"That's the way the cookie crumbles", a panel of judges from the US Court of Appeals for the Third Circuit again concluded in rejecting trade dress protection for the well-known Pocky cookie design. However, in a revised decision following a rehearing request, the panel clarified its initial analysis on trade dress functionality, providing a fuller explanation of its reasoning which may soothe trade dress advocates.
Congress recently enacted the Trademark Modernisation Act (TMA) 2020 as part of the Consolidated Appropriations Act 2021. The TMA amends the Trademark Act 1946 – also known as the 'Lanham Act' – and makes significant changes to trademark law by clarifying the burden for trademark owners seeking injunctive relief and providing new mechanisms for challenging applications and registrations on non-use grounds.
The Consolidated Appropriations Act, which was enacted on 27 December 2020, requires drug manufacturers and licence holders to market biologic drugs and disclose all patents that cover their products to the Food and Drug Administration. By increasing transparency, the act aims to force manufacturers to conform to rules which have proven successful in promoting the development and use of small-molecule generic drugs.
Since the COVID-19 pandemic started, some new trends have emerged among non-profits looking to maximise their brand value. This article outlines strategies that non-profits should consider when working to maximise brand value, conduct a successful rebrand or monitor the use of copyrighted materials.
After years of similar pending legislation, Congress passed the Copyright Alternative in Small-Claims Enforcement (CASE) Act, buried deep in the thousands of pages of the COVID-19 relief bill. The CASE Act is being welcomed with mixed reactions, with some copyright owners excited for an alternative to federal litigation, but also concerned about the opt-out option. Similarly, others who frequently receive copyright claims view this with hesitancy.
Companies, and their lawyers, go to great lengths to protect their intellectual property, as they should. But a new trend may have emerged – the granting of a free licence, for a limited duration, to help with the COVID-19 battle. Granting such a licence is a bold step. Companies should consider the issues relevant to them and enlist counsel as appropriate.
The Supreme Court has unloaded its cannons on the Copyright Clarification Act, holding that Congress lacks the authority to abrogate states' immunity from copyright infringement suits. The unanimous decision found that the court's previous holding in a case rejecting the sovereign immunity abrogation clause in the nearly identical Patent Remedy Act compelled a similar result. This finding effectively eliminates copyright infringement actions against states.
In today's digital world, application programming interfaces (APIs) play a rapidly growing role in meeting the need for interconnectivity. As society grows increasingly reliant on remote access for work, APIs will continue to serve as an essential facilitator of business and everyday life. To that end, every business must consider how best to protect this valuable resource. This article discusses several ways in which legal issues surrounding APIs arise and how businesses can better protect their APIs.
As the COVID-19 pandemic continues, scammers are seeking to capitalise on public fear and uncertainty, requiring brand owners to be ever vigilant in monitoring and protecting their intellectual property. This article highlights some of the scams seen during the pandemic and outlines what action brand owners can take. These actions may prove particularly important for organisations working on the front line in the fight to flatten the COVID-19 curve.
The United States Patent and Trademark Office recently enacted a rule that increases numerous fees for filing trademark applications, maintaining trademark registrations and filing oppositions and cancellations before the Trademark Trial and Appeal Board. Brand owners considering filing new trademark applications, and those with upcoming deadlines, should proceed with filings now to avoid incurring the increased government fees that will take effect on 2 January 2021.
Arizona, Montana, New Jersey and South Dakota have voted to legalise recreational marijuana use for individuals aged 21 years and older and Mississippi has voted to allow prescribed medical marijuana for people with certain conditions. While the specific regulatory frameworks concerning cannabis in these states have yet to be determined, companies involved in the cannabis industry should begin thinking now about what requirements exist to secure trademark rights for cannabis-related goods and services.
With people encouraged to stay home and retail stores closing across the country due to COVID-19, Amazon sales have surged. In this climate of increased sales, IP rights owners must be especially active in enforcing their rights against Amazon sellers of infringing products. Fortunately, Amazon provides numerous tools that rights owners can use to monitor for infringement and seek the removal of infringing listings.
In March 2020 the Precedential Opinion Panel of the Patent Trial and Appeal Board (PTAB) designated as precedential an opinion which sets out a two-part inquiry for determining when the PTAB can deny institution of inter partes review proceedings under 35 US Code 325(d) as duplicative of art and arguments previously presented in patent prosecution. The PTAB director's determination to institute or deny an inter partes review is non-appealable.
Protecting consumers and company brand identity is more important than ever as counterfeit products surge in the shadow of the COVID-19 outbreak. In this time of social distancing, consumers are beginning to rely more heavily on e-commerce platforms to purchase both essential and non-essential products. This article outlines some of the strategies that companies could use to protect their customers and brand during the pandemic.
Despite the implementation of several programmes in recent years, the traffic of counterfeit goods remains a problem for Amazon. As such, it recently announced the launch of a new Counterfeit Crimes Unit in an effort to stifle the trade of counterfeit goods on its international marketplace. The unit is a global team that will use Amazon's own internal data, third-party payment service providers and on-the-ground assets to identify bad actors and bring them to justice.
Products involving CBD and hemp seeds have been flooding the US market and businesses are seeking to protect their brands in connection with products in this emerging market, given the legalisation of various forms of marijuana in individual states. Where federal or state registration is not legally obtainable with regard to various goods or services, users may be able to obtain common law rights to cannabis-related trademarks if they are in use.
The Supreme Court recently ruled by a seven-to-two majority that determinations by the Patent Trial and Appeal Board of whether to apply the time bar of 35 US Code 315(b) to inter partes review proceedings are not appealable. In so doing, the Supreme Court effectively abrogated the Federal Circuit's en banc decision that such determinations are appealable.
Congress is taking action after recognising the growing problem of counterfeit and unregulated products being sold through online marketplaces and the associated safety concerns. This article provides a high-level overview of the proliferation of counterfeits on online marketplaces and summarises three pending bipartisan bills and their stated goals.
A recent Supreme Court decision may seem like it boiled down to an esoteric argument over the correct interpretation of a series of cases decided in the 19th century – and it did – but the ramifications of the decision will be felt in 2020 and beyond. The court, by a slim five-to-four majority, held that the annotations in Georgia's official code are not copyrightable.
In April 2020 the Supreme Court ruled that a plaintiff in a Lanham Act trademark infringement case may recover a defendant's profits without having to prove that the defendant acted wilfully. This precedential decision makes it easier for plaintiffs to obtain monetary recovery for trademark violations and false advertising under the Lanham Act.