Kansas City Intellectual Property Blog

By Dianne Smith-Misemer

The U.S. Supreme Court has clarified that a trademark infringement plaintiff need not show willfulness to recover defendant's profits, resolving a long circuit split on the issue.

The plain language of the Lanham Act, 15 U.S.C. § 1117, makes no reference to a defendant's state of mind for recovery of profits in a trademark infringement case. But the express willfulness requirement for dilution claims and several other statutory references to a defendant's mental state resulted in a split among the circuits. Some circuits required an express willfulness showing for a plaintiff to recover a defendant's profits in likelihood of confusion cases, others did not.

The U.S. Patent and Trademark Office ("PTO") announced that it is extending the time to file certain documents or fees if a person is unable to meet the deadline due to the COVID-19 pandemic.

Certain deadlines related to Patent or Trademark prosecution falling between and including March 27, 2020 and April 30, 2020 will be extended 30 days from the initial due date. To receive deadline relief, the filing must be accompanied by a statement that the delay was due to the COVID-19 outbreak because a party involved was "personally affected" by COVID-19 "such that the outbreak materially interfered with timely filing or payment." The Notice gives examples such as, "office closures, cash flow interruptions, inaccessibility of files or other materials, travel delays, personal or family illness, or similar circumstances."

The U.S. Trademark Office has released its new Examination Guide (available here). Among other changes, the new rules require applicants and registrants to provide an email address, with limited exceptions.

Effective February 15, 2020, applicants, registrants, and parties (collectively "parties") to any proceeding before the Trademark Trial and Appeal Board (TTAB) must provide and maintain a valid email address to receive correspondence from the USPTO. Appointed attorney correspondence information is still required and will be the point of contact with the Trademark Office. But the email address for the applicant, registrant, or party must be maintained to ensure the USPTO has accurate contact information if the legal representative withdraws its counsel. Although the parties' email addresses will not appear in the Trademark Status and Document Retrieval (TSDR) tab, it will be viewable in the filed application, which will remain accessible in the TSDR documents tab. The party may file a petition to redact the email address in TSDR documents where an extraordinary situation exists. 

Patent trolls are patent assertion entities who buy up patents from bankrupt businesses, auctions and inventors for pennies on the dollar. They traditionally would then use these purchases to go after large corporations and sue for infringement. They do not engage in any business other than suing operating companies.

Change in law effects targeting