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Appellate Reversals of §2(d) Refusals by USPTO Trademark Examining Attorneys: 15%

Recent statistics from the U.S. Patent and Trademark Office (“USPTO”) for 2023 indicate an 85% affirmance rate of §2(d) refusals of  trademark applications on appeal to the Trademark Trial and Appeal Board (“TTAB”).  This in generally in line with historic rates.

A trademark application is reviewed by a USPTO Trademark Examining Attorney on a variety of grounds, but most notably on whether there is a conflict with a prior-registered mark.  A §2(d) refusal – so named because of the applicable section of the Lanham Act – is a determination that the applied-for mark may not be registered because it “so resembles a mark [previously] registered” that it is “likely to cause confusion, or to cause mistake, or to deceive.”  That decision, however, is based on many subjective factors, including the similarity of the marks in appearance, sound, connotation, and commercial impression, the similarity (or relatedness) of the goods or services under the marks, the similarity of the channels of trade, the strength of the prior-registered mark, and many others.  If refused, a trademark applicant may appeal to the TTAB, but these most recent statistics suggest a 15% chance of reversing the §2(d) refusal.

Given the tremendous deference that the TTAB gives to the mostly-subjective opinion of an individual USPTO Examining Attorney in issuing a §2(d) refusal, trademark searching prior to filing a trademark application continues to be extremely valuable, often providing an experienced trademark attorney with valuable information about how best to tailor a trademark application to be more likely to avoid this type of refusal in the first place.

Disney’s Steamboat Willie Mickey and Minnie Mouse Characters Enter the Public Domain

As of this month, the Steamboat Willie versions of Disney’s Mickey and Minnie Mouse characters are no longer protected under the U.S. copyright laws. The iconic Disney cartoons have officially entered the public domain nearly one-hundred (100) years after the 1928 release of the short film Steamboat Willie, in which Mickey and Minnie Mouse were introduced for the first time. While Disney’s copyright protection in Steamboat Willie was initially scheduled to expire in 1984, the copyright laws were amended in 1976 and then again in 1998, ultimately extending copyright protection in works of authorship for the life of the author plus seventy (70) years. Disney was reportedly involved in the lobbying efforts that drove those changes, alongside other entertainment companies. As a result, Disney’s copyright protection in Steamboat Willie was extended through 2023. Now, under U.S. law anyone can use only the Steamboat Willie versions of Mickey and Minnie Mouse without committing copyright infringement. Newer versions of the Mickey and Minnie Mouse characters remain protected.

Firm Partner, John Cyril Malloy III, Named to Baptist Health Foundation’s Philanthropic Council

Firm Partner, John Cyril Malloy III, has been named to Baptist Health Foundation’s Philanthropic Council. Baptist is South Florida’s largest healthcare organization with 12 hospitals, more than 100 outpatient and urgent care facilities, and over 27,000 employees. Despite the size of the health system, Baptist relies heavily on philanthropy to sustain operations, improve facilities, and attract top medical talent.  The Firm is proud to support Baptist Health’s delivery of cutting-edge, non-profit healthcare, including uncompensated and reduced-cost care, to all of our friends and neighbors in the South Florida community. Previously, Mr. Malloy served for several years on the Board of Directors of Baptist Health Foundation and Doctors Hospital – Miami Orthopedic and Sports Medicine Institute Council.

In the United Kingdom, AI Cannot be an Inventor for a Patent

The debate over the role of artificial intelligence (AI) in patent law has been a topic of global discussion for several years. The United Kingdom’s Supreme Court has recently contributed to this discourse, delivering a judgment that aligns with many other countries’ boundaries of AI’s role in patent applications. Per the UK’s Patents Act 1977, this ruling finds that an inventor must be a natural person, effectively precluding AI systems from being acknowledged as inventors.

As in many other courts across the globe, the UK’s Supreme Court’s decision hinged on the definition of an ‘inventor.’ Within the context of the Patents Act 1977, the Court analyzed the Act’s language, concluding that the Act defines an inventor as the ‘actual deviser’ of an invention that unambiguously refers to a human being. This interpretation underscores a fundamental principle in patent law: recognizing human creativity and ingenuity as a core of invention.

This decision by the UK Supreme Court is a national statement and a significant marker in the global legal landscape concerning AI and intellectual property. It aligns with the stance of several other nations, reinforcing the notion that AI, despite its advanced capabilities, cannot replace the human element in the context of patent law. This ruling can have far-reaching implications, potentially influencing future legislative developments and judicial decisions in other countries and shaping the global approach to AI and patent law.