商標登録insideNews: Major Changes To Trademark And Copyright Law Included In Massive Stimulus Package | Fox Rothschild LLP – JDSupra

Signed into law on December 28, the voluminous Consolidated Appropriations Act of 2021 makes major changes to American intellectual property laws via its inclusion of the Trademark Modernization Act of 2020 (TM Act); the Copyright Alternative in Small-Claims Enforcement Act of 2020 (CASE Act); and an amendment to Title 18 of the United States Code that adds Section 2319C titled “Illicit digital transmission services.”

情報源: Major Changes To Trademark And Copyright Law Included In Massive Stimulus Package | Fox Rothschild LLP – JDSupra

H. R. 2426(pdf)

Summary of H.R.2426 CASE ACT
Passed House (10/22/2019)
Copyright Alternative in Small-Claims Enforcement Act of 2019 or the CASE Act of 2019

This bill creates the Copyright Claims Board, a body within the U.S. Copyright Office, to decide copyright disputes. Damages awarded by the board are capped at $30,000.

Participation in board proceedings is voluntary with an opt-out procedure for defendants, and parties may choose instead to have a dispute heard in court. If the parties agree to have their dispute heard by the board, they shall forego the right to be heard before a court and the right to a jury trial. Board proceedings shall have no effect on class actions.

The board shall be authorized to hear copyright infringement claims, actions for a declaration of noninfringement, claims that a party knowingly sent false takedown notices, and related counterclaims.

The bill provides for various procedures, including with respect to requests for information from the other party and requests for the board to reconsider a decision.

The board may issue monetary awards based on actual or statutory damages.

The parties shall bear their own attorneys’ fees and costs except where there is bad faith misconduct.

A board’s final determination precludes relitigating the claims in court or at the board. Parties may challenge a board decision in federal district court only if (1) the decision was a result of fraud, corruption, or other misconduct; (2) the board exceeded its authority or failed to render a final determination; or (3) in a default ruling or failure to prosecute, the default or failure was excusable.

商標登録insideNews: Trademark Modernization Act of 2020 | Lathrop GPM – JDSupra

商標登録insideNews: Substantial Increase in US Trademark Fees Will Ring in New Year 2021 | McCarter & English, LLP

If you are considering filing a new trademark application or maintaining an existing registration, you may want to file your submission before the end of 2020. The United States Patent and Trademark Office (USPTO) will increase its fees for trademark applications, post-registration maintenance filings, and certain filings with the Trademark Trial and Appeal Board (TTAB).Continue Reading

情報源: Substantial Increase in US Trademark Fees Will Ring in New Year 2021 | McCarter & English, LLP

[コメント]2021年1月2日からの米国商標出願のオフィシャルフィーの値上げが予定されています。主な値上げの項目では、出願料ついては、スタンダード350ドル(1区分当たり:値上げ幅75ドル)、プラスが250ドル(1区分当たり:値上げ幅25ドル)です。また、5-6年目や更新時の使用宣誓書の提出は225ドル(値上げ幅125ドル)になります。それら使用宣誓書の提出前の商品削除補正は無料ですが、提出後では補正が1区分当たり250ドルになります。抜き打ち検査(audit)に引っ掛かって、使用していない商品の証拠提出を求められた場合、区分当たり250ドルの補正料は払うか登録を断念するかの選択になりそうです。マドプロベースの出願料も500ドルになっており、マドプロの米国指定の費用も値上がりが予想されます。

The United States Patent and Trademark Office recently enacted a rule that increases numerous fees for filing trademark applications, maintaining…

情報源: Time is of the essence to avoid trademark fee increases set for 2021 – Lexology

