Partridge Snow & Hahn LLP Firm News Feedhttps://www.psh.com/?t=39&anc=868&format=xml&stylesheet=rss&directive=0en-us26 Jun 2019 00:00:00 -0800firmwisehttp://blogs.law.harvard.edu/tech/rssU.S. Supreme Court Opens The Door To Registering "Immoral" And "Scandalous" Trademarkshttps://www.psh.com/?t=40&an=95187&anc=868&format=xml<div>In a 6-3 decision in <em>Iancu v. Brunetti</em>, the U.S. Supreme Court has declared a provision of the federal trademark law unconstitutional and in violation of the First Amendment protection of free speech.&nbsp; The provision in question permits the U.S. Patent and Trademark Office (USPTO) to refuse to register trademarks that consist of or comprise &ldquo;immoral&rdquo; or &ldquo;scandalous&rdquo; matter.<br /> <br /> The case involves a trademark application by Erik Brunetti, an artist and entrepreneur, who founded a clothing line that uses the trademark &ldquo;FUCT&rdquo;.&nbsp; The USPTO and the Trademark Trial and Appeal Board refused to register the mark because the mark was &ldquo;highly offensive&rdquo; and &ldquo;vulgar,&rdquo; and because the mark had &ldquo;decidedly negative sexual connotations.&rdquo;<span style="white-space:pre"><br /> </span>In striking down the federal trademark ban, the Supreme Court relied on its 2017 decision in <em>Matal v. Tam</em>, which struck down a similar restriction on the registration of &ldquo;disparaging&rdquo; trademarks.&nbsp; In that decision, the Supreme Court determined that if a provision prohibiting trademark registration is &ldquo;viewpoint based,&rdquo; it violates the First Amendment and is unconstitutional.<br /> <br /> In<em> Brunetti</em>, the Supreme Court analyzed the provision preventing registration of immoral or scandalous marks, and concluded this prohibition also is &ldquo;viewpoint based.&rdquo;&nbsp; The Supreme Court found that the federal trademark law is written to allow registration of marks when their messages accord with society&rsquo;s sense of decency or propriety, but not when their messages defy such sense.&nbsp; Justice Kagan&rsquo;s decision went on to provide specific examples, such as the USPTO&rsquo;s refusal to register YOU CAN&rsquo;T SPELL HEALTHCARE WITHOUT THC for pain-relief medication, and MARIJUANA COLA and KO KANE for beverages, because it is &ldquo;scandalous to inappropriately glamorize[e] drug abuse,&rdquo; but approval to register &ldquo;D.A.R.E. TO RESIST DRUGS AND VIOLENCE&rdquo; and &ldquo;SAY NO TO DRUGS --- REALITY IS THE BEST TRIP IN LIFE.&rdquo;&nbsp; Although the rejected marks express opinions that are, at the least, offensive to many Americans, the Supreme Court concluded that a law disfavoring these &ldquo;ideas that offend&rdquo; discriminates on viewpoint in violation of the First Amendment.<br /> <br /> The <em>Brunetti</em> decision opens the door for other &ldquo;scandalous&rdquo; and &ldquo;immoral&rdquo; trademarks to be registered.&nbsp; In recent months, the USPTO has reported an upsurge in such applications, perhaps anticipating the result in <em>Brunetti.</em>&nbsp; &nbsp;For example, as of June 24, 2019, there are over 200 pending applications in the USPTO for trademarks containing the &ldquo;F-word.&rdquo;</div> <div>&nbsp;</div>Blog24 Jun 2019 00:00:00 -0800https://www.psh.com/?t=40&an=95187&format=xmlU.S. Trademark Traphttps://www.psh.com/?t=40&an=92370&anc=868&format=xml<h3>Don't Forget To Preserve Evidence Of Your Bona Fide Intention To Use The Mark</h3> Businesses often have misconceptions about trademark issues in the United States. One very common &ldquo;trap for the unwary&rdquo; results from the ability to file a trademark application without having to demonstrate that the mark is in use at the time the application is filed. A recent decision from the Trademark Trial and Appeal Board (TTAB) highlights the issue. <br /> <br /> Applicants may file an application to register a mark with the U.S. Patent and Trademark Office (USPTO) based on a &ldquo;bona fide intention&rdquo; to use the mark, and then submit evidence of use later to obtain a registration. In addition, applicants can file a U.S. application based on a registration in another country or based on an international registration, and obtain a U.S. registration without ever having to demonstrate use. These applications also require the applicant to state that it has a &ldquo;bona fide intention&rdquo; to use the mark in commerce in the United States.<br /> <br /> Applicants unfamiliar with the U.S. trademark registration process often run into problems when they cannot provide objective documentary evidence of their &ldquo;bona fide intention&rdquo; to use the mark. A third party can oppose the application, or can petition to cancel a registration at any time, on the grounds that the applicant did not have the requisite &ldquo;bona fide intention&rdquo; to use the mark in the United States. The TTAB does not require a great deal of evidence, but more is required than the applicant&rsquo;s subjective belief that it intends to use the mark. Courts and the TTAB routinely sustain oppositions and cancel registrations when the applicant can provide little or no objective evidence of a bona fide intent to use the mark at the time the application is filed.