John Malloy, III
As the Partner overseeing the Firm’s Intellectual Property Litigation and International Tradmark Portfolio groups, Mr. Malloy is Board Certified as an Expert in Intellectual Property Law and concentrates his practice on Trial and Appellate Litigation. He also focuses on International Portfolio Management, filing trademark applications and directing enforcement proceedings around the globe. Mr. Malloy taught for nearly a decade as an Adjunct Professor of Intellectual Property Law at St. Thomas University Law School. He earned his bachelor’s degree from Vanderbilt University and his law degree from the University of Miami. During his tenure as the Chair of the International Trademark Association’s Model State Trademark Bill from 2003 to 2007, Mr. Malloy oversaw the passage of trademark legislation in a half dozen states and personally spear-headed the enactment of Florida’s present trademark statute, which became effective in 2007. In 2009 Mr. Malloy was named the Chairman of the DCBA Intellectual Property Committee.
The United Kingdom (“UK”) formally separated from the European Union (“EU”) as of December 31, 2020. As such, starting January 1, 2021, the landscape of trademark protection across Great Britain and Northern Ireland is rather complicated. Marks registered at the national level in the UK are not affected, but many brand owners have registered their marks exclusively through the EU Trade Mark (“EUTM”) system, previously known as the Community Trade Mark (“CTM”), with the expectation that protection would extend to the UK. Others have registered their marks through the International Registration/ Madrid Protocol system, obtaining extensions to the EU, which also contemplated coverage in the UK. However, as of January 1, 2021, EUTM registrations and extensions will no longer provide trademark rights in the UK.
In order to ease the transition, the UK is automatically creating a “clone” UK trademark registration corresponding precisely to the details of each EUTM registration and extension. It is expected that some 1.4 million clone UK registrations will be granted through this process, thereby replicating trademark rights enforceable in the UK. They will be accorded the same filing, priority, seniority, registration, and renewal date as the EUTM registration. No additional government fees will be due at the time of such grant, but a clone UK trademark registration will be due for separate renewal at the same time that the EUTM registration would be due for renewal, thereby requiring payment of additional fees at that time to keep the clone UK registration in force.
Notably, clone UK trademark registrations will be created only for EUTM registrations and extensions granted on or before December 31, 2020. If a brand owner has only a pending EUTM application as of that date, a similar cloning protocol is available, but it is neither automatic nor free. Specifically, a separate UK trademark application must be filed with an appropriate priority claim to the EUTM application by the deadline of September 30, 2021. Additional government fees will be due and the UK application will undergo the usual examination process regardless of the EUTM application’s examination status. Failure to exercise this option will result in a loss of priority rights vis-à-vis prior UK registrations and pending applications.
Pending trademark opposition and cancellation proceedings in the EU Intellectual Property Office (“EUIPO”) also require close attention. EUTM registrations, extensions, and pending applications that are the subject of non-final actions in the EUIPO may be candidates for cloning into UK registrations and applications, thereby requiring separate oppositions and cancellation actions in the UK. Let the clone wars begin!
As an update to a blog entry on March 31, the U.S. Patent and Trademark Office (“USPTO”) has taken additional actions in response to the COVID-19 health crisis. Pursuant to temporary authority provided under the Coronavirus Aid, Relief, and Economic Security Act (CARES Act), the USPTO has extended various filing and fee payment deadlines for patent and trademark cases (due dates between March 27 and May 31) to June 1, 2020. This is in addition to the prior extension the USPTO had announced on March 31, 2020. Andrei Iancu, Under Secretary of Commerce for Intellectual Property and Director of the USPTO, said, “Innovation and entrepreneurship will play a key role in our fight against this pandemic, and in the upcoming recovery of our country…. Accordingly, the USPTO continues to assess measures to support the work of inventors and entrepreneurs during this crisis and beyond.” For more information about particular deadlines, feel free to speak to one of the Firm’s attorneys.
The U.S. Patent and Trademark Office (“USPTO”) has taken various actions in response to the COVID-19 health crisis. All USPTO offices have been closed to the public since March 16, 2020, though USPTO personnel continue to review filings with ongoing communication to applicants, petitioners, and other parties through remote means. Additionally, relying on inherent administrative powers to alleviate “extraordinary circumstances,” the USPTO has authorized the waiver of certain petition fees for those impacted by the coronavirus, as well the general waiver of the requirement for original, handwritten signatures on certain submissions. More action from the USPTO is expected in the coming days pursuant to the Coronavirus Aid, Relief, and Economic Security (CARES) Act, which grants additional “emergency relief authority” to the USPTO Director (and the Register of Copyrights) to temporarily “toll, waive, adjust, or modify, any timing deadline” established by law or federal regulation in order to mitigate the impact of disruption to regular business caused by the COVID-19 pandemic.
Dubbed “Brexit,” the United Kingdom (“UK”) decided by national referendum in 2016 to separate from the European Union (“EU”). However, the British Parliament has refused to approve an agreement for orderly withdrawal, so the UK is likely to leave the EU on March 30, 2019 without any terms of separation. Many brand owners have registered their marks through the EU Trade Mark (“EUTM”) system, previously known as the Community Trade Mark (“CTM”), with the expectation that protection extends to the UK. Under the current “guidance” issued by the UK, owners of EUTM registrations should receive an automatic “clone” registration in the UK, which will carry over equivalent protection and seniority. But, pending EUTM applications, will NOT be “cloned”; applicants should be offered a grace period within which to file UK applications claiming the same protection and seniority. Similar provisions are planned for International Registrations designating the EU. Despite the strong expectation of UK legislation in alignment with the guidance, trademark owners should consider immediate action to secure UK trademark rights prior to the official Brexit date. Note: Patent rights in the UK should be relatively unaffected by Brexit because the European Patent Office (“EPO”) is not a European Union institution.
