trademark

July 2016 Trademark Prosecution Lunch Update

August 1, 2016

The July 2016 trademark section of the prosecution lunch featured a discussion of the USPTO’s proposal to require submission of additional specimens in trademark applications to ensure that the goods and services listed in the application are accurate. Additionally, the USPTO has issued a proposal to increase fees, including a large increase for paper filing. Recent trademark cases were also discussed, including a review of In re Morgan Brown, in which the TTAB found that trademarks for products which are legal under state law, but illegal under federal law are not registrable. Additional cases regarding descriptiveness (In re North Carolina Lottery) and sufficient evidence needed to show geographic descriptiveness (In re Vili Group Inc.) are also reviewed. The presentation may be downloaded here.


Woodard Emhardt Obtains Dismissal of Trademark Infringement Complaint

May 19, 2016

Judge Stivers of the U.S. District Court for the Western District of Kentucky recently ordered that a trademark infringement lawsuit filed against operators of historical horse racing games by numerous prominent race tracks should be dismissed. The suit alleged that the defendants infringed upon the Plaintiffs’ trademarks by using the racetracks’ names to identify the location where historic horse races had taken place. The Court reasoned that the defendants were “fully within their rights to describe where an event took place in their wagering system without implying the owners of the racetrack are sponsoring the game…” Moreover, the court found that the defendants were protected by the fair use defense when describing where an event took place, even when the location described is most commonly conveyed using a registered trademark. Woodard Emhardt attorneys Spiro Bereveskos and Bill McKenna are representing the Defendants.


Woodard Emhardt Obtains Dismissal of Patent Infringement Complaint Under Section 101

May 12, 2016

Judge Stivers of the U.S. District Court for the Western District of Kentucky recently ordered that a patent infringement lawsuit filed against operators of historical horse racing games should be dismissed as the three patents asserted failed to claim patent eligible subject matter under 35 U.S.C. 101. In dismissing all three infringement claims, the Court wrote “[Plaintiff]’s patents encompass subject matter facially unpatentable under Section 101. The only plausible reading of the ‘150, ‘887, and ‘737 patents reflects that they are ineligible for patent protection. The Asserted Patents are abstract ideas, and [plaintiff] has failed to demonstrate an inventive concept required to transform these claims into patentable subject matter within the meaning of Section 101. Thus, the claims asserted in the Amended Complaint must be dismissed.” The opportunity for companies facing the threat of infringement from patent holders to obtain either invalidate those patents or obtain prompt and efficient dismissal such as this in litigation has significantly increased following the Supreme Court’s decision in Alice. Woodard Emhardt attorneys Spiro Bereveskos and Bill McKenna are representing the Defendants.


July 2015 Trademark Update

August 4, 2015

July’s practice group lunch included an overview of recent news from the U.S. Patent and Trademark Office (USPTO) and decisions from the Trademark Trial and Appeal Board (TTAB). The USPTO continues to revise its manuals for trademark practice (TMEP and TBMP) on a rolling basis, and has issued new rules and guidance on certain specific types of trademarks, such as collective marks and repeating patterns. The TTAB has decided that it will presume that, between a manufacture and an exclusive distributor, the manufacture owns the mark, subject to rebuttal (UVeritech v. Amax Lighting). Another TTAB case addresses the interaction between the courts and the USPTO, where the TTAB refused to vacate a decision even though the parties later settled the case while on appeal (University of Alabama v. Pitts).

The presentation can be downloaded here.


May 2015 Trademark Prosecution Lunch Presentation

June 11, 2015

The May trademark prosecution lunch presentation includes a discussion of the requirement to pay the US Patent and Trademark Office (USPTO) attorney fees during an appeal, the preclusive effect of USPTO decisions, and the In re BWBC, Inc. case. The presentation can be downloaded here.


November 2014 Trademark Prosecution Lunch Presentation

December 3, 2014

November’s trademark prosecution practice luncheon included discussion of TTAB proceeding regarding descriptiveness, proving bona fide intent to use, and the “safe distance” rule. The presentation can be downloaded here.


October 2014 Trademark Prosecution Lunch Presentation

November 5, 2014

October’s trademark prosecution practice luncheon included discussion of specimens for service marks, a TTAB decision about “Cinderella” marks, and fraud in use-based trademark applications. The presentation can be downloaded here.


Washington Redskins Trademarks Canceled

June 27, 2014

On Wednesday, June 18, the Trademark Trial and Appeal Board canceled the “Redskins” mark in a 2-1 decision stating that it is “disparaging to Native Americans.” A similar case was filed in 1992 and was overturned by a federal district court due to lack of standing. A lawyer representing the team stated that a similar appeal is likely to follow the current decision. The USPTO has refused to register about a dozen mark containing the recitation “Redskins” since 1992 stating that it is a “derogatory slang term.” Regardless of the outcome, the team will retain its common law rights to the mark and therefore it is not expected that this ruling will have an immediate impact on the team.


January 2014 Trademark Update

January 31, 2014

Topics covered in this month’s trademark update include a district court ruling that applicants must pay PTO fees when reviewing a decision by the Trademark Trial and Appeal Board (TTAB) regardless of whether the applicant wins or loses, a district court ruling reversing the TTAB’s descriptiveness rejection in Timex Group USA, Inc. v. Focarino (E.D.Va. Dec. 2013), and the TTAB’s ruling against registration of the 668 word mark in In re Prema Jyothi Light, Serial No. 76293326 (2013). The presentation is available for download here.


April 2013 Patent and Trademark Prosecution Group Luncheon

April 22, 2013

Patent topics covered in this month’s luncheon include: recent revisions to the USPTO’s rules of professional conduct; obviousness-type double patenting rejections that cannot be overcome by a terminal disclaimer (In re Hubbell); and strategy in design patent filing.

Trademark topics include: the success rate for appealing to the TTAB section 2(e) refusals; an Indiana case pertaining to cybersquatting and cyberpiracy; the new trademark clearing house for gTLDs; and a TTAB decision holding that the color black is aesthetically functional. You may download the presentation from here.

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