<br /> <br /> Recently, the TTAB sustained an opposition to an application for exactly this reason. The opposer learned in the discovery process that the applicant had no evidence of its intent to use the mark other than an 11-year-old photo of a prototype T-Shirt. The applicant had no other documents that showed use of, or steps toward using, his mark on any products, or that showed advertising, promotions, media, marketing plans, or business plans. The applicant also had no documents identifying any distributors, resellers or stores through which he intended to offer his clothing goods. Although the applicant had purchased an Internet domain name using the trademark, he had no website to display his products. Based on this lack of evidence, the TTAB found that the applicant could not demonstrate his bona fide intent to use the mark on clothing items at the time of the application, and sustained the opposition.<br /> <br /> We strongly recommend that applicants or their counsel collect and retain documentation to support the &ldquo;bona fide intention&rdquo; to use the mark contemporaneously with the filing of the application. Documentation to support the &ldquo;bona fide intention&rdquo; includes business plans, marketing materials, documents regarding product development, or any other materials corroborating the applicant&rsquo;s intent to use the mark in the United States for the products or services listed in the application. Collecting these documents during the application process ensures that they will be available later if needed. If few or no documents exist, the applicant and its attorney also have the opportunity to prepare documents contemporaneously that evidence the applicant&rsquo;s &ldquo;bona fide intention&rdquo; to use the mark. Gathering and preserving these documents could be the difference between ending an opposition or cancellation proceeding early with minimal cost, or engaging in a long, protracted and expensive proceeding.<br /> <br /> <strong>Contact Us for Assistance<br /> </strong><br /> Partridge Snow &amp; Hahn LLP assists U.S.-based and non-U.S. based clients to protect trademark rights in the U.S., and assists U.S. based clients to expand and protect trademark rights outside the U.S. For information or to request our assistance, please contact John E. Ottaviani, Chair of our Intellectual Property and Technology Practice, at +1-401-861-8200 or <a href="mailto:jottaviani@psh.com">jottaviani@psh.com</a>.<br /> <br /> <strong>Learn how we can save you and your client time and money when filing trademark applications in the United States! Please submit information below to download our article.</strong><u><br /> <br type="_moz" /> </u><br /> <iframe src="https://takenote.psh.com/7/41/landing-pages/international-trademark-blog-(web).asp" width="100%" height="1200" frameborder="0" scrolling="auto"> </iframe>Blog13 Jun 2019 00:00:00 -0800https://www.psh.com/?t=40&an=92370&format=xmlSaving Time and Costs In The U.S. Trademark Registration Processhttps://www.psh.com/?t=40&an=91506&anc=868&format=xml<p>The complex U.S. trademark registration system makes many trademark owners from other countries reluctant to file national applications or extend international applications to the U.S. One reason often given is the higher cost of obtaining trademark protection in the U.S. due to the statutory requirements and the formalities that must be observed. It is frequently overlooked, however, that a U.S. trademark registration covers a largely English-speaking, highly sophisticated market of over 325 million people. Despite the costs, the United States remains a very desirable country in which to file trademark applications. In fact, for the year ended September 30, 2018, non-U.S. applicants filed about 30% of the total trademark applications filed with the U.S. Patent and Trademark Office (USPTO).<br /> <br /> There are five bases for filing an application to register a trademark in the U.S.:</p> <p style="margin-left: 40px;">1. based on actual use of a mark in commerce in the U.S. (Section 1(a))</p> <p style="margin-left: 40px;">2. based on a bona fide intention to use a mark in commerce in the U.S. (Section 1(b))</p> <p style="margin-left: 40px;">3. based on an earlier-filed foreign application in the applicant&rsquo;s &ldquo;country of origin&rdquo;<br /> (Section 44(d)</p> <p style="margin-left: 40px;">&nbsp;4. based on ownership of a registration of the mark in another country (Section 44(e)), and</p> <p style="margin-left: 40px;">5. extension of protection of an international registration to the U.S. under the Madrid Protocol (Section 66(a)).<br /> &nbsp;</p> <p>In applications based under Sections 1(b), 44(d), 44(e) and 66(a), all applicants must declare in their application that they have a &ldquo;bona fide intention to use the mark in commerce&rdquo; in the U.S. In addition, for Section 1(b) applications, applicants actually must use the mark on all of the goods and services listed in the application before the USPTO will issue a Certificate of Registration.<br /> <br /> <img src="https://www.psh.com/0DED2B/assets/images/International Trademark/table.PNG" hspace="0" vspace="0" align="absmiddle" alt="" border="0" width="570" height="436" /><br /> <br /> Although the trademark registration process in the U.S. can sometimes be complex, it need not be expensive. There are opportunities for international applicants and their counsel to save money and time in the U.S. registration process. Three ways to reduce costs are:</p> <p style="margin-left: 40px;">1. to draft the identification of goods and services more narrowly than is typically the practice in other countries, making sure it states the goods or services in common commercial terms, to avoid objections by the U.S. Patent and Trademark Office (USPTO) and third parties</p> <p style="margin-left: 40px;">2. to gather and retain contemporaneous documentation early in the process supporting the applicant&rsquo;s claim that it has an &ldquo;intent to use&rdquo; the mark in the U.S., to avoid possible loss of registration rights later, and</p> <p style="margin-left: 40px;">3. to confirm that the mark is in use on each item listed in the registration when filing a Declaration of Use or renewal application.