Tag: Trademark Prosecution

What Is Failure to Function?

Post author By Austen Zuege

Trademark applications are sometimes refused for a failure to function. What is failure to function, and what does a failure to function as a trademark refusal mean? This article addresses the relevant requirements for U.S. federal trademark registrations, how to respond to such a refusal, and introduces a few related concepts.

The Function of Trademarks

Trademarks (and service marks) are used to identify the source of goods and services. Put another way, the basic purpose of trademarks is allow consumers to tell apart goods (or services) originating from different sources. Take any commodity—like a car, pen, or frying pan. Branding these with a trademark allows consumers to understand which ones original from company A rather than company B. This allows consumers to rely on branding as an indication of quality, and to avoid counterfeits or fakes that may be of unreliable quality.

The U.S. federal trademark laws, often referred to as the Lanham Act, actually include explicit definitions of trademarks (and service marks). These definitions emphasize that trademarks are indicators of source that distinguish goods from those made or sold by others.

“The term ‘trademark’ includes any word, name, symbol, or device, or any combination thereof— (1) used by a person, or (2) [constructively used by filing an intent-to-use application], to identify and distinguish his or her goods, including a unique product, from those manufactured or sold by others and to indicate the source of the goods, even if that source is unknown.”
15 U.S.C. § 1127

Context and Form of Use Matter

In order for something to actually function as an indicator of source (that is, as a trademark), it has to actually be used in that sort of way. That means context and the form of use matter. And these are things are considered from the standpoint of consumer perception.

For instance, the prominence and precise location of a mark on goods or their packaging is important. A phrase buried in the “fine print” on an insert inside a package, but not visible to consumers when considering buying it does not function as a trademark. But a unique and distinctive logo that consistently appears on the front of the same package is likely to be recognized by consumers as a trademark that indicates the source of the goods.

graphic of example trademark specimens of shirts, with one on left showing a branded tag inside the collar and the one one the right shoing an ornamental graphic on the center front of the shirt — On the left, a tag inside the shirt collar is branded with the trademark EXAMPLE. On the right, the stylized wording “EXAMPLE!” appears in an ornamental way across the center front of the shirt.

A common issue is use of things on clothing. In some locations, these thing would be perceived as indicating the source. This includes distinctive branding on the tag inside shirt or attached label. Or sometimes there are conventions like having polo or tennis shirts branded with a logo that appears on a pocket or other location that is recognized by consumers as indicating the source of the shirt. But something on clothing that is merely ornamentation would generally not be perceived as an indication of source and thus fail to function as a trademark. This can arise, for instance, for merely background designs and shapes. These considerations are not limited to clothing either.

Content Matters

The nature of the content of an alleged trademark matters a lot too. Not every word, name, phrase, symbol or design, or combination of such things that appears on a product functions as a trademark. And mere intent that it function as a trademark is not enough in and of itself to make it a trademark. Merely informational matter fails to function as a mark to indicate source and thus is not registrable. That is because consumers would perceive such information matter as merely conveying general information about the goods or services or an informational message, and not as a means to identify and distinguish the applicant’s goods or services from those of others.

Common examples of things that fail to function as trademarks include: (a) general information about the goods or services that does no more than inform the public with reasonable accuracy what is being offered, and including highly laudatory claims of superiority (“best”, “greatest”, etc.); (b) a common phrase or message that would ordinarily be used in advertising or in the relevant industry, or that consumers are accustomed to seeing used in everyday speech by a variety of sources; or (c) something that primarily is or identifies the product itself rather than something that identifies the source of the product.

General Information

What does or does not constitute mere “general information” about goods/services is highly contextual. So it also relates to prominence and location of use, as discussed above; to function as a trademark such usage should stand out from merely information text in some way. Common examples of things that fail to function as trademarks are mere ornamentation, the title of a single work (as opposed to a series), or the name of an artist or author.

Mere model numbers, grade designations, and the like can also be merely information in nature. These depend on context too, including placement and prominence. For instance, the USPTO considers some model numbers and grade designations to be dual-purpose, serving as both a model or grade designation and a trademark. Similar considerations apply to so-called universal symbols, like the recycling symbol with arrows forming a triangle.

For instance, if a product package said “this end up”, most consumers would understand that as merely being an instruction for how to handle the package without damaging the goods inside, and not a trademark indicating the source of the goods. That phrase does not describe any quality or characteristic of the goods inside. Even so, consumers would still not see it as branding. The same could be said for many types of warning labels, address indications, prices, and all sorts of other information that accompanies the sale of goods and services.

In a notable case, two designations for crabmeat (shown below), each containing both stylized wording and graphical design elements, were each refused registration for failure to function. While sometimes the addition of stylization and/or graphical elements can provide sufficient distinctiveness to otherwise non-distinctive wording, those non-textual elements were insufficient here.

Image of applied-for designation (alleged mark) in Ser. No. 87/405,211: ALL NATURAL 100% REAL CALLINECTES CRAB GOURMET CRABMEAT PASTEURIZED, and design (including realistic image of a crab) — Application Ser. Nos. 87/405,211 (left) and 87/405,233 (right)

Image of applied-for designation (alleged mark) in Ser. No. 87/405,233: ALL NATURAL 100% REAL CALLINECTES CRAB FROM NORTH AMERICA GOURMET CRABMEAT PASTEURIZED and design (including realistic image of a crab) — Application Ser. Nos. 87/405,211 (left) and 87/405,233 (right)

The wording was found to be merely informational terminology commonly used in the relevant trade/industry to denote the purity, quality, ingredients, and, for one of them, also the geographic origin. The minimally stylized font created no distinct commercial impression, nor did a simple geometric (circle) shape, which consumers would perceive as a background design or carrier to enclosed wording rather than as a separable design element with trademark significance. The image of a crab was also insufficiently distinctive because it was similar to, or reinforcement of, the meaning of the accompanying wording, and simply informed prospective consumers that the associated product is crabmeat.

Sometimes this relates to descriptiveness too. In one example case, THE BEST BEER IN AMERICA was found to be so highly laudatory and descriptive of the qualities of its product—beer—that the slogan did not and could not function as a trademark. Situations like this involve self-lauditory terms that are normally considered descriptive, and typically involve slogans. But to give one user exclusive rights would be ridiculous. In this sense, general information is incapable of acquiring secondary meaning and thus incapable of functioning as a trademark. This makes sense because all competitors want and deserve the ability to use common lauditory terms and slogans and consumers are unlikely to see them as source-indicators.

But this goes beyond self-lauditory terms. In another case, LITE was incapable of functioning as a trademark for vegetable oil foods and margarine because it merely indicated that the product contains less than the usual amount of some element as with so many other products (in yet another case, both LIGHT and LITE were found generic for beer).

There are therefore two categories of general information. The first pertains to things slightly more removed from the qualities or characteristics of the goods or services, like instructions. The other relates to merely descriptive terms incapable of attaining secondary meaning.

Common Phrases or Messages

Common phrases or messages are interesting, because there are a large number of examples of people and companies seeking to improperly claim a monopoly over them through misuse of trademark law. The following are just a few examples common phrases and messages that failed to function as trademarks:

I ♥ DC for use on apparel and souvenirs
I LOVE YOU for bracelets
EVERBODY VS RACISM for tote bags; t-shirts, hoodies as clothing, tops as clothing, bottoms as clothing, and head wear; and promoting public interest and awareness of the need for racial reconciliation and encouraging people to know their neighbor and then affect change in their own sphere of influence
WHITE LIVES MATTER for jogging suits; shirts; sweatpants; sweatshirts; tee-shirts
NO MORE RINOS! (meaning “No More Republicans In Name Only”) for a variety of paper items, shirts, and novelty buttons
PROUDLY MADE IN THE USA for electric shavers
INVESTING IN AMERICAN JOBS for retail store services or promoting public awareness of goods made or assembled by American workers
FARM TO TABLE for wine
WHY PAY MORE! for supermarket services
LEGAL LANDMINES for business coaching services and education services in the field of business
40-0 for T-shirts and other sports-related apparel
AOP (an acronym for “appellation d’origine protégée,” which translates from French as “protected designation of origin”) for wine (note: this was not an application for a certification mark)

Although not (yet) the subject of a definitive court ruling, the sports-related message “threepeat” is currently the subject of at least one trademark registration for clothing. But that registration is highly dubious as being directed a widely-used message related to three-in-a-row sports championship victories. There are actually many examples of questionable assertions of trademark rights related to sports, politics, and other things that have not yet seen definitive court rulings, such as LET’S GET READY TO RUMBLE, MAKE AMERICA GREAT AGAIN, and TRUMP TOO SMALL. And both TACO TUESDAY and TACO TUESDAY were voluntarily surrendered without final court rulings.

Aesthetic Ornamentation

Although not specifically called out as a separate category by the USPTO, some alleged trademarks may also have purely aesthetic ornamental value that fails to function as a trademark. This is to say marks without any words may not convey “information” or a “common phrase or message” but still be ornamental. This most often arises with things like clothing designs and alleged trade dress rights, and to some extent overlaps with the concept of aesthetic functionality. But this can include dubious alleged trademark rights in the color red on shoes (reversed on appeal) and three stripes on clothing, for example.

Potential Exceptions

If something acquires distinctiveness through secondary meaning, an otherwise unprotectable mark can become protectable under trademark law. This possibility first arose with the expansion of trademark law in the mid-Twentieth Century (but such things were not widely considered protectable before then).

There is also a controversial possible exception to failure to function problems for so-called “affinity” marks or “secondary source” usage. The U.S. Patent & Trademark Office (USPTO) currently accepts evidence of these things to potentially overcome failure to function refusals. However, this USPTO policy is not supported by any significant court decisions. Indeed, in a case challenging the legal foundation of that policy, a judge commented that even though a multibillion-dollar industry has grown up around these practices, “that a house is large is of little matter if it’s been built on sand.”

The weirdest exception is for the olympics. There is a separate U.S. law (35 U.S.C. § 220506) that gives the olympic committee exclusive rights broader than normal trademark law in the emblem consisting of five (5) interlocking rings and the words “Olympic”, “Olympiad”, “Citius Altius Fortius”, “Paralympic”, “Paralympiad”, “Pan-American”, “Parapan American”, “America Espirito Sport Fraternite”, or any combination of those words. This law was challenged but upheld by a divided Supreme Court, with the dissent pointing out how this law eliminates defenses from regular trademark law that are significant to the constitutionality of federal trademark law. While normally trademark law does not provide rights in gross, that is not the case for the olympics.

How to Overcome a Failure-to-Function Refusal

Overcoming a failure-to-function refusal of a trademark application often requires providing evidence of consumer perception that the applied-for mark actually does function as a trademark, or establishing secondary meaning. Of course, these will only be realistic possibilities if the mark actually does function as a trademark. While occasionally it might be possible to respond to a refusal with mere argument, without submitting evidence, most of the time arguments will require corroborating evidence to be successful. Such evidence might be a substitute specimen of use or evidence of the impression the matter makes on the relevant public (such as survey results, internet evidence, etc.).

