U.S. Trademark Office Heightens Scrutiny of Trademark Applications and Registrations

A relative outlier compared to the trademark regimes in most of the world, the United States Patent and Trademark Office (“USPTO”) only permits registrations to be maintained for goods and services that are actually being provided in the U.S. and only allows registrations to issue based on a future “intent to use” in limited circumstances.  In other words, under the U.S.’s trademark system, trademark owners are not entitled to grab additional registered rights beyond the scope of their actual business activities in the U.S.  While previously the Office was somewhat lenient in accepting claims, more recently the USPTO appears to be cracking down on applicants to ensure consistency on the U.S. Register.  A few emerging examination trends demonstrate this trend:

BROAD CLAIMS BASED ON INTENT TO USE

Previously: Applications based solely on the applicant’s stated bona fide intent to provide all claimed goods and services were accepted based on this representation alone.

Recently: The USPTO has started requiring applicants of seemingly unrelated goods and/or services to justify how they could have a bona fide intent to provide various, disparate goods and/or services and explain to the office their business plans to support such a claim.

BROAD CLAIMS Keep reading

Brazil Adopts Comprehensive Privacy Law

Highlights of Brazil’s LGPD

Brazil became the latest country to draw inspiration from Europe’s General Data Protection Regulation (“GDPR”) and adopt its own national comprehensive legal framework for personal data regulation, called the Lei Geral de Proteção de Dados (“LGPD”). A comparison of some of the key topics covered by the GDPR and LGPD are summarized below:

  GDPR LGPD
Effective Date May 25, 2018 August 15, 2020 (but enforcement will not begin until August 1, 2021)
Fines Up to the higher of €10 M or 2% of  global annual revenue from preceding financial year Up to the lesser of 50 M reals or 2% of Brazilian sourced revenue from preceding financial year
Territorial Scope Personal data processing activities when:

1.     Controller or processor is established in the EU, regardless of whether the processing takes place in the EU or not;

2.     the data refers to individuals located in the EU when offering goods or services to such data subjects or monitoring their behavior;

3.     carried out by a controller not established in the EU, but in a place where Member State law applies by virtue of public international law.

Personal data processing activities when:

1.     carried out

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New Cost-Efficient Copyright Registration Option for Influencers and Bloggers

Effective August 17, 2020, the U.S. Copyright Office will begin providing a special group registration option for “short online literary works” such as poems, short stories, articles, essays, columns, blog entries, and social media posts. This new registration option will allow applicants to cover up to 50 works with a single application and one filing fee.

In order to qualify for group registration for short online literary works:

  • There must be 50-17,500 words in each work;
  • Each work must be created by the same individual or individuals (if created jointly);
  • Each creator must be named as the copyright claimant for each work; and
  • Each work must be published online within a three-calendar-month period.

This new group registration option provides a streamlined, cost-effective path for influencers, bloggers, and other online content creators to register the copyright to their creative works.  While copyright registration is not technically required to own the copyright to one’s creative works, under U.S. law, copyright owners cannot file a lawsuit against infringement until they have received a registration, or refusal to register, from the U.S. Copyright Office. Owning a registration prior to a creative work being infringed may also provide options for the owner … Keep reading

Trademark Office Proposed Fee Changes Could Change Filing and Prosecution Strategies

The U.S. Trademark Office announced its intent to increase various filing fees, and assess new categories of fees, in response to its continually increasing operational expenses.  The last time the U.S. Trademark Office changed its fee schedule was January 2017.

Fortunately, the Office has also indicated that it will not implement its proposed fee changes until October 2020 at the earliest.  Even then, the notice suggests that it would weigh its operational needs against the state of the U.S. economy before moving forward with the fee adjustments.

Below is a summary of many of the highlights of the proposed filing fee changes for electronic filings (which the U.S. Trademark Office continues to encourage through lower filing fees compared to filing by paper):

Two new categories of fees are worth noting as they may significantly impact trademark portfolio management strategies.

New Fees Assessed for Delayed Requests for Reconsideration

For the first time, the Office is proposing to assess fees for submitting a Request for Reconsideration where such a request is filed more than three months from the issue date of a Final Action.  Under U.S. trademark practice, if the Office raises an objection, the applicant will have six months … Keep reading

Neil Young’s Suit Illustrates Music Licensing Issues

On August 4, iconic guitarist Neil Young sued the Trump Campaign, claiming that Trump’s unauthorized use of his songs Rockin’ in the Free World and Devil’s Sidewalk at various rallies, including at the Tulsa rally on July 20, violated Young’s copyrights in those songs.  In filing his complaint, Young joins an elite crowd of artists who have complained about the purported unauthorized use of songs when the artist and the writer were not otherwise aligned politically.  Reagan, GW Bush, and McCain (among others) have all had to defend claims brought by, respectively, Bruce Springsteen, John Mellencamp, and Heart suggesting that use of their songs were unauthorized violations of their copyrights (and other rights) in those songs.

Fundamentally, Young claims that he owns the copyrights in the songs used by the campaign and the campaign used them without authorization.  Accordingly, he argues that he should be awarded an injunction against continued use, and damages for the prior violations.

