Overview
Chutter Case Concludes with a Loss of Incontestable Status and Without Sanctions on Remand to the Trademark Trial and Appeal Board
Under Section 15 of the U.S. Trademark Act, a claim of incontestability is available when (1) there has been no final decision adverse to the registrant’s claim of ownership or right to register the mark, (2) there is no such proceeding pending, (3) it is within one year of any five-year period of continuous and consecutive use subsequent to the date of registration, and (4) the mark has not become generic. 15 U.S. Code § 1065. Incontestability is valuable because it shields a registrant from certain challenges to the validity of a mark, notably challenges based on descriptiveness. In a…
Dew Process: SCOTUS Limits Trademark Profit Disgorgement in Dewberry
The U.S. Supreme Court held unanimously in Dewberry Group, Inc. v. Dewberry Engineers Inc. (Case No. 23-900) that an award of “defendant’s profits” under federal trademark law is limited to the profits of the named defendant and excludes those of its non-defendant corporate affiliates. That is so even where, as here, the defendant has engaged in willful infringement and yet has generated—at least as a matter of accounting, to the great benefit of its corporate affiliates—no profits for itself whatsoever. Dewberry Engineers, the plaintiff, provides real estate development services to other businesses nationally. It owns a registration for the mark…
What Those Sprayed Edges and Special Editions Mean for Your Copyright Applications
Look no further than #BookTok or #Bookstagram, and it is clear that beautiful books are having a moment. Special artwork, foil jackets and sprayed or painted edges are all the rage. Those seeking custom bindings can turn to myriad storefronts on Etsy, and book lovers can re-cover their existing libraries with covers from sites such as Juniper Books. A recent article in Publisher’s Weekly credits both the “meteoric rise of the romance and romantasy genres,” the popularity of subscription book boxes, and—of course—social media with sparking this trend. So as not to miss out, publishers (indie and traditional alike) are…
USPTO’s Policies for Discretionary Denial of Patent Challenges Are Evolving, but Remain Unsettled
In instances where a patent challenger submits a petition to the United States Patent and Trademark Office (USPTO) for inter partes review (IPR) or post-grant review (PGR) of a patent and there is parallel litigation involving the same patent, the Director of the USPTO, and, by delegation, the Patent Trial and Appeal Board (PTAB) administrative patent judges (“Judges”) have discretionary authority to deny institution of the petition. Until recently, this discretionary denial authority was exercised according to the USPTO’s June 22, 2022 Interim Procedure for Discretionary Denials (the “2022 Guidance”). On February 28, 2025, however, the USPTO rescinded the 2022…
