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In Weisner v. Google LLC, No. 21-2228, — F.4th — (Fed. Cir. Oct. 13, 2022), the Federal Circuit held that method claims directed toward collecting information are abstract ideas, while method claims directed toward using the information are patent eligible. Weisner had sued Google for infringing ...

Beginning on December 3, 2022, trademark applicants will have three months (with a possible three-month extension), instead of the current six months, to respond to office actions issued by the United States Patent and Trademark Office (USPTO) during the examination and prosecution of the tradema...

“Generally, where the matter sought to be registered identifies [services] that are a primary or central focus of the [business], we have considered the term to be generic.” In re Cordua Rests. LP, 100 USPQ2d 1227, 1231 (TTAB 2014) (citations omitted) (bracketed words in original), aff'd, 823 F.3...

A generic term “is the common descriptive name of a class of goods or services” and is unregistrable. Princeton Vanguard, LLC v. Frito-Lay N. Am., Inc., 786 F.3d 960, 114 USPQ2d 1827, 1830 (Fed. Cir. 2015); H. Marvin Ginn Corp. v. Int'l Ass'n of Fire Chiefs, Inc., 782 F.2d 987, 228 USPQ 528, 530 ...

Owning an incontestable trademark registration can provide a defense to infringing the trademark of another. “The ‘defensive' aspect of incontestability is reflected in the language of both § 15 and § 33(b) [of the Lanham Act].” 6 J. McCarthy, McCarthy on Trademarks and Unfair Competition § 32:141.

Likelihood of confusion under Section 2(d) of the Lanham Act is analyzed at the USPTO using the thirteen so-called DuPont factors. In context of an opposition proceeding, the fifth DuPont factor enables an Opposer to expand the scope of protection afforded its pleaded mark by adducing evidence of...

One common response to a likelihood of confusion refusal under Section 2(d), i.e., 15 U.S.C. § 1052(d), is to argue there is no likelihood of confusion because the marks are conceptually weak based on third-party registrations and other third-party use in the marketplace. The sixth DuPont factor ...

A writ of mandamus may be filed to appeal a district court's refusal to dismiss or transfer a patent lawsuit based on venue. But the nature of mandamus relief is limited. For venue disputes under 28 U.S.C. § 1400(b) for patent cases, mandamus is available where immediate intervention is necessary...

Section 43(a) of the Lanham Act, 15 U.S.C. § 1125(a), protects trade dress, which encompasses the design and appearance of a product along with all the elements that serve to identify the product to consumers. Yurman Design, Inc. v. PAJ, Inc., 262 F.3d 101, 115-16 (2d Cir. 2001). For a false desi...

In a likelihood of confusion analysis under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), the thirteenth DuPont factor is a catch-all for “any other established fact probative of the effect of use.” In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973). This...

The specific design elements of a software tool may be entitled to “look and feel” trade dress protection if it is nonfunctional. Fair Wind Sailing, Inc. v. Dempster, 764 F.3d 303, 309 (3d Cir. 2014). But even if the tools' elements are functional, such non-protectable elements could still provid...

A nunc pro tunc trademark assignment is one where the parties agree the assignment was granted on an earlier date in order to retroactively document a transfer of ownership. Latin for “now for then,” a nunc pro tunc document can be thought of as a backdated document. This often is used to correct...

In an opposition or cancellation for likelihood of confusion under Section 2(d) that hinges on an earlier priority date of first use, “proof of such earlier date must be clear and convincing and oral testimony given long after the date sought to be proved must be carefully scrutinized.” Rockwood ...

In a likelihood of confusion analysis under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), two key DuPont factors are the similarity or dissimilarity of the marks and the goods or services. Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976) (“The f...

A pre-GATT patent application, i.e., filed prior to June 8, 1995, would be entitled to a patent term of seventeen years from the date of issuance. Otherwise, the issuing patent would be entitled to a patent term of twenty years from the earliest claimed filing date (and 1995 is more than twenty y...

“‘A generic name—the name of a class of products or services—is ineligible for federal trademark registration.'” In re GJ & AM, LLC, 2021 USPQ2d 617, at *4 (TTAB 2021) (quoting U.S. Pat. & Trademark Off. v. Booking.com B.V., 140 S. Ct. 2298, 2020 USPQ2d 10729, at *1 (2020)). In H. Marvin Ginn Cor...

The duplicative-litigation doctrine prevents plaintiffs from “maintain[ing] two separate actions involving the same subject matter at the same time in the same court . . . against the same defendant.” Walton v. Eaton Corp., 563 F.2d 66, 70 (3d Cir. 1977) (en banc). In patent infringement cases, w...

Priority between competing trademarks for purposes of a Section 2(d) likelihood of confusion analysis may be established through prior use analogous to trademark use, such as advertising brochures, trade publications, catalogues, newspaper advertisements and Internet websites that created a publi...

In a likelihood of confusion analysis under Section 2(d), two key considerations are the similarities between the marks and the relatedness of the goods. See In re Chatam Int'l Inc., 380 F.3d 1340, 71 USPQ2d 1944, 1945-46 (Fed. Cir. 2004); Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d ...

Slogans, phrases, and other terms that are considered to be merely informational in nature are generally not registrable. See In re Eagle Crest Inc., 96 USPQ2d 1227, 1232 (TTAB 2010) (“ONCE A MARINE, ALWAYS A MARINE is an old and familiar Marine expression, and as such it is the type of expressio...

The Supreme Court has long held that “[l]aws of nature, natural phenomena, and abstract ideas are not patentable” under 35 U.S.C. § 101. Alice Corp. Pty. v. CLS Bank Int'l, 573 U.S. 208, 216 (2014) (quoting Ass'n for Molecular Pathology v. Myriad Genetics, Inc., 569 U.S. 576, 589 (2013)). In Alic...

False suggestion of a connection under Section 2(a) of the Lanham Act prohibits registration of “matter which may . . . falsely suggest a connection with persons, living or dead, institutions, beliefs or national symbols . . . .” 15 U.S.C. § 1052(a). Although the statutory protection against a fa...

A lawsuit for copyright infringement must be brought “within three years after the claim accrued.” 17 U.S.C. § 507(b). For purposes of this statute of limitations under copyright law, the Ninth Circuit distinguishes between “infringement” claims and “ownership” claims. Unlike infringement claims,...

To determine whether a likelihood of confusion exists for trademark infringement, the Ninth Circuit applies the multi-factor inquiry articulated in AMF Inc. v. Sleekcraft Boats, 599 F.2d 341 (9th Cir. 1979). But the application of those factors is flexible, and a party need not demonstrate that e...

California's anti-SLAPP statute is “designed to protect defendants from meritless lawsuits that might chill the exercise of their rights to speak and petition on matters of public concern.” Wilson v. Cable News Network, Inc., 7 Cal.5th 871, 883–4 (2019). “Evaluating what qualifies as an issue of ...