TCAM Today

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Posts by TCAM Today


Singapore – Where Global IP Professionals Came Together

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I just recently left Singapore, where the lush gardens and iconic city skyline served as the backdrop for The International Trademark Association’s (INTA) 145th Annual Meeting. This was the second time that INTA’s Annual Meeting was hosted in Asia and the first time in Southeast Asia. While the location was originally planned for the 2020 Meeting, as with most things in life, the pandemic put that on hold. Despite the immense humidity, 8,000 influential brand and IP professionals from around the world came to the Lion City to share their thoughts regarding future considerations for brand owners and the business of innovation.

One consistent theme throughout the conference was that new challenges are facing brand owners today. Several factors appear to be changing the landscape for brands across various industries including, without limitation, the facts that: (1) counterfeiting is on the rise; (2) the value of intangible business assets is increasing; (3) new countries are becoming IP powerhouses due to global trade; and (4) emerging technologies, such as artificial intelligence (AI), NFTs and the metaverse, are changing the way in which consumers interact with the world around them.

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College T-shirts and Trademarks – Ornamental or Protectable?

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As college freshmen head to campus for the start of classes, there is one vital campus bookstore purchase before classes begin: a T-shirt bearing the college’s logo. This purchase is not only a rite of passage for freshmen; it also touches on an important concept in trademark law: ornamental use of trademarks on T-shirts.

What is ornamental use?

Under sections 1, 2, and 45 of the Trademark Act, the United States Patent and Trademark Office (“PTO”) can refuse registration of a trademark on the ground that the applied-for matter is decorative and therefore does not function as a mark because it is merely ornamentation. In re Peace Love World Live, LLC, 127 U.S.P.Q.2d 1400 (TTAB 2018). Ornamental matter can include words, designs, slogans, or trade dress.

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The Impact on Brands when Trademarks are Used in Military Strategy

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Western companies with trademark rights in Russia are feeling the ripple effects of the Ukrainian conflict.  In response to the economic sanctions and boycotts imposed by the U.S. and other Western countries, Russia has threatened to suspend the intellectual property rights of companies that have ceased operations in Russia.  Additionally, there has recently been an increase in bad faith trademark filings for various brands across a wide range of industries from Chanel to Audi.  Moreover, it appears that Russian courts may allow the infringement and misappropriation of trademarks owned by Western companies in light of a recent decision involving the character Peppa Pig, where the court cited sanctions as a basis for refusing to recognize the Western-based company’s intellectual property rights in the popular cartoon character.

Even those businesses with longstanding ties within Russia don’t appear to be safe.  Certain companies closing locations in the country in response to the conflict in Ukraine are finding that third parties are filing trademark applications for blatant replicas of their brands.  Even more disturbing is that should the Russian government decide to remove trademark protections for Western companies altogether, then a third party could step in and offer goods and services under identical marks.  Depending upon how things play out in Russia, Western brand owners are in serious danger of losing their intellectual property investments in the country.  Exacerbating the problem for these brands is that finding local counsel willing to assist them may be extremely difficult.  Fear for personal safety and the threat of retribution may encourage many trademark attorneys in Russia to steer clear of matters involving companies from “unfriendly” countries.

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2021 Year in Review: OPDP Enforcement Actions Involving Prescription and Biological Products

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The Food and Drug Administration’s Office of Prescription Drug Promotion (OPDP) issued a total of six letters in 2021 — four Untitled Letters and two Warning Letters — to pharmaceutical or biologics companies for promotional materials that allegedly misbranded prescription drug or biologics products. The two Warning Letters issued in 2021 addressed prescription drug promotion. Two of the Untitled Letters also addressed prescription drug promotion, while the other two letters addressed biologic product promotion.

OPDP also sent six letters in 2020; however, the majority that year (four) were Warning Letters, with only two being Untitled Letters. Both Warning and Untitled letters are made public on FDA’s website. Warning Letters are issued for violations of regulatory significance that may lead to enforcement action if not promptly and adequately corrected, whereas Untitled Letters cite violations that do not rise to the threshold of regulatory significance warranting a Warning Letter. Untitled Letters serve as the initial notification that FDA has taken notice of a violation and allow the company to come into compliance without further FDA regulatory action. Historically, OPDP has relied more heavily on Untitled Letters. 2020 was an outlier year with four Warning Letters versus two Untitled Letters, but 2021 signified a return to normalcy, as the agency issued twice as many Untitled Letters as Warning Letters.

