Halloween is a time for goblins, ghouls, and—if you’re an inventor—a whole lot of creative thinking! Among the cauldron of Halloween patents, one particularly clever design stands out: a patented method for decorating pumpkins (and, technically, other fruits…but we’re not holding our breath for Halloween coconuts). Meet U.S. Patent 6,855,224, an invention that makes it easy to transfer intricate designs onto pumpkin surfaces.

This invention takes the hassle out of the traditional pumpkin pattern transfer process. These days, social media is full of reels showing tricks to make pumpkin carving a real treat. Still, for those of us who grew up carving with mom’s dull kitchen knife, we know the process can be harder than waking the dead, so you’ll appreciate the genius behind this idea. Here, the magic is in a patterned adhesive sheet that sticks directly to the pumpkin (or your “fruit” of choice). Just peel off the liner, press the sheet onto your pumpkin, and carve along the lines. And when you’re done? Just peel away the sheet to reveal a spooky, professionally styled creation! Gone are the days of dealing with fading marker outlines when trying to carve the pumpkin.

Interestingly, this patent isn’t just for pumpkins; it’s broad enough to cover all fruits and vegetables! But let’s be real, Halloween is a pumpkin’s night to shine. Broadening the scope is a classic patent strategy so that the invention can apply to a wide range of surfaces, just in case anyone decides that jack-o’-lantern watermelons should be a thing.

Interestingly, this patent only covers the method of decorating fruits and vegetables, not the product itself. Specifically, the claims protect a series of steps: providing the product, peeling the liner, sticking the adhesive pattern onto the pumpkin, and carving along the lines. While method claims can pack a punch in areas like communications, machine learning, or manufacturing, enforcement can be tricky when the method is direct to using a product because the “infringer” is the user of the product (i.e., the person carving the pumpkin). You’d have to be a real witch to enforce a patent against Halloween fans!

In some cases, when method claims are at play, patent holders may go after manufacturers or sellers of infringing products under an inducement theory. To prove inducement, the patent holder would need to show that a seller or manufacturer encouraged consumers to use the infringing product in a way that infringed on the patented method—usually through marketing materials or instructions. To overcome inducement allegations, the seller/manufacturer can show that the infringing product has non-infringing uses. For example, similar stencils could even be marketed as fun tools to decorate fruits and vegetables without carving along the lines!

Luckily for all the fruit and vegetable carvers out there, this patent expired in 2022, so there is no need to fear any courtroom frights! As you head out trick-or-treating this Halloween on the hunt for those elusive full-size candy bars, take a moment to appreciate the art of pumpkin carving. And who knows, maybe you’ll spot a carved fruit or two along the way!

Seyfarth IP partner, Matthew Moersfelder, authored an article, “Penn State Merchandise Case Runs Up Costs for Trademark Owners,” in Bloomberg Law . Moersfelder discussed the impact of Pennsylvania State University suing Vintage Brand LLC, alleging the company willfully infringed various Penn State trademarks by selling products featuring those marks on its website.

“If consumers are purchasing merchandise solely because they want to show support for a favorite company or brand, but not because they believe the merchandise itself is affiliated or endorsed by the company or product, then a similar result should follow.”

The article was also later referenced in Print & Promo Marketing.

On October 7, Seyfarth partner Lauren Leipold co-presented a Strafford webinar on “International Trademark Protection After Abitron: Branding and Enforcement Considerations.” Lauren was joined by Thomas Brooke of Holland & Knight and Martin Schwimmer of Leason Ellis.

The Supreme Court’s ruling in Abitron v. Hetronic (U.S. 2023) limited the extraterritorial reach of the Lanham Act, stating that infringement claims are confined to domestic uses. This raises important questions about what constitutes “use in commerce” under the Act, and underscores the necessity for U.S. trademark owners to explore robust strategies for protecting their marks internationally.

