Disgorgement, a remedy available in some intellectual property cases, was recently highlighted in two cases from the United States Supreme Court, Romag Fasteners, Inc. v. Fossil, Inc., 590 U.S.___, 206 L.Ed. 2d 672 (2020) and from the Federal Circuit Court of Appeals, Tex. Advanced Optoelectronic Sols., Inc. v. Renesas Elecs. Am., Inc., 895 F.3d 1304 (Fed. Cir. 2018).

It is often the case that the profits earned by a defendant from selling a product which infringes upon the trademark of another dwarf the plaintiff’s actual damages. You would therefore be hard-pressed to find an issue more important to forum selection in a trademark infringement suit than whether a successful plaintiff must prove willful infringement as a prerequisite to recovering the defendant’s profits.

Standley Law Group LLP receives many calls each month from inventors interested in seeking patent protection for their new ideas. Many of these callers have never applied for a patent and they have many questions about the process. The following FAQs and responses answer many of the questions first-time inventors have.

Since the Supreme Court’s 2014 decision in Alice Corp. v. CLS Bank, patent applicants have been left wondering how far down the rabbit hole goes. The Alice decision left applicants with few guideposts for evaluating whether their software-related inventions were patent eligible. These days, such “subject matter eligibility” challenges are becoming increasingly more common. The ultimate validity of software related patents remains a complicated matter which is difficult to predict with a high degree of certainty. However, over the past year the U.S. Patent and Trademark Office (“USPTO”) has released new guidelines and related examples which increase the likelihood of receiving an issued patent for such software related inventions and provided greater certainty to applicants regarding how their software related inventions are likely to be treated at the USPTO.

Information associated with U.S. federal trademark registrations and applications is a matter of public record. Anyone with internet access can view the files on the United States Patent and Trademark Office (“USPTO”) website and obtain contact information associated with the owner of an application or registration. In the past few years the number of unsolicited communications and scams targeting trademark owners using information contained in USPTO public files has noticeably increased.

As of 3 August 2019, the U.S. Trademark Office will have new rules in place regarding the representation of trademark applicants, registrants and parties in Trademark Office proceedings. If the applicant, registrant or party is not domiciled in the United States, an attorney licensed to practice in the United States must be appointed for representation. While U.S.-based parties are strongly encouraged to have an attorney licensed in the U.S. to represent them, it will not be required.

As a Cincinnati Reds fan, I took notice of the Trademark Office rejecting a trademark application for CUBNOXIOUS on May 3, 2019. Ronald Mark Huber (Applicant) had filed a trademark application regarding his intent to use CUBNOXIOUS for shirts. The examining attorney did not initially find any likelihood of confusion with any other marks, and the application proceeded to the publication period, which allows for the public to oppose the registration of the mark. The Chicago Cubs Baseball Club, LLC, which owns the trademarks related to the Chicago Cubs, opposed the application.

Standley Law Group LLP opened in February, 1994. The firm’s business focus has remained the same since day one. Its business has always been about helping clients with their intellectual property needs, whether that be in the form of patent matters, trademark matters, copyright matters, computer system contracts, and other instances where technology and law intersect.