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Trademark Office Changes Rules About Personal Emails

Descanso Gardens

About two months ago, the Trademark Office announced entities would have to begin disclosing their personal email addresses in trademark applications and trademark registrations.  I joined almost 200 trademark attorneys in protest of this rule.  We argued that it would expose clients and pro se applicants to spam emails, would eliminate applicants’ privacy, and would provide no real benefits.  The Trademark Office caved on some filings, but not all, and we were required to disclose applicants’ email addresses.

On Friday, the Trademark Office altered course.  While still requiring that personal email addresses be disclosed in trademark applications and trademark registrations, those addresses will be hidden from public view.  The exception is if a trademark applicant files an application on his or her own.

The announcement from the Trademark Office:

We’re taking steps to address your concerns about owner email addresses being visible in TSDR. The owner email address field is now masked in TEAS and TEASi documents viewable in TSDR, including submissions viewable in the documents tab, application programming interfaces (APIs), and PDF downloads. Unrepresented owner email addresses will still be viewable in the correspondence email address field. When you open a TEAS or TEASi document in TSDR, you’ll see ‘XXX’” in the owner email address field. We believe this will help reduce the number of solicitations you receive.



Vagaries of Design Patent Practice

Sunset in Phoenix

Design patents protect the ornamental and aesthetic aspects of a functional item.  Whereas a utility patent protects the parts of the item, the way its parts cooperatively move or operate together, how they are structured and arranged, etc., design patent protection how that item actually looks.  They do this by presenting drawings of the item and then claiming protection in the design shown in those drawings.  As such, the bulk of a design patent application is the drawings, and there is relatively little written text accompanying those drawings.

Because of this, design patents can often seem to be simple.  But there is a subtlety in each application that requires anticipating the prior art, the course of examination, and the need for expansion of design protection in the future.  Complicating this subtlety is the relative scarcity of practical information regarding design patents.  This is a systemic problem, created by a few factors.

First, there just aren’t many design patents out there.  Pretty consistently, less than 10% of the patents issued each year are design patents.  In recent years, that is about 30,000 issued design patents.  About 40 to 45,000 are filed each year, so very roughly, we can say that a third of filed design applications go abandoned (design apps generally have a pendency of about 6-18 months, meaning they are likely to issue in the same or next calendar year, if they issue at all).

Not only are practitioners not filing a lot of design patents, but the ones that are filed don’t provide much feedback.  Design patent applications are never published, so the 15,000 or so applications that abandon each year do so in secrecy.  This is a tremendous loss of learning opportunity from these abandoned applications.  For comparison, around 600,000 utility patent applications are filed each year and about 300,000 issue; though utility patents have a much longer pendency than design patents, we might safely say that at least one hundred thousand utility patent applications are abandoned each year.  A majority of these are published, and the file histories can be reviewed to see what went wrong.  From that, patent attorneys can determine how not to write and prosecute patent applications.  But because abandoned design patent applications are not publicly available, we can’t study what goes wrong in them.  Instead, we have to rely on what went right.  Moreover, it is not uncommon for a well-written design patent application to receive a first action allowance – in other words, no rejections.  While this is a good thing, it does not help expand a practitioner’s understandings to the edges of design patent practice – could more have been claimed, could the claims have been broader, would there have been a reason to claim differently or present different drawings or more drawings or several embodiments, etc.?  Answers to questions like these are just not available except to perhaps – perhaps – the largest entities with tremendous legacy knowledge and systems developed to pass that knowledge to its team (and almost certainly a large team) of lawyers who may be spread and isolated across different and often competing large law firms.

The Manual of Patent Examining Procedure – the Patent Office’s guidebook for reviewing patent applications – is mostly written to utility patents.  Often decried as a manual for Examiners to craft rejections against patent applications rather than a guidebook for level prosecution (defining the limits of rejections and response arguments), the MPEP pays scant little attention to design patent applications.  This means that examination consistency suffers among Examiners and that practitioner’s counsel to clients becomes more nebulous.  Design applications are then written from a few perspectives: not just based on objective rules in the MPEP and case law (few design cases are ever appealed), but the particular client’s tolerance to risk and cost involved in preparing and arguing an application with an Examiner who may or may not read the rules in the same manner as the last Examiner, or even as they did six months ago.  Principled and rule-based arguments that may win in the well-defined arena of utility patent prosecution may descend into pleading negotiation with an Examiner in light of a refusal in a design patent application.

