Tag Archives: USPTO

ILN Today Post

Do You Need To Threaten Litigation To Trigger Declaratory Judgment Subject Matter Jurisdiction?

Erbaviva, LLC, a California LLC, sent a demand letter to Era Organics, a Florida company.  The letter identified a number of Erbaviva federal trademark registrations, and “request[ed]” Era Organics:

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UNITED STATES SUPREME COURT TO CONSIDER ‘ON-SALE BAR’ DOCTRINE

 

 

 

 

 

 

 

Recent focus on the United States Supreme Court has surrounded who President Trump will nominate to replace retiring Associate Justice Anthony Kennedy.  (The nominee is Brett Kavanaugh of the D.C. Circuit.)  However, once October is here, the 2018 Term begins and focus will shift back to the cases before the Court.  One of those issues will be the extent that sales (or offers for sale) of an invention before the filing of a patent application will prevent the issuance of a patent.  Also known as the ‘on-sale bar’ doctrine, the outcome will have broad implications for startup companies and small businesses holding intellectual property assets.

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Can Trademarks Violate Free Speech?

Suppose that you want to register a trademark that identifies a source of goods or services for your business.  What if the trademark may be scandalous or disparage a particular group of people?  Should you register your trademark with the U.S. Patent and Trademark Office?  Can you obtain a registration from the U.S. Patent and Trademark Office?  The answer is YES!

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Matal v. Tam – Disparaging Trademarks are Registrable

It is well known that the trademark laws of the United States differ substantially from the trademark laws of countries around the world.  The United States Supreme Court recently clarified that ‘offensive’ trademarks are registrable, further differentiating the United States from the majority the world.

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U.S. Supreme Court Invalidates Statutory Provision against Offensive Trademarks

alice-moore-192521Although U.S. common law trademark rights are gained through use of the mark in commerce (without registration), registration of a trademark with the U.S. Patent and Trademark Office (“USPTO”) provides the owner with additional rights and benefits.  These include nationwide enforcement of the mark against infringers; constructive notice of the registrant’s claim of ownership of the mark; evidentiary presumptions of the validity of the mark, the registrant’s ownership of the mark, and the registrant’s exclusive right to use the mark in commerce on or in connection with the goods or services in the registration; the status of “incontestability” once the mark has used in commerce for five years after registration; and the ability to stop importation of infringing goods into the U.S.

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USPTO Adopts New Regulations for Trademark Specimens of Use

ziwuqmznrvs-bench-accountingUnlike the practice in many countries, in most cases the U.S. requires a trademark owner to place the mark into actual use in commerce and provide specific types of proof of use before the registration certificate will issue.  Similar requirements apply to the mandatory declaration of use to maintain or renew a U.S. registration.  Effective February 17, 2017, the United States Patent and Trademark Office (“PTO”) has amended its rules relating to the amount of proof necessary to substantiate current use of the mark for post-registration declarations of use.  37 CFR Part§§ 2.161 and 7.37.

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