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Category: Intellectual Property

What the NFT? The Value in Using NFTs With Your Brand

and
June 14, 2022

Jamie Pingor“What the NFT?” seems to be a longing question with many entrepreneurs and business owners. As technology continues to expand into the digital realm, terms like cryptocurrency, blockchain, virtual goods and NFTs are becoming more commonplace and integral to business development.  For a business or entrepreneur, dipping a proverbial toe into this new and emerging digital world is not without risk. Ironically, as NFTs continue to evolve, there may be even more risk in not exploring this new universe and its associated digital assets.

What the NFT?

So, what exactly is an NFT? An NFT is a non-fungible digital token secured on blockchain. Similar to cryptocurrency, NFTs represent ownership; however, unlike cryptocurrency, NFTs are unique and not replaceable.  In other words, an NFT is not interchangeable with other NFTs. Rather, it is a unit of data that digitally represents (i.e., “tokenizes”) a unique individual asset. Although these assets can be digital or linked to a physical asset, they are more commonly used with digital assets. At its core, an NFT can be thought of as a digital certificate of authenticity embodied within digital art, images, videos, and audio recordings that are not only used to digitally secure historic moments in time, but oftentimes also as source identifiers for goods/services.

Authenticity is becoming more relevant as the world adjusts to a new digital era. For instance, if a digital asset is not tokenized, then third parties who do not have a right to reproduce the work can easily reproduce it. Essentially NFTs act as a digital markers, denoting the particular digital asset is in fact the original. It is a badge of authenticity. For example, the first tweet via Twitter®, which exists only in the digital realm, was “minted” into an NFT, authenticating the digital asset.

Similar to a digital asset, NFTs can also be used to authenticate physical assets. The physical asset and NFT are both considered part of the NFT, even if the asset is not physically present at the time of the sale. For example, an NFT linked to a piece of fine art will authenticate the art. Using an NFT to authenticate the fine art helps to eliminate fraud associated with paper certificates of authenticity because NFTs are not interchangeable. Additionally, some NFTs may give the purchaser(s) control over the asset (e.g., sale, physical location, etc.) rather than physical possession. NFTs can ease the burden and minimize the risk of fraud by authenticating and accurately tracking ownership of digital and physical assets.

Creating an NFT

At this point, you’re probably still thinking “What the NFT?,” which is okay. While the concept may seem complex, making an NFT is a rather simple process – so simple, that young people have found ways to make millions off their own NFT collections. Take for example, 13-year-old artist Nyla Hayes who became a millionaire after selling her collection of artwork as NFTs, or 12-year-old Benyamin Ahmed who made millions creating original works of NFT art. It all starts with a few clicks and a couple of apps to begin buying and selling NFTs.

The first step in creating an NFT is to secure a contract with blockchain. To do so, there are various NFT marketplaces available that offer services to not only buy and sell NFTs but to also provide services to create (i.e., “mint”) an NFT. After minting your asset, you will need to secure a digital wallet to store your NFTs. The type of wallet depends on the type of blockchain you are using. There are various apps offered such as MetaMask® that allow you to easily create a wallet (the apps will typically list compatible wallets). The wallet and NFT marketplace will eventually need to connect to one another before you can begin buying and selling. Much like buying and selling across seas, the digital world uses a different currency platform. One type of currency most often used is called Ethereum® (“ETH”). Much like currency in the real world, the value of ETH shifts. As of June 11, 2022, one ETH equates to $1,560.90 USD. Although the value of an NFT may vary, there is no denying this new digital concept may be here to stay.

JUST DO IT®: Registering NFTs as a Trademark

Facebook®, NIKE®, and Coca-Cola® are just a few of the many companies entering this new space by storm in the hopes of gaining an advantage in the marketplace.  Since an NFT can function as a source identifier (i.e., trademark), companies have begun applying to register NFTs as trademarks for virtual goods and/or services in an effort to seek brand protection for their respective goods and/or services in the virtual world. For example, NIKE® recently launched its new brand of CryptokicksTM. As you likely guessed, CryptokicksTM are a new collection of custom NFT sneakers. The concept of a digital sneaker may sound downright ludicrous to some, and innovative and forward thinking to others.

As an entrepreneur or business exploring NFTs, the best way to secure your intellectual property rights is to officially secure a registration for a trademark or copyright. In October 2021, NIKE® took its digital goods and services to the United States Patent and Trademark Office (USPTO) where it applied for federal trademark protection for “JUST DO IT” to use in connection with its virtual goods and services. As mentioned in our previous article, a trademark is “any word, phrase, symbol, or design” that is used as a source identifier for goods and/or services. In 2021, the U.S. Trademark Office saw a surge of NFT applications as more companies like NIKE® began to expand their goods and services to keep up with the changing technological landscape. However, one caveat to securing an NFT trademark registration is that the U.S. Trademark Office requires expressive works such as NFTs to be a part of a larger collection. If the NFT is not a part of a collection and/or series and rather is a single work of authorship, the application will be refused. For some businesses and entrepreneurs, dipping a toe in this digital pond may not include an entire collection. If a business is considering creating a single NFT (i.e., a single work of authorship) to test the market waters rather than a collection, then the best avenue to protect your rights is through copyright protection.

As the technological landscape continues to expand more into the digital realm, businesses and entrepreneurs should begin to explore these new avenues. Whether a business wants to dip a toe or dive head first into the NFT pond, there is no denying NFTs are the beginning of a new digital marketplace. So instead of asking “What the NFT?,” businesses and entrepreneurs alike should be asking “What value will NFTs bring to our brand?”

