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The Ruttler Mills Blog

How to Keep Your Trademark Application a Secret

Daniel Mills, Trademark Attorney

Posted Friday, October 21, 2016 by Daniel Mills

Most companies want to keep new product information a secret as long as possible, or at least be able to control when the information “leaks” out. US trademark filings are public record from the time a filer clicks the submit button on the USPTO website, so what can a company do keep it under wraps for as long as possible?

You do what Apple does, which is first file your application in a country that does not maintain an online or easily searchable trademark database and then take advantage of section 44(d)of the Lanham Act. Section 44(d) of the Trademark Act permits a party to file an application in the United States with a claim of priority based upon an earlier-filed foreign application. The United States application must be filed within six months from the filing date of the foreign application on which the United States application is based. An application filed pursuant to Section 44(d) is not required to allege use in the United States or elsewhere, nor are specimens showing use of the mark required.

Apple is not alone, this trick is used by many big tech companies such as Microsoft, Google, and Amazon. Apple’s favorite country is Jamaica because if you want to search Jamaica’s trademark filings, you have to do it in person in Kingston. Other countries with similar situations are Iceland, South Africa, Tonga, and Trinidad and Tobago, and many African countries.

It is not a guarantee, as the applications are not secret, they are just hard to search, especially when a shell company is used to file the foreign applications. Also, it is not cheap, but when keeping a new trademark a secret is important, then it is worth a shot.

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IPR System Upheld

Jim Ruttler, Patent Attorney

Posted Friday, October 14, 2016 by Jim Ruttler

The Supreme Court denied two petitions in Cooper and MCM this week thereby upholding the constitutionality of inter partes review proceedings. What is likely to come as a shock to a majority of patent attorneys, the Supreme Court apparently did not have any problem with the Patent Office being in charge of granting and destroying patent rights independent of an Article III judge. So, the IPR proceedings apparently remain legal and, unfortunately are here to stay as part our the patent system.

What this means practically is that even if you are granted a patent, the same patent office that granted you the patent can later take it away if they feel a mistake was made. Old legal strategies are no longer effective in this unfair and uncertain system. Inventors and companies must adopt new strategies to minimize the effect of IPR proceedings.

First, always keep a continuation application pending even if you obtain a patent. This way, if your issued patent ends up being revoked, you can always pop out another one using your continuation application.

Second, consider filing a family of applications with overlapping subject matter and claims. A patent portfolio is more difficult and more expensive to later challenge because each patent must be separately considered.

Third, draft at least one picture type claim of high specificity in addition to broad claims. This array of specificity can offer broad protection with the insurance of having at least one narrow claim that would be less likely to be challenged.

Fourth, file design patent applications simultaneously with utility patent applications covering similar subject matter. Design patents are harder to challenge, easier and cheaper to obtain, and currently offer enhanced damage potential.

These strategies will help innovators water down the effects of the IPR proceedings.

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10-14-16 Weekly Round-Up of trademark News

Daniel Mills, Trademark Attorney

Posted Friday, October 14, 2016 by Daniel Mills

Its not just the Chicago Cubs who are concerned about knock-off merchandise being sold outside its stadium. The company that owns the rights to the Broadway hit Hamilton are suing two companies for selling merchandise that allegedly infringes on Hamilton’s trademarks and copyrights. HamiltonCo is seeking damages and profits from the maker of the t-shirts and the website that is hosting the sales. Read More here.

Oprah Winfrey wins trademark dispute over OWN YOUR POWER. When your pockets are as deep as Oprah’s you get a lot of law suits. Oprah put the words “Own Your Power” on an issue of “O” magazine and was sued by Simone Kelly Brown, who owns the trademark for the phrase. The trademark of the phrase was not a word mark, which offers broad protection, instead it was of a stylized version of the mark with a further limiting claim of a light blue color. A very detailed breakdown and examples of the mark can be found here. Oprah and the rest of the defendants won dismissal in 2012. This latest ruling should put an end to the dispute. The lesson here is know what you have before you file suit, especially when poking a bear.

In a slight twist on the above lesson, even a giant bear should know what it has before doing the poking. MasterCard filed a trademark infringement suit in New Zealand against a sporting event called the World Master Games. The logos in question are not even close to being the same. A funny summery of the case can be found here. When you look at the logos in question, you will have to seriously question the decision to pursue this case.

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9-30-16-Weekly Round-Up of Trademark News

Daniel Mills, Trademark Attorney

Posted Friday, September 30, 2016 by Daniel Mills

Another week goes by and another set of trademarks in the news. Up to the plate first is a story about the Chicago Cubs, who are the favorites to win the World Series this years after a century of futility, bringing a federal lawsuit against 40 street vendors for selling knockoff merchandise right outside Wrigley Field. Clearly there is a violation of rights, but as the author of the article points out, I think there could have been another solution. Read about it here.

Last week there was news of the Las Vegas Raiders NFL team planning a possible relocation to Sin City, but next year the NHL will have a team in Las Vegas. That team has yet to unveil its name, logo, mascot, etc. but according to trademark applications at the USPTO, the top three contenders are SILVER KNIGHTS (Serial no. 87147274), GOLDEN KNIGHTS (Serial no. 87147269), and DESERT KNIGHTS (Serial no. 87147261). All of those sounds sufficiently Vegas-like to me, but I’m placing my bet on Golden Knights. Hockey in the Mojave - what a concept.

Harvard computer science class trademark for CS50 is one step closer to allowance. The class officially titled “Computer Science 50: “Introduction to Computer Science I” is an extremely popular class and apparently is spreading to other universities and high school curricula. Initially refused for similarity with a previous registration and overly broad goods descriptions, Harvard has entered into a consent agreement with the prior registrants and narrowed the goods. Read about it in the Crimson here.

More next week!

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2016 National Trademark Expo

Daniel Mills, Trademark Attorney

Posted Tuesday, September 27, 2016 by Daniel Mills

On October 21st and 22nd the USPTO will host the 2016 National Trademark Expo at the Andrew W. Mellon Auditorium in Washington DC. The expo is open to any owner of a federally registered trademark. It is a free event that includes exhibits, educational programs, and kid activities. The keynote speaker this year is Kevin Haley of Under Armor, Inc.

There is a wide variety of exhibitors that span a broad range of trademark owners including the US Navy, VELCRO, Coca-Cola, and UPS. This is a great way for trademark owners to learn to see how other owners leverage their trademarks to advance their brands.

Full details can be found here.

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