The panel of experienced trademark attorneys discussed the implications of the Abitron decision and what U.S. companies should do if they believe they are victims of foreign trademark infringement. The panel also discussed how this informs and impacts a company’s brand protection and enforcement strategies within and outside the U.S. The discussion was a reminder of the evolving challenges in trademark law and the importance of staying informed.

Key Takeaways from the Webinar

  • The standard for “use in commerce” remains murky. The panel discussed differing approaches and definitions adopted by lower courts and by the Supreme Court in Abitron, suggesting that post-Abitron, more direct ties to U.S. commerce are required before a foreign defendant’s activity will be subject to Lanham Act protection.
  • Personal jurisdiction remains key. Even if Abitron’s “use in commerce” standard does not require a sales transaction in the U.S., jurisprudence that has developed over the past several decades surrounding personal jurisdiction over foreign defendants suggests that a domestic sale is key.
  • Brand protection strategy. The panel discussed the importance of shoring up registrations in other jurisdictions in order to lay the proper groundwork to enforce against cross-border infringers. In addition, the panel suggested that the contributory infringement doctrine may be useful in this context.

View the full recording here.

The U.S. Patent and Trademark Office (USPTO) has officially announced that the After Final Consideration Pilot Program 2.0 (AFCP 2.0) will soon be laid to rest. In a notice dated October 1, 2024, the USPTO confirmed that the program will end on December 14, 2024. Despite being extended numerous times since its launch in 2013, AFCP 2.0 has now run into fiscal hurdles. Earlier this year, the USPTO proposed a new fee to continue the program into fiscal year 2025, but after receiving widespread negative feedback, it has decided to retire AFCP 2.0 once and for all.

What Is After Final Practice?

When an applicant receives a Final Office Action (FOA) from the USPTO, it means the examiner has maintained their rejection after a prior response. At this point, applicants have several ways to continue prosecution:

  • Filing a response: Typically, any amendments submitted after an FOA are not considered unless a Request for Continued Examination (RCE) is filed.
  • Filing an RCE: This reopens prosecution and allows for further substantive review, but it comes at an added cost.
  • Requesting AFCP 2.0 consideration: Prior to its termination, this option allowed applicants to submit non-broadening amendments for extra review without needing an RCE.
  • Filing a notice of appeal: This escalates the case to the Patent Trial and Appeal Board (PTAB) for further examination.
  • Filing a new application: Applicants can shift their focus by pursuing claims of a different scope in a fresh application.
  • Abandoning the application: In some cases, applicants may choose to drop the case for business or strategic reasons.

Each of these options has different implications in terms of cost, time, and likelihood of success. Many applicants gravitated toward AFCP 2.0 because of its cost-effectiveness and efficiency. However, not everyone was a fan. A glance at the USPTO’s Patent Examiner sub-Reddit shows that AFCP 2.0 often added to examiners’ workloads. Examiners reported that applicants would sometimes use after-final interviews (which are limited to one per MPEP guidelines) to “test out” potential amendments. After receiving feedback, applicants would file an AFCP 2.0 request based on those changes, which could trigger yet another interview request. Rather than streamlining prosecution, this prolonged the process for some cases.

What Was AFCP 2.0?

AFCP 2.0 was designed to give applicants a chance to submit a non-broadening amendment to at least one independent claim after receiving an FOA. It gave examiners extra time to consider the amendments, often leading to productive interviews between applicants and examiners to work through unresolved issues.

In some cases, AFCP 2.0 helped push an application across the finish line when it was close to allowance. However, there were limitations—some examiners noted that the program’s time allowances were too short to properly evaluate more complex amendments. This resulted in many AFCP 2.0 requests being denied because they required more review time than the program allowed. In addition, some examiners believed that the program ended up extending prosecution rather than shortening it, contrary to its original goal.

That goal was to reduce the number of RCE filings by helping move applications closer to allowance without the need for an RCE. And to some extent, it worked—since 2016, over 60,000 AFCP 2.0 requests were filed annually, a clear indicator of its popularity among applicants looking to avoid the costs and delays associated with RCEs. But as successful as the program was for many practitioners, the rising costs of running AFCP 2.0 ultimately led to its discontinuation.

