US Trademark Office Ordered to Respond to Petition from the Federal Circuit Regarding Disparaging and Scandalous Marks

 Written By Chitakone Arounlangsy The Federal Circuit, on March 15, 2016, ordered the USPTO to respond to a petition which asserted that the USPTO was ignoring the Federal Circuit’s ruling in December 2015 involving disparaging or scandalous marks.  In In re Tam, an Asian-American rock band’s application for the trademark “The Slants” was denied under 15 U.S.C. § 1056 of Section 2(a) of the 1946 Lanham Act. In re Tam, 808 F.3d 1321 (Fed. Cir. 2015). The TTAB found that the proposed mark was disparaging to the Asian-American community. Id. 15 U.S.C. § 1052, involves marks that consist of or comprise of immoral or scandalous matter, or matter which may disparage persons, institutions, beliefs, or national symbols, or bring them into contempt or disrepute. 15 U.S.C. § 1052 (1946). In 2014, the trademark for the Washington Redskins was canceled by the TTAB, for being disparaging to the Native American community. Pro-Football, Inc. v. Blackhorse, 62 F. Supp. 3d 498 (E.D. Va.

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Are 102, 6th Paragraph and 102, 2nd Paragraph the New 101 in Patent Eligibility? Williamson v. Citrix Online Makes One Wonder: Part 2 of a 2 Part Series – Possible Strategies

Are 102, 6th Paragraph and 102, 2nd Paragraph the New 101 in Patent Eligibility?  Williamson v. Citrix Online Makes One Wonder:  Part 2 of a 2 Part Series – Possible Strategies By Michael Stein, Stein IP LLC   This is part 2 of a 2 part series addressing the growing use of 112, 6th and 2nd paragraphs to invalidate claims in the USPTO and the courts, and what the standards are for implementation and application of these sections of 35 USC.  Part 2 explores possible strategies to minimize the impact of 112, 6th and 2nd paragraph, and likely assist in avoiding 101 rejections as well.   So, what is a patent attorney to do when faced with the difficult task of preparing a new patent application, whether from scratch or based upon foreign priority, and hopes to avoid either having limitations interpreted as being means plus function limitations under 112, 6th paragraph or being declared indefinite under 112, 2nd paragraph

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Are 102, 6th Paragraph and 102, 2nd Paragraph the New 101 in Patent Eligibility?

Williamson v. Citrix Online Makes One Wonder:  Part 1 of a 2 Part Series By Michael Stein, Stein IP LLC   This is part 1 of a 2 part series addressing the growing use of 112, 6th and 2nd paragraphs to invalidate claims in the USPTO and the courts, and what the standards are for implementation and application of these sections of 35 USC.  Part 2 of this article will explore possible strategies to minimize the impact of 112, 6th and 2nd paragraph, and likely assist in avoiding 101 rejections as well. Up until about 2010 or 2011, very few patent applications, such as in the fields of computers,communications and business methods, were at risk of being deemed patent ineligible because of 35 USC 101.  The same held true of patent claims of issued patents, whether under re-examination or during litigation.  Further, patent eligibility under 35 USC 112, 2nd paragraph (112, 2nd paragraph pre-AIA is the same as 112(b) post-AIA,

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IANA Transfers Power to ICANN

By Dennis Collins The US government has decided to not renew its contract of 17 years which gave it the authority to oversee the Internet Assigned Numbers Authority (IANA). There will be a transition from the IANA to the Internet Corporation for Assigned Names and Numbers (ICANN). ICANN is a nonprofit corporation under contract with the US Department of Commerce. The House of Representatives is concerned about the usefulness of switching power from IANA to ICANN, because this forces the US government to relinquish its control over the internet. The UN is the driving force pushing for a change in the governance of the internet. The Secretary-General Ban Ki-Moon is pushing for a, “single, open, free, secure, and trustworthy internet.” ICANN will be the “caretaker of the internet”; however ICANN has been accused of being an illegal entity and violates both the Constitution and federal statutes by many in the legal field. The House of Representatives passed the Domain Openness

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Patent Reform Series: Part 3 of 3 “The PATENT Act”

July 22nd, 2015 By Dennis Collins This is the third and final installation in the three part series on patent reform. On June 4th, 2014, the Senate Judiciary Committee voted and approved the PATENT Act. Senator Charles Grassley (R-Iowa), introduced the Protecting American Talent and Entrepreneurship Act of 2015 (PATENT), S. 1137, and it is expected to move forward in the Senate with bipartisan support. This Act is the Senate’s specific response to the Innovation Act that was introduced into the House by Congressman Bob Goodlatte. While many institutions are happy to see some changes made to the patent environment, many detractors believe that it is best to move forward cautiously. The Act does not go as far as the Innovation Act with some of its provisions, but it is a solid move in the direction for patent reform. The PATENT Act includes a provision for demand letters sent to parties and their required specificity before they can be delivered

