HILARY J. SUMNER
Creating Assets from Innovations
Richland, PA 17087
1121 Stouchsburg Rd.

LAW OFFICE OF  

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IP In the News


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"Scandalous" trademarks on the Heels of Matal v. Tam

Posted on September 26, 2018 at 5:10 PM Comments comments (0)

Proctor & Gamble has recently filed two trademark applications for  "WTF" and "FML" - two colorful acronyms containing the word "F*CK".  These marks would have formerly been rejected on the basis that they are "scandalous" or "immoral;"  however, recent decisions validating registration of THE SLANTS (a band with Asian members) and REDSKINS (an NFL team) has changed the trademark landscape. A recent Federal Court decision noted, "the First Amendment protects private expression, even private expression which is offensive to a substantial composite of the general public,” holding that FUCT is a registerable trademark.

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USPTO Director Iancu Suggests a New Effort to Clarify Patent Eligibility

Posted on September 26, 2018 at 11:50 AM Comments comments (0)

USPTO Director Iancu recently proposed new patent eligibility guidelines at the quarterly meeting of the Patent Public Advisory Committee (PPAC).  Iancu noted that clarity is needed both by examiners and applicants asking, "how can a claim be novel enough to pass 102 and nonobvious enough to pass 103, yet lack an "inventive concept" and therefore fail 101? Or, how can a claim be concrete enough so that one of skill in the art can make it without undue experimentation, and pass 112, yet abstract enough to fail 101? How can something concrete be abstract?"  Hopefully the new guidelines will address these issues and give some much needed clarity.

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Scientist Admits to Trying to Steal GlaxoSmithKline's Trade Secrets for China

Posted on September 4, 2018 at 9:15 AM Comments comments (0)

A Chinese American Scientist working in Phildelphia admitted to being involved in a plot to steal GlaxoSmithKline trade secrets for China.  The trade secrets involved medical treatments for cancer and other illnesses. CLICK HERE FOR FULL ARTICLE

Supreme Court Holds that Tribal Sovereign Immunity Cannot be Used to Shield Against USPTO Proceedings

Posted on August 1, 2018 at 11:20 AM Comments comments (0)

Drug company Allergan transferred its Restasis drug patents to a Mohawk tribe in upstate NY.  Under the deal, Allergan paid the Indian tribe $13.75 million and agreed to further payment of $15 million in annual royalties while the patents were in force. In exchange, the tribe agreed to lease the patents back to Allergan and promised to claim sovereign immunity in any USPTO patent challenges.  Under the law, Indian tribes possess inherent sovereignty; however, this sovereignty may be limited through treaty or federal statute. Additionally, Congress possesses plenary power over tribes, allowing it to alter or abolish tribal sovereignty at will.  The US Supreme Court recently held that Indian tribes cannot use sovereign immunity to shield themselves from patent challenges brought within the USPTO.  The court did not decide whether sovereign immunity claims could be used by states.

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Supreme Court to Hear On-Sale Bar Case

Posted on July 5, 2018 at 11:10 AM Comments comments (0)

The Supreme Court recently granted a petition for writ of certiori in Helsinn Healthcare S.A. v. Teva Pharm. USA, Inc.  The court will be asked to determine whether the Leahy-Smith America Invents Act (AIA) bars an inventor from selling to a third party when that third party has a duty of confidentiality to the seller.  Such an "on-sale" bar would prevent the inventor or assignee from filing a patent for that invention.

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USPTO Issues 10 Millionth Patent

Posted on June 30, 2018 at 9:05 AM Comments comments (0)

Patent No. 10,000,000 was issued on June 19, 2018 to inventor Joseph Marron and the Raytheon Company  for a “Coherent LADAR Using Intra-Pixel Quadrature Detection.” The device is designed to improve laser detection and ranging (LADAR).

PATENT MILESTONE TIMELINE

Is it Safe to Use a "Dead" Trademark?

Posted on May 26, 2018 at 4:55 PM Comments comments (0)


Cancellation of a trademark registration does not extinguish common law trademark rights. If the owner continues to use the mark after abandonment or cancellation by the USPTO, that owner will still enjoy common law protections allowing for use within the current "zone of commerce."  While it may possible to register a canceled or abandoned mark, one should think carefully and research any potentially confusingly similar uses.

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Louis Vitton Doesn't See the Humor

Posted on December 15, 2017 at 10:15 AM Comments comments (0)

A hand bag company called My Other Bag (MOB) has been engaged in a long legal battle with Louis Vitton.  The company claimed that MOB's canvas tote bags depicting images of Louis Vitton bags was an infringing use of their copyrights and trademarks and was diluting their brands. The District Court for the Southern District of New York held that such use amounted to parody and was an acceptable use.  The Second Circuit affirmed and the Supreme Court rejected Louis Vitton's appeal.  CLICK HERE FOR FULL ARTICLE





Amazon Attempts to Trademark Blue Rings

Posted on December 11, 2017 at 11:45 AM Comments comments (0)

In July 2016, Amazon submitted an application to trademark the blue rings that encircle the top of their Echo product.  This type of trademark has been granted in the past and will turn on whether the general public associates these cyan rings with the voice-controlled speaker.  CLICK HERE FOR ARTICLE



Be Wary of Bluffing an IP Action in the UK

Posted on November 15, 2017 at 6:00 PM Comments comments (0)

"Threatening" a potential infringer for acts performed in the UK will now be govered by a new Intellectual Property Unjustified Threats Act. The act took effect on October 1, 2017 and outlines "permitted communications" between potential adversaries in patent, trademark and designs.  It should be noted that the act will not apply to copyright infringements, assertions of passing off or trade secret actions.  CLICK HERE FOR FULL ARTICLE



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