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Don’t Ruin Today’s CNS with Yesterday’s Problems

The US Court of Appeals for the Fifth Circuit reversed a district court’s trademark invalidity finding based on lack of subject matter jurisdiction because a covenant not to sue (CNS) issued by the trademark owner precluded any reasonably expected future injury that the alleged infringer might incur. Nursery Decals & More, Inc. v. Neat Print, Inc., Case No. 22-10065 (5th Cir. Aug. 1, 2023) (Haynes, Engelhardt, JJ.; deGravelles, Dist. J., sitting by designation) (per curiam).

Neat Print and Nursery Decals sold novelty t-shirts on online marketplaces. In 2018, Neat Print notified one of the online marketplaces that Nursery Decals’ products allegedly infringed Neat Print’s trademarks. In response, the online marketplace sent Nursery Decals a final warning threatening a site ban for any future violations. Nursery Decals complied with the warning and also preemptively pulled its products from other online marketplaces.

Nursery Decals sued Neat Print in the Northern District of Texas. Most of Nursery Decals’ claims were directed to invalidating Neat Print’s trademarks or obtaining a noninfringement judgment. Nursery Decal also included three claims seeking damages. One was a federal claim for fraud on the US Patent & Trademark Office (PTO). The other two claims were Texas law claims based on tortious interference with an existing business relationship and a prospective business relationship. The district court ultimately granted summary judgment on all of the trademark-related claims, ordering the PTO to cancel all of the disputed trademarks.

Prior to the district court’s summary judgment grant, Neat Print tried to avoid summary judgment by filing a CNS along with a motion to dismiss for lack of subject matter jurisdiction. The district court denied the motion to dismiss, concluding that the CNS did not moot the case. The district court explained that Neat Print’s CNS did not address Nursery Decals’ past and potential future injuries (i.e., Nursery Decals’ damages claims). The district court also found that Neat Print’s CNS did not meet the high standard set forth in the Supreme Court’s 2013 decision in Already, reasoning that Neat Print’s CNS left the door open for future take-down notices based on the disputed trademarks.

Neat Print amended its CNS to address take-down notices. It then filed a motion to reconsider its motion to dismiss in light of the modified CNS. The district court orally denied the motion at the pretrial conference and ordered that the case proceed to trial. The jury ultimately found no liability on both claims. After the trial, the district court issued a written opinion explaining that it rejected Neat Print’s motion for reconsideration because Nursery Decals had a legally cognizable injury that supported subject matter jurisdiction. While Neat Print had defeated all of Nursery Decals’ damages claims, Neat Print appealed the district court’s judgment with respect to the trademark claims, arguing that the district court failed to properly evaluate subject matter jurisdiction on a claim-by-claim basis in view of Neat Print’s CNS.

The Fifth Circuit agreed with Neat Print, finding that the district court committed two errors. First, the district [...]

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RIP for POP: PTO Updates Interim Director Review Procedures

On July 24, 2023, the US Patent & Trademark Office (PTO) announced that a revised interim Director Review (DR) process and Appeals Review Panel (ARP) process will replace the Precedential Opinion Panel Process. Updates to the interim DR process include the following:

  • Expanding the process to permit parties to request DR of Patent Trial & Appeal Board decisions on institution in America Invents Act (AIA) proceedings
  • Providing updated guidance as to what types of issues the Director will consider in DR, as well as additional guidance on several topics, such as the initiation of DR at the sole discretion of the Director (sua sponte DR), remands to Board for further proceedings and the Director’s sanction authority
  • Providing the Director with the option to delegate review to a new independent panel called the Delegated Rehearing Panel (DRP)
  • Creating a new ARP, which may be convened by the Director sua sponte to review Board ex parte, reexamination or reissue appeal decisions.

Under the interim DR process, a party to a Board decision may now request DR of a Board decision, whether to institute trial, a final written decision or a decision granting a request for rehearing.