If you or your business are considering using NFTs, our intellectual property attorneys at Walter Haverfield are here to help.

Kristina Schiavone is an associate in the Walter | Haverfield Intellectual Property Group. She can be reached at 216.658.6231 or at kschiavone@walterhav.com. 

Jamie Pingor is a partner and chair of the Walter | Haverfield Intellectual Property Group. He can be reached at 216.928.2984 or at jpingor@walterhav.com.

“Adapt And Grow:” The Benefits of the Trademark Tacking Doctrine

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March 8, 2022

Kevin SoucekMarch 4, 2022 

Developing a recognizable consumer brand takes a significant amount of time and money. As such, trademarks, being in continuous use in commerce, barring certain exceptions, would not have a designated expiration date, unlike copyrights and patents. Therefore, maintaining brand recognition for generations may require businesses to update or even change their branding. In our modern marketing landscape, businesses must be able to adapt to change, and one way to do so is by updating their trademark(s). Trademarks are used as source identifiers for businesses and are valuable assets. Therefore, modifying the existing image while maintaining/tacking the rights associated with the current mark’s registration can be quite beneficial.

Trademark “tacking” is a legal doctrine. This doctrine allows a trademark owner to modify its trademark while retaining the first-use date of the original mark, as well as all of the original mark’s goodwill, provided that the modification creates the same, continuing commercial impression as the original mark, and would be considered by purchasers as the same mark. In other words, this doctrine permits a trademark owner to “tack” its use of a newer version of a mark onto the older version of a mark, if the newer version is a “legal equivalent” (the same, continuing commercial impression) of the older mark, thereby retaining the benefits associated with the older version.

The trademark tacking doctrine is understood best by example. One of the better examples of a successful trademark tacking is found on a kitchen staple you likely have in your cupboard, Morton® salt.  Since the early 1900s, this classic container has depicted the “Morton Salt Umbrella Girl” trademark. As the image below shows, the “Morton Salt Umbrella Girl” trademark has not been stagnant over the years; rather, this trademark has been regularly modified throughout time to ensure that the Umbrella Girl’s look remains modern. As shown, each modified version of the trademark includes the same essential image showing a young girl holding an umbrella in one hand to shield against falling rain, and in the other hand, a package of salt under her arm with the spout open and salt running out.

In essence, under the trademark tacking doctrine, as long as each new version of the trademark creates the same continuing commercial impression in the minds of consumers as the prior mark, then the trademark rights acquired from the first registration should continue or be “tacked” on to the original. Without this tacking doctrine, trademark rights could be reset/reduced, each time a trademark logo is modified. This means that without this doctrine, the trademark would end up with a new first-use date and could potentially lose the rights and goodwill attached to a prior-version of the trademark.

When thinking about taking advantage of the tacking doctrine, the primary question following any change/modification is whether the change/modification causes the trademark to create a different commercial impression such that the trademark will be viewed by consumers as a new mark. If the change/modification is too great, the trademark owner could lose some or all of the trademark rights/benefits (such as the goodwill and/or date of first use) in connection with the older version of the trademark. Thus, there must be a balance between the need to update/modify a trademark while ensuring that the mark retains its same, continuing commercial impression to the ordinary consumer. In any event, modifying/updating one’s trademark is certainly a business decision and should be made on the basis of thoughtful input from an experienced trademark attorney.

The bottom line is adapting to change is not only necessary in life, but in business. Whether you realized it or not, famous marks like EBAY®, Domino’s® and UPS® (as shown below) made modifications to their company logos over the years – modifications that consumers appreciate and still recognize – modifications that helped the brand adapt and grow.

If you or your business have questions regarding your trademark, trademark rights, or are considering modifying your current trademark, please contact us at Walter | Haverfield.

Kevin Soucek is an associate in the Walter | Haverfield Intellectual Property Group. He can be reached at 216.619.7885 or at ksoucek@walterhav.com.
Kristina Schiavone is an associate in the Walter | Haverfield Intellectual Property Group. She can be reached at 216.658.6231 or at kschiavone@walterhav.com. 

Invest, Plan, and Protect: The Importance of Incorporating Your Intellectual Property in a Business Plan

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February 14, 2022

February 14, 2022 

Investing, planning for, and protecting intellectual property may seem like a simple process, however, patenting an invention often takes years to complete. It is an expensive investment businesses and individuals alike undertake not only to try to obtain strong patent protection in the marketplace, but to ultimately add value to their business.

Patents and their rights are a type of intellectual property, which may be sold, licensed, traded, or even assigned. Patent rights are exclusive rights granted for an invention, meaning that a patent holder can exclude others from “making, using, distributing, importing, or selling” products that embody the claimed invention.  However, part of the public policy and “bargain” of obtaining a patent is that the inventor discloses the details of the invention in the patent application which is ultimately made publicly available. The level of detail is important in the progression of technology such that others can build upon the publicly available information to make more technological advancements. In exchange for disclosure of information, if the invention is new, useful and nonobvious, the U.S. government grants a 20-year limited monopoly (i.e., a patent) for the disclosure, giving the inventor exclusive rights to the invention.

It is important to note that not all businesses opt to patent their inventions. For example, Coca-Cola has not patented their famous recipe, because if the recipe is disclosed in a patent, then the Coca-Cola family will only have exclusive rights to the patented recipe for the next 20 years. Therefore, some businesses choose to protect their intellectual property as a trade secret. Trade secret protection and overall confidentiality requirements are both valuable considerations to include in a business plan, especially for businesses like Coca-Cola who are relying on trade secret law to protect their intellectual property.