 

 



CORONAVIRUS: Trademark Frequently Asked Questions

Hummingbird resting outside my new home office

UPDATE: APRIL 28: The USPTO has updated its program which changes some of the information below regarding dates. Read more here.

The US Patent and Trademark Office is allowing a 30-day extension to some trademark filing and fee deadlines missed because of the COVID-19 epidemic.  The below are frequently asked questions on that extension program for trademark-related issues.

Question 1: How do I take advantage of the 30-day extension of time for certain trademark- and TTAB-related deadlines?

If an eligible document or fee is due between March 27, 2020, and April 30, 2020, the filing will be considered on-time if it is made within 30 days of the original due date, provided that the filing is accompanied by a statement that the delay in filing or payment was due to the COVID-19 outbreak. See Notice of Waiver of Trademark-Related Timing Deadlines under the Coronavirus Aid, Relief, and Economic Security Act.

Question 2: Does the statement that the delay in filing or payment was due to the COVID-19 outbreak need to be verified or in the form of a declaration or affidavit?

No, there are no formal requirements for how the statement is made.  The statement need not be verified or provided in affidavit or declaration form. It can be provided in the relevant TEAS or ESTTA form or included in the document being filed.  TEAS filings all have a spot for a miscellaneous statement – this may be a good location to make the statement, provided it is very clear.  These statements are a certification under 37 CFR § 11.18(b), and violations of that section may be subject to sanctions.  The statements must, of course, be truthful.

Question 3: What is the standard for determining whether the delay in filing or payment was due to the COVID-19 outbreak?

A delay in filing or payment is due to the COVID-19 outbreak if the outbreak materially interfered with an on-time filing, response, or fee payment in a trademark application, registration, or proceeding.

Question 4: What circumstances qualify as materially interfering with timely filing or payment?

Circumstances that qualify as materially interfering with timely filing or payment include, without limitation, office closures, cash flow interruptions, lack of access to files or other materials, travel delays, personal or family illness, or similar circumstances.

Question 5: Who must have been affected in order to take advantage of the 30-day extension of time?

The person affected by the outbreak may be a practitioner, trademark applicant, registrant, or other person associated with the filing or fee.  It is unclear whether the person must actually be sick; the language of the rule says the person must be affected by the outbreak, not by the disease itself.

Question 6: When does my new trademark or TTAB filing deadline run?

Determine your new filing deadline by adding 30 calendar days to your original filing deadline, but only if the original due date was between (or including) March 27, 2020, and April 30, 2020. If the extended deadline falls on a Saturday, Sunday, or a federal holiday, the extended deadline is the next regular business day.

Question 7: Will the US Patent and Trademark Office have further extensions available?

At this time, there has been no announcement.  However, it is expected that if the outbreak continues, and especially continue to depress the economy significantly, the availability of the extension will also be continued.

Question 8: Are all trademark filings eligibility for extension?

No, only some of the filings and fees are eligible.

Question 9: What trademark filings are eligible for the 30-day extension of time if the delay was due to the COVID-19 outbreak?

First, only deadlines that are delayed due to the COVID-19 outbreak may be delayed.  Second, only certain filings are eligible, including the following:

  • response to an Office action in a trademark application, including a notice of appeal from a final refusal
  • statement of use or request for extension of time to file a statement of use in a trademark application
  • priority filing basis under 15 U.S.C. § 1126(d)(l) and 37 C.F.R. § 2.34(a)(4)(i)
  • priority filing basis under 15 U.S.C. § 1141g and 37 C.F.R. § 7.27(c)
  • transformation of an extension of protection to the United States into a U.S. application under 15 U.S.C. § 1141j(c) and 37 C.F.R. § 7.31(a)
  • in a trademark registration, an affidavit of use or excusable nonuse under 15 U.S.C. § 1058(a), 37 C.F.R. § 2.160(a), 15 U.S.C. § 1141k(a), and 37 C.F.R. § 7.36(b)
  • renewal application

Question 10: TEAS is electronic and sometimes does not accept filings after the deadline.  Will TEAS automatically accept a filing made under the CARES Act extension?

