IP Blog

Trademark Owners Beware: Missing Section 8 Deadline Means Automatic Cancellation Takeaway: Trademark owners should be aware that if they or their attorney fail to file the required documents, the registration will be cancelled, and by law, it cannot be reinstated. The U.S. Supreme Court has agreed to hear a case from Cox Communications challenging a […]

Takeaway: Pepperdine University has filed a trademark infringement lawsuit against Netflix and Warner Bros. for using the university’s branding in Running Point, emphasizing the importance of protecting its identity and values.

Wishing You a Happy Holidays and to a joyous 2025! – from your Cislo & Thomas LLP Family –

Takeaway: Companies need to be careful when using non-compete provisions in agreements, as they are typically non-enforceable. Recent changes in California law and a vote from the Federal Trade Commission (FTC) have expanded employees’ abilities to challenge noncompete agreements, posing possible challenges for employers, particularly in technology companies and during mergers and acquisitions. According to […]

Takeaway: Brooklyn prosecutors charged Klaus Pflugbeil and his Chinese partner with trying to sell Tesla’s battery technology secrets, leading to Pflugbeil’s arrest for sending trade secrets to undercover agents and a possible 10 year prison sentence.

Cislo & Thomas LLP, the premiere Intellectual Property Law Firm in West Los Angeles/Santa Monica, Westlake Village, and Santa Barbara, California, will attend the 146th Annual Meeting of the International Trademark Association in Atlanta, Georgia. Please stop by our Booth No. 454 to learn more about the advantages of our cost-effective Intellectual Property matters at […]

Takeaway: The U.S. Supreme Court declined to review a case in which the Ninth Circuit had determined that Amazon resellers could face trademark infringement lawsuits in Arizona. This decision arose from a complaint by Herbal Brands Inc., with the resellers presenting an argument centered around a jurisdictional divide linked to nationwide shipping.

Takeaway: Fonts are valuable intellectual property, and using them without proper licenses can lead to serious legal issues.

Takeaway: Walmart and Amazon both offer useful brand registration tools that help companies manage their intellectual property, though each have their own strengths.

Takeaway: In a divided ruling, the Federal Circuit panel decided that the USPTO lacked the authority to cancel a trademark registration due to an erroneous incontestability filing, highlighting that incontestable status is distinct from the initial registration.

Takeaway: The Federal Copyright Office has determined that a tattoo artist’s contributions to designs make them eligible for copyright protection. The U.S Copyright Office has responded to a dispute between tattoo artist James Hayden and Take-Two Interactive, a gaming company, regarding the use of copyrighted tattoo designs in the NBA 2K video game series. The […]

Takeaway: LegalForce hits Google with arbitration dispute for allowing unverified legal services to advertise through the tech giant, contending Google does not take adequate measures to protect its users.

Takeaway: The USPTO launches First-Time Filer Expedited Examination Pilot Program to encourage innovation and allow small businesses and individuals to get to market quicker.

Takeaway: The USPTO is launching an awards program, recognizing trademark owners who help solve humanitarian problems.

Takeaway: The American Bar Association is being sued for a data breach. This occurrence is a reminder that all companies need to ensure they are maintaining cybersecurity compliance.

Takeaway: As artificial intelligence is becoming rapidly more important, the USPTO is asking the public for comments on its role in patent law moving forward, such as who can be the inventor of their innovations and what they create.

Takeaway: If you have applied for or received a trademark, be vigilant against scammers looking for personal information. When in doubt, consult an attorney if you are contacted from an agency claiming to be the USPTO.

Takeaway: While many think Artificial Intelligence (AI) will replace lawyers in the future, it is more likely that AI will help lawyers produce higher-quality work.

Takeaway: The U.S. Patent and Trademark Office (USPTO) launched a new tool online to help business owners and inventors identify and protect their intellectual property. The USPTO launched its new Intellectual Property (IP) Identifier tool. Designed for those who are less familiar with IP, this virtual resource enables users to identify if they have the […]

Takeaway: When drafting licensing and trademark agreements, use clear and specific language to avoid future confusion.

Takeaway: The Supreme Court will decide whether the Lanham Act applies abroad to purely foreign sales. The U.S. Supreme Court granted certiorari to review the case Abitron Austria GmbH et al. v. Hetronic International Inc. This Supreme Court decision could clarify the Lanham Act’s geographic scope. The petitioners are German and Austrian companies who are […]

Takeaway: Jeffrey Sheldon, Esq. and Katherine Bond, Esq. of Cislo & Thomas win Ninth Circuit case, establishing new law allowing plaintiffs to serve foreign defendants without needing to use the Hague Convention for foreign process. The Ninth Circuit Court of Appeals issued a decision, setting precedent and resolving a split among the circuits regarding the […]

Takeaway: Starting December 3, 2022, trademark applicants will have a shorter time period to respond to official letters from the USPTO. In an effort to shorten the trademark application process, the USPTO has decided to shorten the time for applicants to respond to trademark office actions from six months to three months. For a fee, […]

Takeaway: Under existing U.S. copyright law, Winnie the Pooh now belongs to the public domain.

Takeaway: The U.S. Patent and Trademark Office is taking fraud more seriously after making a major discovery about a Chinese company abusing the system. The USPTO made a recent announcement that it had discovered fraudulent activity from China-based company Shenzhen Haiyi Enterprise Management Co. Ltd. The company allegedly used the name of an attorney of […]

Cislo & Thomas attorneys Jeffrey Sheldon and Katherine Bond recently argued an important trademark case before the 9th Circuit Court of Appeals in Pasadena. In a civil lawsuit, it can be challenging and costly to serve a foreign defendant in a U.S. lawsuit if that defendant does not have a U.S. agent or location. The […]

Takeaway: A 12-year-old virtual reality company, also called Meta, is suing Facebook for trademark infringement over its new name.

Takeaway: NBC Universal filed a lawsuit related to its show “The Office.”

Takeaway: Photographers challenge the “server test” outlined by the Ninth Circuit stating that the test should not be used to protect those who use an embedding tool to aid infringement by third-party websites.

Takeaway: After a misstep by the U.S. Patent and Trademark Office, tens of thousands of applicants became vulnerable to scammers, but the USPTO says it is diligently working on ensuring that this issue would not occur again. The USPTO said it was “recently made aware” of an incident occurring on May 24 in which courtesy […]

Takeaway: Andy Stone is suing Mariah Carey for copyright infringement over her famous song, “All I Want for Christmas is You,” claiming that his intellectual property rights were willfully infringed.

Takeaway: Stealing trade secrets in the U.S. is a serious crime that may be punishable with a lengthy sentence and hefty fine.

The Tech Sector Controls Utility Patents But Is There a Halt in Innovation? Out of the top 25 companies with the most patents granted in 2021, 16 of them belong to the technology sector despite utility patents not being limited to the tech sector. In fact, thousands of companies from all sectors apply for utility […]

Takeaway: The U.S. Supreme Court has taken up the confusing copyright fair use question of transformative use and the line between artistic expression and free speech versus an author’s copyright rights to exclude unauthorized uses of derivative works. This should provide better guidance as to what is and is not allowable use under Copyright Law.

Takeaway: Although the EU UPC is set to launch in the next few months, there are several questions that the court will need to face, including legal challenges and Brexit.

Prepared by Cislo & Thomas LLP Attorney Mark D. Nielsen, Ph.D. 1. In a recent opinion from the First Circuit Court of Appeals, the Court affirmed the District of Massachusetts’ dismissal of a trademark infringement case for lack of personal jurisdiction. The defendant in the case was a Canadian company that operated a “primarily informational” […]

Prepared by Cislo & Thomas LLP Attorney Mark D. Nielsen, Ph.D. 1. In a recent opinion from the Federal Circuit, the Court ordered Judge Rodney Gilstrap of the Eastern District of Texas to transfer a patent case against Netflix to the Northern District of California. Judge Gilstrap adopted the recommendation of the Magistrate Judge to […]

Prepared by Cislo & Thomas LLP Attorney Mark D. Nielsen, Ph.D. 1. In a recent decision from the Trademark Trial and Appeal Board (TTAB), Spotify prevailed in its opposition to registration showing that the applied-for mark POTIFY (used in connection with location, review, and other information for medical marijuana dispensaries) would dilute the distinctiveness of […]

Takeaway: It is more important than ever to review patent applications during research and development to ensure that the key invention is fully covered. The U.S. Court of Appeals for the Federal Circuit recently invalidated two separate pharmaceutical patents (Indivior’s opioid addiction treatment Suboxone and Biogen’s multiple sclerosis drug Tecfidera) for not meeting the requirement […]

Prepared by Cislo & Thomas LLP Attorney Mark D. Nielsen, Ph.D. 1. The United States Patent and Trademark Office (USPTO), in furtherance of its ongoing efforts to combat fraudulent trademark applications, recently posted a Notice in the Federal Register setting forth administrative procedures for investigating potentially improper trademark applications (brought to the USPTO’s attention through […]

Prepared by Cislo & Thomas LLP Attorney Mark D. Nielsen, Ph.D. 1. In a recent decision from the District of South Carolina, Charleston Division (a beautiful courthouse), the Court denied a motion to dismiss copyright and DMCA claims concerning a photograph appearing on several real estate company web pages. The defendants noted that the photograph […]

Takeaway: As technology advances, trademark registration certificates are no longer issued in paper form.

Prepared by Cislo & Thomas LLP Attorney Mark D. Nielsen, Ph.D. 1. In a recent opinion from the Federal Circuit Court of Appeals, the Federal Circuit dismissed portions an appeal from a Trademark Trial and Appeal Board (“TTAB”) decision in a trademark where the opposer lacked standing to proceed with an appeal to a federal […]

Prepared by Cislo & Thomas LLP Attorney Mark D. Nielsen, Ph.D. 1. The United States Patent and Trademark Office (USPTO) gave legitimate trademark applications a gift by sanctioning a Chinese company and its director for submitting over 15,000 bogus trademark applications that violated various USPTO rules. The sanction was to terminate all of the trademark […]

Takeaway: Successful products will always have copycats, so it is important to always protect your intellectual property and be on the hunt for alleged infringers.