What’s Next for Applicants?

With AFCP 2.0 soon to be a relic of the past, patent applicants will need to adapt their strategies for continuing prosecution after a FOA. Fortunately, several alternative options remain:

  • Amendments after prosecution closes: Applicants can still submit amendments to place their application in condition for allowance or to prepare it for appeal (37 CFR 1.116(b)). However, in most cases, an RCE will be required for the amendments to be fully considered.
  • Examiner interviews: Interviews have always been a useful tool, and now, they’re more crucial than ever. We’ve often advocated for conducting an interview before submitting an AFCP 2.0 request. While examiners aren’t required to grant interviews after a FOA, many are willing to meet if substantive amendments are on the table or there are points of confusion to clarify (M.P.E.P. § 713.09 and 714.12). While an interview won’t work miracles, it can certainly help unblock progress when a case is stalled.
  • Pre-appeal brief requests: This option allows applicants to request a quick review of their case before committing to a full appeal. It can sometimes resolve issues without needing to go through the entire appeals process (M.P.E.P. § 1204.02).

While the end of AFCP 2.0 may feel like losing a valuable option, these other avenues still provide effective ways to address rejections and keep cases moving.

AFCP 2.0’s Legacy: A Fix for Pendency—With Some Caveats

For over a decade, AFCP 2.0 was a trusted resource for patent practitioners aiming to reduce pendency. In many cases, it fostered collaboration between applicants and examiners, leading to productive discussions and quicker resolutions. However, some critics felt the program gave applicants a free second bite at the apple, dragging out the process rather than resolving it efficiently.

As AFCP 2.0 comes to a close, applicants and practitioners will need to adjust to a post-AFCP world. However, the program’s legacy of encouraging efficiency and collaboration in patent prosecution will not be forgotten.

And with that, we say farewell to AFCP 2.0. Let’s mark its exit with a few words of tribute:

Goodbye, dear program, you’ve served us well,
In the halls of patents, your story we’ll tell.
A bridge through the final, the office door closed,
You gave one more chance before paths were reposed.

With amendments in hand, we would send you our plea,
Hoping examiners would listen, set inventors free.
You saved us from RCE’s endless repeat,
With just a few hours, resolutions we’d meet.

Through interviews granted, we’d sit side by side,
Examiner and counsel, no secrets to hide.
You brought forth allowances, breathed hope in the air,
For one final shot, you were always there.

But now your time’s come, you’re stepping away,
As December draws near, we bid you good day.
Though filings may change, your impact will stay,
In the memories of those who worked through the fray.

So farewell, AFCP, you’ve earned your rest,
In the realm of patent tools, you were one of the best.

On Thursday, November 7th at 1:30 p.m. CT, co-editor of our Gadgets, Gigabytes, and Goodwill Blog, Puya Partow-Navid, will participate in a panel for Seyfarth’s acclaimed Pioneers and Pathfinders Virtual Roundtable Series. Seyfarth’s Pioneers and Pathfinders virtual roundtable series has tackled critical topics intended to help our clients navigate the implications of generative AI and natural language processing models in the legal industry. In this session, the expert panel will address the legal and commercial challenges of disinformation and deepfakes.

In simple terms, a deepfake is a type of synthetic media where images, videos or audio seem real but have been manipulated or generated with artificial intelligence. While some synthetic or manipulated media have legitimate applications, the ability of deepfakes to exploit and spread disinformation is a quickly growing and significant threat to society—as we have seen from headlines ranging from the U.S. presidential election to Taylor Swift, to deepfake applications for remote jobs, and scams robbing companies of millions of dollars.