Yes.  TEAS will accept your filing. Locate the TEAS form for the filing you need to make, enter the required information for the filing, and add a statement that the delay in filing or payment was due to the COVID-19 outbreak in the “Miscellaneous Statement” field of the form you are filing.

Question 11: Is the US Patent and Trademark Office open for filing trademark documents and fees even though its offices are closed to the public?

Yes, the USPTO is open for the filing of trademark documents and fees. Use TEAS for all trademark application and post-registration filings. For more information,

Question 12: What TTAB deadlines are eligible for the 30-day extension of time if the delay was due to the COVID-19 outbreak?

There are only two deadlines that can definitely be extended at the TTAB.  They are:

  • a notice of appeal from a final refusal under 15 U.S.C. § 1062(b) and 37 C.F.R. § 2.62(a)
  • a notice of opposition or request for extension of time to file a notice of opposition under 15 U.S.C. § 1063(a) and 37 C.F.R. §§ 2.101(c) and § 2.102(a)

For any other TTAB situation where the COVID-19 outbreak has interfered with a filing, you can request (in ex parte appeals) or file a motion (for trial cases) for an extension or reopening of time.  It may or may not be granted, however.

Question 13: Will ESTTA accept a filing made under the CARES Act extension?

Yes. ESTTA will accept your filing. Locate the ESTTA form for your filing, enter the required information, add any attachments, and add a statement that the delay in filing or payment was due to the COVID-19 outbreak in the attachment or appropriate field of the form you are filing. Make sure that the request is conspicuous and obvious.

Question 14: How do I receive an extension for a TTAB filing?

You must file the extension request through ESTTA and include a statement that the delay in filing or payment was due to the COVID-19 outbreak.

Question 15: Will the TTAB grant a final 60-day extension of time to oppose because of the COVID-19 outbreak?

The effects of the COVID-19 outbreak are considered good cause in support of a second extension of time to oppose, if the first extension was a 30-day extension of time to oppose, or in support of an initial extension of 90 days to oppose, when a longer initial extension is desired. The effects of the COVID-19 outbreak also are considered extraordinary circumstances in support of the final 60-day extension of time to oppose. Fees for an extension requiring a showing of good cause or extraordinary circumstances are still required, even though the filing may be made later than when it would otherwise be due, if the delay in filing is due to the COVID-19 outbreak. When specifying the good cause or extraordinary circumstances, the statement that the delay was due to the COVID-19 outbreak can be included in the “other” basis for the extension.

Question 16: Has the USPTO provided any other relief for trademark filers in view of the COVID-19 outbreak?

Yes. For trademark applications and registrations that were abandoned or canceled due COVID-19 outbreak, the USPTO is waiving the petition fee to revive the abandoned application or reinstate the canceled registration.

The petition to revive or reinstate must include a statement describing how the missed deadline was caused by the COVID-19 outbreak, and it must be filed within two months of the issue date of the notice of abandonment or cancellation.  If the trademark applicant or registrant did not receive that notice, the petition must be filed no later than six months after the date the Trademark Office’s electronic records show that the application is abandoned or the registration is canceled.

Question 17: If I have a question about CARES Act extensions, whom do I contact?

While the Patent Office has a help email dedicated to COVID-19, the Trademark Office is using a general inbox: TMPolicy@uspto.gov.  I have found, however, that emails sent to general email addresses at the USPTO never get returned.  You can also contact the Trademark Office of Petitions at 571-272-8950, or for TTAB matters, you can use TTABInfo@uspto.gov or 571-272-8500.  You can also call Arizona trademark attorney Tom Galvani.

 



CORONAVIRUS: Patent Frequently Asked Questions

Lost Dutchman State Park during Coronavirus Outbreak

UPDATE: APRIL 28: The USPTO has updated its program which changes some of the information below regarding dates. Read more here.

The Patent Office is allowing certain filing and fee deadlines to be extended due to the coronavirus pandemic in the US.  Below are common questions about this change:

Question 1: Coronavirus has prevented me from meeting my deadline. What can I do?

The US Patent and Trademark Office has instituted a 30-day extension of time for some patent deadlines. You may be able to benefit.