There are several questions a business should consider when determining how a patent fits into a business plan. For instance, is the technology core to the business, and will it offer a competitive edge in the marketplace if patented? Has the business protected all of its intellectual property? Are business competitors trying to sell products similar to the business’s intellectual property? Is the goal of the business to prevent others from commercially making and selling the issued patent? Take Samsung® as an example: Samsung® is a competitor to Apple®. Therefore, it is clearly advantageous for Samsung® to try and acquire rights in most, if not all, of its intellectual property in order to garner its success in the competing marketplace with Apple®. Additionally, Samsung® would likely want to prevent the manufacturing of its inventions rather than the use. Preventing the use of Samsung® products would not be advantageous for the company because the point of the invention was use by consumers. Therefore, it is in Samsung’s® best interest to ensure that its patent claims are crafted in a way to prevent the unauthorized manufacturing of the claimed product. Furthermore, it is in Samsung’s® best interest to acquire rights in its intellectual property so as to gain a competitive edge in the marketplace and avoid the pit falls of possible infringement claims from its competitors.

Patents much like copyrights and trademarks are valuable intellectual property assets that oftentimes may be the determining factor for an investor to decide to contribute to a business. For example, popular television shows encourage entrepreneurs to acquire a patent before promoting their products on the show, because a patent adds a significant amount of value to the proposed business.  So, in essence, whether you are a contestant on TV or a business in Cleveland, your patent is an asset and a key tool to consider when approaching investors and promoting your business in the marketplace. A proper business plan creates an objective blueprint that is necessary in marketing business assets. A good business plan will take into account all business assets, both tangible and intangible. Intangible assets include intellectual property.

Since patents can be licensed, sold, and franchised for additional profits they can provide businesses with access to new marketplaces. Therefore, a proper investment plan should also include the type of patent best suited for the invention. There are different types of patents, and the type of patent may matter depending on your market, which ultimately reflects on your business plan. For instance, how a utility mechanical patent compliments a business plan may differ greatly from how a utility electrical/software patent fits into a business plan. Well-drafted mechanical patents and claims may better prevent unauthorized production of an invention that can be physically observed in contrast to some electrical/software inventions that may be difficult to observe and protect with patent protection. However, even with proper drafting, the type of invention matters and should be considered when preparing your business plan.

Alternatively, patents are often used defensively to protect a business from alleged infringement.  Failing to acquire rights in your intellectual property could make your business susceptible to a lawsuit from a competitor claiming patent infringement. Such lawsuits are extremely expensive and can be detrimental to your business. This type of expense is often jaw dropping to those facing a patent infringement claim. Therefore, not only accounting for your own intellectual property rights, but the rights of others, are key components for any business plan.

Whether you are new to the marketplace, a longstanding business, or an entrepreneur looking to promote your new business, properly assessing your intellectual property and incorporating these assets into your business plan could give you a significant competitive edge in the marketplace.

If you have questions regarding your intellectual property, filing a patent, or questions regarding the best business plan for your intellectual property, please contact one of our attorneys on our intellectual property team at Walter|Haverfield.

Jamie Pingor is a partner and chair of the Walter | Haverfield Intellectual Property Group. He can be reached at 216.928.2984 or at jpingor@walterhav.com.

Kristina Schiavone is an associate in the Walter | Haverfield Intellectual Property Group. She can be reached at 216.658.6231 or at kschiavone@walterhav.com. 

Rodney E. Haven is an associate in the Walter | Haverfield Intellectual Property Group. He can be reached at 216.928.2944 or at rhaven@walterhav.com. 

“Where’s the Beef:” Protecting Trademarks In Today’s Digital World

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February 4, 2022

Jamie PingorFebruary 4, 2022 

“Where’s the beef®” – A classic trademark that first appeared in a 1980s Wendy’s commercial – a trademark that to this day would still make some consumers instantly crave a Wendy’s hamburger.

Trademarks are, and have always been around us. Some trademarks can even live in the minds of consumers for many years to come. As cable TV and commercials slowly become a thing of the past, trademark owners have resorted to social media as a means of promoting their goods and/or services.

The rise in social media brand promotions in conjunction with the various opt out ad options have made it more difficult for trademark owners to establish a long-standing brand name. Social media has created a crowded field of trademarks, many of which are oftentimes not officially registered.  Regardless of registration, common law rights exist for those using marks in social media.  Therefore, without proper due diligence, in addition to money spent on building a brand, businesses may find themselves confronted with a cease-and-desist letter that could result in unexpected legal fees.

In our previous article, “Click, Edit, Post: The Perfect Recipe for a Copyright Lawsuit,” we discussed copyrights and the importance of knowing whose work you are posting and sharing to social media, both as a business and as an individual. The article also addresses the significant ramifications that can occur as a result of such actions. Unlike copyrights where rights are established based upon authorship, when an original work is memorialized in a “tangible medium,” trademark rights are established based upon first use of a mark in commerce in connection with goods and/or services. Trademark rights for an unregistered mark (or common law rights) permit an owner exclusive rights to exclude others from using the mark within the geographical area of the owner’s use.  However, much like copyrights, there is significant value in registering a trademark with the United States Patent and Trademark Office (USPTO).

A trademark can be “any word, phrase, symbol, or design.” Based on this description you would think selecting a brand name or designing a logo would be simple, but unfortunately, it is one of the biggest challenges a business may face. Trademarks are essential for anyone offering goods and/or services to the public. Whether you are a business, entrepreneur, or someone looking to start a new business, a trademark helps the public associate the goods and/or services you are offering with your business.  Put another way, a trademark is simply a source identifier for goods and services.