Organizations need to be alive to the commercial and legal dangers that deepfakes present and consider the potential safeguards. Indeed, this is a boardroom issue, with misinformation/disinformation ranking as the #1 most severe near-term global risk, according to the World Economic Forum’s 2024 Global Risks Report. With that in mind, our panel will tackle top-of-mind questions such as:

  • What are the biggest risks of deepfakes that leaders are tackling on behalf of their organizations and their customers/consumers?
  • How are deepfakes impacting the courtroom and evidentiary rules?
  • What legal frameworks exist to address the misuse of deepfakes and offer protections from disinformation?
  • What are some of the technological solutions and best practices that businesses can employ to stay a step ahead of deepfakes and disinformation?
  • How can we educate our employees and stakeholders about deepfakes?

Don’t miss this opportunity to learn from industry leaders and become a pioneer at the forefront of the profession’s evolution—we invite you to register your attendance.

Panelists

Catherine Porter, Chief Business Officer, Prove
Hon. Paul W. Grimm (Ret.), David F. Levi Professor of the Practice of Law and Director of the Bolch Judicial Institute at Duke Law School
Puya Partow-Navid, Partner, Seyfarth Shaw LLP
Stephen Poor, Partner and Chair Emeritus, Seyfarth Shaw LLP

The U.S. Patent and Trademark Office (USPTO) has canceled long-standing trademark registrations for “Super Hero” and “Super Heroes,” which had been previously jointly owned by Marvel and DC Comics.

The cancellations resulted from a petition filed by Superbabies Limited, a company producing comics about superhero babies. Superbabies initiated the cancellation action after DC Comics attempted to block the promotion of Superbabies’ series, “The Super Babies.”

Superbabies raised several arguments in its petition for cancellation. Chief among its arguments was that the phrases were generic, referring to a genre and character archetype rather than a specific brand. Superbabies supported this argument with historical evidence showing widespread usage in media and third-party products.

Superbabies also asserted that the joint ownership of the registrations by competitor constituted abandonment of any rights they could asset in the phrases: since both companies were entitled to use the phrases, the phrases could not function as trademarks because the use would not serve as an exclusive indicator of origin.

When Marvel and DC Comics failed to respond to the petition for cancellation, Superbabies moved for default judgment. Marvel and DC Comics also did not respond to Superbabies’ motion, and the Trademark Trial and Appeal Board granted default judgment and ordered cancelation of the “Super Hero” and “Super Heroes” registrations.

While Marvel and DC Comics continue to jointly own several more trademark registrations, and independently own a number of “super” formulative marks, these cancellations still represent significant loss of rights in registrations that had existed for decades.

In our recent webinar, “Trade Secrets Audits: Strengthening Your Company’s IP Protection,” Seyfarth’s Intellectual Property Partner, Lauren Leipold, along with Trade Secret Attorneys Eddy Salcedo and James Yu, shared essential strategies for enhancing IP protection in today’s complex landscape. As corporate espionage and data breaches become increasingly prevalent, the session provided valuable insights on effective methods for safeguarding your company’s intellectual assets. Notably, recent developments surrounding the FTC’s Non-Compete Ban—currently stalled in litigation—highlight the pressing need for proactive measures to secure your business against emerging threats.

Key Insights from the Webinar

  • Look for opportunities to secure rights in trademarks, copyrights, and patents by filing for federal registrations
  • The same subject matter could be subject to patent or to trade secret protection, depending upon your business needs
  • Consider whether additional contractual language is required to secure ownership rights in IP, even after registration
  • Think critically about your IP portfolio as a whole when crafting employment agreements and corporate policy
  • Determine what, if any, agreements you have in place, such as Confidentiality Agreements, Restrictive Covenants, Assignment of Inventions and Return of Materials, and ensure they are uniform and up to date.
  • Ensure that your agreements, and their terms, comport to the applicable State Laws to ensure enforceability.
  • Review your IP policies, practices and procedures to make sure adequate protections are in place to establish you engaged in reasonable efforts to safeguard your IP and trade secrets.
  • Review and update, as needed, Employee Handbooks, Information Security Policies, BYOD and Social Media Policies so that employees are aware and do not “inadvertently” disclose sensitive materials.
  • Implement Generative AI Policies and procedures to further protect against disclosure of sensitive information.
  • Ensure IT, Legal and Management of the Company are aware of all potential risks of exfiltration with respect to electronic data, so they can implement policies and procedures to mitigate risk.
  • Install extra levels of security where necessary, including two factor authorization, data encryption, and limiting use of third-party apps to protect particularly sensitive information, particularly with a hybrid and remote workforce, of the Company allows use of personal devices.
  • Ensure employees understand what information the Company considers confidential, as trade secret identification is critical to successfully asserting a trade secret claim.
  • Develop a culture of confidentiality by regularly updating Company policies, employment agreements, and provide regular training.
  • Develop and maintain a protocol for on-boarding and off-boarding employees that ensures that confidentiality obligations are acknowledged and enforced.
  • Develop a consistent return of information and device policy for both in-person and remote workforce.

