Archives for December 2015

Federal Circuit Finds the Lanham Act’s Disparagement Provision Unconstitutional

In a December 22 en banc decision, the Federal Circuit held that the Lanham Act’s bar on registration of disparaging marks violates the First Amendment.  Finding that the disparagement provision is subject to strict scrutiny as a content-based restriction on speech, the Federal Circuit ruled that the government’s refusal to register disparaging marks furthered no compelling interest because it does not prevent use of such marks or protect consumers from exposure to such marks.  The Federal Circuit further held that federal registration provides trademark owners valuable rights that cannot be denied because the government disagrees with the message conveyed by their marks.  Denial of these important legal rights would discourage use of disparaging marks, thus inhibiting freedom of speech.

Background:

Tam is the “front-man” for the Asian American-comprised band The Slants, so named to “reclaim” or “take ownership” of Asian stereotypes. Tam sought to register the mark “THE SLANTS.” The Examiner refused to register the mark because a substantial composite of people of Asian descent would find the term disparaging. The TTAB affirmed the Examiner’s refusal. Tam appealed and argued that the disparagement provision of the Lanham Act § 2(a) is unconstitutional. On appeal, the Federal Circuit affirmed the TTAB by relying on In re McGinley, which reasoned that the disparagement provision does not violate the First Amendment because a refusal to register a mark does not bar the applicant from using the mark. The Federal Circuit sua sponte ordered a rehearing en banc.   Click here for our detailed summary of this decision.

USPTO Power Outage

The USPTO has experienced a major power outage resulting in damage to many of their systems.  They estimate that their systems will be impacted at least through the Christmas holiday on Friday, December 25.  In light of this emergency situation, the PTO will consider each day from Tuesday, December 22, 2015, through Thursday, December 24, 2015, to be a “Federal holiday within the District of Columbia”.  Thus, documents will be considered timely filed if filed on Monday, December 28.

USPTO Power Outage Update

‎Yesterday, ‎December ‎23, ‎2015, ‏‎7:47:47 PM | OCIO Service Desk

Statement updated at 5:55 p.m. ET December 23, 2015 to add information related to filing deadlines.

A major power outage at USPTO headquarters occurred Wednesday, Dec. 22, resulting in damaged equipment that required the subsequent shutdown of many of our online and IT systems. This includes our filing, searching, and payment systems, as well as the systems our examiners across the country use. Additionally we are unable to receive faxed documents. We are working diligently to assess the operational impact on all our systems and to determine how soon they can be safely brought back into service in the coming days. We understand how critical these systems are for our customers, and our teams will continue to work around the clock to restore them as quickly as possible, though we are currently estimating that these systems will be impacted at least through the Christmas holiday on Friday, December 25.

In light of this emergency situation, the USPTO will consider each day from Tuesday, December 22, 2015, through Thursday, December 24, 2015, to be a “Federal holiday within the District of Columbia” in accordance with the description and regulations in this official notice posted here: http://www.uspto.gov/blog/ebiz/.

Further status updates will be issued on this page as they become available, as well as on our Facebook (www.facebook.com/uspto.gov) and Twitter (www.twitter.com/uspto) accounts.

Thank you for your patience as we work to restore full service as soon as possible.

Shutdown of Certain Electronic Systems of the United States Patent and Trademark Office from Tuesday, December 22, 2015 through Thursday, December 24, 2015

On December 22, 2015, at approximately 7:00 pm, the United States Patent and Trademark Office (USPTO) experienced a major power outage at its headquarters in Alexandria, Virginia, resulting in damaged equipment that required the subsequent shutdown of many USPTO online and information technology systems. The USPTO is currently estimating that these systems will be impacted through at least the Federal holiday on Friday, December 25, 2015. In light of this emergency situation, the USPTO will consider each day from Tuesday, December 22, 2015, through Thursday, December 24, 2015, to be a “Federal holiday within the District of Columbia” under 35 U.S.C. § 21 and 37 C.F.R. §§ 1.6, 1.7, 1.9, 2.2(d), 2.195, and 2.196. Any action or fee due on these days will be considered as timely for the purposes of, e.g., 15 U.S.C. §§ 1051(b), 1058, 1059, 1062(b), 1063, 1064, and 1126(d), or 35 U.S.C. §§ 119, 120, 133, and 151, if the action is taken, or the fee paid, on the next succeeding business day on which the USPTO is open (37 C.F.R. §§ 1.7(a) and 2.196). A subsequent notice is anticipated to be issued as needed if the USPTO’s systems are not fully operational by Monday, December 28, 2015.

37 C.F.R. §§ 1.6(a)(2), 2.195(a)(4), and 2.198 provide that certain correspondence deposited in the Priority Mail Express® service of the United States Postal Service (USPS) in accordance with 37 C.F.R. §§ 1.10 or 2.198 will be considered filed on the date of deposit (as shown by the “date accepted” on the mailing label) with the USPS. Thus, any paper or fee properly deposited in the Priority Mail Express® service of the USPS on Tuesday, December 22, 2015, Wednesday, December 23, 2015, or Thursday, December 24, 2015, in accordance with 37 C.F.R. §§ 1.10 or 2.198, will be considered filed on its respective date of deposit in the Priority Mail Express® service of the USPS (as shown by a “date accepted” on the mailing label).