In the broader sense, having trademark rights in something requires actually using the mark as a trademark. This means making efforts to engage in proper usage and avoid improper use. If that is done, then it should be possible to gather evidence to support an argument that there is trademark usage involved. But it will not be possible to generate evidence of trademark use when something does not function as a trademark and is not or would not be considered a trademark by consumers. For example, mere use of the “TM” or “SM” symbol cannot transform an unregistrable designation into a registrable mark. And, importantly, evidence of function as a trademark must outweigh evidence of widespread non-trademark usage.

Another approach is to amend an application to add limitations regarding the relevant consumers, or delete certain goods/services. If the identification of goods/services is limited to only particular consumers, then the perception of those specific consumers needs to be considered. The perception of other consumers might be irrelevant. This might exclude or diminish the weight of unfavorable evidence of a failure to function.

Limits

When alleged trademark rights are asserted against another party, there may be defenses that arise related to a failure of the asserted designation to function as a trademark, or simply other defenses that protect the ability to make use of that designation under certain circumstances.

Descriptive or nominative fair use can apply to permit usage by others, even when there might be secondary meaning. Fair use is a limit on trademark rights even when there is a registration, and even when that registration is incontestable (see 15 U.S.C. §§ 1115(b)(4); see also § 1125(c)(3)(A)). This is a potential defense against the assertion of a dubious trademark registration that does not appear to function as a trademark, or against infringement allegations that relate to non-trademark usage by another party.

Genericness might also be a defense and a ground for cancellation of a registration. For instance, there are cases where courts have held that even adjectives can be generic, like the LITE beer case cited above. Or, in another case, BRICK OVEN was found to be generic for frozen pizzas. In these situations, a distinction is sometimes made between terms that were widely used before adoption and those that were coined but later became generic. But this does not make allegedly coined terms invulnerable to genericness—or preclude questioning as to whether they were truly coined/fanciful terms to begin with.

In district court litigation or TTAB proceedings, other defenses or challenges to an asserted registration or unregistered mark might also be available, like abandonment, unclean hands (or other equitable doctrines), etc. However, most cases involving failure to function are treated as evidentiary ones involving the sufficiency of specimens of use and there have not yet been definitive court rulings on failure to function arguments and defenses after a registration has been granted.

Other Related Concepts

In general, unless a patent or copyright protects an item, it will be subject to copying. Trademark law cannot be used to exclude competitors from the market. Accordingly, for alleged trade dress rights in product configuration, there is never inherent distinctiveness, and secondary meaning and acquired distinctiveness must be established. But there may be situations in which secondary meaning can never be acquired because the product configuration is incapable of functioning as a trademark to identify source. So, although these other limits are often discussed in public policy terms, they can also been seen as concern about failure to function.

In one case, involving the assertion of (unregistered) trademark false designation of origin rights in a documentary television series for which copyright had expired, the television series materials could be copied without liability. This was a clear case of improperly attempting to use trademark law to undermine fundamental aspects of copyright law. However, the court did not address how secondary meaning might arise, if at all, in this situation.

The U.S. trademark laws also explicitly prohibit trademark rights in things that are functional rather than source identifying. That places purely functional aspects of products outside the scope of trademark law. For example, in one case the configuration of partly chocolate-covered cookie sticks was found to be purely functional and unprotectable under trademark law as trade dress.

But this gets more difficult to evaluate when dealing with something aesthetic like copyrightable material, including aspects of entertainment performances that the public would see as the service/thing itself. For instance, one court has said in a different case that trademark law does not protect the content of a creative work of artistic expression as a trademark for itself. The court declined to accept an argument that was tantamount to saying that a product itself—in that case, a song—can serve as its own trademark. The different, source-identifying function of trademarks requires that a trademark in a musical composition not be coextensive with the (copyrightable) music itself. The court’s reasoning very much reflects failure-to-function concerns. Although, curiously, the court noted the defendant’s concession that the song title had acquired secondary meaning, a position that is rejected by the USPTO for single-work titles, due to a failure to function.

So-called aesthetic functionality limits trademark rights. However, that limit has, at times, been set out somewhat circularly as depending on whether the recognition of trademark rights would significantly hinder competition. But these assertions of trade dress or other trademark rights in things/works themselves are usually attempts to hinder competition rather than protect consumers from deception. This has led to rather arbitrary and subjective court decisions in this area, with variable and inconsistent outcomes.

Conclusion

From the examples given above, refusals for failure to function are an important check against overreaching and misuse of trademark law. Many of these examples relate to clothing and merchandising, in which an entity tries to improperly use trademark law to obtain a monopoly over widely used sentiments and slogans/taglines.

Failure to function issues tend to involve so-called “propertization” of trademarks. This moves away from the basis of trademarks in consumer protection. Instead, a failure to function is most typical when someone is trying to appropriate and “monetize” some existing sentiment for their own private benefit or trying to unfairly suppress competition.

In the hilarious TV series “The Office” (American version), there is an episode (season 7, episode 14) where small business entrepreneurs show up for a seminar organized by a paper salesman. One of the attendees explains his business idea as getting point-two cents from every phone call or online shipping order (without providing any benefit, simply taking a cut). One of the show’s regular characters tries not to grimace when hearing this ridiculous idea for a grift. But that scene encapsulates the way numerous entities have analogously tried to use trademark law as a “get rich quick” scheme to monopolize common slogans and general information for their own benefit.

The best approach when branding products and services is to select a strong, distinctive mark in the first place, then consistently use that mark properly. When those things are done, failure-to-function refusals simply will not be an issue.

Austen Zuege is an attorney at law and registered U.S. patent attorney in Minneapolis whose practice encompasses patents, trademarks, copyrights, domain name cybersquatting, IP agreements and licensing, freedom-to-operate studies, client counseling, and IP litigation. If you have patent, trademark, or other IP issues, he can help.

Contact Austen

Tags Trademark Prosecution, Trademarks

Q&A Trademarks

How Can You Know if a Trademark Search is Reliable?

Post author By Austen Zuege

There are different situations where a trademark search is beneficial. And there are different types of searches with different levels of scope. But how can you know if a given trademark search is reliable? How thorough or extensive does search have to be? Are simple queries in online portals enough to rely on? This article will address those questions about what makes for a good trademark search.

Overview of Best Practices

Trademark searching is perhaps more art than science. There is no single approach suitable for all situations. But there are a number of factors that tend to make trademark searches better and more reliable in general. These include the following:

Accounts for applicable trademark laws in the relevant jurisdiction(s)
Encompasses variants and similar marks, and not limited to exact or identical matches
Looks beyond identical and overlapping goods and services to different but related goods/services
Uses reliable tools or databases with relevant content coverage
Results are coupled with a competent legal analysis

These factors are discussed further below. Although this article is not meant to be a tutorial on the mechanics of or strategies for performing trademark searches.

The Likelihood of Confusion Standard

Under U.S. trademark law, a likelihood of confusion standard is used. It applies when determining if a proposed mark is federally registrable. This is the standards trademark examiners apply to new trademark applications. Registration will be refused if there is a likelihood of confusion with a prior mark. It also generally applies when assessing potential infringement. Trademark infringement arises when there is a likelihood of consumer confusion, even if actual confusion has not occurred among customers.

This legal standard looks an multiple factors from the point of view of relevant consumers. There is no precise formula for how these factors are applied. But two factors tend to be most important. One is how similar (or dissimilar) two marks are, when considering the overall commercial impressions the proposed create. Another is how similar (or dissimilar) the goods and services are.

Importantly, the trademarks do not have to be identical to be similar enough to create a likelihood of consumer confusion. The goods and services can potentially differ as well. For instance, they might partially overlap or the goods and services might differ but still be considered related. There is no universal, bright-line rule for how close is too close, or what sorts of differences will sufficiently avoid potential confusion.

Legal standards in other countries may different. But most countries take a generally similar approach.

Simply Queries Are Often Not Enough

A reliable trademark search needs to be broad enough to capture different but similar marks. This includes things like alternate spellings, phonetic equivalents, transposition of words, different punctuation—like the difference between one word or two, with or without a hyphen—and even other words with similar meanings. Foreign-language translations or transliterations might also be considered, which can be particular useful when looking at foreign countries where other languages are common. Basically, the search needs to account for the fact that prior trademarks may be relevant to the likelihood of consumer confusion even though they differ in some way.

A few limited keyword searches in an Internet search engine or trademark database may not be sufficient. That is especially true if searching only for marks that are identical. For instance, if a search for a proposed brand name that includes the word “theater” omits prior marks using the alternate spelling “theatre” or intentional misspelling “theatr” it could miss something important. The same goes for portmanteau or compound word terms that incorporate words like “theater”.

Trademark searching also involves the difficult problem of trying to prove a negative. You can never be absolutely certain that nothing relevant is out there. If nothing appears it might mean nothing else exists, or it might simply mean you missed a relevant prior mark. A perfect search is impossible. Even a high quality search might miss a prior mark that someone else considers relevant. After all, there are some judgement calls involved with these fuzzy legal standards. But the goal is to use sufficiently robust and thorough searching methods. Getting “zero hits” or “no results” from a few cursory searches, based only on looking for exact matches in a limited coverage database, is often not adequate or reliable.

Using Online Portals

There are some free, open-access online portals that allow trademark searching. Some of these are provided by official trademark offices. Others are privately run by various companies. There are also proprietary databases that require paid subscriptions or other fees.

Many free “trademark availability” search engines are unreliable and misleading. For instance, queries in a free trademark availability search engine for the following proposed marks all said they were supposedly “available”:

THE CHEVROLET
COCA-COLA USA
SAMSUNG COMPANY
NIKE SHOES

Of course, none of these proposed marks are actually available for use, at least not if they create a likelihood of confusion with the famous brands they incorporate (or cause dilution). Simply adding an additional generic or highly descriptive term without changing the overall commercial impression is not enough to avoid confusion. Those minor differences from an existing mark generally do not mean that a proposed mark is available for use or registration. Any of these example marks would be refused registration. Their use would probably also result in legal problems.

Adequate Coverage

A trademark search also needs to encompass sources likely to contain the kind of trademark information that matters to your legal questions. There are many different trademark databases available. But there is no single comprehensive database of all worldwide trademark information searchable across all possible fields. It would be nice if there were. But every real-word tool or database has limits on its coverage. This even applies to general-purpose Internet search engines. For instance, there can be purely offline trademark uses that cannot be found online.

Reliable searching involves selecting the right resources to consult. This might mean paying for access to certain proprietary tools. Or it might mean searching in multiple databases or tools each having different coverage. Often the specific coverage of a given database can be confusing or not readily apparent.

