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Tag Archives: USPTO

Supreme Court Strikes Down Bar to Registration of “Immoral” or “Scandalous” Trademarks

Today the US Supreme Court announced its opinion in Iancu v. Brunetti, holding that the Lanham Act’s provisions barring the registration of “scandalous” or “immoral” trademarks are unconstitutional under the First Amendment. The facts are straightforward:  Erik Brunetti applied to register the trademark FUCT for millennial street clothes.  The USPTO denied registration under Section 2(a)

When Can A Patent Challenger Appeal The PTO’s Decision To Uphold A Patent?

In 2011, Congress passed the America Invents Act (“AIA”), which established new ways to challenge the validity of an issued patent before the U.S. Patent and Trademark Office (“PTO”).  These procedures were seen by many as a cheaper alternative to litigation in court and have become popular.  Over 1,600 inter partes review (“IPR”) petitions were

The A-CBDs of Registering Hemp-Related Trademarks: New Guidance from the USPTO

Brand owners seeking to register cannabis-related trademarks take note: the U.S. Patent and Trademark Office (USPTO) recently issued guidance regarding the effects of the 2018 Farm Bill on the registration of trademarks for goods and services involving hemp. As background, the previous definition of “marijuana” in the federal Controlled Substances Act had a limited exclusion

USPTO reiterates commitment to detect and prevent fraudulent foreign trademark applications

The United States Patent and Trademark Office (“USPTO”) has recently reiterated its commitment to stemming the tide of inaccurate and fraudulent trademark applications originating primarily from China.  On May 9th, the Director of the USPTO, Andrei Iancu, testified before the U.S. House Subcommittee on Courts, Intellectual Property, and the Internet, and fraudulent foreign trademark applications

The Curse of Shoeless Joe Continues: TTAB Finds White Sox Fan Lacked Bona Fide Intent-To-Use

For any baseball fans already preparing to capitalize when their favorite team wins their next World Series game, you may strike out before getting up to bat at the Trademark Trial and Appeal Board (“TTAB”) in the United States Patent and Trademark Office (“USPTO”). In a recent precedential decision, the TTAB found that “a mere

USPTO Proposes new rule requiring foreign trademark applicants to be represented by US licensed attorney

  The United States Patent and Trademark Office (“USPTO”) has recently issued a notice of proposed rulemaking that would require all foreign-domiciled trademark applicants, registrants, and parties to TTAB proceedings to be represented by a US licensed attorney.  The proposed rule is designed to protect the integrity of the US Trademark Register and address the uptick

To ‘Bland’ or Not To Bland? Trademark Implications

Companies are simplifying, or “blanding,” their brands dropping unique fonts, words, and design elements left and right in favor of a pared down, sans-serif font popular in Silicon Valley, but does this drop trademark protections in the process? You’ve seen it in the ads you encounter on your way to work, on television, and probably

Hogan Lovells’ U.S. + German Patent Update – January 2019 (English, 日本語, and 한국어)

Hogan Lovells’ U.S. + German Patent Update reports on recent patent news and cases from Germany and the United States. The January 2019 Update is available in the following languages: English language available here 日本語(Japanese language) available here 한국어 (Korean language) available here The January 2019 spotlight article covers a recent Federal Constitutional Court (FCC) decision in Germany

USPTO Announces Revised Guidance for Subject Matter Eligibility

The United States Patent and Trademark Office (USPTO) kicked off the new year in a big way by releasing its “2019 Revised Patent Subject Matter Eligibility Guidance”.  This guidance for USPTO examiners and Patent Trial and Appeal Board judges does not have the force of law, but it is still particularly important for those in

US: Hogan Lovells at McCarthy Institute Symposium 2019 – NYU, 1 February 2019

 Trademark Law and Its Challenges: We are delighted to be sponsoring and speaking at the 10th annual McCarthy Institute Symposium which will be hosted by NYU Law and cover a range of thought provoking topics intersecting trademark issues, consumer behavior, and marketing. Industry-leading practitioners and scholars will present original research, including case law updates, and