After a DR request is received and processed, the request will then be routed to an Advisory Committee that the Director has established to assist with the process. The Advisory Committee comprises 11 members and includes representatives from various PTO business units who serve at the discretion of the Director. A quorum of seven members is needed for the committee to meet. The Advisory Committee may include members from the following business units:

  • Office of the Under Secretary (not including the Director or Deputy Director)
  • The Board (not including members of the panel for each case under review)
  • Office of the Commissioner for Patents (not including the Commissioner for Patents or any persons involved in the examination of the challenged patent)
  • Office of the General Counsel
  • Office of Policy and International Affairs.

The Director will review each request for DR; the underlying decision, including the associated arguments and evidence; and the recommendation of the Advisory Committee. The Director will then determine whether to grant or deny review or delegate a decision to a Delegated Rehearing Panel (DRP). The DRP will be selected from among the Chief Judge, Deputy Chief Judge, Vice Chief Judges and Senior Lead Judges of the Board, excluding judges who served on the original panel for the case under review or otherwise have a conflict with the case. An appellant can request a rehearing of a DRP decision or appeal the decision to the US Court of Appeals for the Federal Circuit.

An ARP that consists of the Director, the Commissioner for Patents and the Chief Judge of the Board has now been created. The panel may be convened by the Director sua sponte to review ex parte, reexamination or reissue appeal decisions. Requests for ARP review will not be considered. ARP decisions are appealable to the Federal Circuit. An appellant may not [...]

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Speculative Injury from Rulemaking Petition Denial Doesn’t Confer Standing

The US District Court for the District of Columbia affirmed the dismissal of a case alleging that the US Patent & Trademark Office (PTO) violated the Administrative Procedure Act (APA) by denying the plaintiffs’ rulemaking petition. The district court found that the plaintiffs’ alleged injury was too speculative to confer Article III standing. US Inventor, Inc. v. US Patent and Trademark Office, Case No. 22-2218 (D.D.C. July 12, 2023) (Bates, J.)

Under the America Invents Act (AIA), the Patent Trial & Appeal Board may hear challenges to the validity of patents through inter partes review (IPR) and post-grant review (PGR). The decision to initiate a review is made at the discretion of the PTO on a case-by-case basis. US Inventor, Inc., and National Small Business United (collectively, NSBU) filed a rulemaking petition with the PTO, arguing that the PTO unlawfully designated cases as precedential or informative without putting those considerations through notice-and-comment rulemaking, as required by the APA. NSBU expressed the same position in a previous lawsuit filed in the Eastern District of Texas that was dismissed for lack of standing—a decision upheld by the US Court of Appeals for the Fifth Circuit. NSBU subsequently filed a lawsuit in the District of Columbia. The PTO filed a motion to dismiss for lack of standing.

In a motion to dismiss, a court will accept facts alleged in the complaint as true but will not assume the truth of legal conclusions. The District of Columbia noted that not every denial of a rulemaking petition confers standing on the petitioner. Standing is established by claiming an injury in fact that can be traced to the defendant’s actions and is likely to be redressed by the court. Therefore, a plaintiff must show that the denial of the petition caused a concrete injury in fact. Injury in fact must be concrete, particularized and not conjectural or hypothetical. Standing can be established via associational standing or organizational standing. Here, the court found that NSBU could establish neither.

In finding no associational standing, the District of Columbia agreed with the PTO that NSBU’s theory of injury was too speculative and not concrete. NSBU proposed an “uncertain series of events” that could lead to an alleged injury, but the court rejected the claim as attenuated conjecture based on the actions of independent third parties (similar to the fact pattern in the Supreme Court’s 2013 decision in Clapper v. Amnesty Int’l USA.)

The District of Columbia heavily criticized the first step of NSBU’s proposed series of events, which was that a valid IPR or PGR would have to be filed on behalf of a patent held by a member of NSBU’s organizations. The court found that identifying potential members that might face IPR or PGR proceedings if a third party decided to bring a claim against them was too hypothetical and relied entirely on the actions of a third party.