Prepared by Cislo & Thomas LLP Attorney Mark D. Nielsen, Ph.D. 1. In what is probably old news at this point, Judge Alan Albright of the Western District of Texas was again ordered by the Federal Circuit Court of Appeals to transfer multiple cases out of his district. The battle between the Federal Circuit and […]

Prepared by Cislo & Thomas LLP Attorney Mark D. Nielsen, Ph.D. 1. Following up on a recent post (Takeaway No. 1), the Cleveland Major League Baseball team, which will soon rebrand from the “Indians” to the “Guardians,” settled a trademark lawsuit filed against it by the Cleveland Guardians roller derby club. The details of the […]

Takeaway: The well-known Fintiv rule, which states that the Patent Trial and Appeal Board (PTAB) must not hear patent validity challenges if the same patent proceeding is pending in a parallel U.S. district court, could soon be jolted if Senator Leahy succeeds in getting enough support to pass his new bill aimed at redefining what […]

Prepared by Cislo & Thomas LLP Attorney Mark D. Nielsen, Ph.D. 1. A recent opinion from the Federal Circuit Court of Appeals vacated a grant of summary judgment of non-infringement and reversed the denial of a motion for judgment on the pleadings based on Section 101/Alice. The plaintiff asserted a patent directed to an improved […]

Prepared by Cislo & Thomas LLP Attorney Mark D. Nielsen, Ph.D. 1. In a recent opinion from the Federal Circuit Court of Appeals, the Court addressed whether a finding of inequitable conduct automatically rendered a case “exceptional” under 35 U.S.C. 285 for purposes of fee awards in patent cases. After noting that an exceptional case […]

Prepared by Cislo & Thomas LLP Attorney Mark D. Nielsen, Ph.D. 1. The Cleveland Guardians roller derby team has filed a lawsuit against the Cleveland Indians baseball team (which is about to change its name from “Indians” to “Guardians.” The Guardians are a non-profit roller derby team that has apparently been using the CLEVELAND GUARDIANS […]

Takeaway: If your employees are drafting creative materials for your company, take note in the employment agreement if the work is a work made for hire. Artists (or their estates) may lose their right to terminate a grant of copyrighted work and recapture their rights if it is a work made for hire, and thus […]

Prepared by Cislo & Thomas LLP Attorney Mark D. Nielsen, Ph.D. 1. In a recent opinion from the Federal Circuit Court of Appeals, the Court reversed ruling from Judge Connolly of the District of Delaware in which he granted a motion for judgment on the pleadings that a remote user multi-factor authentication method patent was […]

Prepared by Cislo & Thomas LLP Attorney Mark D. Nielsen, Ph.D. 1. In a recent opinion from the Federal Circuit Court of Appeals, the Court reinstated a jury verdict of willful patent infringement and the Court’s resultant doubling of damages based on the willfulness finding. The original jury verdict of willful infringement and the Court’s […]

Prepared by Cislo & Thomas LLP Attorney Mark D. Nielsen, Ph.D. 1. In a recent decision out of the Northern District of California in a patent case, the Court granted a motion to strike an inequitable conduct defense with leave to amend, denied without prejudice a motion for judgment on the pleadings on a Section […]

Takeaway: The USPTO finalizes rules of those who can take the patent bar examination and practice before the U.S. Patent Office, specifically by expanding the list of accepted degrees or additional necessary training requirements. The U.S. Patent and Trademark Office released a notice that it is going to open up the pool of who is […]

Prepared by Cislo & Thomas LLP Attorney Mark D. Nielsen, Ph.D. 1. A recent sua sponte order from the Federal Circuit Court of Appeals on September 16, 2021 in In re Boloro Global Limited extended the Supreme Court’s Arthrex “fix” in connection with inter partes reviews to ex parte appeals of rejected patent applications. We […]

Prepared by Cislo & Thomas LLP Attorney Mark D. Nielsen, Ph.D. 1. In a recent decision out of the Central District of California on a motion to dismiss, the Court held that the plaintiff had stated a viable claim for trademark infringement against a third-party celebrity endorser (or influencer) of a beauty product. More specifically, […]

Takeaway: Generation Z, over other generations, is increasingly falling victim to cyber crimes at a rate of over 150% over the last few years. A recent study has found that individuals aged 20 and younger are increasingly falling victim to cyber-related crimes. According to a study by Social Catfish, the rate at which our younger […]

Prepared by Cislo & Thomas LLP Attorney Mark D. Nielsen, Ph.D. 1. In an amended opinion, the Second Circuit Court of Appeals reached the same finding of no fair use in the dispute between photographer Lynn Goldsmith and the Andy Warhol Foundation in connection with a photograph of Prince, which was subsequently embellished in the […]

Prepared by Cislo & Thomas LLP Attorney Mark D. Nielsen, Ph.D. 1. The Federal Circuit Court of Appeals seems to have opened the door for courts to take judicial notice of web captures from the Wayback Machine internet archive for purposes of prior art. This is good news for patent challengers. Patent owners, however, should […]

Takeaway: The USPTO’s behavior is looking suspicious after a former Head of Patents for Google assists in invalidating patents that Google was allegedly infringing.

Prepared by Cislo & Thomas LLP Attorney Mark D. Nielsen, Ph.D. 1. The Federal Circuit reversed two final written decisions of the Patent Trial and Appeal Board (PTAB) based on errors in the PTAB’s obviousness analysis. The PTAB invalidated claims in two patents directed to an extrusion process for coating and insulating communication cables with […]

Prepared by Cislo & Thomas LLP Attorney Mark D. Nielsen, Ph.D. 1. In a recent decision out of the Northern District of California in a patent case, the district judge adopted a Special Master’s $5.9 million fee award, and also denied a motion for sanctions in which the prevailing defendant sought to recover expert fees […]

Takeaway: From now until September 7, the USPTO wants to hear public comments towards improving patent eligibility and its impact on innovation.

Prepared by Cislo & Thomas LLP Attorney Mark D. Nielsen, Ph.D. 1. In a very helpful opinion from the Ninth Circuit, the Court addressed the issue of “use in commerce” in connection with federal, intent-to-use trademark applications. Basically, the plaintiff filed an intent-to-use trademark application for MEMOJI in connection with mobile software applications. At some […]

Prepared by Cislo & Thomas LLP Attorney Mark D. Nielsen, Ph.D. 1. In a trademark dispute relating to one of the early L.A. “hair metal” bands, Ratt, Judge Dean Pregerson in the Central District of California entered a default judgment against a partnership associated with original Ratt member, Bobby Blotzer. The default judgment included a […]

Prepared by Cislo & Thomas LLP Attorney Mark D. Nielsen, Ph.D. 1. In an interesting case out of the Georgia state court system that we previously wrote about (Takeaway No. 3), the Georgia Supreme Court agreed to review the decision in the case between Google and Edible Arrangements about, among other things, auctioning of the […]

Takeaway: California Attorney General Bonta has taken significant steps in enforcing the CCPA in the past year, as well as launching a new online Consumer Privacy Tool, making it easier for consumers to request their personal information not be sold.

Prepared by Cislo & Thomas LLP Attorney Mark D. Nielsen, Ph.D. 1. In a recent opinion from the Federal Circuit Court of Appeals, the Court affirmed a district court’s updating its claim construction and grant of summary judgment of non-infringement. Judge Schroder of the Eastern District of Texas, in a patent case involving mattress technology, […]

Prepared by Cislo & Thomas LLP Attorney Mark D. Nielsen, Ph.D. 1. In a recent and very practical opinion from the Federal Circuit Court of Appeals, the Court clarified the applicable pleading requirements for patent infringement claims. The Court noted that pleading infringement on a claim element by claim element basis is not required. A […]

Takeaway: Assignor Estoppel is applicable in limited circumstances for patent inventors or owners who assign their patents, and then later claim the patents are invalid. The U.S. Supreme Court narrowed the circumstances in which inventors can challenge their own patents. For multiple reasons, inventors may wish to challenge their own patents, including instances where they […]

Prepared by Cislo & Thomas LLP Attorney Mark D. Nielsen, Ph.D. 1. In a recent opinion from the Ninth Circuit Court of Appeals, which we previously wrote about (Takeaway No. 1), the Court affirmed the denial of a motion for preliminary injunction in a trademark case. The Court found no abuse of discretion by the […]

Takeaway: There has been an unforeseen surge in U.S. trademark filings over the last year causing delays in processing, and the USPTO is working to implement new technology for faster application processing.

Prepared by Cislo & Thomas LLP Attorney Mark D. Nielsen, Ph.D. 1. In a recent opinion from the Northern District of Illinois, the Court allowed plaintiff Sioux Steel discovery of factual details and technical matters related to a defendant’s designing around the patented technology. The Court was clear to draw lines and prevent discovery into […]

Prepared by Cislo & Thomas LLP Attorney Mark D. Nielsen, Ph.D. 1. Following the Supreme Court’s recent decision in the Arthrex case, which side-stepped a finding of unconstitutionality in connection with the appointment of Patent Trial and Appeal Board (PTAB) judges by requiring the availability of discretionary USPTO Director review of PTAB final written decisions, […]

Prepared by Cislo & Thomas LLP Attorney Mark D. Nielsen, Ph.D. 1. In a recent opinion from the Ninth Circuit Court of Appeals, the Court affirmed Rule 11 sanctions against a plaintiff and its attorney for filing a lawsuit against Crocs based on a verifiably inaccurate allegation, and for an improper purpose. More specifically, the […]

By: Katherine Bond and Jeffrey Sheldon Two unknowns of European trademark law were just answered in a case involving one of the oldest and largest wineries in Los Angeles, San Antonio Winery: First, can it be trademark infringement to manufacture a product in Italy with a mark that is alleged to be confusingly similar to […]

Prepared by Cislo & Thomas LLP Attorney Mark D. Nielsen, Ph.D. 1. A renewed effort to move forward the bipartisan, anti-counterfeiting “Shop Safe Act” bill is afoot. The bill focuses on incentivizing e-commerce platforms to take steps, among other things, to verify sellers’ identities, and to remove sellers and their products where there are repeat […]

Prepared by Cislo & Thomas LLP Attorney Mark D. Nielsen, Ph.D. 1. In a recent opinion from the Fifth Circuit Court of Appeals, the Court affirmed a summary judgment of no likelihood of confusion, but reversed a cancellation of a trademark as to abandonment or lack of a bona fide use of the mark. The […]

Takeaway: The USPTO is of the position that real name trademarks should not qualify for trademark registration. The USPTO asked that the appeals court for the Federal Circuit uphold a provision barring registration of any trademark that identifies a “particular living individual.” This rule was used just last year to deny registration of the phrase […]

Prepared by Cislo & Thomas LLP Attorney Mark D. Nielsen, Ph.D. 1. The Federal Circuit Court of Appeals seems, at times, to treat the Section 101/Alice/abstract idea issue in the same way Justice Potter Stewart treated the issue of whether something was pornography as reflected in his famous quote from Jacobellis v. Ohio – “I […]

Takeaway: U.S. Patent and Trademark Office reaches new milestone in American innovation and ingenuity.

Prepared by Cislo & Thomas LLP Attorney Mark D. Nielsen, Ph.D. 1. In a recent decision from the Southern District of California, the parent entity that owns the San Diego Padres baseball team sued a former concessionaire in the Padres’ stadium {Petco Park) for trademark infringement and unfair competition where the concessionaire did not cease […]

Takeaway: Walmart claims Yeezy’s attempt to register a sunburst logo will cause consumer confusion in the marketplace.

Prepared by Cislo & Thomas LLP Attorney Mark D. Nielsen, Ph.D. 1. In a recent opinion from the Eleventh Circuit Court of Appeals, the Court affirmed the dismissal of a complaint for, among other things, trademark infringement where the plaintiff was unable to demonstrate that it owned protectable trademark rights. First, the Court noted the […]

Prepared by Cislo & Thomas LLP Attorney Mark D. Nielsen, Ph.D. 1. A recent order from the Second Circuit of Appeals requested briefing from the defendants in the recent Andy Warhol-Prince fair use case as to whether the Google v. Oracle decision from the Supreme Court has any impact on the Second Circuit’s recent fair […]

Takeaway: Even the largest companies are susceptible to trade secret theft, so take the careful and necessary steps to protect your intellectual property.

Prepared by Cislo & Thomas LLP Attorney Mark D. Nielsen, Ph.D. 1. In a recent decision from the Trademark Trial and Appeal Board, the parent company for Timberland had its ex parte appeal of the denial of a trade dress registration for its boot design affirmed. Timberland filed a trade dress application for the design […]

Prepared by Cislo & Thomas LLP Attorney Mark D. Nielsen, Ph.D. 1. In keeping with the ongoing discussion of fair use in copyright law, another recent decision from the Second Circuit Court of Appeals found that the Metropolitan Museum of Art’s use on its website of a photograph of Eddie Van Halen and his “Frankenstein” […]

Takeaway: Recent new modifications to the CCPA, which assist consumers with the ability to request that businesses do not sell their personal information, require that you review your consumer practices and make sure they are compliant.

