Tag Archives: Intellectual Property

USPTO and Copyright Office Waive Certain Deadlines Due to COVID-19 Outbreak

As discussed in an earlier post, the CARES Act authorizes the Director of the United States Patent and Trademark Office (“USPTO”) and the Register of Copyrights to “toll, waive, adjust, or modify” certain timing deadlines and provisions under trademark and copyright law in response to the coronavirus outbreak.  The USPTO and the Copyright Office have now issued notices exercising these powers.

  1. USPTO

The notice issued by the USPTO extends by 30 days the deadline for certain trademark filings that were due March 27 through April 30, 2020, including certain of the following:

  • Responses to Office Actions, including notices of appeal from a Final Refusal;
  • Statements/Affidavits of Use, Requests for Extension of Time to file Statements of Use, and Affidavits of Excusable Nonuse;
  • Notices of Opposition and Requests for Extension of Time to File Notices of Opposition;
  • Priority Filings based on foreign applications and Requests to Transform an Application based on foreign applications; and
  • Renewal Applications.

The filing must be accompanied by a statement that the delay in filing or payment was due to the fact that the practitioner, applicant, registrant, or other person associated with the filing or fee was personally affected by the COVID-19 outbreak, such that the outbreak materially interfered with the timely filing or payment.  This could be due to office closures, cash flow interruptions, inaccessibility of files or other materials, travel delays, personal or family illness, or similar circumstances.

The USPTO also reaffirmed its offer to waive fees for petitions to revive and reinstate applications and registrations that are abandoned or canceled or which expire due to the inability to timely respond to a USPTO communication as a result of the COVID-19 outbreak as we described in this prior post.

For all other situations not addressed by the USPTO notice, a request or motion for an extension of time may be made as appropriate.

  1. Copyright Office

The notices issued by the Copyright Office relating to the COVID-19 outbreak are available here.  They provide the following:

  • Timing for Registration – Generally, a copyright owner is eligible to be awarded statutory damages in an infringement action only if the work has been registered prior to the infringement or within three months of the work’s publication. To mitigate the effect of any disruption in registration timing due to the coronavirus outbreak, the Copyright Office has provided the following:
    • For copyright applications that can be submitted entirely in electronic form, the timing provisions are unchanged.
    • If the applicant can submit an application electronically but is unable to submit a required physical deposit, the applicant should upload, together with the application, a declaration or similar statement certifying, under penalty of perjury, that the applicant is unable to submit the physical deposit and would have done so but for the national emergency. The declaration must also include supporting evidence, such as statements that the applicant is subject to a stay-at-home order or that the applicant is unable to access the physical materials due to closure of their business.  In this case, if the three-month window for registration after the date of first publication was open as of March 13, 2020, the window will be extended, provided that the applicant submits the required deposit within 30 days after the date the disruption ended as determined by the Register.
    • If the applicant is unable to submit an application electronically or physically, the applicant may submit an application after the Register has announced the end of the disruption. The applicant must include a declaration or similar statement certifying, under penalty of perjury, that the applicant was unable to submit the application and would have done so but for the national emergency.  The declaration must include supporting evidence, such as statements that the applicant did not have access to a computer or the internet or that the applicant was prevented from accessing or sending the required physical materials for reasons similar to those set out in the preceding bullet.  In this case, the three-month window will be tolled between March 13, 2020, and the date that the disruption ended.
  • Timing for Termination – Under certain circumstances, the Copyright Act allows authors to reclaim copyright interests that have been transferred to others. In general, an author may terminate a transfer within a five-year window, provided that the author serves a notice on the transferee between two and ten years before the chosen termination date.  After service, the notice must be recorded with the Copyright Office.  To ensure that authors are not deprived of their ability to effect this termination, the Copyright Office has provided the following:
    • If the termination window is expiring, the window for service of a notice of termination will be extended if:
      • the termination window expires on or after March 13, 2022, and less than two years after the date the disruption by coronavirus ends;
      • the author serves a notice of termination within 30 days after the date the Register announces as the date that the disruption ended; and
      • the notice of termination is accompanied by a declaration or similar statement certifying, under penalty of perjury, that, but for the national emergency, the author would have been able to serve the notice at least two years before the close of the window, setting forth an explanatory statement supporting the declaration.
    • If the window to record is expiring, the requirement that the notice be recorded before the date of termination will be waived if:
      • the author has already served the notice on the transferee;
      • the termination date listed on the notice is on or after March 14, 2020, and on or before the date the Register announces as the date the disruption ended;
      • the author records the notice within 30 days after the date the disruption ended; and
      • the recordation submission includes a declaration or similar statement certifying, under penalty of perjury, that, but for the national emergency, the author would have served the notice in a timely manner. The declaration must also set forth an explanatory statement supporting the certification, such as a statement that the author was prevented from accessing or mailing the required materials.