To view the webinar recording, click here.

Gadgets, Gigabytes, & Goodwill Blog editors, Lauren Leipold and Owen Wolfe, co-authored an article, “Rules for use of AI-generated evidence in flux,” in Reuters and Reuters’ Westlaw Today. The Seyfarth attorneys discussed how generative AI prompts and outputs are discoverable in litigation, even those that were part of pre-suit investigation, and that parameters around use of this type of evidence are still relatively unclear.

“Litigants should be thinking carefully about privilege, spoliation, reliability and authentication issues that will inevitably arise around AI-generated materials.”

The full article is available in Reuters and Reuters’ Westlaw Today.

Thursday, September 26, 2024
1:00 p.m. to 1:30 p.m. Eastern
12:00 p.m. to 12:30 p.m. Central
11:00 a.m. to 11:30 a.m. Mountain
10:00 a.m. to 10:30 a.m. Pacific

For more information and to register, click here.

Please join us for the first session of Seyfarth’s inaugural Winning Combinations: Exploring Synergies with Government Contracts Law webinar series titled: Effective Strategies for Government Software License Negotiations. The webinar will be held on Thursday, September 26, at 1:00 p.m. Eastern.

This session will feature Ken Wilton, Partner and Trademark Practice Lead and Teddie Arnold, Partner in the firm’s Government Contracts Group. Our panelists will guide you through the complexities of negotiating software licenses with government entities. Learn best practices, key negotiation tactics, and critical compliance considerations to ensure favorable outcomes.

Topics Covered:

  • Differences between commercial and government software license agreements.
  • Essential clauses to include in government software contracts.
  • Best practices for negotiating pricing and payment terms.
  • Navigating compliance with government regulations and procurement policies.
  • Tips for managing contract modifications and renewals.

Speakers

Ken Wilton, Partner and Trademark Practice Lead, Seyfarth Shaw LLP

Teddie Arnold, Partner, Seyfarth Shaw LLP

For more information and to register, click here.

If you have any questions, please contact Sadie Jay at sjay@seyfarth.com and reference this event.

To comply with State CLE Requirements, CLE forms requesting credit in IL or CA must be received before the end of the month in which the program took place. Credit will not be issued for forms received after such date. For all other jurisdictions forms must be submitted within 10 business days of the program taking place or we will not be able to process the request.

Our live programming is accredited for CLE in CA, IL, and NY (for both newly admitted and experienced).  Credit will be applied as requested, but cannot be guaranteed for TX, NJ, GA, NC and WA. The following jurisdictions may accept reciprocal credit with our accredited states, and individuals can use the certificate they receive to gain CLE credit therein: AZ, AR, CT, HI and ME. For all other jurisdictions, a general certificate of attendance and the necessary materials will be issued that can be used for self-application. CLE decisions are made by each local board, and can take up to 12 weeks to process. If you have questions about jurisdictions, please email CLE@seyfarth.com.

Please note that programming under 60 minutes of CLE content is not eligible for credit in GA. programs that are not open to the public are not eligible for credit in NC.

