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information · ip · privacy

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

Consumer Rights and an Organization’s Responsibilities Under the CCPA


As we’ve previously blogged about, the California Consumer Privacy Act (“CCPA”) is an exhaustive piece of legislation requiring organizations to heed and defend consumer rights relating to access to, sharing of, and deletion of personal information that is collected by businesses. In particular, the CCPA requires organizations to notify California consumers of the rights newly afforded to them under the CCPA. These rights are summarized in the graphic below.

Summary of Consumer Rights and Organization’s Related Responsibilities:

In addition to notifying California residents of their consumer rights, organizations need to provide at least two methods– including a toll-free phone number—for consumers to submit requests to exercise their rights.  If the organization maintains a website, one of those methods needs to be a website address.  If an organization operates exclusively online and has a direct relationship with the consumer, it does not need to provide a toll-free number and only needs to provide an email address as a designated method for submitting requests.

Response Requirements When Consumer Exercises a CCPA Right

Once an organization obligated to comply with the CCPA receives a California consumer request to exercise a CCPA right, it must disclose and deliver the information free of charge … Keep reading

CCPA Enforcement Begins July 1, 2020: Do You Need to Comply?


Prior to the unique data security and privacy challenges unexpectedly presented as a result of a mass movement to remote working earlier this year, the California Consumer Privacy Act (“CCPA”) was one of the most highly anticipated regulation organizations were (or, should have been) preparing to comply with.  Despite industry pressure to delay enforcement of the CCPA so organizations could continue to focus on mitigating further disruptions and damage to their operations caused by the COVID-19 pandemic, the California Attorney General has maintained his commitment to begin enforcement of the CCPA on July 1, 2020.

In preparation for the enforcement date, Burns & Levinson will be doing a series detailing some of the highlights of the CCPA, which technically went into effect on January 1, 2020.  If the CCPA applies to your organization and you had not previously taken steps to bring your organization into compliance with Europe’s General Data Protection Regulation (“GDPR”), you may have significant work to do in order to bring your organization into compliance with the CCPA.  If your organization has previously engaged in GDPR compliance, you may still have work to do.  While there is some overlap between the regulatory and statutory requirements of … Keep reading

Domain Name Offer: Helpful Service, or Marketing Scam?


In 2013, I blogged about a common deceptive technique used by some publishers around the world that send apparently official invoices to trademark applicants in the hopes that people will reflexively pay outrageous sums for a listing of their brand in a catalog few will read. I wanted to follow up on that post and summarize another common scam that befalls trademark owners and applicants.  I get an inquiry from a client at least 2-3 times per month: “Is This Domain Name Email Legitimate?”The ruse works like this: Trademark owner applies for a trademark in the U.S. or with another office in another country.  Information about the mark and the owner is publicly available to scammers through simple searches. The scammer sends an email to the trademark owner purporting to warn the mark owner of the ill behavior of a potential domain name squatter. Below is an actual email received recently by a client.  I have changed the names in the email to avoid any embarrassment of the recipient, but I otherwise have left the text, including the grammatical errors of the original, intact.

Dear CEO/Principal,

We are the department of [Domain Name] Service in China. Here I … Keep reading
How Many Website Privacy Policies to Maintain in Preparation for GDPR?


Under the GDPR, data controllers are tasked with communicating to data subjects how their data is processed in a way that is both concise and transparent. From a consumer-protection perspective, this is undoubtedly one of the regulation’s more commendable requirements; as many who have drafted website privacy policies understand, there is often tension between the twin goals of concision and transparency. Providing fully transparent disclosure about data-processing activities, while keeping such disclosures brief and easily readable, can be a tricky balance to strike.

One question the GDPR may prompt is whether it makes sense for an organization to maintain separate residency-dependent privacy policies, or a single, all-encompassing policy. There are pros and cons to each, and what works best for a particular organization will often depend on the operational impact of each, as well as the usability of each by the relevant data subjects.

The Multiple Privacy Policies Approach

Organizations that treat data-subject information differently depending on its origination point, or that opt not to extend the enhanced protections offered under the GDPR to non-European data subjects, may prefer to maintain separate residency-dependent privacy policies.

In this instance, the benefit is that each policy can be tailored, … Keep reading

Licenses, SaaS, and the Cloud


Some Legal Issues to Consider When Migrating to Become a Service Provider

Although everyone’s into blockchain and the Internet of Things, believe it or not, there are still plenty of traditional software developers out there, and some of them still distribute physical software under traditional licenses to end users. Many of these vendors are in the midst of migrating their business models to distribution of their software as a service (SaaS), or via related models (platform or infrastructure as a service [PaaS and IaaS], among others). For vendors moving in that direction, there is a tendency to try to shortcut changes to standard license agreements by merely amending existing license terms to refer to SaaS environments. However, that attempt to “make do” with a software license when vendors move to the cloud can lead to potentially significant legal problems down the road.

License or Not?

Commentators on the legal consequences of SaaS distribution of software are quick to point out that a license grant to software provided over the web is probably ill-advised (although that analysis may be over-simplified). Technically, because the software is not installed locally, and users are merely accessing it in the cloud or at a … Keep reading

Data Mining and GDPR Compliance: Dealing with Obtaining EU Personal Information from Third Parties Under the GDPR (Including a Notification Checklist!)


As the effective date of the General Data Protection Regulation (GDPR) draws near, companies that collect, process, and use data relating to EU citizens need to be thinking proactively about issues they will face under the new directive. This post summarizes the discrete issue of how companies should start to manage data mining and data usage activities. Stay tuned as we continue to keep you updated in this space.

As most are probably by now aware, the GDPR seeks to regulate the use and disclosure of the personal data of all individuals within the 28 EU member states. Though passed into law in May 2016, it does not become enforceable until May 25, 2018. Unlike most privacy regulations in the U.S., the EU defines the term “personal data” broadly—it includes “any information relating to an identified or identifiable natural person (the ‘data subject’).” This means that even the most basic contact information, such as business card details or simply a name and email address, falls under the GDPR’s protections. Public sources of information, such as a residential phone listing, are not exempted from the GDPR’s restrictions.

To legally handle EU personal information harvested from third-party sources after May 25, … Keep reading

Test Your GDPR Preparedness: 7 Questions to Ask Your Team


With only 100 days to go until the General Data Protection Regulation becomes enforceable on May 25, it is increasingly imperative for organizations that process information relating to an identified/identifiable European person to have a firm grasp on what the regulation entails, as well as any associated impacts on business that can be reasonably expected. Here are seven key questions to ask yourself, your team, or your project manager, to gauge how prepared your organization is to meet the requirements under the GDPR.

  1. Has our data been inventoried and mapped, such that we have a complete understanding of our data flow?

An essential prerequisite to developing a GDPR compliance plan is to have a detailed understanding of the lifecycle of the personal data processed by the organization. It is impractical to implement a reasonable GDPR compliance plan if the organization does not thoroughly understand the personal information it processes, how it was collected, where it is stored, and where and to whom it is transferred. The GDPR identifies specific categories of information that it expects organizations to keep records on, with respect to data processing.

  1. When personal information about people is collected indirectly from third-party sources (e.g., public databases,

… Keep reading