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AI vs. IP

The U.S. Patent and Trademark Office (“PTO”) recently issued a second request for public comments on the impact of artificial intelligence on intellectual property laws and policies, this time with a focus on copyright and trademark related issues. 

Among the questions recently posed by the PTO:

Should a work produced by an AI algorithm or process, without the involvement of a natural person contributing expression to the resulting work, qualify as a work of authorship protectable under U.S. copyright law? Why or why not?;

Would the use of AI in trademark searching impact the registrablity of trademarks? If so, how?; and 

Are there any other AI-related issues pertinent to intellectual property rights (other than those related to patent rights) that the USPTO should examine?

You may submit comments in writing through December 16, 2019. The full list of questions is presented in the Request for Comments on Intellectual Property Protection for Artificial Intelligence Innovation, available in the Federal Register here.

The PTO previously issued a Request for Comments on Patenting Artificial Intelligence Inventions, available here, and has extended the deadline to submit comments through November 8, 2019.

AI vs. IP

The U.S. Patent and Trademark Office (“PTO”) recently issued a second request for public comments on the impact of artificial intelligence on intellectual property laws and policies, this time with a focus on copyright and trademark related issues.

Among the questions recently posed by the PTO:

Should a work produced by an AI algorithm or process, without the involvement of a natural person contributing expression to the resulting work, qualify as a work of authorship protectable under U.S. copyright law? Why or why not?;

Would the use of AI in trademark searching impact the registrablity of trademarks? If so, how?; and

Are there any other AI-related issues pertinent to intellectual property rights (other than those related to patent rights) that the USPTO should examine?

You may submit comments in writing through December 16, 2019. The full list of questions is presented in the Request for Comments on Intellectual Property Protection for Artificial Intelligence Innovation, available in the Federal Register here.

The PTO previously issued a Request for Comments on Patenting Artificial Intelligence Inventions, available here, and has extended the deadline to submit comments through November 8, 2019.

Celebrate your Thanksgiving with Intellectual Property

Celebrate your Thanksgiving with Intellectual Property

Thanksgiving traditions are deeply rooted in American culture.  Ever since Abraham Lincoln first mandated Thanksgiving a national holiday in 1863, Americans have been rejoicing this popular national holiday on every fourth Thursday of November. 

Accordingly, the history of Thanksgiving evokes many great memories for many Americans.  Family and friends travel long distances to come together and spend quality time in each other’s company. As such, Thanksgiving is about spending time with family, watching football on television, feasting on traditional foods, shopping at malls, partaking in parades, volunteering at food drives, and taking naps.

Given this, many products and services contribute in helping American families come together to cherish these special moments, and invariably intellectual property is prevalent everywhere in them.

 

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Singapore Trademark Office Denies Cartier’s Claim to “LOVE”

Cartier’s “LOVE” bracelets, designed in the 1960’s, have acheived some reknown due to the locking mechanism that can only be opened with a screwdriver. While Cartier has had success in certain countries protecting the overall look of the bracelet itself, the Intellectual Property Office of Singapore has determined that Cartier can not excercise trademark rights over the word “LOVE.” 

Last year, Cartier opposed a trademark application to register the slogan “LOVE GOLD” as a trademark in Singapore. While Cartier owns registrations for its stylized variation of “LOVE,” which includes a horizontal line through the “O” to mimic the appearance of the screws adorning its bracelet, the Intellectual Property Office of Singapore has apparently determined that these rights do not extend to the word itself. The opinion states, “‘[l]ove’ is a word which is commonly used by jewelry traders and should not be monopolized by any trader….The word ‘love,’ however, should be free for traders to incorporate into their trademarks for jewelry.” 

USPTO Issues New Examination Guide to Address Generic.com Terms after USPTO v. Booking.com

On June 30, 2020, the U.S. Supreme Court rejected the rule that a proposed mark consisting of the combination of a generic term and a generic top-level domain, like “.com,” is automatically generic. USPTO v. Booking.com B.V., 140 S. Ct. 2298, 2020 USPQ2d 10729 (2020). In light of the Court’s decision, the USPTO recently issued Examination Guide 3-20 to address its examination procedures for “Generic.com terms.” It is worth noting that the Exam Guide pertains to a generic term and any generic top-level domain designating an entity or information (“.com,” “.net,” “.org,” “.biz,” “.info”).

