Recent Developments on Disgorgement Damages

By F. Michael Speed, Jr., Ph.D., Partner, Standley Law Group LLP

Disgorgement, a remedy available in some intellectual property cases, was recently highlighted in two cases from the United States Supreme Court, Romag Fasteners, Inc. v. Fossil, Inc., 590 U.S.___, 206 L.Ed. 2d 672 (2020) and from the Federal Circuit Court of Appeals, Tex. Advanced Optoelectronic Sols., Inc. v. Renesas Elecs. Am., Inc., 895 F.3d 1304 (Fed. Cir. 2018). Those cases affirmed that disgorgement damages are to be decided, not by a jury, but rather the judge. The Romag case further resolved a split in the Circuits that disgorgement in trademark cases may be awarded even in the absence of willful infringement.

This article will address the ramifications of those two decisions and how clients should view cases where disgorgement is a potential remedy.

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Romag Fasteners: The Supreme Court Set to Address Important Circuit Split in Trademark Law

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

It is often the case that the profits earned by a defendant from selling a product which infringes upon the trademark of another dwarf the plaintiff’s actual damages. You would therefore be hard-pressed to find an issue more important to forum selection in a trademark infringement suit than whether a successful plaintiff must prove willful infringement as a prerequisite to recovering the defendant’s profits. There is presently a six-to-six split amongst the circuits regarding whether willfulness must be shown, but the United States Supreme Court is set to resolve that split in the case of Romag Fasteners v. Fossil, No. 18-1233 (2019).

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Frequently Asked Questions (FAQs) by New Inventors Seeking Patent Protection.

By James L. Kwak, Partner, Standley Law Group LLP

Standley Law Group LLP receives many calls each month from inventors interested in seeking patent protection for their new ideas. Many of these callers have never applied for a patent and they have many questions about the process. The following FAQs and responses answer many of the questions first-time inventors have.

1. What are the ways I can protect my invention?

Generally, the ways to protect an invention are to: 1) file for a patent; or, 2) keep it as a trade secret. In some situations, a trade secret is not an option because the product will be in the public domain or it is easily reverse engineered. In other words, trade secrets only protect ideas that can be maintained in secrecy (e.g., a recipe, manufacturing process, etc.) Trade secret protection, however does not protect against the independent development of the invention by others. Patents do protect against any unauthorized use of the invention, whether the infringer copied the invention or independently developed it. For this reason, patents are generally considered the best way to protect new inventions.

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Software Patents: The USPTO’s Proposal for Navigating the Post-Alice Waters

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

Since the Supreme Court’s 2014 decision in Alice Corp. v. CLS Bank, patent applicants have been left wondering how far down the rabbit hole goes. The Alice decision left applicants with few guideposts for evaluating whether their software-related inventions were patent eligible. These days, such “subject matter eligibility” challenges are becoming increasingly more common. The ultimate validity of software related patents remains a complicated matter which is difficult to predict with a high degree of certainty. However, over the past year the U.S. Patent and Trademark Office (“USPTO”) has released new guidelines and related examples which increase the likelihood of receiving an issued patent for such software related inventions and provided greater certainty to applicants regarding how their software related inventions are likely to be treated at the USPTO.

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Increase In Unsolicited Communications Target Trademark Owners

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

Information associated with U.S. federal trademark registrations and applications is a matter of public record. Anyone with internet access can view the files on the United States Patent and Trademark Office (“USPTO”) website and obtain contact information associated with the owner of an application or registration. In the past few years the number of unsolicited communications and scams targeting trademark owners using information contained in USPTO public files has noticeably increased.

Typically, trademark owners receive unsolicited correspondence in the mail or via email at the addresses listed in the public files related to their trademark registration or application. One of the most common types of unsolicited communication is a letter to the trademark owner seeking payment in order to put the mark on a private “registry” or “register.” Rest assured that if you have received a U.S. trademark registration your mark is already on one of two public registers of trademarks maintained by the USPTO: The Principal and Supplemental Registers. These are the only two registers maintained by the USPTO, and there is no need to put your U.S. mark on a private register maintained by someone other than the U.S. federal government.

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