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During patent prosecution before the United States Patent and Trademark Office (USPTO), applicant and examiner can become entrenched in conflicting positions on subject matter eligibility. Appeals to the Patent Trial and Appeal Board (PTAB) could clear prosecution impasse. However, Alice-related issues taken to the PTAB are not necessarily the Alice-related issues decided by the PTAB.
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Deciphering the USPTO’s Material Alteration Standard for Amending Marks
By Chris Bussert
As brands mature over time, their owners often seek to update marks that are subject to a federal registration or registration application. In some cases, the impetus for the amendment may be deliberately to freshen, tweak, or otherwise modernize the subject mark. In other cases, brand owners may recognize after the fact that their current usage of a mark does not match the mark as originally registered or applied for.
Testing for Genericness After USPTO v. Booking.com
By Alex Simonson
In the recent U.S. Supreme Court case of USPTO v. Booking.com, the U.S. Supreme Court held that the term Booking.com is not necessarily generic merely because it is composed of two components, each itself generic. In so deciding, Justice Ginsburg averred that there is an appropriate metric to determine if such a term is indeed generic, that of consumer perception.
By Howard Shire and Shaleen Patel
Federal Circuit Modifies Facebook IPR Joinder Ruling
District Court: Stipulation of Noninfringement Does Not Preclude Post-Remand Finding of Infringement
What’s Your Trademark Worth? Determining the Value of Trademarks For Collateral, Sale or Licensing
By Stacey C. Kalamaras and Henry Kaskov
This article explores the options available to a client to value its trademarks during a financial crisis, to ensure one of the most valuable assets it owns can continue to work for the company and see it through the lean times.
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