</p> <p><br /> In a future post, we will provide you with tips on how to save time and money by drafting the identification of goods and services more narrowly.<br /> <br /> <strong>Contact Us for Assistance</strong><br /> Partridge Snow &amp; Hahn LLP assists non-U.S. based clients to protect trademark rights in the U.S. , and assists U.S. based clients to expand and protect trademark rights outside the U.S.For information or to request our assistance, please contact John E. Ottaviani, Chair of our Intellectual Property and Technology Practice, at +1-401-861-8200 or <a href="https://www.psh.com/jottaviani">jottaviani@psh.com</a>.<br /> <br /> <strong>Learn how we can save you and your client time and money when filing trademark applications in the United States!&nbsp;Please submit information below to download our article.</strong><br /> &nbsp;</p> <iframe src="https://takenote.psh.com/7/41/landing-pages/international-trademark-blog-(web).asp" width="100%" height="1200" frameborder="0" scrolling="auto"> </iframe>Blog29 May 2019 00:00:00 -0800https://www.psh.com/?t=40&an=91506&format=xmlNew USPTO Guidelines Provide Little Relief For Trademark Applications For Cannabis-Related Products And Serviceshttps://www.psh.com/?t=40&an=91162&anc=868&format=xml<br /> On May 2, 2019, the U.S. Patent and Trademark Office (USPTO) issued new guidelines as to how the agency will handle trademark applications for marijuana-related, hemp-related and CBD-related goods and services, in light of the federal Farm Bill that became law on December 20, 2018. Unfortunately, the new Guidelines raise as many questions for applicants as they purport to address, and provide little relief for most applicants.<br /> <br /> For years, the USPTO has refused to register trademarks for marijuana-related products. The federal trademark law requires that a company use its mark in commerce before the mark can be registered. To date, however, the courts and the USPTO have interpreted &ldquo;use in commerce&rdquo; to require <em>lawful</em> use in commerce. Marijuana use is legal for medical uses in at least 33 states, but buying, selling or possessing marijuana is still illegal (whether for medicinal or recreational use) under the federal Controlled Substances Act (CSA). As a result, the USPTO has refused consistently to register trademarks for marijuana and related products that federal law prohibits.<br /> <br /> The new Farm Bill removes hemp and products derived from &ldquo;hemp&rdquo; from the CSA&rsquo;s definition of marijuana. As a result, marijuana plants and derivatives (such as CBD) that contain no more than 0.3% delta-9 tetrahydrocannabinol (THC) on a dry-weight basis are no longer controlled substances under the CSA (but may still be subject to regulation under other federal laws).<br /> <br /> Under the new Guidelines, the USPTO has taken the following positions:<br /> <br /> <ul> <li>For applications filed <em>on or after</em> December 20, 2018, the USPTO will not refuse to register marks for goods and services derived from &ldquo;hemp&rdquo; as defined in the Farm Bill because the goods violate the CSA, but will require that the identification of goods specify that the goods contain less than 0.3% THC.</li> </ul> <ul> <li>For applications filed <em>before</em> December 20, 2018 for goods and services derived from &ldquo;hemp,&rdquo; the USPTO will permit the applicant either: (i) to abandon the application and file a new application, or (ii) to amend the filing date of the application to December 20, 2018, and to amend the identification of goods to specify that the goods contain less than 0.3% THC. This creates a dilemma for the applicant, as amending the filing date means that any applications filed by third parties prior to that date would get priority.</li> </ul> <ul> <li>Even if goods are derived from &ldquo;hemp&rdquo; and legal under the CSA, the USPTO maintains its controversial position that it can refuse to register marks for products (including beverages, supplements, and pet treats) consumable by humans and pets unless these products comply with the federal Food Drug and Cosmetic Act (FDCA). Currently, the FDA has approved only one product (Epidiolex) containing an active ingredient (CBD) derived from a marijuana plant. In effect, the USPTO &lsquo;s position means that applicants still will not be able to register trademarks for CBD-related products or services for human or animal consumption.</li> </ul> <br /> The new Guidelines are a begrudging and narrow recognition by the USPTO that &ldquo;hemp&rdquo; products covered by the Farm Bill are now &ldquo;lawful,&rdquo; and that the USPTO can no longer refuse applications to register trademarks for these products because the products are not lawful under the CSA. However, these Guidelines do not provide any relief for those applying to register trademarks for other marijuana-related products and services. The Guidelines also do not provide any comfort for businesses and individuals who are providing marijuana-related goods and services that are legal under state laws, but not federal laws. We continue to suggest that these businesses and applicants apply to register their marks in states where the products and services are legal, and to apply to register marks for related products and services that federal law does not prohibit.