- Posts by Rory P. PheifferPartner
Rory P. Pheiffer is a partner in Nutter’s Intellectual Property Department and a member of both the Emerging Companies and Life Sciences and Medical Devices practice groups. His practice covers a broad spectrum of intellectual ...
Recently the Ninth Circuit ruled that Google’s trademark for search engines has not become generic and is still enforceable as to search engines. As Bayer learned with its previously-existing trademark aspirin, when a court determines a trademark to be generic, the mark is no longer protectable. In effect, a generic (no longer a) trademark is re-appropriated by the public such that the mark is no longer a source-identifier for the related goods and services. A generic (no longer a) trademark tells the public what the good and services are rather than who makes and/or sells the goods or services. Additional examples of trademarks that courts held to be generic include cellophane, thermos, and trampoline.
Introducing a new how-to series about how to build a brand. Please check back periodically for the next article in our on-going series.
Nutter’s series on building a brand began with the selection of a trademark and the process of formally protecting a mark via trademark registration. More recent articles in the series have addressed policing a brand, proper trademark usage, and brand considerations in the social media environment. This article, the last in the series, focuses on additional post-registration considerations, namely: (1) exploiting your mark through licensing, including important quality control considerations; (2) applying to register branding elements in addition to the core plain text mark to enable more effective policing of your brand’s entire commercial impression; and (3) assessing the unauthorized use of your brand by third parties (or using another’s mark without authorization) for purposes of determining whether such uses are “fair” or, on the other hand, harmful and actionable.
To read more, click here.
What to Do Once Your Trademark Registers—The Brand & New Media
Eleventh in The Series
Nutter’s series on building a brand began with the selection of a mark and the process of formally protecting it via trademark registration. At this point in the series, the mark is registered and ready for use and investment to elevate it into a brand. One area that can impact your brand is the use of your mark in “new media,” such as the Web and social media services. New media works differently than anything that has come before and there is a great deal to consider, from reserving domains and usernames to monitoring use—both your own and others’—across these mediums.
To read more about building a brand through new media, please click here.
What to Do Once Your Trademark Registers – Avoiding Genericism and Dilution
Tenth in The Series
As discussed in the previous article in Nutter’s IP Branding Series, monitoring competitors’ use of your marks and marks possibly akin to your marks, and enforcing your rights in your marks against those competitors, is an important aspect of protecting and building your brand. Equally important is policing your own use of the mark, the use of your mark by licensed third parties, and the use of the mark by third parties that are neither competitors nor licensees. The graveyard of brands that were arguably too successful because the brand name became genericised is fraught with lessons to be learned in protecting the use of your mark. Dilution is also a concern, although it is becoming increasingly more difficult to successfully show that your mark is being diluted or tarnished.
Click here to read more about guarding against your mark joining the generic graveyard.
Our prior article in the series addressed the basics of what to do once your trademark registers, focusing mainly on your own use of the mark and supplemental submissions required to the United States Patent and Trademark Office (USPTO) in connection with your registration. Of course, your mark does not exist in a vacuum, and another category of activities you should undertake once your trademark registers involves monitoring the USPTO and other trademark offices for other potentially confusing or otherwise problematic marks and, where necessary, taking action to defend your mark. We also begin to address enforcing your mark through litigation, a vast topic that will be explored further in future articles.
To read more about monitoring, defending, and enforcing your mark, click here.
What to Do Once Your Trademark Registers – The Basics
Eighth in The Series
Following the conclusion of trademark prosecution, your certificate of registration has arrived in the mail. Now what? Over the course of the last three articles in our series, we will tackle this one, not so simple question. While a brand is nothing more than a mark (trademark or service mark) that has done well in life, like life, success comes with a little luck, and plenty of planning. Thus, obtaining the registration is truly just the beginning of your path to building a successful national or global brand. The present article will start with the basics—what you need to do to keep and maintain the trademark(s) you obtain.
To read more about keeping and maintaining your registered trademark(s) to help build and sustain your brand, click here.
