Artificial Intelligence Creates Confusion in the Intellectual Property World

While the USPTO and US Copyright Office have each held that inventions and creative works generated by AI do not qualify as inventors or authors for the purpose of patent or copyright protection, it is unclear who owns the works. Those who have created the AI systems as well as the artists and authors whose works were used to train the AI have attempted to claim ownership as well. Click here for full article

Foreign Words Not Considered “Fanciful” in the Trademark World

I often have clients that come to me hoping to trademark a foreign word. While foreign languages can hold great appeal, Applicants are required to disclose the meaning of a foreign word in every application.   Every foreign word is reviewed based on its equivalent in English during prosecution.

For instance, Süß is a German word meaning sweet. If I was to apply for the mark “süß treats” that mark would be examined as if it was “sweet treats”.  The mark may proceed to registration if my services are limited to driveway resurfacing but it would be unlikely to succeed if I tried to register it for candy. This article does a good job of explaining the descriptiveness of foreign words more clearly.

Diminishing Success Rate in Successive Office Action Responses

Before engaging with a client in a new patent application I make a point of reviewing the overall grant rate statistics. Typically, the acceptance rate for patent applications in the United States hovers right around 50%. In 2020, the grant rate was 53% meaning that nearly half of the patent applications submitted never resulted in a patent.

While the odds may be slightly in an applicant’s favor, it is important to understand that the battle for a patent is an uphill one from the start. During prosecution, an applicant may receive a number of rejections.  In my experience, most examiners are not willing to grant a patent after a response to a second office action. This article and graphic seem to arrive at the same conclusion.  Click here for article and graph outlining the success rate of successive responses to rejections by the USPTO. 

Producers of Better Call Saul Sued for Trade Dress and Trademark Infringement

Liberty Tax Services recently filed suit against AMC Networks and Sony Pictures, claiming that the disreputable “Sweet Liberty Tax Services,” portrayed in the series, infringed the company’s trademark and trade dress. The suit alleges “dilution, defamation, disparagement, and injurious falsehoods” based on the unflattering light in which the fictional business was portrayed.  Click here for full article.

USPTO Spoofing Scam – Beware!

Recently USPTO Trademark applicants have been receiving calls from scammers claiming to be from the USPTO. The call identifier may note “USPTO”; however, these calls are being spoofed. Generally speaking, you will not receive a call from the USPTO unless you are a pro se applicant and have a trademark that is currently in the prosecution phase. In such a case, the caller will identify the application and their name which should correspond to the application under examination and they will never ask for money or personal information. You should hang up if you receive such a call and contact the examiner directly if you are in doubt. Please click here for more information

Scotch Whisky Association Successfully Registers “Scotch Whisky”

Fellow Scottish whiskey (or more correctly, whisky) buffs will appreciate the recent registration of SCOTCH WHISKY by the Scotch Whisky Association. (See U.S. Reg. No.6763223).  This registration will help to ensure that whiskeys labeled “Scotch Whisky” were manufactured in Scotland in accordance with their high standards.


U.S. Copyright Claims Board Offers a Low Cost Path to Enforcement

The U.S. Copyright Claims Board recently went live, offering copyright holders a low cost method of enforcement.  The filing fee is $100, an attorney is not required, and the damage award is capped at $30,000. Registered copyright holders may choose to opt out and take the traditional federal suit route for larger damage claims. One of the first proceedings filed involves Paris Hilton who is accused of sharing photos on social media that infringe on the copyright owner’s fairy wing design. Click here for more information on the U.S. Copyright Claims Board.