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USPTO Embracing New Possibilities with AI

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While the legal industry is typically not known as being cutting edge when it comes to adopting innovative technologies, the U.S. Patent and Trademark Office (USPTO) is taking big steps forward on seeing whether artificial intelligence (AI) may be used during patent and trademark examination to create greater efficiency and consistency with respect to certain routine, high-volume tasks. AI, a technology that refers to “smart” machines that simulate human intelligence, is being examined in many industries to potentially eliminate redundant and routine tasks, and the USPTO is trying to determine whether AI is right for it. Does this mean that future USPTO examiners will be more like C3PO? No. But AI could handle more-routine tasks, which would allow examiners to focus on more-substantive matters related to the examination of trademark and patent filings.

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Healthy Choices: The Power and Perils of Health and Wellness Claims in Advertising

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Even before COVID-19 had turned each of us into an amateur epidemiologist, companies in nearly every industry had begun to recognize the magnetic appeal of health and wellness claims in consumer advertising.  Marketers of everything from cleaning products to apparel to furniture to homes were suddenly making claims touting the health and wellness benefits of their products. It wasn’t just better, it was better for you and your family.  It will surprise no one to learn that the pandemic year of 2020 only intensified this trend, as consumers focused as never before on the ways that their purchases might not only help them live better lives, but perhaps even keep them alive.

Predictably, competitors, regulators and the plaintiff’s bar have all taken notice of this trend, and moved aggressively in response.  In 2020, for example, the BBB National Programs’ National Advertising Division (NAD), the nation’s premier forum for competitor initiated advertising challenges, recorded an extraordinary 50% uptick in challenges to health-related advertising.  Similarly, the Federal Trade Commission (FTC), Food and Drug Administration (FDA), Environmental Protection Agency (EPA), and state regulators across the country have focused intense scrutiny on companies claiming to offer health benefits to consumers often desperate for help.  It is natural to predict that class actions and Lanham Act activity will soon reflect these trends as well.

So with the undeniable power of these claims balanced alongside the risks of a misstep, how should brand messaging communicate the health and wellness benefits of a product in the “right” way?  And what are the red flags to look for in the advertising of your competitors?  Here are a few hints:

  1. Identify the Claims. Advertisement and marketing claims are intended to communicate characteristics of a good or service designed to entice a purchase.  Claims are present in all forms of branded communication, from TV commercials, to print ads, radio announcements, pop-up ads, and social media influencer posts.  Keep in mind it isn’t just about what you are saying, but what can be implied from the images, graphics and pictures.So whether looking to substantiate your own claims, or to challenge the claims of a competitor, the first step is to systematically identify the statements that actually qualify as a “claim.” For many marketers this can seem daunting, but in fact this initial analysis involves asking just a simple question:  what exactly are you promising?  Claims are promises and comparisons presented as facts:  you should buy this product because it will improve your memory.  You should buy this chair because it will reduce your back pain.  You should use this cleaning product because (unlike the products sold by our competitors) it does not contain toxic chemicals.  Performance claims, superiority claims, comparative claims – all of them are, in the end, statements which are either true or false, accurate or misleading.  And it isn’t enough to say “everybody knows X is true” – all claims must be substantiated before you make them.  And remember, it isn’t just what you say directly:  you can be held accountable for what your spokesperson or influencer says, too.
  2. Substantiation. What kind of evidence would substantiate the claim?  How much data is necessary?  Do I need a clinical trial?  Is my evidence enough?The simple answer is…it depends.  The level of scientific evidence necessary to support a claim always depends on the claim that is being made.  Moreover, specific regulatory requirements may apply depending on the claim.  If the product claims to ‘sanitize,’ for example, then it is possible that EPA approval may be necessary or it must meet certain FDA requirements.  Of course, if the product is not regulated, the standard may differ.  This is where talking things through with your counsel is most critical:  the same type of claim on a different kind of product may not be subject to the same requirements.  In any event, the science must closely match the requirements of the claim language.  Don’t let your claim outpace the science – anecdotes from happy customers, or enthusiasm for your product, can never substitute for systematic evidence.
  3. Magic Language. We all love puffery – and we all think we know it when we see it.  But, that isn’t always the case.  Statements that are specific, quantifiable or purport to describe objective facts may not constitute puffery, regardless of how over the top the language may seem.  Claims about the ‘safest’, ‘best’, ‘highest quality,’ can all require substantiation under certain circumstances.  Perhaps it is just enough to merely offer the “finest” of all puffery….
  4. Is this a Regulated Claim?  Is it possible that the product “sanitizes”, has “antimicrobial” properties, or somehow prevents or reduces the likelihood of contracting COVID-19?These statements are important ones as they may transform the product from an ordinary consumer product to a regulated product.  Sanitizing and antimicrobial properties may trigger EPA review and treatment or prevention of a disease may render a product a ‘drug’ regulated by the FDA.  Of course, the FTC may also assert its authority particularly if these statements are disseminated on a product website or in other forms of advertisement.  It is possible that the mere existence of these words invite enforcement activity.
  5. Is this a Comparative Claim? The most, the best, the mostest, the bestest, the… mostest bestest?  We all want to be on top, but sometimes that means a “head-to-head” comparison is necessary to substantiate the claim.  Even then, it is necessary to understand that an unqualified comparison may trigger a greater level of substantiation because consumers may understand it to mean “as compared to all leading products nationwide.”  Our advice: “Think before you compare” and determine the basis for your comparison – don’t just assume that everyone will understand it in the same way.