Registering a trademark with the USPTO establishes priority rights for a business. This means that unlike an unregistered trademark owner, whose rights are limited in geographic scope, a registered trademark owner, absent any intervening common law rights, generally has the right to exclude others from using their trademark across the United States. A registered mark provides notice to other competitors about an owner’s rights in the mark. As an added bonus, the USPTO will most often refuse registration for confusingly similar marks. Furthermore, registration provides other added benefits such as a right to exclusively register a trademark with e-commerce sites like Amazon.com (Amazon). Amazon Brand Registry helps protect owners’ rights by providing accurate representation on the Amazon marketplace. The caveat, however, is that in order to register with Amazon Brand Registry, an owner must have an active federally registered trademark.

U.S. trademark laws generally consider the strength of the mark. Weaker trademarks are harder to register and may present significant legal challenges because they are more likely to create confusion among consumers with other owners’ trademarks. The stronger the mark, the more likely the public will quickly identify the source of the goods and/or services.  The strength of a mark is often a measure of uniqueness in the words and/or design/logo.  For example, the word “apple” primarily meant a type of fruit to the majority of the public prior to the founding of Apple Computers, Inc. Today, the majority of the public upon hearing the word APPLE® would instantly think of their computer, the latest iPhone, or maybe even the AirPods they lost in their washing machine. The point is that the word APPLE® had nothing to do with computers, until Apple Computer, Inc. arbitrarily started using this word in connection with its goods and services.

The bottom line is businesses are spending more time and money navigating the new technological landscape to protect and promote their brands. For example, it’s now commonplace for businesses to have their own social media policy, which provides guidelines to employees on how to use the business’s trademark personally and professionally on various social media platforms. Beyond policy implementation, trademark registration reduces risk for businesses and helps them gain access to valuable e-commerce sites, such as Amazon. So the next time you find yourself driving past a Wendy’s or eating a hamburger, may it remind you to register your business name and logo.

If you or your business have questions regarding social media policies, your trademark rights, potential trademark claims by others, or trademark law in general, please contact our intellectual property attorneys at Walter | Haverfield.

Kristina Schiavone is an associate in the Walter | Haverfield Intellectual Property Group. She can be reached at 216.658.6231 or at kschiavone@walterhav.com. 
Jamie Pingor is a partner and chair of the Walter | Haverfield Intellectual Property Group. He can be reached at 216.928.2984 or at jpingor@walterhav.com.

Click, Edit, Post: The Perfect Recipe for a Copyright Lawsuit

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January 25, 2022

Jamie PingorJanuary 25, 2022

Click, edit, and post – an action one can accomplish in less than a minute – an action that may have dire consequences under copyright law.

Gone are the days where we have to wait for the chance to share our thoughts in the local magazine or newspaper. Instead, we reach for our phones, anxiously searching for something clever to post. We may even take a screen shot or re-share a photo asking for the world to like and share.

However, what exactly is the world liking and sharing? Who is the original author? As the global pandemic has wreaked havoc on societies around the world, people have resorted to social media as a fun relief, a new career opportunity, or a way to promote their business. As a result, there has been an explosion of copyright lawsuits. Fun apps like TikTok, Instagram, and Facebook have their own copyright policies, but these policies are not enough to protect individuals and businesses from lawsuits.

The Copyright Act of 1976 is a federal statute that prevents the unauthorized copying of an authored work. Copyright law is an enumerated power in the United States Constitution, explicitly granting Congress the power to enact copyright laws. Over the years, Congress has made amendments to the Copyright Act in an attempt to keep up with the changing technological landscape. However, even with these amendments, copyright law has remained complicated.

The Copyright Act does not provide protection to works that are not “fixed in a tangible medium.” Such works, for example, include improvised speeches or performances that are not memorialized in writing or recorded. In addition, copyright protection does not extend to “any idea, procedures, process, system, method of operation, concept, principal, or discovery, regardless of the form it is described, explained, illustrated, or embodied in such a work.” For example, say an inventor discovers a cure for COVID-19 and decides to memorialize the invention in a lab notebook. The description of the process notated in the lab notebook is protected against copyright, because it is in a tangible medium; however, the idea is not protected by copyright law. The idea will be protected if the inventor applies for a patent and is thereafter granted patent protection or keeps the invention protected as a trade secret. The bottom line: using an authored work without the author’s permission may constitute copyright infringement. Furthermore, there is no bright-line test for determining how much copying of an authored work constitutes infringement. So long as the work is fixed in a tangible medium, an author may enforce his/her rights; however, the enforcement and eligibility of such rights may depend on whether the work is registered with the United States Copyright Office.

Registration with the United States Copyright Office is not required to claim rights associated with an authored work; however, registration makes the copyright owner eligible for statutory damages and attorney fees. Under the Copyright Act, statutory damages can range from $750 to $30,000 for each infringed work. A willful infringement may increase the damages to $150,000. Complicating matters even more, the Copyright Act does not require an individual to include a copyright notice on his/her copyrighted work such as a watermark.

Recently, celebrities like Jennifer Lopez, Ariana Grande, Justin Bieber, and Dua Lipa have fallen prey to copyright infringement. Most of these lawsuits stemmed from celebrities using paparazzi photos of themselves and posting the images on their social media accounts to promote brands. The photographers argued that they make a living off the revenue associated with licensing the photos, and if a celebrity posts the photos before the photographer can license the image, the value of the photo depletes because companies have less of an incentive to purchase the photos. Even though the photos were pictures of the individual who posted the image, the rights in the photo belonged the individual or companies that took the photo and registered the image with copyright office.