Question 2: How do I take advantage of the 30-day extension of time?

If an eligible document or fee is due between March 27, 2020, and April 30, 2020, the filing will be considered timely when made within 30 days of the original due date. However, to qualify, the filing must be accompanied by a statement that the delay in filing or payment was due to the COVID-19 outbreak. Only certain situations will qualify as delays due to the outbreak. More information is available at the official  Notice of Waiver of Patent-Related Timing Deadlines under CARES.

Question 3: Are there any requirements about how the statement has to be made or presented?

The statement does not have to be verified or submitted in the form of an affidavit or declaration. It must, of course, be truthful, and it is recommended that you keep detailed internal records should there later be a question as to the nature of the delay.

Also, rather than including the statement within a normal filing, it is recommended that the statement be included in a separate paper. While the statement can be included in the paper lodged with the Patent Office, it may be initially missed by the Office and delays could result before it is accepted. If included within a filing, it should be made in a conspicuous manner.

Question 4: What qualifies as “a delay due to the outbreak?”

At this time, it is not clear exactly which situations will qualify as being due to the outbreak.
The applicant, agent, owner, petitioner, inventor, or attorney must be personally affected by the outbreak, so being sick will certainly qualify. However, it is less certain whether they actually have to be sick themselves. The rule identifies that one must be affected by the outbreak, not necessarily the disease. So it is possible that having to stay home to take care of a kid whose school was closed could be a qualifying reason (though it should be noted that the Office has not specifically identified this as qualifying reason). If an office closure, cash flow interruption, travel delays, or inaccessibility of files or other materials causes the delay, this will also qualify. The new rule further states that “similar circumstances” to the above will qualify if they materially interfered with the on-time filing or payment. While it does not appear that the Office requires details regarding how the outbreak delayed the filing, it may be a good idea to provide some basic information about the delay

Question 5: When does an extension start??

Day 1 of the 30-day extension of time is the first day after the original due date, in other words, the first day after the original due date.

Question 6: What if the 30-day extension of time ends on a Saturday, Sunday, or federal holiday?

If the 30-day extension of time ends on a Saturday, Sunday, or federal holiday, the extended deadline falls on the next regular business day.

Question 8: Are there any fees associated with extension?

No. The extension does not cost anything. The only fees that may be due are those associated with the filing or fee payment which is being extended.

Question 9: What appeal-related filings are eligible for a 30-day extension of time?

The following appeal-related filings are eligible for a 30-day extension of time:

  • notice of appeal
  • appeal brief
  • reply brief
  • appeal forwarding fee
  • request for an oral hearing before the PTAB
  • response to a substitute examiner’s answer
  • amendment in connection with a new ground of rejection by the PTAB
  • request for rehearing of a PTAB appeal decision

Question 10: Are all entities entitled to all CARES Act extensions?

No. Certain forms of relief are limited to small and micro entities.

Question 11: Which filing and fee extensions are only available to small and micro entities?

  • replies to an Office notice issued during pre-examination processing, e.g.:
  • reply to a notice of omitted items
  • reply to a notice to file corrected application papers
  • reply to a notice of incomplete application
  • reply to a notice to comply with nucleotide sequences requirements
  • reply to a notice to file missing parts of application (including, without limitation, the payment of the filing fees)
  • reply to a notification of missing requirements
  • a maintenance fee payment

Question 12: What PTAB filings are eligible for a 30-day extension of time?

  • request for rehearing of a PTAB decision in an AIA trial or interference proceeding
  • petition to the Chief Judge
  • patent owner preliminary response in a trial proceeding, or any related responsive filing

In the event that the USPTO extends a deadline for a patent owner preliminary response or any related filings, the PTAB may also extend the deadlines provided in 35 U.S.C. §§ 314(b) and 324(c).

For all other situations where the COVID-19 outbreak has prevented or interfered with a filing before the Board, a request for an extension of time can be made by contacting the PTAB.

Question 13: What PTAB filings are not eligible for an extension of time?

At this time, PTAB is not extending any statutory deadlines for filing an AIA petition under either 35 U.S.C. §§ 315(b) or 321(c).

Question 14: Has the Patent and Trademark Office provided any other relief in view of the COVID-19 outbreak?

