INTELLECTUAL PROPERTY LAW &
LITIGATION OVERVIEW
Jason S. Miller407-418-6263Jason [email protected]
February 16, 2012
©Jason S. Miller 2012, All rights reserved
What is Intellectual Property (IP)?
Intangible Property Rights including, for example, ideas, inventions and other innovations, expression, indications of origin and confidential information Patent Copyright Trademark Trade Secret (protected by State law)
Almost all aspects of technology, innovation, and/or works of authorship (including software) or art are addressable as IP
IP rights arises from Operation of Law In U.S., Constitutional Basis – Article I, Section 8, Clause 8:
“To promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries”
Trademark rights arise from the Commerce Clause
Patents, Trademarks & Copyrights
InventionsMachines, methods, composition of matter, improvements
Any name, symbol, device or combination that-identifies source-distinguishes goods and services from another
“Original expression” “Fixed in tangible medium”
Not novel, obvious, not useful (no utility)
FunctionalDoes not exclusively identify
Ideas, Facts, Methods and systems (patents)Idea – expression is protected, not idea
When patent issues From use; Protection can last forever and can also disappear since protection is tied to use
From time fixed in a tangible medium
Fall within scope of the patent claims
Likelihood of confusion Copying with Access and Substantial Similarity
Patents Trademarks Copyrights
Type
Not Protected
When Protected
Infringement
What is a patent?
Legal document that defines an invention and confers a right upon the owner Similar to a property deed
Basic Philosophy Limited Monopoly
Bargained for exchange with government to promote innovation Gov’t granting the right to exclude others from making, using, offering
for sale, selling and/or importing what is claimed A negative right of exclusion only
New! Leahy-Smith America Invents Act (AIA) Enacted September 16, 2011 First major change to U.S. Patent laws in over 60 years
What is a Patent (cont.)?
In the U.S., Granted by the U.S. Patent & Trademark Office (USPTO) Part of the Commerce Department
Protects: Manufactured items, Equipment, Processes, Compositions and Improvements to the above
Term: 20 Years From Filing or priority date – extensions available based on PTO delay
Territory: United States and its territories
Rights Arise: Upon issuance of a patent, arising from a patent application filed prior to public use, disclosure or sale
AIA changes to existing law
Switch to a “first-to-file” System
Prior User Rights
New definitions of prior art
Post-grant opposition proceedings
Pre-grant submission of prior art
Derivation
Supplemental examination
Tax strategy patents no longer allowed
Patent marking and false marking claims
Best mode requirements
PTO fees
Joinder
Patentable Subjects
Systems, Devices & Other Manufactured Items
Such as manufactured equipment, e.g., electronic devices or circuits, semiconductors, systems configured to perform a function Processes or Methods
Such as manufacturing processes or methods of doing something—may be implemented as software or as a business method
Materials/Composition of Matter
Chemical, Genetics, drugs, compounds, etc.
Patentability Requirements
Novelty Does not exist in the prior art; Not previously disclosed OK if Modification of an existing product/process, or use of something
“old” in new/different way
Usefulness Utility - Performs a useful function, does it work? An easy requirement to meet in mechanical and electrical arts.
Sometimes difficult in chemical and life sciences – “I have a new compound, I just don’t know what it does yet” – therefore, no utility
z
Non-obviousness A knowledgeable but relatively unimaginative person working in your
field would not have been led directly to the invention in light of the available information at the time of invention.
This is difficult to describe in general, as lawyers the focus on non-obviousness is generally based on prior case law for guidance.
