The Federal Circuit recently affirmed a district court’s grant of Zillow Group Inc.’s (“Zillow”) motion to dismiss under Federal Rule of Civil Procedure 12(b)(6) because the two International Business Machines Corporation (“IBM”) patents-at-issue, U.S. Patent Nos. 6,778,193 and 6,785,676 (the “’193 patent” and “’676 patent,” respectively) were directed to ineligible subject matter under 35 U.S.C.
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2024 Trends: UDRP Complaints, Domain Scams Still on the Rise
It has been a busy year for domain scammers – and the brand owners fighting back against them. According to numbers published by the World Intellectual Property Organization (WIPO) and the Forum, the number of complaints brought under the Uniform Domain Name Dispute Resolution Policy (UDRP) saw an annual increase of approximately 8 percent through…
2024 BakerHostetler IP Perspectives – Forecasts, Trends and Accomplishments
There’s never a dull moment in the world of intellectual property – a fact that is increasingly apparent, as rapid growth in the field of artificial intelligence transforms the legal landscape at lightning speed. The inaugural BakerHostetler IP Perspectives (BHIPP) reflects BakerHostetler’s stance at the forefront of industry developments. Inspired by the client wins and…
Trademark Owners: Be Wary – Part 2!
Expanding on our blog post of January 2, 2024, yet another scam has been brought to our attention—with serious consequences.
The signatory of a client was telephoned by the “Federal Trademark Office,” which requested a $400 payment for each of two applications filed a few days earlier. The caller’s telephone number showed as 571.272.4000 (made…
In the Wake of the Amgen Decision, the USPTO Will Continue To Use the Wands Factors when Evaluating Enablement
In the wake of the U.S. Supreme Court’s decision in Amgen Inc. v. Sanofi, 598 U.S. 594 (2023) (Amgen), in which the Court addressed whether Amgen’s functional antibody genus claims satisfy the enablement requirement, the U.S. Patent and Trademark Office (USPTO) released its guidelines for evaluating enablement.[1] The guidelines indicate that the USPTO…
Be Aware as Trademark Email Scams Get More Sophisticated
As the new year gets underway, we want to flag the newest misleading trademark email scams, as these communications have become more advanced in their targeting.
Trademark owners should be wary of official-looking email solicitations from attorneys or law firms that claim to specialize in trademarks and are masquerading as Good Samaritans who wish to…
White House Instructs USPTO to Provide Guidance on AI
On Oct. 30th, President Biden issued an executive order (EO) on the safe, secure and trustworthy development and use of artificial intelligence (AI).[1] Regarding patents, the EO requires the United States Patent and Trademark Office’s (USPTO) Director to provide guidance on AI in the context of inventorship and patentable subject matter.[2] Below is…
Andersen Plaintiffs Will Need to Amend Their Complaint Against Stability AI, Judge Rules
On Oct. 30, Judge William Orrick of the U.S. District Court for the Northern District of California largely sided with defendants Stability AI, DeviantArt and Midjourney in the generative AI-copyright infringement suit brought by a trio of artists. Judge Orrick found plaintiffs’ complaint “defective in numerous aspects” and gave plaintiffs leave to amend “to provide…
Great Concepts LLC v. Chutter, Inc.: The Federal Circuit Weighs In on TTAB’s Authority When a Registrant Commits Fraud on the Trademark Office
The Trademark Trial and Appeal Board’s (Board) precedential decision in Chutter, Inc. v. Great Management Group L.L.C. (TTAB 2021) opened the door for cancellation actions and defenses based on a lowered intent requirement. Following the Federal Circuit’s 2009 In re Bose Corp. decision, fraud on the USPTO was curtailed to instances with substantial evidence of…
Surname Refusals – Rarity Alone Will Not Defeat a Refusal To Register
A mark that is “primarily merely a surname” cannot be registered on the Principal Register per Section 2(e)(4) of the Trademark Act, 15 U.S.C. § 1052(e)(4). Even though a surname may be rare, in In re Weale Care, LLC, Serial No. 90756950 (TTAB Sept. 26, 2023) (originally designated as precedential, then not), that alone will…