Andrew M. Nevill

Study Shows that Recent Guidance Documents Published by USPTO Regarding Subject Matter Eligibility are Proving Effective in Reducing Uncertainty

June 18, 2020

The United States Patent and Trademark Office (USPTO) recently published a study titled “Adjusting to Alice” that provides the results of an examination of patent examination outcomes after the Supreme Court’s decision in Alice. This study found that recent efforts by the USPTO to provide greater clarity to issues regarding subject matter eligibility have been effective in decreasing uncertainty. To access a link to the study and read the full article, visit: IndyBar

Woodard Emhardt Celebrates World IP Day

April 22, 2020

Sunday, April 26 is World Intellectual Property Day, a day to celebrate and learn about the role that intellectual property rights play to encourage and facilitate innovation and creativity.  Originally created by the World Intellectual Property Organization (WIPO) in 2000, World IP Day is celebrated on April 26 to mark the anniversary of the WIPO Convention becoming law in 1970.

The theme for this year’s World IP Day is Innovate for a Green Future, highlighting innovation that supports eco-friendly technologies and the IP rights that support that innovation.  Intellectual property is used in many different aspects of the effort to create a cleaner, more environmentally friendly future.   Patents, trademarks, and copyrights support the development and growth of businesses and individuals that are committed to environmental sustainability.

If you are interested in learning more about how intellectual property can protect your innovations, please contact one of our attorneys.


Changes in USPTO Rules Due to the Coronavirus Outbreak

April 6, 2020

The United States Patent and Trademark Office has made several temporary rules changes in response to the coronavirus outbreak. These rule changes include:

Extension of patent and trademark related deadlines. On March 31, the USPTO announced extensions to the time allowed to file certain patent and trademark related documents and to pay certain required fees. This extension adds an additional 30 days for the due date for most responses to USPTO notices that are due between March 27, 2020 and April 30, 2020 as long as the filing is accompanied by a statement that the delay in filing or payment was due to the coronavirus outbreak. An acceptable reason for delay could be office closure, cash flow interruption, inaccessibility of files, travel delays, illness, or any other similar circumstance. A full list of the types of actions for which an extension is available can be found at the USPTO website at https://www.uspto.gov/sites/default/files/documents/Patents%20CARES%20Act.pdf for patents and https://www.uspto.gov/sites/default/files/documents/TM-Notice-CARES-Act.pdf for trademarks.

USPTO offices closed to the public. Until further notice, all USPTO offices have been closed to the public. However, all USPTO operations continue to function without interruption. All examiner interviews, oral hearings in front of the Patent Trial and Appeal Board (PTAB) and Trademark Trial and Appeal Board (TTAB), and other in-person meetings are being conducted solely by video or by telephone.

Waiver of petition fees. The USPTO considers the coronavirus outbreak to be an “extraordinary situation” for patent and trademark applicants, patentees, and trademark owners under the Code of Federal Regulations. Therefore the USPTO has waived petition fees in certain situations for customers that have been impacted by the coronavirus. These petition fees that have been affected include petitions to revive for patent applicants or patent owners who were unable to timely reply to a USPTO communication which resulted in the application being abandoned. Additionally, the USPTO is waiving the petition fee to revive for trademark applications and registrations that were abandoned, canceled or expired due to an inability to timely responds to an Office communication as a result of the effects of the coronavirus outbreak.

Waiver of original handwritten signature requirement. The USPTO has waived the requirement of an original handwritten signature for correspondence relating to: registration to practice before the USPTO in patent cases, enrollment and disciplinary investigations or disciplinary proceedings, and payments by credit cards where the payment is not being made via the USPTO’s electronic filing system.


Andrew Nevill Completes Opportunity Indianapolis Program

September 11, 2019

Andrew Nevill and his Opportunity Indianapolis Alumni spent two days exploring Indianapolis and learning about a range of community issues facing the greater Indianapolis community — such as education, public safety, growth of the city’s center — and the people working on them.

Opportunity Indianapolis is a program of Leadership Indianapolis, an organization dedicated to the development of community leaders that can address and solve the issues and opportunities facing our growing metro area. Leadership Indianapolis was founded on the belief that strategic community leadership can increase the vitality, strength, and sustainability of Indianapolis.


Attorneys Celebrate May in Indy

June 3, 2019

On Thursday, May 30, 2019, Firm attorneys celebrate May in Indy racing at Speedway Indoor Karting.


Firm attorneys show their support of the USO of Indiana

May 21, 2019

Firm attorneys, Andrew Nevill, Blake Hartz, Chuck Reeves and Bill McKenna, participate in the Third Annual USO of Indiana Golf Outing on May 17th, 2019 at The Legends Golf Club in Franklin, Indiana. The annual event helps the USO of Indiana provide programs at no cost to military service men and women.

