Don’t Crumble Under Cookie Restrictions

Nearly half of all websites use cookies – small text files stored on internet users’ computers and mobile devices so web servers can track that user. Cookies come in a variety of flavors in terms of their purpose, the party placing the cookie, and the duration they last on a user’s device. For example, a cookie may have a functional (ex. cookies that remember visitors’ preferred language), analytical (ex. cookies that report site usage statistics), or advertising/marketing purpose (ex. cookies used to retarget advertising to visitors). “First-party cookies” are placed directly by the website being visited while “third-party cookies” are set by another party other than the website’s owner. “Session cookies” are deleted after the user’s session on the website ends while “persistent cookies” can last from days to years after the end of the user’s session.

Proceed with Caution – Cookies May Create Legal Exposure for Site Operators

Cookies can be incredibly useful to website operators as they can enable the operator to gather helpful information about how visitors use its website and thereby target its advertising efforts without disrupting the user experience.  However, as web visitor privacy control continues to be … Keep reading

Brexit and Intellectual Property in Europe: What You Need to Know

Join Intellectual Property Group Co-Chair Deborah Peckham and attorney Christopher Carroll for a debriefing on critical points you need to know about Brexit’s impact on pan-European IP claims, including patents, trademarks, and design rights. Which pan-European rights will give rise to U.K. rights post-Brexit? How will U.S. owners ensure that their IP rights stay protected in the U.K.? How does Brexit impact tracking of renewals and maintenance of IP Rights in the U.K.?

Christopher Carroll is an intellectual property partner based in the firm’s Boston and London offices. He has practiced extensively before both the U.S. Patent and Trademark Office and European Patent Office. His practice concentrates on developing strategies for clients related to patents, trademarks, and copyrights in the U.S., Europe, and internationally.

Click here to watch the full micro-webinar.… Keep reading

GDPR Operational Compliance: Don’t Stop at Updating Your Website Privacy Notice

Europe’s General Data Protection Regulation (“GDPR”) is much more than a reminder to update your organization’s website privacy notice. While an updated privacy notice is one of the more public-facing steps an organization can take to comply with the GDPR, the majority of fines lodged by regulators under the GDPR relate to organizations’ operations unrelated to their privacy policy. Below are just a few steps you should be taking to become compliant.

  1. Adopt Appropriate Security Measures: The GDPR requires organizations to implement appropriate technical and organizational measures to ensure a level of security appropriate to the risk posed to individuals by the organization’s processing of their personal data. This is a flexible standard, and while no specific measure is strictly prescribed by the GDPR, hundreds of organizations have already been fined for failing to implement appropriate security measures. For instance, sanctions have been imposed for failing to encrypt personal data, failing to train employees on data security, failing to conduct risk assessments, and even inadvertent disclosures due to human error.
  2. Ensure There Is a ‘Lawful Basis’ for Processing Personal Data: there are six, and only six, justifications (each called a “lawful basis”) for processing personal data
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COVID Stimulus Act Impacts U.S. Intellectual Property Laws

With the President’s signing of the Consolidated Appropriations Act for 2021 on December 27, 2020, several important updates to U.S. intellectual property law have been adopted.

Trademark Act Amended

The Trademark Modernization Act (“TMA”) makes significant amendments to the Lanham Act, which will become effective December 27, 2021. The TMA generally aims to reduce deadwood on the register of trademarks by providing for summary expungement. But the Act also made some noteworthy amendments to trademark prosecution and enforcement procedures.  A summary of some of the highlights include:

  • New Ex Parte Expungement Proceeding. A third party, or the Trademark Office, may petition to expunge a registration on the basis that the mark has never been used in commerce on or in connection with some or all of the goods or services recited in the registration. The proceeding is only available for registrations that have been registered for more than three years but less than 10 years.
  • Response Deadlines for Trademark Office Actions May be Shortened. The current response time for all Office Actions is six months. The TMA allows the response period to be shortened to a period that is at least sixty days, provided extensions of
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Vetting a New Trademark: How Upfront Trademark Diligence Can Minimize Future Headaches

Before adopting a new trademark or filing an application for federal trademark registration, it is wise to conduct clearance searching. There are various purposes behind clearance. These include 1) dispute avoidance; 2) ensuring the mark as strength; 3) evidence of diligence and good housekeeping.

