Overview
Letter from the Editor
Dear Friends and Colleagues,
Ideas are the gifts that keep on giving—and in 2024, we had the privilege of helping our clients uncover, protect, and celebrate the products of their ideas. May 2025 be a year of new discoveries, clever solutions, and the continued pursuit of what’s possible.
Now, without further ado, we are pleased to close out 2024 with our Winter edition of The Newtonian. Along with Firm News and In Case You Missed It, here is an overview of the practice group discussions you will find.
Patent
Federal Circuit Issues Precedential Decision Changing the Test for Design Patent Obviousness
Trademark
USPTO Implements New Fee Schedule for Trademark Applications
Copyright
I’m Registered—Now What? The Value of Recordation with U.S. Customs and Border Protection
Litigation
Protecting a Legacy: Leveraging the Power of Common Law Trademarks and Name, Image, and Likeness Rights
As always, we hope you find value in The Newtonian. Please feel free to share it with others and to share your thoughts with us at inquiries@leasonellis.com.
With best wishes for the holidays,
Henry A. Gabathuler
Partner
Editor, The Newtonian
Federal Circuit Issues Precedential Decision Changing the Test for Design Patent Obviousness
In a case concerning third-party after-market replacement parts for automobiles, the Federal Circuit recently overruled a longstanding standard for combining prior art references to determine obviousness of a claimed design in a U.S. design patent. LKQ Corp. v. GM Global Tech. Operations LLC , 102 F.4th 1280 (Fed. Cir. 2024) (en banc). Before this decision, determining obviousness of a claimed design included a two-step process known as the Rosen-Durling test, in which the first step was identifying a primary reference “the design characteristics of which [were] basically the same as the claimed design.” In re Rosen , 673 F.2d 388,…
USPTO Implements New Trademark Fee Schedule
The U.S. Patent and Trademark Office (“USPTO”) has announced changes to its fee schedule for 2025. Key changes include a new pricing structure for applications and higher rates for certain services. The majority of the changes will take effect on January 18, 2025. The new application fee structure is aimed at incentivizing applicants to adopt the USPTO’s pre-approved language to identify their goods and services, and to file shorter and more complete applications. Applicants who do otherwise will face “surcharges” that will meaningfully increase their filing costs. The USPTO is replacing its dual application system (TEAS standard and TEAS Plus)…
I'm Registered—Now What? The Value of Recordation with U.S. Customs and Border Protection
Congratulations! You have secured valuable protection by obtaining a copyright or trademark registration in the United States. Perhaps you have wisely decided to institute a trademark watch service to keep an eye out for new applications for similar marks and similar offerings. You’ve got all angles covered…right? Wrong! You haven’t considered recording your registration with U.S. Customs and Border Protection. In this article, we will explain why recording your registration might be one of the most valuable (and cost effective) steps that you can take to protect your brand. A federal registration for a copyright or trademark comes with a…
Protecting a Legacy: Leveraging the Power of Common Law Trademarks and Name, Image, and Likeness Rights
Lauren Emerson (Partner & Lead counsel), Cameron Reuber (Partner), and Vera Glonina (Associate) recently represented heirs of a prominent New Jersey civil rights activist, the late Russell Graddy, and helped them successfully resolve a commercial dispute concerning the unauthorized use of Mr. Graddy’s name and the family’s intellectual property. The civil action was styled Food Service Solutions LLC et al v. MR. Gs MYMY LLC et al , 2:24CV08513 (DNJ). Russell Graddy, known locally simply as “Mr. G”, was a prominent African American civil rights activist, successful businessman, and beloved leader of the Paterson, New Jersey community. Mr. G and…