Yes. The USPTO has waived the fee for petitions to revive applications that became abandoned because applicants could not meet the deadline for responding to an Office communication due to the COVID-19 outbreak. The Office has also waived the requirements for an original handwritten signature for certain correspondence with the Office of Enrollment and Discipline and certain payments by credit card.

Question 15: Will the USPTO extend the CARES Act relief beyond April 30?

At the time of this writing, the Patent and Trademark Office has not announced further extensions. However, I believe another 30-day extension is highly likely to be granted should the virus continue to keep the economy depressed for a few more weeks.

Question 16: If I have a question about CARES Act extensions, whom do I contact?

The USPTO has a help email dedicated to COVID, but I have found that emails sent to general email addresses at the USPTO never get returned. You can also contact the Office of Patent Legal Administration at 571-272-7704 (or 571-272-7703 for reexamination), or contact Arizona patent attorney Tom Galvani at 602-281-6481.



CORONAVIRUS: Patent Office Not Requiring Original Handwritten Signatures

The Patent and Trademark Office will not be requiring handwritten signatures during COVID-19 outbreak.  Correspondence with the Patent Office requires a signature of some form.  Generally, an electronic or S-signature is sufficient to submit a document to the Patent and Trademark Office.  However, in a few situations, an actual, pen-to-ink, handwritten signature is required.

For the seemingly foreseeable future, however, that requirement has been waived.  The United States Patent and Trademark Office considers the effects of COVID-19 to be an “extraordinary situation” for affected patent and trademark applicants, patentees, reexamination parties, and trademark owners.

The waiver applies mostly to attorney and agent issues, such as new licensing applications to practice before the US Patent and Trademark Office and disciplinary matters in front of the Office of Enrollment and Discipline.  Additionally, some credit card payments apparently must be accompanied by handwritten signatures, though in a decade of practice, I’ve never encountered this.

While the requirement for a handwritten signature has been waive, the requirement for a signature has not.  Indeed, where handwritten signatures were once required, corresponding parties must now submit photocopies of original signatures and S-signatures will satisfy during waiver.



CORONAVIRUS: US Patent and Trademark Office Response

Quail eggs in our backyard

UPDATE: APRIL 28: The USPTO has updated its program which changes some of the information below regarding dates. Read more here.

The US Patent and Trademark Office has made extensions available to filing, response, and fee deadlines in certain patent and trademark matters. The Office recognizes that the outbreak, and the economy impact thereof, have made it difficult or impossible for some entities to meet their deadlines. Applicants have been affected. Patent and trademark owners have been affected. Law firms and legal personnel have been affected. The Office is allowing some deadlines to be extended for 30 days under certain circumstances.

In all cases, a deadline can be extended only if the outbreak materially prevented or interfered with an on-time trademark filing, response, or fee payment. “Materially prevented” or “materially interfering” includes situations such as office closures, cash flow interruptions, lack of access to files or other materials, travel delays, personal or family illness, or other similar circumstances. Further, only certain people can claim the extension: the person affected by the outbreak must be a practitioner, applicant, registrant, or other person associated with the filing or fee.  Lastly, only deadline falling within certain dates will qualify.

If you request an extension, you need to do so explicitly and conspicuously; if the request is hidden, it will probably be delayed or may even

be missed completely. This will require further follow-up by you with the Patent and Trademark Office to make sure it gets processed – just extra work from you during a time when you don’t need more on your plate, if you’re being truthful that the outbreak has affected you. And of course, you must be truthful when making the statement. It is a good idea to at least internally and carefully document the circumstances that are preventing the filing from being made on time, and then to keep those detailed records in case a question about their veracity ever arises. I predict that in five to ten years, some patents and trademarks could be invalidated in litigation because a COVID-19 extension was taken but shouldn’t have, or because the legitimacy of the conditions around the delay could not be shown.

An extended deadline window starts the day after the original deadline. That is day 1. Day 30 – the end of the window – is 30 business days afterward, so long as day 30 is not a weekend or federal holiday. If it is, then the extended deadline falls to the next regular business day.