A rejection under obviousness generally involves “combining” one or more references to meet all of the limitations and elements of the claimed invention
Anatomy of a Patent
Front Page basics US No. 7,299,887 Title Filing date v. Issue
Date Assignee = Owner Related App. Data Technology Class
Codes Prior art References Abstract Front Page Illustration
Anatomy of a Patent Specification
Must set forth the precise invention for which a patent is solicited
Must “teach” one skilled in the art how to practice, make and recreate the invention
Must describe completely a specific embodiment of the invention
Must explain a mode of operation whenever applicable
Detailed description typically refers to drawings
Must set forth the best mode contemplated by the inventor for carrying out the invention
Must conclude with at least one claim
Anatomy of a Patent
Claims Must particularly point
out and distinctly claim subject matter which applicant regards as the invention
The portion of the patent which defines the scope of legal protection and around which questions of infringement will be judged by the courts
Anatomy of a Patent
Claim 1 reads:
A single cone bit with offset axis and composite cones, the single cone bit comprising: a head body and a cone; a head journal at lower end of the head body for rotatablely connection with the cone; said cone section having a shape of composite cones, wherein the outer circumference of the cone is composed of from a back face of the cone to a top of the cone an extended gage surface, an outer cone surface and a main cone surface, forming the cone section in a shape of composite cones, a plurality of cutting elements mounted onto each cone surface, the said main cone surface having a negative cone surface, and an angle .epsilon. formed by generatrix of the main cone surface and centerline of the cone rotation being equal to or less than 90.degree. (i.e..epsilon..ltoreq.90.degree.), the axis of the bit being offset from the axis of the cone and head journal, wherein; a gage pad arranged on a side of head body opposite to the offset direction of the head journal, the opposite side of the gage pad provided with the junk slots, and jet ports arranged at a lower bevel of the head body.
What is a Copyright (©)?
An original work of authorship, fixed in a tangible medium of expression.
See, 17 USC 101 et seq.
What is an “Original Work”?
Any work that was independently created (not copied) and that contains a “modicum of creativity”. Feist Publications, INC. v. Rural Telephone Service Co., 499 U.S. 340 (1991)
The exact meaning of this phrase is open to debate however the threshold is extremely low.
What is “Fixed in a Tangible Medium”? This phrase means that the work in question
must be set in a form in which it can be perceived either directly or with the aid of a device. For a literary work this could be when it is first created on a computer or paper. For a musical work it could be either the phonographic recording or the sheet music.
Things that are not fixed in a tangible medium are not subject to copyright protection, i.e. ideas, procedures, processes, systems, methods of operation, concepts, principles or discoveries.
Types of works subject to protection
Generally include: literary works; musical works; dramatic works; pantomimes and choreographic works; pictorial, graphic, and sculptural works; motion pictures and other audiovisual works; sound recordings; architectural works.
What cannot be protected?
Facts or any idea, procedure, process, system, method of operation, concept, principle, or discovery, regardless of the form in which it is described, explained, illustrated, or embodied in such work;
Words and short phrases such as names, titles, and slogans; Typeface designs;
Lists of ingredients;
Blank forms that do not themselves convey information;
Works consisting entirely of information that is common property containing no original authorship such as standard calendars, height and weight charts, tape measures and rulers, schedules, and tables.
What does a copyright give you? Exclusive right to do and authorize:
Reproduction of the work
Derivative works
Distribution of work by sale or transfer or license
Public performance of work
Display of work in public
Limitations on a Copyright?
Fair use: allows for limited copying of a work for purposes Very fact dependent Examples:
Criticism Comment News reporting Teaching Scholarship Research
How do you determine if something is Fair Use Consider:
Purpose and character of the use whether the use is of a commercial nature or is for nonprofit
educational purposes
Nature of the copyrighted work
Amount and substantiality of use
Effect upon the value of the copyrighted work
Other Limitations on a Copyright Libraries and archives First sale doctrine Record rental Software rental Performances and displays Secondary transmissions Ephemeral recordings Pictorial, graphic, sculptural
works Sound recordings Musical recordings -
compulsory licenses Jukeboxes - negotiated
licenses
Computer programs - Essential step in utilization of program or Archival (backup) copy allowed
Public broadcasting Satellite retransmissions –
superstations Architectural works Reproduction for blind and
disabled Satellite retransmission –
local Reproduction for blind/
people with disabilities Satellite retransmissions
within local markets
How to Obtain Copyright Protection Copyright Protection attached upon
creation. There is no need to register a work, but may do so.
