2022 Articles

Benefits of Registering a Trademark as an Entity By Ahad Syed June 2022 Some advantages of registering a trademark as as entity.

Copyright Damages and the Statute of Limitations By Beverly A. Berneman December 2022 The Copyright Act limitations to file suit for infringement is three years. Some plaintiffs aren’t quickly aware of the infringement, so some districts apply a “discovery rule” to extend the permitted filing time. Whether a plaintiff is entitled to damages for the gap between the initial infringement date and the complaint filing is neither clear nor consistent.

Copyright Derivative Works and Section 203: A Tale of Two Phanatics By Margo Lynn Hablutzel March 2022 Is a baseball mascot merely a costume, a work of art, or something else? If the artist wants to reclaim the copyright, can the team use a derivative version of the original design after the termination of its license in the original, and how does when the new mascot was created interact with the Copyright Act’s termination provision?

Copyright Small Claims Court: It’s Almost Ready By Beverly A. Berneman March 2022 On December 27, 2020, Congress enacted the Copyright Alternative in Small Claims Enforcement Act (CASE Act). The CASE Act establishes a small claims court for copyright infringement cases. The law requires the Copyright Office to establish a Copyright Claims Board within one year to hear the claims.

Counseling Businesses Trademarking Digital Assets By Ahad Syed December 2022 Intellectual property recognizes intangible property, expanding from books and words to include software, architectural works, name-image-likeness, and now non-fungible tokens, and more. Guidelines for applying to register trademarks for digital assets are give, especially whether the asset if within trademark Class 9 services or Class 42 services.

Digital Assets in the U.S.: The Evolving Regulatory Framework and President Biden’s Executive Order By Nikhil Mehta June 2022 The current regulatory landscape surrounding digital assets in the U.S. is cloudy at best with a patchwork of various federal agencies vying for oversight.

Does Your U.S.-Based Client’s Website Need a Cookie Consent Banner? By Aaron W. Brooks September 2022 The internet has become afflicted with a scourge of bothersome popup windows and dialogue boxes purporting to give us more control over how we’re tracked online. These mechanisms seem to have done little more than clutter up our screens and create a global click-through-loophole around regulations. The European Commission itself has acknowledged that cookie laws have “resulted in an overload of consent requests for internet users” and is currently considering sweeping changes to these laws. Lawyers who advise US-based clients on their online presence should carefully consider their use of cookies. This article provides a basic analysis of cookie-related regulations and offers practical suggestions.

DuPage County Bar Association – USPTO Ethics Assessing Attorney Misconduct & Introduction to the Diversion Pilot Program By Kenneth Matuszewski June 2022 The USPTO will be assessing attorney misconduct and also initiating a diversion pilot program.

From the Chair: To New Beginnings By Kenneth Matuszewski June 2022 Outgoing Chair Kenneth Matuszewski looks backward with thanks and forward with enthusiasm on the Intellectual Property Section activities.

Getting to Know Judge Jackson: Quotes and a Trademark Case By Catherine M. Goe June 2022 During her Supreme Court confirmation hearing, Sen. Diane Feinstein asked Judge Jackson to talk briefly about one or two cases that “have made a deep impression on you and have really enabled you to progress as you have.” Judge Jackson discussed Yah Kai World Wide Enterprises, Inc. et al, v. Geoffrey Napper, 292 F.Supp.3d 337 (D.D.C. 2018).

Intellectual Improbabilities™ By Daniel Kegan December 2022 An eclectic gathering of recent intellectual property developments.

Intellectual Improbabilities™ By Daniel Kegan September 2022 An eclectic gathering of recent intellectual property developments.

Intellectual Improbabilities™ By Daniel Kegan June 2022 An eclectic gathering of recent intellectual property developments.

Intellectual Improbabilities™ By Daniel Kegan March 2022 An eclectic gathering of recent intellectual property developments.