<br /> <br /> Partridge, Snow &amp; Hahn&rsquo;s <a href="https://www.psh.com/?p=14733&amp;LPA=7032">Cannabis Advisory Practice Blog</a> provides updates on marijuana law and policy, covering some of the risks and opportunities in this new industry, and makes recommendations regarding best practices. If you are interested in receiving these updates via email, please email us at&nbsp;<a href="mailto:marketing@psh.com">marketing@psh.com</a>.&nbsp;&nbsp;<br /> <br /> Partridge, Snow &amp; Hahn LLP assists U.S. based clients to expand and protect trademark rights outside the U.S., and assists non-U.S. based clients to protect trademark rights in the U.S, including clients based in the cannabis industry. For information or to request our assistance, please email us at <a href="mailto:marketing@psh.com">marketing@psh.com</a>.<br /> <br /> <strong>Related Articles</strong><br /> <a href="https://www.psh.com/1high-hopes-dashed-challenges-in-protecting-trademarks-for-marijuanarelated-products-and-services">High Hopes Dashed --- Challenges in Protecting Trademarks for Marijuana-Related Products and Services</a>Blog10 May 2019 00:00:00 -0800https://www.psh.com/?t=40&an=91162&format=xmlLegislation Introduced In Congress To Limit Federal Interference With State Approved Marijuana Lawshttps://www.psh.com/?t=40&an=90545&anc=868&format=xmlLast week, a bipartisan group in Congress took a big step toward eliminating the current conflict between federal and state marijuana laws by re-introducing a bill that would allow each state to determine its own marijuana position. <br /> <br /> The bill is called the &ldquo;Strengthening the Tenth Amendment Through Entrusting States Act,&rdquo; or STATES ACT for short. The STATES ACT would override many of the federal prohibitions on growing, possessing and distributing marijuana in situations where businesses and individuals act in compliance with state law. Currently, the use of marijuana for medicinal purposes is legal in 33 states (including Massachusetts and Rhode Island), and the use of marijuana for recreational purposes is legal in 10 states (including Massachusetts, with a proposed bill for legalization pending in Rhode Island). However, federal law still prohibits growing, possessing and distributing marijuana in most circumstances. Although Attorney General Barr has stated that he would not direct the Department of Justice to target marijuana businesses or individuals who comply with state law, individual federal prosecutors are still able to do so in their discretion. This conflict has hindered the growth of the legal marijuana industry in the United States, as businesses and individuals who comply with state laws must remain concerned about whether the federal prohibitions will be enforced against them.<br /> <br /> The STATES ACT is narrow, and does not address various other issues related to the marijuana industry. For example, the STATES ACT does not address whether banks and credit unions can provide banking services to marijuana related businesses, although Congress is considering a separate bill dealing with this issue. Another concern that the STATES ACT does not address is that veterans cannot obtain marijuana for medicinal purposes from V.A. hospitals and doctors, even in states where such use is legal. The proposed bill also would not authorize the registration of marijuana-related trademarks with the U.S Patent and Trademark Office, which refuses to register trademarks for marijuana related products and services that violate federal law.<br /> <br /> Sponsors of the bill are optimistic that it can become law this year. The bill is expected to pass the House of Representatives, which is under Democratic control, but may face a stiffer fight in the Senate, which is under Republican control. President Trump said last June that he would probably support the legislation if it passes the House and Senate.<br />Blog12 Apr 2019 00:00:00 -0800https://www.psh.com/?t=40&an=90545&format=xmlWill 2019 Be the Year Rhode Island Legalizes Adult Use Marijuana?https://www.psh.com/?t=40&an=87573&anc=868&format=xmlGovernor Gina Raimondo has proposed legislation that would legalize the recreational use of marijuana by adults in Rhode Island.<br /> <br /> Proposed bills to legalize recreational use of marijuana in the Ocean State have stalled in the past, or have been sent to committees for more study. Governor Raimondo and other legislative leaders have been reluctant to support such legislation in the past. <br /> <br /> <strong>What has Changed?<br /> </strong><br /> What has changed? Governor Raimondo told the Providence Journal earlier this month &ldquo;I have resisted this for the four years I have been governor. &hellip; Now, however, things have changed, mainly because all of our neighbors are moving forward&rdquo; with legalization.