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Cover Your IP Assets
The following are three examples of how a service may be rendered in commerce: (1) the applicant’s services are rendered across state lines; (2) customers come across state lines in response to advertising for the services; and (3) the applicant’s licensees or franchisees are located in more than one state, and they use the mark. See TMEP 1301.03(b)
On February 13th, 2012, Jeremy Lin filed an application with the United States Patent and Trademark Office for “Linsanity.” However, he was the third entity to file for this mark. Other applicants have subsequently filed for this trademark as well.
However, experts agree that Jeremy Lin will be successful in opposing the earlier filed applications. A proposed mark cannot be registered if comprises matter that may disparage or falsely suggest a connection with persons, institutions, beliefs, or national symbols, or bring them into contempt or disrepute (15 U.S.C. §1052(a).)
Here is a list of reasons that constitute grounds for refusal to register a trademark:
(1) The applicant is not the owner of the mark
(2) The subject matter for which registration is sought does not function as a mark because, for example, the proposed mark:
(a) is used solely as a trade name
(b) is functional, i.e., consists of a utilitarian design feature of the goods or their packaging
(c) is a nondistinctive configuration of the goods or their packaging
(d) is mere ornamentation
(e) is the generic name for the goods or services
(f) is the title of a single creative work or the name of an author or performing artist
(3) The proposed mark comprises immoral or scandalous matter
(4) The proposed mark is deceptive
(5) The proposed mark comprises matter that may disparage or falsely suggest a connection with persons, institutions, beliefs, or national symbols, or bring them into contempt or disrepute
(6) The proposed mark comprises the flag, coat of arms, or other insignia of the United States or any State, municipality, or foreign nation
(7) The applicant’s use of the mark is or would be unlawful because it is prohibited by statute
(8) The proposed mark comprises a name, portrait, or signature identifying a particular living individual without the individual’s written consent, or the name, portrait, or signature of a deceased president of the United States during his widow’s life, without written consent of the widow
(9) The proposed mark so resembles a previously registered mark as to be likely, when used with the applicant’s goods and/or services, to cause confusion or mistake, or to deceive
(10) The proposed mark is merely descriptive or deceptively misdescriptive of the applicant’s goods and/or services
(11) The proposed mark is primarily geographically descriptive of the applicant’s goods and/or services
(12) The proposed mark is primarily geographically deceptively misdescriptive of the applicant’s goods and/or services
(13) The proposed mark is primarily merely a surname
You can use the ® once your trademark has been federally registered in the United States. Filing an application for federal registration is not sufficient. Until then, it is advisable to accompany uses of the mark with a “TM” symbol. Thus you should use the trademark as follows: MARKTM. Improper use of the federal registration symbol that is deliberate and intended to deceive or mislead the public is fraud. See Trademark Examination Procedure (TEMP) §906.04. Misuse of the federal registration symbol is usually due to misunderstanding as to its purpose, rather than actual fraudulent intent. Common reasons for improper use of the federal registration symbol that do not indicate fraud are:
See TMEP 906.02.
For more information on trademarks, please contact your trademark attorney or intellectual property lawyer. We are located just outside Downtown Los Angeles in the City of Pasadena. For more information on trademarks, please explore the rest of our trademark page.
The newly passed Leahy-Smith America Invents Act (AIA) adds Prioritized Examination (PE) of patent applications. The USPTO has a goal of giving a final rejection or allowance within one year on average to PE applications.
The PE program should not be confused with the Accelerated Examination (AE) program that co-exists with PE. They each offer significantly different advantages and requirements.
Unlike AE applications, PE applications do not require a pre-examination search document and an accelerated examination support document. In addition, PE allows 4 independent claims and 30 total claims while AE allows only 3 independent claims and 20 total claims.
However, the total filings fees of a PE application are $6480 (or $3630 for a small entity), whereas total filing fees of an AE application are only $1380 (or $660 for a small entity). Be sure to carefully weigh your options before choosing between filing a standard application, an AE application, or a PE application.
The America Invents Act of 2011 created a new micro-entity status. Previously, the United States Patent and Trademark Office (USPTO) recognized small entities, which were eligible for a 50% fee reduction. Micro-entities are eligible for a 75% reduction in fees paid to the USPTO.
A small entity is either:
An individual
A small business concern (does not exceed 500 persons)
A non-profit organization
Furthermore, if the owner has transferred some rights in the invention to one or more parties, or is under an obligation to do so, the transferee must also qualify as a small entity.
To qualify as a micro-entity, one must first qualify as a small entity. Additionally, the income of the micro-entity must be less than 3 times the median household income. Also, the micro-entity may not assign or be under an obligation to assign the application to an entity with an income that exceeds this limit.
The micro-entity is eligible for the reduced fees on the first four patent applications filed (excluding provisional patent applications).
These new provisions are designed to make the patent system more accessible to individual inventors and small businesses. Your patent attorney can help you navigate these and other changes to the patent law introduced in the America Invents Act. Cotman IP is located in Pasadena, California just outside of Downtown Los Angeles.
