“Willfulness” Necessary for Disgorgement

5666cb118b1de98133c0ce954259e384On 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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USPTO Proposes Major TTAB Changes

uspto_seal_full_colorOn 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:

  • Require that all filings in TTAB proceedings be made via ESTTA;
  • Shift responsibility to the TTAB to serve notices of opposition and petitions for cancellation;
  • Requirement that service of papers between parties be effected by email;
  • Consequent deletion of the 5 extended response period for mailed documents;
  • Limit document requests and admission requests to 75, each;
  • Require all discovery be completed by the close of the discovery period; and
  • Option to submit testimony by declaration or affidavit, subject to cross-examination.


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Boston Man Sentenced for Fake VIAGRA

viagra2A Boston man, Ricky Lugo, was sentenced on March 31, 2015 for selling counterfeit versions of VIAGRACIALIS 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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Supreme Court to Hear PTAB Cases

img_0059The 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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USPTO Sued for Harassment

lsOn 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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Merck to Acquire IOMet Pharma

800px-merck_logo-svgMerck has agreed to pay up to $400 million to acquire IOmet Pharma, a Scottish company that specializes in the development of small molecule-based cancer treatments.

IOmet will operate as a division of Merck. The acquisition will include IOmet’s pre-clinical pipeline of IDO (indoleamine-2,3-dioxygenase 1), TDO (tryptophan-2,3-dioxygenase), and dual-acting IDO/TDO inhibitors.


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USPTO Outage: Update (10:00AM)

uspto_seal_full_colorAccording to the most recent update from the USPTO (@ 5:55pm yesterday), the USPTO expects service to be out at least through tomorrow, 25 December 2015. From our perspective, realistically, we think this means that the systems will be unavailable through the weekend.

In light of this emergency situation, the USPTO will consider each day from Tuesday, December 22, 2015, through Thursday, December 24, 2015, to be a “Federal holiday within the District of Columbia” in accordance with the description and regulations in this official notice posted here: http://www.uspto.gov/blog/ebiz/.


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Change in Trademark Law!

TS004_pgs_16_1_v2pThe Court of Appeals for the Federal Circuit has ruled that the name of an Asian-American band  — The Slants — is private speech and therefore protected by the First Amendment. The government, the court writes, has no business trying to regulate it by denying the band a trademark.

At issue in the case was Section 2(a) of the Lanham Act, which allows the U.S. Patent and Trademark Office (PTO) to deny or cancel a trademark if it is “disparaging” of persons, institutions or national symbols.

In a 10-2 decision, the court decided parts of that section were unconstitutional. Conferring a trademark, the court argues, does not make the band’s name government speech:

The PTO’s processing of trademark registrations no more transforms private speech into government speech than when the government issues permits for street parades, copyright registration certificates, or, for that matter, grants medical, hunting, fishing, or drivers licenses, or records property titles, birth certificates, or articles of incorporation.

Very interesting result. What are the implications for the REDSKINS trademark?

The Court’s opinion may be read here.


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PTO Outage

uspto_seal_full_colorIt seems the U.S. Patent & Trademark Office’s Trademark Electronic Search System (“TESS”) is unavailable at this time.


Screen Shot 2015-12-23 at 11.44.26



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GSK to Buy BMS’s HIV Portfolio

27285-hi-logo_gskDrug giant GlaxoSmithKline has reached a deal to acquire Bristol-Myers Squibb’s HIV portfolio.

GSK will pay $350 million up front and could pay an additional $1 billion depending on developmental and sales milestones.

GSK did the deal through its subsidiary ViiV Healthcare, a HIV specialty company established by GlaxoSmithKline and Pfizer in 2009.

It is actually two separate deals — one to buy BMS’s late-stage HIV assets and another to buy assets earlier in the developmental pipeline. The deals should close independently during the first half of 2016.


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