Insights

The United States Patent and Trademark Office (USPTO) issued a Federal Register Notice on February 13, 2024 explaining how it will analyze patent inventorship issues for inventions that utilize artificial intelligence (AI) systems. Overall, the USPTO concluded that AI-assisted inventions are not categorically unpatentable, but that a human must have made significant contributions in every aspect of the invention, and reminds applicants of their duty of candor to disclose information that could evidence that an individual may not be an inventor where her/his purported contribution was the result of an AI system. 

On August 30, 2023, the Copyright Office announced it would be seeking public comment on the use of copyrighted works to train Artificial Intelligence (“AI”), the copyrightability of AI outputs, whether AI-generated works infringe existing copyrights, and how to treat generative AI.

It seems most everyone has been closely monitoring Taco Bell’s cancellation proceedings directed to federal trademark registrations covering the TACO TUESDAY trademark.  On July 15, 2023, one of the registrants, Spicy Seasonings, LLC, withdrew its registration after decades of ownership, supporting Taco Bell’s allegations that the phrase is generic and therefore not protectable as a trademark.

While fashion lovers throughout the European Union will surely be familiar with the pattern, the General Court held that luxury fashion house Louis Vuitton failed to demonstrate that its trademark checkerboard ‘Damier Azur’ pattern, had acquired distinctiveness through use throughout the European Union.

In March 2023, the USPTO and its Council for Inclusive Innovation announced the First-Time Filer Expedited Examination Pilot Program.  This new program benefits those individuals or small businesses that are first-time filers for patent rights and qualify as “micro entities.”  Through the program, these micro entities receive an expedited first Office action, which the USPTO hopes will lower time-based barriers for inventors that acted as barriers to commercialization or may have otherwise precluded inventors’ use of the patent system. 

For months, Jack Daniel’s has had a bone to pick with VIP Products, the manufacturer of a parody dog toy called “Bad Spaniels.” In Jack Daniel’s Properties Inc. v. VIP Products, claims of trademark infringement and dilution by tarnishment were raised against the dog toymaker. The Bad Spaniels dog toy at the center of this dispute is shaped and colored like a Jack Daniel’s bottle, with similarly stylized labels stating “Bad Spaniels,” “The Old No. 2,” and “on your Tennessee Carpet.” Regardless of one’s whiskey preferences, this case may leave quite the aftertaste on trademark use in expressive works as it rests at the intersection between trademark law and the First Amendment.

The USPTO has announced that it will commence issuing patent certificates only electronically through its electronic patent application filing and management system, Patent Center. This is in line with the USPTO's efforts to achieve fully electronic processing of patent applications. The paper patent issuance process, which involved physically delivering “ribbon copy” patents to the correspondence address of record, will be replaced with the issuance of patents electronically under a new digital USPTO seal and digital signature from the USPTO Director. Patent Center will enable the patentee and the public to view and print the official electronic patent grant immediately upon issuance. To implement electronic patent issuance, the USPTO is removing and reserving 37 CFR 1.315, which refers to the delivery or mailing of the patent upon issuance to the correspondence address of record. 

Earlier this year, Hermès filed a trademark infringement suit against Los Angeles-based designer Mason Rothschild for creating and selling faux-fur digital renditions of the luxury Hermès Birkin handbags and using a collection of 100 NFTs, titled “MetaBirkins,” to authenticate the digital images.[1] In response, Rothschild filed a motion to dismiss Hermès’ trademark infringement claim under the Rogers test on the basis that the digital images of the Birkin bags are “art” and, therefore, receive First Amendment protection.[2]  Hermès opposed, arguing that the Polaroid factors— instead of the Rogers test—should apply, to assess likelihood of confusion.[3]  On May 18, 2022, the court denied Rothschild’s motion to dismiss, concluding that: (1) the Rogers test applies to the trademark infringement analysis of the “MetaBirkins” title, and (2) the Polaroid factors apply to the explicit misleadingness analysis.[4]

The Trademark Modernization Act of 2020, signed into law on December 27, 2020, makes important changes to the Lanham Act including (1) making it easier for a trademark owner who proves infringement to obtain injunctive relief in litigation, and (2) establishing new procedures for challenging applications and registrations that may not meet United States Patent and Trademark Office (“USPTO”) requirements relating to use in commerce.

These boots were made for walkin’– no not your ugg boots, my UGG® boots.