Copyright law is complicated and still evolving. There are many nuances and as a result, lawsuits can be costly. As the world switches to more transparent and quick-moving social media platforms, it is not only celebrities who should heed the warning and exercise extreme caution before posting, but any individual or business. When in doubt, paying a licensing fee or giving credit to the author may very well save you thousands in legal fees.

If you or your business have questions regarding your copyright rights, potential copyright claims by others, or copyright law in general, please contact our intellectual property attorneys at Walter | Haverfield.

Kristina Schiavone is an associate in the Walter | Haverfield Intellectual Property Group. She can be reached at 216.658.6231 or at kschiavone@walterhav.com.

Jamie Pingor is a partner at Walter | Haverfield and chair of the Intellectual Property Group. He can be reached at 216.928.2984 or at jpingor@walterhav.com.

 

New Trademark Regulations: The Trademark Modernization Act


December 13, 2021

December 13, 2021

On November 17, 2021, the United States Patent and Trademark Office (USPTO) finalized the long-awaited Trademark Modernization Act of 2020 (“TMA”). President Trump enacted the TMA on December 27, 2020 as part of the COVID-19 Economic Relief Bill. The TMA provides third parties and trademark owners with new tools and procedures that are more expedient to challenge trademark registrations and applications. Most of the TMA’s newly implemented procedures and amendments to the Trademark Act of 1946 (the “Lanham Act”) will go into effect on December 18, 2021, while the flexible response times to Office Actions will not go into effect until December 1, 2022. Furthermore, the Trademark Trial and Appeal Board (TTAB) will not begin accepting petitions for instituting expungement and reexamination proceedings until December 27, 2021.

New Proceedings Available to Cancel Third-Party Registrations

The TMA added new procedures for expungement and reexamination proceedings with the TTAB. The TTAB will begin accepting expungement and reexamination petitions on December 27, 2021. The new procedures do not affect the existing grounds for filing a cancellation with the TTAB based on non-use and abandonment.

Ex Parte Expungement Proceedings

The new expungement proceedings permit any party to file a petition to cancel all of the goods and/or services in a registration based on the claim that the goods and/or services were never used in commerce. A party can request to cancel a registration between three and ten years after the registration date. However, from December 27, 2021 until December 27, 2023, a party may institute an expungement proceeding against any registration that is at least three years old.  The USPTO has yet to establish a limit to the number of petitions that can be filed against a single registration. However, once use of the mark is established in a prior proceeding, the registrant will not be subject to another non-use proceeding for the same registration.

Ex Parte Reexamination Proceedings

The new reexamination proceedings permit a party to file a petition for cancellation for some or all of the goods and/or services of a use-based registration within five years after registration for a $400.00 per class USPTO filing fee. A party may file a reexamination proceeding based on a claim that the goods and/or services were (1) not in use on the filing date of the application, or (2) not in use prior to the deadline to file an allegation of use in commerce (applicable to applications initially filed based on intent to use).

In light of the new ex parte proceedings, brand owners should be aware of the significant ramifications of not using all of their goods and/or services registered with their mark in commerce. Such ramifications could result in the cancellation of an entire registration.

Flexible Response Periods to Office Actions

The TMA has brought with it significant amendments to the current response time periods to Office Actions, which will not go into effect until December 1, 2022. Prior to the TMA, the USPTO gave an applicant six (6) months to file a response to an Office Action regardless of the application’s filing basis. Under the TMA, applicants will need to be mindful of the response period set forth in each Office Action. Unless noted otherwise, an applicant will have to respond to an Office Action within three (3) months from the issued date. However, this response time may be extended for another three (3) months (for a maximum of 6 months) upon the payment of a $125.00 fee. If the request for extension of time to respond is not filed prior to the response deadline, then the application will be abandoned. As a result of an international agreement, the response time under the Madrid Protocol-based applications has not changed and remains at six months without an extension option.

Letters of Protest

A letter of protest provides a third party with the opportunity to object to the registration of a mark by providing “objective evidence relevant to the examination for a ground for refusal of a registration.”  Under the TMA, a third party can file a letter of protest during the examination period for a pending trademark application for a $50.00 USPTO fee.   In addition to the filing fee, the third party must also submit corresponding evidence.

Prior to the TMA, the process for submitting a letter of protest was informal, and as a result, it was underutilized. In response, the TMA establishes a two-month response deadline for the Director to review a third party’s letter of protest. The Director’s decision to provide the letter of protest and corresponding evidence to the examining attorney is a final decision and therefore non-reviewable.

Mistaken, False, or Fraudulent Attorney Designations

An attorney mistakenly, falsely, or fraudulently designated as the attorney of record will be ineffective. If such a case occurs, the USPTO communications concerning the mark will be sent to the applicant directly instead of the noted attorney of record. In addition, the attorney of record will not need to formally withdraw.

Conclusion

In light of the new proceedings, trademark owners and practitioners should proactively review their trademark registrations to ensure the goods and/or services listed are in actual use. Otherwise, the registrations may be susceptible to cancellation, in whole, or in part. Additionally, trademark owners should make sure the current owner’s address and attorney of record are up to date to ensure a proper response time to protect their rights should the need arise. If you are planning on filing a new trademark application or have questions regarding your existing registrations and the TMA, please contact our attorneys in our Intellectual Property Law practice at Walter | Haverfield LLP.

Kristina is an associate in the Walter | Haverfield Intellectual Property Group. She can be reached at 216.658.6231 or at kschiavone@walterhav.com. 