While health and wellness claims are subject to an increasingly intense level of scrutiny by competitors and regulators alike, there is little question that consumers want to know whether the products they buy are in alignment with the health and wellness goals they have set for themselves and their family.  A well-crafted campaign supported by properly substantiated claims is not only a way to stay out of trouble, but a way of building deeper and more lasting engagement with educated consumers.

Supreme Court Decides Google LLC v. Oracle America, Inc.

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On April 5, 2021, the U.S. Supreme Court decided Google LLC v. Oracle America, Inc., holding that Google’s copying of a portion of an Application Programming Interface (API) for Java SE, in which Oracle was presumed to have a copyright for purposes of the Court’s decision, to enable programmers familiar with Java programming language to work with Google’s Android platform constituted “fair use” of Oracle’s software as a matter of law because it copied only those portions of computer code that were needed to allow programmers to work in Google’s new and “transformative” Android platform.

In 2005, Google acquired Android, Inc., and began developing a software platform for use on smartphones. Its developers wrote millions of lines of new code to build that platform. Google hoped to attract software developers to create applications for use on its new Android platform. Many software developers were already proficient with the Java programming language, and were specifically familiar with Oracle’s Java SE platform, which was primarily directed to programs for use in desktop and laptop computers. To allow those programmers to be able to easily work with the new Android platform, Google copied approximately 11,500 lines of code from the Java SE program — specifically from a tool called an “Application Programming Interface,” which allows programmers to use prewritten code to enable their software to perform certain functions.

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Oops! Now What? Corrective Assignments and Fixing Inadvertent Chain of Title Errors

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We’ve all been there.  Maybe we find it in reviewing the chain of title for trademarks during due diligence.  Maybe it’s something that another company filed that has nothing to do with us.  Or maybe someone on your team made a typo (yup, no one is perfect!).  But, however it happened, it’s there, in the USPTO records:  an assignment inadvertently recorded against a registration that was not actually part of the assignment; a security interest recorded against the wrong application number; or a name change was erroneously recorded as a merger.  Regardless of why or what, the bottom line is the same:  there is an error in the chain of title for the application or registration.  Oops!  Now what?  How do we get that error fixed and removed from the USPTO trademark records?

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How to Find and Protect Your Own Hidden Trademarks

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“Please list your trademarks.”

For many companies this simple request is surprisingly difficult to answer.  Sure, maybe they have a few registration certificates in a drawer, or a docket sheet from their outside counsel, but what exactly does it mean to “have” a trademark?  And how many of them do you have?  And why do so many companies only notice they have a trademark after a competitor starts to infringe it?

Last month, in her fantastic post on trademark audits, our colleague Emily Bayton discussed the critical first step any company must take in order to answer those questions: understanding the scope of the official parts of your portfolio.  What registrations are in your name?  What jurisdictions do they cover?  What rights do you license?  How is your portfolio managed, and should your approach be changed?  Without a real inventory – married to a regular analysis of needs and future plans – trademark portfolios can remain stuck in the past, designed to fight old competitive battles and failing to capitalize on new opportunities.

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New Trademark Fees Implemented by the United States Patent and Trademark Office

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On November 17, 2020, the USPTO enacted a rule that will adjust trademark fees and Trademark Trial and Appeal Board fees. This is the first time that trademark fees have been adjusted since 2017. In the final rule, the USPTO says that the increase in fees is intended to further USPTO strategic objectives by better aligning fees with costs, protecting the integrity of the trademark register, improving the efficiency of agency processes, and ensuring financial sustainability to facilitate effective trademark operations. The new fees will take effect on January 2, 2021.

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