Registration is required, however, to enforce rights and provides additional benefits such as statutory damages for infringement.
How do you register a copyright? Application must be submitted to the Copyright Office
of the Library of Congress. Note: Patents and federal trademark registrations are
with the United States Patent and Trademark Office (USPTO)
Contents of Application: Completed application form
TX – Non-dramatic literary work VA – Visual arts work PA – Performing arts work SE – Sound Recording work SR - Serials
Deposit materials Fee
Information needed to complete Application Name and address of applicant If the work is “made for hire”, a statement of
such or if the applicant is not the author then a statement of how the applicant obtained ownership
Title of work Year of creation Date of first publication, if any Identification of the work as a derivative or
compilation Other relevant information
Deposit Materials
Unpublished work One complete copy
Published work Two complete copies of best edition
Work first published outside US One complete copy as published
Contribution or collective work One complete copy of best edition
Some exceptions apply For example, for computer programs a print out of
the first and last 25 pages is ok
Who owns a Copyright?
Author Authors, if joint work What about employees?
“Work made for hire” doctrine work prepared by an employee within the scope of
his or her employment; or work specially ordered or commissioned for use as a
contribution to a collective work, if the parties expressly agree in a written instrument signed by them that the work shall be considered a work made for hire
Take away – get an assignment up front!
What is the Term of a Copyright? In the U.S.: the life of the author plus 50
years, unless the work is anonymous, pseudonymous or a work-made-for-hire
then, the lesser of 75 years from its publication or one hundred years from its creation.
Copyright Notice
Prior to 1978 failure to use a copyright notice on your copyrightable materials was fatal to your copyright and placed the material into the public domain.
Omissions between January 1, 1978 and March 1, 1989 could be cured under certain circumstances.
Since March 1, 1989, use of a copyright notice has been optional, but failure to mark your materials can provide infringers with an "innocent infringer" defense, preventing you from collecting actual or statutory damages for any infringing act committed before the infringer received actual notice.
Example of Proper Notice: “© Your Name 20XX” “© Your Name 20XX, All rights reserved.”
Copyright Infringement
What is it? 17 USC 501 et seq. – Anyone who violates the
exclusive rights of the owner by making an unauthorized copying, distribution or derivation of a work Rights of owner set forth in 17 USC 106
Kinds of Infringement Direct Contributory Vicarious Liability of states
Pre-filing considerations
Where to file? Federal District Court: Exclusive, original
jurisdiction for Patent and Copyright cases. 28 USC 1338(a) Note: could have an exception for
counterclaims Venue: Where the defendant resides or in
any district where the defendant does business.
Pre-filing considerations (cont.) Jury or non-jury Nature and type of work involved Extent of copying Parties involved Registration certificate in hand?
Certificate of registration is now a procedural prerequisite
If registration is sought but refused serve complaint on Copyright office
Proving your case
Exclusive rights Ownership Access by defendant Substantial similarity of work Damages, if any
Should you use an expert? Depends
Should you use surveys?
Defenses Fair Use
See above Must be pled as an affirmative defense For computer programs
Right to make archival copy Right to dissect programs to determine functional interface
Implied License Can be orally granted for non-exclusive grant Elements
Author creates for another Author delivers the work Author intends that party distribute and/or copy
SOL (3 yrs.) and/or laches Lack of Notice Fraud on the Copyright Office Misuse Parody
Satire not necessarily a defense
Remedies
Damages- at option of copyright owner:
Actual damages and profits made by infringer that are not taken into account in calculating actual damages. To establish an infringer’s profits, the copyright owner is
required to present proof only of the infringer's gross revenue, and the infringer is required to prove his or her deductible expenses and the elements of profit attributable to factors other than the copyrighted work
OR
Statutory damages of $750 to $30,000 for each infringement (court’s discretion as to actual amount). Can be increased to $150,000 per infringement if the infringement was committed willfully.