 

Increase in Trademark Fees, Effective January 2, 2021


November 24, 2020

Kevin Soucek

November 24, 2020

As if anything else could go wrong in 2020, the U.S. Patent and Trademark Office (USPTO) has announced an increase in a number of trademark filing fees, effective January 2, 2021.  For anyone considering a new U.S. trademark application filing as well as anyone having a renewal due, you can take advantage of the current USPTO fee structure by filing before year-end 2020.

The trademark office filing fee increases are as follows:

Application and application-related fees

  • TEAS Standard: $350 per class (An increase from $275 per class)
  • TEAS Plus: $250 per class  (An increase from $225 per class)

Post registration fees

  • Section 8 or 71 Declaration filed through TEAS: $225 per class (An increase from $125 per class)

Petition to the Director and letter of protest fees

  • Petition to the Director filed through TEAS: $250 (An increase from $100)
  • Petition to revive an abandoned application filed through TEAS: $150 (An increase from $100)
  • New fee for letter of protest: $50 per application

Trademark Trial & Appeal Board fees

  • Petition to cancel filed through ESTTA: $600 per class (An increase from $400 per class)
  • Notice of opposition filed through ESTTA: $600 per class (An increase from $400 per class)
  • Initial 90-day extension requests for filing a notice of opposition, or second 60-day extension requests for filing a notice of opposition, filed through ESTTA: $200 per application (An increase from $100 per application)
  • There is still no fee for a first 30-day extension request for filing a notice of opposition, filed through ESTTA.
  • Final 60-day extension request for filing a notice of opposition, filed through ESTTA: $400 per application (An increase from $200 per application)
  • Ex parte appeal filed through ESTTA: $225 per class (An increase from $200 per class)
  • New fee for second, and subsequent, requests for an extension of time to file an appeal brief in an ex parte appeal filed through ESTTA: $100 per application
  • There is still no fee for a first request.
  • New fee for appeal briefs in an ex parte appeal filed through ESTTA: $200 per class
  • New fee for requests for oral hearings: $500 per proceeding

Please do not hesitate to reach out to us here to expedite and take advantage of 2020 pricing. We would also be happy to assess your portfolio and advise of any applicable savings you can achieve.

Kevin Soucek is an associate at Walter | Haverfield who focuses his practice on intellectual property. He can be reached at ksoucek@walterhav.com or at 216-619-7885.

Have a Game Plan When Seeking to Secure Intellectual Property Rights

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July 29, 2020

Sean MellinoKevin Soucek

July 29, 2020 

When attempting to secure certain intellectual property rights, it is best to have a game plan in place before taking the field. This plan should be enacted timely and include provisions to overcome potential obstacles as identified in the plan.

As any new sport season brings its normal set of challenges, a new challenge has arisen where some sports teams are considering substantial rebranding, including team name changes. However, prior to such an extensive undertaking, the intellectual property rights in connection with this new team name should be secured while also considering any intellectual property rights of others. As a result, careful planning and execution are called for since balancing these issues is a vital component of any team’s viable business plan.

As an example, the former Washington Redskins, now the Washington Football Team, appear to be navigating through a field of legal trademark issues as they explore options for a new team name. Some of these issues most likely involve a number of trademark and/or service mark applications filed by third parties in an early attempt to secure rights to the Washington Football Team’s new name and sell the rights to that trademark to the Washington Football Team. As such, this situation may offer a glimpse of the trademark challenges that the Cleveland Indians could come across, with potentially conflicting trademark applications, while exploring their options in an attempt to secure the intellectual property rights in a potential new team name.

When filing a trademark and/or service mark application with the U.S. Patent and Trademark Office (USPTO), an applicant may file such an application under two bases: (1) active use in commerce basis, or (2) intent-to-use basis. In view of some of the hurdles and related legal challenges presently faced by the Washington Football Team’s scenario, many of these third-party applicants elected to file their applications for potential, speculative replacement team names under an intent-to-use basis. However, when filing an intent-to-use trademark application, the applicant must assert a bona fide intent to use the mark in commerce, as of the application’s filing date. An application that is not filed with a good faith intent to use is potentially voidable. (It is also important to note that a trademark application may only mature into a registration when the applicant shows actual use of the mark in connection with those goods and/or services in U.S. commerce within a certain timeframe.)

The Washington Football Team’s game plan would certainly involve a thorough effort at clearing the field and tackling any potentially conflicting trademark application(s) that hypothetically could present an obstacle to the Washington Football Team securing the intellectual property rights to a new team name. Should the Cleveland Indians decide to transition to a new name, one can expect a similar game plan.

Nevertheless, as with any game plan, it must remain flexible and dynamic to meet any potential obstacles. More importantly, adding experienced trademark counsel to your own team roster could be a game changer.

Supreme Court Rejects USPTO Rule That Addition of “.com” to a Generic Term is Ineligible for Trademark Registration


July 6, 2020

Maria CedroniJuly 6, 2020 

On Tuesday, June 30, 2020, the Supreme Court rejected the U.S. Patent and Trademark Office’s (USPTO) proposed rule that a generic term, combined with a generic Internet suffix (e.g., “.com’), is generic and, thus, not eligible for federal trademark registration. That means that adding “.com” to a generic term – in this case, Booking.com – can make the entire combination eligible for trademark protection.

The Court found that the USPTO’s  per se rule was improper and that the correct test for whether a term is generic is whether the term, as a whole, signifies a class of goods or services.

The ruling provides an incentive for businesses with an online presence to consider registering their domain name to bolster protection for their intellectual property.

At issue was whether the USPTO was correct in rejecting an application to register Booking.com, a booking accommodations website, as a trademark. The USPTO argued that, absent exceptional circumstances, every “generic.com” term is generic and ineligible for trademark registration. On appeal of the refusal, the district court found Booking.com is not generic. The Court of Appeals for the Fourth Circuit agreed with the district court. The USPTO appealed.

