Trademark scams, as detailed in our earlier post here, are back with a vengeance. Because of the nature of these scams and the potential cost of falling for them, we felt it was time to address this topic again.

How Trademark Scams Work

Federal trademark applications and trademark registrations are public records. The United States Patent and Trademark Office maintains a searchable database of currently existing and expired trademarks. Among other information in the database is the name and address of the owner of a trademark application or registration, USPTO Serial and Registration Numbers, registration dates and even visual images of trademarks.

Scammers can obtain this information directly off the USPTO website and enter it into documents that look “official” and emanate from such “official” entities as World Trademark Register, United States Trademark Compliance Office, Patent & Trademark Bureau, United States Trademark Registration Office, and WTP Trademark Service.


Continue Reading Don’t Be the Victim of a Trademark Scam

While COVID-19 rightfully dominates news coverage and Henderson, Franklin has been providing our clients with information, updates and links to resources to help get through this, we also recognize that the mundane is sometimes just as important. Thus, in a world without Major League Baseball, the NBA, NHL, NASCAR or F1, we offer our own unique sports coverage, with an intellectual property slant.

Tom Brady Leaves Boston, Files Trademarks Applications

After 20 storied years with the New England Patriots, Tom Brady turned his back on the franchise, his fans and six Lombardi Trophies to sign with the Tampa Bay Buccaneers. This is undoubtedly a bitter pill for New England fans to swallow, who will now have to get used to mediocre football. (Patriot fans, please see Chicago Bears for guidance).

On the other hand, with his place in the Hall of Fame secure, Brady was looking for new challenges. Specifically, it appears, the challenge of brand extension. Almost as soon as the ink dried on his new contract with Tampa Bay, Brady’s management, TEB Capital Management, Inc., filed applications to register the trademarks TOMPA BAY and TAMPA BRADY with the United States Patent and Trademark Office. The trademark applications identify the goods the mark will appear on, specifically all the clothing, hats and footwear that Tampa Bay fans are rushing out (at least online!) to buy. Time will tell whether Brady can repeat his on-field success with Tampa Bay, but it is certain that his off-field brand strengthening moves will allow him to throw from a deep pocket.

Nature Boy Down for the Count
Continue Reading The Sports Page

COVID-19 has disrupted businesses and has wrought havoc with timelines and deadlines. Likely, it will continue to do so. Many government agencies, such as the IRS as we reported here, are reacting to COVID-19 by extending deadlines. For those with intellectual property-related deadlines in the near term, the United States Patent and Trademark Office (“USPTO”) has recently made some policy changes in response to COVID-19.

Remote Appearances

While work goes on inside the USPTO, the building is closed to the public and any in-person business.  All previously scheduled meetings or hearings before the Trademark Trial and Appeal Board (“TTAB”) or Patent Trial and Appeal Board (“PTAB”) are to take place by video or teleconference.

Deadlines

With regard to deadlines to respond to USPTO actions, inquiries or other deadlines, those are set by statute and rule and the failure to timely respond to a deadline results in an abandonment of the underlying trademark or patent application or registration.


Continue Reading COVID-19 Impact on USPTO Deadlines

Growing companies face all kinds of challenges. From financing to staffing, growth takes effort and attention. Among the many things that both drive growth and need this attention is the company’s intellectual property (“IP”). What follows are a few thoughts about some IP-related issues expanding businesses should keep in mind.

Button Up Protection

As businesses grow they must review their IP assets to ensure they are protected, especially the ones that are driving growth. These assets might include trademarks for new product names or brand extensions, taglines and logos, as well as patents for new technologies. Sometimes growth happens quickly and a business does not want to leave important assets unprotected.


Continue Reading Growing Pains: Intellectual Property Challenges for Expanding Businesses

The past ten years have seen amazing advances in technology and the next ten promise even more. How has the law kept up to ensure intellectual property rights are adequately protected and what are some major driving forces that will shape IP Law over the next decade.

