January 2019

Government Shutdown’s Impact on USPTO

Takeaway: If the government shutdown resumed for a longer period of time than we just witnessed, we may have seen a reduction of operations at the USPTO.

As of now, the USPTO was not affected by the government shutdown. This is because the USPTO had previously built up financial reserves in case of a situation like this. With that said, because the USPTO is a part of the federal government, they may have to reduce their operations if the government shutdown resumes.

The USPTO made an announcement on January 24, 2019 indicating that they may run out of operational funds if the government shutdown resumed. The reason they would have run out of funds is not because they were not bringing in enough to operate, but rather, because they were not allowed to access funds that they had collected since the government began its shutdown in December. The USPTO is only allowed to use funds that were collected before a government shutdown began, which could have run out if the shutdown had continued.

If the USPTO were to shut down along with the other federal governmental agencies, they would have tried to remain operational in a limited capacity. The USPTO expected that they would continue to accept applications and maintain their information technology systems. This means that they would still collect fees and accept applications through their electronic filing systems.

McDonald’s Loses Trademark Battle in European Union

Takeaway: Make sure you properly document your trademark use because if you do not use your trademark, you may lose your rights in the mark.

Recently, the European Union Intellectual Property Office ruled on a case between Supermac’s, an Irish burger chain, and McDonald’s. The dispute pertained to the similarity between the name Supermac’s and McDonalds’ “Big Mac.”

The European Union Intellectual Property Office ruled that McDonald’s did not present proper evidence to show that it maintained its trademark rights in the European Union. McDonald’s used internal documentation and a Wikipedia page to show that the Big Mac trademark was “put to genuine use in the union for the goods or services for which it was registered.” This means McDonald’s loses its rights to enforce the Big Mac name as a trademark in Europe because it did not properly use the mark over the past five years.

This was a big win for Supermac’s, who is looking to expand their chain into the European Union, and can now do so without infringing McDonalds’ Big Mac name.

Photo Credit: https://www.msn.com/en-us/money/topstories/mcdonalds-loses-big-mac-trademark-after-legal-battle-with-irish-chain/ar-BBSiB72?li=AAadgLE

Supreme Court Interprets the On-Sale Rule Under AIA

Takeaway: Even secret sales and licenses of a product could count against you under the on-sale bar. Make sure to file a provisional application sooner than later to preserve your rights in an invention if you plan on marketing the product for funding.

In the recent case of Helsinn Healthcare S.A. v. Teva Pharmaceuticals USA, Inc., the Supreme Court unanimously decided that the language of the AIA did not change the “on-sale” rule in patent law.

The on-sale rule in our patent system states that if an invention is sold more than a year before a patent application was filed, that patent may be invalidated. If the on-sale rule is violated, a person or entity will not be able to obtain patent protection over the invention for which they seek protection.

This case was important because the language of this rule was modified under the AIA back in 2011 to include “or otherwise available to the public.” Attorneys have argued that this language indicates that a “secret” sale would not count as being invalidating because it was not “otherwise available to the public.”

However, the Supreme Court just determined that this added language did no such thing. Any sale or license more than a year before filing an application counts as being on sale and can prevent you from obtaining patent protection.

This is why it is more important than ever to get a provisional application on file so you do not lose rights in your invention. A provisional application is a preliminary application that is not examined, but rather holds your place in line (to prevent others from filing first) and preserves your rights in the invention in the case of public disclosure. With a provisional application, you buy yourself an additional year to develop a prototype or market your invention before you have to file a full non-provisional application.

If you are interested in filing a provisional application today, check out www.patentfiler.com to preserve your rights in your latest invention.

Dallas Mavericks File Trademarks for Luka Doncic’s Nicknames

Takeaway: Always consider your future relationship with an entity if you plan on assigning rights to a trademark to that entity.

Recently, the Dallas Mavericks filed trademark applications for THE MATADOR and EL MATADOR. These names are commonly known as nicknames for their most recent star player, Luka Doncic, who is in his NBA rookie season but previously played in Europe for Real Madrid before joining the NBA.

This becomes an interesting question of ownership because the name is actually associated with Luka Doncic himself, rather than the Dallas Mavericks. Therefore, the Mavericks will actually need Doncic’s permission to be granted trademark rights in the nickname. If Doncic does sign over his rights in the nickname, the question will turn to what will happen if he is traded or decides to leave when he becomes a free agent. The entities may want to consider entering into a co-existence or concurrent use agreement for future purposes so as to prevent future legal issues if he moves on from the team.

These are important future considerations for both individuals and entities when filing for trademark applications. Make sure you consider the future ramifications of assigning your rights to a trademark before you enter into an agreement to do so.

Photo Credit: https://www.si.com/nba/2018/11/29/luka-doncic-mavericks-real-madrid-dirk-nowizki-rick-carlisle

Supreme Court to Review Eligibility of “Scandalous” Trademarks

Takeaway: We may have more clarity as to whether “scandalous” matter may be trademarked in the near future.

The Supreme Court will review the Federal Circuit’s decision to strike down a rule that prevented the registration of “scandalous” trademarks in the USPTO. This grant of certiorari to Iancu v. Brunetti comes in the wake of Matal v. Tam, which struck down a ban of “disparaging” trademarks.

Both cases concern the following statute:

No trademark … shall be refused registration … on account of its nature unless it—

(a) Consists of or comprises immoral, deceptive, or scandalous matter; or matter which may disparage or falsely suggest a connection with persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute…

Although Matal v. Tam ruled that “disparaging” trademarks cannot be denied registration on the basis of their “disparaging” character, the USPTO argues in its appeal that the ban on “scandalous matter” may survive the ruling.