<br /> <br /> The public rationale for the bill is that Rhode Island must act to regulate recreational use because Massachusetts already has, and Connecticut is proposing to do so. &ldquo;We&rsquo;re not doing this for the revenue,&rdquo; said Kevin Gallagher, Raimondo&rsquo;s deputy chief of staff. &ldquo;We&rsquo;re going to be surrounded by [marijuana], and the only way we will be able to control the public health, to make sure we have safe products, control distribution, [and] ensure proper enforcement, is if we take control of our own destiny and establish a framework here that has those significant protections.&rdquo;<br /> <br /> Other Rhode Island legislative leaders also seem to have softened their stance against legalization in recent months. In a year end interview on The Public&rsquo;s Radio, Rhode Island House Speaker Nicholas Mattielo, who has opposed legalization in the past, said: &ldquo;I think we have to study it and then decide what we want to do as a state, but I am mindful that Massachusetts has legalized it; I believe Connecticut is going to legalize it.&rdquo; &ldquo;I think we&rsquo;re probably going to end up with more social costs without the revenues and that would probably be the worst situation of all.&rdquo;<br /> <br /> Rhode Island Senate President Dominic Ruggiero sounded less supportive when he stated in November 2018, &ldquo;While I continue to keep an open mind on legalization of recreational marijuana as the state looks into the regulatory and workforce challenges that come along with it, I also have significant concerns, particularly with regard to workforce issues, enforcement around edibles, and impact on children.&rdquo;<br /> <br /> Revenue generation also appears to be an underlying rationale. The Governor&rsquo;s marijuana bill is buried in a 541 page budget bill, and is projected to raise $14.3 million in gross revenues for Rhode Island&rsquo;s coffers in the first year after passage through a combination of license fees, sales taxes on purchasers and separate taxes on growers. In addition, the proposed bill gives the Department of Business Regulation wide discretion to create additional types of licenses and impose new license fees on any participants in the growing and distribution ecosystem.<br /> <br /> <strong>Strictest Regulations in the Country<br /> </strong><br /> Under the Governor&rsquo;s proposal, Rhode Island would create one of the strictest regulatory regimes in the country. Unlike residents of Massachusetts, Maine and Vermont, Rhode Island adults would be prohibited from growing their own marijuana for recreational purposes. New, stricter, limits would also be imposed on those growing for medical purposes. While patients registered with the Department of Health now can grow up to 12 plants at home, the proposal would require that they purchase their medical marijuana from the State&rsquo;s compassion centers unless they can demonstrate a &ldquo;need&rdquo; under yet to be developed guidelines. The proposal also would require that single serving of edible products contain no more than 5 milligrams of THC, the psychoactive compound in marijuana.<br /> <br /> Instead of creating an independent agency to regulate medical and recreational marijuana, like Massachusetts, the Rhode Island proposal would consolidate much of the licensing and regulatory enforcement power under the Department of Business Regulation.<br /> <br /> Not all are happy about the proposal. Medical marijuana patients, in particular, are apprehensive about the higher fees and the possible limits on home growing. In response to our request for a statement, Ellen Smith, the President of the Rhode Island Patient Advocacy Coalition, stated: &ldquo;It is heartbreaking this is happening, stressing out medical patients and in truth, will force more and more back into the black market to get away from all these fees and judgments by others.&rdquo; She expressed desire that Rhode Island &ldquo;Make the money off the recreational program being set up and bring our costs down and show compassion to this segment of society,&rdquo; she added.<br /> <br /> The bill has been referred to the House Finance Committee. No hearings have been scheduled to date.Blog31 Jan 2019 00:00:00 -0800https://www.psh.com/?t=40&an=87573&format=xmlSaving Costs in the U.S. Trademark Registration Processhttps://www.psh.com/?t=40&an=76502&anc=868&format=xmlBecause of the complexities of the U.S. trademark registration system, many trademark owners from other countries, and their counsel, are reluctant to file national or international applications in the United States. One of the reasons often given is the higher cost of obtaining trademark protection in the United States due to the statutory requirements and the formalities that must be observed. It is frequently overlooked, however, that a U.S. trademark registration covers a largely monolingual (English), highly sophisticated market of over 310 million people.<br /> <br /> There are opportunities for international applicants and their counsel to save money and time in the United States registration process. Broad descriptions of goods and services can be more narrowly tailored to the usual names of products and services to avoid objections by the United States Patent and Trademark Office (USPTO) and third parties. In addition, documentary evidence of the applicant&rsquo;s intent and capability to use the mark in the United States can be obtained and preserved early in the application process to avoid possible loss of registration rights later. Each of these opportunities is discussed further below.