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SerendIPity: Dykema's Intellectual Property Law Blog

Intellectual Property Law Blog

News and Analysis of Legal Issues Affecting Intellectual Property

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Showing 14 posts in U.S. Patent and Trademark Office.

Another Patent Survives Motion to Dismiss Amid §101 Skepticism

Following a wave of decisions previously covered by Dykema, Judge Robinson of the United States District Court for the District of Delaware issued another decision holding that a software-based patent passes muster post-Alice. In Treehouse Avatar LLC v. Valve Corp., Civ. No. 15-427-SLR (D. Del. Mar. 22, 2016, Order), Judge Robinson opined on the trajectory of software patents and cautioned how Section 101 analysis might be going too far at the pleadings stage.  Read More ›

Not So Fast: Pushback to Invalidate Patents Absent Further Review May be a Growing Trend

In March 2016, a number of district courts have expressed hesitation to decide 35 U.S.C. § 101 patentability too soon. Although each court offered its own interpretation of how to proceed, the underlying message was clear: there is growing concern some courts have ruled on the validity of certain software and other computer-implemented technologies prematurely post-AliceRead More ›

Considerations Before Filing an Appeal with the PTAB

Any patent application that has been twice rejected by a patent examiner in the USPTO can be appealed to the Patent Trial and Appeal Board (“PTAB”).[1] Before appealing a rejection, it is important to understand the pros and cons. Read More ›

The Supreme Court’s Holding on the Preclusive Effect of TTAB Proceedings: Is it the End or Just the Beginning?

The Supreme Court has finally resolved an issue that has been kicking around for some time: whether a final decision of the Trademark Trial and Appeal Board (“TTAB”) of the U.S. Patent and Trademark Office in a disputed proceeding over registration can ever have preclusive effect in a subsequent court action which is not an appeal of that proceeding. The answer is yes, if the established elements of issue preclusion are met. B&B Hardware Inc. v. Hargis Industries Inc. et al. Both Justice Alito, in his opinion for the Court, and Justice Ginsburg in her brief concurrence, pointed out that “for a great many registration decisions issue preclusion obviously will not apply.” Still, it seems likely that a great deal of litigation over preclusion is yet to come – the Supreme Court decision is far from “conclusive.” Read More ›

Thoughts on Trademark Bullying

I’ve been a practicing trademark lawyer for more than 25 years and have represented many companies, large and small, in a wide variety of industries, as plaintiffs and defendants, applicants and opposers, and petitioners and registrants. More than ever before, and particularly in the past several years, the public and news media have begun using the term “Trademark Bullying” whenever they believe a trademark owner has used its trademark rights to prevent a smaller company from doing business under a trademark. Social media has helped recipients of demand letters and lawsuits spread the David and Goliath “bullying” message, and in some cases, the negative public-relations backlash for the brand owners has resulted in a withdrawal of the claim. The enforcement approaches and strategies taken by many household brands, including Starbucks, Facebook, Specialized Bicycle Components, Monster Energy Drink, and Redbull, have all come under the microscope. Read More ›

Note to Musical Performers—You Are Only “Entertaining” When You Are Performing Live

All of you VINE Stars—you may think you are entertaining with your online performances, but according to the U.S. Patent and Trademark Office (PTO) you are not. In a decision denying an ex parte appeal, the PTO’s Trademark Trial and Appeal Board (TTAB) ruled that providing musical performances via internet streaming and webcasting sites does not qualify as entertainment services. In re Titan Music, Inc., Serial No. 77344197 (Aug. 20, 2014). Read More ›

The Supreme Court Delivers Clarity for (Some) Software Patents

Yesterday, the Supreme Court issued its much anticipated ruling on the patentability of software. Alice Corp. Pty. Ltd. v. CLS Bank Int'l, et al., No. 12-298. As with many of its recent decisions relating to patent law, the Court did not make any sweeping pronouncements on the general patentability of software patents. Instead, the Court addressed the narrower issue of whether abstract ideas, long held to be ineligible subject matter for patents by themselves, could become patent eligible if they were implemented on a generic computer. The Court held that they cannot. Read More ›

Trademark Trial and Appeal Board Rules "REDSKINS" Name Disparaging and Cancels Registrations

In a precedential decision issued June 18, 2014, the Trademark Trial and Appeal Board (“the Board”) held all six trademark registrations owned by the Washington Redskins which include the term REDSKINS “must be cancelled because they were disparaging to Native Americans at the respective times they were registered, in violation of Section 2(a) of the Trademark Act of 1946, 15 U.S.C. § 1052(a).” Blackhorse v. Pro-Football, Inc., T.T.A.B., No. 92046185, 6/18/14Read More ›

"And They're Off!" — California Chrome Merchandising Gets a Fast Start Out of the Gate

Less than two weeks after his spectacular Kentucky Derby win, and two days before he completed the second leg of the Triple Crown, California Chrome’s merchandising business is off and running. On May 15, 2014, Denise and Perry Martin, and Steven and Carolyn Coburn (d/b/a DAP Racing) filed an application to register their horse’s name – CALIFORNIA CHROME – as a U.S. trademark. Read More ›

IKEA v AKEA: TTAB Says "IKEA" Does Not Qualify as a Famous Mark for Purposes of Dilution Claim—At Least Not as of 2009

In a recently issued decision, the U.S. Patent and Trademark Office Trial and Appeal Board found that IKEA was not a sufficiently “famous” mark, to support a dilution claim under §43(c) of the Trademark Act, 15 U.S.C. §1125. Inter IKEA Systems B.V. v. Akea, LLC, No. 91196527 (TTAB May 2, 2014). More precisely, the TTAB ruled that the record before it did not prove, by a preponderance of the evidence, that IKEA had achieved famous status as of the filing date of the opposed (intent to use) AKEA application. The TTAB held that this was the critical date, because §43(c) only provides a cause of action against use of a mark commenced after the mark allegedly diluted became famous. The TTAB did not consider, or pass judgment on, whether the IKEA mark could now support a dilution claim. Read More ›