“Brexit means Brexit, and we are going to make a success of it.” Considering this statement of Theresa May, Britain’s new prime minister, the June 23, 2016 vote to leave the EU seems irrevocable. This will undeniably have implications with regard to trademarks and designs, although it is impossible to predict to what exact extent. In any event, existing and future owners of trademarks and/or designs should keep an eye on the following potential issues:

In a case watched closely by research institutions, technology companies, and intellectual property licensing professionals, the U.S. Supreme Court decided Monday of this week that Marvel Entertainment need not comply with its contractual obligation to continue to pay royalties to the inventor of a Spider-Man toy, after the inventor's licensed patent expired. In so ruling the Court affirmed its controversial 1964 decision, Brulotte v. Thys Co., 379 U.S. 29 (1964), which held unlawful the collection of royalties based on post-expiration use of a patented invention. Kimble v. Marvel Entertainment, LLC, 576 U.S. __ (2015) (Slip Op.). With no contractually-set expiration date to Marvel's commitment to pay a fixed percentage royalty, the Court ruled that Marvel need not pay royalties on sales of products covered by a patent after its expiration, currently set by 35 U.S.C. § 154(a)(2) as 20 years after the date the patent application is filed. At the same time, the Court acknowledged that technology licenses can be structured with payments made after the patent expires if they are for use of the patent before it expired. The Court also provided some examples how that goal could be accomplished under the affirmed Brulotte rule.

In a landmark ruling that is likely to affect the strategy of trademark owners seeking to protect their brands or adopt new ones, the Supreme Court has held that decisions of the Trademark Trial and Appeal Board (TTAB) can be given preclusive effect by district courts in trademark infringement actions as long as the ordinary elements of issue preclusion are met and the issues adjudicated by the TTAB are materially the same as those before a district court. B&B Hardware, Inc. v. Hargis Indus., Inc., No. 13-352, 575 U.S. ____ (Mar. 24, 2015).

Preliminary injunction (PI) and seizure proceedings are powerful weapons in the hands of patentees in Belgium. Often, the success of a product launch and the outcome of a patent dispute will in practice be determined by a PI or seizure that prevents or ceases market entry by the alleged infringer. 

Trademark applicants and registrants may experience increased scrutiny of their trademark use claims in light of the results of a recent Pilot Program, conducted by the United States Patent and Trademark Office (USPTO), showing that fifty percent (50%) of approximately 500 randomly selected registrants could not support the claims made in previously filed Declarations of Use. See USPTO Report. Each selected registrant had been asked to submit specimens showing use for two additional goods or services per class in addition to the specimen already submitted with the Declaration.

On November 28, 2013, the European Commission (EC) proposed a directive "on the protection of undisclosed know-how and confidential business information (trade secrets) against their unlawful acquisition, use and disclosure." If adopted, the directive will establish a common definition of "trade secrets" and set of remedies in all 28 European Union (EU) Member States. The proposed directive now goes to the European Parliament and EU Member State governments via the European Council for adoption. 

The Third Circuit Court of Appeals issued an opinion on May 21, 2013, finding that the use of the likeness of Ryan Hart, a former standout quarterback for Rutgers, in a video game about college football, violated Mr. Hart's right of publicity. Hart v. Electronic Arts Inc., No. 11-3750, 2013 U.S. App. LEXIS 10171, at *3 (3d Cir. May 21, 2013). The ruling could significantly impair the ability of video game makers to continue to use "real people" in video games to enhance the realism of those games, particularly in the context of sports video games.

As of March 26, 2013, trademark owners may submit their trademarks for inclusion in the "Trademark Clearinghouse," which may be a valuable tool for minimizing the potential for abuse resulting from the imminent expansion in the number of generic Top Level Domains (gTLDs). Inclusion in the Clearinghouse will give the mark owner the opportunity to register the mark in each new gTLD before the general public and will provide other notice benefits as well.

In InterDigital Commc'ns, LLC v. Int'l Trade Comm'n, No. 2010-1093 (Fed. Cir. Jan. 10, 2013), the Federal Circuit held that the domestic industry requirement of Section 337 can be satisfied by domestic licensing activities standing alone, even if no product covered by the patents-in-suit is manufactured domestically or by a domestic entity. This decision may result in more Non-Practicing Entities ("NPEs") gaining easier access to the U.S. International Trade Commission ("ITC"), where injunctive relief in the form of an exclusion order is more readily available than injunctive relief from district courts.

Facebook®, the popular social networking system, has announced that starting at 12:01 a.m. (EDT) on Saturday, June 13, 2009, its users will be allowed to create personalized URLs. (see http://blog.facebook.com/blog.php?post=90316352130). This raises the possibility that some Facebook users may try to incorporate third party trademarks as part of their new URLs.