IP Rights Enforcement in Canada By Adam Haller, Caroline Henrie, & Kristin Wall March 2022 This article discusses venues and jurisdiction for enforcement; discovery and obtaining evidence of infringement; trial decision-maker; structure of the trial; infringement and defenses for patents, trademarks, copyrights; time to first-level decision; remedies pre-trial and post-trial; appellate review; alternatives to litigation.

.KIDS: Participating in the Sunrise Period Is a Moral Duty By Emmanuel Gillet September 2022 The DotKids Foundation registry aims to create and promote a digital universe adapted to the well-being of children. The Foundation registry aims to create and promote a digital universe adapted to the well-being of children—a world population of 2.4 billion under 18, about one-third the world’s population. To this end, the registry has adopted guiding principles based on the 1989 Convention on the Rights of the Child, <ohchr.org>. The new Global Top Level Domain (gTLD) differs from most other gTLDs; it is dedicate to a population of vulnerable Internet users. Brand owners are urged to file their trademarks with the Trademark ClearingHouse (TMCH), <www.trademark-clearinghouse.com>, and register the corresponding domain name as early feasible. One must fight against .KIDS cybersquatting.

Legal Considerations of Cryptocurrency Ownership for Senior Citizens: Management and Security—Part 1 By Iman Eikram June 2022 Considerations for attorneys who have elderly clients holding digital assets.

The New Trademark Modernization Act: Its Impact on Foreign Trademark Owners By Stacey C. Kalamaras March 2022 The Trademark Modernization Act ("TMA") was signed into law on December 27, 2020, to address the increase in fraudulent trademark filings by foreign trademark owners, many of which reside in China. The TMA amends the Trademark Act and became mostly effective at the USPTO on December 18, 2021. These changes will have a tremendous impact on the integrity of the US trademark registry. The TMA’s sweeping changes will have the greatest impact on foreign trademark owners, who are allowed to apply to register trademarks in the US without first demonstrating use in commerce.

Quick Look Intellectual Property Audit By David C Brezina September 2022 A guide to reviewing company documentation and procedures, especially where there have been significant management and/or ownership changes. The purpose is not to find errors, but rather to find out what is “there” and what might help develop the business, particularly where a bit of a different direction might be indicated. There can be many valid business reasons for not taking action in the past—most decisions weigh risk and expense—that might provide opportunities for future growth.

Seventh Circuit Opinion Correctly Decides the Wrong Law? By Phillip R. Van Ness June 2022 The K.F.C. v Snap, Inc., No. 21-2247 (7th Cir. March 24, 2022), court made the correct decision, although with puzzling implications. When and how should arbitration contract formation be evaluated?

The Status of Interactions With Rospatent By Margo Lynn Hablutzel, J.D. June 2022 Russia invaded Ukraine. The United States, the EU, and other nations sanctioned Russia. On March 22, 2022, the USPTO terminated engagement with Rospatent, Belarus IP Office, and the Eurasian Patent Organization.

Taped Banana as Art: Morford v. Cattelan (SD FL 2022) By Lizzie Scott December 2022 Can a banana duct-taped to a rectangular green board be art? Registered with the U.S. over $390,000, would the registration support a federal suit for copyright infringement? Judge Scola denied the motion to dismiss. Artist Lizzie Scott offers an artist’s perspective.

U.S. Trademark Office Halves Response Times By Margo Lynn Hablutzel December 2022 Effective Dec. 3, 2022, the current standard six months due date to respond to a trademark office action is halved to three; for post-registration matters the cleavage is effective Oct. 7, 2023. A three-month extensions to the initial three-month due date may be available for $125. <www.federalregister.gov/d/2022-22217>

USPTO Oddball Fun Fact By Sam Castree, III September 2022 Using the PTO’s Trademark ID Manual, <idm-tmng.uspto.gov/id-master-list-public.html>, can ease examiner acceptance of an application’s goods and services description. And if the exact description you want to use isn’t in the current online manual, you can suggest an addition, usually decided within days, <TmIdSuggest@USPTO.gov>. Too general a description may encroach on prior registrations; too narrow may unnecessarily limit an applicant’s registration rights. Every wonder how oddly specific a trademark goods or services description can get?