<br /> <br /> <strong>Draft the Identification of Goods and Services Narrowly<br /> </strong>Very often the identification of goods and services used in the applicant&rsquo;s country of origin is drafted very broadly, in effect, to claim the class rather than the goods in order to obtain as broad a scope of protection as possible. Listings of goods and services in multiple classes, extending for several pages, are not uncommon. When an application to register the mark is then filed in the United States, either based on the registration in the country of origin under the Paris Convention, or by extension of the International Registration under the Madrid Protocol, very often the applicant is greeted with a lengthy Office Action from the USPTO, requiring a number of amendments to the identification of goods and services. At this point, in order to avoid abandonment of the application, the applicant will be required either to file the response itself, or to engage the services of a U.S. attorney to prepare and file the response.<br /> <br /> If at all possible, the identification of goods and services should be amended before filing the US application. The USPTO has a narrower standard than that used in many countries, and requires the listing of goods and services to use definite terms, and not overly broad language. These terms can be found in the USPTO&rsquo;s &ldquo;Acceptable Identification of Goods and Services Manual,&rsquo;&rsquo; which is available online <a href="http://tess2.uspto.gov/netahtml/tidm.html">here</a>. The identifications in the ID Manual generally are accepted in the examination process without objection. Thus, the applicant, either with the assistance of its own attorney or with a US trademark attorney, can select the most appropriate terms for the applicant&rsquo;s goods and services at the outset and avoid the expense of having to respond later to a lengthy Office Action regarding the identification of goods and services.<br /> <br /> Even if the application has already been filed, the applicant is permitted to amend the application voluntarily prior to the time the application is examined. There is generally a 2-4 month period between the time the application is filed and when it is examined. Filing a voluntary amendment to narrow the identification of goods and services during this time can also avoid the expense of having to respond later to a lengthy Office Action.<br /> <br /> <strong>Preserve Evidence of the Applicant&rsquo;s Intent and Ability to Use the Mark<br /> </strong>When filing an application to register a mark that has not been used yet in the United States, the applicant may file its application based on a &lsquo;bona fide intent to use&rdquo; the mark in the United States, based on its application or registration in its country of origin, or based on an extension of an international registration under the Madrid Protocol. In each instance, the applicant must sign a declaration that it has a &ldquo;bona fide intent to use&rdquo; the mark in the United States in commerce. Applicants unfamiliar with the United States registration process also run into difficulties when their &ldquo;bona fide intent to use&rdquo; the mark is challenged in an opposition or cancellation proceeding.<br /> <br /> These documents can include business plans, marketing materials, documents regarding product development, or any other materials corroborating the applicant&rsquo;s intent to use the mark in the United States. Collecting these documents during the application process ensures that the documents will be available later if needed. If few or no documents exist, the applicant and its attorney also have an opportunity to prepare documents contemporaneously that evidence the applicant&rsquo;s &ldquo;bona fide intent to use&rdquo; the mark. Gathering and preserving these documents also could be the difference between ending an opposition or cancellation proceeding early with minimal cost, or engaging in a long, protracted and expensive proceeding.<br /> <br /> Although the trademark registration process in the United States can sometimes be complex, it need not be expensive. Two ways to reduce costs are: (i) to draft the identification of goods and services more narrowly than is typically the practice in other countries, making sure it states the goods or services in common commercial terms, and (ii) to gather and retain contemporaneous documentation supporting the applicant&rsquo;s claim that it has an &ldquo;intent to use&rdquo; the mark in the United States. There also are other ways that experienced U.S. trademark attorneys can assist clients in reducing the costs of the application and registration process.Blog18 May 2018 00:00:00 -0800https://www.psh.com/?t=40&an=76502&format=xmlStates Follow Through With Commitment to Protect Net Neutralityhttps://www.psh.com/?t=40&an=75085&anc=868&format=xml<p>As we discussed in our January <a href="https://www.psh.com/?t=40&amp;an=73198&amp;anc=868&amp;format=xml">blog</a>, states are taking the protection of net neutrality into their own hands. This week Washington&rsquo;s Governor Jay Inslee signed the first state net neutrality bill to prevent internet service providers blocking from websites or charging more for faster delivery of certain sites, which is now permissible under the Federal Communication Commission&rsquo;s recent order repealing the rules prohibiting paid preferences, throttling, and blocking that were adopted under President Obama.