Other Remedies
Injunction
Seizure, impoundment and destruction of infringing goods
Criminal offenses
Attorney’s fees and costs
What is a Trademark (TM, SM, ®)?A WordA LogoA DeviceA SloganA Package DesignA Personal Name
that identifies a specific product and distinguishes it from others in the marketplace.
A SoundA ScentA ColorA ShapeA BuildingA Numeral
JUST DO IT
Functions of a Trademark
- Indicates the source or origin of goods or services
- Assures consumers of the quality of goods bearing the mark
- Creates business goodwill and brand awareness
Trademark v. Tradename
Trade name: identifies a company or business; for example,
The Coca-Cola Company
Trademark: identifies the goods or services of that company; for example,
Diet Coke
Note: Just because the secretary of state's office advises that a corporate name is available, that does NOT mean that the same name is available as a trademark or service mark.
Common Law Rights v. Registration
Common Law Bound by the geographic
area in which the product or service is marketed.
Protection generally begins only after the product or service is actually available for sale on the market.
Rights can be lost after deciding on a mark and before bringing a product to market if someone begins commercial sales first.
Federal Registration• Valid in the whole country Priority based on date of
application
“Intent to Use” application allows applying for a mark before using it
Gives trademark owners the ability to expand at their own pace
Selecting the Right Trademark The Strongest Type
An invented word: GEICO
The Weakest Type
Immediately descriptive: Quality Cars
Clearance of the Mark – WHY? To reduce the likelihood of infringement
To gauge the strength of the mark Weak? Dilute?
Trademark Availability
A trademark is not available if: The mark or a confusingly similar mark is
already federally registered or is the subject of a pending federal registration (assuming that the application is ultimately accepted); or
The mark or a confusingly similar mark is already being used in the same market in connection with similar goods or services.
How are Trademark rights obtained?
Rights are obtained either:- By use; or - By registration:
Majority – first to file vs. first to use Some of the major commercial countries – first
to file France Germany Japan Taiwan Spain
United States – based on use Does allow for intent to use applications though
Select Territories for Registration Trademark rights are territorial. Some regional systems exist:
Community Trade Mark (Europe 27 member states) OAPI (Africa) Madrid Protocol – International filing system, but still
depends on approval at the national level by the 57 member countries
Select registration in countries in which the company will manufacture, distribute and/or license its mark
United States – Trademark rights extend only to the areas in which a market presence has been established.
United States – Presumption of exclusive rights through federal registration
Application Process In United States Apply Respond to Issues (if any) Notice of Publication
30 day window for third parties to oppose registration
Registration Maintenance
Most US states have similar procedures but can vary
Maintaining a Registration
Continued Use
Renewals Declaration of Use between year 5 and 6 Declaration of Use and Application for Renewal
between year 9 and 10 and each 10 years thereafter
Policing - Third parties’ unauthorized use- Improper use by your own company- Improper use by licensees
Policing: Enforcement against Infringers
Finding the bad guys
Subscribe to Watch Services
Internet Searches
Trademark Marking Requirements
Proper trademark notice will aid in collecting damages from infringers and prevent the loss of a trademark due to misuse.
Examples of Proper Marking Include: "Registered in the U.S. Patent and Trademark Office“ "Reg. U.S. Pat. & Tm. Off." ® for registered marks ™ for unregistered marks
Improper marking for registered marks will prevent you from collecting profits or damages from an infringer unless they had actual notice or infringement.