When the applicant is seeking to register a specific design feature of its goods or packaging, the answer is yes. The applicant should present a three-dimensional view of the goods or packaging showing in solid lines those feature which the applicant claims as its trade dress and the remainder of the drawing in broken dotted lines. See In re Water Gremlin Co., 635 F.2d 841, 208 USPQ 89 (C.C.P.A. 1980); In re Famous Foods, Inc., 217 USPQ 177 (TTAB 1983); 37 C.F.R. §2.52(b)(2) and (b)(4); TMEP §§807.08 and 807.10. In addition to these drawing requirements, a clear and concise description of the features claimed as the mark should also be included in such an application. See 37 C.F.R. §2.52(b)(4); TMEP §807.08. The description required is similar to the description you would submit with an application for a composite mark. However, instead of describing color placement and features of the composite mark, your description will distinguish the nonfunctional features claimed as trade dress from those features of the goods or packing to be excluded.
If you are interested in registering your trade dress on the Principle Register of the United States Patent and Trademark Office, we recommend seeking the assistance of an Intellectual Property Attorney. We are located just outside of Downtown Los Angeles in the City of Pasadena.
Not so, if you ask Kim Kardashian. Kardashian has filed a suit against The Gap for an ad campaign launched by Old Navy, a subsidiary of The Gap. Kardashian alleges, among other things, that her likeness, in the form of a celebrity “look-alike,” is being used in the ads and is likely to cause confusion in the consuming public as to an association of Kardashian with Old Navy’s products. Kardashian has pleaded Unfair Competition under the Lanham Act, Violation of California Common Law Right of Publicity, and California Statutory Right of Publicity. She is seeking injunctive relief and a laundry list of damages.
Using the likeness of a living person without proper consent or a “look-alike” without proper disclaimers can create serious problems. The cost to remedy the situation may seriously outweigh any profit gained. Should you find yourself on either end of this scenario, seek the advice of an Intellectual Property Attorney. We are located just outside of Downtown Los Angeles in the City of Pasadena.
On July 29, 2001, the Court of Appeals for the Federal Circuit issued an important decision regarding patent litigation: Eon-Net LP v. Flagstar Bancorp (Fed. Cir. 2011). Eon-Net is a patent holding company that primarily earnings as revenue through litigation and licensing fees, rather than developing manufacturing or marketing (also known as a patent troll). The court awarded Flagstar $489,150.48 in attorney fees and costs and $141,984.70 in sanctions against Eon-Net. Slip Op. at 3. In view of this opinion, patent owners may be wondering how to enforce and license their valid patent rights without incurring liability like Eon-Net.
The court imposed sanctions under 35 U.S.C. 285, which allows sanctions to punish exceptional cases of misconduct. Specifically, the court found that Eon-Net violated Rule 11 of the Federal Rules of Civil Procedure because “(1) the patentee brought the litigation in bad faith; and (2) the litigation is objectively baseless.” Slip Op. at 17.
The district court noted that Eon-Net’s behavior had an “indicia of extortion”. Slip Op. at 22. After evaluating Eon-Net’s behavior, the court noted that Eon-Net filed over 100 lawsuits, immediately followed by offers to settle at a price far lower than the cost to defend the litigation. Slip Op. at 22. Settlements were offered at between $25,000-$75,000 based on the annual sales of the defendant. Slip Op. at 22-23. Because these settlement offers were far lower than the cost of defending a patent litigation, the great majority of defendants chose to settle.
Furthermore, the court noted that EonNet failed to engage the claim construction process in good faith because Eon-Net destroyed relevant and important documents, attempted to evade a careful analysis of the claim terms in litigation, failed to offer a construction for any disputed claim terms, lodged incomplete and misleading extrinsic evidence with the court, and submitted declarations that contradicted earlier deposition testimony by the declarants. Slip Op. at 18-19.
The court acknowledged that patentees should be able to fit be able to defend and profit from their intellectual property. However, the court noted that this was not a case where the claims present a close call; rather, the specification unequivocally compels the claim constructions adopted by the district court. Slip Op. at 15-16.
Before engaging in litigation, a patentee should have a valid argument that the opposing party is infringing its patent. The infringement argument should be based on a good-faith interpretation of the claims. If you believe your intellectual property rights are being violated, contact us if you need a patent attorney in Los Angeles to evaluate your case. Your patent attorney has the expertise to help you determine the scope of your intellectual property rights.
Short answer, not always. A Notice of Abandonment is issued when a Trademark Applicant fails to take action by not filing a timely response to an Office Action or a Notice of Allowance. The Notice of Abandonment triggers a two-month period wherein the Applicant can file a Petition to Revive Abandoned Application. However, if the applicant failed to file a Statement of Use in response to the Notice of Allowance after expiration of the fifth extension (or 36 months from the date of the Notice of Allowance), the Applicant cannot revive the application and must re-file. The Trademark Electronic System (TEAS) will alert the Applicant upon entry of the U.S. Serial Number at the time of filing the petition.
There are two types of Petitions to Revive:
If you have received a Notice of Abandonment, we recommend you seek counsel from a Trademark Attorney immediately as the passage of time can reduce your chances of getting the Petition to revive granted. Cotman IP is located in Pasadena, California just outside of Downtown Los Angeles.