The District of Columbia also disagreed with NSBU’s reliance on statistics. NSBU argued that patent cancellation is more likely [...]

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“TRUMP TOO SMALL” Trademark Decision Heads to Supreme Court

The Supreme Court agreed to review the US Patent & Trademark Office’s (PTO) challenge to a February 2022 ruling by the US Court of Appeals for the Federal Circuit. In the ruling at issue, the Federal Circuit held that applying Sec. 2(c) of the Lanham Act (which bars registration of a trademark that consists of or comprises a name of a particular living individual without their written consent) may unconstitutionally restrict free speech in violation of the First Amendment in certain instances. Vidal v. Elster, Docket No. 22-704 (Supr. Ct., June 5, 2023).

In 2018, Steve Elster filed an application to register the mark TRUMP TOO SMALL for use on t-shirts, in reference to a 2016 Republican presidential primary debate exchange between then-candidate Donald Trump and Senator Marco Rubio (R-FL). The PTO examining attorney and subsequently the Trademark Trial & Appeal Board refused registration of the mark on grounds that it clearly referred to former President Trump, and that Elster did not have written consent to use former President Trump’s name, in violation of Sec. 2(c) of the Lanham Act. On Elster’s appeal, the Federal Circuit ruled that the Board’s refusal to register the trademark TRUMP TOO SMALL for use on t-shirts involved content-based discrimination that was not justified by a compelling or substantial government interest.

Following PTO Director Vidal’s January 2023 petition for a writ of certiorari, the Supreme Court granted cert and will consider whether the First Amendment allows content-based but viewpoint-neutral restrictions on which trademarks may be registered—and in this case, the PTO’s restriction on marks that consist of or comprise a name identifying a particular living individual (such as former President Donald Trump) except by their written consent.

The issue on which cert was granted: Whether the refusal to register a trademark under 15 U.S.C. § 1052(c) violates the free speech clause of the First Amendment when the mark contains criticism of a government official or public figure.




PTO Seeks Comments on Strategies to Address Counterfeiting and Piracy

On May 25, 2023, the US Patent & Trademark Office (PTO) requested comments on strategies to address counterfeiting and piracy. The PTO requested information on current anti-counterfeiting and anti-piracy strategies that have proven effective, as well as ideas for future strategies.

The PTO requested comments on the 14 points listed below. Respondents may address any, all or none of these points. The PTO will receive any input relevant to future strategies in the fight to prevent counterfeited and pirated goods from entering the stream of commerce and reaching the hands of consumers.

1. Current anti-counterfeiting and anti-piracy strategies, and any trends in how often such practices guide plans for addressing these issues in the future.

2. The types of harms observed from sales of counterfeited and pirated goods.

3. How to educate consumers about the harms and dangers that may result from the use and sale of counterfeited or pirated products.

4. Current anti-counterfeiting and anti-piracy strategies that have proven successful, and those that have not. Information relating to targets of anti-counterfeiting and anti-piracy efforts, such as ecommerce platforms, physical markets and social media.

5. Anticipated challenges in the fight to prevent counterfeited and pirated goods from entering the stream of commerce and reaching the hands of consumers, and how to address those challenges.

6. Observed patterns and trends in counterfeiting and piracy during the COVID-19 pandemic. An indication of whether the commenter anticipates that such patterns and trends will continue post-pandemic.

7. Patterns and trends observed in counterfeiting and piracy due to shifts in the economy. An indication of whether the commenter anticipates that such patterns and trends will continue and if so, an explanation regarding the expected impact on current and future strategic plans to combat counterfeiting and piracy.

8. The commenter’s thoughts on whether any strategic plans to combat counterfeiting and piracy might include collaboration with private or public parties. If a strategic plan is not collaborative, why not? If collaborative, a discussion of the anti-counterfeiting and anti-piracy strategies employed in the collaboration.

9. New collaborative efforts contemplated to combat counterfeiting and piracy and factors that will affect implementation decisions. Discussion of how future collaborations might be composed.