37 C.F.R. §§ 1.6(a)(4) and 2.195(a)(2) provide that patent- and trademark-related correspondence transmitted electronically to the USPTO will be considered filed in the USPTO on the date the USPTO received the electronic transmission. Thus, any patent- or trademark-related correspondence transmitted electronically to the USPTO on Tuesday, December 22, 2015, Wednesday, December 23, 2015, or Thursday, December 24, 2015, will be considered filed in the USPTO on the date the USPTO received the electronic transmission. Patent correspondence successfully received by the USPTO through the Electronic Filing System (EFS-Web) and filed in compliance with the EFS-Web Legal Framework will receive the date indicated on the Acknowledgement Receipt. See the Manual of Patent Examining Procedure (MPEP) § 502.05 and the USPTO website at www.uspto.gov/patents/process/file/efs/guidance/New_legal_framework.jsp. Trademark filings properly filed through TEAS, TEASi, and ESTTA will receive the date indicated in the e-mail confirmation sent at the time of a successful filing.

Payment Processing

The USPTO system outage has affected the ability for customers to process Patent Maintenance Fee payments and submit Deposit Account replenishments online via the Finance Online Shopping Page. Available alternatives include the following:

Public and Private PAIR

Public and Private Patent Application Information Retrieval (PAIR) are also impacted.

If you have any questions, please contact the Patents Electronic Business Center (PEBC) by telephone at 1-866-217-9197 or by email at ebc@uspto.gov. PEBC hours of operation Monday through Friday, from 6 a.m. to midnight.

SEASON’S GREETINGS

Season’s Greetings and Best Wishes for a Joyous Holiday Season & Happy New Year!

http://www.oliff.com/holiday2015

CHANGES TO FEDERAL RULES OF CIVIL PROCEDURE EFFECTIVE DECEMBER 1 IMPACT PLEADING REQUIREMENTS AND E-DISCOVERY

Changes to the Federal Rules of Civil Procedure effective on December 1 will affect, among other things, the pleading requirements in patent infringement litigation and discovery procedures.  The most significant changes (1) eliminate the so-called “Form 18” as setting the standard for required the level of specificity in pleadings in patent infringement cases; and (2) require discovery requests to be “proportional ”  in the circumstances of each case.

In its decisions in Atlantic Corp. v. Twombly, 550 U.S. 544 (2007) and Ashcroft v. Iqbal, 556 U.S. 662 (2009), the U.S. Supreme Court determined that more specificity is required in a civil complaint than what traditionally passed muster under the notice pleading standard of the Federal Rules.  In fact, Iqbal and Twombly have been applied in the context of induced patent infringement cases to require a level of factual detail in the pleadings that amounts to more than just a threadbare allegation of infringement.  However, in 2012, the U.S. Court of Appeals for the Federal Circuit confirmed that Form 18 is the standard by which complaints alleging direct infringement are judged.  See R+L Carriers, Inc. v. DriverTech LLC, 681 F.3d 1323, 1334 (Fed. Cir. 2012) and K-Tech Telecommunications, Inc. v. Time Warner Cable, Inc. 714 F.3d 1277 (Fed. Cir. 2013).  Based on Form 18, providing a patent number and identifying an accused product was sufficient.  Under the December 1 changes, the rule permitting reliance on certain forms is abolished, and following Form 18 is therefore no longer enough.  Instead, consistent with Twombly and Iqbal, all patent infringement complaints must include sufficient factual detail to demonstrate that the claim of infringement is “plausible.”

Rule 26 has also been amended to provide not only that discovery requests must be relevant to a party’s claim or defense, but also that the requests be “proportional to the needs of the case.”  Under revised Rule 26(b)(1), factors to be considered in determining whether discovery is proportional include: (1) the importance of the issues at stake; (2) the amount in controversy; (3) the parties’ relative access to relevant information; (4) the parties’ resources; (5) the importance of discovery in resolving the dispute; and (6) the burden and expense compared to the benefit.

Other notable rule changes include the following:

  • The time limit for service of a complaint after filing is reduced from 120 days to 90 days (Rule 4(m));
  • The time for issuing a Scheduling Order has been reduced from 120 days to 90 days after a defendant has been served, or from 90 days to 60 days after any defendant has appeared (Rule 16(b)(2));
  • Document requests can be served at any time more than 21 days after the summons and complaint are served, and responses are due within 30 days after the parties’ first Rule 26(f) conference (Rules 26(d)(2) and 34(b)(2);
  • A party responding to requests for production must state that it will produce copies of documents or electronically stored information and that the production will be completed at the time “specified in the request or another reasonable time that is specified in the response” (Rule 34(b)(2)(B);
  • Objections to discovery must be stated with specificity and an objection must state whether information is being withheld based on the objection (Rule 34(b)(2));
  • If electronically stored information that should have been preserved is lost or destroyed because of a failure to take reasonable steps to preserve it, the Court “may order measures no greater than necessary to cure” any prejudice, and if it is established that a party acted with intent to deprive the other party of information, the Court may presume that the information was unfavorable to the party and may so instruct the jury, dismiss the action or enter a default judgment. (Rule 37(e)).

It is likely that individual District Courts will take different approaches to these new rules, e.g., with respect to the level of specificity required in pleadings in patent infringement cases, and the proportionality requirement for discovery.  We will monitor cases as the new rules are implemented and report significant developments.