These claims have a simple elegance and on their face.  But anyone who has dealt with music performance rights and licensing knows that there is almost nothing simple about those concepts.  Indeed, the world of music licensing is among the … Keep reading

Privacy Shield Struck Down by EU Court as Acceptable Mechanism to Transfer EU Personal Data to U.S.

One of the more operationally challenging components of the General Data Protection Regulation (GDPR), was the restriction on transferring European personal data to recipients outside of the European Economic Area (EEA).  Essentially, unless an exception or some additional GDPR-approved mechanism applies, European personal data cannot be transferred to non-EEA countries unless the data is being transferred:

  • within a related multinational group of companies who have adopted an internal code of conduct (called “binding corporate rules”) that applies to restricted transfers of personal data from the group’s EEA entities to non-EEA group that has been approved by an EEA supervisory authority;
  • between an EEA-based data exporter and a non-EEA-based data importer who have entered into a contractual agreement that adopts a set of “standard contractual clauses” adopted by the European Commission; or
  • to a jurisdiction that the European Commission has issued an “adequacy decision,” finding that such jurisdiction has adopted “adequate” data protection safeguards. As of the writing of this article, this list of jurisdictions was limited to Andorra, Argentina, commercial organizations in Canada, Faroe Islands, Guernsey, Israel, Isle of Man, Japan, Jersey, New Zealand, Switzerland, and Uruguay. Importantly, up until last week, U.S.
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When Paying for It Doesn’t Mean You Own It

The Conundrum of Works for Hire.

You are a small business.  You’ve hired a web developer to create your website, a marketing expert to author critical passages about your products and services, and you’ve hired a graphics person to design your business cards and signage.  You paid everyone, took delivery of and launched your beautiful new website.  The problem is, you don’t have any paper that confirms your developer, marketing guru, and graphic designer transferred the rights to the work to you.  “But wait,” you protest, “they cashed my checks and I have possession of the files.  Doesn’t that mean I own it?”

It’s natural to assume that if you engaged a service provider to create something for you, and you paid for it, it’s yours.  But that’s not what the law says, at least with respect to works that are eligible for copyright protection.  In fact, even if you have a writing that says the work shall be considered a “work made for hire,” that might not be sufficient to ensure that the work belongs to you.

What Does Copyright Protect?

Copyright protects original, creative works that are set out in a “tangible medium,” meaning they are written … Keep reading

Trademark Audits: What Registrants Should Expect

In 2017, the USPTO initiated an aggressive auditing program of U.S. trademark registrations at the time of maintenance filings. The goal of the program is to ensure the accuracy and integrity of the U.S. register by removing or narrowing registrations that include claims beyond the scope of the registrant’s actual use of its mark in U.S. commerce. The Office is on pace to audit 5000 registrations in 2020 so registrants who have not been tagged as yet should be prepared for an audit in the future.

By way of background, the U.S. system of protection for trademarks, unlike many non-U.S. systems, requires the trademark owner to actually use its mark in U.S. commerce with all the goods or services specified in the registration. Accordingly, to maintain an issued registration the registrant must declare, under oath, that all of the specified goods or services claimed in registration are being provided under the mark to U.S. customers at the time of filing registrant’s Section 8 Declaration of Continued Use (due between the 5th and 6th and years after registration) and Renewal (due every 10 years after registration) filings are due. This “actual use” requirement applies regardless of the original … Keep reading

Supreme Court Helps Trademark Owners: Proof of “Willfulness” Is Not Required To Recover Infringer’s Profits

In April 2020, the U.S. Supreme Court ruled that trademark infringers can be required to hand over their profits to a brand owner even if their conduct was not “willful.” The case was Romag Fasteners v. Fossil Group, Inc., 590 U.S. (2020). It is an important case for trademark owners because it lowers the plaintiff’s burden to recover a defendant’s ill-gotten profits.  In fact, after Romag, the defendant’s deliberate and intentional state of mind is no longer the critical factor that courts must consider in order to award profits in a trademark infringement case. Romag can be an important weapon for trademark owners against, for example, infringers that use their mark on goods or services that do not directly compete with the trademark owner, where the trademark owner did not necessarily lose a sale and may have no actual damages in that regard. Profit disgorgement by the infringer allows for monetary compensation even if the trademark owner has not been directly damaged in that way.

Fossil is a large and well-known distributor of fashion accessories.  Romag sells magnetic snap fasteners for leather goods. For years, Romag and Fossil had an agreement whereby Fossil used Romag fasteners in … Keep reading

The Communications Decency Act Suddenly Is Center Stage Again

Today’s internet users who might not be familiar with the Wild West that was the early internet might wonder how social media and other online service providers (and their users) “get away with” saying or publishing all manner of content on the web, including incendiary, defamatory, or just plain false information. The administration’s recent suggestion that it might assert executive power over social platforms has brought this issue back to the fire in an interesting way. This post is not meant to be a deep dive into the evolution of the law around expression on the web – but is intended to provide some guideposts for those who are watching this space.

Constitutional Freedom of Expression

Under the first amendment to the U.S. Constitution, everyone gets to say whatever they want, right? That’s more or less correct, but over the years courts have also limited your rights of expression with what are called “time,” “place,” and “manner” restrictions.  So you can’t go into a movie theatre and yell “fire,” because doing so might endanger the lives of others.  Analogously, when you express yourself in a public forum, including on the web, your freedom of speech doesn’t mean you are … Keep reading