The term “substantially similar” causes plenty of confusion in copyright infringement cases. Beyond the amorphous nature of the term, itself, courts use this language with subtly different meanings when evaluating the separate prongs of the test for infringement: (1) copying, and (2) misappropriation. It’s not enough to merely copy; to be liable for infringement, the defendant must take elements of a work that are original. Copying can be demonstrated by circumstantial evidence of access to the plaintiff’s work and substantial similarity of the defendant’s work, calling for only a probative level of similarity to support a factual conclusion of copying. However, the second prong, misappropriation, requires a qualitative analysis of the plaintiff’s work to determine the scope of copyright protection, which in turn yields a sliding, legal standard for infringement, i.e., whether the accused work is similar in terms of copying a substantial amount of protectable expression. The Ninth Circuit recently took that to the extreme in Sophia & Chloe v. Brighton Collectibles, a case involving jewelry as a sculptural work. Because Sophia & Chloe’s “Buddha Kiss” earrings were deemed to be so minimally original, and thus entitled to narrow copyright protection, the panel ruled that the proper standard for the misappropriation prong was “virtually identical” rather than “substantial similarity,” thereby re-invigorating a legal test most often used in the past for obscure cases involving multiple listing services and other content of limited creativity. In copyright litigation, the various meanings of substantially similar are definitely not virtually identical.
If you have not registered your trademark in Canada, now is the time. Our northern neighbor will soon implement a massive overhaul to its Trade-marks Act, pursuant to 2014 legislation that has been on hold pending the adoption of corresponding regulations. Among other things, use of a trademark in Canada (or anywhere in the world, for that matter) will no longer be a prerequisite to ownership and enforcement of a Canadian trademark registration. The race to the Canadian Intellectual Property Office (CIPO) will be open to competitors, squatters, and trolls whose intent may be to re-sell trademark rights at a profit, interfere with a legitimate trademark owner’s ability to use a trademark in Canada, and possibly even demand a ransom at the border for importation of genuine goods. Filing a Canadian trademark application now, even if only defensively for future market expansion, should be given serious and immediate consideration.
In a historic vote, the people of Great Britain have chosen to leave the European Union in what has been dubbed “Brexit.” Many clients have registered their trademarks through the Community Trade Mark (“CTM”) system, now known as the European Union Trade Mark (“EUTM”), with the expectation that protection extends to the United Kingdom. Similarly, many clients have protected their inventions and novel designs via the European Patent Office (“EPO”) with rights extending to the UK. Rest assured that there is no emergency; there will be no immediate impact on intellectual property protection for at least 2 years as new trade arrangements are negotiated. While it is predicted that the British Parliament will pass legislation to ensure the continuity of CTM/EUTM trademark rights in an independent UK trademark system, clients might consider filing a national-level UK trademark application as a precaution. Patent rights in the UK should be entirely unaffected by Brexit, however, since the EPO is not an European Union institution and operates independently.
As a follow-up to a previous blog entry, it’s finally official -- reform legislation in the European Community (“EU”) will take effect on March 23, 2016 and bring major changes to the CTM (“Community Trade Mark”) registration system. Over the past 20 years, the CTM has become a staple of international trademark portfolios as a cost-effective way to achieve protection in 28 member countries in a single package. Among the most notable changes, the CTM name will be changed to the “European Union Trade Mark,” or “EUTM.” Also, the registrar’s office in Alicante, Spain, now known as OHIM (“Office of Harmonization in the International Market”), will be re-named as the “European Union Intellectual Property Office,” or “EUIPO.” In addition to minor, technical changes, the overhaul will increase filing fees for multiple-class applications, replacing the existing structure of up-to 3 classes for the initial filing fee. Of note, any application filed before March 23rd will still benefit from the 3-for-1 filing fee, so clients are encouraged to consider immediate filing to reduce costs. Other changes to the law will impose stricter rules for specific listings of goods and services, which will affect existing registrations and upcoming renewals, and there also will be enhanced enforcement provisions available to registrants, especially against counterfeit and gray market goods. The Firm continues to assist clients with trademark registration and enforcement in virtually every country of the world.
The CTM (Community Trade Mark) registration, which provides protection across most of Europe, has become a staple of international trademark portfolios since introduction in 1996. But, some big changes are coming for the 20th anniversary. Most notably, the CTM name will be changed to the “European Union Trade Mark.” Also, the registrar’s office in Alicante, Spain, now known as OHIM (Office of Harmonization in the International Market), will be re-named as the “European Union Intellectual Property Office,” and the Community Trade Mark Courts will be called the “European Trade Mark Courts.” Other technical changes will include new filing/renewal fee structures, stricter rules for listing goods and services, and some enhanced mechanisms for enforcement against infringers. Final approval by the European Parliament is expected imminently, at which time most changes will become effective, but portions of the overhaul package will require adoption into the national laws of member countries. The Firm continues to assist clients with trademark registration and enforcement in virtually every country of the world.