The Copyright Office says it will also consider additional appropriate modifications as it becomes aware of sufficient disruption to the copyright system caused by the outbreak.  The above modifications will be in effect for 60 days, unless the Register issues an announcement stating that the period of disruption ended before that time or that a further extension is necessary.

In its notices, the Copyright Office has also set out some alternate procedures for electronic applications accompanied by physical deposits to mitigate the effect of the temporary closure of the Copyright Office.

It would be best if all applicants and registrants could timely file their documents with the USPTO and the Copyright Office if they are able.  However, for those who are unable to timely file because of the effects of the Coronavirus outbreak, we recommend you confer with an intellectual property attorney to confirm if and how your deadline may be extended under the guidance issued by the USPTO and the Copyright Office.

Elizabeth M. Stamoulis
estamoulis@williamsparker.com
(941) 552-5546

Update: CARES Act Grants Authority for Adjustment of IP Deadlines

An update to this post was published April 7. 

The newly-passed CARES Act now authorizes the Director of the United States Patent and Trademark Office (“USPTO”) and the Register of Copyrights to “toll, waive, adjust, or modify” certain timing deadlines and provisions under trademark, patent, and copyright law in response to the Coronavirus outbreak. This addresses the issue previously raised by the USPTO, discussed in our original post below, that it was unable to grant waivers or extensions of certain trademark deadlines and fees because they are set by statute rather than regulation.

The USPTO Director and the Register of Copyrights may exercise the powers granted under the CARES Act by publicly publishing a notice to that effect. We will continue to monitor the situation and update this Blog with the latest news.

This post is an update to a previous post

Elizabeth M. Stamoulis
estamoulis@williamsparker.com
(941) 552-5546

 

Despite Coronavirus, USPTO Cannot Extend Certain Trademark Deadlines—But Will Waive Fees to Revive or Reinstate

An update to this post was published April 7. 

Even though the United States Patent and Trademark Office (“USPTO”) acknowledged in a recent notice that the Coronavirus outbreak is an “extraordinary situation,” it explained that is nonetheless unable to grant waivers of extensions of certain trademark deadlines. These include the deadlines to file and pay the fees for the following:

  • Statements of Use;
  • Affidavits of Continued Use or Excusable Nonuse;
  • Renewals; and
  • Filing an Opposition or Cancellation Proceeding.

The USPTO has explained that it is unable to extend these deadlines or waive the associated fees because they are set by statute. In contrast, the USPTO does have flexibility when applying fees for petitions to revive an abandoned application or to reinstate a canceled or expired registration, which are set by regulation.

It would be best if all applicants and registrants could file these documents timely if they are able. However, for those who are unable to timely respond because of the effect of the Coronavirus outbreak, the notice states that the USPTO will waive the petition fees to review applications and registrations that are abandoned, canceled, or expired. The petition must include a statement explaining how the failure to respond was due to the effects of the outbreak and must be filed within two months of the issue date of the notice of abandonment or cancellation or, if the applicant or registrant did not receive a notice of abandonment or cancellation, within six months after the date the USPTO’s electronic records system indicates that the application is abandoned or the registration is canceled or expired.

You can read the full notice issued by the USPTO here.

