Protecting a brand is not easy; it requires diligence and strategy. Unlike owners of other forms of intellectual property, trademark holders have an affirmative duty to police their trademarks, and can lose trademark rights if they fail to do so.
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1613.17(a) Correcting Deficiencies in Affidavits or Declarations Timely Filed Within the Periods Set Forth in § 71(a) of the Act
If the affidavit or declaration is filed during the periods set forth in § 71(a) of the Act (i.e., during the sixth year after the date of registration in the United States, or within one year before the end of any ten-year period after the date of registration in the United States), deficiencies may be corrected, after notification from the Office, within the relevant period without paying a deficiency surcharge, or after the expiration of the relevant period with payment of the deficiency surcharge required by § 71(c) of the Act, 15 U.S.C. § 1141k(c).
Any deficiency must be cured before the end of the relevant filing period set forth in § 71 of the Act or within the set period for response to the Office action, whichever is later. 15 U.S.C. § 1141k(c). If no response is filed, or if the holder does not correct the deficient affidavit or declaration, within this time period, the registration will be cancelled, unless time remains in the grace period under §71(a)(3) of the Act, 15 U.S.C. §1141k(a)(3). If time remains in the grace period, the holder may file a complete new affidavit, with a new fee. See TMEP § 1613.16.
The U.S. Patent & Trademark Office is considering setting file size/page limits for proof of use specimens.
Sanofi agreed to a €22.8 billion ($25.1 billion) asset swap with Germany’s Boehringer Ingelheim GmbH that purports to boost the French drugmaker’s business in selling over-the-counter drugs.
Sanofi will trade its animal-health business (Merial), valued at €11.4 billion, for Boehringer’s €6.7 billion consumer-health business. Closely-held BI will make a €4.7 billion cash payment to Sanofi.
The deal helps Sanofi CEO Olivier Brandicourt reshape Sanofi whose pharmaceuticals division has suffered declining sales of its best-selling insulin product. It also adds to the company’s growth in the consumer products space.
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After being passed unanimously by the U.S. Senate, the House of Representatives voted 410-2 to approve the “Defend Trade Secrets Act” (“DTSA”). The legislation, which is supported by the Obama administration, would open the door for companies to sue in federal court for damages related to theft of trade secrets.
Historically, trade secret protection has been left to the states and state law. More than 40 years ago in Kewanee Oil v. Bicron, the Supreme Court observed that “Congress, by its silence over these many years, has seen the wisdom of allowing the States to enforce trade secret protection.” Congress appears to have changed its tune.
Modeled after the Uniform Trade Secrets Act, the DTSA creates an exclusively federal court claim for trade secret misappropriation. The DTSA does not replace or preempt state law or state trade secret claims. The Senate Report explains that the new federal remedies “are intended to coexist with, and not to preempt, influence, or modify applicable state law.”
Among other things, the DTSA provides for ex parte seizures of misappropriated trade secrets in “extraordinary circumstances where necessary to preserve evidence or prevent dissemination of a trade secret.”
The law will go into effect immediately once President Obama signs the bill into law.
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On March 31, 2016, the Federal Circuit held that willfulness is a requirement in order to award a trademark plaintiff the infringer’s profits (disgorgement of profits).
The district court reduced Romag’s damages award, holding as a matter of law that Romag could not recover Fossil’s profits for trademark infringement because the jury found that the infringement was not willful.
The Federal Circuit affirmed.
Opinion may be found here.
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On April 4th, the USPTO published a Notice of Proposed Rulemaking entitled “Miscellaneous Changes to Trademark Trial and Appeal Board Rules of Practice,” Federal Register, Volume 81, No. 64, pp. 19296-19324. Some of the many proposed changes are significant.
The .pdf file of the notice may be accessed here.
Comments must be received by the USPTO by June 3, 2016, preferably submitted electronically to TTABFRNotices@uspto.gov.
Some of the more important changes include:
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A Boston man, Ricky Lugo, was sentenced on March 31, 2015 for selling counterfeit versions of VIAGRA, CIALIS and LEVITRA.
Lugo was sentenced to one year in prison for selling the counterfeit medications between June 2013 and March 2014 both in person and on Craigslist.
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The U.S. Supreme Court decided Friday to review whether the Patent Trial and Appeal Board uses the correct claim construction standard in America Invents Act reviews, delving into a contentious issue that has sharply divided the judges on the Federal Circuit.
The high court agreed to hear an appeal by Cuozzo Speed Technologies LLC, the first company to have a patent invalidated in an AIA inter partes review.
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On January 6, 2016, Matthew Swyers, founder of The Trademark Company, filed a lawsuit against the U.S. Patent & Trademark Office claiming that the USPTO has violated his Constitutional rights in its investigation of his practices in the filing and prosecuting trademark applications before the USPTO.
The Trademark Company claims to be the second largest filer of trademark applications in the U.S.
Swyers alleges that numerous Requests for Information (“RFIs”) issued by the PTO were “designed to harass, overburden, invade, injure and damage the Plaintiff and his business”. Swyers seeks both injunctive relief and damages. The USPTO has not commented on the matter.
A copy of the complaint may be found here.
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Darren Geliebter
Mathew Lombard
THE PRINCIPAL REGISTER 