Considerations for Graphical Logos and Non-Traditional Marks

Searching trademarks with prominent visual design components or stylization, especially logos without any wording, presents some unique challenges. The same applies to non-traditional marks like trade dress, colors, sounds, etc. There are tools that allow what amounts to a reverse image search of a logo. Those tool can be helpful. But they are not always completely reliable on their own. There are also design search codes or other classification systems for categorizing elements of trademarks other than wording. These codes or classifications offer a particularly helpful way to search for similar logos, visual design elements, and elements of non-traditional trademarks.

A Search Alone is Not a Legal Opinion

Simply searching for trademarks—and no more—tells you very little. It will at most give you a list of existing marks. But which of those matter? Which ones are distinguishable? Which ones are close enough to present problems? Was your search robust enough to have confidence that there actually are no problematic existing trademarks? To answer those questions you need a legal opinion. That means analyzing trademark search results from a legal perspective. It is recommended to have a knowledgeable attorney analyze search results and provide legal advice about registrability and/or any infringement risk.

Budgeting

There is definitely cost associated with a quality, reliable trademark search and accompanying legal analysis. Costs especially tend to increase when the scope of a search encompasses more geographic regions or jurisdictions. Selecting the cheapest option, or taking a free do-it-yourself approach, often does not result in the reliable results. Cheap searches and $99 fixed-fee “legal” services are not going to give you a reliable legal opinion or provide meaningful strategic guidance.

Small businesses frequently feel they cannot afford these costs. Skipping a search means you are taking you chances. It is like rolling the dice and hoping there are no obstacles or infringement risks lying in wait. Businesses often regret not clearing their branding before adopting it, or regret selecting a weak mark. Doing so might mean later facing large re-branding costs, limits on expansion of your brand, and/or a decreased business valuation. In a worst case scenario it might even destroy everything built-up in a business. So a good search (+ legal opinion) upfront can be a good value in the long run.

Contact Austen

Tags Freedom-to-Operate (FTO) & Clearance, Searching, Trademark Prosecution, Trademarks

Q&A Trademarks

How Should a Trademark Search Be Conducted?

Post author By Austen Zuege

What should a trademark search involve? How should a trademark search be conducted? These are questions about the scope and format of a trademark search. There are many different ways of performing trademark searches that vary in scope and thoroughness. Not all searches are equal. The right approach will depend on a number of factors including the purpose of the search and the type of legal questions the search is meant to address. The following is an overview of basic considerations about how to structure a trademark search to meet your needs.

Different Types of Searches

Sometimes trademark searches are grouped into different levels, with different pricing. A basic search is sometimes called a “knockout” search. These are usually the cheapest option. Names like “comprehensive” are applied to other types of searches that are more thorough (and more expensive). There are also special searches for various specific purposes, such as to look for evidence of relatedness of goods and services. But what differs between these different searches in terms of what you get? And which one is the right choice for your circumstances?

Knockout Searches

A knockout or preliminary search is usually the most basic and most limited in scope. It is typically limited to searching only registrations and pending applications in a particular jurisdiction. This means it will not capture unregistered uses of similar trademarks that may exist.

Also, a knockout search may be limited in terms of capturing variations. Trademarks do not need to be identical to create problems under the likelihood of confusion standard. The exact scope of knockout searches can vary. But often they will provide little or no identification of alternate spellings, phonetic equivalents, translations, distinct terms with a similar meaning, or the like. Yet prior trademarks that are not identical can still create a likelihood of confusion in some situations.

If a knockout search is all your budget permits, it may be better than nothing. But often a knockout search is often too limited to provide a lot of value. For example, for a trademark clearance or freedom-to-operate in the United States where unregistered “common law” trademark rights can exist, a knockout search is generally inadequate. And even for merely preliminary purposes some “bargain” searches may fall short. Quite frankly, cheap searches are not always reliable.

Special Searches

There can also be other types of trademark searches meant to address very particular questions. For instance, there can be situations during the examination of a trademark application or in connection with a lawsuit in which certain trademark searches are useful. These can include searches for evidence of relatedness of goods and services, by looking for usage of a single brand with different but “related” goods/services. Also, trademark-related searches might be performed to identify evidence of genericness or of descriptive meaning of the the words of a given mark.

Geographic Scope

Every trademark search should consider the particular jurisdictions of interest. That is because trademark rights are territorial. They exist only in in particular countries, states, or blocs (like the European Union). For example, there might be pre-existing trademark rights in one country but not another. A search for trademarks in one country will tell you little or nothing about trademark rights in other countries.

If new branding will be used in multiple countries or geographic regions, a trademark search (or series of searches) should encompass each and every one of them. Even if a trademark will not be used in other regions immediately, if expansion to them is likely or merely possible in the future it may help to search those countries too. This can allow evaluation of possibilities for later geographic expansion. This avoids being boxed-in and finding later expansion stymied.

For very substantial brands, with large advertising campaigns planned, it may also be worthwhile to search other jurisdictions to identify potential priority claims. This is because an international treaty may permit an application to be filed in a country of interest that claims priority to an application filed in another country up to six months earlier. In other words, this means searching in countries beyond those you plan to use your mark in. Although this sort of step is often skipped due to the effort and cost and the relative infrequency of such priority claims causing problems.

Which Types of Search Is Right for You?

The type or scope of searching that fits your needs will depend on the nature of the proposed use of a trademark and the particular legal questions you want to address. And your budget. But bear in mind that a search alone tells you little or nothing unless the search results are analyzed by knowledgeable trademark counsel. It is all too easy to misunderstand the significant of bare trademark search results if unfamiliar with trademark law. You need a legal opinion too. Running a few queries yourself in a trademark database and (supposedly) getting “no results” may only provide false confidence.

Another way to think about all this is to ask, “How difficult would it be to later re-brand later?” If the answer is “difficult”, then a broader and more thorough search and analysis is worthwhile. When you are not well positioned to pay legal fees to defend yourself against infringement allegations, or just the thought of having to do this later seems unpleasant, then a search is one way to try to reduce those risks upfront. These things point to doing more than a cursory knockout search. Yet a slogan or tagline might be easily dropped or changed in some situations, unlike a primary brand.

More limited searches are better suited to low-stakes situations. For instance, when you are only concerned with registrability in the short term, such as for a planned intent-to-use (ITU) trademark application, then a knockout search may be minimally adequate. During examination of new U.S. federal trademark applications, the U.S. Patent & Trademark Office (USPTO) only looks at prior federal registrations and pending applications. They do not search for unregistered “known marks”. So a knockout search is similar in scope to searching done by a trademark examiner. But a knockout search will usually not provide a very good picture of all possible oppositions or cancellations sought by others against your desired trademark registration.

Have a Backup or Alternate Mark In Mind

It is quite common for a trademark search to reveal a potential problem with a proposed mark. For that reason, it is often helpful to conduct searching against a list of multiple candidate trademarks. These could be ranked in preferential order. Having a list of multiple marks searched and then legally reviewed in parallel or in preferential sequence increases the chances that at least one of them will be available and registrable. This can be especially beneficial when clearing a mark planned for use in many different countries or regions.

Of course, working from a list of multiple candidate trademarks makes the most sense before you have committed to certain branding. That can be challenging for many businesses. There is a tendency to grow attached to desired branding. But the pain of giving up on a favorite only gets worse if you have to re-brand later because of a problem.

Caution: No Search is Perfect

No matter how thorough, no search can eliminate all risk when selecting and adopting a trademark. Searching is always imperfect and can only serve to minimize risks. Trademark rights in the United States arise primarily from use and not mere registration. So it is possible that someone is using the proposed mark (or a similar one) in connection with the same or similar goods and/or services, but that use may not be detected in the search. That could be because the prior user did not seek registration or a prior mark was not listed in any of the resources or databases that the searcher used.

Also, when it comes to the analysis of search results, there can be differences of opinion. A prior user or registrant noted in this search may object to use or registrations of a proposed mark. Such objections may be questionable or even baseless at times. That is sometimes called trademark bullying. Or there may be facts that influence the ultimate outcome of a dispute that the searcher or attorney was not aware of.

The main takeaway is that just because a search does not identify any problems does not mean that an infringement allegation or refusal of registration is impossible. The right search and a competent legal analysis can still be quite useful and valuable.

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Tags Freedom-to-Operate (FTO) & Clearance, Searching, Trademark Prosecution, Trademarks

Q&A Trademarks

Do I Need a Trademark Search?

Post author By Austen Zuege

When adopting branding, such as a brand name or logo, people sometimes wonder, “Do I need to conduct a trademark search?” Or, “Is this trademark available?” These questions can arise when considering filing a new trademark application. Or they can come up when adopting branding for new products or services being offered for sale. In either context, this question should be considered at some level. What follows is more detailed information about whether and when a trademark search is worthwhile. Another article covers how to structure a trademark search.

What a Trademark Search Can Tell You

Some brand names and logos are already taken by others. In fact, it is quite common that when you have a “great” branding idea someone else has already had the same idea or a similar one. A trademark search can help address either or both of the following questions:

Will proposed branding create a significant risk of infringing someone else’s existing trademark?
Will a given proposed trademark be registrable?

The first question is about trademark clearance or freedom-to-operate. It is about assess risk and trying to avoid infringement problems and disputes. The second question is about whether a given jurisdiction is likely to grant you a trademark registration. It is more about how protectable a proposed mark appears to be. Put another way, the second question can inform you about the scope of exclusivity potentially available under the proposed mark. But both questions are about trademark availability.

A single trademark search in a given jurisdiction can generally be used to analyze both of these questions. So one search should permit both legal questions to be addressed. But the scope and thoroughness of a search can vary.

What a Trademark Search Won’t Tell You

In the strict sense, simply searching for trademarks tells you very little. It will only produce a list of existing marks. But which of those matter? Which ones are distinguishable? Which ones are close enough to present problems? Also, simply obtaining a list of prior trademarks will not tell you whether a proposed new mark is distinctive enough to serve as a trademark. And a search alone will not address other strategic considerations involved in trying to register a particular trademark.

After obtaining search results, it is necessary to further analyze whatever comes up in a search from a legal perspective. Anyone who does not understand trademark law will struggle to properly interpret what is or is not a problem when it comes to infringement risk and obstacles to registration. Self-serving bias is a common issue too. When you have a great branding idea, you might be biased against the notion that someone else already has a trademark that presents an obstacle to your business plans. This can turn into a matter of unreasonably splitting hairs over illusory differences. Or it can lead to incorrectly disregarding inconvenient or disappointing search results.

It helps to have a knowledgeable and independent expert analyze search results and provide guidance about registrability and/or any infringement risk. This kind of legal analysis goes beyond searching alone.

Which Region or Regions?

Trademark searches should be considered for each relevant region. That is because trademark rights are territorial. They exist only in particular jurisdictions, that is, in particular countries, states, or blocs (like the European Union). For example, there might be pre-existing trademark rights in one country but not another. If new branding will be used in multiple countries, a trademark search (or series of searches) should encompass all of them.