Elizabeth M. Stamoulis
estamoulis@williamsparker.com
(941) 552-5546

Not All Trademarks Are Created Equal: What You Need to Know Before You Meet with Your Marketing Team

“All animals are equal, but some animals are more equal than others.”
– George Orwell, Animal Farm

As far as intellectual property attorneys are concerned, when George Orwell wrote the infamous quote above, he may as well have been talking about trademarks. As with the animals in Animal Farm, not all trademarks are created equal. Some are not eligible for protection at all; others, while eligible for protection, may be protectable only under certain circumstances or may not be granted as much protection as others.

Whether a trademark is protectable, and the amount of protection it receives, is analyzed in part based on the trademark’s conceptual strength or its “distinctiveness.” The less distinctive a mark is, the less likely it is protectable (if at all); conversely, the more distinctive a mark is, the more likely it is protectable.

The classifications of trademark distinctiveness are as follows:

  • Not Inherently Distinctive – These types of marks are either never protectable or are only protectable upon a showing of additional evidence.
    • Generic – Generic marks exist where the mark is the common name of the good or service with which it is used. For example, “apple” would be generic for a mark used in connection with the sale of apples. Generic marks have no distinctiveness and are never eligible for trademark protection.
    • Descriptive – Descriptive marks exist where the mark is descriptive of a characteristic or quality of the good/service for which it is used. For example, Zatarain’s “Fish-Fri” mark was held to be descriptive of a breading that is used to fry fish. Descriptive marks are not inherently distinctive (and therefore are not inherently protectable as trademarks).They can acquire distinctiveness over time, but this requires additional evidence to show that this distinctiveness has been acquired.
  • Inherently Distinctive – These types of marks are protectable without any additional evidence.
    • Suggestive – Suggestive marks refer to a characteristic of the relevant good or service, requiring some imagination to identify the good or service. For example, “Coppertone” is suggestive for sunblock.
    • Arbitrary – Arbitrary marks are existing words that have no logical relation to the relevant goods or services. For example, “Apple” is arbitrary when used for computers.
    • Fanciful – Fanciful marks are marks that did not previously exist and were only created by the producer to identify its brand. For example, “Exxon” is a fanciful mark.

The types of trademarks that companies and their marketing departments often prefer either name the product directly or describe the product or its qualities. This allows the mark to immediately convey the type of product to the consumer. However, as you can see, from a trademark perspective those marks are typically generic or descriptive, and therefore are the least desirable because they are not inherently distinctive. In contrast, distinctive marks, which do not describe or name the goods or services, most easily obtain trademark protection.

George Orwell also said, “The worst thing you can do with words is to surrender them.” Do not surrender your words by choosing unprotectable or weak trademarks. As attractive as it may seem to choose a generic or descriptive mark, if you are choosing a trademark that you plan to build and grow into a successful brand, and want to be able prevent others from infringing your mark and trading off of your hard-earned goodwill, you should choose a more distinctive mark, one that is created more equal than the others.

Elizabeth M. Stamoulis
estamoulis@williamsparker.com
(941) 552-5546

What Is the Right of Publicity (and Are You Violating It)?

Is there a reference to your company’s notable clients on your website, or do your company’s social media posts include the names or images of individuals? If so, you may be violating their right of publicity.

The right of publicity allows an individual to prevent the use of his or her identity for commercial purposes without permission. “Identity” can include the individual’s name, voice, image, or likeness. And “commercial purposes” under Florida law is an uncertain standard.

Florida’s right of publicity is relatively broad.  Some states only allow “celebrities” to bring a claim, and some states only allow living persons to bring a claim.  Florida gives all individuals, regardless of their celebrity status, the right to bring a lawsuit, and Florida law extends its statutory publicity right for 40 years after an individual’s death.

One area where right of publicity issues arise often is social media. If your social media posts include the names or images of individuals, it is important to consider whether their consent is required. Some Florida cases have held companies liable when using others’ likenesses in Facebook posts to promote their company or event. These recent cases have warned against the potential suggestion of any type of endorsement (without permission) in online posts by businesses.

