Weekly IP Takeaways

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 available on the USPTO website would lead to increased email scams and such, the USPTO modified the rule in a revised Examination Guide in Part III.A at page 6 therein. The revised rule provides that the attorneys can create a separate email address from the attorney’s main contact email to satisfy the rule; provided, the separate email address is regularly monitored. It is admirable that the USPTO desires a means to easily contact applicants should their attorneys disappear or the like. Having publicly available emails for applicants is not optimal given the amount of scam mail and email trademark applicants already receive. The revised rule is an improvement.

2. In an opinion regarding collecting pre-suit damages in patent cases, the Federal Circuit held that a licensee’s failure to mark licensed products, even where sales of the licensed products stopped prior to the litigation, precluded recovery of damages under the marking statute, 35 U.S.C. 287(a), until the complaint was filed. Typically, under the marking statute, pre-suit damages in patent cases cannot be recovered unless patented products are marked with the patent number, or, where the patent owner takes action to provide the accused infringer with actual notice of the alleged infringement. The statute requires “proof that the infringer was notified of the infringement.” The Federal Circuit stated that this requires an affirmative act by the patent owner. The law on marking is inconsistent in that the mere filing of a lawsuit (as opposed to serving the lawsuit on the accused infringement) is typically sufficient for notice under the marking statute, although it is not “proof that the infringer was notified of the infringement.” Similarly, requiring the patent owner to take affirmative steps to provide notice is not necessarily consistent with the statutory language in that the language “proof that the infringer was notified of the infringement” is in the passive voice – “was notified,” which would not seem to require that the patent owner itself provide the notice. Furthermore, the Federal Circuit determined that willful infringement does not satisfy the notice requirement in the marking statute, even though willfulness requires knowledge of the asserted patent. While consistent with the Federal Circuit’s approach to marking, it is not consistent with the statutory language or the position that mere filing of a complaint satisfies the notice requirement. Thus, while marking law is not particularly unclear, there are logical inconsistencies in the corpus of law on marking.

3. Hot sauce maker Tapatio Foods, LLC secured a permanent injunction in a default context from Judge Drozd in the Eastern District of California. The Order is here. The defendant sold a mediated hot sauce containing THC and called “Tiowaxy.” Tapatio brought claims for trademark infringement, unfair competition, and trademark dilution by tarnishment, asserting that associating Tapatio with a Schedule I controlled substance reflected badly on Tapatio. The defendant, and individual, did not respond to the lawsuit. Default was entered, and a motion for entry of default judgment and permanent injunction followed. The defendant did not respond to the motion, either. The Court, affirming the Report and Recommendations of the Magistrate Judge, granted the motion and entered a stringent permanent injunction against the defendant.