Prepared by Cislo & Thomas LLP Attorney Mark D. Nielsen, Ph.D. 1. In a recent opinion from the Ninth Circuit, the Court reversed a finding of fair use in connection with a copyright infringement claim in a “mash-up” between a Dr. Seuss story and Star Trek. A “mash-up” is a work that combines elements from […]

Prepared by Cislo & Thomas LLP Attorney Mark D. Nielsen, Ph.D. 1. In a decision from the Western District of Wisconsin in a utility patent case from the furniture industry, a patent owner accused Ashley Furniture of infringement based on a bed having a multi-part leg that can be assembled in different ways to vary […]

Prepared by Cislo & Thomas LLP Attorney Mark D. Nielsen, Ph.D. 1. In a recent opinion from the Federal Circuit, the Court reversed significant portions of a decision in a messy patent case from the Central District of California. The patented technology was directed to a diaper pail system to collect soiled diapers. The district […]

Prepared by Cislo & Thomas LLP Attorney Mark D. Nielsen, Ph.D. 1. This is a fun one – remember the Alan Parsons Project, and its songs like, “I Wouldn’t Want to be Like You”? Well, Alan Parsons is still around, and he entered into an agreement with an entertainment company to seek and promote live […]

Takeaway: Tax credits are a great incentive for small businesses and independent inventors to file patents. As of 1981, the federal Research and Development (R&D) Tax Credit allows a tax credit of up to 13 percent of eligible spending for new and improved products and processes. In order to qualify for the tax credit, research […]

On Monday, March 15, 2021, the Attorney General of California, Xavier Becerra announced new regulations that will be implemented into the California Consumer Privacy Act of 2018 (“CCPA”), effective immediately. The new changes to the law have been integrated into the section of CCPA that addresses the requirements for providing notice of a consumer’s right […]

Prepared by Cislo & Thomas LLP Attorney Mark D. Nielsen, Ph.D. 1. Recently, a jury in the Western District of Texas found that Intel infringed two of plaintiff VLSI’s patents, and tagged Intel with damages in excess of $2 billion (yes, with a “b”). The Verdict Form (thanks to IP Watchdog) is here. This is […]

Takeaway: In light of major company data breaches, smaller companies need to be mindful and take action to protect against any cyber incidents and breaches. Recently, news broke that the world-renowned law firm Jones Day experienced a third-party data breach. Only a few days ago, Kroger, the large grocery chain, made headlines itself when it […]

Prepared by Cislo & Thomas LLP Attorney Mark D. Nielsen, Ph.D. 1. In a recent Federal Circuit opinion, the Court ruled that a patent owner that takes contradictory positions on patent language during prosecution of that application relative to subsequent reexaminations of the same patent compromises the public notice function of patents (i.e., that patent […]

Prepared by Cislo & Thomas LLP Attorney Mark D. Nielsen, Ph.D. 1. Following up on Takeaway No. 3 from last week, after the Federal Circuit ordered Judge Albright of the Western District of Texas to rule on a motion to transfer, and with Judge Albright then denying the motion, the defendant again sought mandamus relief […]

Takeaway: Jury Trials hosted on Zoom are becoming more common due to COVID.

Prepared by Cislo & Thomas LLP Attorney Mark D. Nielsen, Ph.D. 1. In a recent opinion from the Federal Circuit Court of Appeals, the Court reiterated its position that the USPTO’s Subject Matter Eligibility Guidance articulated under former Director Iancu is not binding on the courts. In regards to the Guidance, the Federal Circuit stated, […]

Prepared by Cislo & Thomas LLP Attorney Mark D. Nielsen, Ph.D. 1. In what is often a “gray area” issue in trademark and unfair competition litigation, the Fourth Circuit Court of Appeals recently issued an opinion concerning whether laches or a statute of limitations applies to Lanham Act claims. Leaving the long and winding history […]

Prepared by Cislo & Thomas LLP Attorney Mark D. Nielsen, Ph.D. 1. In a follow up to Takeaway No. 1 from last week, the jury trial by Zoom reached a verdict of willful patent infringement and a damages award of $4 million. Are Zoom jury trials going to take hold, or will they be temporary? […]

Prepared by Cislo & Thomas LLP Attorney Mark D. Nielsen, Ph.D. 1. Judge Thomas S. Zilly of the Western District of Washington recently released an “Order for Remote/Virtual Civil Jury Trial” that has been garnering some positive headlines as a very detailed, thorough set of procedures and protocols for conducting a civil jury trial via […]

Prepared by Cislo & Thomas LLP Attorney Mark D. Nielsen, Ph.D. Embellishing on a recent post, the COVID relief package at the end of 2020 contained interesting IP-related provisions, including the Trademark Modernization Act and the Copyright Alternative Small-Claims Enforcement Act. These are the standalone versions of the bills, which are the same or nearly […]

Prepared by Cislo & Thomas LLP Attorney Mark D. Nielsen, Ph.D. 1. The Ninth Circuit Court of Appeals recently held that conduct that pre-dates the passage of the Defend Trade Secrets Act (DTSA) in 2016 can be actionable under the DTSA if the conduct continued after the DTSA became law. Some state laws have provisions […]

Prepared by Cislo & Thomas LLP Attorney Mark D. Nielsen, Ph.D. 1. The Second Circuit Court of Appeals affirmed a portion of a counterfeiting verdict against a landlord that took “insufficient steps to root out the counterfeiting it knew or should have known was occurring.” A jury in the Southern District of New York had […]

Takeaway: Protecting short, online text postings has become much easier, particularly for bloggers and other online authors. In August of this year, the U.S. Copyright Office amended its regulations to establish a new “group registration” option for “short online literary works.” For this new registration option, each work must contain at least 50 but no […]

Prepared by Cislo & Thomas LLP Attorney Mark D. Nielsen, Ph.D. 1. Many of us love King’s Hawaiian Sweet Rolls – so much so that it may have inspired a copyist who led King’s Hawaiian to file a trade dress infringement lawsuit in the Southern District of Texas against two associated parties alleged to have […]

Prepared by Cislo & Thomas LLP Attorney Mark D. Nielsen, Ph.D. 1. In an insurance coverage decision related to intellectual property by the appellate division of the Superior Court of New Jersey, the Court affirmed the finding of a duty to defend under the advertising injury provision of a policy where the covered claim was […]

Prepared by Cislo & Thomas LLP Attorney Mark D. Nielsen, Ph.D. 1. The State of New York finally passed legislation establishing a post-mortem right of publicity permitting heirs and estates of individuals with commercially valuable images and likenesses to protect those images and likenesses (and commercially benefit from them) after the famous person’s death. California […]

Prepared by Cislo & Thomas LLP Attorney Mark D. Nielsen, Ph.D. 1. A recent trademark decision from the Northern District of California resulted in denial of a motion for preliminary injunction where the defendant was not shown to be using the allegedly infringing/counterfeit mark as a trademark. Two competing companies that have apps pairing freelance […]

Takeaway: A Biden Presidency would probably change existing efforts to protect United States intellectual property rights and ward off infringers and counterfeiters as president.

Prepared by Cislo & Thomas LLP Attorney Mark D. Nielsen, Ph.D. 1. The Federal Circuit recently affirmed a grant of a motion to dismiss in which a software patent was invalidated as being directed to an abstract idea. The patent claims were directed to a method of using peer-to-peer networking to verify one’s employment history. […]

Prepared by Cislo & Thomas LLP Attorney Mark D. Nielsen, Ph.D. 1. A decision from the Eastern District of New York held that a sports news publisher’s embedding in a news article of a photograph of recently retired tennis star, Caroline Wozniacki, was a fair use and not copyright infringement. Wozniacki announced her retirement on […]

Prepared by Cislo & Thomas LLP Attorney Mark D. Nielsen, Ph.D. 1. In a recent Ninth Circuit decision, the Court reversed a grant of summary judgment for defendant in a trade secret misappropriation case. The district court determined that the plaintiff had not identified its alleged trade secrets with sufficient particularity. In reversing the grant […]

Takeaway: Apple’s attempt to diversify its emoji’s finds the tech mogul in court.

California’s Proposition 24 on consumer privacy protection, also known as the California Privacy Rights Act (CPRA), just passed by a vote of 56.1% to 43.9% (as of November 11, 2020). The new law will expand consumer rights beyond that of the existing California Consumer Privacy Act (CCPA) of 2018 by requiring businesses falling under the […]

Prepared by Cislo & Thomas LLP Attorney Mark D. Nielsen, Ph.D. 1. Nowadays, it is not unusual, especially in patent litigation, for litigation funding entities to pay legal fees for a patent owner pursuant to a litigation funding agreement. Typically, the litigation funding entity will also conduct extensive analysis of the merits of the case before […]

Prepared by Cislo & Thomas LLP Attorney Mark D. Nielsen, Ph.D. 1. In a recent decision out of the District of Delaware, the Court denied Amazon’s motion to dismiss patent claims directed to voice-activated software alleged found in Alexa and Echo products. Amazon’s motion was based on Section 101/Alice (i.e., that the patent claims it […]

Prepared by Cislo & Thomas LLP Attorney Mark D. Nielsen, Ph.D. 1. The shipment of a substantial amount of counterfeit goods through e-commerce platforms is not new or newsworthy. Efforts by e-commerce platforms have been made as a means to attempt to stem the tide of counterfeit goods. That said, the counterfeiters are crafty, and if […]

Takeaway: Under the USPTO’s new pilot program, provisional application fees are extended as of September 17,2020 for COVID-19 related inventors. The United States Patent and Trademark Office is offering deferral of fees for inventors of COVID-19 related inventions under the new pilot program. The goal of this deferment of provisional application fees is to promote […]

Prepared by Cislo & Thomas LLP Attorney Mark D. Nielsen, Ph.D. 1. The Trademark Trial and Appeal Board (TTAB) issued a Final Decision dismissing an opposition proceeding filed by Monster Energy against the Cleveland Monsters minor league hockey team. The TTAB acknowledged that MONSTER was present in the hockey team’s applied-for mark, and the Opposer’s mark. […]

Prepared by Cislo & Thomas LLP Attorney Mark D. Nielsen, Ph.D. 1. First, in what may be a bit of old news by now, three judges for the Central District of California were recently confirmed. The Central District is one of the busiest IP courts in the country, if not the busiest. So, having three new […]

Prepared by Cislo & Thomas LLP Attorney Mark D. Nielsen, Ph.D.

Prepared by Cislo & Thomas LLP Attorney Mark D. Nielsen, Ph.D.

Prepared by Cislo & Thomas LLP Attorney Mark D. Nielsen, Ph.D.

Prepared by Cislo & Thomas LLP Attorney Mark D. Nielsen, Ph.D. 1. In a recent decision on antitrust and unfair competition claims brought by Apple and Intel against a group of patent assertion entities (aka patent aggregators or patent trolls), the Northern District of California dismissed the claims with leave to amend. In essence, Apple and […]

Takeaway: The Second Circuit vacated the district court’s $21 million dollar judgement award to Tiffany & Co. against Costco.