Presentation of Trademarks
All capitals: NIKE shoes
Initial capitals:Target® stores
In quotation marks:“Snickers”® candy bar
Italics: Goodyear® tires
Boldface:Cisco® phones
Different color:McDonalds® restaurant
Trademarks Should Not Be Altered
Trademarks should always be presented in the same manner; be consistent
No plurals (no: “two cokes”, “yes two coke soft drinks”)
Do not use as verbs (please Xerox this)
No possessive tense unless trademark itself is possessive (no Febreze’s fresh scent; yes the Febreze® spray’s fresh scent)
Types of Relief Available for Registered Marks
Opposition proceedings Cancellation proceedings Injunctive relief, corrective advertising,
an account of profits, actual damages, statutory damages and/or attorneys’ fees
UDRP claims Criminal penalties for trademark
counterfeiting
Relief for Unregistered Trademarks Based on common law rights: Federal and State
Lanham Act 15 USC 1125
“Unfair Competition,” “Passing Off,” “Palming Off,” “False Designation of Origin,” “Dilution”
Test: If consumers would be misled or Confused
Use of Copyright Law
Loss of Trademark Rights
Genericide • Improper licensing
Improper assignment • Failure to police
Failure to comply with registered user requirements where required (statements of use, renewals, etc.)
Non-use • Cancellation
What is Trade Dress
Trade dress is the design and appearance of a product together with the elements making up the overall image that serves to identify the product presented to a consumer.
Trade dress may include features such as size, shape, color or color combinations, texture, graphics.
Restaurant Decor. Two Pesos, Inc. v. Taco Cabana, Inc., 112 S.Ct. 2753 (1992)
Trade dress is a broad concept and may encompass product packaging and product design/configurations. Wal-Mart Stores, Inc. v. Samara Bros., Inc., 529 U.S. 205)
Bottle Shapes such as the shape of a Coke bottle (RN 1057884)
“Look and Feel” of a website?
What is Not Trade Dress
Items that do not have “secondary meaning”
Methods of Doing Business (potentially protectable under patent law)
Trade Secrets (proprietary information kept confidential by a company)
Copyrightable Materials
Trademarks
Protectable Elements of Trade Dress
Only “distinctive” aspects can be protected and can only develop “distinctiveness” through gaining secondary meaning through use in the market.
“Secondary Meaning” is a term of art and refers to distinctiveness that has been acquired over time through use, marketing, advertising, etc.
Protecting Against Trade Dress Infringement
Trade dress may be registered with the USPTO if it satisfies the federal standards of trademark or service mark protection.
Trade dress infringement is grounds for a civil action regardless of whether trade dress is registered. If the trade dress is unregistered the burden to show that the trade dress is protectable is on the owner.
Types of relief available are similar to those available for trademark infringement
Trademark or Trade dress litigation Pre-filing considerations and issues
Subject matter jurisdiction Concurrent with states
Venue Usual rules
Who can sue? Manufacturer or provider of goods and services Exclusive licensee
Non-exclusive licensee cannot sue What COA’s will be asserted? Is the mark now incontestable? How long has the defendant used the accused mark? Contributory infringement claim at issue?
Tiffany v. eBay – for service provider to be liable, must have more than general knowledge that service is being used to sell counterfeit goods.
Defenses
No likelihood of confusion Fraud on the Trademark office Mark has been abandoned Misrepresenting source of goods/services Descriptiveness Mark is functional Antitrust violations exists by use of mark Parody Equitable principles
Recurring issues
Descriptiveness as a defense Need to prove “secondary meaning”
Evidence that the mark has some meaning to the public beyond the obvious meaning of the terms or images of the mark itself. In other words, the primary significance of the mark has become a source identifier.
Proving likelihood of confusion Surveys Third party uses
Proving Likelihood of confusion Factors
G/S competing with each other Same distribution channels Intent to mislead by accused infringer Similar sound, appearance or connotation Consumer sophistication Strength of each mark Instances of actual confusion
Oppositions and cancellations proceedings Before the Trademark Trial and Appeal
Board (TTAB)
Does not affect common law rights, if any
TTAB decision is reviewable by the Federal Circuit if timely filed (60 days) Taking such an appeal waives certain rights
Internet topics
Domain names and Cybersquatting
Uniform Dispute Resolution Policy (UDRP)
Federal Anti-cybersquatting Act
Digital Millennium Copyright Act (DMCA)
New legislation coming?