Is a Search Legally Required?

In the United States, it is not required to perform a trademark search before applying to register a mark. So, it is possible to proceed without a search and take your chances. But it is a gamble.

But, on the other hand, investing considerable effort and resources into developing and advertising a brand only to find out later that it cannot be protected may lead to crushing disappointment. And it may result in wasted time and money. Having to rebrand later on after a problem arises is usually far more expensive than the cost of an initial search and analysis. On top of that, legal liability and even merely a cloud of uncertainty can have a terrible impact on a business, from disruption of daily operations to decreased valuation.

An early trademark search encourages adoption of a non-infringing and registrable mark from the start. The cost and burden to switch marks or re-brand generally increases over time. So even if a search is not mandated by law, obtain one along with a legal opinion still offer pragmatic benefits. Those steps can potentially avoid a lot of later headaches.

Didn’t I Already Take Care of This?

You still want a trademark search despite having registered a company or assumed name with a local government. The same goes for having already registered a domain name containing your trademark. The fact is that practically no screening is performed by the government or a domain registrar. They only care about such names having the slightest differences. Corporate filings and domain name registrations are accepted when there are only minor differences in terms of punctuation or a single different letter. That is not enough to avoid trademark problems. Trademark confusion and infringement (and/or cybersquatting) is still possible in those situations.

Small businesses often mistakenly believe that corporate and domain name filings insulate them from legal problems like trademark infringement. But they don’t.

When is a Search Needed?

In terms of timing, a trademark search should be performed before any new brand is adopted and used. In other words, the ideal time for a search is before you commit to a particular trademark and before you start actually using it. But searches can still be worthwhile later on. For instance, as usage changes to encompass different goods or services, or expands geographically, new issues might arise that call for a new or further trademark search. Special types of searches may also be useful during examination of a trademark application or in connection with a contentious proceeding.

Further, a trademark search is just snapshot at a given moment. Use of similar marks by others is constantly changing. Prior registrations are abandoned or cancelled, commercial usage changes, consumer perceptions evolve, and new brands are adopted by others. This means that trademark search results can go stale and lose relevance as time passes. Ideally, a trademark search should be performed close to when business and marketing decisions are made about the mark being searched. Old search results may not be reliable for a legal review much later in time.

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Tags Freedom-to-Operate (FTO) & Clearance, Searching, Trademark Prosecution, Trademarks

Patents Q&A Trademarks

What Is the Federal Circuit?

Post author By Austen Zuege

In the field of U.S. intellectual property (IP) law, there are often references to the Federal Circuit. What is the Federal Circuit? This brief article will explain it.

Overview

The United States Court of Appeals for the Federal Circuit, or “Federal Circuit” for short, is a U.S. Federal appeals court. It hears cases appealed from various places including U.S. federal district courts and certain Federal agencies including the U.S. Patent & Trademark Office (USPTO) and the International Trade Commission (ITC). It was created in 1982. It replaced and merged the prior U.S. Court of Customs and Patent Appeals and the appellate division of the U.S. Court of Claims, which no longer exist.

Jurisdiction

What makes the Federal Circuit rather unique is that it has exclusive subject matter jurisdiction for certain types of cases. (28 U.S.C. § 1295). In general, appeals in Federal cases are made to regional circuit courts. That is, federal appeals courts are mostly divided into geographic “circuits”. They hear appeals from lower (district) courts within their respective geographic areas. But, instead, the Federal Circuit hears appeals from any district court in the country relating to patents and certain other matters, as well as appeals from certain executive branch agencies.

Map of geographic boundaries of U.S. courts of appeals (and U.S. district courts)

tree graphic illustrating Federal Circuit jurisdiction

In particular, the Federal Circuit has exclusive appellate jurisdiction over all U.S. federal cases involving patents, plant variety protection, trademark registrations, government contracts, veterans’ benefits, public safety officers’ benefits, federal employees’ benefits, and various other types of cases. Appeals involving Trademark Trial & Appeal Board (TTAB) and Patent Trial & Appeal Board (PTAB) decisions and patent and trademark prosecution (that is, cases related to the examination and granting of patents and trademark registrations) all go to the Federal Circuit. There are some exceptions, however. Cases involving assignments of patents may go to a regional circuit court instead. Trademark infringement matters are appealed from district courts to regional circuits, not to the Federal Circuit.

Conclusion

Because of the number of patent and trademark cases it hears, and its exclusive jurisdiction over cases involving U.S. patent laws, the Federal Circuit is important to know about in order to understand IP law in the United States. Federal Circuit opinions and orders (i.e., decisions in individual cases) can be found here, or via proprietary case reporter publications and databases.

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Tags Litigation, Patent Infringement, Patent Prosecution, Patents, Trademark Prosecution

Articles

New and Upcoming Changes in U.S. Patent, Trademark, & Copyright Law for 2024

Post author By Austen Zuege

Important Developments

As 2024 begins, some recent and upcoming changes in practice at the U.S. Patent & Trademark Office (USPTO) for patent and trademark matters and at the U.S. Copyright Office for copyright matters merit attention, along with developments from U.S. courts pertaining to those areas of intellectual property (IP) law. (Click the preceding links to jump to desired content).

Patents

Non-DOCX filing format requirements postponed (yet again)

The deeply unpopular surcharge for U.S. non-provisional utility patent applications in a non-DOCX file format has been postponed yet again, until January 17, 2024. Although even when in effect this surcharge will not apply to PCT national phase entries, provisional applications, plant applications, or design applications. Furthermore, the USPTO has indefinitely extended a highly limited opportunity to file a back-up applicant-generated “Auxiliary PDF” version of an application filed in DOCX format, in order to potentially allow for later correction of USPTO-side conversion errors involving the DOCX version. These postponements and extensions are the result of many strong objections from U.S. patent practitioners and practitioner organizations.

It remains to be seen whether there will be further postponements or a larger change in USPTO policy about mandatory DOCX filings, which in general provides only a small clerical benefit to the USPTO while placing large burdens and costs on applicants.

Guidance for creating application documents (hopefully) compliant for USPTO DOCX filing is available here. But applicants with complex application content should consider the possibility of paying the non-DOCX official surcharge and filing applications in PDF format to avoid the risks associated with USPTO-generated errors in substantive application content.

Electronic patent “eGrants” now in place

On April 18, 2023, the USPTO began issuing an electronic PDF copies of patent “eGrants” as the official versions of granted patents. Continuing a long tradition, patent eGrants are issued on Tuesdays. As of December 2023, “ceremonial” paper copies were still being automatically sent as part of a transition period. The end date of that transition period, when paper copies will no longer be sent, has not been specified. Whenever the transition period does end, paper copies of patents can still be ordered from the USPTO for a small official fee (currently $25). However, ordered copies will either be a certified copy of the entire patent (which lacks the decorative color cover like eGrants and instead includes a certification cover page) or a “presentation” patent (which is a partial certified copy of only the front page of the patent, with a unique certification statement and special seal). Both of those differ from current “ceremonial” copies.

Of note, any color drawings in patents do appear in color in the new electronic patent eGrants. This potentially reduces the need to specially order color copies.

Further, the USPTO will also begin issuing certificates of correction electronically starting January 30, 2024. Paper hard copies of certificates of correction will not be mailed after that date, although they can still be specifically requested for a fee like other patent documents.

Massive official fee increases proposed, but implementation unclear

In April of 2023, the USPTO announced plans for significant official fee increases. Materials related to those efforts can be found here, including an Executive Summary of the key official patent fee increases proposed. If implemented, many fees would be increased by 25% and some by over 700%! And some wholly new fees are proposed. The Executive Summary should be consulted for more details because of the sweeping extent of the proposed fee schedule changes.

For example, the USPTO has proposed tiered fees for continuing applications (with large fees required if a continuing application is filed more than three or seven years after earliest parent’s filing date), new fees if the number of citations submitted with information disclosure statements (IDSs) exceed tiered thresholds, higher excess claim fees, more steeply increasing subsequent request for continued examination (RCE) fees, new fees for After-Final Consideration Pilot (AFCP) 2.0 requests, reinstating and increasing fees for assignment recordations submitted electronically, and enormous increases in design application fees. The design application fee increases are being driven by the prevalence of mostly foreign applicants filing expedited examination requests as micro entities, which has created a large backlog of non-expedited design applications.

While the USPTO currently has fee-setting authority “only to recover the aggregate estimated costs to the Office,” many of the proposals would appear to exceed that authority to try to shift or discourage certain actions by applicants.

At present, the USPTO has not made further announcements in response to comments about its patent fee proposals. Some changes to the initial proposals are certainly possible. But extremely large official patent fee increases are likely by January 2025. More official information should be available sometime in the first quarter of 2024.

Design patent 1 million issued and design patent bar created

In 2023 the USPTO issued design patent 1,000,000. Also, the USPTO authorized a design patent-specific bar for practitioners without scientific or engineering backgrounds to prosecute design cases. This new design patent bar does not restrict the ability of other patent practitioners to handle design applications. Regular patent practitioners with scientific or engineering backgrounds are still able to handle any and all types of patent applications, for utility, design, or plant matters. But practitioners admitted to the new design patent bar will not be able to handle utility or plant patent applications. Other developments in the courts related to design patent practice are discussed below.

Suggested figure for publication policy changed

Applicants were previously able to suggest a figure to appear on the front page of a pre-grant publication of a patent application, but the USPTO independently decided which figure to publish on the front page and sometimes chose a different one. That policy has changed. The USPTO now exclusively uses the drawing figure suggested by the applicant for the front page of the pre-grant publication when that suggestion is included on a compliant application data sheet (ADS) that is timely filed before the USPTO begins its process of publishing the application. Despite this change, it is still common (and often recommended) for applicants to allow the USPTO to select a figure for publication on the front page and not suggest one.

Changes to USPTO online systems

On November 15, 2023, the USPTO permanently retired its PAIR and EFS-Web systems. This leaves only the USPTO’s Patent Center for making electronic filings and retrieving file histories. Although the USPTO has said that Patent Center provides all the functionality of the retired systems, that is not accurate. For instance, without any formal announcement, the USPTO deactivated its First Office Action Estimator tool. In truth, that estimator tool had ceased to be accurate for some time. But applicants are now left with no mechanism to estimate the time until substantive examination begins. Patent Center has reduced functionality in numerous areas and practitioners have found it to be prone to bugs and usability problems, including a lack of capacity.

The USPTO has also announced a plan to “reform” the Electronic Trademark Assignment System (ETAS) and the Electronic Patent Assignment System (EPAS) into one cohesive and modernized system called the Intellectual Property Assignment System (IPAS). IPAS is slated to be available starting January 15, 2024 [UPDATE: the transition date was pushed back to February 5, 2024]. No further details are available at this time, so it is unclear how the new assignment system will differ or what the apparently integrated patent and trademark recordation interface will look like.

