IP Blogs

Above the Fold

Advertising and marketing can pose a wealth of legal hurdles. When creating content, advertising professionals and companies often incur the scrutiny of regulatory agencies, such as the Federal Trade Commission. In this blog, our team of seasoned trademark and media attorneys address emerging trends and issues in this complex area.
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Delaware Intellectual Property Litigation Blog

Delaware is an important hub of business litigation and Fox Rothschild partner Gregory B. Williams closely monitors the decisions issued by the U.S. District Court of Delaware in the areas of antitrust and intellectual property law. This blog has become a resource for industry, the legal community and academia by providing concise synopses of the significant rulings from this influential court.
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IP Spotlight Blog

Intellectual property is often the lifeblood of a company. As an experienced IP and registered patent attorney, Jim Singer keeps you up-to-date with the legal and business aspects of intellectual property and other intangible assets on his IP Spotlight blog. Covering topics such as licensing, due diligence, acquisition, compliance and risk management associated with patents, trademarks, copyrights and trade secrets, IP Spotlight provides insight, commentary and tips regarding recent legislation and developments in the industry.
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Recent Blog Posts

  • The TTAB Finds the Mark GUARANTEED RATE Too Descriptive for Registration in the Absence of Survey Evidence On July 30, 2020, the U.S. Trademark Trial and Appeal Board (TTAB) issued a precedential decision holding, in effect, that the mark GUARANTEED RATE is too common for registration in the absence of a consumer survey showing acquired distinctiveness. Applicant, Guaranteed Rate Inc., sought registration on the USPTO’s Principal Register of the plain word mark GUARANTEED RATE and a GUARANTEED RATE design mark for use with various mortgage financing and banking services. The examining attorney refused registration of the applied-for marks... More
  • Judge Connolly Grants Defendants’ Motion to Dismiss Plaintiff’s Patent Infringement Claims in Part and Denies in Part By Memorandum Opinion entered by The Honorable Colm F. Connolly in Dynamic Data Technologies, LLC v. Brightcove Inc. et al., Civil Action No. 19-1190-CFC (D.Del. July 20, 2020), the Court denied in part and granted in part Defendants’ motion to dismiss Plaintiff’s fifteen (15) count complaint for failure to state a claim under Federal Rule of Civil Procedure 12(b)(6). Plaintiff’s complaint included alleged claims of direct infringement and indirect infringement with respect to the fifteen (15) patents-in-suit and a claim... More
  • 5Pointz Graffiti Art Case Affords SCOTUS the Opportunity to Interpret Rarely Tested Copyright Law On Monday, G&M Realty, a real estate development company, asked the U.S. Supreme Court to reverse a $6.75 million damages award that the U.S. District Court for the Eastern District of New York entered in favor of a group of graffiti artists after G&M Realty, without warning, whitewashed the artists’ work, which had been displayed on a collection of dilapidated warehouses in New York City known as “5Pointz.” The ongoing dispute between G&M Realty and the graffiti artists goes back several... More
  • The Fourth Circuit Issues Litigants A Strong Reminder Of The Risks Associated With Failing To Preserve Evidence On July 16, 2020, the U.S. Court of Appeals for the Fourth Circuit issued a decision highlighting the critical need for litigants to preserve evidence once notified of a potential lawsuit, and the serious ramifications associated with failing to do so.  See QueTel Corp. v. Hisham Abbas, et al., No. 18-2334 (4th Cir. July 16, 2020). In QueTel Corp. v. Hisham Abbas, et al., a software copyright infringement and trade secret case, QueTel alleged that an ex-employee had misappropriated software code... More
  • Civil and Criminal Jury Trials in the District of Delaware Will Not Resume Until At Least August 31, 2020 due to COVID-19 Due to public safety concerns caused by COVID-19, by Standing Order entered by Chief Judge Leonard P. Stark dated July 16, 2020, the United States District Court for the District of Delaware continued all civil and criminal jury selections and jury trials scheduled to begin before August 31, 2020 until further order of the Court.  A copy of the Court’s Standing Order is attached.... More
