MONTHLY INSIGHTS

U.S. Supreme Court Rules That GENERIC.COM Trademark Format is Not Registrable Only if the Term Has That Generic Meaning to Consumers

Under U.S. trademark law, generic terms are not eligible for federal registration because registration gives a mark owner the right to exclude others from use of the term. In United States Patent and Trademark Office v. Booking.com B.V., the U.S. Supreme Court considered whether "Booking.com" is an unregistrable generic term, and more broadly, whether the U.S. Patent and Trademark Office's (USPTO) nearly per se rule that combining generic terms with generic Internet-domain-name suffixes like ".com" results in an unregistrable composite mark should stand. The Court held that (1) a term styled "generic.com" is a generic name for a class of goods or services only if the term has that generic meaning to consumers, and (2) the USPTO's proposed rule prohibiting registration of combined generic terms is untenable because it is not supported by the USPTO's past practices and lacks support in trademark law and policy.    READ MORE
The Dwindling Usefulness of AIA Post Grant Review
Recent changes to procedures of the Patent Trial and Appeal Board of the USPTO, coupled with decisions of both the United States Supreme Court and the Court of Appeals for the Federal Circuit, have diminished both the usefulness and desirability of challenging patent validity in a Post Grant Review (PGR) proceeding. PGR's usefulness has dwindled due to: (1) increased legal fees, out-of-pocket costs, and complexity; (2) greatly increased scope of litigation estoppel; (3) PTAB's increasing use of "discretionary denials" of institution of "trial" of the challenged patent claims; (4) PTAB's virtually unappealable denials of institution of trial on any basis, whether or not legally correct or authorized by the AIA; and (5) increasing prevalence of dual-track validity challenges pending simultaneously in the PTAB and federal district courts.  READ MORE
Personal Jurisdiction Uncertain Based on Stream of Commerce: Part II

This article is Part II of a 3-part article discussing whether the stream of commerce theory may still be used to establish personal jurisdiction over a non-resident defendant. This month, I discuss the backdrop for Part I (published in the June 2020 issue of Monthly Insights) and generally address personal jurisdiction, due process, the origin of the stream-of-commerce theory as it relates to personal jurisdiction, and how the interaction of these principles affect non-resident defendants. Non-resident defendants of a forum state, and non-U.S. entities especially, should be aware of the circumstances under which they are and are not subject to personal jurisdiction. One of main bases upon which personal jurisdiction is asserted in the contemporary commercial world is under a stream of commerce theory. Thus, an understanding of the reasoning for the holdings and dissents of past personal jurisdiction cases is important because the Supreme Court continues to rely on some of that reasoning, and disregard other reasoning, in cases regarding stream of commerce.      READ MORE
PATENT OFFICE UPDATES
European Patent Office Postpones Oral Proceedings in Opposition Through 2020

On 29 July 2020, the European Patent Office (EPO) announced the postponement until further notice of all oral proceedings in opposition scheduled until 31 December 2020 which have not either (1) already been confirmed to take place by videoconference or (2) will be held by videoconference with the parties' consent. As to oral proceedings in examination, these will continue to be held by videoconference.  READ MORE
USPTO Fees Set to Increase on 
October 2, 2020

The United States Patent and Trademark Office (USPTO) is setting and adjusting Patent and Patent Trial and Appeal Board fees for the first time in almost three years through its Final Rule, effective on October 2, 2020.  The USPTO has determined that fee adjustments are necessary to adjust to increasing costs and to provide necessary resources for Patent operations, including implementing the USPTO 2018-2022 Strategic Plan.  The July 31, 2020 Patent Alert announcing the FY2020 Final Patent Fee Rule may be viewed here, and a Summary of the Final Rule is found here.  The Final Rule is scheduled for publication in the Federal Register on August 3, 2020 and will be viewable at that time here. 

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