To be eligible for registration, a mark must be one by which the goods of the applicant may be distinguished from the goods of others. The Supreme Court found that the question of whether Booking.com is generic “turns on whether that term, taken as a whole, signifies to consumers the class of online hotel-reservation services.” The Court found that a consumer would not perceive the term Booking.com to be generic, noting that a consumer would not understand Travelocity (another provider of online hotel-reservation services) to be “a booking.com” and would not ask which “booking.com” is best for hotel reservations. Thus, the Court reasoned, Booking.com is not a generic name to consumers, and it is not generic for purposes of trademark registration.

In response to the USPTO’s argument that its proposed rule should be applied, the Supreme Court noted that the application of the proposed rule to Booking.com was not in keeping with the USPTO’s own prior registrations such as art.com and dating.com and that such registrations would be put in danger of cancellation if the USPTO’s rule were adopted.

The USPTO further argued that application of a common law principle applied in Goodyear’s India Rubber Glove Mfg. Co. v. Goodyear Rubber Co. should be applied to applications to register generic.com terms. In that case, it was held that adding the word “Company” to an otherwise generic term does not make the term eligible for trademark registration. The Supreme Court rejected this argument, finding that a generic.com term may be capable of identifying the source of goods/services to a consumer. The Court also weighed the fact that a given internet domain name is specific to a given entity stating that “consumers could understand a given ‘generic.com’ term to describe the corresponding website or to identify the website’s proprietor.”

The Supreme Court cautioned that its ruling does not mean that all “generic.com” terms are eligible for trademark registration as there may be some that are generic.  The ruling also does not speak to whether a “generic.com” term complies with other requirements for trademark registration.

For more information about the process of obtaining a trademark, click here. If you have questions about trademarking your domain name, please reach out to us here. We’d be happy to help.

Maria Cedroni is an associate at Walter | Haverfield who focuses her practice on intellectual property law. She can be reached at mcedroni@walterhav.com or at 216-619-7846.

 

Protecting Digital Content from Copycats and Infringement Claims


May 15, 2020

Jamie PingorMay 15, 2020 

At a time when social distancing is mandated, gatherings are banned and connecting with loved ones in person is discouraged, people are increasingly looking to bridge the gap in human interaction by using social media. They are producing a wide range of content from music videos to creatively composed posts and memes. However, content creators and social media users need to keep in mind the many legal issues that can arise from content production and/or unauthorized reproduction. For example, legal issues sometimes overlooked include intellectual property, publicity rights, commercial speech, and contractual terms of service.

Terms of Service and Copyright Law

Content creators should avoid playing someone else’s music or video within their creation unless they plan on also acquiring/purchasing a license to use the music/video online. Platforms such as YouTube can block or remove content if it suspects the creator has used too much of someone else’s material. Alternately, if you, as a content creator are incorporating another’s content, it’s always a good idea to give proper credit to the author of the content.

For example, retweeting a friend’s Twitter® post is within the scope of Twitter’s Terms of Service. The copyright owner agreed to retweets when joining the platform. However, copying someone else’s content and posting it to Instagram® without the copyright owner’s permission is most likely not protected by Twitter’s Terms of Service. If one wants to share someone’s content, a safer bet is to provide a direct hyperlink to the platform or even better, get permission from the original author.

When sharing a digital creator’s content, avoid removing their credits. The Digital Millennium Copyright Act (“DMCA”) prohibits the intentional removal of any “copyright management information” without approval from the copyright owner. This may include the name of the author and the author’s online “handle.”

Lastly, consider registering popular content with the U.S. Copyright Office that you, as a content creator, think copycats may attempt to publish or use without your permission. This registration, which should occur in the first three months from publication, will help down the line if deciding whether to sue someone for copyright infringement. If properly registered and infringement is proven, the copyright owner is then entitled to recover royalty fees or other monetary damages.

False Advertising

Avoid false advertising and misleading an online audience via marketing. Doing so can result in a fine by the Federal Trade Commission (FTC), which is in charge of regulating commercial speech and protecting consumers. Always disclose endorsements or materials received for free in exchange for a review.

Furthermore, choose words carefully when making statements online about celebrities and other individuals that appear as fact rather than opinion.

Trademark Law

Avoid featuring third-party trademarks in the form of words, symbols or designs unless the third-party has given you, as the content creator, permission. The trademark owner could sue for trademark infringement. When looking to secure one’s own trademark for online use, consider first doing a search with a professional to avoid any pitfalls by creating an unintended likelihood of confusion with someone else’s mark or brand.

Location

When live streaming or shooting video in public, consider asking for permission first. While many places are considered open to the public, such as grocery stores, they are also privately owned. The business that you, as a content creator, shoot video in may come after you if the business’s branding and trademarks are prominently featured in your content.

Publicity Rights

If you, as a content creator, are featuring another individual in your content, get a signed release expressing that that individual has agreed for you to use their “likeness” in your content. This is particularly important when you’re receiving income from your materials.

Final Takeaways

  • Use common sense and avoid legal mishaps when broadcasting online.
  • Copyright, trademark and publicity rights exist simultaneously. Each of these areas of law should be considered separately when producing content.
  • Be aware of, and don’t ignore, infringement claims. The more views one’s image or video incurs, the more likely another online creator is reproducing and duplicating one’s digital content.
  • As a content creator, as your popularity grows, seek the guidance of professionals to avoid infringement claims, aid in drafting contracts with brands, help create an original trademark or protect yourself from personal liability.

