Supreme Court Reinforces Position That the Patent Office Has the Final Say on Whether to Initiate an Inter Partes Review

On April 20, 2020, the U.S. Supreme Court decided that the USPTO’s decision to institute inter partes review, even after the one-year statutory time limit for requesting the review, is not appealable. In other words, the USPTO has the final say for all questions that are closely tied to its decision whether to initiate inter partes review. The case is Thryv, Inc., FKA Dex Media, Inc. v. Click-To-Call Technologies, LP, et al., No. 18–916 (S. Ct. April 20, 2020). Continue Reading

Your Trademark Just Became More Valuable: Romag Fasteners, Inc. v. Fossil Group, Inc.

Under the Lanham Act, a trademark owner can recover damages (i.e., the owners lost sales because of infringement), but also is entitled to disgorgement of the infringer’s profits from the infringement. But typically (at least in the Ninth Circuit), if damages are awarded, the plaintiff recovers damages only for lost sales (which are very hard to prove) or a reasonable royalty for the infringing use. This is because the Ninth Circuit, like six other circuits, required a finding of “willfulness” in order to recover the defendant’s actual profits from the infringement. Six other circuits did not require such a finding of willfulness to recover the defendant’s actual profits. With the decision today in Romag Fasteners, Inc. v. Fossil Group, Inc., the Supreme Court ended that debate – a trademark holder does not need to prove willfulness to recover the infringer’s profits.

The underlying dispute involved a contract allowing respondent Fossil (who makes fashion accessories) to use petitioner Romag’s magnetic snap fasteners on handbags and other products, along with the ROMAG trademark. Romag discovered that Fossil was using counterfeit magnetic snaps, and ultimately sued Fossil. The case proceeded to trial, and the jury found that Fossil acted with “callous disregard” of Romag’s marks. The jury ordered Fossil to disgorge $6.7 million in profits earned as a result of its infringement.  However, the district court judge reversed that profit award after the verdict as there was no finding of actual “willfulness.”

The Supreme Court has now made clear that there is no need for a trademark plaintiff to show “willful” infringement to recover the defendant’s profits earned as a result of the infringement. As a result, trademarks will be more valuable, and infringement more expensive. If you’re thinking about launching a new brand, working with your trademark attorney beforehand will become even more important, as the potential price of infringement has now gone up.

CCPA Enforcement Will Not Be Delayed Due to COVID-19: Is Your Business in Compliance?

Enforcement of the California Consumer Privacy Act (CCPA) is set to begin on July 1, 2020. The global pandemic has many companies urging the California Attorney General (AG) to delay enforcement until 2021, since testing CCPA-compliant platforms can be much more difficult when IT teams cannot work on site. The California AG, however, has declined to delay enforcement at this point, and companies should continue with compliance as planned.

The regulation, which was implemented on January 1 of this year, applies to for-profit businesses that collect the personal information of California residents, determine the purpose or means of processing that information, and meet at least one of the following thresholds: (1) have annual gross revenue of $25 million or more; (2) annually buy, receive, or share the personal information of 50,000 or more consumers for commercial purposes; or (3) derive 50 percent or more of their annual revenue from selling the personal information of California residents. Continue Reading

First Amendment Beats Trademark Rights Three Times in One Day

Trademarks protect against consumer confusion. But the First Amendment protects speech even when it may result in some confusion. When these two principles intersect, trademark holders may be surprised to find that the First Amendment often wins. In three March 31 decisions, courts sided with First Amendment freedom of expression over commercial claims alleging violation of trademark and publicity rights.

Continue Reading

Thinking about Using Trademarks to Capitalize on the COVID-19 Pandemic? Think Again.

Over the past few weeks, many entrepreneurially-minded people have filed trademark registration applications with the U.S. Patent & Trademark Office in apparent attempts to cash in on the current global health crisis. Example marks from this influx of applications include: I HEART COVID-19, COVID-19 INFECTED, #CORONAVIRUS, WARNING MY RIDE IS SICKER THAN THE CORONAVIRUS, and CORONAVIRUS: MADE IN CHINA. The goods and services identified for these marks range widely from t-shirts and other apparel to magazines, music recordings, educational materials, pharmaceutical compositions, and even tax planning services. While some of these filings may be tied to a sincere business intent, many have been criticized as being distasteful and perhaps even a waste of time and government resources. Continue Reading