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A warranty card that a consumer finds only after opening the packaging typically is not considered to be “commercial advertising or promotion” for purposes of false advertising under Section 43(a)(1) of the Lanham Act. See Oakley, Inc. v. Bugaboos Eyewear Corp., 757 F. Supp. 2d 1050, 1057 (S.D. C...

Laches is an equitable defense against a non-vigilant plaintiff who waits too long to file their lawsuit—an inexcusable delay that prejudices the defendant. In Satan Wears Suspenders, Inc. v. Jaar, No. 1:21-cv-00812, 2022 WL 2181449 (S.D.N.Y Jun. 16, 2022), Satan Wears Suspenders, Inc. (“Plaintif...

If a court issues an injunction against you, then you need to take all reasonable steps to ensure compliance with that injunction. Otherwise, you may be at risk of being found in civil contempt. Indeed, the Fourth Circuit recently upheld a civil contempt order arising from an injunction against f...

A Colorado state district court has revisited how to analyze whether a common law claim is preempted by the Colorado Uniform Trade Secrets Act (“CUTSA”) in CORE Consultants, Inc. v. Ferran, No. 2021CV31719, 2022 WL 20407191 (Colo. Dist. Ct. May 19, 2022). Two Analytical Approaches: “Elements” and...

Courts often will strive to construe ambiguous claim language to avoid indefiniteness under 35 U.S.C. § 112(b) (a patent's “specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as t...

Under the Lanham Act, any person who makes false or misleading descriptions of fact in commercial advertising “shall be liable in a civil action by any person who believes that he or she is or is likely to be damaged by such act.” 15 U.S.C. § 1125(a)(1)(B). “To invoke the Lanham Act's cause of ac...

An opposition to a trademark application may be based on Section 2(d) of the Lanham Act, because of a likelihood of confusion with a pre-existing trademark. Corcamore, LLC v. SFM, LLC, 978 F.3d 1298 (Fed. Cir. 2020), cert. denied, 141 S. Ct. 2671 (2021) (holding that the test in Lexmark is met by...

The U.S. Patent and Trademark Office (“USPTO”) generally will refuse registration of a trademark that is primarily geographically descriptive. See 15 U.S.C. § 1052(e)(2). A mark is primarily geographically descriptive if (1) “the mark sought to be registered is the name of a place known generally...

Generic terms “are by definition incapable of indicating a particular source of the goods or services.” In re Dial-A-Mattress Operating Corp., 240 F.3d 1341 (Fed. Cir. 2001). “[R]egistration is properly refused if the word is the generic name of any of the goods or services for which registration...

The animated television series “SpongeBob SquarePants” on Viacom's Nickelodeon network is about a sponge who lives in a pineapple under the sea, and works at the fictional The Krusty Krab restaurant. Viacom licenses The Krusty Krab to third parties for products such as Krusty Krab playsets from T...

Section 43(a) of the Lanham Act creates a cause of action for false advertising where a competitor “uses in commerce any word, term, name, symbol, or device, or any combination thereof, or any false designation of origin, false or misleading description of fact, or false or misleading representat...

An author (or their heirs) may terminate a copyright assignment, or other transfer, under section 203(a) of the Copyright Act, 17 U.S.C. §§ 101, et seq. Depending on when the copyrighted work is published or not, an author may serve a notice of termination within a specific window of time at the ...

Patents sometimes issue with typographical errors. Courts may correct “obvious minor typographical and clerical errors in patents,” even if it may structurally alter the patent claim. Novo Indus., L.P. v. Micro Molds Corp., 350 F.3d 1348, 1357 (Fed. Cir. 2003). For example, in Ultimax Cement Mfg....

A trademark is considered “abandoned” if its “use has been discontinued with intent not to resume such use.” 15 U.S.C. § 1127. There are two elements to a claim for abandonment: (1) nonuse; and (2) intent not to resume use. See Jack Wolfskin Ausrustung Fur Draussen GmbH & Co. KGaA v. New Millenni...

“Copyright misuse is an equitable defense to copyright infringement which precludes the copyright holder's enforcement of its copyright during the misuse period.” Vernor v. Autodesk, Inc., 621 F.3d 1102, 1115 (9th Cir. 2010); Practice Mgmt. Info. Corp. v. Am. Med. Ass'n, 121 F.3d 516, 520 n. 9 (9...

As of May 24, 2022. the U.S. Patent and Trademark Office (“USPTO”) will begin issuing electronic trademark registration certificates. The electronic registration certificates issued by the USPTO will be made under the electronic signature of the Director and with a digital seal, which will authen...

Under the Copyright Act, a “‘joint work' is a work prepared by two or more authors with the intention that their contributions be merged into inseparable or interdependent parts of a unitary whole.” 17 U.S.C. § 101. An “author” is “the party who actually creates the work, that is, the person who ...

The lawyers at Thomas P. Howard LLC successfully moved to dismiss Colorado civil theft and conversion claims as preempted by the Colorado Uniform Trade Secrets Act (“CUTSA”) in CORE Consultants, Inc. v. Ferran, No. 2021CV31719, 2022 WL 1637926 (Colo. Dist. Ct. May 5, 2022). The Colorado civil the...

A specimen “must in some way evince that the mark is ‘associated' with the goods and serves as an indicator of source.” In re Sones, 590 F.3d 1282 (Fed. Cir. 2009); In re Safariland Hunting Corp., 24 USPQ2d 1380, 1381 (TTAB 1992) (specimen must show “direct association” with goods). Trademarks ar...

A trademark may be refused registration by the U.S. Patent and Trademark Office (“USPTO”) if it falsely suggests a connection with another person or institution. Section 2(a) of the Lanham Act, 15 U.S.C. § 1052(a), in relevant part, prohibits registration of “matter which may … falsely suggest a ...

“Federal Pro Bono Programs in Colorado,” written by Thomas P. Howard LLC's James Juo, has been published in the June 2022 issue of Colorado Lawyer. The article discusses the District of Colorado's pro bono programs. “It is incumbent on those who can to aid those who need,” says Thomas P. Howard L...

Under Section 2(d) of the Lanham Act, the U.S. Patent and Trademark Office (“USPTO”) may refuse to register a trademark because of a likelihood of confusion with an existing registration. One possible response is to argue that consumers are likely to distinguish such marks from one another based ...

When founders leave their company, they often remain involved as consultants to ensure a smooth transition for the business. These consulting agreements also often include a patent assignment provision where any inventions developed during the consulting period are to be disclosed and assigned to...

The accused infringer in patent litigation will sometimes propose a negative claim construction that excludes a feature or aspect of the accused product, and thus avoid infringing the patent claim. But if the excluded feature does not have a uniform meaning in the art, then a more affirmative con...

The U.S. Patent and Trademark Office may require a disclaimer of an unregistrable component of an applied-for trademark that is otherwise registerable. In re La. Fish Fry Prods., Ltd., 797 F.3d 1332 (Fed. Cir. 2015); In re Stereotaxis Inc., 429 F.3d 1039 (Fed. Cir. 2005); In re Am. Furniture Ware...