More U.S. patent filing information

Please also see the Guide to Foreign Priority Patent Filings in the USA for in-depth discussion of requirements for foreign applicants to file U.S. counterpart patent applications with a foreign priority claim. Additional basic information about patenting can be found in the Patent Basics guide.

Trademarks

Fee increases proposed

In May of 2023, the USPTO announced plans for official trademark fee increases. Materials related to those efforts can be found here, including an Executive Summary of the key official trademark fee increases proposed. If implemented, the naming convention and types of fees would change. For example, a typical trademark application would see at least a $100 fee increase. And, if custom identifications of goods/services are used rather than merely selecting ones from pre-approved descriptions from the Trademark ID Manual, then new “premium” surcharges of $200 per class would apply. This means that many (if not most) new trademark applications will see official filing fees increase by at least $300, and possibly more if there are multiple classes of goods/services. Somewhat similar fee structure changes and official fee increases would apply to Madrid Protocol extensions to the USA too. Various other fees will increase 10-66% or more, including a 400% increase in the fee for a letter of protest, for example.

At present, the USPTO has not made further announcements in response to comments about its trademark fee proposals. Some changes to the proposals might be made, but significant official increases are a certainty. More information should be available from the USPTO in the first quarter of 2024, and the new fees are expected to go into effect by November 2024.

New trademark search and assignment recordation tools

The USPTO retired its Trademark Electronic Search System (TESS) on November 20, 2023. A new Trademark Search tool has been made available in its place. The new tool has a more modern-looking interface. It still includes search functionality similar to that of TESS, but no longer times out during searches. Also, it offers the ability to export search results and other information as a spreadsheet. However, the USPTO has warned that the new Trademark Search system will sometimes display outdated status information, drawn from a Trademark Reporting And Monitoring (TRAM) system that the USPTO plans to retire sometime in 2024. The most accurate trademark status information can be found instead in the USPTO’s Trademark Status and Document Retrieval (TSDR) system, which is linked in individual search results. Training materials on how to use the new Trademark Search tool are available.

As noted above regarding patent developments, a new trademark (and patent) assignment recordation system called the Intellectual Property Assignment System (IPAS) is slated to become available starting January 15, 2024 [UPDATE: the transition date was pushed back to February 5, 2024].

More U.S. trademark filing information

Please also see the Guide to Trademark Registration in the USA for in-depth discussion of requirements for foreign applicants to file U.S. federal trademark applications. Additional basic information about trademarks can be found in the Trademark Basics guide.

Copyrights

AI-generated works usually not copyrightable

The U.S. Copyright Office requires that works be authored by a human to be copyrightable. In the generative AI context, authorship requirements begin by asking whether the work is basically one of human authorship, with the computer/AI merely being an assisting instrument, or whether the traditional elements of authorship in the work (literary, artistic, or musical expression or elements of selection, arrangement, etc.) were actually conceived and executed not by a human but by a machine. The Copyright Office takes the view that when an AI tool solely receives a prompt from a human and produces complex written, visual, or musical works in response, such prompts function like instructions to a commissioned artist and the person making the prompts is not considered an author. Accordingly, in that situation the resultant AI-generated work is not protectable by copyright. On the other hand, if AI-generated elements are further selected and arranged by a human, those aspects may be protectable, with the non-copyrightable AI-generated elements disclaimed.

In copyright registration applications, applicants have a duty to disclose the inclusion of AI-generated content and to provide a brief explanation of the human author’s contributions to the work. Given the interest in this area, the Copyright Office has an ongoing initiative and inquiry. Applicable policies and legal standards may continue to evolve.

Significant Developments in U.S. Courts

Patent enablement requirements reinforced

The U.S. Supreme Court unanimously ruled in Amgen v. Sanofi that “[i]f a patent claims an entire class of processes, machines, manufactures, or compositions of matter, the patent’s specification must enable a person skilled in the art to make and use the entire class. In other words, the specification must enable the full scope of the invention as defined by its claims. The more one claims, the more one must enable.” This important decision reaffirmed a principle set out in cases going back more than a century, which preclude the grant of a patent monopoly extending beyond the invention actually disclosed. In this way, a central underlying premise of modern patent law was confirmed, that of a quid pro quo or “bargain” between the inventor(s) disclosing the invention and the public granting a limited monopoly in exchange. The Court discussed famous historic cases, including those involving Samuel Morse and Thomas Edison, as setting out the same enablement requirements.

In the Amgen case, in particular, the central issue revolved around the use of functional claim language that encompassed an entire genus of embodiments of antibodies coupled with the disclosure of inadequate teachings and embodiments pertaining to only a subset of species within that genus. The patentee Amgen had disclosed only a few (26) working examples plus a roadmap for a trial-and-error process that would have involved undue, “painstaking” experimentation to arrive at the entire claimed genus (encompassing at least millions of candidates). This was found inadequate and so the invalidation of the relevant claims for lack of enablement (under 35 U.S.C. § 112(a)) was affirmed.

A specification may call for a reasonable amount of experimentation to make and use a patented invention. Often that can be done by disclosing a general quality or general rule that may reliably enable a person skilled in the art to make and use all of what is claimed (and not merely a subset). But what is reasonable in any case will depend on the nature of the invention and the underlying art. Although not explicitly discussed in the Amgen case, courts have long recognized a distinction between so-called “predictable” arts like those involving mechanical and/or electrical inventions and “unpredictable” arts like those involving chemical and biotech inventions, as well as the amount of knowledge in the state of the art available to a person of ordinary skill. The more predictable the art, and the more knowledge a person of ordinary skill in the art would have, the less disclosure is required for enablement. Although even in the “predictable” arts enablement issues can arise, especially where “preemptive” functional or result-only claim language is used.

[Edit: in January 2024, the USPTO released guidance regarding the enablement requirement for utility patent applications in view of Amgen v. Sanofi. Existing USPTO practice of following the so-called Wands factors were essentially reaffirmed.]

Treatment of design patents continues to change

U.S. design patent practice has seen a number of significant shifts and important court decisions in recent years. Notably, there is currently a case called LKQ Corp v. GM Global Tech. Operations LLC pending rehearing that will clarify obviousness standards for designs, and how that standard is the same or different from obviousness for utility patents. At stake is whether design patents will be treated uniquely, with essentially a lower threshold for patentability (currently, obviousness is more difficult to establish for designs), or subject to basically the same non-obviousness standard as for utility patents.

Another controversial decision in the Columbia II case limited the use of “comparison” prior art in infringement analysis to highlight similarities or differences between the patented design and the accused product that might not otherwise be apparent to an ordinary observer. That case built upon recent emphasis on the title of design patents being limiting, and expanded on a prior case (In re Surgisil) that said only prior art pertaining to the same type of article claimed can be used for patentability analysis, even though prior precedential cases had said that considerations about use of an article are immaterial. The main takeaway is that the law around design patents continues to shift, and at least some judges have attempted to expand or strengthen design patentees’ power in ways that seem to depart from binding precedent.

District of Delaware holds patent case plaintiffs accountable

Chief District Judge Colm Connolly of the District of Delaware has implemented a standing order requiring disclosure of third-party litigation funding. This policy differs from some other districts (and other judges) that refuse to require such disclosures, even in response to discovery requests. These disclosure requirements help to identify real parties in interest to allow for recusal of the judge if a conflict of interest arises due to the judge having an ownership interest in the litigation funder.

In a set of patent cases brought by non-practicing entities believed to be connected to a common litigation funder, Chief Judge Connolly has issued sanctions and referred attorneys and a party to criminal prosecutors and state bars responsible for attorney licensing. These stem from allegations that the litigation funder is directing the litigation and attorneys are taking instructions from entities other than the named party in the lawsuit, which may constituent the unauthorized practice of law and/or a breach of attorney ethical obligations.

In at least one other case, these policies have also led to dismissal where litigation funder confidentiality agreements have precluded compliance with the Chief Judge’s funding disclosure requirements.

The significance of these probes and disclosure requirements is that these patent lawsuits are generally brought by corporate entities formed only for the purpose of bringing a patent lawsuit, and which have essentially no assets. The lack of assets by a shell company is used by litigation funders to try to shield themselves from liability for possible sanctions and attorney fee awards for bringing meritless or objectively baseless lawsuits. Occasionally, similar cases have involved accusations of sham assignments, which can impact the standing of the plaintiff to bring suit if ownership rights are illusory. These policies also bolster and supplement corporate disclosure requirements under Federal Rule of Civil Procedure 7.1, which on its face does not address things like contractual obligations that can curb settlement power or incentives, or when an entity has the power to control another through “negative control” or economic dependence standards applied by the U.S. Small business Administration to determine “affiliate” status and in turn to determine USPTO entity size status.

More generally, Chief Judge Connoly’s policies present some long-overdue limits on the use of courts to extract nuisance settlements, a problem that has been well-documented with respect to so-called “patent trolls”.

Prosecution laches

Certain cases have continued to apply so-called “prosecution laches” to render patents unenforceable. Prosecution laches is premised on prejudice to an accused infringer by the patentee’s unreasonable and inexcusable delay in prosecution of the asserted patent. Cases that apply this doctrine typically involve continuing applications. Recently, this doctrine has been applied in prominent cases by independent inventor patentees. These cases merit attention for a number of reasons. The criticized “egregious misuse” of the patent system is not something confined to a few isolated instances, but is rather commonplace. For instance, similar conduct in creating patent thickets with multiple continuation applications is routine in medical device patenting. And it is not uncommon for patentees to write claims in continuing applications to cover competitor products. Most significantly, the application of a laches defense is in tension with the Supreme Court’s 2017 SCA Hygiene decision saying that laches cannot be invoked as a defense against a claim for damages brought within the six-year limitations period of 35 U.S.C. § 286. The crucial issue is whether (or when) a judge-made policy can preclude use of statutory provisions allowing continuing applications. Also notable is reliance on unenforceability rather than, for instance, invalidity based on lack of enablement—many continuing applications of the sort that raise these questions would seem to be vulnerable to allegations of lack of enablement in the original disclosure, which is a statutory requirement.

Double patenting and patent term adjustment

In the In re Cellect case, the Federal Circuit held that patent term adjustment that differeed among patents in a family led to invalidity for obviousness-type double patenting, because the patents did not expire on the same date. This case is notable because it held that the judicially-created doctrine of double patenting led to unpatentability as a result of USPTO delay, despite the fact that this stemmed from a statutory provision (35 U.S.C. § 154) granting patent term adjustment. In other words, it presents a significant judicial/legislative separation of powers issue. On the other hand, double patenting concerns only arise when a patentee chooses to file multiple patent applications with overlapping scope.

