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USPTO issues new Cannabis Trademark Guidelines

The USPTO has issued new guidelines regarding cannabis-derived goods and services.  The guidelines were issued on May 2, 2019 and can be found here.  The new guidelines explain that the 2018 Farm Bill exempts hemp, which is defined as cannabis plants and derivatives such as CBD that contain no more than 0.3% THC on a dry-weight basis.

Therefore, for trademark applications that identify goods and or services encompassing cannabis or CBD, the 2018 Farm Bill probably removes the CSA as a ground for refusal of the application so long as:  (1) the good and/or services are derived from help;  (2) The identification of goods and/or services specify that the hemp products contain less than 0.3% THC; and (3) the application was filed on or after Dec 20, 2018, except for prior filed application, the applicants have the option of amending the filing date and filing basis of the application to over the CSA as a ground of refusal.

However, be aware that hemp related goods and/or services may still raise legal issues under other laws include the Federal Food Drug and Cosmetic Act (FDCA).

MAKEHAVEN—MAKERSPACE IN NEW HAVEN

Today I made an impromptu trip to MakeHaven in New Haven. A member, John, was working there and gave me a quick tour of their 5000 sqft facility.  They have all sorts of tools and machinery that members can use, such as a working kitchen, homebrew area, quilting frame and CNC quilter, GNC router, injection molder, and of course 3D printers, and a bunch of other stuff.  It was a very impressive makerspace.  The operations manager Kath showed up, and we had a very nice chat.  More information can be found here.

BLOCKCHAIN AND CRYPTOCURRENCY MEETING AT INVENTORS ASSOCIATION OF CONNECTICUT

On Tuesday, April 30, 2019 I attend the Inventors Association of Connecticut (IACT) meeting. The topic was:  “Bitcoin and Blockchain – Ten Years In.  What we know, what we don’t  know and where we are headed.”  The meeting was at the Fairfield University Library.  Attorney Bill Erickson was the presenter.  Bill explained cryptocurrency and blockchain.  He also suggested a youtube video for an explanation of Bitcoin.  The video can be found here.  This was a very informative meeting on Blockchain and Cryptocurrency.  I hope to see you at the next IACT meeting.  More information on IACT can be found here.

USPTO hosting a Women’s Entrepreneurship Symposium

Join the USPTO for the Women’s Entrepreneurship Symposium on May 14 at the USPTO in Alexandria, Virginia.

This free half-day symposium will bring together leaders of industry, government, and education. Topics covered at the Symposium will be the under-representation of women in scientific research and patenting, the economic impact of women inventors and entrepreneurs, and how STEM education can impact change.

More information, including registration, is on the event page of the USPTO website.

USPTO PATENT ATTORNEY ROSTER

Many people are unaware of this fact but the United States Patent and Trademark Office (USPTO) has a roster of all US patent attorneys and agents. The searchable roster can be found here.  Since I am a patent attorney, my information is listed on the roster and can be found here.  Only people who have passed the patent bar and background check, and graduated from an accredited law school and passed a state bar exam can be listed as a patent attorney on the USPTO roster.  Patent agents need only to have passed the patent bar and background check–law school and state bar are not required for patent agents.

The USPTO roster of patent attorneys is a valuable tool for inventors to make sure the “patent attorney” or “patent agent” they are dealing with is a patent practitioner in good standing and who has achieved all the requirements necessary to be a patent practitioner.  You can search the roster, name, state, city, postal code, and business or firm name.

Unfortunately, the USPTO does not have a roster of all trademark attorneys.

PUBLIC DOMAIN DAY!

On January 1, 2019 many famous works entered the public domain in the USA, after a 21 year drought.

Under the first Copyright Act of 1790, copyrights lasted 14 years with an option of additional 14 year renewal term. In 1909 the copyright laws changed again, with both terms doubled to 28 years, thereby allowing for up to 56 years of copyright protection.  In 1976, with a new Copyright ACT, congress changed the law to a copyright term of author’s life plus 50 years, or for works made for hire, a term of 75 years from publication.  In 1998, representative Sonny Bono, yes, THAT Sonny Bono, was a major force who pushed through the Copyright Term Extension Act (“CTEA”).  The CTEA extended the 50 years of protection after death to 70 years, and the term for works made for hire to 95 years.  One reason the law was changed, was because Disney’s Mickey Mouse character was about to enter the public domain.

So, the additional 20 years of copyright term meant that from 1999 until 2019, no published works entered the public domain.   Some works that have entered the public domain are films such as The Ten Commandments, directed by Cecil B. DeMille; The Pilgrim, directed by Charlie Chaplin.  Also books are entering the public domain, such as  Edgar Rice Burroughs, Tarzan and the Golden Lion; Agatha Christie, The Murder on the Links.   A more comprehensive list of works that entered the public domain in 2019 can be found here.