Domain Names and Disputes - ICANN
Internet Corporation for Assigned Name and Numbers
Non-Profit company created in 1998 and tasked with managing the assignment of top level domain names (TLDs) and IP addresses
Until 2000, ICANN only allowed 7 TLDs Now companies can buy there own TLD for a hefty
fee!
Registration of a Domain Name
Domain Name Registrars GoDaddy.com, NetworkSolutions.com
Cost Depends on whether Name is already owned Not Owned: Approximately $10.00 for one year Already Owned: Bidding Process
Examples of Applicable Law
UDRP – Uniform Domain Name Dispute Resolution Policy Policy Administrative Rules
Anticybersquatting Consumer Protection Act 15 U.S.C. § 1125(d)
Pending Legislation SOPA, etc.
UDRP
The UDRP is a dispute resolution policy implemented by ICANN that applies to all .biz, .com, .info, .name, .net, and .org top-level domains as well as some country codes. Some countries will require that you go through WIPO for a
resolution
Governs disputes over domain names and is meant to be a streamlined process for resolving dispute more quickly and less expensively than would be possible with a standard legal challenge
UDRP Process
1. Filing of ComplaintMust prove:
1. Domain is identical or confusingly similar to a trademark or service mark which is owned by complainant
2. Respondent has no rights or legitimate interest in the domain3. Domain registered in bad faith
2. Filing of Response• 20 days to respond
3. Potential Outcomes• Cancellation, Transfer, Nothing
• No money damages!
UDRP Additional Considerations
Costs – One person v. three person panels
Effect of Court Proceedings During pendency of hearing After decision rendered
UDRP Real Life Example – madonna.com
Facts: In 1998 a company purchased the domain name madonna.com from a third party owner for $20,000.00. The purchaser began operating a pornographic website using the domain name.
Complaint: Madonna, the entertainer, objected to this use and filed a complaint with WIPO
Decision: The domain name is confusingly similar to a trademark “Madonna” in which the complainant has rights and registrant lacked a legitimate interest in the domain name because it was registered and used in bad faith
Result: Domain Name was transferred to Madonna
UDRP Conclusion
In general the UDRP is a relatively quick and inexpensive process that can be used to resolve domain name disputes
Transfer or cancellation only possible favorable outcomes
Monetary damages unavailable
Court proceedings can trump outcome
Anticybersquatting Act
Passed in 1999 and prohibits the “bad faith” registration of trademark infringing domain names and also applies to “bad faith” use of personal names.
“Bad Faith” under Anticybersquatting Act defined more broadly than under UDRP
Possible Outcomes include transfer of domain name, cancellation and monetary damages
If trademark infringement found all remedies for trademark infringement are also available
Unauthorized registration of a domain that is the same or confusingly similar to the personal name of a living person is prohibited if done for profit
Downside is cost and expense to litigate
Digital Millennium Copyright Act (DMCA)
Digital Millennium Copyright Act Passed by the US Congress in 1998. Focuses on protection of
electronic content.
Covers many topics including anti-circumvention provisions to prevent circumvention of DRM software and safe harbor provisions to protect ISP’s from liability for copyright infringement
Takedown procedure for ISPs Google
Trade Secrets
Becoming more popular form of protecting IP
What is a trade secret? A trade secret is information that provides a
business with a competitive advantage. Courts have provided trade secret protection to
formulas, patterns, plans, designs, physical devices, processes, software, and “know-how.”
Please keep in mind that different courts may reach contrary conclusions concerning trade secret status with respect to what may appear to be identical matters.