Prepared by Cislo & Thomas LLP Attorney Mark D. Nielsen, Ph.D. 1. The Fourth Circuit Court of Appeals recently issued a decision on personal jurisdiction in a copyright infringement case where the alleged infringement was taking place on the internet. Since the early days of the World Wide Web, most courts have followed, or at least […]

Prepared by Cislo & Thomas LLP Attorney Mark D. Nielsen, Ph.D. 1. The Ninth Circuit, in an unpublished opinion, reversed a grant of summary judgment in favor of an insurance company where the intellectual property exclusion language did not plainly and unambiguously bar coverage for counterclaims against the insured even though the insured introduced the intellectual […]

Prepared by Cislo & Thomas LLP Attorney Mark D. Nielsen, Ph.D. 1. In related orders in response to writs of mandamus filed by Adobe and Dropbox in patent cases related to cloud storage, the Federal Circuit ordered Judge Alan Albright of the Western District of Texas to transfer the cases to the Northern District of California. […]

Prepared by Cislo & Thomas LLP Attorney Mark D. Nielsen, Ph.D. 1. In a recent denial of rehearing en banc (sort of), the Federal Circuit modified an earlier opinion that reversed the Northern District of California’s determination that a generic diagnostic patent was invalid under Section 101 for claiming a natural phenomena. We have previously written […]

Takeway: The USMCA is meant to modernize NAFTA and lead to freer markets and heightened protection for IP holders, and may also provide greater economic stimulus and jobs to the U.S. President Trump recently announced that as of July 1, 2020, the United States-Mexico-Canada Agreement (USMCA) will govern trade in North America. He stated the […]

Prepared by Cislo & Thomas LLP Attorney Mark D. Nielsen, Ph.D. 1. The Ninth Circuit affirmed a summary judgment in favor of an insurance company where the trademark infringement allegations did not fall within the advertising injury coverage in a policy as use of another’s advertising idea or another’s slogan. The two-word mark PREMIER POOLS was […]

Prepared by Cislo & Thomas LLP Attorney Mark D. Nielsen, Ph.D. 1. The Ninth Circuit affirmed a summary judgment in favor of an insurance company where the trademark infringement allegations did not fall within the advertising injury coverage in a policy as use of another’s advertising idea or another’s slogan. The two-word mark PREMIER POOLS was […]

Takeaway: Be careful when using Instagram’s embedded application programming interface (API) in any of your online content, as it is undecided if it triggers a sublicense based on a provision in Instagram’s Terms and Conditions, which would allow others to use your content without violating any copyright rights.

Takeaway: Trademarks are a valuable asset, so register your name, and if you change it for political or social reasons, make sure you first have it protected.

Prepared by Cislo & Thomas LLP Attorney Mark D. Nielsen, Ph.D. All Ninth Circuit… 1. The Ninth Circuit Court of Appeals affirmed summary judgment for an insurer and its right to reimbursement of defense costs where there was no duty to defend under the known injury rule (the inception date of the policy was after the […]

Prepared by Cislo & Thomas LLP Attorney Mark D. Nielsen, Ph.D. 1. Continuing a unique line of case law concerning the opinions of the Patent Trial and Appeal Board (“PTAB”) being rendered by administrative patent judges (APJ) who were not constitutionally appointed, the Federal Circuit has now ruled that appeals of ex parte patent examinations decisions […]

Prepared by Cislo & Thomas LLP Attorney Mark D. Nielsen, Ph.D. 1. A recent opinion from the Ninth Circuit held that a trademark infringement plaintiff did not have a right to a jury trial when its only damages remedy was a disgorgement of the defendant’s profits. In the case, the plaintiff did not provide discovery on […]

Takeaway: If you failed to file a non-provisional U.S. application by your provisional application’s one-year deadline due to COVID-19, the USPTO has extended the time to claim priority to July 31, 2020 and is waiving the petition fee. As of June 11, 2020, applicants who have filed a U.S. provisional patent application, or an earlier […]

Prepared by Cislo & Thomas LLP Attorney Mark D. Nielsen, Ph.D. 1. In a significant opinion from the Ninth Circuit on product design trade dress and functionality, the Ninth Circuit held that product design trade dress for Herman Miller’s EAMES chair was not functional (either utilitarian or aesthetic), and that the district court’s determination that Herman […]

Prepared by Cislo & Thomas LLP Attorney Mark D. Nielsen, Ph.D. 1. In what may be seen as a significant blow to the cannabidiol (CBD) industry, the Trademark Trial and Appeal Board issued an opinion upholding an Examining Attorney’s refusal to register the “CW” (for Charlotte’s Web) mark in connection with “hemp oil extracts sold as […]

Prepared by Cislo & Thomas LLP Attorney Mark D. Nielsen, Ph.D. 1. This takeaway follows up on a recent Takeaway (Takeaway No. 1) addressing Sinclair v. Ziff-Davis regarding whether publicly posting a photograph on Instagram triggers a sublicense provision wherein content posted to a public Instagram account results in a non-exclusive, transferable license being granted to […]

Prepared by Cislo & Thomas LLP Attorney Mark D. Nielsen, Ph.D. 1. An Order out of the Southern District of New York granted summary judgment to Activision on First Amendment grounds defeating claims under the Lanham Act brought against it for its use of the Humvee design in the popular video game Call of Duty. Activision […]

Takeaway: Litigants are not barred by res judicata to raise every possible defense early on in litigation.

Prepared by Cislo & Thomas LLP Attorney Mark D. Nielsen, Ph.D. 1. A recent decision from the Federal Circuit appears to have rightly invalidated a patent directed to technology to notify consumers when a delivery or pickup is ready, finding that the patent was invalid as an abstract idea under Section 101/Alice. The Federal Circuit noted […]

Prepared by Cislo & Thomas LLP Attorney Mark D. Nielsen, Ph.D. 1. In an interesting case out of the Federal Circuit, the Court affirmed a dismissal of infringement claims on the pleadings, which is a bit unusual. Here, the plaintiff accused the defendant of infringing four (4) patents based on the doctrine of equivalents. The key […]

Prepared by Cislo & Thomas LLP Attorney Mark D. Nielsen, Ph.D. 1. The Ninth Circuit recently issued an opinion holding that discretionary attorneys’ fee awards under the Copyright Act (17 U.S.C. 505) are available in declaratory relief actions “that turn[] on the existence of a valid copyright and whether that copyright has been infringed … .” […]

Takeaway: After the Ninth Circuit’s recent opinion, brand owners may have their brands used by others for non-competitive purposes.

Prepared by Cislo & Thomas LLP Attorney Mark D. Nielsen, Ph.D. 1. In a recent opinion of out of the Southern District of New York that has received a lot of attention, the Court dismissed a complaint for copyright infringement with prejudice where a photographer posted a photograph on a public Instagram account, and the alleged […]

Prepared by Cislo & Thomas LLP Attorney Mark D. Nielsen, Ph.D. 1. In what is a curious opinion from the Federal Circuit in light of another recent Federal Circuit opinion, the Court held that a voluntary dismissal without the need for a court order under Fed.R.Civ.P. 41 (a)(1)(A)(i), which is without prejudice, is not a final […]

Prepared by Cislo & Thomas LLP Attorney Mark D. Nielsen, Ph.D. 1. In a recent 2-1 panel opinion by the Federal Circuit that evoked a vigorous and important dissent from Judge Pauline Newman (who continues going strong as she approaches 93 years of age), the Federal Circuit axed a jury verdict of willful infringement in […]

Between now and April 30th, Cislo & Thomas will be waiving all credit card processing fees and donating 5% of all payments made through our online payment page (www.cislo.com/pay) to the LA Dream Center and the Union Rescue Mission. Cislo & Thomas has supported both of these incredible organizations in the past and is thankful […]

Prepared by Cislo & Thomas LLP Attorney Mark D. Nielsen, Ph.D. 1. A recent order from the Western District of Washington denied an award of attorneys’ fees in a trademark case even though the infringement was found to be willful. In Eko Brands v. Adrian Maynez Rivera Enterprises, the Court on April 2, 2020 denied […]

Takeaway: CARES Act affords USPTO and Register of Copyrights the ability to reduce the impact of COVID-19 on intellectual property owners.  

Prepared by Cislo & Thomas LLP Attorney Mark D. Nielsen, Ph.D. 1. A decision in the Signify v. Reggiani Lighting case out of the Southern District of New York on a motion to strike and dismiss inequitable conduct and patent misuse defenses and counterclaims, respectively, applied the heightened pleading standard for fraud under Fed.R.Civ.P. 9(b) […]

Prepared by Cislo & Thomas LLP Attorney Mark D. Nielsen, Ph.D. 1. The CARES Act touches on many aspects of our economy and lives, and intellectual property is no exception. The United States Patent and Trademark Office (USPTO) issued a press release announcing extensions of time to various patent- and trademark-related deadlines pursuant to the […]

Takeaway: You must mark your products to recover past damages from an infringer. Federal patent law allows for the recovery of up to six years of past damages in a patent infringement action. To be eligible for past damages, a patentee, or a patentee’s licensee, must mark its products with the words “patented” or “pat.”, […]

Prepared by Cislo & Thomas LLP Attorney Mark D. Nielsen, Ph.D. It is Federal Circuit week here at IP Takeaways: 1. In a recent opinion from the Federal Circuit involving Sequenom and Ariosa again, the Federal Circuit ruled that a method of isolating cell-free fetal DNA from a mother’s plasma did not run afoul of Section […]

Prepared by Cislo & Thomas LLP Attorney Mark D. Nielsen, Ph.D. 1. Sadly, there is not going to be a Masters golf tournament to usher in the Spring this year. The Masters brand, however, remains strong. Recently, the United States Patent and Trademark Office issued a registration to Augusta National, Inc. for the iconic green jacket, […]

Prepared by Cislo & Thomas LLP Attorney Mark D. Nielsen, Ph.D. 1. In an interesting case originally filed in state court in Texas, but removed to the Northern District of Texas, a personal injury law firm sued a lawyer referral website of using the PI firm’s name (i.e., trademarks) to drive traffic to the referral […]

Prepared by Cislo & Thomas LLP Attorney Mark D. Nielsen, Ph.D. New York, New York … 1. In a noteworthy bit of case law that has recently appeared, several prominent district courts have held that in-line linking (or embedded linking) can constitute copyright infringement, specifically the Southern District of New York and Northern District of […]

Takeaway 1: When seeking a music copyright clearance, get a license for the copyright in the recording but also get a license for the separate copyright in the underlying composition as well. Takeaway 2: If you are sued for infringing the music or lyrics of another artist, get your case transferred to the Second Circuit. […]

Takeaway: Register your copyrighted works early! In a recent opinion out of the Fifth Circuit Court of Appeals, the Court determined that statutory damages for copyright infringement are barred where the first mode of infringement of a copyright (reproduction) pre-dates the copyright’s registration, which would traditionally bar statutory damages under 17 U.S.C. Section 412, and […]

Prepared by Cislo & Thomas LLP Attorney Mark D. Nielsen, Ph.D. 1. The United States Patent and Trademark Office (USPTO) has modified a recent rule that would have required an email address for trademark applicants themselves (not just for the attorney filing the application). Following substantial push back noting that having applicants’ email addresses publicly […]

Prepared by Cislo & Thomas LLP Attorney Mark D. Nielsen, Ph.D. This week, we have one significant and important takeaway that pertains to venue in patent cases, particularly, venue in patent cases in which a plaintiff may rely on the location of a defendant’s servers to allege proper venue. The case is In re Google […]

Prepared by Cislo & Thomas LLP Attorney Mark D. Nielsen, Ph.D. 1. In a patent case, a judge in the Southern District of New York issued an order denying a motion for summary judgment of non-infringement, but granting the motion as to the absence of willful infringement. The Court found that there was no pre-suit […]

Prepared by Cislo & Thomas LLP Attorney Mark D. Nielsen, Ph.D. 1. As a passionate Los Angeles Kings hockey fan, it pains me to highlight a win by the Anaheim Ducks’ affiliate, the San Diego Gulls. But, hockey and IP are among a few of my favorite things, so it is necessary. In 2015, the ECHL […]

Prepared by Cislo & Thomas LLP Attorney Mark D. Nielsen, Ph.D. 1. “The Bear is charging” is a familiar expression to long-time golf fans to indicate that golf legend Jack Nicklaus was making his way up a leaderboard in a PGA tournament. Last week, the Bear, Jack Nicklaus, began charging by filing trademark infringement, unfair […]

Prepared by Cislo & Thomas LLP Attorney Mark D. Nielsen, Ph.D. Patents, patents, patents … 1. In an appeal from an International Trade Commission (ITC) ruling, the Federal Circuit found what was essentially an implicit (as opposed to express, as is typically required) disavowal of claim scope where the specification of the patent-in-suit extensively focused […]

Prepared by Cislo & Thomas LLP Attorney Mark D. Nielsen, Ph.D. 1. In litigation between Comerica, who is charged with protecting the assets of music legend Prince, and a person who had recorded videos of several of Prince’s concerts and posted them on his YouTube channel, Comerica was granted summary judgment of copyright infringement because […]

Takeaway: Pinterest is facing claims of copyright and contributory infringement by photographer who claims Pinterest fosters infringement. Be careful not to use photographs or artwork without its creator’s permission.

