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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.

Upcoming USPTO Fee Changes

A number of patent fee changes will go in effect January 1, 2014.  Notably, the issue fees of all applications will decrease dramatically. Small and micro entity fees will now be available for a number of PCT fees. The assignment recordation fee has also been eliminated if filing electronically.

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Copyrighted literature fundamental in Patent Applications declares the United States Patent and Trademark Office

The United States Patent and Trademark Office (USPTO) has declared that copyrighted materials are crucial to the Patent System and should not be threatened as copyright infringement. These remarks come in at an opportune time as the USPTO sought to intervene in a copyright infringement suit against Defendant McDonnell Boehnen Hubert & Berghoff LLP, whose patent prosecution attorneys have been sued by Plaintiff Publishers for using their copyrighted material in  patent applications.

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USPTO Issues Guide For Failure-to-Function Refusal

When applying for trademark/service mark registration with the U.S. Patent and Trademark Office (USPTO), an examining attorney reviews the application to determine whether it complies with applicable statutes and rules. If there are any substantive, technical, or procedural deficiencies, the examining attorney will likely issue an Office Action letter explaining any of these refusals.  One of these refusals can be based on the proposed mark failing to function as a trademark because the proposed mark merely communicates information about the goods/services, uses widely used commonplace, social, political, or religious messages, or directly quotes passages or citations from religious texts. Some examples include: “I DC” for clothing items; “ONCE A MARINE, ALWAYS A MARINE” for various clothing items; “BRAND NAMES FOR LESS” for retail store services; and “PROUDLY MADE IN THE USA” for electric shavers.  

The U.S. Patent and Trademark Office (USPTO) recently issued a guide for aiding in the determination of whether a proposed mark functions as mark.  The guide creates categories for types of matter that may be considered merely informational, discusses when an examining attorney must refuse registration or require a disclaimer, provides applicant response options, and illustrates case law examples. For example, under applicant response options, should the applicant receive this type of refusal, the applicant must show that the public perception of the proposed mark is that of a source indicator.  Evidence of the applicant’s use as a mark or exclusive use in the relevant marketplace for the goods/services under the mark can be supportive towards overcoming this refusal.

TTAB Initiates Expedited Cancellation Pilot Program

According to random audits by the United States Patent and Trademark Office (USPTO), over half of active trademark and service mark registrations include some goods or services that are not actually being used in commerce. Registrations with goods or services not in use may block mark owners from registering their own marks that are in use. As part of a response to this concern, the Trademark Trial and Appeal Board (TTAB) is piloting a program for cancellation proceedings limited to abandonment and/or nonuse claims with no counterclaims.

The program implements a procedure for addressing registrations or classes not use, which can save petitioners time and money. Click here for more information on this pilot program from the TTAB. A recent precedential case that was part of the pilot program also provides further insight, TV Azteca, S.A.B. de C.V. v. Jeffrey E. Martin, 128 U.S.P.Q.2d 1786 (TTAB 2018).

U.S. Patent and Trademark Office Names New Director

The United States Patent and Trademark Office has appointed a former Google executive as its new Director.  Michelle K. Lee will take over in January 2014 as Deputy Under Secretary of Commerce for Intellectual Property and Deputy Director of the U.S. Patent and Trademark Office (USPTO) after serving as head of the USPTO’s Silicon Valley satellite office.  Lee replaces former USPTO Director David Kappos, who was a longtime IBM executive prior to his service as Director. 

For the full USPTO press release, click here.

USPTO Cites Progress with Pro Bono Patent Programs

Under Section 32 of the Leahy-Smith America Invents Act (AIA) which became law in 2011, the USPTO is required to work with and support intellectual property law associations across the country in the establishment of pro bono programs designed to assist “financially under-resourced independent inventors and small businesses.”  In keeping with its obligations, the United States Patent and Trademark Office (USPTO) has announced a new charter agreement placing the burgeoning regional pro bono efforts in the hands of a newly-formed central advisory council. Specifically, the AIA Pro Bono Advisory Council has been formed to assist existing regional programs and offer assistance to new programs so that they can operate under a central framework.

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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.