The right of publicity is a little-known, but very powerful, right.  In today’s increasingly digital society, it is crucial to consider the right of publicity and whether consent may be needed before using another person’s name or likeness in connection with your business.

Elizabeth M. Stamoulis
estamoulis@williamsparker.com
(941) 552-5546

Do You Own Your Company’s Internet Presence? (The Answer May Surprise You.)

Websites can make or break a business, and catchy social media posts are becoming part of a company’s brand.  Consumers look to websites and social media for company information, making the management of these digital assets crucial to a business’s success. While most companies put much effort into creating and sustaining their online presence, many do not implement policies to ensure that they own those digital assets.

Domain Names
Domain names are not traditional items of property but should be safeguarded nonetheless as vital company assets. A domain name signifies the primary identifier and addresses of a business’s website. To “own” a domain name, you must purchase it from a domain name registrar like GoDaddy. Purchasing a domain name registers it in the database of the Internet Corporation for Assigned Names and Numbers. This database keeps track of all registered domain names purchased from authorized registrars.

In many cases, companies will have employees, contractors, or IT consultants register the domain name. Often, that person will enter his or her own name as the registrant. However, this results in that person, rather than the company, being listed as the owner of the domain. If the employee or contractor ever terminates their relationship with the company, this can lead to arguments over the ownership of the domain name and the website.  There have been several cases where unhappy employees attempted to use their control of a domain as leverage against a former employer.

Social Media Accounts
What happens when a company has a well-established social media account run by an employee? Who owns the account? Who owns its content? If the employee leaves the company, what rights does the company have over the information for the account? It is important that business owners know the answers to these questions before issues arise. Leading cases make it clear that the answer to these questions depend on the facts of the case and a variety of identifiable factors.

In one case in California, an employee had managed a Twitter account used to promote its employer’s services. Upon termination, the employee refused to turn over the login information for the account or remove the company name from the account. The company sued the employee for misappropriation of trade secrets. The case eventually settled, with the employee allowed to keep all rights over the social media account and its followers.

In another case, a company hired an employee to develop websites and social media accounts to promote the company’s products. The employee signed an agreement stipulating that they would return all confidential information to the employer if employment was ever terminated. Upon termination, the employee refused to turn over the login information for the accounts. The court held that the employee was required to turn over the login information.

Protecting Digital Assets
Disputes over digital assets can be costly and time-consuming. The cases discussed above demonstrate that the best course of action is to prevent these types of issues from arising in the first place. This can be done with a with a well-drafted agreement. Many business owners have employees and contractors sign agreements ensuring that intellectual property created by the employee or contractor will be owned by the business. In the modern age of the internet, these agreements should be updated to include provisions making clear that digital assets such as domain names and social media accounts, along with their contents, are also owned by the business.

Elizabeth M. Stamoulis
estamoulis@williamsparker.com
(941) 552-5546

Protecting Your Company’s Brand Through Trademarks

Protecting your company’s trademarks is important to grow your brand and prevent other companies from trading off your hard-earned goodwill. Below are a few things to keep in mind when creating and protecting trademarks.

Choosing a Trademark
There are a number of considerations when choosing your company’s trademark.  Among other things, you should:

  • Make sure that your mark will not infringe on an existing mark. Your trademark could infringe another trademark because it is spelled the same, looks the same, or even sounds the same.
  • Consider choosing a more “distinctive” mark to receive a higher level of protection. While marks that are descriptive of your goods or services may be desirable from a marketing perspective, they can be harder to protect as trademarks.
  • Make sure that the domain name is available for purchase. Even if the trademark has not been registered, the domain name may be in use by another company.

Registration
The best trademark protection comes from registering the mark. Where you register will depend on where the trademark is used.

  • If the trademark is used for goods sent across state lines or services that affect interstate commerce, a federally registered trademark would provide the most complete protection.
  • If the trademark will only be used within one state, state trademark registration may be a simpler alternative to consider.

Keep in mind that just because your company is registered with your state’s Secretary of State or because you have registered a fictitious name does not mean your trademark is automatically registered.

