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Kansas City Intellectual Property Blog

Supreme Court Bonus: PTO v. Booking.com

By Jon Hines

Last week the U.S. Supreme Court ruled that generic domain names are eligible for trademark protection. A generic domain name includes a general word describing the business followed by ".com" or other top-level domains (such as ".org" or ".net). Previously, the U.S. Patent and Trademark Office had denied numerous trademark applications, including for Booking.com, in which the name before the internet address was a non-distinctive general word about the goods or services offered by the website. The Supreme Court has overruled that practice and stated that "Booking.com" and other similar domain names may be eligible for trademark registration when recognized as a true source identifier that uses the domain name extension to distinguish the trademark owner from others in the industry.

Innovate. Adapt. Overcome.

By Chandler Schmidt

In the strangeness and uncertainty of the pandemic and resulting global shutdown, the old familiar proverb rings true: necessity is the mother of invention. The COVID-19 outbreak has birthed innovation everywhere: from teleconference lectures, vaccines, viral treatments. hands-free door openers, rapidly-produced respirators, wrist-mounted disinfectant spray bottles, arm bands that deter people from touching their faces, stylish ventilators, food delivery innovations, to homemade hand sanitizer formulas. Innovators are rapidly responding by creating new tools to fight the deadly virus.

SCOTUS Rules Willfulness Not Required to Recover Trademark Infringer's Profits

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.

Copyright Slam Dunk?

By Kyle Mendenhall

Lebron James is being sued for copyright infringement after posting a cropped photograph of himself on Facebook. The original photograph was taken by professional photographer Steve Mitchell, who has registered the photograph with the U.S. Copyright Office. In the lawsuit, Mitchell argues that James violated his copyright by posting the photograph without Mitchell's consent. Although James is certainly the subject of the photograph, Mitchell owns the copyright and generally has the right to control licensing and distribution his work. This case will likely hinge on whether James' posting of the cropped photograph constitutes "fair use" under copyright law.

Patent and Trademark Deadline Extensions for COVID-19 Related Delays

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."

A message from Hovey Williams LLP

Information about COVID-19 (coronavirus) and its impact are now evolving on a daily basis. We are monitoring the COVID-19 situation closely and will follow recommendations from the WHO, CDC, and other health and governmental organizations.

At Hovey Williams, we are taking careful measures and following governmental recommendations to protect the well-being of our employees, clients, and guests, while also ensuring that we continue to meet your legal needs. We have implemented a rigorous plan to minimize the risk of transmission related to firm business, including working remotely. 

Email Addresses of Applicants Now Required in Trademark Filings by Blair Barbieri

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. 

IP strategies for strengthening your new idea

Often the biggest problem for building a business around a new idea or invention is not coming up with the initial concept but developing a strategy that enables it to flourish in the marketplace. Once an inventor has the idea, need to consider the landscape in the project’s category at large, business objectives of licensees, who investors will be and their objectives, as well as wooing potential customers or buyers.

Different concepts have different needs -- licensing needs an agreement drafted from a position of strength, while startups look to align business objectives with those of investors -- but here are eight strategies that can help it flourish:

Patent trolls target small business

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

Ban on offensive trademarks ruled unconstitutional

We discussed the issue of the immoral, scandalous or deceptive trademarks back in January when the Supreme Court announced it would hear the case involving the FUCT clothing line’s attempt to trademark its brand and products since 2012. The case (Iancu v. Brunetti) was obviously attention-grabbing with news reports soberly discussing the validity of curse words and explicit imagery, but the case also was a legal clash between the First Amendment right to free speech versus the United State Patent and Trademark Office’s 113-year-old policy and the Lanham Act, which prohibits immoral, explicit or scandalous trademarks.

Final ruling based on viewpoint discrimination

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