Marta L. Paul

Recent Developments in US Trademark Law

August 22, 2017

Marta Paul spoke on recent developments in US trademark law at the August practice group lunch. Topics included the Supreme Court’s decision in Matal v. Tam on “disparaging” trademarks, as well as how the USPTO is handling similar parts of the trademark statute in the wake of the decision. More news from the USPTO included a new examination guideline on “merely informational matter” and recent cases from the TTAB. Finally, Marta discussed a recent precedential decision from the Court of Appeal for the Federal Circuit, In re I.AM.SYMBOLIC, LLC, involving likelihood of confusion and the effect of subject matter limitations in the identifications of goods or services used in trademark applications. Download the presentation here.

October 2012 Trademark Prosecution Group Luncheon

November 9, 2012

Topics covered in this month’s trademark group presentation include recent trademark statistics, examination guidelines on specimens, and recent changes to the federal dilution statute. To download a copy of this presentation click here.

New Ex Parte Appeal Rules

February 23, 2012

The United States Patent and Trademark Office (USPTO) has set forth new rules regarding the ex parte appeal process before the Patent Trial and Appeal Board.  The new rules took effect on January 23, 2012, with a majority of the changes being directed to the contents of Applicant’s appeal brief.  The rules are intended to reduce the burdens placed on Applicants during the appeal process and also reduce the pendency of appeals in general, in an effort to reduce the backlog of appeals at the USPTO. 

To download a copy of this presentation  discussing the new rules click here.

 Please contact us if you would like more information on the new ex parte appeal rules.

ICANN Approves New Generic Top-Level Domain Names, Including The XXX Domain

September 22, 2011

ICANN’s Board of Directors has approved a plan to allow an increase in the number of internet address endings, otherwise known as generic top-level domain names (gTLDs).  Currently 22 gTLDs exist, with .com being the most utilized.  However, internet address names will soon be able to end with almost any word in any language, offering organizations around the world the opportunity to market their brand, products, community or cause in new and innovative ways.  Under the plan, new gTLD applications will be accepted starting on January 12, 2012. 

The most infamous of these new gTLDs, which is already set to be granted to the ICM Registry, is the gTLD .xxx.  In conjunction with the issuance of this gTLD, for a limited period, brand owners will be able to have their registered marks blocked for at least 10 years and possibly longer from the xxx domain. 

Attorneys at Woodard, Emhardt can assist in blocking registered marks from use in the xxx domain.  The deadline for submitting a request for blocking a mark is October 28, 2011.  Once the window for blocking a domain based upon a registered mark has expired, registration will be opened to all others on a first come first serve basis, and once a domain is registered, it will undoubtedly be much more expensive to stop. 

Please contact us for more information regarding the xxx domain and/or if you are interested in proactively blocking your registered marks from potential derogatory use in that domain.

U.S. Supreme Court Issues Decision in Microsoft v. i4i Case

June 20, 2011

The U.S. Supreme Court has handed down a decision in the much-anticipated Microsoft v. i4i case.  In its decision, the Supreme Court affirmed that invalidity of a patent must be proved by clear and convincing evidence.  To read the full opinion, click here

May 2011 Trademark Prosecution Group Lunch

May 31, 2011

Topics covered in this month’s trademark group presentation include updates from the U.S. Trademark Office and case law updates concerning trademark licensing and likelihood of confusion issues. Click here to download a copy of the presentation.

Building the Strength of Your Trademark

May 4, 2011

So, you can rest easy now that you have a federal trademark registration, right?  No! 

Federal trademark registrations provide many protections and advantages to trademark owners.  Nevertheless, even with federal trademark registrations in hand, trademark owners will benefit from active efforts to build and maintain the strength of their trademarks.