Considering Your Brand during Trademark Prosecution
Seventh in The Series
The articles in our May and July editions of the IP Bulletin addressed eight of the most commonly asked questions that arise when completing a U.S. trademark application filing. Once the application has been filed with the USPTO, substantive examination by an examining attorney from the USPTO will commence in due course. In stark contrast to the long waits experienced by patent applicants, the average time between application filing and the issuance of a first Office Action is only 2.8 months at the time of this publication. There are many reasons why an examining attorney may initially reject a trademark application. When building a brand, an applicant should give special consideration to the response strategy before replying to any Office Action.
To read more about branding considerations when prosecuting trademarks, click here.
The article in our May edition of the IP Bulletin addressed four of the eight most commonly asked questions that arise when completing a U.S. trademark application filing. More particularly, we considered the trademark application form that should be used, the classes of goods or services to include in the application, the items included in the description of goods and services, and appropriate and acceptable specimen of use to be included as part of the application. The other four most commonly asked questions are tackled in this article, including: (5) should I include color or design features as part of my trademark application; (6) what is my filing basis; (7) what is my date of first use; and (8) what other considerations should I be making when preparing my U.S. trademark application?
To read more about the essentials of a filing U.S. trademark application, click here.
This fifth installment of Nutter’s continuing series on building a brand focuses on the essentials of filing a U.S. Trademark Application. The four commonly asked questions addressed in this article are: (1) what trademark application form should I use; (2) what classes of goods or services should I include in my application; (3) how do I decide what items I should include in my description of goods and services; and (4) what is an appropriate and acceptable specimen of use? Questions pertaining to color and design features, filing basis, dates for first use, and other considerations that should be made when preparing a U.S. trademark application will be included in our July edition.
To read more about the essentials of filing a U.S. Trademark Application, click here.
Where to File a Trademark Application: A Territorial Question
Fourth in The Series
Once you’ve checked off the five “Cs” and decided on the trademark you want to protect as part of building your brand, you next must decide where you want to file for protection. You see, even though Thomas Friedman has been driving the globalization “Lexus” since before the 21st century, and the reaches of the geography-obliterating, all-encompassing Internet and Mother Web connects Afghanistan to Zimbabwe, trademark rights themselves remain territorial. A single trademark application will not provide global property rights. This fourth article of Nutter’s branding series explores a trademark applicant’s various options regarding where to file a trademark application.
To read about three important territorial questions to consider when preparing a trademark application, click here.
Five “Cs” to Check-Off Your List Before You Decide on Trademarks
Third in The Series
This third installment of Nutter’s continuing series on building a brand focuses on considerations you should undertake before finalizing your selection of trademarks to build your brand. Before filing, consider taking the following five preliminary steps: (1) coordinate your efforts; (2) construct your trademark strategy; (3) conceive the overall design; (4) conduct a preliminary search; and (5) consider contacting an intellectual property professional. If you follow the five “Cs,” you can reduce the chances of finding yourself back at the drawing board coming up with a new idea for a trademark.
To read about how the five “Cs” can help make sure your branding strategy is on the up-and-up, click here.
Selecting a Trademark: Four Flavors of TrademarkSecond in The Series
This second installment of Nutter’s continuing series on building a brand begins to address issues faced by businesses in selecting a trademark. In particular, the issue of trademark strength is examined, as it can be an important factor in a branding campaign’s success.
To read more about the impact of trademark strength on mark selection, click here.
What is a Brand?First in The Series
Branding is often an important part of commercial success for a company, product, or line of products. However, there is often confusion surrounding how to go about identifying potential brand names, selecting the best one, protecting that name, and enforcing protective rights to avoid losing the brand’s unique association with the product. In a series of articles in the next several IP Bulletins, Nutter will address these various legal aspects of branding. Today, we start at the beginning with a discussion of what a brand is, and how it relates to the legal world of trade and service marks.
To read more about branding, click here.
The Post-Prosecution Pilot Program, dubbed “P3” by the United States Patent and Trademark Office (USPTO), offers applicants a new, and arguably improved, path through the after-final landscape. P3 provides applicants the opportunity to orally present proposed amendments or arguments to a panel of examiners after a final rejection has been issued but before filing a notice of appeal. As the USPTO’s latest rollout under the Enhanced Patent Quality Initiative, P3 incorporates effective features of the existing Pre-Appeal Brief Conference Pilot program (Pre-Appeal) and the After Final Consideration Pilot 2.0 program (AFCP). Applicants should consider taking advantage of this no-fee program to make their case for allowance, propose non-broadening amendments, and receive feedback from a larger pool of examiners prior to filling a notice of appeal or Request for Continued Examination (RCE).