  • Redskins Changing Team Name/Logo As a surprise to many, the Washington Redskins recently announced that it will be changing its 87-year old name.  This decision comes after recent events that sparked nationwide discussions about race and caused various corporate sponsors to exert pressure on the Redskins’ organization.  But it also comes after years of the Redskins fighting to protect what the USPTO argued were disparaging trademarks, which this blog closely followed in relation to both the Redskins and a rock band whose case made... More
  • Judge Andrews Grants Defendants’ Motion for Summary Judgment on Plaintiffs’ Claims of False Advertising By Memorandum Opinion entered by The Honorable Richard G. Andrews in Halosil Int’l, Inc. et al. v. Eco-Evolutions, Inc. et al., Civil Action No. 18-1375-RGA (D.Del. July 14, 2020), the Court granted Defendants’ Motion for Summary Judgment after finding that no reasonable jury could conclude that Defendants’ advertisements were literally false and Plaintiffs’ breach of contact claim was time-barred. With respect to the false advertising claim, Plaintiff alleged that Defendants were liable under Section 43(a) of the Lanham Act, which prohibits... More
  • Expedited TM Review for Covid-19 Products/Services Last month, the United States Patent and Trademark Office’s (USPTO) began an initiative to expedite the review of, and waive the fees related to, trademark applications for marks used to identify qualifying Covid-19 products and services.  According to the USPTO’s website, this initiative launched “in view of the critical need to develop and help speed to market medical products and services to combat the COVID-19 virus.” Only applications for marks covering these medical products and services are eligible for this expedited... More
  • Judge Connolly Dismisses Plaintiff’s Claims Seeking Declaratory Judgment of Non-Infringement for Failure to Establish Declaratory Judgment Jurisdiction By Memorandum Opinion entered by The Honorable Colm F. Connolly in Power Integrations, Inc. v. CogniPower LLC, Civil Action No. 20-15-CFC (D.Del. July 1, 2020), the Court granted Defendant’s motion to dismiss counts 3, 4, and 5 of the Complaint pursuant to Federal Rule of Civil Procedure 12(b)(1) after finding that Plaintiff failed to establish declaratory judgment jurisdiction for the claims. Plaintiff sought a declaratory judgment pursuant to 28 U.S.C. § 2201 that two of its products and the use of... More
  • Large entity, small entity or micro-entity: which type of patent applicant are you? When applying for a patent application, certain entities are entitled to reduced USPTO filing fees. Applicants who qualify for small entity status can reduce many USPTO fees by 50%. Applicants who are micro entities can reduce certain fees by 75%. An applicant who is neither a small entity nor a micro-entity is considered to be a large entity and must pay standard fees. The savings resulting from small entity or micro entity status can be substantial.  As of June 1, 2020... More
  • Supreme Court Approves Booking.com Trademark This week, the United States Supreme Court issued an important decision in U.S. Patent and Trademark Office v. Booking.com affirming that “Booking.com” is a protectable trademark.  This case stemmed from the United States Patent and Trademark Office’s (“PTO”) rejection of Booking.com’s attempt to register its domain name as a service mark for hotel registration services because it deemed the mark generic.  The PTO argued that adding a designation to a generic term does not confer trademark protection and that registering... More
  • Ninth Circuit Expands Access to Attorneys’ Fees in Copyright Cases Our colleague, Melissa Scott, recently wrote an alert on an opinion from the Ninth Circuit Court of Appeals about access to attorneys’ fees in copyright infringement cases.  The underlying copyright dispute in Doc’s Dream, LLC, v. Dolores Press, Inc., et al. related to the video recordings of a deceased minister’s sermons, but the significant holding relates to the fee-shifting provision in the Copyright Act. The district court held that attorneys’ fees were not available to the accused infringer for the declaratory... More
  • IP and the Open Covid Pledge Are you developing new technologies, treatments or other inventions that are useful to combat the COVID-19 epidemic? If so, my colleagues Gunjan Agarwal and Chipo Jolibois recently wrote a useful article discussing the Open COVID Pledge and how it can be used when patenting COVID-19-related inventions. For the full article on Law360, click here. ... More