When works enter the public domain, anyone can make them available, where you can rediscover and enjoy them. Public domain works means that you can use these materials, for business, education, for research, or for creative endeavors—whether it’s translating the books, making your own versions of the films, or building new music based on old classics.

USPTO hosting a Spanish Language Inventor Chat on filing patent applications

On May 18, 2019 from 2-3 pm ET, the USPTO will be hosting an inventor chat in Spanish where you can learn to file provisional or non-provisional patent applications using the electronic filing system (EFS). This will be held via an Inventor Info Chat webinar .

The chat will include:

    • Instructions on how to use EFS to file a provisional application
    • Instructions on how to use EFS to submit a non-provisional application
    • A demonstration of how to complete forms
    • Using the Public Patent Application Information Retrieval (Public PAIR) to check the status of your application
    • Understanding the requirements of forms for different processes

More information can be found here.

 

EN ESPAÑOL
La serie de seminarios de ciber chat de la Oficina de Patentes (PTO) regresa el 18 de abril de 2019 desde las 2:00 de la tarde hasta las 3:00 de la tarde, ET. con una presentacion informativa titulada, “Cómo presentar una solicitud de patente provisional, o no-provisional usando el sistema electrónico de presentación de solicitudes de patentes EFS-Web.” Únase al programa haciendo clic aquí

Resumen de presentación:

  • Instrucciones de cómo utilizar EFS para presentar una solicitud provisional
  • Instrucciones de cómo utilizar EFS para presentar una solicitud no provisional
  • Demostración de como completar formularios
  • Uso de PAIR público para comprobar el estado de la aplicación
  • Comprender los requisitos de formularios para diferentes procesosEl inventor info chat webinar serie es presentado por el Oficina de desarrollo de la innovación, que fomenta la invención y el emprendimiento proporcionando pleno acceso al sistema de propiedad intelectual de los Estados Unidos.
  • Para obtener ayuda, por favor envíe un correo electrónico a oidevents@uspto.gov o visite nuestra página web para ver todos próximos programas.
  • Puede enviar sus preguntas a inventorinfochat@uspto.gov durante el evento.

BE CAREFUL WHEN SENDING DEMAND LETTERS

Mercedes Benz USA (MBUSA) recently sued street artist and Canada resident Daniel Bombardier a/k/a DENIAL. What happened was that back around January 2018, MBUSA photographed several of its vehicles in the Detroit area.  Murals by local artists, including DENIAL, were captured in some of these photographs.  MBUSA posted these photographs in its Instagram account.  Around March of 2019, the DENIAL contacted MBUSA claiming that that photographs constituted copyright infringement and demanded monetary damages.  MBUSA removed the photographs from its Instagram account and then on March 29, 2019, sued DENIAL in Federal Court in Michigan.  In the lawsuit, MBUSA was asking for relief from the court, namely a declaration from the Court that MBUSA did not infringe DENIAL’s copyrighted works.

DENIAL probably has a good claim of copyright infringement. However, I wonder if DENIAL was prepared to be almost immediately sued in a US Federal Court, even though he lives in Canada?  I always counsel my clients, that when sending a cease and desist, or demand letter to a possible patent, trademark, or copyright infringer, there is a chance the infringer will turn around and sue my client in a court that is convenient to the infringer, and inconvenient to my client.  Therefore, be careful when sending demand letters, you could be sued yourself, even though you believe you are the one who has been wronged.  The MBUSA vs. Bombardier lawsuit can be found here.

Consider Trade Secrets to protect your Intellectual Property!

Most of my clients want Patent, Trademark, or Copyright protection for their intellectual property. However, many people do not think about Trade Secrets.  If a person or business has an important invention, or information, they may use trade secret to protect it.

Connecticut Uniform Trade Secrets Act (“CUTSA”) can be found at the Connecticut General Statutes §§ 35-50 to 35-58. The remedies for misappropriation or threatened misappropriation of trade secret include injunctive relief (e.g. the court forces the defendant to not use the information protected by the trade secret, or the defendant must not communicate with competitors of the trade secret owner).  Monetary damages are available, as well as punitive damages and attorney’s fees.

CUTSA defines trade secret as follows: “ ‘trade secret’ means information, including a formula, pattern, compilation, program, device, method, technique, process, drawing, cost data or customer list that: (1) Derives independent economic value, actual or potential, from not being generally known to, and not being readily ascertainable by proper means by, other persons who can obtain economic value from its disclosure or use, and (2) is the subject of efforts that are reasonable under the circumstances to maintain its secrecy.” Connecticut General Statutes §35-51.

So, if you have an invention a trade secret may be a good option. You should note that it is completely legal for someone to by a product that embodies the invention that is protected by trade secret, break it open, and reverse engineer it to figure out how to make the device and how the device works.  Thus, trade secrets should only be considered for inventions that are difficult or impossible to reverse engineer.

Things like customer lists, company procedures, marketing schemes, etc. are good candidates for trade secret protection. The CUTSA can be found here.