I’m publishing more information about the US Patent and Trademark Office’s response to coronavirus this week. In the meantime, you can contact patent and trademark attorney Tom Galvani at 602-281-6481.  During the pandemic, Tom is working remotely and will likely return your call from a 435 number.  Videoconferencing is also available.



New Specimen Rules in Trademark Applications

On Friday, February 15th, a number of new rules governing trademark applications went into effect.

All trademark applications, and all correspondence in trademark applications and registrations, must now be filed electronically expect in limited circumstances.  The Trademark Office had been pushing stakeholders in this direction for years, most recently by significantly raising the cost of paper filing versus electronic filing.  However, now nearly all communications with the Trademark Office must be through the TEAS filing system or email (in certain limited circumstances).

In situations where the electronic filing system is unavailable (the Patent Office filing system frequently does down; the Trademark Office’s system does so less often), then submissions may be made via fax.  Yes, fax.

As part of this change, the Trademark Office proposed that applicant’s personal email addresses would have to be submitted and would be made public.  While we have always placed our firm email address on trademark applications as the official correspondence address for communications, this change is significant.  It spurred concern from many practitioners, who were worried that their clients would be spammed to no end.  Before last week, applicants receive spam paper solicitations, often with false information, fake deadlines, and large fee requests.  However, publishing a personal email address for each applicant would open the doors to widespread spamming.  So last week, I joined 198 other trademark attorneys in sending a letter to the Trademark Office explaining the consequences of this rule.  Thankfully, the Trademark Office rescinded this rule change on Thursday.  However, there has been talk since then that other systems at the Trademark Office are nevertheless requiring applicant email info.

The rule change has also affected specimens in trademark applications.  For specimens showing use of the mark with goods, the specimen must show use on the goods, on packaging for the goods, on labels or tags affixed to the goods, or on displays associated with the goods.  Previously, one could submit a photograph of a label or tag in isolation; that will only work now if the tag clearly shows the mark in actual use in commerce, such as by showing information like net weight, volume, UPC bar codes, ingredients.  Better practice is to simply show the goods with the tag of label affixed thereto.  As before, the specimen must show actual use; printer’s proofs, artist renderings, computer or digital illustrations, and similar mockups will still not be sufficient.  For screengrabs or screenshots, specimens must now show the URL and print date.

It is possible that these rules will change.  I expect the Trademark Office to issue a revised rule regarding applicant email addresses soon, and hopefully it will maintain the privacy of that information.  Check back for updates.



Sonos Sues Google For Patent Infringement

Patent InfringementSonos pioneered wireless multi-room audio in the early 2000s and first brought consumer products to the market in 2005.  Now it has taken on a juggernaut in smart home technology.  The battle highlights the need for – and difficulty of – foresight when drafting agreements governing intellectual property joint ventures.

Sonos sued Google for infringement of its patents covering smart speakers.  Sonos and Google had entered into a joint R&D venture to integrate Google Play Music into Sonos speakers, during which time Sonos shared a great deal of technological information with Google.  These ventures are common.  Sometimes, they end poorly, in litigation.  Sometimes, as happened here, the joint venture goes well but, a few years later, one of the parties comes out with products that are eerily similar to the other party’s.

Sonos and Google will have to fight it out in court or, more likely, come to a settlement regarding future use of the IP.  Sonos has additionally filed a complaint in the International Trade Commission, seeking to prevent Google from importing some speakers into the country, on the grounds that the speakers violate Sonos’s patents.  Patentees frequently take this double-pronged approach of filing an infringement suit in district court and a complaint with the ITC complaint.

Sonos has not flied suit against other manufacturers, such as Amazon, even though it is a potential target with its Echo products.  This may be because Amazon is a valuable retailer for Sonos’s speakers, and it doesn’t want to poke that bear.

This is not the first time that Google has been embroiled in such an action.  Over the past few years, Google’s affiliated company Waymo has been fighting Uber over technology they say one of Uber’s top autonomous car engineers – and former head of self-driving cars at Waymo – took from Google.

Cases such as these highlight a number of issues: how to properly handle background IP in a joint venture contract; how to deal with IP developed within a joint venture; whether and to what extent knowhow can be handled; how business relationships may affect a company’s choices in pursuing a potential infringement claim.  These are all difficult issues to negotiate, and difficult issues to predict.  However, when writing a joint venture agreement, license agreement, or other agreement concerning patents, trade secrets, and knowhow, both sides must attempt to look into the future and consider both the positive and negative possible outcomes.