Long delays at the U.S. Patent and Trademark Office (USPTO) can be frustrating and detrimental to a company. What options exist to speed up patent prosecution? Rory Pheiffer, a partner in Nutter’s Intellectual Property Department, analyzes five programs that can accelerate patent prosecution in the piece “Getting on the Patent Fast Track While Keeping Competitors in the Rearview Mirror.”
A website recently launched that aggregates individual examiner data in real-time to provide practitioners with information they may find helpful in determining prosecution strategies that may be effective in achieving allowance before a particular examiner. The website, known as Examiner Ninja, allows a user to look-up data about any examiner at the United States Patent and Trademark Office (USPTO). The website presents data about allowance rates when various prosecution strategies are utilized, and also provides data about how quickly an examiner takes particular types of action during prosecution. The data is provided for each examiner, and each individual examiner’s data is compared to the same data for all examiners in that particular examiner’s art unit, and to all examiners at the USPTO.
To date, the Supreme Court has granted certiorari (commonly referred to as cert) to five patent-related cases this term, which will result in three oral arguments likely to be decided before the end of the term. Two of the cases were consolidated into a single argument, while another case was subject to a Grant-Vacate-and-Remand (GVR) order, meaning the previous decision by the United States Court of Appeals for the Federal Circuit (CAFC) has been vacated by the Supreme Court and the case must be reconsidered by the CAFC. There are also over 20 pending Petitions for Writ of Certiorari, which may result in additional patent matters being heard by the Court this term.
Most patent owners are aware that under 35 U.S.C. § 154(d), publication of a United States patent application confers provisional rights to the patent owner. The provisional rights allow an owner to collect damages for infringement of issued claims dating back to the date of publication provided that the claims are substantially similar to the claims that are included in the published application. It can often be difficult for a patent owner to prove that issued claims are substantially similar to published claims. However, even if a patent owner is able to prove claim similarity from publication to issuance, a further obstacle to collect pre-issuance damages was solidified by the Federal Circuit recently in Rosebud LMS v. Adobe Systems—the statutory requirement of actual notice. In the recent Federal Circuit decision, the Court found that constructive notice was insufficient to meet the actual notice requirement under 35 U.S.C. § 154(d), and that instead a patent owner must prove the infringer was actually aware of the patent at issue.
In a decision likely to be lauded by patent applicants and owners, the Federal Circuit recently issued an opinion that affirms its staunch position that the bar to prove a patent owner made a disclaimer that impacts the claim scope is high. The opinion provides some useful quotes that prosecutors and litigators representing applicants and owners will likely be interested in calling upon when presenting argument against assertions that a previously taken position amounts to a disclaimer or disavowal by the applicant/owner.
Now that our readers have had their fill of turkey and all the fixings, they can gorge on an abundance of patent petitions data. Earlier this year, Director of the USPTO Michelle Lee announced a new public, user-friendly tool to obtain information about the abundance and success rate of petitions of every nature. The information generally includes:
- The average number of days a petition is pending before a decision is made;
- The grant rate for a petition; and
- The office within the USPTO that makes the decision on the petition.
Earlier this fall the United States Patent and Trademark Office (USPTO) announced the “Streamlined, Expedited Patent Appeal Pilot for Small Entities” program (the Streamlined, Expedited program), which allows small and micro entities to expedite a single ex parte patent appeal pending before the Patent Trial and Appeal Board (Board). In order to take advantage of this program, a patent applicant must:
- Be a small or micro entity appellant;
- Have only a single ex parte patent appeal pending before the Board as of September 18, 2015;
- Have no claim involved in the appeal that can be subject to a rejection under 35 U.S.C. § 112;
- For each ground of rejection that is applied to more than one claim, select a single claim as representative and only discuss that claim in the appeal for that ground;
- Agree to waive any requested oral hearing; and
- Acknowledge that any oral hearing fees paid in connection with the appeal will not be refunded.
Maximizing the protection and value of intellectual property assets is often the cornerstone of a business's success and even survival. In this blog, Nutter's Intellectual Property attorneys provide news updates and practical tips in patent portfolio development, IP litigation, trademarks, copyrights, trade secrets and licensing.