  • Suit Takes Aim at Internet Archive, Spurs End of National Emergency Library An update from Kaitie Eke, one of the firm’s summer associates: A copyright infringement lawsuit filed by four major publishing companies against the Internet Archive has prompted early termination of the site’s National Emergency Library, a project that made books available electronically during the COVID-19 pandemic. Although the project’s conclusion may render some of the publishers’ complaints moot, the suit also takes aim at the ongoing operation of the Open Library and larger Controlled Digital Lending (“CDL”) practices. The Internet Archive is... More
  • Business Litigation in Delaware State Courts Although I typically blog on intellectual property and antitrust cases in federal court in Delaware, attached for readers of the Delaware Intellectual Property Litigation Blog are links to two articles that I recently co-authored and published on (1) obtaining temporary restraining orders and preliminary injunctions in Delaware Chancery Court and (2) adjudicating business disputes in the Complex Commercial Division of Delaware Superior Court: (1) https://www.law.com/delbizcourt/2020/06/10/obtaining-temporary-restraining-orders-and-preliminary-injunctions-in-chancery-court/ (2) https://news.bloomberglaw.com/us-law-week/insight-adjudicating-business-disputes-in-delawares-complex-commercial-division  ... More
  • The Landscape of Copyright Co-Ownership An update from Kevin Sandoval, one of the firm’s summer associates: What started as a copyright infringement claim against the California high school that inspired the television series “Glee” has developed into a conflict that could have ramifications for copyright holders and potential copyright infringers everywhere. In 2016, Tresóna Multimedia, LLC filed a suit against Burbank high school’s vocal music director Brett Carroll, the Burbank high school vocal music boosters club, and individual boosters club parents claiming copyright infringement for the... More
  • Animal Rescue Groups May Proceed With Unfair Competition Claims An update from Jennifer Madaras, one of the firm’s summer associates: A California federal judge has ruled that two animal rescue groups can proceed with unfair competition claims against numerous defendants accused of misusing the word “rescues” when advertising dogs they purchased from breeders and puppy mills. The plaintiffs asserted claims under both state and federal law. The plaintiffs’ federal claim arises under the Lanham Act, which prohibits trademark infringement and false advertising, among other things.  The plaintiffs, PetConnect Rescue Inc. and... More
  • District of Delaware Adopts Re-Opening Guidelines and Will Commence Phase One Operations on June 17, 2020 By Order dated June 15, 2020 and issued by Chief Judge Stark, the United States District Court for the District of Delaware issued and adopted its re-opening guidelines that includes four phases of re-opening. Phase One of the re-opening will commence on Wednesday, June 17, 2020. Phase One involves the court’s initial emergence from strict shelter-in-place orders in the community and from cancellation of in-person appearances in court. It is the first step toward an eventual return to normal operations through... More
  • Chief Judge Stark Denies Defendants’ Motion Seeking Litigation Funding-Related Discovery in Patent Infringement Action By Memorandum Order entered by The Honorable Leonard P. Stark in United Access Technologies, LLC v. AT&T Corp. et al., Civil Action No. 11-338-LPS (D.Del. June 12, 2020), the Court denied the motion of Defendants AT&T Corp., AT&T Services Inc. and SBC Internet Services, Inc. (collectively, “AT&T”) seeking to compel certain litigation funding-related discovery from Plaintiff United Access Technologies, LLC (“UAT”).  AT&T asserted that the information requested was not privileged and should be produced.  Id. at *1.  UAT opposed the... More
  • Update on Court Operations in Delaware (both Federal and State) Under Exigent Circumstances Created by COVID-19 – as of May 30, 2020 With courts across the United States in different and various stages of re-opening to get back to some level of normalcy under the exigent circumstances created by the global coronavirus pandemic, I thought it would be helpful to my clients, co-counsel, and others outside of Delaware to provide an update on the Courts’ operations in Delaware (both federal and state courts) and re-opening plans as of May 30, 2020. Federal Courthouse in Delaware With respect to the federal courthouse in Delaware, which... More
  • HAPPY MEMORIAL DAY! In recognition of all those soldiers who died in active military service for the United States of America.  HAPPY MEMORIAL DAY!... More