Normally, double patenting can be overcome by filing a terminal disclaimer. But the In re Cellect case presented an unusual situation. It involved a reexamination of an already-expired patent, and terminal disclaimers are not permitted for expired patents. However, the decision in that case still established that a patent can be invalidated or found unpatentable as a result of USPTO delay, thus requiring terminal disclaimers in more situations than was generally believed necessary previously.

Copyright mandatory deposits found unconstitutional

The Court of Appeals for the D.C. Circuit has ruled in the Valancourt Books v. Garland case that the mandatory deposit requirement of the copyright laws (17 U.S.C. § 407) is unconstitutional under the Takings Clause of the Fifth Amendment of the Constitution. Mandatory deposits provided copies of works for archiving by the Library of Congress. Although some form of mandatory deposit requirement has been in place since the first copyright law was passed in 1790. But the D.C. Circuit ruled that subsequent amendments to the copyright laws had left mandatory deposits “untethered” from the benefits of copyright registration, rendering them a government taking without compensation prohibited by the Constitution. Penalties for failing to make a mandatory deposit will no longer apply.

Fair use eviscerated by Supreme Court

In a pair of rather shocking decisions (Jack Daniel’s and Andy Warhol Foundation), the U.S. Supreme Court has greatly limited “fair use” defenses with respect to both trademarks and copyrights. These decisions greatly reduce freedom to operate based on parody or artistic transformation defenses that were largely taken for granted for a long time under U.S. law, and reflect unconvincing treatment, if not outright disregard, for both fact and law. A return to prior treatment of fair use will apparently require legislative action, which is not likely in the near future.

Role of fraud in trademark matters

In the Great Concepts v. Chutter decision, the Federal Circuit held that fraud in a declaration of incontestability (under § 15 of the Lanham Act, 15 U.S.C. § 1065) cannot be used as a ground to cancel a trademark registration. This creates a split with the Ninth Circuit’s prior 1990 decision in Robi v. Five Platters, which held that a statement of incontestability that fraudulently asserted that there were no adverse decisions involving the registered mark justified cancellation. This means that this particular ground for challenging a registration will only be available in courts and not in Trademark Trial and Appeal Board (TTAB) administrative cancellation proceedings.

Significantly, the Federal Circuit did not reach a major point from the appealed TTAB Great Concepts decision holding that recklessness was sufficient to establish fraud. The Federal Circuit has generally taken an idiosyncratic view of fraud, and numerous past decisions (not limited to trademark law) have made it difficult to prove fraud—despite (or rather because of) the prevalence of accusations and circumstantial evidence of fraud. This issue is also loosely tied to the contentious Iqbal/Twombly “plausibility” pleading standards, which altered longstanding notice pleading requirements, and which research has shown allows judges to limit access to the courts (and associated evidentiary discovery) for certain types of claims for ideological reasons.

Crisis of legitimacy in judiciary continues

U.S. Supreme Court justices have been mired in ethics scandals and public confidence in the Court remains at or near record lows. These scandals have revolved around essentially influence/bribery concerns and deficient disclosure of income and “gifts” that call into question judicial impartiality. There was a recent introduction of a code of conduct formulated by the Supreme Court justices themselves with no clear enforcement mechanism—with the justices apparently taking the position that they have already been compliant with the new code of conduct, as an attempt to deflect the serious charges leveled against them rather than meaningfully address them. The judiciary’s self-policing has been criticized in general.

Specifically in the IP field, on September 20, 2023 Judge Pauline Newman was suspended for one year from the Federal Circuit, the court with exclusive appellate jurisdiction over patent lawsuits. At 96 years old, she is the oldest current serving U.S. federal judge, appointed by President Regan in 1984. Her suspension resulted from her refusal to cooperate with an investigation into her fitness due to health issues and her treatment of court staff. As of December 2023, she has still refused to either retire or cooperate with the official investigation, a course of conduct that has reflected poorly on her and, more broadly, has tarnished the reputation of the judiciary as a whole. Judge Newman continues to challenge her suspension and the investigation as a whole—on “libertarian” grounds that deny government authority and therefore sit uncomfortably with her role as a federal judge.

Additionally, an employment-related complaint by an administrative patent judge (APJ) at the USPTO for abuse of authority was initially sustained in May of 2023. The APJ had reported interference with Patent Trial & Appeal Board (PTAB) judge assignments through “panel stacking” in order to alter case outcomes (in a separate Freedom of Information Act [FOIA] case, the USPTO refused to disclose how often this occurred). Supervisors then retaliated against him. This matter points to more general transparency and credibility problems and a lack of independence of administrative judges (within the executive branch). It follows a 2022 Government Accountability Office report finding that a majority (67%) of APJs felt pressured by management to alter specific decisions in AIA proceedings and a smaller but still significant number (34%) felt similar pressure in ex parte appeals. It further follows the Supreme Court’s 2021 Arthrex decision, which held that APJ appointments violated the Appointments Clause of the Constitution but that such deficiencies were resolved by allowing PTAB decisions to be reviewed by the Director of the USPTO—essentially undermining APJ independence and objectivity in favor of protecting the political aspects of appointment authority. These issues also recall concerns about secret USPTO actions during application examination placing public relations / perception management concerns ahead of objective patentability requirements established by the legislature.

To foreign observers, the crisis of legitimacy in the U.S. judiciary might seem to merely extend a legitimacy problem with U.S. government action both domestic and worldwide, including investigations/proceedings against presidents past and present and conduct before bodies like the United Nations.

December 2023

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Tags Copyrights, Design Patents, Freedom-to-Operate (FTO) & Clearance, Litigation, Patent Prosecution, Patents, Trademark Prosecution, Trademarks

Patents Q&A Trademarks

What Is a File Wrapper?

Post author By Austen Zuege

A file wrapper, synonymously called a file history, is the written record associated with a given patent or trademark application and any resultant granted patent or trademark registration. It is the official record for a given matter. Generally, the file wrapper includes more information than is formally published by a patent or trademark office in patents, published patent applications, or trademark registration certificates.

The sorts of materials maintained in file wrappers, the period of time those materials are retained, and the level and ease of public accessibility to them varies by jurisdiction. For instance, in the USA, patent application information is kept confidential initially and generally only made publicly available for published applications and granted patents, with pending applications normally published 18 months from the earliest filing or priority date (subject to potential non-publication requests). (35 U.S.C. § 122).

How & Where to Obtain a File Wrapper

In the past, file wrappers were only available as hard copies in on-site storage at official offices. Today, many patent and trademark offices make at least some file wrapper contents available online—though whether online versions are the official ones or not and whether the online versions are complete or not are questions that can vary by jurisdiction. File wrapper materials are generally also available as certified copies that must be specially ordered (and may have to be physically mailed). Usually a given file wrapper must be obtained from the relevant patent or trademark office that maintains it, although centralized file wrapper access for a few global patent offices is available.

The U.S. Patent & Trademark Office (USPTO) has “Patent Center” and Trademark Status and Document Retrieval (TSDR) online portals. Very old materials are not always available through these portals. Moreover, some materials are not accessible through Patent Center to the general public, like copies of non-patent literature. The USPTO also has a separate Certified Copy Center that allows officially-certified copies of file wrappers or specific documents from them to be ordered, upon payment of required fees. Certified copies of file wrapper may include materials that are not otherwise publicly available, and include official seals and signatures attesting to their authenticity.

The European Patent Office (EPO) has a European Patent Register with file wrapper information. These materials are also accessible via the Espacenet portal, by clicking the “Register” link within a given record.

There are also separate systems for file wrappers for PCT international patent applications and Madrid Protocol trademark registrations. These are the Patentscope and Madrid Monitor online portals maintained and administered by the World Intellectual Property Organization (WIPO). It is also possible to order certified copies of Madrid international trademark registration materials from WIPO, or for applicants to order certified copies of PCT applications from individual PCT receiving offices.

Additionally, Global Dossier portals provide access to file wrapper contents from a number of the most active patent offices worldwide, together with machines translations. Global Dossier has gone by other names in some jurisdictions, like “One Portal Dossier” in Japan and South Korea. Because of the availability of machine translations, these portals can be highly convenient for gathering information about foreign patent applications in other languages. But some documents may not be immediately available through these portals, either due to technical glitches or database update lags.

Why Might You Need a Wrapper?

There are many reasons a file wrapper might be consulted. For instance, they can provide a record of the prosecution history that may inform the status or interpretation of something related to a given patent or trademark. A record of official actions like rejections/refusals and/or applicant amendments or arguments might be found in the file wrapper. Particular documents within a file wrapper might be relied upon for various purposes, or might be needed for submission in other contexts. For instance, in U.S. patent law, the file wrapper might be relied upon for claim construction, doctrine of equivalents analysis, inequitable conduct inquiries, and more.

File wrapper materials in informal, online formats might be sufficient for many purposes, and may be free and easy to access. Information materials might be used for competitive intelligence purposes or as a reference example for work on an unrelated matter, for example. Certified copies or an entire file wrapper, or one or more selected documents from it, might be required for certain formal uses, such as to make priority claims in foreign applications or to be relied upon in legal proceedings where authentication of the materials is important.

The legal important of a file wrapper often depends on the substantive law of the relevant jurisdiction. Under U.S. patent law, prosecution history estoppel or prosecution disclaimer found in a file wrapper might arise and bind the patentee. But many other jurisdictions do not have any such patent prosecution estoppel doctrines, making file wrappers less formally significant. And, moreover, the USPTO does not accept formal file wrapper estoppel in trademark matters.

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Tags Patent Prosecution, Patents, Trademark Prosecution, Trademarks

Patents Q&A Trademarks

What Is Prosecution History?

Post author By Austen Zuege

For patents and trademarks, the term “prosecution history” refers to the back and forth between an applicant and the patent or trademark office. It includes submissions by the applicant, starting with an original application and extending though any amendments or arguments the applicant might later make during official examination of the application. It also encompasses official communications, like office actions, and the particular rejections, objections, refusals, and other notifications that may be contained in them. Oral communications like interviews are a part of it too.

But “prosecution history” refers to more than just a set of documents or particular communications. It is a blanket or umbrella term that refers to all the actions and events involving the patent or trademark office from the time a new application is filed to through grant or registration and even beyond that to post-grant or post-registration actions involving corrections, maintenance or renewals, and the like. So, even if a particular document is purged or deleted or never made part of the permanent record, such a document and the events surrounding it are still part of the prosecution history.

Prosecution histories are important for many reasons. As reflected in “file wrappers,” they are often consulted to understanding the status of a pending application or of a granted patent or issued trademark registration. They can provide insight into why a patent or trademark registration was issued in a particular form, or why a application was abandoned. Sometimes events or materials from the prosecution history of a given patent or trademark registration can even impact the scope or validity of enforceable legal rights.

The prosecution history tends to matter most where prosecution history estoppel or prosecution disclaimer might arise and legally bind the applicant later on. In the U.S., it tends to be more important for patents than for trademarks. Many other countries have different laws that make prosecution history less consequential.