10. Effective technologies to prevent counterfeited and pirated goods from entering the stream of commerce and reaching the hands of consumers, such as counterfeit product identification devices or advanced algorithms to secure supply chains and provide the identity of counterfeit goods online. A discussion of how anticipated strategies will improve an overall anti-counterfeiting and anti-piracy strategy.

11. How online enforcement activities intersect with trademark and copyright laws or procedures. Do online enforcement strategies include employing existing trademark laws to combat online counterfeiting? Do online enforcement strategies use existing copyright laws to combat online piracy? If so, describe these activities and suggestions for maximizing these practices.

12. Description of any fraudulent documentation or materials observed in the furtherance of online counterfeiting and piracy activity. For example, comment on whether, after reporting an infringement to a platform, a counter-notification was attached [...]

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Common Sense: Nonparties Not Precluded by Ex Parte Reexamination Termination

In a precedential decision, the US Patent & Trademark Office (PTO) Trademark Trial & Appeal Board denied a motion for judgment based on either claim or issue preclusion, and in the alternative for a show cause order, in a challenger’s petition. Common Sense Press Inc. d/b/a Pocket Jacks Comics v. Ethan Van Sciver and Antonio J. Malpica, Cancellation No. 92075375, 2023 BL 171365 (TTAB May 19, 2023) (Wellington, Pologeorgis, English, ATJs).

Common Sense Press filed a petition to cancel the registration for the mark “Comics Gate” for comics. In its petition, Common Sense asserted claims of nonuse, abandonment and fraud. The Respondents denied the allegations in the petition and also raised unclean hands by petitioner as a defense.

Common Sense also requested reexamination of the “Comics Gate” mark, which the PTO Director instituted on May 9, 2022. The cancellation proceeding was suspended pending the outcome of the reexamination. The Respondents were instructed to submit evidence to establish use of their mark for comics as of the August 13, 2020, deadline for filing a statement of use, as required under Section 1(d) of the Lanham Act.

The Respondents’ Section 1(d) statement showed that the “Comics Gate” mark was used in connection with comics sales in interest commerce and that such comics were provided via interest trade channels during the relevant period. In view of the Respondents’ evidence, the PTO Director determined that use had been demonstrated for comics and terminated the reexamination.

With the Notice of Termination in hand, the Respondents requested that the Board enter judgment in their favor in the cancelation proceeding as to nonuse and abandonment based on issue preclusion or, in the alternative, issue a show cause order to Common Sense as to why judgment should not be entered against them.

The Board denied the Respondents’ request, reasoning that termination of a reexamination proceeding does not preclude future nonuse challenges. Nor does such a reexamination termination decision have preclusive effect on a petitioner seeking cancellation, even if the petitioner requested the terminated reexamination. Citing due process concerns, the Board explained that the termination of an ex parte reexamination proceeding in which the petitioner necessarily does not participate may not serve as a basis for preventing the petitioner from raising even identical challenges in another action. The Board further noted that while the applicable statute “contains explicit estoppel provisions that bar the filing of future expungement or reexamination proceedings as to the identical goods or services once a proceeding of the same kind has been instituted . . . neither the statute nor regulations set forth a limitation on any party’s ability to petition to cancel a registration just because it is or has been the subject of a reexamination or expungement proceeding.” Thus, the Board concluded there is no basis to issue a show-cause order to a litigant who never appeared in a prior action.

Practice Note: This case serves as a reminder of the metes and bounds of an ex parte reexamination or expungement proceeding. Although [...]

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PTO Proposes Trademark Fee Increases

On May 8, 2023, the US Patent & Trademark Office (PTO) announced proposed trademark fee increases. The proposed fee increases are the result of lower revenue than previously forecasted and higher-than-expected inflation. Aggregate PTO operating costs are projected to exceed aggregate fee revenue beginning this fiscal year.