  • Use caution before taking advantage of extended IP filing deadlines under CARES Act The newly-enacted Coronavirus Aid, Relief, and Economic Security (CARES) Act provides patent and trademark applicants the opportunity for temporary relief from certain deadlines as more and more businesses face mandatory shutdowns due to effects of COVID-19. Patent and trademark extensions On March 31, 2020, the USPTO issued two notices indicating that it will waive certain patent and trademark filing deadlines under the CARES Act. The notices indicate that certain deadlines that arise between March 27, 2020 and April 30, 2020 will be... More
  • U.S. Supreme Court: states are immune from copyright infringement liability A new Supreme Court decision holds that states are immune from infringement suits under the United States Copyright Act, despite a 1990 law that attempted to remove states’ sovereign immunity in copyright infringement cases. In Allen v. Cooper (decided March 23, 2020), the Court considered a case involving videos and photos of a shipwreck that the state of North Carolina published online. The owner of the copyrights sued the state for copyright infringement. The state moved to dismiss the suit on... More
  • CARES Act authorizes USPTO to extend certain patent and trademark deadlines The newly-enacted Coronavirus Aid, Relief, and Economic Security (CARES) Act provides patent and trademark applicants the opportunity for temporary relief from certain deadlines as more and more businesses face mandatory shutdowns due to effects of COVID-19. In the United States, many filing deadlines are set by statute. Because of that, as of the date of this writing, the United States Patent and Trademark Office (USPTO) has not yet extended patent or trademark deadlines, as it did not have authority to do... More
  • How will the shutdown of “non-essential” businesses affect trademark rights? As “non-essential” businesses are required to close in more and more United States jurisdictions, many businesses have paused operations. This pause may interrupt continuous use of trademarks in connection with the products and services that the affected businesses offer. When renewing trademark registrations, trademark holders must declare that the trademark has been in continuous use in commerce. How might a lapse in use of a trademark during a coronavirus-related shutdown affect the trademark holder’s ability to maintain or renew a trademark registration? My... More
  • Will the Defense Production Act shield COVID-19 protective equipment makers from patent infringement risk? On March 18, 2020, President Trump issued an Executive Order under authority of the Defense Production Act of 1950. The Executive Order stated: “I find that health and medical resources needed to respond to the spread of COVID-19, including personal protective equipment and ventilators, meet the criteria specified in section 101(b) of the Act (50 U.S.C. § 4511(b)). Under the delegation of authority provided in this order, the Secretary of Health and Human Services may identify additional specific health and... More
  • IAM Global Leaders 2020 I am honored to be named to the inaugural IAM Global Leaders list, a new publication featuring interviews with patent pratitioners ranked in the gold tier of the IAM Patent 1000. In my interview with IAM, I discuss how our team at Fox Rothschild is working to anticipate client expectations and lead the way in managing patent projects to meet or beat those expectations. I also discuss key questions that clients should consider when building an intellectual property strategy. The full interview is available... More
  • How long does it take to receive a patent or trademark registration in the U.S.? (2019 update) The USPTO recently released its FY2019 Performance and Accountability Report, with contains helpful information about allowance rates, average pendency, and other statistics about its review of patent and trademark applications this year. Each year, IP Spotlight analyzes this report and, and we update our readers who often ask: how long does it take for a patent or trademark registration to grant?  To answer that question: Patents: In 2019 the USPTO continued a eight-year trend of reducing patent application pendency. The average time... More
  • USPTO publishes October 2019 update to Patent Eligibility Guidance On October 17, 2019, the USPTO published an update to its 2019 Patent Subject Matter Eligibility Guidance (2019 PEG). The October 2019 update does not significantly change the patent eligibiity analysis, but it clarify several of the examination procedures that the USPTO first set out in January 2019. Notably, the October 2019 update indicates that “the Office has shifted its approach from the case-comparison approach in determining whether a claim recites an abstract idea and instead uses enumerated groupings of abstract... More