The Federal Circuit’s recent decision in Super-Sparkly Safety Stuff, LLC v. Skyline USA, Inc. reinforces best practices for design patent enforcement and procurement. An important takeaway from this decision is that when enforcing design patents in litigation, patent owners should develop record evidence from fact and expert witnesses to assist the court in the ordinary observer analysis to ensure that motions for summary judgment of non-infringement are decided with a sufficient record. Another important consideration for design patent holders is that when protecting designs, rights holders should consider robust filing strategies to protect iterative and varying aspects of important designs. These strategies may help companies avoid early judgment of non-infringement when they enforce their design patents by limiting the options of a defendant during the early stages of litigation. Continue Reading Pepper Spray Manufacturer’s Successful Self-Defense Reinforces Best Practices for Design Patents
The United Kingdom (UK) officially withdrew from the European Union (EU) in early 2020, which commenced a transitional period that expired on December 31, 2020. During this transitional period, the UK remained subject to the EU Design System and the design laws of the European Union Intellectual Property Office (EUIPO). However, as of January 1, 2021, the UK is no longer subject to the EUIPO design regime. Continue Reading Brexit’s Impact on European Design Registrations
The end-of-year shopping season started strong in 2020 due to the COVID-19 pandemic restrictions that kept many consumers in their homes and buying online. Brand owners and sellers should thus be mindful of the various options at their disposal to stop counterfeit goods from stealing legitimate e-sales and disappointing unsuspecting consumers who are unable to inspect goods when purchasing online.
Monitoring Online Platforms and Documenting Counterfeits
As we do for many companies, brand owners should proactively search e-tail and social media platforms to locate unauthorized products rather than wait until a dissatisfied customer or disgruntled distributor reports the counterfeiter. And searchers should use screenshot tools or a browser add-on to capture an exact copy of the online product when found. Searchers should choose a screenshot tool that automatically documents the time of the capture as well as the URL, both of which may be needed when taking further action as described below.
Online Intellectual Property Infringement Reports
Assuming you have registered the trade dress, trademarks, and/or copyrights that relate to your products, a first step that can often lead to a quick resolution is submitting an infringement report using the online form for the e-tail and social media platform hosting the unauthorized good. These forms typically require information on the brand owner, the relevant intellectual property with registration certificates, the specific URLs for the infringing goods, and a description of how the goods are infringing and/or unauthorized.
Amazon Brand Registry
In addition to its online Report Infringement Form, Amazon allows brand owners membership in the Amazon Brand Registry that provides proprietary text and image searches, predictive automation based on reports of suspected intellectual property rights violations, and increased authority over product listings with an owner’s brand name.
But the Amazon Brand Registry only accepts active trademark registrations or applications from certain countries and requires: (i) a trademark registration or serial number; (ii) the mark as found on packaging and labeling to match a registered trademark; and (iii) the trademark to contain literal elements, not track purely design marks.
Further, an application for the Amazon Brand Registry requires:
- Images of any logo by itself (i.e., the “drawing” submitted to the USPTO)
- Images of products and packaging that carry the trademark
- A list of product categories (e.g., apparel, sporting goods, electronics) in which the brand should be listed
- A list of countries where the brand’s products are manufactured and distributed
If a brand owner needs to enroll more than 10 brands in the Amazon Brand Registry, it can submit one registration form. Amazon will then contact the applicant directly about registering the remaining brands in bulk.
eBay Verified Rights Owner (VeRO) program
eBay’s VeRO program allows brand owners of intellectual property rights and their authorized representatives to report eBay listings that may infringe on those rights. Listings that are eligible for reporting include:
- Items that infringe on a brand owner’s intellectual property
- Counterfeit or replica items
- Unauthorized use of copyrighted content in a listing or product page
Brand owners report an item or listing on eBay by submitting a Notice of Claimed Infringement (“NOCI”). In addition, a brand owner may submit a copyright infringement report via a Digital Millennium Copyright Act (“DMCA”) notification sent to the eBay designated agent.
United States Customs and Border Protection
The U.S. Customs & Border Protection (“CBP”) is a bureau of the Department of Homeland Security and maintains a trademark recordation system to assist the CBP in its effort to prevent the importation of infringing goods. Brand owners can record trademark registrations with the CBP, and the recordations then allow CBP officers to monitor imports to prevent the importation of goods bearing infringing marks. Also, the CBP provides a public database for brand owners and third parties to check the marks and copyrights that are recorded with the CBP.
Note that each trademark registration needs to be recorded separately with the CBP, and a brand owner would only need to provide the registration number of the marks that it would like to record to get the process started. Most information, except the contact person, will be kept confidential and not accessible by the public. Last, and to increase the chances of success for seizure, we can also help you develop a product ID guide and a webinar. For more information on these items, please see the information here: https://www.cbp.gov/trade/priority-issues/ipr/protection
Locating Seller Information for a Cease & Desist Letter
In some cases, an e-tail or social media platform will not take action and/or it will encourage a brand owner to contact the seller directly to address the infringing and/or unauthorized product. While collecting the required details for drafting a demand letter is usually quick, locating contact details for the seller or social media user is often difficult.
On September 1, 2020, Amazon began to display a seller’s business name and address on the seller’s Amazon.com Seller Profile page, which is helpful so long as the seller does not use a shared office space or shipping store.
Because infringing and/or unauthorized listings can be created with ease, the goal is to use these tools efficiently to respond quickly before sales are made.
For assistance with the development of an online takedown playbook for your goods or with taking any of the mentioned steps against a seller of counterfeit goods, please contact us.
Since April 1949, when legendary golfer Sam Snead took the top prize, the winner of the annual Masters Tournament has been awarded a green blazer with gold buttons on the front and sleeves.
Now, after more than 70 years of use, that color configuration as applied to a jacket—as shown in the mark image below—has become a federally-registered trademark. Continue Reading Augusta National Blazes a Trail to Registration of its Iconic Green Jacket
Two recent decisions by the Patent Trial & Appeal Board (PTAB) highlight the nuances of allowable and impermissible drawing amendments during prosecution of U.S. design patent applications, and provide important guidance to design patent applicants on how to prepare their applications to ensure maximum flexibility during prosecution. Continue Reading Recent PTAB Guidance on Permissible Drawing Amendments for U.S. Design Applications
Paisley Park Enterprises, Inc., the music publishing company founded by the late artist Prince, recently obtained a federal trademark registration for the purple color shown below known as “Love Symbol #2” in the Pantone Matching System. The registration covers music, video, and motion picture-related recording goods in International Class 009.
The China National Intellectual Property Administration (CNIPA) has recently published a Fourth Revision to the patent laws of the People’s Republic of China, and included in those revisions are several updates that help move Chinese design patent law towards harmonization with the laws of most other major markets. In particular, the following revisions—which will come into effect on June 1, 2021—are the most relevant for Chinese design patent applicants and design patent holders: