C & T Newsletters
July 2025
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.
Trademark owners are reminded that failure to timely file a Section 8 affidavit or declaration of use (or excusable nonuse) will result in automatic cancellation of a federal trademark registration with no exceptions.
Under 15 U.S.C. §1058(a), a Section 8 filing must be made within the prescribed period, which includes a grace period. If the deadline passes without a proper filing, even paying a deficiency surcharge cannot cure the error. The U.S. Patent and Trademark Office (USPTO) has no discretion to extend or waive this statutory deadline, even in cases of good faith, negligence, or ongoing litigation.
Recent case law, including Men’s Warehouse, LLC v. WKND NYC LLC, confirms the strict enforcement of this rule: the pendency of a cancellation proceeding does not toll the filing deadline, and once the grace period expires, cancellation is automatic and irreversible.
Trademark owners should mark their calendars and monitor deadlines closely. For those facing cancellation due to a missed Section 8 filing, the only recourse may be to file a new application, though expedited treatment is only available in limited circumstances (see TMEP §702.02).
Supreme Court to Decide If ISPs Are Liable for Users’ Online Copyright Infringement
Takeaway: The U.S. Supreme Court will review whether internet providers like Cox Communications can be held liable for users’ online copyright infringement, a case that could significantly impact how ISPs manage and monitor internet access.
The U.S. Supreme Court has agreed to hear a case from Cox Communications challenging a ruling that held the company liable for contributory copyright infringement after users pirated music online. The Fourth Circuit upheld a $1 billion verdict for contributory infringement but reversed a finding of vicarious liability, saying Cox did not directly profit from the piracy.
Cox argues that simply providing internet access shouldn’t make ISPs liable for copyright violations by users and warns the ruling could threaten open internet access. The Supreme Court declined to hear a separate petition from music publishers seeking to reinstate the full $1 billion award. The U.S. solicitor general supported hearing Cox’s case but agreed with the lower court that the publishers failed to prove Cox financially benefited from the infringement.
A similar case involving Grande Communications is also awaiting a decision from the Court.
Leonardo DiCaprio and the Cost of Unlicensed Sharing
Takeaway: Leonardo DiCaprio’s lawsuit for posting a copyrighted video without permission highlights the critical need for content creators and influencers to respect intellectual property rights in the digital age.
Leonardo DiCaprio is being sued by Global Weather Productions LLC for allegedly posting a copyrighted video on his Instagram without permission. The video, depicting the destruction caused by Hurricane Dorian, was shared with his 61 million followers, prompting legal action over unauthorized use and loss of content value.
This case highlights the complexities of copyright law in the digital age, where sharing content is easy but often legally risky. Copyright gives creators control over how their work is used, and unauthorized sharing—especially by high-profile individuals—can lead to financial harm and legal consequences.
For content creators, it’s a reminder to protect their work and monitor its use. For influencers and the general public, it underscores the importance of seeking permission before sharing copyrighted material. Respecting intellectual property not only supports creators but also ensures a fair and sustainable digital content ecosystem.
USPTO Launches AI Tool “DesignVision” to Modernize Design Patent Searches
Takeaway: The USPTO has launched DesignVision, an AI-powered image search tool that enhances the speed and accuracy of design patent examinations, marking a major step toward modernizing IP review and improving patent quality.
The U.S. Patent and Trademark Office has unveiled DesignVision, a new AI-powered image search tool that significantly upgrades how design patent examiners search for prior art. Integrated into the USPTO’s PE2E search suite, DesignVision allows examiners to submit images and receive visually similar results from U.S., EU, WIPO, and other global design databases—streamlining a once-manual, time-consuming process.
Designed to enhance both speed and accuracy, the tool helps examiners avoid missing relevant prior art and improves examination quality. DesignVision supplements, not replaces, traditional tools, and its use is recorded in each application for transparency.
While currently limited to internal USPTO use, the agency may open the tool to attorneys and inventors in the future. As part of the USPTO’s broader AI modernization plan, DesignVision marks a key step toward faster, more consistent, and higher-quality patent examination.
Federal Circuit Strikes Down USAA Patent, Emphasizing Limits on Software Patent Eligibility
Takeaway: The Federal Circuit invalidated USAA’s mobile check deposit patent for claiming an abstract idea without inventive technology, reinforcing that using generic devices for routine tasks is not patent-eligible under § 101.