&nbsp; A number of other states have proposed similar legislation, and governors in New York and Montana have signed executive actions with prohibiting such conduct. &nbsp;In addition, twenty-three states, including Massachusetts and Rhode Island, have filed of a petition for protective review challenging the repeal of net neutrality.&nbsp;&nbsp;</p> <p>The success of these state efforts remains to be seen as any laws enacted by the states and executive actions taken will unquestionably end up being litigated.&nbsp; In its order repealing net neutrality, the FCC explicitly stated that the states could not create their own rules as only the FCC has authority to oversee broadband internet services given its interstate nature.&nbsp; There are also sure to be challenges by internet service providers in favor of the repeal of the net neutrality rules, as they (and the FCC) believe the repeal will foster innovation and modernization and ultimately benefit consumers.</p> <p>As we predicted, net neutrality remains a contentious issue in 2018&mdash;stay tuned for further developments. &nbsp;</p>Blog06 Mar 2018 00:00:00 -0800https://www.psh.com/?t=40&an=75085&format=xmlThe FCC's February Meeting Agenda Reflects Its Desire to Innovate And Modernizehttps://www.psh.com/?t=40&an=75071&anc=868&format=xml<p>Earlier this month, the Federal Communications Commission (&ldquo;FCC&rdquo;) held an Open Agenda Meeting where a number of items were set for discussion. As Chairman Ajit Pai designated February &ldquo;Innovation Month&rdquo; at the FCC, the meeting agenda included, among others, the following issues which were geared at promoting that goal: &nbsp;&nbsp;</p> <p>First, the FCC eliminated the requirement that low power TV, TV and FM translator, TV and FM booster stations, cable television relay station licensees, and cable operators with more than 1000 subscribers maintain paper copies of FCC rules.&nbsp;</p> <p>The FCC considered modernizing outdated payphone rules, including eliminating the requirement that completing carriers file an annual report prepared by an independent third party auditor to verify their ongoing compliance with the FCC&rsquo;s payphone call tracking system requirements.&nbsp; With fewer people using payphones, these audits can cost as much as, if not more than, the compensation they were meant to verify.&nbsp;</p> <p>The FCC also considered an&nbsp;order&nbsp;addressing the remaining issues raised by the seven petitions filed seeking reconsideration of the Mobility Fund Phase II Report and Order and Further Notice of Proposed Rulemaking, which was adopted last year and provides $4.53 billion in high-cost support over 10 years to extend mobile voice and broadband coverage to unserved areas.&nbsp; The proposed order would resolve challenges to the previously adopted order, including requests for clarification and modifications.&nbsp;</p> <p>Additionally, the FCC considered a Notice of Proposed Rulemaking concerning Section 7 of the Communications Act that sets forth a policy of encouraging the provision of new technologies and services to the public and requires the FCC to determine whether any new technology or service proposed in a petition or application is in the public interest within one year after such petition or application is filed.&nbsp; Because the FCC never adopted rules or procedures to implement this section, the proposed order would 1) adopt specific filing requirements and particular factors to be used to evaluate requests seeking consideration under Section 7, and 2) require the FCC to evaluate the request and determine within 90 days whether the proposed technology or service qualifies for Section 7 treatment.&nbsp; If adopted, the order would require the FCC to take swift action to evaluate the technology or service, serving the public interest.&nbsp;</p> <p>Lastly, the FCC considered a&nbsp;Notice of Proposed Rulemaking&nbsp;that seeks comment on proposed rules that would apply to the spectrum above 95 GHz for licensed services, unlicensed operations, and a new class of experimental licenses. &nbsp;Although the spectrum 95 GHz has been considered the outermost edge of the usable spectrum, the FCC has recently seen increased interest in these bands as a result of new technology and is thus considering rules to enable innovators and entrepreneurs to further develop technology that can effectively use this spectrum.&nbsp;</p> <p>As stated by Chairman Pai, February's agenda reflected the FCC&rsquo;s goal under the current administration to further unleash innovation, close the digital divide, and modernize the rules, which the FCC has been pushing to do over the past year. &nbsp; &nbsp;&nbsp;</p>Blog21 Feb 2018 00:00:00 -0800https://www.psh.com/?t=40&an=75071&format=xmlAttacks Mount Against FCC After Repeal of Net Neutrality Ruleshttps://www.psh.com/?t=40&an=73198&anc=868&format=xml<p>The Federal Communications Commission&rsquo;s (&ldquo;FCC&rdquo;) repeal of net neutrality in December was certainly not the final word on the matter. The FCC&rsquo;s decision to roll back Obama-era rules prohibiting paid preferences, throttling and blocking in the order captioned <i>Restoring Internet Freedom</i> (the &ldquo;Order&rdquo;), which became final on January 4, is currently under attack on multiple fronts and others are sure to come.</p> <p>Massachusetts is one of the many states joining the fight to restore the rules on net neutrality reversed by the FCC last month.