Bloomberg Law reports that the U.S. Supreme Court upheld an administrative review system that has helped Google Inc., Apple Inc. and other companies invalidate hundreds of issued patents.

The 7-2 court found that a U.S. Patent and Trademark Office review board that critics call a patent “death squad” wasn’t unconstitutionally wielding powers that belong to the courts.

Reporters Greg Stohr and Susan Decker provide background: “Silicon Valley companies have used the system as a less-expensive way to ward off demands for royalties, particularly from patent owners derided as “trolls” because they don’t use their patents to make products. Drugmakers and independent inventors complain that it unfairly upends what they thought were established property rights.”

Read the Bloomberg article.

By Amy Heller
Law Office of Amy Cohen Heller

It’s that time of year when we look back at what we did and look forward at where we want to go. It’s also a good time to review what we have and whether we have dotted our “i’s” and crossed our “t’s”. In this article, the “t” stands for Trademarks.

Trademarks are an important — but often overlooked — business asset. Managed and properly protected, trademarks can bring significant value to your business and keep competitors at bay. Based on my work with clients and their U.S. trademark portfolios, here are a few easy-to-miss items to check on as we start a new year:

Has your company changed names, ownership or address since the mark was registered? If so, you may need to review whether an assignment of trademarks has been completed and recorded with the USPTO or whether important information has been updated.

For an existing Registered Trademark, what goods and services does the registration reference, and are these the current goods or services using the mark? If the mark is not being used on the goods and services referenced in the registration, the registration may be unenforceable or– worse yet–subject to cancellation. Goods/services that are not in use can be deleted from a registration; if use has expanded beyond what is stated in the registration, you should consider filing new applications immediately.

Are there registrations for marks which are not in use? To be effective and enforceable, the marks must be actively in use in commerce. Reviewing your registrations and confirming that actual use of the marks are being made on the appropriate products or services is important to do on an annual basis. This will also ensure that you can submit required affidavits to renew marks, and encourage the business to periodically use marks to keep them effective.

Are the proper trademark symbols being used with your marks? For marks which are registered with the USPTO, a ® symbol is appropriate. Non-registered marks can use a ™. If your mark has become registered in the last year, it is good to confirm the ® symbol has replaced the TM.

Is A Watch Service in Place?

Trademark owners are responsible for policing and protecting their trademarks. A watch service can identify pending trademark applications (either nationally and/or internationally) that may potentially infringe your existing marks. If you have a service, you may want to review the marks being watched and determine whether additions or deletions should be made to the list. If you do not have a service in place, it is a good time to consider whether one should be implemented. There are many types of watch services, from U.S. to worldwide watch services. Pricing depends on the number of marks, number of classes watched and the number of countries and can range from a few hundred to a few thousand dollars per year.

Are appropriate licenses in place for marks being used by third parties? A trademark owner is responsible for insuring that its marks are being used properly and with adequate quality control. If you are permitting third parties to use your marks, it is important to have those marks registered to cover the licensed goods and to have a written license in place to maintain that control.

If after reviewing these questions, you see gaps in your trademark process, it may make sense to conduct a trademark audit covering these and related mark items. Chances are if these items are slipping out of your grasp, you are also at risk in related areas. For example, in reviewing some of these issues with in-house counsel, failure to maintain a registration may violate the reps and warranties in contracts or impact a company’s ability to continue selling a product for which it may no longer own trademark rights; and failure to use the appropriate trademark registration symbols could result in the public perception that the mark was generic. On the plus side, keeping the trademark portfolio up-to-date can be key to any M & A activity, making the company and the shareholders look good. Additionally, these steps can provide useful information on where future trademark protection is needed. Taking stock of your trademark portfolio may uncover and avoid potential liabilities down the road. It’s a good time of year to cross those “t’s”.

• Amy Cohen Heller is an Intellectual Property Attorney specializing in Trademark Law. Her previous experience includes in-house Trademark Counsel at Fortune 500 companies and counsel positions at IP and large national practice law firms. She can be reached at https://www.linkedin.com/in/amy-cohen-heller-1238bb11 or aheller@achellerlaw.com

© December 2015

Fitch, Even, Tabin & Flannery LLP will hold a complimentary webinar, “Navigating Patent Potholes Along the FDA’s Proposed ANDA / 505(b)(2) Pathway,” presented by Kendrew Colton and James Zak. The webinar will be Wednesday, Dec. 2, 2015, at 9 am PST / 10 am MST / 11 am CST / 12 noon EST.

The FDA has released new rules regarding the procedures for approval of ANDA and 505(b)(2) applications implementing the Medicare Prescription Drug, Improvement, and Modernization Act (MMA). The U.S. Patent and Trademark Office in turn has created new procedures and other ways by which they cancel, modify, and administer patent rights. The USPTO’s actions have created potholes along the FDA-proposed pathways for pharmaceuticals companies and generics manufacturers attempting to maintain monopolies. Their activities may also provide an express lane for new startups in the pharmaceutical space.

The webinar will cover these topics and more:
• Newly listed patents in the Orange Book and the ability to catch up to first applicants
• Breaking through settlement roadblocks with AIA post-grant procedures
• Newly listed and issued patents downshifting ANDAs into tentative approvals
• Express lane for 505(b)(2) applicants

The speakers will be Fitch Even attorneys Kendrew H. Colton and James A. Zak. Colton has extensive IP counseling and litigation experience, with a focus on designing strategies to achieve market exclusivity and freedom to operate for clients working with chemical and biochemical technologies. Zak chiefly focuses his practice on the intersection of intellectual property and FDA law, often working with startups in FDA-regulated industries to develop and align their IP and FDA market approval strategies while simultaneously developing robust patent portfolios.

CLE credit has been approved for California and Illinois and is pending in Nebraska. Other states may also award CLE credit upon attendee request. There is no fee to attend, but please note registration is required.

Following the live event, a recording of the webinar will be available to view for one year at fitcheven.com.

Register for the webinar.