Weekly IP Takeaways

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 infringing goods at the border. Last week, a bipartisan bill was introduced in the Senate that would add design patents to the list of rights enforceable at the border. Because design patents protect ornamental appearance of an article of manufacture, as opposed to any functionality, it should be a straightforward matter for Customs and Border Protection to assess possible infringement of imported goods. If passed, this will increase the value of design patents as a substantial component of one’s IP portfolio.

2. Last week, the IP Subcommittee of the Senate Judiciary Committee heard testimony concerning fraudulent trademark applications, largely from China, that are cluttering the U.S. trademark register. In essence, a substantial percentage of trademark registrations from Chinese applicants are fraudulent based on fake specimens being submitted to support registration. In many cases, these applications are advancing to registration. As a result, there are fewer trademarks available to genuine trademark applicants to use. The USPTO is increasing scrutiny of specimens, and requiring non-U.S. applicants to use U.S. legal counsel to file trademark applications. From the Senate hearing, an additional suggestion was made to lower the standard for proving fraud when attacking a trademark registration. The bottom line is that this is a significant issue, and trademark counsel should carefully review any marks used to refuse registration to make sure they are not bogus.

3. In a recent domain name/UDRP (Uniform Dispute Resolution Policy) challenge filed against blendid.com, the Panel found for the domain name owner. The challenger filed an intent-to-use trademark application for which use had yet to be established. The challenger asserted that it had some common law trademark rights, but those were thin to non-existent, and did not support the domain name challenge. The takeaway is that one must be cautious in filing a UDRP challenge where the trademark rights on which it is predicated are not well-established.