To encourage efficient application filing behaviors, enhance the quality of incoming applications and improve processing efficiencies, the PTO proposed a new single basic application filing fee with additional premium application surcharge fees based on the following actions an applicant can take (or avoid) when filing:

  • Submitting incomplete applications (other than applications denied a filing date for failure to satisfy the requirements under 37 CFR § 2.21)
  • Providing custom descriptions of goods and services in the free-form field instead of using the preapproved drop-down fields containing acceptable identifications of goods and services from the Trademark Next Generation ID Manual
  • Providing excessively long identifications of goods or services when using the free-form field.

The PTO proposes a 12% fee increase per class for applications (paper submission) and a 40% fee increase per class for a basic application (formerly TEAS Plus). Proposed fee increases for intent-to-use (ITU) filings include 100% per class for an amendment to allege use (AAU), 50% per class for an AAU (paper submission), 50% per class for a statement of use (SOU) and 25% per class for an SOU (paper submission). The fee for a fourth and subsequent request for a six-month extension per class for filing an SOU would increase 100% and 56% per class for an SOU (paper submission).

Proposed fee increases for renewals include 17% per class for § 9 registration renewals, 10% per class (paper submission) and 17% for renewals filed at the World Intellectual Property Organization (WIPO).

The proposed fee increase for a Letter of Protest (LOP) would be 400%, and a petition to the director would increase 60% and 43% (paper submission). Petitions to revive an application would increase 67%, and petitions to revive (paper submission) would increase 40%.

Proposed fee increases for declarations of use include 33% per class for § 8 declarations and § 71 declarations, and 23% for paper submission. Section 15 declarations of incontestability would increase 25% per class and 17% per class (paper submission).

A hybrid public hearing is scheduled for June 5, 2023. Those wishing to present oral testimonies at the hearing must submit a written request by May 26, 2023. Written comments on the proposed fees will be accepted until June 12, 2023. The PTO anticipates that the fee changes will be implemented around November 2024.

For further details, including a complete list of the proposed fee increases, see the latest trademark fee setting information on the PTO website.




PTO Proposes Patent Fee Increases

The US Patent & Trademark Office (PTO) announced proposed patent fee increases. Patent fees would increase by about 5% across the board because of inflation.

Certain fees would be increased by substantially more than the 5% inflationary increase to reduce subsidization from other fee sources. For example, the overall design patent fees would increase by 48%, based on a 27% increase in filing, search and examination fees and a 76% issue fee increase. The PTO also proposes a 100% increase in the excess claim fee for each claim over 20, and a 25% increase in the fee for each independent claim over three. Because the costs of reviewing patent term extensions is complex, the PTO proposes fee increases of 196% to 468%. The PTO also proposes a fee of $500 for filing an After Final Consideration Pilot (AFCP) 2.0 request, and new fees for filing an information disclosure statement (IDS) that causes the number of applicant-provided citations to exceed 50, 100 or 200 citations, respectively.

To offset the loss of future maintenance fee payments, the PTO proposes fees of $1,500 for continuing applications filed more than three years from the earliest benefit date and $3,000 for continuing applications filed more than seven years from the earliest benefit date.

Other proposed fee increases are intended to expedite the patent examination process. For example, the PTO proposes a 25% increase in the fee for a second request for continued examination (RCE) and an 80% increase for a third or subsequent RCE. The fee for a terminal disclaimer filed after the first action on the merits and before a final rejection would increase by 194%. After a final rejection or notice of allowance, the fee would increase by 371%. On or after a notice of appeal, the increase would be 547%, and the proposed increase for filing a terminal disclaimer in an issued patent would be 724%.

The PTO further proposes increasing Patent Trial & Appeal Board America Invents Act (AIA) trial fees by 25%. The PTO also proposes new fees for inter partes review (IPR) and post grant review (PGR) petitions that exceed the word count limits. For example, the PTO proposes a 50% higher fee for petitions that exceed the word count limit by up to 50%, and a 100% higher fee for those that exceed the limit by up to 100%.