What do a social media content creator and reality television stars have in common?  Apart from more followers than I’ll ever have, significant issues regarding their trademarks.  Jools Lebron, a content creator, was distraught to learn that several individuals applied to register with the United States Patent and Trademark Office (the “USPTO”) a catchphrase she made famous.  Ariana Madix and Katie Maloney, reality stars turned restaurateurs, were presumably surprised to learn that a former business partner applied to register the name of their restaurant.  These are not uncommon scenarios.  But what can we learn from them? 

Lebron is a social media personality that shot to fame this summer.  She posted a video about how she is “very demure, very mindful” regarding makeup choices for work.  The video has since been viewed millions of times and has sparked a trend on social media as we transition from “brat summer” to “demure fall.”

Lebron invested in merchandise featuring the catchphrase to promote herself.  But she did not immediately apply to register the phrase with the USPTO.  Shortly after Lebron’s video went viral, several third parties filed applications with the USPTO for the catchphrase and variations of the same.  The applied for marks include VERY DEMURE .. VERY MINDFUL .. for advertising services, VERY DEMURE VERY CUTESY for advertising services, and ALWAYS DEMURE AND VERY MINDFUL for clothing.  This was perhaps an attempt to capitalize on Lebron’s fame. 

Recently, Jools Lebron filed two applications for VERY DEMURE VERY MINDFUL for numerous goods and services, including cosmetics, clothing, bags, and advertisement and entertainment services.  Because Lebron’s applications were filed after the above applications, the USPTO may cite the prior filings as the basis for a refusal regarding Lebron’s filings. 

Pivoting to reality television, Something About Her LLC (“SAH”), is a California-based company owned by Madix and Maloney who have leveraged their public personas to promote their SOMETHING ABOUT HER restaurant and brand.  Madix and Maloney partnered with celebrity chef Penny Davidi to help create the menu for their future sandwich shop. 

SAH and Davidi had a falling out and parted ways.  But not before Davidi’s company, Put a Fork in It LLC, filed an application to register the trademark SOMETHING ABOUT HER for restaurant services. 

In July, SAH filed an application for SOMETHING ABOUT HER for several goods and services, including restaurant services, clothing, and fragrances.  SAH is currently engaged in a proceeding at the Trademark Trial and Appeal Board and a California state court action concerning ownership of the SOMETHING ABOUT HER mark.  

These cases are facially unrelated.  But they underscore the importance of establishing and protecting trademark rights.  In particular, they highlight several considerations for trademark applicants:

  • Do Conduct Thorough Trademark Searches: Before filing a trademark application, it’s crucial to conduct comprehensive searches to ensure that the mark is not already applied for or in use for identical or related goods or services.
  • Don’t Wait to File: Trademark applications can be filed on an intent to use basis and actual use can commence several years later.  But owners can rely on the filing date as if the mark was first used on that date.
  • Don’t Disclose Your Trademarks Before Filing: Madix and Maloney discussed the idea for their SOMETHING ABOUT HER restaurant on January 4, 2022 during an episode of their reality show, which had an initial viewing audience of 650,000.  This could have prompted numerous attempts to capitalize on the brand, as was done to Lebron.
  • Do Document Use and Promotion: Maintaining detailed records of the use and promotion of a trademark can be invaluable in establishing rights.  Although Lebron does not own prior filings for VERY DEMURE VERY MINDFUL, she may be able to establish prior rights by relying on the steps taken to use the mark in commerce.
  • Do Monitor Prior Filings: Intent to use based filings may block a subsequently filed application.  But applicants must perfect their rights by actually using their trademarks in commerce.  If the marks are not used, the applications should become abandoned.

These cases illustrate the complex issues surrounding establishing trademark rights and registering trademarks with the USPTO.  More difficulties may arise when celebrities attempt to establish trademark rights in popular phrases.  And this trend may be on the rise. 

It’s uncertain what avenues Lebron and Madix and Maloney may take to ensure ownership of their valuable trademarks. But what is clear is that we can learn a lot from celebrities and their associated branding.