The Federal Circuit has reversed a major win for United Services Automobile Association (USAA), ruling that one of its key mobile check deposit patents is invalid under 35 U.S.C. § 101. In USAA v. PNC Bank N.A., the court held that U.S. Patent No. 10,402,638 covers an abstract idea and lacks the inventive concept required for patent eligibility.
USAA had sued PNC for infringing multiple patents related to mobile check deposit. While other patents were invalidated or dropped, the ‘638 patent remained at issue. The Eastern District of Texas had granted summary judgment for USAA, finding the claims eligible, and a jury later found PNC had infringed. PNC appealed, arguing the patent simply used generic mobile technology to perform routine banking steps.
The Federal Circuit agreed, applying the Alice framework and finding the claims abstract and implemented using conventional technology like mobile phones and OCR. Because the patent lacked any specific technological improvement, the court ruled it was ineligible.
With the patent invalidated, the court dismissed USAA’s cross-appeal over damages as moot. The ruling is a clear signal that abstract business methods, even when performed on mobile devices, are unlikely to survive § 101 scrutiny without concrete technical innovation.
Ninth Circuit Rules in Favor of Doctor’s Best, Inc. in Trademark Dispute with Nature’s Way Over Nature’s Day Mark
Takeaway: The Ninth Circuit ruled in favor of Doctor’s Best, Inc. concluding that transporting products marked as “Nature’s Day” within the U.S. for export did not infringe Nature’s Way’s trademark, reinforcing that U.S. trademark law applies primarily to domestic commerce.
The Ninth Circuit Court recently ruled in favor of Doctor’s Best, Inc., affirming that their “Nature’s Day” supplement line did not infringe on Nature’s Way Products, LLC’s trademark for “Nature’s Way.” The case centered around the Lanham Act and the scope of U.S. trademark protections for products sold overseas.
Nature’s Way, which has held the “Nature’s Way” trademark for years, filed a counterclaim after Doctor’s Best sought a U.S. trademark for “Nature’s Day.” However, Doctor’s Best only sold the product abroad, despite manufacturing it in California. The key issue was whether Doctor’s Best’s actions, transporting the supplements within the U.S. for export, qualified as actionable under U.S. trademark law. The Ninth Circuit applied the Abitron framework, which limits trademark infringement claims to activities in U.S. commerce. Since the only domestic conduct involved transportation for foreign markets, the court ruled there was no infringement.
The court also found no likelihood of consumer confusion in the U.S. markets, applying the Sleekcraft factors. With no confusion proven and limited domestic activity, the court sided with Doctor’s Best. This decision reaffirms that U.S. trademark law applies to domestic commerce and clarifies when foreign sales can be challenged under U.S. law.
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Federal Circuit Overturns $18M Verdict in “Comfy” Hoodie Patent Case, Clarifying Design Patent Scope
Takeaway: The Federal Circuit, siding with Top Brand LLC, reversed an $18 million verdict against the company by ruling that (1) Cozy Comfort’s design patent was narrowed by prosecution disclaimers, establishing that such disclaimers now apply to design patents and highlighting the importance of careful patent prosecution strategy, and (2) there was insufficient trademark infringement of the word “Cozy.”
In a landmark decision, the Federal Circuit has reversed an $18 million jury award in Top Brand LLC v. Cozy Comfort Company LLC, a closely watched dispute over the popular oversized “Comfy” hooded blanket. The court’s ruling not only wiped out millions in damages but also established that prosecution-history disclaimer applies to design patents, a first at the appellate level.
The case centered on U.S. Design Patent No. D859,788, owned by Cozy Comfort, and two registered trademarks for “THE COMFY.” A jury had previously sided with Cozy Comfort, finding Top Brand’s competing hooded blankets infringed both the design patent and trademarks. Top Brand appealed the decision, challenging the scope of the patent and the validity of the infringement claims.
On review, the Federal Circuit held that Cozy Comfort had made narrowing statements during the patent’s prosecution to distinguish its design from prior art. Those statements—concerning the shape of the hem and pocket—were deemed binding disclaimers, effectively limiting the scope of the patented design. Since Top Brand’s products incorporated the disclaimed features, the court ruled no reasonable jury could find infringement.
The court also reversed the trademark verdict, concluding that “COMFY” is descriptive when used in connection with blanket products and that Top Brand’s use did not infringe.
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