Phillips claim construction standard used by U.S. Courts to now apply to PTAB proceedings

The United States Patent and Trademark Office (“USPTO”) has published its new Final Rule on the standard of review used in construing challenged patent claims in the Patent Trial and Appeal Board (“PTAB”).  Currently, the PTAB relies on the “broadest reasonable interpretation” (“BRI”) standard in construing challenged patent claims.  However, the new rule directs the

U.S. + Germany Patent Update – July 2018

The U.S. and Germany are two of the most key fora in the world for patent litigation. The U.S. has long been one of the largest markets for patent litigation, and Germany has constantly attracted more than 50% of all European patent litigation. Hogan Lovells offers its multi-lingual update, dated July 2018, on notable recent

US: Supreme Court hears argument on constitutionality of inter partes review

On November 27, 2017, the Supreme Court heard oral arguments in a case that will determine the constitutionality of inter partes review, a proceeding before the United States Patent and Trademark Office’s Patent Trial and Appeals Board that allows third parties, including alleged infringers, to challenge the validity of issued patents.  As previously reported by

US: Our trademark lawyers speaking at 2017 McCarthy Symposium

We are delighted to be sponsoring and speaking at the seventh annual McCarthy Institute Trademark Symposium, taking place on February 17, 2017 in Seattle, Washington. The one-day event, titled “Trademark Law and Its Challenges,” brings together corporate brand representatives, trademark attorneys and public policymakers to address new issues in trademark law. Two of our trademark

EU/U.S. – Trademark Protection: Recorded comparative session

Last month we gave a Trademarks and Brands webinar focusing on European Union Trademark Protection. In this webinar, Pan-European trademark attorney, Julie Schmitt, and United States trademark attorney, Valerie Brennan, highlight the differences between trademark rights acquisition, protection, and enforcement in the EU and the U.S. They also touch on hot topics in EU trademark law, such as the

USPTO issues new rules for post-grant proceedings effective May 2

The U.S. Patent and Trademark Office (“PTO”) issued amendments to its “Rules of Practice for Trials before the Patent Trial and Appeal Board” for IPR, CBM, and PGR proceedings, which will be effective in all current and future proceedings starting on May 2, 2016. Most notably, these amendments allow a patent owner to submit testimonial

US: IPR institution denied for redundancy – Neither appealable nor grounds for estoppel

Parties that regularly submit inter partes review (IPR) and other post-grant petitions with multiple, potentially redundant grounds for review now have clearer guidance on (1) whether the institution of those petitions can be reviewed; and (2) whether estoppel applies to rejected grounds for review. In the recent Automated Creel Systems v. Shaw Industries decision, the

U.S. – Is Your Technology Evolving?

Outdated U.S. trademark registrations might no longer be lost. Owners of trademark registrations in the U.S. are familiar with the frustration of technological evolutions that result in loss of protection if a trademark registration is limited to the now-defunct technology. Current U.S. practice does not allow one to expand or change descriptions of goods or

USPTO Considering New Rules for Post-Grant Proceedings

On August 20, 2015, the U.S. Patent and Trademark Office (“PTO”) published proposed amendments to the “Rules of Practice for Trials before the Patent Trial and Appeal Board” for IPR, CBM, and PGR proceedings. The proposed rule changes include: adopting the claim construction standard used in district courts and set forth in Phillips v. AWH

US: Pharma-friendly trends at USPTO and PTAB

Recent USPTO activity may signal a shift in treatment of pharmaceutical patents in AIA proceedings. The America Invents Act (“AIA”) provides for adversarial proceedings for challenging patents in the United States Patent and Trademark Office (“USPTO”) — including inter partes review (“IPR”) and post grant review (“PGR”) — which are faster, cheaper, and have a lower