While Booking.com rejected the per se rule that Generic.com terms are automatically generic, it did not otherwise significantly alter the analysis nor USPTO examination procedures regarding these generic terms. A mark must be capable of serving as a source indicator, rather than indicating that the term, as a whole, is merely the name of the class or category of the goods and/or services identified in the application. Ultimately, examining attorneys must not initially refuse registration of a Generic.com term on the Principal Register as “generic,” even if there is strong evidence of genericness. Instead, the examining attorney must refuse the mark as “merely descriptive” under Trademark Act Section 2(e)(1), requiring a showing of Acquired Distinctiveness or amendment to the Supplemental Register. The Exam Guide indicates that the suggestion to amend to the Supplemental Register will depend on whether the Generic.com term is at least capable of serving as a source indicator based on the available evidence.

The Exam Guide maintains that examining attorneys must follow the existing disclaimer policy and procedure when examining proposed marks containing Generic.com terms and other matter. If the Generic.com term is incapable of serving as a source indicator and is separable from the other matter in the proposed mark, a disclaimer of the term is appropriate, whether registration is sought on the Principal Register or Supplemental Register. However, when disclaiming a Generic.com term, the term must be disclaimed in its entirety, rather than disclaiming the generic term and the generic top-level domain separately.

While an examining attorney may not outright refuse marks on the basis of genericness, the refusal may be based on the grounds of failure to function. In doing so, “examining attorneys must also consider whether the specimen of use shows the Generic.com term being used solely as a website address and not in the trademark or service mark manner. If so, a refusal on the ground that the proposed mark fails to function as a trademark or service mark is appropriate.”

Finally, the Court in Booking.com recognized that registered Generic.com terms may be subject to a narrower scope of trademark protection. The Court noted that “[w]hen a mark incorporates generic or highly descriptive components, consumers are less likely to think that other uses of the common element emanate from the mark’s owner.” As such, examining attorneys may take this into consideration determining whether a prior registration for a Generic.com term that contains the same generic or highly descriptive terms that appear in a proposed mark should be cited under Trademark Act Section 2(d). As always, a case must be considered on its own merits, with consideration given to all relevant likelihood of confusion factors.

Read Examination Guide 3-20 here.

USPTO Announces New Trademark and TTAB Fee Changes Effective January 2, 2021

The United States Patent and Trademark Office (USPTO) protects consumers and provides benefits to businesses by effectively and efficiently carrying out the trademark laws of the United States. After considering the state of the U.S. economy, the operational needs of the agency, and the comments and advice received from the public during the 45-day comment period, the USPTO is setting or adjusting certain trademark fees. The changes are detailed in the USPTO’s Final Rule, effective January 2, 2021.

The changes will allow the USPTO to continue to recover the prospective aggregate costs of strategic and operational trademark and Trademark Trial and Appeal Board (TTAB) goals. These changes will further USPTO strategic objectives by better aligning fees with costs, protecting the integrity of the trademark register, improving the efficiency of agency processes, and ensuring financial sustainability to facilitate effective trademark operations. The changes include increases in trademark application filing fees, post-registration fees, petition fees, a NEW letter of protest fee, and TTAB fees. The main changes are shown below, see the Final Rule for more information and details.