Examples of trade secrets
Formula – Coca-Cola recipe Patterns, plans, or designs – schematics for
an analog circuit Physical Device – machinery and equipment
used to manufacture polyethylene Process – process to treat metal or to
manufacture fiber glass “know how” – methods for testing
procedures to assure the quality of a raw material
Usual Factors to determining trade secret Is the information deemed to be a trade
secret valuable to the business Is the information generally know or readily
ascertainable? What steps have been taken top keep the
information secret Restricting access to information Physical security Proprietary notices placed on all documents NDAs obtained from third parties
To what extent do employees and others involved in the business know about the information
Trade secret v. Patent
Protection = Broad Term = indefinite Information does not
become public and must be kept secret
Cannot be enforced against independent invention or use
No defensive protection Available to technical and
non-technical information
Protection = limited to claims
Term = 20 yrs. Information becomes
public Can be enforced against
independent invention Defensive protection
because of publication
Trade secret Patent
Misappropriation of trade secret Typically occurs when:
Acquired, disclosed or used TS without permission of the holder, where such activities were done through improper means
Must look to State statute for elements
Remedies Exemplary Damages Attorneys fees and costs Injunction
Ethical Considerations in IP
PatentsDealing with the USPTO
TrademarksDealing with USPTO
CopyrightsDealing with Library of Congress
LitigationDealing with Courts and opposing counsel
Patents
Power of Attorney filed with USPTO Power of attorney must be in writing and
signed by a principal of the entity that owns the invention (37 CFR §§ 1.31, 1.32)
Only inventors, or a registered patent attorney or patent agent may represent a party before the PTO in patent matters (37 CFR § 1.31)
Other patent considerations
Representation of a client Who is the client?
Who is the inventor?
Who is the applicant?
Representation of joint inventors
Ownership issues for patents Handling the assignment
Who owns the invention? Potential conflict of interest between
inventor and employer Absence of contract requiring inventor(s) to
assign invention
Dealing with the USPTO – patent applications
Both attorney and client owe a duty of Candor – to disclose known, material prior art (37 CFR § 1.56)
Declaration of Inventor (37 CFR § 1.63) Information Disclosure Statement (37
CFR §§ 1.97 – 1.99) MPEP – Professionalism (37 CFR § 1.3) Withdrawal from representation (37 CFR
§ 1.36)
Trademarks
Representation before USPTO in Trademark Matters ((37 CFR § 11.14) Power of Attorney (37 CFR § 2.17(b)(1)(i)) Must be in writing and comply with PTO requirements
(37 CFR § 2.17(c)) The owner of an application or registration may appoint
a practitioner through TEAS (Trademark Electronic Application System) for up to 20 applications or registrations that have identical owner name and attorney (37 CFR 2.17(d)(1))
If filed on paper, there is no limit to the number of applications or registrations for which a practitioner may be authorized to represent the applicant or registrant
A power of attorney filed while an application is pending is deemed to end when the mark registers, when ownership of the application changes, or when the application is abandoned.
A power of attorney filed after registration is deemed to terminate when the mark is cancelled or expired, or when ownership changes. If the power was filed in connection with an affidavit under Sec. 8, 12(c), 15 or 71 of the Trademark Act, renewal application under Sec. 9, or request for amendment or correction under Sec. 7, the power is deemed to end upon acceptance or final rejection of the filing.
Termination of Power of Attorney (cont.)
Filing of a new power of attorney revokes the existing power.
A written change of correspondence address does not revoke a power of attorney.
A revocation of power of attorney may be signed by the applicant, registrant, or party to a proceeding; or by someone with legal authority to bind the applicant, registrant, or party.
Withdrawal of attorney requires application to and approval by the Director or, upon motion, by the TTAB
Affidavit of Use or of Continuing Use
Required for Sec. 8 and 15 Declarations Required for Renewal Must not include goods or services that
trademark owner is not selling If misstatement was intentional, fraud may be found Intent to deceive is required to establish fraud Standard of proof is clear and convincing evidence Registration will be cancelled if fraud is shown
Mere negligence does not constitute fraud However, registration must be restricted to
reflect commercial reality
Litigation
Rule 11 Pre-filing due diligence
Discovery rules ESI Spoilation
Local rules Representation to court Vexatious litigation Ethical rules and professionalism
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