Lex Indicium

  • U.S. Trademark Office Heightens Scrutiny of Trademark Applications and RegistrationsOctober 07, 2020

    A relative outlier compared to the trademark regimes in most of the world, the United States Patent and Trademark Office (“USPTO”) only permits registrations to be maintained for goods and services that are actually being provided in the U.S. and only allows registrations to issue based on a future “intent to use” in limited circumstances.  In other words, under the U.S.’s trademark system, trademark owners are not entitled to grab additional registered rights beyond the scope of their actual business activities in the U.S.  While previously the Office was somewhat lenient in accepting claims, more recently the USPTO appears to be cracking down on applicants to ensure consistency on the U.S. Register.  A few emerging examination trends demonstrate this trend:

    BROAD CLAIMS BASED ON INTENT TO USE

    Previously: Applications based solely on the applicant’s stated bona fide intent to provide all claimed goods and services were accepted based on this representation alone.

    Recently: The USPTO has started requiring applicants of seemingly unrelated goods and/or services to justify how they could have a bona fide intent to provide various, disparate goods and/or services and explain to the office their business plans to support such a claim.

    BROAD CLAIMS Keep reading

  • Brazil Adopts Comprehensive Privacy LawSeptember 22, 2020

    Highlights of Brazil’s LGPD

    Brazil became the latest country to draw inspiration from Europe’s General Data Protection Regulation (“GDPR”) and adopt its own national comprehensive legal framework for personal data regulation, called the Lei Geral de Proteção de Dados (“LGPD”). A comparison of some of the key topics covered by the GDPR and LGPD are summarized below:

      GDPR LGPD
    Effective Date May 25, 2018 August 15, 2020 (but enforcement will not begin until August 1, 2021)
    Fines Up to the higher of €10 M or 2% of  global annual revenue from preceding financial year Up to the lesser of 50 M reals or 2% of Brazilian sourced revenue from preceding financial year
    Territorial Scope Personal data processing activities when:

    1.     Controller or processor is established in the EU, regardless of whether the processing takes place in the EU or not;

    2.     the data refers to individuals located in the EU when offering goods or services to such data subjects or monitoring their behavior;

    3.     carried out by a controller not established in the EU, but in a place where Member State law applies by virtue of public international law.

    Personal data processing activities when:

    1.     carried out

    Keep reading

  • New Cost-Efficient Copyright Registration Option for Influencers and BloggersAugust 26, 2020

    Effective August 17, 2020, the U.S. Copyright Office will begin providing a special group registration option for “short online literary works” such as poems, short stories, articles, essays, columns, blog entries, and social media posts. This new registration option will allow applicants to cover up to 50 works with a single application and one filing fee.

    In order to qualify for group registration for short online literary works:

    • There must be 50-17,500 words in each work;
    • Each work must be created by the same individual or individuals (if created jointly);
    • Each creator must be named as the copyright claimant for each work; and
    • Each work must be published online within a three-calendar-month period.

    This new group registration option provides a streamlined, cost-effective path for influencers, bloggers, and other online content creators to register the copyright to their creative works.  While copyright registration is not technically required to own the copyright to one’s creative works, under U.S. law, copyright owners cannot file a lawsuit against infringement until they have received a registration, or refusal to register, from the U.S. Copyright Office. Owning a registration prior to a creative work being infringed may also provide options for the owner … Keep reading

  • Trademark Office Proposed Fee Changes Could Change Filing and Prosecution StrategiesAugust 19, 2020

    The U.S. Trademark Office announced its intent to increase various filing fees, and assess new categories of fees, in response to its continually increasing operational expenses.  The last time the U.S. Trademark Office changed its fee schedule was January 2017.

    Fortunately, the Office has also indicated that it will not implement its proposed fee changes until October 2020 at the earliest.  Even then, the notice suggests that it would weigh its operational needs against the state of the U.S. economy before moving forward with the fee adjustments.

    Below is a summary of many of the highlights of the proposed filing fee changes for electronic filings (which the U.S. Trademark Office continues to encourage through lower filing fees compared to filing by paper):

    Two new categories of fees are worth noting as they may significantly impact trademark portfolio management strategies.

    New Fees Assessed for Delayed Requests for Reconsideration

    For the first time, the Office is proposing to assess fees for submitting a Request for Reconsideration where such a request is filed more than three months from the issue date of a Final Action.  Under U.S. trademark practice, if the Office raises an objection, the applicant will have six months … Keep reading

  • Neil Young’s Suit Illustrates Music Licensing IssuesAugust 06, 2020

    On August 4, iconic guitarist Neil Young sued the Trump Campaign, claiming that Trump’s unauthorized use of his songs Rockin’ in the Free World and Devil’s Sidewalk at various rallies, including at the Tulsa rally on July 20, violated Young’s copyrights in those songs.  In filing his complaint, Young joins an elite crowd of artists who have complained about the purported unauthorized use of songs when the artist and the writer were not otherwise aligned politically.  Reagan, GW Bush, and McCain (among others) have all had to defend claims brought by, respectively, Bruce Springsteen, John Mellencamp, and Heart suggesting that use of their songs were unauthorized violations of their copyrights (and other rights) in those songs.

    Fundamentally, Young claims that he owns the copyrights in the songs used by the campaign and the campaign used them without authorization.  Accordingly, he argues that he should be awarded an injunction against continued use, and damages for the prior violations.

    These claims have a simple elegance and on their face.  But anyone who has dealt with music performance rights and licensing knows that there is almost nothing simple about those concepts.  Indeed, the world of music licensing is among the … Keep reading

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