Federal Register / Vol. 85, No. 222 / Tuesday, November 17, 2020 / Rules and Regulations
PART 2—RULES OF PRACTICE IN
TRADEMARK CASES
■ 1. The authority citation for part 2 is
revised to read as follows:
Authority: 15 U.S.C. 1113, 1123; 35 U.S.C.
2; sec. 10, Pub. L. 112–29, 125 Stat. 284,
unless otherwise noted. Sec. 2.99 also issued
under secs. 16, 17, 60 Stat. 434; 15 U.S.C.
1066, 1067.
■ 2. Amend § 2.6 by:
■ a. Revising paragraphs (a)(1)(i)
through (v);
■ b. Adding paragraph (a)(11)(iii);
■ c. Revising paragraphs (a)(12), (15)
through (18), (22), and (23); and
■ d. Adding paragraphs (a)(24) and (25).
The revisions and additions read as
follows:
§ 2.6 Trademark fees.
(a) * * *
(1) * * *
(i) For filing an application on paper,
per class—$750.00
(ii) For filing an application under
section 66(a) of the Act, per class—
$500.00
(iii) For filing a TEAS Standard
application, per class—$350.00
(iv) For filing a TEAS Plus application
under § 2.22, per class—$250.00
(v) Additional processing fee under
§ 2.22(c), per class—$100.00
* * * * *
(11) * * *
(iii) For filing an amendment to a
registration prior to submission of an
affidavit under section 8 or section 71
of the Act and consisting only of the
deletion of goods, services, and/or
classes—$0.00
(12) Affidavit under section 8. (i) For
filing an affidavit under section 8 of the
Act on paper, per class—$325.00
(ii) For filing an affidavit under
section 8 of the Act through TEAS, per
class—$225.00
(iii) For deleting goods, services, and/
or classes after submission and prior to
acceptance of an affidavit under section
8 of the Act on paper, per class—
$350.00
(iv) For deleting goods, services, and/
or classes after submission and prior to
acceptance of an affidavit under section
8 of the Act through TEAS, per class—
$250.00
* * * * *
(15) Petitions to the Director. (i) For
filing a petition under § 2.146 or § 2.147
on paper—$350.00
(ii) For filing a petition under § 2.146
or § 2.147 through TEAS—$250.00
(iii) For filing a petition under § 2.66
on paper—$250.00
(iv) For filing a petition under § 2.66
through TEAS—$150.00
(16) Petition to cancel. (i) For filing a
petition to cancel on paper, per class—
$700.00
(ii) For filing a petition to cancel
through ESTTA, per class—$600.00
(17) Notice of opposition. (i) For filing
a notice of opposition on paper, per
class—$700.00
(ii) For filing a notice of opposition
through ESTTA, per class—$600.00
(18) Ex parte appeal. (i) For filing an
ex parte appeal to the Trademark Trial
and Appeal Board on paper, per class—
$325.00
(ii) For filing an ex parte appeal to the
Trademark Trial and Appeal Board
through ESTTA, per class—$225.00
(iii) For filing a first request for an
extension of time to file an appeal brief,
per application—$0.00
(iv) For filing a second or subsequent
request for an extension of time to file
an appeal brief on paper, per
application—$200.00
(v) For filing a second or subsequent
request for an extension of time to file
an appeal brief through ESTTA, per
application—$100.00
(vi) For filing an appeal brief on
paper, per class—$300.00
(vii) For filing an appeal brief through
ESTTA, per class—$200.00
* * * * *
(22) Extension of time for filing a
notice of opposition under
§ 2.102(c)(1)(ii) or (c)(2). (i) For filing a
request for an extension of time to file
a notice of opposition under
§ 2.102(c)(1)(ii) or (c)(2) on paper—
$400.00
(ii) For filing a request for an
extension of time to file a notice of
opposition under § 2.102(c)(1)(ii) or
(c)(2) through ESTTA—$200.00
(23) Extension of time for filing a
notice of opposition under § 2.102(c)(3).
(i) For filing a request for an extension
of time to file a notice of opposition
under § 2.102(c)(3) on paper—$500.00
(ii) For filing a request for an
extension of time to file a notice of
opposition under § 2.102(c)(3) through
ESTTA—$400.00
(24) Oral hearing. For filing a request
for an oral hearing before the Trademark
Trial and Appeal Board, per
proceeding—$500.00
(25) Letter of protest. For filing a letter
of protest, per subject application—
$50.00
* * * * *

商標登録insideNews: WhatsApp Opposes WhatsPay Trademark | lawstreetmedia.com

WhatsApp Inc. has filed an opposition to WhatsPay doing business as OmegaSoft Technology LLC’s proposed “WHATSPAY” trademark and accompanying design. After extending its deadline to file the opposition, WhatsApp contended that the filing before the Trademark Trial and Appeal Board (TTAB) is timely.The opposition stated that OmegaSoft is a South Carolina company. It allegedly filed an application in January, seeking to use its WHATSPAY trademark for “downloadable computer software for use as an electronic wallet.”

