May 2020

The Supreme Court Rules Willfulness is Not a Requirement for Disgorgement of Profits

Takeaway: Willfulness is not a precondition in trademark infringement cases for disgorgement of a defendant’s profits and is only a factor in a court’s analysis..

The Supreme Court ruled just last month in Romag Fasteners, Inc. v. Fossil Group, Inc. that willfulness is not a precondition to require trademark infringers to hand over their profits in a trademark infringement case.

In the opinion for the court, Justice Gorsuch wrote, “The Lanham Act provision governing remedies for trademark violations … has never required such a showing. Reading words into a statute should be avoided, especially when they are included elsewhere in the very same statute.” However, Gorsuch was careful to note that willfulness was still an important factor for the court’s analysis in deciding whether a plaintiff should be awarded a defendant’s profits in a trademark infringement case.


Lucky Not Precluded by Res Judicata in Trademark Case

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

After a decade long trademark battle involving Lucky Brand, a famous jean manufacturing company, and Marcel Fashions Group, a small rival company, the Supreme Court weighed in on the case. The Supreme Court, by unanimous vote, ruled that Lucky Brand was not barred by res judicata from raising a defense that the Second Circuit said it could have raised at a much earlier stage in the litigation. The Supreme Court reasoned that the earlier case was much too different for preclusion to apply and different action was challenged, as well as different claims in the 2011 and 2005 actions. Therefore, Lucky Brand was not precluded from raising new defenses as the case progressed and “involved different marks, different legal theories, and different conduct.” The issue of res judicata is particularly important in the “the trademark context, where the enforceability of a mark and likelihood of confusion between marks often turns on extrinsic facts that change over time.”

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Ninth Circuit Weighs In On Whether Attorney’s Fees are Recoverable In Copyright Declaratory Relief Action

Takeaway: Attorneys’ fees are recoverable even when declaratory relief is sought in a copyright action.

The Ninth Circuit recently vacated a California District Court’s order denying recovery of attorneys’ fees under the Copyright Act. The panel of judges in Doc’s Dream, LLC v. Dolores Press, Inc. decided whether attorneys’ fees are recoverable after Dolores Press, a Christian media company, defeated a copyright abandonment challenge from a rival, Doc’s Dream LLC. The Ninth Circuit held that even when a claim for declaratory relief is sought, any claim that turns on the existence of whether a valid copyright exists and has been infringed invokes the Copyright Act and attorneys’ fees may be recoverable in the action.


The USPTO Announces a new COVID-19 Pilot Program for Prioritized Examination to Patent Applicants

Takeaway: Small or Micro Entities can bypass traditional fees associated with prioritized examination under the USPTO’s new program.

The USPTO announces its new program granting prioritized examination to patent applicants for small or micro entities under its new COVID-19 pilot program. The program will allow small or micro entities to bypass typical fees associated with prioritized examination. Furthermore, the USPTO hopes to reach final decisions regarding applications submitted in this program within 6 months, if the applicants are able to response quickly to all communications from the USPTO regarding applications.

The Secretary of Commerce for Intellectual Property and Director of the USPTO commented on the program stating, “Independent inventors and small businesses are often the difference makers when it comes to cutting-edge innovation and the growth of our economy.” The program will also ease small entities, which are likely those in most need of assistance during this time, from having to pay the additional fees and will bring greater access to possibly lifesaving treatments to the market more quickly.


The USPTO Announces the Launch of its New IP Marketplace Platform

Takeaway: The public will have greater access to COVID-19 related patents and patent applications.

On May 4, 2020, the USPTO announced its new intellectual property platform entitled, “Patent 4 Partnerships.” This program will provide the public with a user friendly platform which will allow users to search a repository of patents and patent applications related to COVID-19. This will also provide the public access to new COVID-19 related intellectual property available for licensing. Additionally, it will facilitate licensing and the commercialization of new technology in addition to providing users greater access to information regarding the patents such as inventor name, assignee, and issue date. Users are invited to interact and to provide comments on the main page of the platform.


Best Practices for Avoiding Phishing Scams During a Time of Elevated Malicious Activity

Understanding Phishing Scams

The first thing that is necessary to prevent a cybersecurity incident such as phishing is to understand what phishing is and how it happens. A phishing attack is most often executed either through an email or messenger service. It happens when, for example, an attacker sends an email that looks like it is coming from a legitimate company in an attempt to get you to click on a link within the email or message. Once the attacker is able to get you to click on something within the email, the link may route you to a fake website where they solicit personal information from the user or it may even initiate a download having a malware payload to cause damage to the user or company’s systems.

An example of this may be if an attacker makes an email from a website such as indicating that updated payment information is necessary to process a recent order. The link in the email may route you to a fake website that looks like it is from the same company. The fake website may prompt you to input the information they are looking for, like your name and credit card information. Once you submit this information, some of the phishing schemes will route you back to the legitimate website to make it seem as if nothing ever happened.

To avoid this from happening to you or your employees it may be a good idea to educate people how to identify phishing emails or messages in the first place and also how to respond to legitimate emails.

Identifying a Phishing Scam

The problem with phishing email scams is that they are becoming more and more difficult to identify at first glance. They may look exactly the same as a real email from a legitimate company. The first thing to think about when identifying phishing emails is to consider whether you actually have an account with such a company. If you do, you may want to think about whether you actually made an order or took some action that would prompt such an email. This may seem like common sense, but often times these types of considerations are overlooked.

Next, you will want to identify where this email is actually sent from. You can typically do this by hovering over the sender’s email address. Sometimes the attacker will use a technique called spoofing where they make the display name look legitimate but it is actually being sent from another email address. When you hover over the display name, you may be able to see that it is not coming from the same domain or email as the spoofed name. This is a sure-fire way to identify that the email is fraudulent.

An additional way to identify that the email is coming from a fraudulent source is to hover over the links that the email would like you to click on. By doing this, it will show the URL that it is attempting to send you to. If it is not an address that you recognize, do not click on the link because it is likely coming from an illegitimate source and may be attempting to cause you harm in some way.

How to Avoid Phishing Attacks

Finally, if you are not sure if something is a phishing attack or not, then you should not click on the links in the email or message. Some emails are becoming so sophisticated that they are difficult to recognize. Therefore, even if it is a legitimate email, it is recommended that you do not click on links in emails unless it is coming from someone you absolutely know is sending you something legitimate. If the email is coming from a company that operates online or is a business that you can contact directly, close out of the email and contact them directly.

For example, in the hypothetical from above, you would not want to click on a link to update your payment information, but rather, go directly to and check to see if you have some sort of notification in your account. Further, if the email requests that you contact them via a phone number in the email, do not use that number either. Rather, look up the real phone number online and then call them from the phone number listed on the company’s website to see if there really is an action you need to take.


Cislo & Thomas LLP Spotlight

Cislo & Thomas and COVID-19 Relief Donations

With your generous help, Cislo & Thomas LLP has donated a total of $9,000 to the LA Dream Center and the Union Rescue Mission for COVID-19 support and relief.

Cislo & Thomas has supported both of these incredible organizations in the past and is thankful that they are currently working so hard on the front lines to assist those who have been directly affected by this pandemic by providing meals, care packages, and shelter.

If you are interested in donating directly to these great causes, you can do so here:




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