Tagged: Trademark Prosecution

Revisiting the America Invents Act

On November 30, 2012, Representative Lamar Smith introduced H.R. 6621 to “correct and improve certain provisions of the Leahy-Smith America Invents Act and title 35, United States Code.” The act seeks to provide a number of technical corrections to a variety of issues, including: eliminating a 9 month dead zone for inter partes review allowing inter partes reviews to be filed at any time for applications with an effective filing date before March 16, 2013; extending the time for filing the inventor’s oath or declaration until the payment of the issue fee; eliminating the prohibition on post grant review for reissue patents with narrowing amendments; clarifying the standards for initiating derivation proceedings; clarifying the calculation for patent term adjustment; and repealing 35 USC 373, which restricted the types of inventors or applicants that could file PCT applications at the U.S. Patent Office.

Tim Tebow Time in the Trademark Office . . . .

The U.S. Patent and Trademark Office (“PTO”) recently published for opposition the mark TIM TEBOW. The applicant for the mark in these various goods and services is XV Enterprises LLC of Denver, Colorado, who has indicated that Tim Tebow, the two-time Heisman Trophy winner and New York Jets quarterback (formerly with the Denver Broncos), has consented to the applications.

Declaratory Judgment Suit Over ROHAN Trademark

D’Artagnan Trademarks LLC, (“DT”) recently sued the Saul Zaentz Company (“SZ”) in the District of New Jersey regarding the trademark ROHAN. In December 2011, DT filed a trademark application for ROHAN in connection with the sale of poultry, namely, duck. The PTO approved the application and SZ opposed its registration when it published for opposition in late March. SZ alleged that it has exclusive rights to certain trademarks (the “Marks”) derived from the trilogy of books known as “The Lord of the Rings,” by J.R.R. Tolkien. Readers might recall that in the books, “Rohan” is a fictional realm within the fantasy world of the stories. SZ alleges it owns federal trademark registrations for ROHAN, RIDERS OF ROHAN and ROHAN NUTRITION, relating to animal feed and feed supplements for horses, plastic figurines for use with table top hobby battle games, and website services about computer games. SZ has a number of licensees using these marks.

Already v. Nike: Petitioner’s Brief Asserts that Jurisdiction Remains Despite Covenant Not to Sue

In a prior blog, we reported that the Supreme Court had granted certiorari in Already, LLC dba Yums v. Nike, Inc., No. 11-982, to an appeal from the Second Circuit’s decision affirming the Southern District of New York’s holding that a covenant not to sue entered in a trademark dispute ended the case and controversy between the parties.

ICANN Releases Listing of gTLD Applications

Today, ICANN, the Internet’s domain name registration watch dog, will publish a listing of nearly 1,900 new generic Top-Level Domains (“gTLDs”) that may be approved for use as early as March 2013. We previously wrote about ICANN’s expansion program and suggested safeguards that companies could implement to protect themselves.

Protecting Your Company – Trademark Basics You Need to Know

The Gibbons Women’s Initiative is hosting an upcoming program for in-house counsel entitled, “Protecting Your Company – Trademark Basics You Need to Know,” on Thursday, March 8 from 8:30 – 10:15 am at Gibbons Newark Office. This program will feature Catherine M. Clayton, a Director in the Gibbons Intellectual Property Department, who leads the firm’s trademark practice. Ms. Clayton has a broad range of experience in trademark and copyright law, and her practice encompasses litigation, licensing and prosecution.

The “Linsanity” Continues …..

The New York Knicks’ rising superstar point guard, Jeremy Lin, continues to wow fans around the world. Lin’s NBA ascent also has prompted a rush to the Trademark Office. Over 20 applications for word marks that bear the letters L-I-N already have been filed. These include LIN-SATIONAL; ALL LIN; LINSPIRATION; I’M A LINNER; LINSOMNIA: LINCREDIBLE; and other derivations using the star’s last name. The frenzy began with applications for the seemingly ubiquitous LINSANITY catch phrase, which were filed on February 7 and February 9, as the star’s career took off. Most of the applications to date have been filed on an intent to use basis, that is, the applicant has expressed a bona fide intent to use the mark in interstate commerce.

Beware of Invention Promoter and Private IP Registration Service Scams

While invention promoters and IP registration firms claim to assist present and future IP holders, some have been found to offer little or nothing of value in exchange for the thousands of dollars paid to them. Here are ways to investigate these firms and learn about your rights to avoid being treated unfairly. Invention Promoters: There are several resources available to help investigate and weed out unscrupulous invention promoters. The Federal Trade Commission offers a Consumer Alert listing the “sweet-sounding promises” of promoters that may do little or nothing in return for the fees they collect. Complaints regarding invention promoters can be filed with the FTC.