for examiners to Read More