Dispute Avoidance. First and foremost, searching helps assess whether the chosen mark is likely to trigger a dispute with someone who already adopted the same or a similar mark. Importantly, trademark conflicts are not limited to the use of an identical mark for an identical product or service. Instead, the legal analysis typically focuses upon whether the existence of two similar marks in the marketplace might lead consumers to assume that the products come from the same source or that the sources have a relationship or are otherwise associated with each other. Furthermore, contrary to popular belief, trademark rights are effective upon the first use of a mark on a commercial product or service. Marks need not be registered. Therefore, the best way to avoid a dispute is to search the landscape of other users in the marketplace to be sure someone else didn’t hatch your great branding idea before you did.

Strength AssessmentKeep reading

Top 4 Trademark Enforcement Tools

A trademark’s value can be lost or weakened when a trademark owner fails to protect or police rights in the marketplace. Even improper and/or inconsistent use of a mark can hamper a trademark owner’s ability to enforce exclusive rights in a selected brand. Even if you own a federal trademark registration, the exclusive rights you own are not “self-executing,” and as the trademark owner, you are ultimately responsible for policing the marketplace, and sometimes your own use, to safeguard against losing rights.

Here are some of the top tools every trademark owner should consider incorporating into its trademark enforcement strategy:

1. Include Proper Notices Of Ownership and Registration of Trademarks. If your mark is not registered, but you have a good faith belief that you own a mark exclusively, you should use “TM” with your mark. This symbol tells the world that you believe yourself to be the rightful mark owner.

Once registered, you should use one of the following forms of notice in connection with each use of the registered trademark, which relates to the types of goods or services described in the Certificate of Registration: ®, Reg. U.S. Pat. & Tm. Off., or Registered in Keep reading

Expanding Your Trademark Portfolio Overseas: Filing Strategies to Consider

Trademark rights are jurisdictional, meaning a trademark registration issued in the U.S. may be all but worthless in trying to stop infringement in say, Australia. If you do business outside of the U.S., pursuing trademark registrations in other countries may be valuable. U.S. trademark owners have several options with respect to pursuing international trademark rights and the best choice for your company depends on a few factors, including your goals and budget. As a very general rule we often tell clients that, subject to any budgetary constraints, it makes sense to try to obtain trademark protection in those countries where your company currently trades AND where you intend to trade (meaning generate sales/shipments) in the next 18-36 months.

The main paths to pursuing trademark registration in other countries are:

  • to file separate national/regional (where available) applications directly with each local intellectual property office in the country or region of interest; or
  • where feasible, file a single application via the World Intellectual Property Office (“WIPO”), designating the individual countries and regions of interest.

The One Size Fits All Approach – Filing Through WIPO using the “Madrid System”

  • Can be Less Expensive, But Rights Will be Narrower and Vulnerable

One filing … Keep reading

What It Takes to Register a Trademark

The process to apply for a federal trademark registration is a separate and more involved examination process than registering a business name with a state’s Secretary of State. The U.S. Patent and Trademark Office (“USPTO”) conducts a months-long examination of every trademark application to ensure all statutory and regulatory requirements are met and that the mark does not conflict with an already registered or earlier-for applied mark. We have summarized the benefits of trademark registration and the process below:

Benefits to a Federal Trademark Registration

In the U.S., trademark registration is not necessary to protect or enforce your exclusive rights in your brand. You may be able to protect unregistered trademarks under so-called “common law” trademark rights based on your use and reputation of the mark in commerce. However, common law trademark rights are much more limited than the rights afforded to federally registered trademark rights. Federal registration of your mark confers a number of benefits upon the trademark owner, including the following:

  • presumption of validity of the registration, ownership of the mark, and exclusive use of the mark in commerce;
  • presumption of continuous use of the mark since the filing date of the application;
  • incontestability of the mark
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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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