情報源: WhatsApp Opposes WhatsPay Trademark – Tech

Opposition
Number: 91265489 Filing Date: 10/19/2020
Status: Pending Status Date: 10/19/2020
ESTTA Tracking number: ESTTA1089623

Grounds for Opposition
Priority and likelihood of confusion Trademark Act Section 2(d)
No use of mark in commerce before application or amendment to allege use was filed Trademark Act Sections 1(a) and (c)
False suggestion of a connection with persons,living or dead, institutions, beliefs, or national symbols, or brings them into contempt, or disrepute Trademark Act Section 2(a)

被異議申立商標 米国連番第88767070号

全米知的財産権調整センター(National IPR Center: NIPRCC) 商標_動画(embedded)

1.PSA – Illegal Streaming (90 seconds)、1:30

2:Motion Picture Association signs up to assist the IPR Center with anti-piracy efforts、17:35

The National Intellectual Property Rights Coordination Center (IPR Center) which stands at the forefront of the United States government’s response to combatting global intellectual property (IP) theft and enforcement of its international trade laws. Safeguarding IP underpins every aspect of our nation – from jobs and the economy to the military and national security.
全米知的財産権調整センター(IPRセンター)は、グローバルな知的財産(IP)の盗難との戦いおよび国際貿易法の権利行使に対する米国政府の対応の最前線に立っています。IPの保護は、雇用や経済から軍事や国家安全保障に至るまで、私たちの国のあらゆる側面を支えています。

商標登録insideNews: Federal Circuit Reverses TTAB Ruling on Standing for Petition to Cancel Condom Trademark

The U.S. Court of Appeals for the Federal Circuit ruled yesterday that Australian Therapeutic Supplies Pty. Ltd. has “a real interest” in cancelling the registration for NAKED for condoms, owned by Naked TM, LLC.

情報源: Federal Circuit Reverses TTAB Ruling on Standing for Petition to Cancel Condom Trademark

15 U.S. Code § 1064.Cancellation of registration
A petition to cancel a registration of a mark, stating the grounds relied upon, may, upon payment of the prescribed fee, be filed as follows by any person who believes that he is or will be damaged, including as a result of a likelihood of dilution by blurring or dilution by tarnishment under section 1125(c) of this title, by the registration of a mark on the principal register established by this chapter, or under the Act of March 3, 1881, or the Act of February 20, 1905:
(1)Within five years from the date of the registration of the mark under this chapter.
(2)Within five years from the date of publication under section 1062(c) of this title of a mark registered under the Act of March 3, 1881, or the Act of February 20, 1905.
(3)At any time if the registered mark becomes the generic name for the goods or services, or a portion thereof, for which it is registered, or is functional, or has been abandoned, or its registration was obtained fraudulently or contrary to the provisions of section 1054 of this title or of subsection (a), (b), or (c) of section 1052 of this title for a registration under this chapter, or contrary to similar prohibitory provisions of such prior Acts for a registration under such Acts, or if the registered mark is being used by, or with the permission of, the registrant so as to misrepresent the source of the goods or services on or in connection with which the mark is used. If the registered mark becomes the generic name for less than all of the goods or services for which it is registered, a petition to cancel the registration for only those goods or services may be filed. A registered mark shall not be deemed to be the generic name of goods or services solely because such mark is also used as a name of or to identify a unique product or service. The primary significance of the registered mark to the relevant public rather than purchaser motivation shall be the test for determining whether the registered mark has become the generic name of goods or services on or in connection with which it has been used.
(4)At any time if the mark is registered under the Act of March 3, 1881, or the Act of February 20, 1905, and has not been published under the provisions of subsection (c) of section 1062 of this title.
(5)At any time in the case of a certification mark on the ground that the registrant (A) does not control, or is not able legitimately to exercise control over, the use of such mark, or (B) engages in the production or marketing of any goods or services to which the certification mark is applied, or (C) permits the use of the certification mark for purposes other than to certify, or (D) discriminately refuses to certify or to continue to certify the goods or services of any person who maintains the standards or conditions which such mark certifies:
Provided, That the Federal Trade Commission may apply to cancel on the grounds specified in paragraphs (3) and (5) of this section any mark registered on the principal register established by this chapter, and the prescribed fee shall not be required. Nothing in paragraph (5) shall be deemed to prohibit the registrant from using its certification mark in advertising or promoting recognition of the certification program or of the goods or services meeting the certification standards of the registrant. Such uses of the certification mark shall not be grounds for cancellation under paragraph (5), so long as the registrant does not itself produce, manufacture, or sell any of the certified goods or services to which its identical certification mark is applied.

商標登録insideNews: USMCAが発効、国内法整備も完了(カナダ、米国、メキシコ) | ジェトロ

米国・メキシコ・カナダ協定(USMCA)が7月1日に発効した。メキシコ政府は6月29日付官報において、USMCAを北米自由貿易協定(NAFTA)に代えて発効させ、新たに新設されたのは、連邦産業財産権保護法、品質インフラ法(基準認証に関する新法)であり、改定されたのは連邦刑法と連邦著作権法である。知財関連が多く、USMCAの知的財産の章の先進的内容を反映するためのもの。

情報源: USMCAが発効、国内法整備も完了(カナダ、米国、メキシコ) | ビジネス短信 – ジェトロ

情報源: UNITED STATES–MEXICO–CANADA TRADE FACT SHEET Modernizing NAFTA into a 21st Century Trade Agreement | United States Trade Representative

INTELLECTUAL PROPERTY

The United States, Mexico, and Canada have reached an agreement on a modernized, high-standard Intellectual Property (IP) chapter that provides strong and effective protection and enforcement of IP rights critical to driving innovation, creating economic growth, and supporting American jobs.

