Weekly IP Takeaways

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 not used in a method of advertising, and was not an attention-grabbing short phrase that qualified as a slogan. Trademark cases may support advertising injury insurance coverage, but the availability of coverage in such cases is getting tighter. If one is in a litigious, trademark-intensive industry, it may make sense to talk to one’s insurance agent to make there is robust advertising injury coverage for trademark cases.

2. Regarding the sometimes complex issue of inventorship on a patent, the Federal Circuit Court of Appeals ruled that a person can be an inventor on a patent if they made a significant contribution to the patented invention, even if the person’s contribution is not expressly recited in any of the claims. Particularly with complex inventions, inventorship is not always a clearly delineated process. Accordingly, patent attorneys should carefully question their clients to make sure that inventorship in patent applications is correct. While inventorship can often be corrected, failure to have proper inventorship at the outset can create some significant headaches and issues.

3. In an opinion at the end of the 2019-2020 term, The U.S. Supreme Court rejected the United States Patent and Trademark Office’s (“USPTO”) request for a categorical rule that adding “.com” to an otherwise generic term does not render the applied-for mark registrable. Instead, the Supreme Court said that the addition of “.com” to a generic name could transform it into a registrable trademark if consumers perceive the ”generic.com” name as a trademark. The Supreme Court did not find that “generic.com” trademarks are always distinctive, and noted that there remain significant hurdles to registering and/or enforcing such marks. The takeaway here is that there will likely be a flood of new trademark applications to take advantage of this ruling. Be prepared, however, to submit to the USPTO strong evidence of consumer perception of the “generic.com” name as a trademark. Otherwise, it may be tough to secure registration.