A trademark owner can lose trademark rights by not using the trademark, by not using the trademark correctly, by failing to enforce the trademark against third-party infringers and/or by failing to object to generic misuse of the trademark.  Ironically, in some instances trademarks can be become so famous (think, GOOGLE®, VELCRO® and STYROFOAM®) that trademark owners must switch gears from heavily promoting their trademarks to limiting how people use their trademarks.  Like failing to enforce a trademark against known infringers, improper use of a trademark by the public may diminish the trademark’s value. 

It is important to keep in mind that one major rule in using a trademark properly is to use the trademark as an adjective, not a noun or a verb.  In other words, the trademark is the brand name (an adjective) describing the associated goods or services. 

Trademarks can become generic if the public starts using the trademark to refer to what something is, rather than as a brand name.  Therefore, some trademark owners develop branding campaigns to educate consumers on how to properly use their marks.  For example, the companies behind the XEROX® and KLEENEX® trademarks have devoted considerable resources in such campaigns to keep these trademarks from becoming the generic nouns for photocopies and tissues.  A trademark owner is wise to monitor the trademark’s usage on the internet, in the media and in dictionaries, and should object to improper treatment, such as generic misuse, if necessary.        

With respect to enforcement of trademark rights against third-party infringers, trademark owners must act with reasonable diligence in enforcing their trademarks rights.  However, courts do recognize the expense and potential business considerations involved in bringing a trademark infringement lawsuit, and as such, a trademark need not be enforced against every nameless John Doe who misuses the mark through a random comment on Facebook.  On the other hand, if the trademark is not enforced against the owner’s arch nemesis who is stealing sales, there is a risk that the mark will be found to have lost strength, or worse, that the trademark has become abandoned and therefore completely unenforceable. 

Please contact is if you would like to learn more about recommended protection efforts for your trademark.

Woodard, Emhardt Hosting E-Day for Ball State’s Entrepreneurship Program

May 3, 2011

Woodard, Emhardt is hosting “E-Day” (Evaluation Day) for Ball State University’s Entrepreneurship Program on May 3, 2011.

Ball State’s Entrepreneurship Program has been nationally ranked in the top ten for about a decade. During “E-Day,” seniors majoring in entrepreneurship present their business plans to a panel of three judges who decide whether a student passes or fails out of the program. The pool of judges includes business people, attorneys, and members of Indiana’s venture capital and entrepreneurship communities. Woodard, Emhardt wishes good luck to all of the participating students!

Woodard, Emhardt Attorneys to Participate in Indiana State Bar Association’s Annual Meeting

October 1, 2010

Woodard, Emhardt patent attorneys Marta Paul, Douglas Gallagher, and Elizabeth Shuster will participate in the Indiana State Bar Association’s 2010 Annual Meeting taking place October 13-15 in Indianapolis.  As outgoing Chair of the Intellectual Property Section, Marta Paul will preside over the  Section’s annual business meeting and will be handing over the reins to a new slate of officers, including Woodard, Emhardt attorney Elizabeth Shuster as incoming Secretary / Treasurer.  Immediately preceding the Intellectual Property Section’s business meeting, Douglas Gallagher and Elizabeth Shuster will present a one hour CLE on Inequitable Conduct.  The seminar will focus on the duty of disclosure owed to the Patent Office, including a review of relevant case law and an analysis of the current landscape of Rule 56, which informs practitioners of the scope of their duties in patent cases.  For more information on the CLE and the Indiana State Bar Association’s Annual Meeting, click here.

USPTO Begins Patent Prosecution Highway Pilot Program with Russian Patent Office (ROSPATENT)

September 7, 2010

The United States Patent and Trademark Office (USPTO) is participating in a one-year patent prosecution highway pilot program with the Russian Patent Office.  The pilot program will last for one year beginning on September 1, 2010.  Under the Patent Prosecution Highway agreement, an applicant receiving a favorable ruling from one nation’s patent office on at least one claim in an application can request and generally obtain fast-track examination in the other corresponding country.  The Patent Prosecution Highway can be an efficient way in which an applicant can obtain patent protection in additional countries after first receiving a patent in a first country.  Click here for more information on the pilot program.

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