 


Firm Team Crowned IBF Trivia Night Champions

April 29, 2019

Congratulations to the team from Woodard, Emhardt, Henry, Reeves & Wagner who were crowned the Indianapolis Bar Foundation (IBF) Trivia Night Champions and took home the coveted IBF Trivia Trophy! The money raised at this annual IBF Trivia Night event supports the Foundation’s crucial role in helping to solve the legal-related problems in the Indianapolis community.

The victors, Christopher Brown, Chuck Schmal, Josh Astin, Andrew Nevill, Blake Hartz, Mark Burroughs, and Bob Jalaie, are pictured here with Trivia emcee, Adam Christensen (bottom row, center).


Using a Webpage as a Specimen for Products Associated with a Trademark

April 18, 2019

When registering a trademark, the Patent and Trademark Office requires the submission of a specimen to show that a trademark is being used in interstate commerce.  It is often tempting to simply submit a screenshot of a webpage showing the trademark and the products associated with that trademark as a specimen.  However, as shown in a recent Federal Circuit decision made precedential, care must be taken when using a webpage as a specimen for goods associated with a trademark to ensure that the webpage is likely to be acceptable.

In the case, In re Siny Corp., 2019 U.S. App. LEXIS 10499 (Fed. Cir. Apr. 10, 2019), the Applicant filed an application for the mark CASALANA for a knit fabric used to make outerwear, gloves, and apparel.  The specimen submitted for this trademark was a screenshot of a webpage that included the trademark along with a picture and a description of the fabric, as well as a phone number and an email address to contact for sales information.  The Federal Circuit affirmed the Examining Attorney and the TTAB’s decision to refuse registration, stating that the webpage was just advertising material and failed to show use of the mark in commerce for the listed products.  It is important to note that this decision specifically pertains to a specimen for goods and that webpages are more readily accepted as specimens for services.

A trademark is used in commerce when it is placed directly on goods or placed on the containers, displays, tags or labels associated with the goods.  A trademark included on a webpage may qualify as a “display” associated with goods shown on the webpage.  However, a webpage simply advertising the goods used in connection with the trademark is not sufficient to qualify as a display, and is therefore not an acceptable specimen.  In order to be an acceptable specimen, the webpage must act as a point of sale location for the products.

As shown by the decision in Siny, showing only a phone number or an email address as contact information for ordering products associated with the trademark may not be enough to make the webpage a point of sale location.  Instead, a webpage submitted as a specimen should either make the goods available for purchase directly through the webpage or display additional information other than just contact information that would be considered essential to a purchasing decision.  Examples of this additional information include prices or a range of prices for the goods, sizing information, the quantity of the goods that may be ordered, how to pay for the product, and how the product will be shipped.

This decision by the Federal Circuit doesn’t mean that webpages cannot be used as a specimen for a trademark application covering goods.  Instead, an Applicant should make sure that when using a webpage as a specimen for a trademark application, the webpage includes as much information as possible about the nature of the goods and includes specific information on how to purchase the goods associated with the trademark.  Following these guidelines should lead to an acceptable specimen.


Inventor Info Chat “How to File a Patent Application” Webinar

April 17, 2017

On April 20, 2017, the USPTO Office of Innovation Development will be presenting an Inventor Info Chat on “How to File a Patent Application.” The chat will be held online from 11 a.m. – noon.

Topics included in this chat will be:
• Methods of filing an application
• Different types of applications that can be filed
• Resources available to aid in the filing process

To sign up, click on the link below:
Join the Live Online Web Chat


Protecting Trademarks from Registration with an Unwanted Domain Name

November 5, 2015

General registration has begun for websites including the generic top level domains (gTLDs) .sex, .porn, .XXX, and .adult, thus allowing the public to purchase domain names ending with these extensions. Registration is on a first come, first serve basis and does not require pre-ownership or proof of a trademark registration to be granted the domain name. This presents the risk that third parties may register domain names in these new gTLDs for trademarks they do not own and potentially use the domain names for derogatory purposes.

If a trademark is registered in a domain name in an undesired gTLD to a party that is not the owner of the trademark, the actual trademark owner could sue the domain name holder and ask the judge to award them control and ownership of the domain name. However, this could be a costly and time consuming process. Instead of waiting for a third party to register a domain name with a trademark in an undesired gTLD, a trademark owner may proactively register for a domain name containing their trademark in that gTLD to prevent other parties from registering and using it for disparaging purposes. Actual use of the domain name is not required to maintain ownership and this approach may provide a cheaper alternative filing a lawsuit against a third party owner.

If you have any questions regarding the registration for new generic top level domains or wish to protect your brand from being registered in these domains by a third party, please contact the attorneys at Woodard, Emhardt, Moriarty, McNett and Henry LLP.

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