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Patent Reform Series: Part 2 of 3 “The STRONG Patent Act”

July 17th, 2015 By Dennis Collins Continuing into part two of this series on patent reform, another attempt hit the floor of the Senate March 3rd of 2015. The Support Technology and Research for Our Nation’s Growth (STRONG) Patents Act, (S. 632) was introduced and is still pending before the Senate Judiciary Committee. Presented by Senator Christopher Coons (D-DE), this act, according to certain critics, is much weaker than the House bill known as the Innovation Act (H.R. 9) and some critics feel it will not create as substantial of a change, in other words, it does not go far enough. These critics claim the Act fails to address the “patent troll problem” which is the ultimate goal of most seeking patent reform. The STRONG Act itself proposes to deal exclusively with “patent trolls,” but beyond that, there are no provisions to tackle directly a lot of the hot button issues that are dealt with by some some of the

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New Pilot Program for Ex Parte Appeals for Appellants with Multiple Concurrently Pending Ex Parte Appeals Announced by USPTO on July 14, 2015

July 15th, 2015 By Michael Stein As people in the patent field know, patent appeals from an examiner’s final decision can take a significant amount of time, even years, with there being a large backlog of patent applications on appeal before the PTAB. In a just issued notice, the USPTO has recently launched a new pilot program that will permit appellants with multiple ex parte appeals pending before the Patent Trial and Appeal Board (PTAB) to expedite review of one appeal in return for withdrawing another appeal. This pilot program offers a number of advantages, at least from the USPTO’s vantage point, while being simple to use. The advantages set forth by the USPTO are: 1. the Expedited Patent Appeal Pilot allows appellants having multiple ex parte appeals currently pending to have greater control over the priority with which their appeals are decided; 2. reducing the backlog of appeals pending before the PTAB; and 3. permit an appellant having multiple

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Patent Reform Series: Part 1 of 3 “The Innovation Act”

By Dennis W. Collins This is the first installment of a three part series on the patent reform bills that are currently being debated in Congress. One of the most discussed bills that is being pushed through the House of Representatives is the Innovation Act. The Act was originally introduced by Representative Bob Goodlatte (R-VA) in the 2013 Congress, where it passed through the House, but failed to pass in the Senate. The Act was reintroduced into the current 2015 Congress by Goodlatte (R-VA) and passed by the House earlier this month with little controversy. This Act is being used to change the patent litigation environment in order to limit the prevalence of Non-Practicing Entity’s (NPE) or more popularly known, “patent trolls.” These NPE’s are companies that do not use their patents for anything other than to demand licensing fees for the patents, or threaten lawsuits. Several major corporations, like Apple and Google, who are strongly advocating for the Innovation

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Disney Draws Distinction

Written by Dennis Collins On March 2, 2015, the Federal Circuit ruled that when using a service trademark, the “mere intent to use” was not “actual use in commerce”. In the case Couture v Playdom, Inc. 778 F.3d 1379, the court held that merely offering to provide a service does not support the “actual use” basis when filing during the application process. In 2008, the Plaintiff, David Couture, applied to register the mark “Playdom” for as he described, “educational and entertainment services”. He filed his application under the Lanham Act, 15 U.S.C. 1051 Section 1 (a), which requires that the applicant establish the mark is being “used in commerce” in order to receive approval from the United States Patent and Trademark Office (USPTO). Use in commerce includes any tangible evidence of the mark having been a part of any transaction. By contrast, intent to use, as defined by the Federal Circuit, is having the plan of immediate use after receiving

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Anti-troll strikes back

Written by Dr. Sinai Yarus On April 10, 2014 the Patent Trial and Appeal Board (PTAB) of the USPTO decided the Electronic Frontier Foundation v Personal Audio LLC inter partes review case. Personal Audio LLC is an offshoot of Personal Audio, Inc. which developed an audio player that could download, store and manipulate audio files. The Personal Audio patents issued starting in 1998. Personal Audio, LLC asserts the patents. The International Trade Commisssion has ruled (in an unrelated case) that significant licensing efforts in the US constitute a “domestic industry” worthy of protection. The Electronic Frontier Foundation (EFF) is a nonprofit organization which describes itself as “defending civil liberties in the digital world”. EFF says that it engages in impact litigation, policy analysis, grassroots activism, and technology development. EFF favors open source software. Both Personal Audio and EFF are virtually immune from counter-suits because neither one of them sells a product. Personal Audio is a classic non practicing entity (NPE;

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