Key Highlights: Protections for United States Innovators and Creators

The new IP Chapter will:

  • Require full national treatment for copyright and related rights so United States creators are not deprived of the same protections that domestic creators receive in a foreign market.
  • Continue to provide strong patent protection for innovators by enshrining patentability standards and patent office best practices to ensure that United States innovators, including small- and medium-sized businesses, are able to protect their inventions with patents.
  • Include strong protection for pharmaceutical and agricultural innovators.
  • Require a minimum copyright term of life of the author plus 70 years, and for those works with a copyright term that is not based on the life of a person, a minimum of 75 years after first authorized publication.
  • Require strong standards against the circumvention of technological protection measures that often protect works such as digital music, movies, and books.
  • Establish appropriate copyright safe harbors to provide protection for IP and predictability for legitimate enterprises that do not directly benefit from the infringement, consistent with United States law.
  • Provide important procedural safeguards for recognition of new geographical indications (GIs), including strong standards for protection against issuances of GIs that would prevent United States producers from using common names, as well as establish a mechanism for consultation between the Parties on future GIs pursuant to international agreements.
  • Enhance provisions for protecting trademarks, including well-known marks, to help companies that have invested effort and resources into establishing goodwill for their brands.

Key Achievement: Most Comprehensive Enforcement Provisions of Any Trade Agreement

For the first time, a trade agreement will require all of the following:

  • Ex officio authority for law enforcement officials to stop suspected counterfeit or pirated goods at every phase of entering, exiting, and transiting through the territory of any Party.
  • Express recognition that IP enforcement procedures must be available for the digital environment for trademark and copyright or related rights infringement.
  • Meaningful criminal procedures and penalties for unauthorized camcording of movies, which is a significant source of pirated movies online.
  • Civil and criminal penalties for satellite and cable signal theft.
  • Broad protection against trade secret theft, including against state-owned enterprises.

Key Achievement: Strongest Standards of Protection for Trade Secrets of Any Prior FTA

In particular, the Chapter has the most robust protection for trade secrets of any prior United States trade agreement. It includes all of the following protections against misappropriation of trade secrets, including by state-owned enterprises: civil procedures and remedies, criminal procedures and penalties, prohibitions against impeding licensing of trade secrets, judicial procedures to prevent disclosure of trade secrets during the litigation process, and penalties for government officials for the unauthorized disclosure of trade secrets.

商標登録insideNews: レッドスキンズがチーム名とロゴ変更へ 人種差別抗議広がりで NFLの名門 | 毎日新聞

 米プロフットボールNFLのワシントン・レッドスキンズは3日、北米の先住民を意味するチーム名の見直しに向けた検証を始めると発表した。チームは先住民団体からの名称変更の要請を長年拒否してきたが、人種差別に対する抗議行動が広がり、企業やメディアからの圧力が高まる中、方針転換した。1933年から続くチーム

情報源: レッドスキンズがチーム名とロゴ変更へ 人種差別抗議広がりで NFLの名門 – 毎日新聞

The Washington Redskins have been asked by FedEx, a top sponsor, to rebrand, while Nike, the NFL’s apparel provider, has removed club merchandise from its online store.

情報源: FedEx asks Washington Redskins to change its name while Nike removes all gear from its website | Daily Mail Online

A source tells Stephen A. the Redskins will change the name of their team | First Take, 6:58

商標登録insideNews: Booking.com wins key trademark case at the Supreme Court – CNNPolitics

The Supreme Court sided with Booking.com on Tuesday, green-lighting the booking accommodations website to trademark the generic term associated with their domain name.

情報源: Booking.com wins key trademark case at the Supreme Court – CNNPolitics

On 30th June 2020 Supreme Court of the United States (SCOTUS) in United StatesPpatent and Trademark Office et al. v. Booking.comdealt with the issue of whether the combination of generic terms is also generic for the purpose of trademark registration. SCOTUS by an overwhelming majority (8 judges) held otherwise i.e. such combination is not generic in nature. The sole dissenting opinion was written by J Breyer who held respondent’s Trademark as generic in nature.

情報源: US Supreme Court On ‘generic.com’ Trademark: A Tale Of Missed Opportunities