Updates on IP news from our global team!

The Supreme Court recently rejected federal trademark protection for the mark “TRUMP TOO SMALL” based on the Lanham Act’s Names Clause under Trademark Act Section 2(c), 15 U.S.C. §1052(c). 

Background

In Vidal v. Elster, Steve Elster applied to register TRUMP TOO SMALL for clothing-related goods at the United States Patent and Trademark Office (USPTO). The USPTO rejected his application based on Trademark Act Section 2(c) which bars registration of an applied-for mark that consists of or comprises a name, portrait, or signature identifying a particular individual without that individual’s written consent.   See 15 U.S.C §1052(c).  For purposes of Section 2(c), a name in a mark identifies a particular living individual if the person bearing the name will be associated with the mark as used on the goods or services because: “(1) the person is so well known that the public would reasonably assume a connection between the person and the goods or services; or (2) the individual is publicly connected with the business in which the mark is used.”  Elster appealed the USPTO’s decision and later filed a lawsuit against the USPTO arguing that its application of the Names Clause to his application violated his right of freedom of speech under the First Amendment of the U.S. Constitution.  In 2022, the Court of Appeals for the Federal Circuit agreed with Elster and reversed the USPTO’s decision. The Government subsequently appealed the Federal Circuit decision to the Supreme Court where the Federal Circuit was overruled, the Supreme Court unanimously agreeing with the USPTO’s decision.

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Attorney-client privilege in the patent context protects confidentiality of certain communications between a client and his/her patent attorney or any advisor enjoying the status of a patent attorney from compelled disclosure, provided the privileged material is not circulated to third parties, in which case the privilege is lost. The concept of privilege is distinct from the concept of confidentiality: a privileged communication must be confidential not to lose the privilege, but only some confidential communications as set by the applicable legal provisions may be privileged. Common law countries and civil law countries define and treat attorney-client privilege differently. 

The modifications in the IP framework in Qatar and Bahrain have brought significant shifts to the IP workflow in respective jurisdictions. In Qatar, the major changes are applied to the patent annuity payments, power of attorney requirements for IP works, fee structure for IP services, and Madrid protocol designations and renewals. Whereas in Bahrain, the patent prosecution highway program has been established to speed up the patent examination process.

In Luca McDermott Catena Gift Trust v. Fructuoso-Hobbs SL (“Luca McDermott”), the Court of Appeals for the Federal Circuit (“CAFC” or “Federal Circuit”) held that a minority limited partner of a limited partnership, Paul Hobbs Winery, LP (“Hobbs Winery”), could not satisfy the statutory-standing requirement and therefore was not entitled to a statutory cause of action. Specifically, the minority limited partner could not meet the zone-of-interests requirement and the proximate-causation requirement for seeking cancellation of two other wineries’ marks.

A recent decision of the U.S. Court of Appeals for the Federal Circuit (CAFC) illustrates the CAFC’s limits of patent eligible subject matter under 35 U.S.C. § 101. Beteiro, LLC vs DraftKings, Inc. The present case also reminds applicants and practitioners of the importance of ensuring that the claims satisfy the Alice/Mayo test of subject matter eligibility when disclosing and claiming technologies incorporating abstract ideas to comply with requirements therein without relying on inadequately supported recitations in the claims that relate to mere physicality. It is also important to be mindful of a very wide degree of variability in applying the test that still prevails. 

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