Attorney Fees not Available in Appeals from Patent Office

The Supreme Court has recently ruled, in Peter v. Nantkwest, Inc., that in appeals from proceedings at the Patent Office, the patent applicant will not be responsible for the fees of the Patent Officer’s attorneys and paralegals. This decision provides clarity in an important factor when considering how to seek review of a patent application.

A patent application is initially filed with the Patent Office. Generally, all applications are rejected, and the process of receiving and responding to rejections is called prosecution. Prosecution can take quite a bit of time, but in certain cases, an applicant can appeal an Examiner’s decision in prosecution to the Patent Trial and Appeal Board. If the Board finds against the applicant, the applicant has the opportunity to request further review of the decision, either to District Court or the Federal Circuit. When this occurs, the applicant hires an attorney on its behalf, and the Patent Office is represented by in-house attorneys who argue its case against the applicant.

Recently, a district court held that an applicant, after losing its appeal, would have to pay the attorney and paralegal fees incurred by the Patent Office. This amounted to about $80,000. The applicant, not too excited, appealed that decision to the Federal Circuit and then to the Supreme Court.

The Supreme Court denied the Patent Office, finding that it should follow the “American Rule,” which has litigants bearing their own costs whether they win or lose. While patent statutes do allow the Patent Office to recover some expenses – expert costs, travel costs, docketing fees, for example – that did not extend so far as to cover attorney and paralegal fees.

Of course, attorney’s fees can be substantial in an appeal, and so the potential imposition of those fees could present a chilling effect on the pursuit of a patent grant. The Supreme Court recognized this, noting that such a rule would limit access to methods of redress from unfavorable Patent Office decisions.



THE Ohio State University and the Clothing Trademark Problem

Earlier this month, the Trademark Office refused an application to register a trademark for THE in

One of the specimens used in the THE trademark application by Ohio State University

connection with clothing.

The trademark application was filed by the Ohio State University. Some people have inaccurately seen this as grab by OSU to lock down all uses of the word THE, or that it was refused because OSU can’t be allowed to take the word THE out of the public domain. Both of these assumptions are wrong, however.

Just about any word can be protected as a trademark, but it has to be used the right way, and with the right product or service.

Here, the THE trademark application was refused for two reasons. First, someone else has filed for THE as a trademark already. When a trademark application is filed, the Trademark Office checks its registers to see if someone has previously registered or filed for a similar mark. If a similar mark has already been registered, the new application will be refused. If a similar mark has been filed (but not yet registered), the new application will be suspended. OSU’s application for THE has been suspended because Marc Jacobs, the well-known fashion designer, filed for THE a few months ago, in connection with clothing. His application was refused for technical reasons that often snare clothing trademark applications. Jacobs has 6 months to respond to the refusal, and until Jacobs’ application is either abandoned or approved, OSU’s application will remain suspended, unless it can argue over the suspension.

The second issue for OSU’s trademark application is one frequently seen in trademark applications for clothing. The application was refused because THE was only being used in an ornamental sense. This happens all the time with clothing because applicants think that putting a trademark in big letters on the front of the shirt shows that the trademark is being used. Just the opposite, though. The Trademark Office consistently rejects such proof of use.  In the photo above, words appearing in big font in the yellow rectangle will almost always get rejected.  Words or logos in the small green square will usually (though not always) get approved.  I’m surprised that this attorney, who appears to specialize in trademarks and IP law, didn’t know that, or didn’t file the application some other way to avoid the rejection; though perhaps there are other reasons the filing was made despite this. OSU will now need to provide proof that it is using THE in some other way, such as on a price tag or a label.

This case beautifully exemplifies why clothing trademarks are so delicate. I see more abandoned clothing trademark applications that any other kind, and I believe it is because business owners file them on their own, thinking that putting a name on the front of a t-shirt s sufficient to establish trademark rights. It isn’t; the law just does not reflect the public perception of a name or logo on a t-shirt. If you are considering filing a trademark application for clothing yourself, please don’t – contact a local trademark attorney or contact Tom here.