Latest firm news

Firm Associate Kelly Malloy Presents on INTA Panel

Associate Attorney Kelly Malloy recently represented the Firm on the International Trademark Association (“INTA”) Career Panel at Nova Southeastern University Shepard Broad College of Law by speaking to students about her experience as a Registered Patent Attorney, Intellectual Property Associate, and Franchise Attorney.

The USPTO Updates Guidelines on Patent Application Obviousness Rejections

The United States Patent and Trademark Office (USPTO) recently updated its guidance on the determination of obviousness, a key factor in patent prosecution that directly impacts inventors, businesses, and the broader innovation ecosystem. This new guidance revisits the flexible approach mandated by the Supreme Court’s decision in KSR Int’l Co. v. Teleflex Inc. (KSR), emphasizing the necessity for a reasoned explanation when determining whether a claimed invention should be refused a patent on the basis of obviousness. It aims to provide clarity on applying the Supreme Court’s directives by focusing on post-KSR cases from the United States Court of Appeals for the Federal Circuit.

In a more technical vein, the guidance underscores the importance of the “Graham inquiries” in controlling obviousness determinations post-KSR, reinforcing the Supreme Court’s call for flexibility in understanding the scope of prior art and providing reasons for modifying or combining prior art references to assess the obviousness of a claimed invention. This includes acknowledging the role of common sense and ordinary creativity in interpreting prior art, moving further beyond a rigid or narrow interpretation that fails to consider the broader implications and potential combinations suggested by the prior art.

Moreover, the guidance highlights the importance of articulating a clear rationale when Examiners combine references or call for modifications to prior art, ensuring that such decisions are grounded in a logical and evidentiary bases. This approach demands a detailed explanation of why a person of ordinary skill in the art would have been motivated to make the proposed modification or combination, taking into account the knowledge and creativity typical of those skilled in the field. This requirement for a well-reasoned explanation underscores the USPTO’s commitment to maintaining a high standard of patent prosecution quality by recommending that obviousness rejections are based on a thorough and thoughtful analysis of the prior art as it relates to the claimed invention.

The updated guidance can be found here:

Firm Presented with Miami-Dade County Proclamation and Key to County, Celebrates 65th Anniversary

As the Firm celebrated its 65th anniversary at a St. Patrick’s Day reception held at its Miami office on March 13, 2024, Miami-Dade County Commissioner Raquel Regalado presented the Firm’s partners with a Key to the County and a Proclamation recognizing Malloy & Malloy’s contribution to South Florida’s economy over the course of six and a half decades.

The Proclamation recognizes that a great economy like Miami-Dade County’s is built on innovation, which the Firm has supported since 1959 by providing legal services to entrepreneurs and businesses to protect their inventions, processes, brand names, authorship, and trade secrets.  The Firm’s clients have become powerful engines of Miami-Dade’s prosperity, including small businesses, franchises, leading corporations, healthcare institutions, and major universities.

The Firm’s attorneys are dedicated to serving the community well beyond the practice of law, as well.  The firm’s lawyers have included a member of the Florida legislature, adjunct professors of law, leaders of federal and state bar associations, presidents and officers of service organizations, appointees to municipal boards, and dedicated volunteers with philanthropies across South Florida. Through the John Cyril Malloy Intellectual Property Law Endowed Memorial Scholarship at the University of Miami School of Law, the firm seeks to continue the cycle of service by financially sponsoring and mentoring future intellectual property and franchise attorneys.

Expansion of the Doctrine of Foreign Equivalents in Trademark Applications

New trademark applications are compared against prior registrations and prior-pending trademark applications, of course, to determine whether there is a likelihood of confusion that would result in refusal pursuant to §2(d) of the Lanham Act.  Among other factors, that analysis usually involves consideration of the marks’ similarities in sight, sound, and meaning. However, as a general rule under the so-called “doctrine of foreign equivalents,” the U.S. Patent and Trademark Office (“USPTO”) deems a foreign-language equivalent to an English-language mark to be identical for purposes of comparison, regardless of differences in appearance and pronunciation.  As such, and as a representative example, an application for the Spanish-language mark “TORO ROJO” likely will be evaluated by a USPTO Examining Attorney as essentially identical to and, thus, in conflict with a prior registration for “RED BULL” (other factors, such as the similarity of the goods and/or services offered under each mark, could affect the analysis).

In some recent decisions, the USPTO’s Trademark Trial and Appeal Board (“TTAB”) has determined that the doctrine of foreign equivalents can be applied in comparisons where neither mark consists of an English-language term.  Specifically, equivalents of two foreign-language marks – in one case, the Spanish truncation “L’MAR” and the French term “LE MER,” both meaning “the sea” – have been found to be confusingly similar. See In re Giraldo, 2023 TTAB LEXIS 394 (TTAB 2023). In so doing, the TTAB confirmed “that the doctrine of foreign equivalents is not barred from application where… the respective marks consist of terms from different foreign languages.” This re-affirmation of the expansion of the doctrine injects a much wider range of foreign translations into the USPTO examination process.  Moreover, because TTAB case law is highly persuasive in the U.S. Courts, this broader view of the doctrine very likely will extend to trademark infringement litigation, which is adjudicated outside of the USPTO.