Prepared by Cislo & Thomas LLP Attorney Mark D. Nielsen, Ph.D. 1. For grunge music aficionados, you may be saddened to learn that there is a legal dispute regarding the copyright rights to 7 unreleased songs written by the late Chris Cornell, iconic singer of the band Soundgarden. A representative article on the dispute is […]

Prepared by Cislo & Thomas LLP Attorney Mark D. Nielsen, Ph.D. 1. In an important opinion regarding the proper standard for whether a patent case is “exceptional” such that attorneys’ fees may be awarded to the prevailing party, the Court of Appeals for the Federal Circuit vacated a fee award by Judge Stark in Delaware […]

Prepared by Cislo & Thomas LLP Attorney Mark D. Nielsen, Ph.D. 1. People often ask about whether some proprietary know-how, technique, or process should be patented or protected as a trade secret. The decision is not necessarily a binary one. One may argue that, in a context where a patent application is filed and trade secret […]

Prepared by Cislo & Thomas LLP Attorney Mark D. Nielsen, Ph.D. 1. Finally! A tangible move to attempt to add design patents to the types of rights that can be enforced by Customs at the border. Presently, a copyright or trademark owner may register its rights with Customs with a view towards Customs potentially seizing […]

Prepared by Cislo & Thomas LLP Attorney Mark D. Nielsen, Ph.D. 1. In an unpublished opinion, the Ninth Circuit reinstated a jury verdict of willfulness in a copyright infringement case against Zazzle. Basically, Zazzle was found to be using copyrighted prints on merchandise without the permission of the copyright owner. In copyright cases, willfulness may […]

Prepared by Cislo & Thomas LLP Attorney Mark D. Nielsen, Ph.D. 1. In a case filed by a company formed by the surviving members of the 90s grunge band Nirvana, against fashion designer Marc Jacobs alleging copyright and trademark infringement for Marc Jacobs’ use of an allegedly infringing happy face design used by Nirvana, Hon. […]

Takeaway: Online media and apps must comply with the Americans with Disabilities Act.>\ In 2016, a blind man filed suit against Domino’s Pizza’s for violating Title III of the Americans with Disabilities Act (“ADA”) — which states that restaurants must be accessible to people with disabilities — because he was unable to order a pizza […]

Prepared by Cislo & Thomas LLP Attorney Mark D. Nielsen, Ph.D. 1. Reckitt Benckiser, the maker of Mucinex cough medication asserted its patent rights covering a formulation of Mucinex against generic drug makers. At a bench trial, Reckitt failed to prove infringement, including offering what the Court referred to as “flawed” and “unreliable” expert testimony. The […]

Prepared by Cislo & Thomas LLP Attorney Mark D. Nielsen, Ph.D. 1. Famous and extremely tasty mall food vendor, Cinnabon, filed a lawsuit against a Nevada company in the cannabis industry that is marketing a Cinnabon-flavored CBD vape liquid. The lawsuit alleges trademark infringement, trademark dilution, and unfair competition claims, alleging that the vape company was […]

Prepared by Cislo & Thomas LLP Attorney Travers Morgan, Esq. Takeaway: Student-athletes will soon be able to profit based on their name and likeness rights through opportunities such as endorsement deals and sponsorships. The NCAA has officially voted to allow college athletes to profit from their name and likeness rights. Part of the vote was a […]

Prepared by Cislo & Thomas LLP Attorney Mark D. Nielsen, Ph.D. 1. In a recent decision on a motion to dismiss by Judge Gilstrap out of the Eastern District of Texas held that a company’s policy or practice of directing its personnel not to read patents can support a finding of willful infringement. In 2011, […]

Takeaway: The United States Patent and Trademark Office has reached its goals of reducing patent pendency rates cultivating innovation and entrepreneurship. The United States Patent and Trademark Office (USPTO) has been working for many years to reduce patent pendency rates. Since 2018, the USPTO specified goal rates of under 15 months for office actions and […]

Prepared by Cislo & Thomas LLP Attorney Mark D. Nielsen, Ph.D. 1. The U.S. Supreme Court denied certiorari in a case brought by a European licensee of an U.S. trademark owner against a company, Boldface Licensing & Branding, Inc. (“Boldface”), for which the Kardashian sisters were celebrity endorsers. The mark was KROMA. More specifically, the […]

Prepared by Cislo & Thomas LLP Attorney Mark D. Nielsen, Ph.D. 1. The Supreme Court denied certiorari in an important case involving ADA-compliant websites. In this case, the Ninth Circuit reversed a trial court ruling dismissing a case against Domino’s Pizza under federal and California law wherein Domino’s website and/or mobile application were not accessible […]

Prepared by Cislo & Thomas LLP Attorney Mark D. Nielsen, Ph.D. 1. In another Section 101 case, the Federal Circuit invalidated representative claims directed to a method for manufacturing driveline propeller shafts with liners that damp vibrations transmitting through the shaft assembly. The opinion is here. The opinion has sparked a significant amount of outrage, […]

Prepared by Cislo & Thomas LLP Attorney Mark D. Nielsen, Ph.D. 1. The Federal Circuit recently held (actually, reaffirmed previous precedent) that Section 102 (anticipation) and Section 103 (obviousness) do not impact the abstract idea analysis under Section 101 for subject matter eligibility. The opinion is here. Thus, even if your invention may be novel […]

Takeaway: HiQ Labs Inc. prevails in obtaining a preliminary injunction against LinkedIn enjoining LinkedIn from denying hiQ access to LinkedIn’s member profiles. HiQ Labs Inc., a data analytics startup, used automated bots to scrape data from LinkedIn’s public member profiles. In 2017, LinkedIn sent the startup a cease and desist letter demanding that hiQ quit […]

Prepared by Cislo & Thomas LLP Attorney Mark D. Nielsen, Ph.D. 1. In a recent jury verdict out of the Eastern District of Texas involving a Section 101 issue, a jury invalidated a patent on Section 101 grounds. The case is PPS Data v. Jack Henry. By way of backstory, Judge Gilstrap denied summary judgment […]

Prepared by Cislo & Thomas LLP Attorney Mark D. Nielsen, Ph.D. 1. The STRONGER Patents Act (S. 2082), introduced in the Senate in July, remains on the table for debate and discussion in the Senate. Details regarding the bill, and its language, can be found here. The bill notes the benefits of patents to the […]

Prepared by Cislo & Thomas LLP Attorney Mark D. Nielsen, Ph.D. 1. Several months ago, I posted (Takeaway No. 1) what was a somewhat alarming comment by the Federal Circuit regarding the doctrine of equivalents – “The doctrine of equivalents applies only in exceptional cases and is not simply the second prong of every infringement […]

Prepared by Cislo & Thomas LLP Attorney Mark D. Nielsen, Ph.D. 1. In a recent decision regarding venue in a patent infringement case, the Northern District of New York held that Amazon Lockers (kiosks where one may pick up or return packages from Amazon) in the district constituted a regular and established place of business […]

Prepared by Cislo & Thomas LLP Attorney Mark D. Nielsen, Ph.D. 1. In what may be an effort to slow the filing of Section 101/Alice motions to dismiss in district courts around the country, and thus, slow the flow of the appeal of such motions to the Federal Circuit Court of Appeals, the Federal Circuit […]

Prepared by Cislo & Thomas LLP Attorney Mark D. Nielsen, Ph.D. 1. The Federal Circuit Court of Appeals recently held that a patent directed to detecting a certain genetic mutation in Labrador retrievers is invalid under Section 101 because it merely detects a naturally existing gene mutation through conventional, molecular biological techniques. In support of its […]

Prepared by Cislo & Thomas LLP Attorney Mark D. Nielsen, Ph.D. 1. In a recent warning letter to a medicinal cannabis and cannabidiol (CBD) company, the FDA expressed concern that CBD was allegedly being marketed or misbranded as drugs in that the company was making claims regarding intended uses of CBD. The FDA also expressed […]

Prepared by Cislo & Thomas LLP Attorney Mark D. Nielsen, Ph.D. 1. In an important design patent case out of the Federal Circuit, the Court re-affirmed the under-appreciated value of design patents in the context of certain exterior automotive parts – a hood design and a headlight design. The opinion is here. The accused infringer […]

Prepared by Cislo & Thomas LLP Attorney Travers Morgan, Esq. Takeaway: If you embed social media links on your website, you should request permission from those visitors to send their personal information to the social media site. If your business embeds social icons such as the Facebook like button on your website you will need to […]

Prepared by Cislo & Thomas LLP Attorney Mark D. Nielsen, Ph.D. As a member of the State Bar of Texas, I have been privileged to attend the annual Advanced Patent Litigation conference for a number of years. It is always a stellar, very high-end conference that I have enjoyed thoroughly. This year’s conference was on […]

Takeaway: YouTube now requires more information for copyright claims and provides creator with multiple options to address infringing material without taking down a video. YouTube has announced that when using their claim system, copyright owners will now have to provide exact timestamps corresponding to when the infringement occurs. YouTube hopes that by enforcing this new […]

Prepared by Cislo & Thomas LLP Attorney Mark D. Nielsen, Ph.D. 1. In a recent trademark case out of the 11th Circuit Court of Appeals, the Court held that a Seventh Amendment right to a jury trial does not exist when the plaintiff seeks to recover the defendant’s profits from the alleged infringement. The opinion […]

Prepared by Cislo & Thomas LLP Attorney Mark D. Nielsen, Ph.D. 1. In a recent Federal Circuit case, the Federal Circuit reversed a district court’s grant of a motion to dismiss on a Alice/Section 101 issue, as well as the associated fee award by the district court. The opinion is here. The district court’s analysis, […]

Takeaway: Canada has revamped its trademark laws and the changes went into effect on June 17, 2019. Canada has made modifications to its trademark laws that went go into effect on June 17, 2019. First, the renewal term in Canada will be shortened with a change from a 15 year to a 10 year term. […]

Prepared by Cislo & Thomas LLP Attorney Mark D. Nielsen, Ph.D. 1. The Supreme Court unanimously ruled that the prohibition in the Lanham Act (the federal trademark law) against immoral or scandalous marks is an unconstitutional violation of the First Amendment. At issue was a trademark application for a clothing line, FUCT. The Trademark Office rejected […]

Prepared by Cislo & Thomas LLP Attorney Mark D. Nielsen, Ph.D. 1. In a fairly unremarkable, but interesting nuance of claim construction worth noting, the Southern District of New York held that a claim using “comprising” for all of its limitations, but in which one of the clauses of the claim utilized “consisting of,” the […]

Prepared by Cislo & Thomas LLP Attorney Mark D. Nielsen, Ph.D. 1. In the case of Xitronix Corp. v. KLA-Tencor Corp., the Federal Circuit recently issued a Rule 36 Affirmance of a 2016 ruling out of the Western District of Texas concerning Walker Process fraud. The district court opinion is here. In essence, Walker Process […]

Our client, Michael Amini of Amini Innovation Corp (AICO), is celebrating the 10th anniversary of the opening of the Michael Amini Transfusion Medicine Center at City of Hope. Over the last 10 years, this facility has provided a critical expansion of the City of Hope’s blood donor and cell-processing services. City of Hope and Michael […]

Prepared by Cislo & Thomas LLP Attorney Mark D. Nielsen, Ph.D. 1. In My Health, Inc. v. ALR Technologies, Inc. et al., Magistrate Judge Roy Payne of the Eastern District of Texas denied a prevailing defendant’s “efforts” to hold the losing plaintiff’s lawyers and principal liable for a fee award against the plaintiff. The defendants […]