2010-2020

  1. Globalization. With the rise of e-commerce and the Internet, falling borders and widening markets, businesses are now almost instantly global. No matter where a business is located, it must think beyond its borders and where its customers are and must take steps to protect their intellectual property across national boundaries. While only a select few businesses needed to worry about global IP protection during the 2000s, by 2020 the issue has become far more generally applicable. This has required businesses and their IP counsel to consider global issues at all phases of IP development and to devise appropriate global protection strategies.
  2. The Leahy-Smith America Invents Act (AIA). This 2011 overhaul to the United States Patent Act altered the long-standing US rule that the “first to invent” had superior rights to a “first to file” rule. This significant change brought the US patent system in step with the majority global rule. The AIA implemented other changes in the patent system, but the “first to file” change was most significant and just one of several that updated an antiquated statutory regime.
  3. IP as a Business Asset. For decades, the value of a business was primarily represented by its tangible assets — property, equipment, inventories, etc. This has changed, however, and intangible assets, specifically intellectual property assets, now account for significant portions of business valuation. Indeed, according to the IP-oriented merchant bank Ocean Tomo over 84% of the value of the S&P 500 in 2015 was represented by intangible assets. Further, the USPTO has reported that in 2014, “IP intensive industries” accounted for approximately one third of US GDP. With intellectual property becoming such a major component of the value of a business and such a significant element in our national economy during the past decade, businesses have had to adapt and become much more proactive to protect those assets.
  4. Alice. In Alice Corporation v. CLS Bank International, the Supreme Court ruled that merely applying an abstract idea on a computer is not patent eligible. What this effectively meant was that computer software programs that simply took abstract ideas—like hedging currencies—and implemented those ideas electronically could not be protected by the patent laws. This led to invalidation of a significant number of software patents and made it extremely difficult for software designers to patent their software. Designers had to react by resulting to different means to protect their inventions. While very few software patents have been issued since Alice, courts are beginning to interpret the decision in ways that pave the way for at least some wider availability of patent protection for software.


Continue Reading Looking Back, Looking Forward: Significant Intellectual Property Developments and Trends for the Future

In 1991, artist and designer Erik Brunetti launched a clothing line. In 2017, Brunetti filed an application with the United States Patent and Trademark Office (USPTO) to register the trademark representing this brand—FUCT (“Friends U Can’t Trust”). The USPTO refused registration of the mark because the Federal statute governing trademarks—the Lanham Act—prohibited registration of any trademark that

consists of or compromises immoral or scandalous matter.”

Too Scandalous to Trademark?

Reviewing the FUCT application, the USPTO applied its general test of for those marks that might be considered as comprised of immoral or scandalous matter. That is, whether a substantial composite of the general public would find a trademark shocking to the sense of truth, decency or propriety or whether the mark would give offense to conscious or moral feelings. Against this, the USPTO concluded the FUCT mark was totally vulgar, highly offensive and had “decidedly negative sexual connotations.” Therefore, the Lanham Act prohibited registration and Brunetti’s application was refused.

First Amendment Lawsuit


Continue Reading F Word ®

5Pointz

The building once known as 5Pointz was a block-long warehouse structure in Queens, NY. During the ‘90s, the area was rundown and crime-riddled. As a way to discourage vandalism to the building, the owner allowed graffiti artists to paint on the walls, giving them a canvas to display their works. Ultimately, the 5Pointz building became well known among graffiti artists and tourists and artists traveling from all around the world to add their art to the structure. For almost 20 years the developer and the artists existed this way. However, wanting to take advantage of rising real estate prices, in 2010 the owner of the building decided to redevelop it as a residential complex. The owner ultimately obtained permits to demolish the buildings and redevelop the parcel.

The Litigation


Continue Reading Landowners and Artists: Be Careful Before You Remove Street Art

pro-basketball-team-1594634_1920(1)While we have written on this topic in the past, because the NCAA Basketball Tournament is an annual event and the NCAA gets more aggressive each year, this information bears repeating. Because businesses sometimes tie promotions to the Tournament and use it as a marketing activity, they should be careful how they do so.

The Problem


Continue Reading Don’t Foul Out with MARCH MADNESS Marketing

Eagles_in_concert_September_2014(To the tune of Hotel California)

Once in Northern Virginia, a trademark was filed
A Mexican company a long list compiled
Cosmetics and phone cases, purses, hair gel and shoes
The list went on for six classes, just what did they have to lose?

During examination, a disclaimer was sought
The applicant gladly complied, any fear of refusal was for naught.

Then the mark was published, but the Eagles they did see
Their lawyers got involved
Said you can’t use this for free

Registering HOTEL CALIFORNIA
Such a lovely try (such a lovely try) Such a lovely cry
Don’t even try to use HOTEL CALIFORNIA
For any goods (for any goods) in our neighborhoods….

What Can That “Song” Possibly Mean?


Continue Reading Litigating it up at the HOTEL CALIFORNIA