As did the Matal v. Tam case, this case will concern the limits of the First Amendment and will likely decide the fate of several pending cases at the USPTO including the “vulgar” trademark at hand.

European Union will Cancel Your Domain Name if You are a UK-Based Business

Takeaway: If you have an online business or run a website of any kind from the United Kingdom with a .eu suffix, you will have to secure new rights in the domain name soon.

European Union regulation says that any businesses operating a website within the UK that currently has the .eu suffix will either have to transfer ownership of that website to a business in the European Union or change the suffix of its domain name.

Domain name owners will have until May 30, 2019 to transfer ownership of their domain names or they will lose registration. Those who lose registration will have their domain names withdrawn by the European Union. To qualify as a business that operates a website under a .eu suffix the business must have its principal place of business, registered office, or administration in the European Union. Alternatively, if you are a natural person who is a resident of the European Union, you may qualify for a .eu suffix as well.

The European Union has stated that all effected domain names will be revoked after 12 months from Brexit. However, the good news is that the domain name will remain in the .eu registry and may be reclaimed if the business eventually complies with the ownership requirements of the .eu suffix.

EU Trademark Owners Need to File in the UK to Be Safe

Takeaway: Although the UK says it will honor EU trademarks for an initial period , it is recommended to file a UK trademark application now.

After Brexit becomes effective and the United Kingdom secedes from the EU, it is unsure whether European trademarks will have protection in the UK. In order to protect your trademark rights in the UK, you must file a new separate application before official the Brexit date, March 29, 2019.

The British Patent Office recognizes that this is a large issue that needs to be resolved, although it is unknown if the House of Commons will be able to pass any legal provisions before the March 29th exit.

In an abundance of caution, it is best to file for trademark protection in the United Kingdom now, rather than wait to see if the House of Commons resolves this issue.

Photo Credit: https://briefingsforbrexit.com/no-deal-is-no-nightmare-facts-about-eu-trade-after-brexit/

Federal Circuit Rules on Patent Term Adjustment

Takeaway: If there is nothing you can do to advance prosecution in a patent application, you should have the right to a patent term adjustment in your favor based on that period of time.

On January 23, 2019 the Federal Circuit ruled against the USPTO’s interpretation of the patent term adjustment statute. Patent term adjustment is a concept that allows the USPTO to extend the term of a patent because of delays in prosecution of the patent application.

In the case, Supernus Pharmaceuticals was appealing the amount of time that should be added to its patent term after the patent was granted. The USPTO was arguing that Supernus filed a request for continued examination and it took Supernus 546 days to file an information disclosure statement, which was needed to continue with prosecution of the application. However, there was an opposition proceeding on the same application pending in Europe, which would affect the information disclosure statement that they needed to file.

The Federal Circuit determined that there was nothing Supernus could do to advance prosecution during that period, and therefore, the USPTO was incorrect to deny Supernus a patent term adjustment to cover that period of time.

What to Look for to Prevent Hacks and Scams via E-Mail

Takeaway: Be cautious with e-mails that look suspicious because they may be fraudulent or malicious.

Have you received e-mails that look very real but that actually came from an unidentified source? Recently, these lookalike e-mails (also known as “phishing e-mails”) have been increasing with more and more sophistication. These e-mails are sent out to people to make them think it is coming from a legitimate business such as Amazon or Apple. The e-mail may be telling customers about one of their orders or other information; however, they are fake and an attempt to get you to click on the links within the e-mail or “update” your information. Once you have been deceived by the e-mail, there can be a number of consequences anywhere from identity theft to ransomware.

So what can you do to prevent being deceived by fake e-mails?

The first policy you want to implement is to not click on links in any e-mail unless you know exactly where it is coming from. Additionally, something called “spoofing” happens frequently and is very easily accomplished by hackers. “Spoofing” is a fraudulent or malicious practice in which an e-mail is sent from an unknown source, and the true source is disguised as a source known to the receiver of the e-mail. Businesses see this a lot; for example, a boss’s name and lookalike e-mail address may be used to reach out to people at the business when in reality the e-mail is really coming from a malicious source. For this reason, check the e-mail address to make sure it is actually coming from the correct e-mail address.

For example, if you receive an e-mail from your boss and you work at ABC Corp., you may normally see the following:

Joe Boss <[email protected]>

However, a common way a hacker may try to deceive you is to send you an e-mail looking like the following:

Joe Boss <[email protected]>

Notice how the hacker used “service” before the typical abccorp.com that you would see in the e-mail address line. This is how some phishing e-mails will be sent. Clicking on links or responding to such e-mails can cause you serious damage.

Some additional measures you can take to make sure you are not scammed or hacked are the following:

  • Do not provide any information that is requested from websites that do not have “https” in the beginning of the web address you are clicking on. For example: https://www.google.com/
  • Do not click on links, but rather, call the company directly to make sure the e-mail you have been sent is legitimate.
  • Do not call any phone number listed on the e-mail (because this could be fake too); instead, look up the company and their customer service phone number in a separate browser to make sure you are accessing the legitimate company’s website.
  • Use different passwords for ALL of your accounts and make sure that the passwords do not have anything to do with your personal life. Sometimes hackers are able to guess passwords based on social media or internet research of a person.
  • Never open e-mails that are from senders you do not know.
  • Make sure you delete messages that look suspicious right away. Then delete that file from your deleted folder.

Cislo & Thomas LLP Spotlight

Mark Nielsen Awarded Super Lawyer®

Congratulations to Cislo & Thomas Attorney Mark D. Nielsen, on being named a 2019 Super Lawyer®!

Mark is an experienced IP litigator, effective advocate for our clients, and has been with Cislo & Thomas LLP for 15 years.

Great work, Mark!