Protection
Once a trademark application has been filed and the mark has been registered, you must have a plan in place to police your brand to make sure that others are not infringing it. If someone is infringing your trademark, this could lead to a loss of business or could affect your company’s reputation and its ability to fully protect its trademark.

Evolution
As your company evolves, so must your trademarks. As you create new products and services or expand the area of your business, you may want to create new trademarks or file existing trademarks in new jurisdictions.

These are just a handful of items to keep in mind for creating and protecting your company’s trademarks. Other forms of intellectual property protection for your company may also be available through copyright and trade secret protection. For more information on using intellectual property law to protect your brand, please give us a call or email.

Elizabeth M. Stamoulis
estamoulis@williamsparker.com
(941) 552-5546

Can Your Website Expose You to Copyright Infringement Liability? Make Sure Your DMCA Protection Is Up-To-Date

Does your website allow users to post content in any way (whether it be through a message board or even a simple comment or review), or do you link to other websites from yours?  If so, you may be subject to liability for copyright infringement if the posted or linked content is infringing.  Luckily, the Digital Millennium Copyright Act (the “DMCA”) creates safe harbors which could provide protection from such liability.

To qualify for the safe harbors, a website operator must satisfy a number of requirements, which may include the following:

  1. Adopting, reasonably implementing, and informing subscribers and account holders of a policy for terminating repeat infringers’ use of the operator’s system or network under appropriate circumstances; and
  2. Designating an agent to receive notices of alleged infringement.  As of the end of last year, the U.S. Copyright Office (the “Office”) implemented a new electronic system for the designation of agents.  The Office will no longer accept paper designations.

If you already comply with the DMCA safe harbors and previously filed a paper designation, you will need to submit a new, electronic designation by the end of the year to maintain your compliance with the DMCA safe harbor.  Once filed electronically, the designation must be renewed every three years.

If you operate a website that links to other websites or allows users to post content but have not complied with the DMCA safe harbors, you may want to consider designating an agent with the Office and implementing the other required policies to gain the benefit of the DMCA safe harbors against copyright infringement claims.

Elizabeth M. Stamoulis
estamoulis@williamsparker.com
(941) 552-5546

Protecting Your Company’s Brand through Trademarks

Protecting your company’s trademarks is important to grow your brand and prevent other companies from trading off your hard-earned goodwill. Below are a few things to keep in mind when creating and protecting trademarks:

Choosing a Trademark

There are a number considerations when choosing your company’s trademark. Among other things, you should:

  • make sure that your mark will not infringe on an existing mark. Your trademark could infringe another trademark because it is spelled the same, looks the same, or even sounds the same.
  • consider choosing a more “distinctive” mark to receive a higher level of protection.
  • make sure that the domain name is available for purchase. Even if the trademark has not been registered, the domain name may be in use by another company.

Registration

The best trademark protection comes from registering the mark. Where you register will depend on where the trademark is used.

  • If the trademark is used for goods sent across state lines or services that affect interstate commerce, a federally registered trademark would provide the most complete protection.
  • If the trademark will only be used within one state, state trademark registration may be a simpler (and cheaper) alternative to consider.

Keep in mind that just because your company is registered with your state’s Secretary of State or because you have registered a fictitious name does not mean your trademark is automatically registered.

Protection

Once a trademark application has been filed and the registration has been received, you must have a plan in place to police your brand to make sure that others are not infringing it. If someone is infringing your trademark, this could lead to a loss of business or could affect your company’s reputation and its ability to fully protect its trademark.

Evolution

As your company evolves, so must your trademarks. As you create new products and services or expand the area of your business, you may want to create new trademarks or file existing trademarks in new jurisdictions.

These are just a handful of items to keep in mind for creating and protecting your company’s trademarks. Other forms of intellectual property protection for your company may also be available through copyright and trade secret protection. For more information on using intellectual property law to protect your brand, please give us a call or email.

Elizabeth M. Stamoulis
Admitted only in New York
estamoulis@williamsparker.com
941-552-5546