In today’s climate, more companies are investing money into digital branding, which means content creators are in high demand. Therefore, be cautious of the uptick in competition and legal claims that will likely ensue.

Walter | Haverfield is prepared to assist you in navigating these complex issues. If you have additional questions, please reach out to us here.

Jamie Pingor is a partner at Walter | Haverfield and chair of the Intellectual Property team. He can be reached at jpingor@walterhav.com or at 216-928-2984.

 

Intellectual Property Amid COVID-19

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March 17, 2020

Kevin SoucekJamie PingorMarch 17, 2020 

In the world of intellectual property, it is essentially business as usual as many examiners at the United States Patent & Trademark Office (USPTO) have been tele-working for years. Although, their tele-working set-up has not been without some changes.

As of March 16, 2020, the USPTO will remain open for business and continue without interruption, unless otherwise noted or mandated by the government. As a result, currently no patent or trademark deadlines will be extended. Although, the USPTO is waiving petition fees in certain situations for customers impacted by COVID-19 (coronavirus).

However, out of an abundance of caution for the health and safety of the public and their employees, the USPTO has restricted local visitation access to its facilities for the foreseeable future. Consequently, until further notice, all in-person meetings, including patent and trademark prosecution interviews, Patent Trial and Appeal Board (PTAB) oral hearings, and Trademark Trial and Appeal Board (TTAB) oral hearings scheduled to take place at the USPTO offices after Friday, March 13, 2020 will be conducted remotely by telephone or video conference.

On a separate note, the European Union Intellectual Property Office has reported that it has extended its deadlines until May 1, 2020 for deadlines that are due between March 9, 2020 and April 30, 2020. Also, the European Patent Office has granted an extension of all deadlines until April 17, 2020.

Please know that during this time we are closely monitoring the USPTO as well as patent and trademark offices worldwide and will attend to any specific matters in the timeliest and most effective manner. We will keep you updated as events occur. However, if you have any questions, or should certain legal-related issues arise, please do not hesitate to contact us.

Kevin Soucek is an associate at Walter | Haverfield who focuses his practice on intellectual property. He can be reached at ksoucek@walterhav.com or at 216-619-7885.

Jamie Pingor is a partner at Walter | Haverfield and chair of the Intellectual Property team. He can be reached at jpingor@walterhav.com or at 216-928-2984.

 

 

A Tough Lesson in Global Intellectual Property Law


February 4, 2020

Jamie PingorA Los Angeles-based attorney has taken it upon himself to attempt to teach Prince Harry and Meghan Markle of England’s royal family a lesson in global intellectual property law.  It’s likely that the intricacies of trademark law may come into play to establish who actually has the senior status in the U.S.

Earlier this month, the Duke and Duchess of Sussex made their plans public to step back from their formal roles as senior members of the royal family in favor of living independently – a bold move that they plan to finance by launching their own brand, Sussex Royal.

When this news broke, intellectual property attorney Joel Fogelson, as well as others, discovered the Sussex Royal brand was not yet registered as a trademark in the U.S. in certain classes for specific goods. While the royal couple had already filed an application to register their brand and an extensive list of merchandise in the UK, the duo and the massive machine behind their brand launch seemed to have inexplicably overlooked the need to do so stateside. Or, did they?

Fogelson wasted no time in filing an application in an attempt to own the brand on digital platforms for the purpose of “Communications by computer terminals, transmission and delivery of video, and data via the internet and wireless networks.”

Fogelson does not aim to profit from the move, according to statements he has made to the media. Instead, the attorney claims he filed the application in an attempt to teach the royal couple—and anyone else considering starting their own company―a powerful lesson in new business planning, and the pitfalls that inevitably accompany a lack of due diligence and forethought.

As the Duke and Duchess embark on their ambitious plan to build an empire out of selling their wares in the UK and across the globe, they, like every entrepreneur, face the challenge of doing the same in the U.S. without ownership of the Sussex Royal brand.

While Fogelson claims his intentions are altruistic―and has even gone so far as to say he would give the brand rights to Harry and Meghan for free—recent media reports suggest the field is getting rather crowded. As Fogelson planted his flag on the Sussex Royal name in the U.S., a company across the pond has laid claim to Sussex Royal in the European Union, and a motorcycle company has managed to grab the Australian trademark. It seems unlikely that all three are committed to serving the greater good.

Despite the slick media campaign to announce the launch of Sussex Royal, it would appear the duo and their team failed to think of the most basic aspects of unveiling a new brand.  All of this points to one conclusion: if the other trademark applications survive any likelihood of confusion challenge, the soon-to-be former royals may find it more difficult to make money in the U.S., the EU and in Australia than they had anticipated.

The story of Harry and Meghan’s Sussex Royal brand launch may turn out to be a cautionary tale for business owners and intellectual property attorneys alike. Or it may turn out that it is the Duke and Duchess, not Joel Fogelson, who teach IP strategy. Publicly available records indicate the Sussex’s team filed an application for the Sussex Royal name with the World Intellectual Property Organization with a U.S. designation a week before Fogelson came on the scene.  This possibly leaves the door open for the royals to capture senior filing status worldwide. The application encompasses all aspects of their business, from clothing and stationery to fundraising and social services in the U.S., the EU, Australia and Canada.

As this situation continues to play out over time, one lesson will stand: every new business plan must include a comprehensive IP strategy, regardless of the celebrity status of those involved or the geography covered.

*This article also appears in Crain’s Cleveland Business.

Jamie Pingor is a partner at Walter | Haverfield and chair of the Intellectual Property team. He can be reached at jpingor@walterhav.com or at 216-928-2984.