Prepared by Cislo & Thomas LLP Attorney Mark D. Nielsen, Ph.D. 1. In a recent opinion regarding patent infringement claims brought under the Biologics Price Competition and Innovation Act (“BPCIA”), the Federal Circuit in a recent opinion affirmed a summary judgment of non-infringement of a method claim directed to steps for purifying a protein via […]

Takeaway: If you need to amend your patent claims during AIA proceedings, the USPTO has provided some available options The USPTO released a notice dated April 16, 2019 detailing some of the available options for amending patent claims during the pendency of an inter partes review, post-grant review, or covered business method patent review (AIA […]

Prepared by Cislo & Thomas LLP Attorney Mark D. Nielsen, Ph.D. 1. In the aftermath of the Supreme Court’s ruling in Fourth Estate Public Benefit v. Wall-Street.com, in which the Court held that copyright litigation lawsuit cannot be filed until the Copyright Office registers the copyright, it appears that some key courts for copyright issues […]

Prepared by Cislo & Thomas LLP Attorney Mark D. Nielsen, Ph.D. 1. In a recent decision out of the Northern District of Illinois, the Court reiterated that a trade secret is not simply proprietary information that a company claims to own and which has value because it is not generally known, but that the company […]

Prepared by Cislo & Thomas LLP Attorney Mark D. Nielsen, Ph.D. 1. In a patent case in the Eastern District of Virginia, the granted a motion to dismiss the plaintiff’s allegations as to pre-suit willfulness. The Court considered whether the plaintiff sufficiently pled that the defendant, Cisco, knew of the asserted patent, and was subjectively […]

Takeaway: The penalties for privacy violations of HIPAA under the HITECH Act have been reduced and redefined based on the type of information violation under the Trump Administration. Compliance with the Health Insurance Portability and Accountability Act (HIPAA) requires entities that come into contact with Protected Health Information (PHI) to ensure technical, physical, and administrative […]

Prepared by Cislo & Thomas LLP Attorney Mark D. Nielsen, Ph.D. 1. In one patent case of dozens filed by the same plaintiff(s) concerning the use of the amino acid L-arginine to enhance nitric oxide (NO) production in the body, the Federal Circuit affirmed an exceptional case fee award under 35 U.S.C. Section 285 against […]

Takeaway: Creating programs to help cheat in video games may constitute willful infringement of the original video game’s intellectual property. David Zipperer created applications to cheat at the well-known video game Grand Theft Auto and has now admitted to copyright infringement, based on the creation of those applications in a settlement agreement by the parties. […]

Prepared by Cislo & Thomas LLP Attorney Mark D. Nielsen, Ph.D. 1. In an opinion issued in the Trading Technologies case on April 18, the Federal Circuit, among other things, said that, “[Trading Technologies] argues that because non-precedential decisions of this court held that other TT patents were for technological inventions or claimed eligible subject […]

Prepared by Cislo & Thomas LLP Attorney Mark D. Nielsen, Ph.D. 1. In a new petition for certiorari to the U.S. Supreme Court, the issue presented is whether a trademark infringement plaintiff must prove that the infringement was willful in order to be entitled to a disgorgement of the infringer’s profits. There is a long-standing […]

Prepared by Cislo & Thomas LLP Attorney Mark D. Nielsen, Ph.D. 1. In an interesting case, the Eleventh Circuit Court of Appeals ruled that Georgia cannot claim copyright in “annotations” to its Official Code of Georgia laws because the annotations are simply an extension of state law, and government documents such as legal codes cannot […]

Prepared by Cislo & Thomas LLP Attorney Mark D. Nielsen, Ph.D. 1. Amazon, which recently acknowledged, in a public statement, that counterfeit products on its platform are a significant issue, has recently come out with a new tool for brand owners to combat counterfeits on Amazon. The tool is Project Zero. For now, this appears […]

Prepared by Cislo & Thomas LLP Attorney Mark D. Nielsen, Ph.D. 1. A district judge sitting by designation in the District of Delaware held that being registered to do business and designating an agent for service of process in Delaware, but not being incorporated in Delaware nor having a regular and established place of business […]

Takeaway: Though you can use the Madrid Protocol to file one application and obtain trademark protection in multiple countries, there are some disadvantages to this process. If you are planning to monetize your goods or services internationally, one of the best options to protect your brand is to file a trademark with the Madrid Protocol. […]

Takeaway: The Supreme Court has determined that a copyright application must proceed to registration before it can be asserted in a copyright infringement suit. Thus, file your copyright application early as it can take many months to issue before you can sue an infringer! In the recent case of Fourth Estate Public Benefit Corp v. […]

Prepared by Cislo & Thomas LLP Attorney Mark D. Nielsen, Ph.D. 1. In a recent opinion that included a number of issues, including a Section 101/Alice issue, the Federal Circuit may be trying to open up the scope of patent eligibility a bit, but in doing so, it is, I fear, creating even more confusion […]

Prepared by Cislo & Thomas LLP Attorney Mark D. Nielsen, Ph.D. 1. A recent set of Section 101/Alice rulings out of the Central District of California (Kajeet v. Qustodio and the Skyhawke/DECA cases in particular) suggests that C.D. CAL may be taking a much more cautious approach to 101/Alice issues raised in a motion to […]

1) What is a trademark? A trademark is a word, phrase, symbol, and/or design that identifies the source of goods or services being offered to consumers. The underlying goal of trademark law is to help people associate goods or services that they use with a specific entity or person. When services are being offered instead […]

Takeaway: Apple has decided to close its store locations in the Eastern District of Texas to avoid patent litigation in that district. Apple has decided to close two of its locations in the Eastern District of Texas and will be opening a new location a short distance away, which happens to be just over the […]

Takeaway: Simple dance routines are not creative enough to merit copyright protection as choreography according to the Copyright Office. Recently, the Copyright Office denied the “Carlton dance” copyright protection. The Copyright Office reasoned that the Carlton dance was merely a simple routine that did not reach the level of creativity for protection under the copyright […]

Prepared by Cislo & Thomas LLP Attorney Mark D. Nielsen, Ph.D. 1. In a trademark case out of the United States Court of Appeals for the Second Circuit, the Court held that an Oregon Brewing Company’s superior, common law rights in connection with the trademark ROGUE for apparel overcame the Plaintiff/junior user’s registered rights to […]

Prepared by Cislo & Thomas LLP Attorney Mark D. Nielsen, Ph.D. 1. The United States Supreme Court, in a recent copyright case (Fourth Estate Public Benefit v. Wall-Street.com) resolved a long-running circuit split on the issue of whether a copyright plaintiff can file a copyright infringement lawsuit once the filing process has been completed (submission […]

Prepared by Cislo & Thomas LLP Attorney Travers Morgan, Esq. Takeaway: It might be a good idea for businesses to register for federal trademarks and enroll in Amazon’s brand registry so they may participate in Amazon’s new anti-counterfeiting program. This week, Amazon announced a program that allows trademark owners to takedown counterfeits. Amazon has named […]

Prepared by Cislo & Thomas LLP Attorney Mark D. Nielsen, Ph.D. 1. In an interesting opinion in terms of the not-so-“hidden” message in it, the Court of Appeals for the Federal Circuit invalidated another patent covering a medical diagnostic test. This recent trend of invalidating medical diagnostic test patents under 35 U.S.C. Section 101 as […]

Prepared by Cislo & Thomas LLP Attorney Mark D. Nielsen, Ph.D. 1.      In a group of cases that are a civil procedure wonk’s dream, the Federal Circuit affirmed, in a non-precedential opinion, the setting aside of a $32 million judgment against Sprint where claims in the same patent (but not the same claims) […]

Prepared by Cislo & Thomas LLP Attorney Mark D. Nielsen, Ph.D. 1.    A recent motion to transfer opinion in a patent case from the District of Delaware rejected the attempt of a parent company to use the regular and established place of business of one of its subsidiaries as a basis to transfer the […]

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 […]

Prepared by Cislo & Thomas LLP Attorney Mark D. Nielsen, Ph.D. 1.    A former employee that used compiled customer list, pricing, and other information for directly competing business found to be trade secret misappropriation, and sufficiently harmful to support a TRO and preliminary injunction under California and federal law.  The opinion is here – […]

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.  The regulation says that any businesses operating a website within the UK that currently has the .eu suffix will either have to […]

Prepared by Cislo & Thomas LLP Attorney Mark D. Nielsen, Ph.D. 1. Converse v. ITC – Important case from the United States Court of Appeals for the Federal Circuit (CAFC) for product design trade dress analysis. The opinion is here – http://www.cafc.uscourts.gov/sites/default/files/opinions-orders/16-2497.Opinion.10-30-2018.pdf. a. The time for determining the existence of secondary meaning is when the […]

Prepared by Cislo & Thomas LLP Attorney Mark D. Nielsen, Ph.D. 1. The Federal Circuit held that reasonable royalty damages on non-accused, non-infringing products are not available. The Federal Circuit stated, “damages calculated by applying a royalty to sales of non-accused lenses cannot support a jury’s verdict on damages. To be sure, we have held […]

There is a growing fear online regarding the use of customer’s information due to the upsurge of identity theft and various other online crimes. This has been increasing in the headlines from major corporate hacks to Facebook data privacy issues. However, these concerns are no longer just a fear of the consumer. Business owners and […]

Prepared by Cislo & Thomas LLP Attorney Mark D. Nielsen, Ph.D. 1. California Court of Appeal, Fourth District, held that a one-year non-solicitation of employee provision in an employment agreement was an improper restraint on the defendants’ ability to practice their profession in violation of CA B&P Code 16600.  Context was competing travel nurse recruiting […]

Takeaway: Business owners and universities alike should make sure they fully understand what the terms of their intellectual property licensing agreements entail.  University of Wisconsin ordered to pay nearly 32 million dollars after a Delaware federal court determined that they should have paid that amount to Washington University in St. Louis in a patent licensing […]

  Utah State Bar Ethics Advisory Opinion 18-04 (http://www.utahbar.org/wp-content/uploads/2018/09/18-04.pdf) says that it is permissible for attorneys to include an indemnification provision in a retainer agreement at the commencement of representation that requires the client to indemnify the attorney and related entities against claims that arise from the client’s behavior or negligence. This could be useful […]

Takeaway: There is high demand for intellectual property protection in China. The World Intellectual Property Organization (“WIPO”) recently released its IP indicators report showing that IP filings around the world continue to grow in a positive direction. The report showed the following growth worldwide: – In 2017 there were 5.8% more patent applications filed than […]

There is a growing fear online regarding the use of customer’s information due to the upsurge of identity theft and various other online crimes.  This has been increasing in the headlines from major corporate hacks to Facebook data privacy issues.  However, these concerns are no longer just a fear of the consumer.  Business owners and […]

Takeaway: Do not copy significant portions of someone else’s copyrighted text without their permission. William Hill filed a lawsuit against FanDuel this week for copyright infringement. The complaint alleges that FanDuel stole William Hill’s pamphlet titled “How to Bet Guide” by copying significant portions of the guide. FanDuel was allegedly handing out their own version […]

We are proud to announce that we have been honored as a Tier 1 Best Law Firm recipient in the 2019 Best Lawyers of U.S. News & World Report! We always strive to provide Quality Client Care in helping you achieve your intellectual property goals, and we owe this honor to our incredible clients. So […]

Takeaway: The U.S. Copyright Office has made it legal for you to jailbreak new phones for development and repair purposes. The U.S. Copyright Office has made some changes under the Digital Millennium Copyright Act (“DMCA”) to allow for users to jailbreak devices and modify them on their own. This rule comes about because of the […]