A public hearing is scheduled for May 18, 2023. Those wishing to present oral testimony at the hearing must submit a written request by May 11, 2023. Written comments on the proposed fees will be accepted until May 25, 2023.

The PTO anticipates that the fee changes will be implemented around January 2025.

More details, including a complete list of the proposed fee increases, can be found on the PTO website.




PTO Requests Comments on Revisions to AIA Trial Proceedings

On April 21, 2023, the US Patent & Trademark Office (PTO) announced that it is seeking public input on proposed modifications to the rules of practice for inter partes reviews (IPRs) and post grant reviews (PGRs) before the Patent Trial & Appeal Board to better align the practices with the PTO’s mission to promote and protect innovation and investment in the same and to provide a less expensive alternative to district court litigation to resolve certain patentability issues while also protecting against patentee harassment.

The PTO is considering promulgating rules that the Director—and, by delegation, the Board—will use to do the following:

  • Exercise the Director’s discretion to institute IPRs and PGRs
  • Provide a procedure for separate briefing on discretionary denial that will allow parties to address relevant issues for discretionary denial without encroaching on the page limit to address the merits of a case
  • Give petitioners the ability to pay additional fees for a higher word-count limit
  • Clarify that all settlement agreements, including pre-institution settlement agreements, are required to be filed with the Board.

To create clear, predictable rules where possible, as opposed to balancing tests that decrease certainty, the PTO is considering changes that would provide for discretionary denials of petitions in the following categories, subject to certain conditions and circumstances as discussed further in the Official Notice:

  • Petitions filed by certain for-profit entities
  • Petitions challenging under-resourced patent owner patents where the patentee has brought or is attempting to bring products to market
  • Petitions challenging patent claims previously subject to a final adjudication upholding the patent claims against patentability challenges in district court or in post-grant proceedings before the PTO
  • Serial petitions
  • Petitions raising previously addressed prior art or arguments
  • Parallel petitions
  • Petitions challenging patents subject to ongoing parallel litigation in district court.

The PTO also seeks comments on proposed threshold definitions that apply to one or more of these categories of petitions subject to discretionary denials. Those definitions set forth the criteria used to determine the following:

  • What constitutes a “substantial relationship” between entities sufficient to trigger or avoid discretionary denial
  • When claim sets are deemed to have “substantial overlap” with challenged claims
  • What constitutes “compelling merits” sufficient to trigger an exception to discretionary denial.

For example, one proposal with respect to the “substantial relationship” is a requirement that a patent owner and petitioner disclose anyone with an ownership interest in the patent owner or petitioner, any government funding related to the patent, any third-party litigation funding support, and any stake any party has in the outcome of the America Invents Act (AIA) proceeding or any parallel proceedings on the challenged claims.

Additional changes being considered by the PTO include the following:

  • Absent exceptional circumstances, requiring petitioners to file a stipulation that neither they nor their privy or real parties in interest have filed prior post-grant proceedings (PGRs, IPRs, covered business methods or ex parte reexaminations) on the challenged claims
  • If petitioners’ post-grant proceeding is instituted, requiring that [...]

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PTO to Host Listening Session on Role of AI in Innovation

As previously reported, the US Patent & Trademark Office (PTO) published a Request for Comments Regarding Artificial Intelligence and Inventorship, seeking input from stakeholders on inventorship issues that may arise as artificial intelligence (AI) and emerging technologies play a greater role in the innovation process. In the wake of the request, the PTO published a Notice announcing that it is hosting a listening session to address the “current state of AI technologies and inventorship issues,” including whether AI should qualify as an inventor and whether the PTO should expand its current guidance.

The listening session will be held at the PTO’s headquarters in Alexandria, Virginia, on April 25, 2023, from 10:30 am to 2:45 pm EDT. Anyone seeking to speak at the listening session must register by 5:00 pm EDT on April 20, 2023. Anyone seeking to attend, either virtually or in person, but not speak at the event must register by April 24, 2023.

Registration information is available here.




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