Have an invention you would like to patent? Have a brand you would like to register as a trademark? Concerned about infringing someone else’s intellectual property? Is someone else infringing your IP? Need representation in an IP dispute? Austen is a patent attorney / trademark attorney who can help. These and other IP issues are his area of expertise. Contact Austen today to discuss.

Tags Patent Prosecution, Patents, Trademark Prosecution, Trademarks

Articles

New and Upcoming Changes in U.S. Patent & Trademark Law for 2023

Post author By Austen Zuege

Important Developments

At the beginning of 2023, following a year in which new filings declined, some recent and upcoming changes in practice at the U.S. Patent & Trademark Office (USPTO) for patent and trademark matters merit attention.

Patents

Reduced official fees for small and micro entities

A change in the U.S. patent laws governing fee reductions for small and micro entities was passed as a small part of a wide-ranging legislative budgetary package at the very end of 2022. The relevant portion was titled the Unleashing American Innovators Act of 2022. It is characteristic of U.S. politics that certain non-budgetary matters like this are appended to budgetary legislation shortly before passage during a holiday season with little public discussion. These patent fee reductions therefore came as somewhat of a surprise. As of December 29, 2022, most official patent fees are now discounted by 60% for small entity applicants (previously this was only a 50% reduction) and by 80% for micro entity applicants (previously this was only a 75% reduction). These reductions apply to most official fees associated with initial filing fees for new applications, actions during examination (such as extension of time fees, request for continued examination [RCE] fees, etc.), as well as fees after grant such as maintenance fees. The requirements to qualify as a small or micro entity are unchanged.

The newly amended law further gives the USPTO power to impose fines for false assertions of small or micro entity status of no less than three (3) times the fee underpayment—with no pre-defined upper limit on that amount. Such fines are not yet in effect and will require the USPTO to first issue implementing regulations that will establish exactly how they will be assessed. However, depending on the scope of later regulations, this creates the possibility of significant penalties for innocent or negligent errors. Historically, a fraudulent assertion of small or micro entity status, done knowingly or willingly with intent to deceive the USPTO, would qualify as inequitable conduct that renders the associated patent unenforceable. But the appeals court responsible for all patent appeals set the threshold for the required intent to deceive extremely high. While the possibility for unenforceability due to intentional fraud will remain, the USPTO will have new authority to impose fines if the assertion of entitlement to small or micro entity fee reductions was merely “false”. There is no explicit statutory requirement for such a “false” assertion to be made with intent to deceive. Thus, the USPTO can potentially impose fines without establishing intent to deceive, potentially including even good faith mistakes. Failure to pay such fines will likely have an impact of the enforceability and/or abandonment/lapse of an associated patent or application. It is unclear how the USPTO will discover or otherwise come to know about false assertions of entity size in order to subject applicants and patentees to fines. It will therefore be important to monitor subsequent USPTO regulations regarding these fines and to see how existing safe harbor provisions for correction of good faith errors will be affected, if at all. In the meantime, this highlights the need to accurately determine entity size status and to notify the USPTO at the appropriate time if entitlement to reduced fees is lost.

Non-DOCX filing format requirements postponed (again)

The highly unpopular surcharge for U.S. non-provisional utility patent applications in a non-DOCX file format has been postponed until January 17, 2024 [Update: this deadline has been again postponed beyond a previously-announced April 3, 2023 and June 30, 2023 implementation deadlines]. Although even when in effect this surcharge will not apply to PCT national phase entries, provisional applications, plant applications, or design applications. Additionally, the USPTO has extended a highly limited opportunity to file a back-up applicant-generated “Auxiliary PDF” version of an application filed in DOCX format indefinitely, in order to potentially allow for later correction of USPTO-side conversion errors involving the DOCX version. These postponements and extensions are the result of many objections from U.S. patent practitioners and practitioner organizations.

The non-DOCX surcharge is part of the USPTO’s plans to automate certain administrative tasks to reduce administrative overhead costs and staffing associated with legacy systems for processing application materials. While touted as providing benefits to applicants and practitioners, the reality is that there are no meaningful benefits to applicants or practitioners. But, alarmingly, the USPTO has pushed forward with its cost-cutting objectives despite substantial problems apparent with its new Patent Center platform used for DOCX format filings and its tendency to introduce errors. In effect, the USPTO has prioritized budgetary cost-cutting over maintaining the integrity of the contents of newly filed patent applications. This is what has troubled practitioners most of all.

In brief, the Patent Center system alters uploaded DOCX-format patent application files and has been shown to introduce errors in the substantive content of some uploaded applications. These errors occur only some of the time, but in a significant enough percentage of cases for it to matter. This creates new burdens on applicants and their U.S. patent counsel to review uploaded applications to try to identify errors introduced by the USPTO’s electronic filing platform. These burdens are particularly difficult to manage for U.S. applications based on a Paris Convention foreign priority claim, where U.S. counsel did not prepare the original application and is therefore less familiar with the intended contents. In addition, the USPTO has greatly limited opportunities to correct errors resulting from the way its (proprietary) systems process, convert, “validate”, and alter uploaded application documents. In many circumstances (when a priority claim cannot be relied upon), corrections must be made within one year of initial U.S. filing and will require a petition fee larger than the non-DOCX surcharge. The USPTO has indicated it will deny petitions filed more than a year after initial filing seeking to correct errors that its proprietary computer systems introduced. Moreover, the non-DOCX surcharge is essentially punitive. It far exceeds the estimated administrative savings of $3.15 per application that the USPTO has been able to quantify. Most problems with the roll-out of the non-DOCX surcharge are the result of the USPTO committing to adopt certain proprietary computer systems based on a cursory and inadequate initial investigation of alternatives, greatly misunderstanding the stability and capabilities of the DOCX file format (and its alleged status as a “standard”), and having unrealistic goals for software development associated with implementation of a new proprietary filing platform (and unrealistic projections of net cost savings), coupled with a Kafkaesque disregard for the burdens imposed on applicants and the general public by its actions.

Guidance for creating application documents (hopefully) compliant for USPTO DOCX filing is available here. Bu applicants with complex application content should consider the possibility of paying the non-DOCX official surcharge and filing applications in PDF format to avoid the risks associated with USPTO-generated errors in substantive application content.

Hard copies of patents still being issued (for now)

[UPDATE: The USPTO has announced that electronic patent grants, now being called “eGrants”, will begin April 18, 2023. There will also be a transition period of unspecified duration during which paper ceremonial copies (with a certification statement and a special ribbon and seal) will still be issued in addition to an eGrant electronic copy. A paper presentation copy, certified copy, or ceremonial copy can be ordered for a fee after the transition period.] The USPTO previously announced that sometime in 2022 it would cease issuing paper patents and would issue only digital patents instead. However, the USPTO has continued to issue hard copies of granted patents and has made no further announcements about the date after which only electronic patents will be issued. Presumably, the USPTO will eventually cease to issue hard copies of patents (except upon an express request) but it is unclear exactly when that will occur.

Patent public search tool

The USPTO’s legacy open-access patent and published patent application search tools (PatFT and AppFT) have been retired. The PubEAST and PubWEST systems previously only available in-person (and to examiners) have also been retired. In their place a new Patent Public Search tool is now freely available online. It is based on the old PubEAST/PubWEST tools. Its new USOCR database allows U.S. patents granted before 1970 to be keyword searched—the old PatFT system previously had a 1970 cut-off for keyword searching. The launch of this new tool was rather awkward, with little training or instructional information initially provided on how to use it. But, since its launch, training guides and frequently asked questions (FAQs) have become available. This tool currently exists with two different interfaces: Patent Public Search Basic (PPUBS Basic) and an advanced search. Both allow U.S. patents and published applications to be searched simultaneously.

The Basic search interface allows granted U.S. patents and published patent applications to be fetched by number, and allows some keyword-based searches, but returns only PDF copies.

As the name implies, the advanced search includes advanced search functionality. Although the advanced interface is highly esoteric and non-intuitive, and the interface may not display properly on all computers (in particular, primary the input field near the upper left sometimes appears hidden when the tool is opened on computers with small display screens like laptops). The advanced interface is currently the only way the USPTO provides “full text” of published patent documents. PDF image versions are also available by clicking the “T / [camera icon]” button at the top left of the “Document Viewer” panel that normally appears at the right-hand side of the screen along with the text. Toggling that button allows switching between text or PDF image displays of a given patent document.

Fetching a particular patent or published application by number is surprisingly difficult with the “advanced” interface. A given patent can be queried using the “.pn.” field code or by typing in an “external search” URL to a web browser. But expect some frustration because these “external search” URLs do not seem to consistently work at all.

An alternative way to reach a particular U.S. patent or published application is to utilize the Patent Center interface and enter a patent or published patent application number. From the resultant record, there are links available to the Patent Public Search text versions of the published application and granted patent (if any) under the Patent Center “Application Data” tab. The button with the “T/[camera icon]” label can be clicked to toggle between a text view and a PDF image of the patent document in Patent Public Search. While navigating to patent documents through Patent Center requires many clicks, you might say too many, using it may still be easier than the other alternatives available through the USPTO.

More information about using Patent Public Search is available here.

More U.S. patent filing information

Trademarks

Shortened response periods in effect

The time period for responding to U.S. trademark office actions is now only three (3) months. This shortened response period is indicated in new office actions. Applicants can, however, request a single 3-month extension of time by paying an official fee (currently $125 if filed electronically). An extension must be expressly requested by the original 3-month deadline. This shortened response period does not apply to Madrid Protocol extensions, which will still enjoy a full 6-month office action response period. Moreover, shortened response periods will not apply to post-registration office actions until October 7, 2023.

Unlimited window for expungement requests still open

Any party may request cancellation by expungement of some or all of the goods or services in a U.S. trademark registration because the registrant never used the mark in commerce with those goods or services. Normally an expungement proceeding must be requested in a period from three to ten (3-10) years after the registration date. However, a temporarily unlimited expungement filing period is in effect until December 27, 2023 during which expungement may be requested for any registration at least three (3) years old, regardless of the ten-year limit. In other words, the ten-year time limit for expungement proceeding requests will only go into effect after December 27, 2023. Expungement proceedings are available for all U.S. registrations but are especially significant for foreign-originating registrations (Madrid [§66] or Paris Convention [§44] cases) where proof of use is not required prior to registration. Additional general information about expungement proceedings is available here, and a listing of reexamination and expungement requests made to date is available here.

More U.S. trademark filing information

Please also see the Guide to Trademark Registration in the USA for in-depth discussion of requirements for foreign applicants to file U.S. federal trademark applications.

January 2023

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Tags Patent Prosecution, Trademark Prosecution

Agreements Copyrights Patents Q&A Trademarks

How Can I Correct An Assignment?