Takeaway: Microsoft dedicated all of their patents to the OIN patent pool network giving everyone the ability to use their technology without fear of infringement. Earlier this month, Microsoft announced that it would be dedicating all if its patents to the Open Invention Network patent pool. This move is a surprise to many members of […]

On behalf of Marcus Beck, Cislo & Thomas successfully brought a motion to dismiss Plaintiff’s claims for infringement of the alleged trade name “Malibu Estates.”  Plaintiff alleged that he had exclusive rights to the name “Malibu Estates” for the sale of real estate in Malibu, California.  Cislo & Thomas argued that “Malibu Estates” was invalid […]

Takeaway: Trademarking a nickname can be tricky even if the organization is recognized by people nationwide as the source of goods or services. Anyone who has been a fan of the NFL’s Jacksonville Jaguars likely knows that the Jaguars’ defense became a force to be reckoned with in the 2017-2018 football season.  The sudden dominance […]

Takeaway: Tracking competitor trademark applications can be an indicator of what is to come for a company or the market as a whole. Amazon has recently filed a series of trademark applications in the areas of clothing, footwear, and headwear. This seems to indicate that Amazon may be expanding their operations into the fashion industry […]

Takeaway: Website or application interactivity that provides Canadians with some benefit will establish a trademark use in Canada even if there is no physical presence in Canada. In Dollar General Corporation v. 2900319 Canada Inc., the court affirmed the decision that there need only be a sufficient level of interactivity with potential Canadian customers to […]

Takeaway: Be careful about what you post on your own website if you do not have permission to do so from the original creator. Before adding third-party content to your own website it is advisable to receive permission first. Recently a secondary school student downloaded a photo that was posted online to use in a […]

Takeaway: Attorney’s fees payable to a prevailing party in a Copyright Infringement action must be based on the specifics of the case at hand, not on the general presumption of the type of copyright matter at hand. In Glacier Films v. Turchin a production company sued Turchin, who downloaded and distributed a movie made by […]

Takeaway: The Ninth Circuit will apply the Lanham Act to expressive works if the public interest in avoiding consumer confusion outweighs the public interest in free expression. If there is widespread recognition over a phrase, it is advisable to avoid using that phrase for commercial gain unless you first seek permission. The Ninth Circuit Court […]

Takeaway: Innovation in the United States is moving at a faster pace than ever before.  The USPTO has issued 1,000,000 Patents within the last three years and two months, reaching a landmark number of 10,000,000 Patents issued as of earlier this month. Earlier this month the United States Patent and Trademark Office (USPTO) issued its […]

Takeaway: You can be sweet, smart, beautiful, and work for Cislo & Thomas! Cislo & Thomas’s own MacKenzie Freed wins the crown of Miss California in the 2018 Miss California Organization Pageant and will continue on to compete for the title of Miss America 2019 in September. Congratulations MacKenzie! We are proud to support you!

Takeaway: Make sure to document your attempts to have inventors sign their oath and declaration in writing. For applications filed on or after September 16, 2012 assignees may have the option of filing what is called a substitute statement instead of an oath or declaration by the inventor. This issue may arise in a number […]

Takeaway: Patent claims that recite written presented information may not be used to differentiate the invention from the prior art for patentability. The printed matter doctrine pertains to portions of a patent that are directed to some type of printed material. The portions of the patent that are directed to the printed material are not […]

Cislo & Thomas LLP proudly exhibited at the 140th Annual International Trademark Association meeting from May 20 to 23. Over 10,000 patent and trademark attorneys from more than 150 countries gathered together in Seattle to network and discuss new opportunities in international intellectual property. At INTA, Cislo & Thomas LLP presented its PatentFiler.com online provisional patent filing […]

Takeaway: Due to better client services and factors such as further expertise in the subject matter, international companies are beginning to move their business to smaller and more specialized boutique law firms. According to a report by Globality, Inc. it appears that large companies are beginning to gravitate toward smaller law firms for specialized legal […]

Takeaway: Even if you do not upload the infringing content on your website, you may still be liable if you are profiting from such content. Be sure to have an anti-infringement plan in place before your company grows too quickly. Harley-Davidson is an extremely popular motorcycle brand and is distinctly known worldwide. This popularity and […]

Takeaway: “Unless the statute expressly gives animals the right to sue, they do not have the right to sue.” Yes, this really is a quote from the Ninth Circuit Court of Appeals. The answer to whether a monkey may sue humans is yes . . . and no. On the one hand, the court found […]

Takeaway: Pleading infringement of patent infringement has become easier. On May 1, 2018 in Disc Disease Solutions, Inc. v. VGH Solutions, Inc., the United States Court of Appeals for the Federal Circuit addressed the proper standard for pleading a direct infringement claim in a patent case. The appeal arose from a grant of a motion […]

Takeaway: If the district court denies your motion for summary judgment, ask it to allow you to appeal the decision right away If the case goes to trial, move for a judgment as a matter of law immediately after the plaintiff has presented its case in chief and then renew the motion at the end […]

Takeaway: Purposefully misspelling the name of a product is likely not enough of a change to take a trademark application out of the realm of being considered merely descriptive. The TTAB recently decided a case regarding the trademark application of Pan American Properties, an alcoholic beverage distributor. The trademark it applied for was “White Sangriiia.” […]

Takeaway: Any clarity that may have developed since 2014 for Section 101 challenges now seems to have faded away. The recent Federal Circuit ruling determining that Section 101 challenges may involve issues of fact and may not be suitable for dispositive motions complicates the way we look at these issues. As many patent attorneys and […]

Takeaway: This case highlights the importance of adequately preparing trademark applications and appeals. Always seek the assistance of an experienced intellectual property professional to deal with the USPTO. The TTAB (Trademark Trial and Appeal Board) handed down its appellate decision concerning a rejected trademark application for “8-BIT ALEWORKS.” 8-Bit Brewing LLC, an Arizona craft beer […]

Takeaway: Reasonable royalty damages for patent infringement can be calculated as a percentage of a product’s sales price, but the damage award must be commensurate with the value of the improvement taught by the patent. On January 12, the United States Court of Appeals for the Federal Circuit decided that a district court erred in […]

Takeaway: Do not delay in enforcing your intellectual property rights, as a delay in bringing legal action may lead to forfeiture of the right to seek equitable relief. On January 29th, the Ninth Circuit Court of Appeals handed down its ruling on Eat Right Foods Ltd. v. Whole Foods Market, Inc. et al. The suit, […]

How does Patentfiler® compare against Legal Zoom®?  

Takeaway: The USPTO has issued a rule that establishes confidentiality between patent agents and their clients. On November 7, 2017, the United States Patent and Trademark Office released a new rule that indicates that patent agents, as well as attorneys, will be covered by the privilege rule at the Patent Trial and Appeal Board. In […]

Takeaway: Litigation financing may be an avenue to consider if you cannot afford to enforce your intellectual property through litigation. It is commonly known that patent and intellectual property litigation is among the most expensive areas to litigate in today’s competitive marketplace. This may cause issues for independent inventors or small entities that cannot afford […]

Takeaway: Make sure that you have been transferred “all substantial rights” in a patent before you initiate a lawsuit. Receiving a license on the patent from a parent company is not enough, you must have rights to the patent directly from the entity that owns the patent itself. In an action that has been pending […]

Takeaway: A common law agency theory analysis applies to the safe harbor defense under the Digital Millennium Copyright Act. In Mavrix Photographs, LLC v. LiveJournal, Inc., a new issue was presented under the Digital Millennium Copyright Act’s (“DMCA”) safe harbor protection provision 17 U.S.C. § 512(c). The issue was whether common law agency theories apply […]

Takeaway: In the world of intellectual property licensing it is important to obtain the proper intellectual property interest in the works that you are licensing or you may not have standing to sue. DRK Photo is a stock photography agency that markets and licenses images created by others. One of the entities they licensed images […]

Takeaway: A crude play depicting the well-known children’s story “How the Grinch Stole Christmas!” was found to be fair use of the original work. Plaintiff Matthew Lombardo, the author of Who’s Holiday!, a play that makes fun of and parodies the Dr. Seuss book, How the Grinch Stole Christmas!, brought a declaratory judgement action that […]

Takeaway: The Ninth Circuit recently affirmed an injunction against VidAngel Inc., a movie filtering service that allows users to stream films without nudity and violence, in favor of Walt Disney Studios and other Hollywood studios. VidAngel claimed that its services are protected under Family Movie Act (“FMA”), an obscure 2005 federal statute that was aimed […]

Takeaway: On August 18, 2017, The Wonderful Company, owner of the trademark “Get Crackin’,” and Wonderful Pistachios & Almonds LLC, a distributor of the Wonderful® brand of pistachio nuts, filed a suit against UTZ Quality Foods and Rice Investments and alleged that UTZ and Rice Investments were infringing on the “Get Crackin’” mark with their […]

Takeaway: In a highly publicized patent infringement case, Electronic Frontier Foundation has come away with a win from the Federal Circuit, invalidating a patent concerning podcasting. This was an important win for EFF and its mission to fight patent trolls. The initial suit was filed back in 2013 in an effort to fight for the […]

Takeaway: Nokia Corp. acquired Alcatel-Lucent for approximately $17 billion in 2015 and is now in the process of selling its acquired patents through an investor pool to venture-backed startups. Through Aqua Licensing LLP, a patent advisory and transaction firm, Nokia and Alcatel-Lucent will be parsing through a portfolio of 4,260 patent families; 6,069 granted patents; and 734 patent […]

Takeaway: Through rejection of the “Promise Doctrine” and other recent rulings by the Supreme Court of Canada, there appears to be a new trend of increasing intellectual property protection in Canada, which suggests increasing confidence in R&D and IP investment in Canada. There has been concern in recent years about the strength of IP protection […]

Takeaway: Defendants of patent infringement suits can still be liable for additional damages if the patent is still being infringed upon after the damages verdict was awarded. After a long-fought patent infringement case between Apple and the University of Wisconsin-Madison patent-licensing division, Judge William Conley of the Western District of Wisconsin added $272 million to […]

Takeaway: Walmart was found to be willfully infringing on a trademark against the warnings of its legal counsel and now is paying the price, which could be around $100 million. Intellectual property litigation can be expensive, and large companies sometimes take advantage of this fact to bully smaller entities out of exercising their intellectual property rights. […]

Takeaway: Biosimilar drug producers no longer have to get FDA approval of their generic drugs before giving notice of commercial marketing to competitors, which may mean more choices and cheaper drug prices. On June 12, the Supreme Court handed down a much-anticipated opinion that is a big win for companies working on biosimilar drugs. Justice […]

Takeaway: The Supreme Court is questioning the power of the U.S. Patent Office to take away patent rights once granted. The court will hear one case on whether the Patent Trial and Appeal Board (PTAB) must address every issue in the final written decision and another on whether or not the PTAB’s inter parte review […]

Takeaway: The sky is the limit and creativity is rewarded when it comes to trademarking or patenting your innovation. Since President Donald Trump’s now famous “covfefe” tweet stating, “Despite the constant negative press covfefe,” the U.S. Patent and Trademark Office (UPSTO) has received over 30 filings with variations of the word “covfefe.” Twenty-five of those […]

Takeaway: Before a takedown notice can be issued for copyrighted material under the Digital Millennium Copyright Act, fair use must be considered. If the copyright holder has a subjective good faith belief that the alleged infringement is not fair use, they will not be held liable in court for sending the takedown notice. On June […]

Takeaway: The Ninth Circuit held that GOOGLE remains as a viable and protectable trademark and has not been genericized the way terms like KLEENEX have. In David Elliott et al. v. Google, a Ninth Circuit Court of Appeals panel affirmed the district court’s summary judgment in favor of Google in an action that sought to […]

