Proposed U.S. Trademark Application Rule Changes

By Stephen L. Grant, Senior Attorney, Standley Law Group LLP

As of 3 August 2019, the U.S. Trademark Office will have new rules in place regarding the representation of trademark applicants, registrants and parties in Trademark Office proceedings. If the applicant, registrant or party is not domiciled in the United States, an attorney licensed to practice in the United States must be appointed for representation. While U.S.-based parties are strongly encouraged to have an attorney licensed in the U.S. to represent them, it will not be required.

Between Fiscal Year 2015 (1 October 2014 to 30 September 2015) and Fiscal Year 2017 (1 October 2017 to 30 September 2017), total annual trademark applications in the U.S. Trademark Office increased by 64,336 applications. This is a 17% increase in annual applications. By itself, this increase should not be a concern, and it speaks well for market conditions and the perceived value of the U.S. trademark registration system. The unexpected statistic is the rapid increase in non-U.S. applications. Almost 70% of the increase in annual filings were by non-U.S. applicants.

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Baseball, Basketball, and Beer In The News

By Jeffrey C. Norris, Partner, Standley Law Group LLP

As a Cincinnati Reds fan, I took notice of the Trademark Office rejecting a trademark application for CUBNOXIOUS on May 3, 2019. Ronald Mark Huber (Applicant) had filed a trademark application regarding his intent to use CUBNOXIOUS for shirts. The examining attorney did not initially find any likelihood of confusion with any other marks, and the application proceeded to the publication period, which allows for the public to oppose the registration of the mark. The Chicago Cubs Baseball Club, LLC, which owns the trademarks related to the Chicago Cubs, opposed the application.

For a first opposition ground, the Chicago Cubs Baseball Club, LLC (Opposer) alleged that Applicant did not have a bona fide intent to use the mark in commerce when he filed the application. The Appeal Board found that Applicant did not produce satisfactory evidence to show bona fide intent to use the mark at the time of filing, and that the evidence instead suggested that the application was filed merely to reserve a right for potential future use of the mark, which still had not been made. The Appeal Board therefore determined that the application was void ab initio.

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It’s Your Name, but that Doesn’t Mean it can or should be the Trademark for Your Business…

By Melissa A. McCurdy, Partner, Standley Law Group LLP

A common misconception regarding U.S. trademark law is that a person has a natural right to use his or her family name (surname) in conjunction with offering goods or services in commerce. The general rule is that surnames cannot be registered as trademarks. See Lanham Act, Section 2(e)(4). However, this rule can be overcome. To determine whether a surname should be federally registered as a trademark, and hence protectable as such, the U.S. Trademark Office looks at various factors to determine whether the mark will be perceived as predominantly a “surname”, including whether the proposed mark is a common or a rare surname, the latter favoring registration, and whether the proposed mark has any other recognized meanings other than a surname (if yes, this tips in favor of registration).

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The CAFC Finds That User Interfaces May be Patent Eligible

By Adam J. Smith, Associate Attorney, Standley Law Group LLP

Breathing new life into the § 101 analysis post-Alice , the Court of Appeals for the Federal Circuit (“CAFC”) found claims directed to a user interface to be patent eligible in Core Wireless Licensing S.A.R.L., v. LG Electronics, Inc., LG Electronics Mobilecomm U.S.A., Inc., Case No 2016-2684, 2017-1922 (Decided January 25, 2018).

In Core Wireless, the Applicant’s claims were directed to an improved interface for a mobile electronic device which allowed a user to quickly “drill down” into specific applications and data by presenting a summary window with a limited list of common functions and commonly accessed data for immediate access from the main menu. The CAFC found this invention to solve the common problem of how to most efficiently provide access to frequently used applications, as well as navigate otherwise complex menus and voluminous data indexes. The CAFC noted that this problem was particularly apparent in the context of mobile devices, which typically have a single small screen that limit the amount of information which may be presented to a user.

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Sixth Circuit Finds No Likelihood of Confusion in Jewelry Dispute

By Beverly A. Marsh, Partner, Standley Law Group LLP

The Sixth Circuit recently presided over a dispute between Artistry, Ltd. (“Artistry”), a jewelry wholesaler, and Sterling Jewelers (“Sterling”), the largest specialty jewelry retailer in the country, over the use of “Artistry.” See Sterling Jewelers, Inc. v. Artistry Ltd., Appeal No. 17-4132 (Decided July 24, 2018). Sterling owns roughly 1,300 jewelry stores, including Kay Jewelers and Jared. Artistry accused Sterling of trademark infringement when Kay Jewelers began marketing a line of jewelry under the name “Artistry Diamond Collection.” Artistry never registered a trademark for its name, whereas Sterling registered several of its “Artistry Diamond Collection” marks with the United States Patent and Trademark Office, including ARTISTRY DIAMONDS, ARTISTRY BLUE DIAMONDS, and ARTISTRY BLACK DIAMONDS. Artistry asked Sterling to stop using “Artistry” in Sterling’s marks and filed a petition to cancel Sterling’s trademark registrations.

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