Post author By Austen Zuege

Assignments of intellectual property (IP) such as for patents, trademarks, and copyrights are sometimes signed and then an error is later discovered. This is often due to a clerical or typographical error or other inadvertent mistake. For instance, there might be a typo in the number identifying a given patent, patent application, trademark registration, or trademark application in a schedule listing many. It is possible—and beneficial—to correct an assignment to fix such errors, which can then allow correction of any prior recordation of the original assignment. But how can such a correction properly be made? There are a few different possibilities, including using mark-ups or creating a new corrective document.

Marking-Up and Approving Corrections

One approach suggested by the U.S. Patent & Trademark Office (USPTO) (in MPEP 323 & 323.01(b) and TMEP 503.06(b)) and the U.S. Copyright Office (in Compendium 2308.1) for making corrections to an assignment is to have each of the parties conveying the property in question, that is, all of the assignor(s), make and approve corrections on the original signed assignment. This involves the following steps:

Cross out the incorrect text or number (using strikethrough or a conventional proofreader’s delete/dele/deleatur mark through the text with a protruding loop)
Write in the the correct text or number next to the crossed-out information (ideally immediately above it) using printed or typed lettering; use a caret mark or similar line or arrow to show the proper place of insertion, if helpful (a suggested practice if the only or best available space for newly inserted material is in a nearby area spaced from the crossed-out information, such as at a page margin)
Have each and every assignor initial (or fully sign) and date the marked-up corrections; full signatures are also acceptable and are appropriate if multiple signatories have the same initials; if the assignee originally signed the document then the assignee should initial/sign and date the changes too

An example excerpt of a marked-up patent assignment document to correct an error on the original is provided below. In this example, the city of residence (Paris) of one inventor-assignor was incorrect and has been crossed out and the correct city name (Neuilly-sur-Seine) written immediately above it (using deleatur and caret proofreading symbols). Both of the two inventor-assignors (Joe Public/J.P. and Jane Doe/J.D.) have initialed and dated the marked-up change.

Scanned excerpt of example marked-up corrections of error on patent assignment with dated inventor-assignor initials — Excerpt of example marked-up corrections of error on patent assignment with dated inventor-assignor initials

An advantage of marking up the original assignment is that doing so leaves no doubt that terms of the original assignment are still effective. The mark-ups make explicitly clear what specifically has been corrected. The adjacent initials/signatures and dates also clarify who approved the corrections and when. With the error in the original corrected, the chances that anyone might later cast doubt on the assignment due to that error are reduced or eliminated.

The retroactive (nunc pro tunc) effect of the corrections to the date of the original transfer of rights is inherent in the nature of marking-up and initialing/signing (and dating) changes on the original assignment document. This might be significant if something occurred between the time the original was signed and the time the error was discovered and corrected. For instance, if the original assignment with the error was already recorded, making marked-up corrections on the original facilitates recording the corrected document while making clear what specifically has changed.

The USPTO and the Copyright Office do not expunge or delete the previously recorded document, but instead further record corrected document(s) while noting that it is a corrective recordation. Although, uniquely, the Copyright Office will allow substitution of a corrected assignment within ten (10) business days of the original submission.

Keep in mind, however, that many aspects of assignments are a matter of state (or foreign) contract law, not USPTO or Copyright Office administrative procedure or even U.S. Federal patent, trademark, or copyright statutory law. Under black letter U.S. contract law, and presumably that of most other countries, it is not permitted to unilaterally modify or alter a contract after it has been signed. That may make the original voidable and may even be considered forgery, unless the assignment expressly permits a particular change (like later inserting application filing details). But having initials/signatures next to the changes from all the parties that originally signed the assignment removes doubt about their recognition of an error in the original and the fact that the correction/amendment was later made with their knowledge and approval. Although any material changes negatively affecting rights of the assignee or others will merit further attention, despite assignor approval.

However, if an error is identified in an assignment document before all parties have signed or provided notice to the assignee, it is usually preferable to discard the erroneous draft and provide a new copy with all the errors corrected for signature. Marked up corrections are not needed in that scenario, because the assignment with the error was not yet effective.

Newly-Created Corrective Assignment

Marking up and approving corrections to the original assignment is not those only way to correct errors. An alternative approach is to create a new corrective assignment document and have it signed by all the parties (meaning at least all the assignors). Federal agency guidebooks, in MPEP 323.01(b) (for patent assignments), TMEP 503.06(b) (for trademark assignments), and Compendium 2308.1 (for copyrights), recognize the possibility of such an approach for correcting previously-executed assignments.

For instance, if errors in a signed assignment are lengthy/voluminous, there is little available space to mark-up corrections, or the number of signatories does not leave enough space to add all their initials and dates, then a preparing and signing a new corrective assignment might be preferable to mark-ups. But if the original assignment containing the error was already recorded, or there has already been some reliance on that original assignment, any new “corrective” assignment may need its terms written to explicitly be retroactive to the effective date of the original. It is helpful if the title is identified as a “corrective” assignment too—although more than just the title should be changed. But the effort to create a new corrective document might be greater than using mark-ups.

A retroactive assignment is called a nunc pro tunc assignment, which is latin for “now for then”. These are widely used to correct errors in a prior assignment. The USPTO’s electronic assignment recordation systems EPAS and ETAS even have a special option for these, allowing the earlier date to be specified.

The USPTO describes a nunc pro tunc patent assignment recordation request as “[a] request to record an assignment, which includes documentation of transactions which occurred in the past but have not been made a matter of record in the USPTO.” This description implicitly treats nunc pro tunc patent assignment recordations as being (only) for corrective, confirmatory, or supplementary assignments. It means such a recordation request normally requires attaching additional documentation supporting the earlier claimed date of transfer or assignment (that is, the effective date prior to the execution date on which the new assignment document was fully signed).

The USPTO describes a nunc pro tunc trademark assignment as “an assignment that was prepared recently and is being recorded now, but the actual transfer occurred in the past. It is a complete transfer of ownership of trademark rights from the assignor/ (conveying party) to the assignee/ (receiving party). Use this conveyance type if the document being recorded was prepared after the time when ownership was actually transferred and after the time it should have been prepared and recorded, and has a retroactive effect. The execution date is usually later than when the actual transfer of ownership occurred.”

Lastly, if an error is identified in an assignment document before all parties have signed or provided notice to the assignee, it is usually preferable to discard the erroneous draft and provide a new copy with all the errors corrected for signature. A nunc pro tunc assignment or other explicit terms to provide a new, retroactive corrective assignment are not needed, because the assignment with the error was not yet effective.

Standing Limitations on Retroactive Patent Assignments

Corrective patent assignments, when necessary, should be completed before commencing a lawsuit for infringement. Courts generally do not allow nunc pro tunc patent assignments to provide retroactive standing to sue for infringement. The execution date on which a nunc pro tunc patent assignment was signed—or the date on which the last signature was obtained if multiple parties sign on different dates—is normally the effective date that controls for matters affecting standing. According to one district court, this also means that any subsequent assignments in a chain of title that were executed before a corrective nunc pro tunc assignment require further corrective action as well, because other purported assignments downstream in the chain were ineffective when executed (nemo dat quod non habet — one cannot give what one does not have). Clearing up chain-of-title issues before bringing suit allows the intended plaintiff(s) to be named, averting a possible ground for dismissal of the lawsuit due to the absence of a necessary party.

But not all nunc pro tunc assignments implicate standing. Minor corrections and supplemental terms may be given retroactive effect. At least one district court has held that correcting a drafting error in a prior assignment with respect to identification of a patent intended to be assigned did not deprive the assignee of standing in a pending lawsuit. And the Federal Circuit has held that retroactively adding the right to sue for pre-assignment infringement does not affect standing.

Practical Tip

There is an old saying that the best time to plant a tree was twenty years ago but the second best time is now. This provides a good analogy here. For assignments, the best way to correct them is to carefully check the information in them to fix any errors before they are presented for signature. In other words, be diligent and try to avoid errors from the start! That sometimes means verifying information provided by others, such as to ensure that legal names are used not nicknames or assumed names, corporations have not merged, dissolved, or changed names, addresses are current, etc. But the next best time to correct errors is as soon as they are discovered. Fortunately, there are ways to do that. Although doing so can become more difficult as time passes. For example, the original signatories can die, dissolve (if a corporation), or become uncooperative, and issues of standing can arise and later chain-of-title corrections might also become necessary that require additional corrective efforts.

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Tags Assignments, Copyrights, Patent Prosecution, Trademark Prosecution

The Function of Trademarks

Context and Form of Use Matter

Content Matters

General Information

Common Phrases or Messages

Aesthetic Ornamentation

Potential Exceptions

How to Overcome a Failure-to-Function Refusal

Limits

Other Related Concepts

Conclusion

Overview of Best Practices

The Likelihood of Confusion Standard

Simply Queries Are Often Not Enough

Using Online Portals

Adequate Coverage

Considerations for Graphical Logos and Non-Traditional Marks

A Search Alone is Not a Legal Opinion

Budgeting

Different Types of Searches

Knockout Searches

More Comprehensive Searches

Special Searches

Geographic Scope

Which Types of Search Is Right for You?

Have a Backup or Alternate Mark In Mind

Caution: No Search is Perfect

What a Trademark Search Can Tell You

What a Trademark Search Won’t Tell You

Which Region or Regions?

Is a Search Legally Required?

Didn’t I Already Take Care of This?

When is a Search Needed?

Overview

Jurisdiction

Conclusion

Important Developments

Patents

Non-DOCX filing format requirements postponed (yet again)

Electronic patent “eGrants” now in place

Massive official fee increases proposed, but implementation unclear

Design patent 1 million issued and design patent bar created

Suggested figure for publication policy changed

Changes to USPTO online systems

More U.S. patent filing information

Trademarks

Fee increases proposed

New trademark search and assignment recordation tools

More U.S. trademark filing information

Copyrights

AI-generated works usually not copyrightable

Significant Developments in U.S. Courts

Patent enablement requirements reinforced

Treatment of design patents continues to change

District of Delaware holds patent case plaintiffs accountable

Prosecution laches

Double patenting and patent term adjustment

Copyright mandatory deposits found unconstitutional

Fair use eviscerated by Supreme Court

Role of fraud in trademark matters

Crisis of legitimacy in judiciary continues

December 2023

How & Where to Obtain a File Wrapper

Why Might You Need a Wrapper?

Important Developments

Patents

Reduced official fees for small and micro entities

Non-DOCX filing format requirements postponed (again)

Hard copies of patents still being issued (for now)

Patent public search tool

More U.S. patent filing information

Trademarks

Shortened response periods in effect

Unlimited window for expungement requests still open

More U.S. trademark filing information

January 2023

Marking-Up and Approving Corrections

Newly-Created Corrective Assignment

Standing Limitations on Retroactive Patent Assignments

Practical Tip