&nbsp; On January 16, 2018, Massachusetts Attorney General Maura Healey tweeted breaking news that Massachusetts would be suing the FCC to restore net neutrality and protect equal and open access to the internet.&nbsp; AG Healey was referring to a recently filed suit wherein Massachusetts, along with twenty-two other states, is petitioning the United States Court of Appeals for the District of Columbia Circuit to review the FCC&rsquo;s recent Order.&nbsp; Specifically, the states filed a &ldquo;protective petition for review,&rdquo; which essentially reserves them a spot in court challenges against the FCC.&nbsp;</p> <p>Back in December when the FCC issued the proposed order that was ultimately adopted, AG Healey joined a coalition of AGs from other states in sending a letter to the FCC urging it to obtain a full and accurate picture of the impact of the changes to the net neutrality policy before making any changes.&nbsp; After the FCC voted to implement the Order, AG Healey indicated that Massachusetts would be joining in such a lawsuit.&nbsp;</p> <p>AG Healey further tweeted that &ldquo;[Massachusetts is] challenging the FCC&rsquo;s Order not only because it&rsquo;s bad for consumers, students and small businesses &ndash; but because it is illegal.&rdquo;&nbsp; Questions concerning the legality and consequences of rolling back net neutrality have dominated the news recently, and PS&amp;H has analyzed these issues in previous <a href="https://www.psh.com/?t=40&amp;an=71907&amp;anc=868&amp;format=xml">blog</a>&nbsp;<a href="https://www.psh.com/?t=40&amp;an=70459&amp;anc=868&amp;format=xml">posts</a>.&nbsp;</p> <p>The lawsuit seeks a determination that the FCC&rsquo;s Order is &ldquo;arbitrary, capricious, and an abuse of discretion&rdquo; within the meaning of federal law and FCC regulations. &nbsp;As such, the lawsuit requests that the Court hold the FCC&rsquo;s Order as unlawful.&nbsp;</p> <p>The states&rsquo; lawsuit is only one line of attack.&nbsp; Some states have taken matters into their own hands by attempting to pass their own net neutrality laws.&nbsp; In the final version of the Order, the FCC not only repealed its own net neutrality rules, but it also claims the authority to prevent state and local governments from enacting their own similar net neutrality rules.&nbsp; However, Nebraska, California and New York are proposing to do just that.</p> <p>Senator Adam Morefled proposed a Nebraska bill to prohibit internet service providers (&ldquo;ISPs&rdquo;) from &ldquo;impair[ing] or degrad[ing] lawful Internet traffic on the basis of content, application or service or use of a nonharmful device, subject to reasonable network management.&rdquo; The proposed Nebraska bill also bans paid prioritization except for in circumstances where the ISP can demonstrate that it benefits the public and &ldquo;would not harm the open nature&rdquo; of its Internet service.</p> <p>Senator Scott Wiener introduced a California bill that would indirectly enforce net neutrality.&nbsp; That proposal requires that net neutrality be part of cable franchise agreements, as a condition to using the public right-of-way for Internet infrastructure.&nbsp; The proposed California bill would also strengthen the consumer protection laws and laws against unfair business practices in ways that support net neutrality.&nbsp; Another California senator, Senator Kevin de Leon, took a more aggressive approach and introduced a bill simply banning blocking, throttling and paid prioritization.&nbsp;</p> <p>In New York, there is proposed legislation requiring state agencies and local governments to only do business with ISPs that adhere to net neutrality principles.&nbsp; There is a similar bill being considered in the Washington state legislature as well.&nbsp;</p> <p>This state-by-state approach is far less effective than reinstating the federal requirements but could force the larger ISPs that do business in some of these states to follow to net neutrality principles.&nbsp;</p> <p>Attacks continue to mount on other fronts as well.&nbsp; Several nonprofit public interest groups like the Free Press and Public Knowledge and the Mozilla Foundation, the group behind the Firefox web browser, filed lawsuits against the FCC.&nbsp; Additional suits are sure to come from the giant internet content providers like Netflix, Google and Apple.</p> <p>The lawsuit filed by the states is joined by every state with a democratic attorney general.&nbsp; Moreover, Senate Democrats are doing what they can, employing a little known tool in the Senate called the Congressional Review Act to try and overturn the FCC&rsquo;s Order.&nbsp;&nbsp; The Congressional Review Act requires a majority of the Senate&rsquo;s support (51 votes) as a first step.&nbsp; The vote to overturn the FCC&rsquo;s Order would then go to the House and the chance of it passing there is slim.&nbsp; Finally, President Trump would need to sign onto any action to overturn the FCC&rsquo;s Order&mdash;an unlikely possibility considering the White House has expressed its support for the repeal of net neutrality.&nbsp; Although this process will ultimately be futile, the Democrats are seizing on the widespread public disagreement with the FCC&rsquo;s decision to build political capital.&nbsp; Senator Markey of Massachusetts has stated that &ldquo;[t]here will be a political price to pay for those on the wrong side of history.&nbsp; Momentum is on our side.&rdquo;&nbsp;</p>Blog19 Jan 2018 00:00:00 -0800https://www.psh.com/?t=40&an=73198&format=xml