Application and Application-Related Fees

  • TEAS Standard: $350 per class (up from $275 per class)
  • TEAS PLUS: $250 per class (up from $225 per class)
  • Processing fee for failing to meet TEAS Plus requirements: $100 per class (down from $125 per class)

Post-Registration Fees

  • Section 8 or 71 declaration filed through TEAS: $225 per class (up from $125 per class)
  • NEW FEE for deleting goods, services, and/or classes from a registration after submitting a section 8 or 71 declaration, but before the declaration is accepted: $250 per class if filed through TEAS
  • No fee if you electronically file a section 7 request to amend your registration before submitting a section 8 or 71 declaration and only delete goods, services, and/or classes in the request

Petition to the Director and Letter of Protest Fees

  • Petition to the Director filed through TEAS: $250 (up from $100)
  • Petition to revive an abandoned application filed through TEAS: $150 (up from $100)
  • NEW FEE for letter of protest: $50 per application

TTAB Fees

  • Petition to cancel filed through ESTTA: $600 per class (up from $400 per class)
  • Notice of opposition filed through ESTTA: $600 per class (up from $400 per class)
  • Initial 90-day extension requests for filing a notice of opposition, or second 60-day extension requests for filing a notice of opposition, filed through ESTTA: $200 per application (up from $100 per application)
  • Final 60-day extension request for filing a notice of opposition, filed through ESTTA: $400 per application (up from $200)
  • Ex parte appeal filed through ESTTA: $225 per class (up from $200 per class)
  • NEW FEE for second, and subsequent, requests for an extension of time to file an appeal brief in an ex parte appeal filed through ESTTA: $100 per application
  • NEW FEE for appeal briefs in an ex parte appeal filed through ESTTA: $200 per class
  • NEW FEE for requests for oral hearings: $500 per proceeding
  •  *The USPTO is implementing partial refunds for petitions to cancel in default judgments if the cancellation involves only a nonuse or abandonment claim, the defendant didn’t appear, and there were no filings other than the petition to cancel.

See also Summary of FY 2021 Final Trademark Fee Rule 

Game Time: LeBron James v. Carnival’s “King James” Trademark Application

On November 18, LeBron James, the famous professional Basketball legend who is a key star player for the LA Lakers (and previously the Cleavland Caveliers and Miami Heat), filed a Notice of Opposition at the USPTO Trademark Trial and Appeal Board against Carnival’s “KING JAMES” mark.

 

Why would LeBron James file this opposition for a mark used in connection with “cruise ship services” and filed last year?  Perhaps because the mark is also in connection with Class 41 services: “providing sports facilities; organizing of sports competitions and sports events; providing facilities for recreational activities; . . . providing facilities for recreation” and Class 35 identification: “sport bags, gym bags, sports bags, . . . gymnastics and sporting articles.”  See U.S. Trademark Application No. 88/588,812. 

 

LeBron James’s Complaint has two causes of actions: (1) “False Suggestion of Connection with LeBron James” and (2) “Trademark Consist of a Name Identifying a Living Individual.”  LeBron James alleges that “”King James” has been a well-known nickname of LeBron James for many years, well preceding the date Applicant filed its application. The media and basketball fans consistently refer to LeBron James as “King James”, and LeBron James’ Twitter handle is actually @KingJames. King James has therefore become a popular nickname of LeBron James, and is used interchangeably with LeBron Jame.”  See Opposition No. 91266024 [TTABVUE 1].  It is worth noting that LeBron James does not currently hold a U.S. Trademark Registration for “KING JAMES.” 

On November 26, Carnival withdrew its Application for “KING JAMES” “with prejudice.” This means that Carnival will not be allowed to refile an application for the mark “KING JAMES” in the future.  See Opposition No. 91266024 [TTABVUE 4]. 

USPTO Requests Public Comment for a Sovereign Immunity Study

On January 22, 2021, the U.S. Patent and Trademark Office published a Request for Information (RFI) that is an extension of a previous RFI issued in November 2020. The notice states the following:

The USPTO is undertaking a study of the extent to which patent or trademarks rights holders are experiencing infringement by state entities without adequate remedies under state law, and the extent to which such infringements appear to be based on intentional or reckless conduct.

All members of the public are welcome to submit comments. Instructions for how to submit comments through the Federal eRulemaking Portal can be found in the RFI, which is available at  https://www.federalregister.gov/documents/2021/01/22/2021-01305/sovereign-immunity-study.

Note that all comments must be submitted on or before February 22, 2021.