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For some time there has been a split among the Federal circuits as to whether evidence of willfulness is required in order to award disgorgement of profits for trademark infringement under Section 1125(a) of the Lanham Act.  The split stems from how each Federal circuit interprets Section 1117(a) of the Lanham Act which was amended in 1999.  The section reads as follows:

When a violation of any right of the registrant of a mark registered in the Patent and Trademark Office, a violation under section 1125(a) or (d) of this title, or a willful violation under section 1125(c) of this title, shall have been established in any civil action arising under this chapter, the plaintiff shall be entitled . . . subject to the principles of equity, to recover (1) defendant’s profits . . .

A number of Federal Circuits, including the Second and the Ninth, have interpreted the above to require a showing of willfulness for disgorgement in Section 1125(a) cases.  Six Federal Circuits do not.  On April 23, 2020 the United States Supreme Court made clear where it stands.
Continue Reading Trademark Infringers Beware – Willfulness Not Required for Disgorgement

On March 31, 2020, the U.S. Patent and Trademark Office announced that, pursuant to the Coronavirus Aid, Relief, and Economic Security Act, certain deadlines for patent and trademark applications would be extended. The CARES Act authorizes the PTO to toll, waive, or modify any patent or trademark deadline in effect during the COVID-19 emergency. The announcements were made in written Notices of Waiver, one each for patents and trademarks, posted on the PTO’s website.

In order to exercise the power under the CARES Act, the PTO Director must determine that the COVID-19 pandemic materially affects the functioning of the PTO; prejudices the rights of patent applicants, trademark registrants, or patent/trademark owners; or prevents patent applicants, trademark registrants, or patent/trademark owners from making a filing or paying a fee in the PTO.
Continue Reading Patent, Trademark, and Copyright Deadlines Extended Due to COVID-19

Call me a pessimist, but it was surprising to me when I recently checked the USPTO trademark database that I did not find an application to register “Social Distancing” for some other novelty item.  (It is also surprising that the tag #socialdistancing has only 159,000 uses on Instagram.) Nevertheless, I am sure some entrepreneurs will use it on a t-shirt or coffee mug, file a trademark application for “Social Distancing” and then try to prohibit others from using the term.  Chances are, however, that this entrepreneur will not be successful.

The trademark examiner assigned to an application to register SOCIAL DISTANCING will likely refuse registration because it fails to function as a trademark because it merely conveys an informational message. Where a term is merely informational, the context of its use in the marketplace would cause consumers to perceive the term as merely conveying an informational message, and not a means to identify and distinguish goods/services from those of others.
Continue Reading Stay Away; No Trademark for Social Distancing and other Informational Terms

Generally, the title to a single motion picture is not entitled to trademark protection.  This is the same for the title to single books, songs and other singular creative works.  Most non-trademark attorneys are surprised when I tell them this.  I am sure you may be scratching your head as well.  The logic behind the legal principle that the title to a single creative work cannot function as a trademark is as follows:  a title to a single creative work such as a book serves to identify only the book and not the source of that book.  Another reason trademark law generally refuses to acknowledge trademark rights in the title to a single creative work, such as a book, results from the interplay between copyright and trademark law. While trademarks endure as long as the mark is used, copyrights eventually expire. When a work falls into the public domain, others would have the right to reproduce the literary work.  However, if the title to the book enjoyed trademark protection, this would compromise the policy of public domain under copyright law because a book with a trademarked title could only be published under a different title.
Continue Reading No Trademark Protection In Book or Movie Titles?!?

The Patent and Trademark Office (PTO) may reject a patent application on several different grounds.  One of those grounds is obviousness.  Under 35 U.S.C. § 103, if an invention is obvious to a person of ordinary skill in the art, then it is not patentable.

In determining whether an invention is obvious, the PTO compares the invention to the “prior art” – all similar inventions that are publicly available at the time the application is filed.  If the PTO rejects the invention as obvious, the applicant can respond by narrowing the invention or arguing that the PTO is wrong.  In addition, the applicant can submit evidence of certain factors that the courts have held are relevant, objective indicia of nonobviousness.  These factors are called “secondary considerations.”  They include evidence of: unexpected results, commercial success, long-felt but unsolved needs, failure of others, skepticism of experts, and copying by competitors.Continue Reading Copying by Competitors is Evidence of Nonobviousness of an Invention