Takeaway: An online marketplace like Amazon is protected under the safe harbour provisions outlined in the Digital Millennium Copyright Act if third-party sellers on its site are infringing copyrights of others. The Federal Circuit upheld the U.S. District Court of Western District of Washington’s summary judgment for Amazon in Milo & Gabby LLC v. Amazon.com […]

Cislo & Thomas LLP was a proud participant and exhibitor of the largest attended Barcelona Annual Meeting hosted by the International Trademark Association on May 20 – 24. Over 10,000 patent and trademark attorneys were at the 139th Annual meeting flying in from every corner of the globe. At INTA, Cislo & Thomas LLP presented its […]

Takeaway: The PTAB and district courts are not bound by each other’s contrary decisions. Even if presented with the same evidence, because PTAB’s proof of invalidity is the “preponderance of the evidence standard” rather than the district courts’ “clear and convincing evidence” standard, they may reach different conclusions. In Delaware District Court, plaintiff Novartis’ patents, […]

Image from https://www.gofundme.com/fingerlakingood Takeaway: Small business in New York is fighting back KFC for its use of “Finger Lakin’ Good” which KFC alleges is infringing on its famous slogan “Finger Lickin’ Good.” A New York-based family-owned business for a 70-acre development intended to include a brew hub, a pavilion, and a sunflower patch wanted to […]

Takeaway: Hailo Technologies, LLC filed a complaint for patent infringement by Uber and Lyft for their software system that allegedly infringes Hailo’s software patent for an “automated vehicle dispatch and payment honoring system.” Image from http://www.newsweek.com Hailo Technologies LLC’s patent, filed in 1997, was directed to a software system that allowed a user to pick […]

Image from http://rhymejunkie.com Takeaway: The estate of Youtuber Messy Mya filed a suit against Beyoncé for copyright infringement for sampling Mya saying, “what happened in New Orleans?” in the beginning of “Formation” without permission.  The voice sample is hard to dispute as any voice other than Mya’s so it will be interesting to see how […]

Takeaway: The Patent Trial and Appeal Board (“PTAB”) denied instituting an inter  partes review based on the patent owner’s challenge that the prior art used for asserting obviousness could not afford the provisional filing date because there was insufficient written description support and therefore should not qualify as prior art. Provisional Patent applications must sufficiently […]

Takeaway: In the United States, filing a trademark registration for a logo and presenting it in black and white allows the trademark owner to use the mark in any color.  However, that is not always the case abroad, so trademark owners should also check with local counsel for rules pertaining to how the presentation of color […]

Takeaway: Although the Patent Trial and Appeal Board (“PTAB”) is to construe patent claims under the “broadest reasonable interpretation,” in practice, the PTAB does not allow the broadest “possible” interpretation and seems to be limiting the claim’s meaning in view of the prosecution history, which is in line with how the courts perform claim construction […]

Takeaway: Trademark Trial and Appeal Board held that Little Caesar’s collection of repeated term marks does not rise to the level of “family of marks” and granting such status to Little Caesar’s collection of marks would be giving excessively broad rights. In In re LC Trademarks, Inc. (TTAB December 29, 2016), the Trademark Trial and […]

Takeaway: Supreme Court will decide whether the patent venue statute, 28 U.S.C. § 1400(b), which states that patent infringement cases are to be brought in the judicial district where the defendant “resides,” is supplemented by the general venue statute, 28 U.S.C. §1391, which deems that a corporate entity may reside in multiple judicial districts. On […]

Takeaway: Beginning December 1, 2016, the United States Copyright Office will be using a new electric filing system for registering websites, apps, and other online platforms for “safe harbor” protection under Section 512 of the Digital Millennium Copyright Act (“DMCA”).  If you have never filed designated agent information with the Copyright Office for your online […]

Takeaway: Chipotle received a cease-and-desist letter in July regarding their trademark “Tasty Made” for their new venture, a burger chain with sustainable ingredients and beef raised free form hormones and antibiotics, and the burger battle is on!   An East Coast burger chain that opened in 2010, serving as the official burger of the Boston Red […]

The Federal Bar Association comprises Federal Judicial Officers and attorneys who practice in federal court. Membership and participation affords attorneys great access to federal court news and practices, as well as an opportunity to interact with our Federal Judicial Officers.  Our Managing Partner, Dan Cislo, Esq., has been on the Board of Directors for the Los […]

U.S. Patent No. 2016/0201888As described in patent application “Audience Interaction Projection System,”  Disney intends to create a live audience experience at its Star Wars Land, wherein audience members can participate in a fight using realistic Lightsabers. The “particulate matter” air above the audience will be filled with water vapor, condensed water, liquid nitrogen, dust, and theatrical […]

Takeaway: Educate employees to identify fraudulent domain name solicitors and when in doubt, to contact their legal counsel prior to responding. In the rise of email scams, trademark owners are receiving false claims that their domain name rights are in jeopardy. Some of these false claims would result in cybersquatting, which is registering confusingly similar domain […]

Takeaway: The U.S. Olympic Committee (“USOC”) has been sending warning messages to business for tweeting using hashtags #TeamUSA and #Rio2016—the legal conclusion of their liability, if any, is yet to be determined. For decades, the USOC has been protecting its trademarks relating to the Olympic Games such as  “Rio 2016” and “Sochi 2014,” as well as […]

Takeaway: Provisional applications may only become effective as prior art if the claims of subsequently-filed issued patent are supported by the provisional application.   Prosecuting attorneys faced with 35 USC §102(e) rejections should always evaluate whether it is possible to rebut a rejection by arguing that the claims of the published application or issued patent being […]

One of the most highly anticipated lawsuits, filed by EFF against the U.S. Government, on July 21, 2016 will, if successful, strike down one of United States’ most controversial technology laws which the U.S. has been pressuring the rest of the world to adopt. The rule at issue is section 1201 of the DMCA of 1998, […]

Takeaway: Web scraping after receiving a cease and desist letter is held by the 9th Circuit to be in violation of the Computer Fraud and Abuse Act (“CFAA”). Recently, the 9th Circuit Court of Appeals clarified the web scraping debate in Facebook v. Power Ventures, 2016 DJDAR 7051 (July 12, 2016).  The 9th Circuit held that […]

Join us in an inspirational and enlightening evening on the 3rd floor of the Santa Monica Promenade Mall on Thursday, August 11, 2016 from 5:30 PM to 9:00 PM! Our curated panel of experts will share their stories and experiences along with priceless advice for any aspiring entrepreneurs. Our experts range in their expertise but […]

Takeaway: For fee-shifting in copyright cases, courts must place “significant weight” on the “objective unreasonableness of a losing party’s position,” which will affect attorneys fee awards in copyright cases.  On June 16, 2016, the Supreme Court unanimously held that the district courts must place “substantial weight” on objective reasonableness or lack thereof of a losing party’s […]

Takeaway: Supreme Court’s stance on enhanced damages for patent infringement is a win for patent holders, such that their burden of proof to show egregious behavior is lowered and the rigid Seagate test that required a showing of “objective recklessness” was overturned. Enhanced damages up to 3 times actual damages may become more common.  On […]

Takeaway: When making a likelihood of confusion analysis, for similarity of the marks, the court is to compare the marks without dissecting the letters, but as a single unitary expression. The Federal Circuit, in Oakville Hills Cellar, Inc. v. Georgallis Holdings, LLC, [2016-1103], agreed with the TTAB and held that there is no likelihood of […]

Takeaway: With the United Kingdom leaving the European Union, the new Unified Patent Court (“UPC”) and Unitary Patent may be delayed in becoming operative and applying for EU trademarks in the UK will likely change With respect to the United Kingdom’s (“UK”) vote to leave the European Union (“EU”), known as “Brexit,” it is important […]

Takeaway: Patents add to a start-up’s strategic advantages.  Beyond serving as a tool for start-ups to get investments and protect their products or services, a patent can serve a startup company in many other ways that can achieve a multiplier effect. A startup may not be the best fit in certain markets that its patent […]

Takeaway: The USPTO needs to improve patent examining by applying a different examination criteria.  The USPTO’s idealized system for processing patent applications has yet to be achieved because patent examiners, desiring to dispose of patent applications quickly, tend to give unreasonably broad interpretations to the claim terms in order to allow them to quickly find a reference […]

Takeaway: The USPTO has offered new guidance as to what “natural products” might be patentable.  There are two new examples added in the USPTO patent eligibility examples for “natural products” based inventions. The new examples add Examples 28-33 to the USPTO’s body of patent eligibility examples, of which Examples 28 and 30 relate to natural […]

Takeaway: With the explosive growth of patent filings and online publications, it is critical to file your patent application promptly.  Even after operating for half a decade under the Leahy Smith America Invents Act (“AIA”), patent practitioners often find it difficult to anticipate the evolution of case law pertaining to the conditions under which a […]

Takeaway: The Federal Circuit finally confirms that there are types of software that are not inherently abstract, especially if the claims at issue were directed to specific features that improves the way a computer operates. In Enfish, LLC v. Microsoft Corp (Fed. Cir. 2016), the Federal Circuit reversed, for the first time, a district court’s […]

Takeaway: In the Seventh Circuit, to bring a trademark infringement lawsuit, including by dilution or reverse confusion, the litigant must present evidence of harm or likelihood of harm. In Hugunin, et al. v. Land O’ Lakes, Inc., Case No. 15-2815 (7th Cir., Mar. 1, 2016) (Posner, J), the court addressed the issue of whether a […]

Takeaway: Trade secrets that were once protected only at the state level are now under federalized trade secrets protection as well. One of the key immediate impact for employers is DTSA’s new requirement for employment and contractor agreements affecting confidential information. The Defend Trade Secrets Act (“DTSA”) models the Uniform Trade Secrets Act and duplicates the […]

Takeaway: Trade secret misappropriation may lead to extremely serious legal consequences, especially in terms of punitive damages. In Epic Systems v. Tata Consultancy Services, a Western District of Wisconsin jury awarded Epic Systems close to $1 billion ($240 million for compensatory damages and $700 million in punitive damages) on state-law trade-secret misappropriation, breach-of-contract claims, unfair competition, and […]

Takeaway: The courts look at the overall design of the embodiments in the design patent to determine the proper claim construction or patent scope. In Sport Dimension, Inc. v. Coleman Co., Inc. (Fed. Cir. April 19, 2016), Coleman accused Sport Dimension of infringing on U.S. Patent No. D623,714 (the “D’714 patent”) for a “Personal Flotation Device.” […]

Takeaway: A reversal by the Supreme Court will have a dramatic impact on inter partes review (IPR) proceedings: if Cuozzo wins on the claim construction standard to be the plain and ordinary meaning standard, the number of future IPR proceedings may decline, but if Cuozzo wins on appealability, the number of appeals to the Federal […]

Takeaway: It is very important to file a provisional patent as soon as possible as the first step to patent protection.  The establishment of a first-to-file patent priority system in the United States, and an explosive growth of prior art documents on the web and at various patent offices throughout the world require quick and early […]

Takeaway: There will likely soon be a federal claim for trade secret misappropriation under the Defend Trade Secrets Act (“DTSA”). The DTSA: — models the Uniform Trade Secrets Act and duplicates the definitions of “trade secret,” “misappropriation,” and “improper means”. — offers immunity for whistleblowers and requires that employment contracts provide employees with notice of […]

Takeaway: UPS started a campaign to give “UPS” an acronymically new meaning—United Problem Solvers, possibly trying to both broaden its scope of trademark protection as well possibly using that platform to be more than just a mail courier. Given that UPS (“United Parcel Service”) is notably powerful and well-known trademark, it is no surprise that […]

Takeaway: A physical card or chance game may be patentable if it includes new or original physical elements, such as a new or original deck of cards but generally, “a set of rules for a game” are  per se patent-ineligible In In re Smith, No. 2015-1664 (Fed. Cir. March 10, 2016) (opinion by Judge Stoll, […]