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Tag Archives: USPTO

Expiration of Amazon’s 1-Click patent: Are you preparing for the single click world?

About two decades ago, Amazon.com, Inc. revolutionized e-commerce transactions with the innovation of single click buying. Single click buying is a checkout process that enables customers to bypass the shopping cart to make an online purchase with a single click based on payment and shipping information previously provided by the customer. Amazon received U.S. Patent No. 5,960,411 (the 1-Click Patent) for this technology in 1999. Amazon also has U.S. registrations for the trademark “1-Click”. The 1-Click Patent will expire on Sept. 12, 2017 so the technology will enter the public domain and Amazon will no longer have exclusive rights. This is good news if you like to use single click buying at Amazon.com, iTunes, iPhoto, Apple App Store etc. (Apple, Inc. licensed the single click technology from Amazon) because many other companies will begin using this technology once the 1-Click Patent expires. If you have an e-commerce site, you should be preparing for the single click world where many customers will likely come to expect “frictionless transactions” everywhere including mobile applications.

The 20 year life of the 1-Click Patent has not been without controversy. …

March Madness: the showdown between the Big Ten Conference and the NCAA – who is your number one pick?

It’s the month of March, and most of us are highly aware of the NCAA’s basketball tournament that dramatically decreases work productivity and determines the college basketball national champion. If you’re thinking about entering the hype and using any of the NCAA’s trademarks in your promotions and marketing this month, it’s important to consider your use very carefully. The reason: the NCAA has trademarked a slew of marks associated with the tournament, such as “NCAA,” March Madness,” “Final Four,” the “Big Dance” and any corresponding logos. These marks are all federally registered trademarks of the NCAA, and the NCAA zealously defends them.

The NCAA has been using the mark MARCH MADNESS for over three decades and has recently attempted to claim further rights in the term “March”, quite possibly with respect to any services rendered in conjunction with sports-related entertainment services. This is how it happened. A little over a year ago, the Big Ten Conference filed a federal trademark application based on an intent to use the mark “MARCH IS ON!” for services related to sporting events and contests. The application was reviewed by a United States Patent and Trademark Office (USPTO) examiner, who ultimately determined that there were no conflicting marks that would bar registration of this mark and the application was published for opposition in August of 2016. The NCAA did not respond kindly to this application and after exhausting several extensions of time to oppose formally filed an opposition on Feb. 13, 2017.…

Beware of Solicitations Appearing to be from the USPTO

The US Patent and Trademark Office (USPTO) has posted a warning on its website regarding solicitations that appear to be official notices (Click here for a sample). The notices come from private companies that are not associated with the USPTO. 

The notice is typically made to resemble an official notice from the USPTO by including the trademark serial or registration number, classes, filing dates and other information that is publicly available on the USPTO’s database.  Most of the notices appear to be an invoice stating an amount "due".  If you read the fine print (if it is even included), the fee is not for a legitimate government fee, but for legal services, trademark monitoring services, Customs recordation services or inclusion in a private registry.

Trademark owners who receive such a solicitation may file a complaint with the Federal Trade Commission at www.FTC.gov. The Trademark Office also provides an e-mail for reporting misleading communications at TMFeedback@uspto.gov.

The Trademark Office notes that all of its correspondence is from the “United States Patent and Trademark Office” in Alexandria, VA (if by e-mail, from the domain @uspto.gov).  If you are represented by an attorney, most likely all government fee notices will come from your attorney.

We often get a call or email when a client receives such solicitations – hopefully if you receive one, you will check with us prior to submitting payment. …

Prioritized Examination of Patent Applications Under Leahy-Smith America Invents Act

The Leahy-Smith America Invents Act ("AIA") was enacted on September 16, 2011. The changes implemented by this Act are wide-ranging and significant, and different provisions have different effective dates, with many taking effect September 26, 2011, September 16, 2012, or March 16, 2013. We will be providing additional information in the coming weeks and months.…

Track One Expedited Patent Examination Program Postponed

According to a message to USPTO Employees from Director David Kappos, the Track One expedited patent examination program (discussed in this earlier post), scheduled to go into effect on May 4, 2011, is postponed until further notice.  As reported in Hal Wegner’s newsletter, the cancellation is due to budgetary cuts and whether and when prioritized examination may be reinstated is unclear.…

New Fast Track Examination at the USPTO

Beginning May 4, 2011, a US patent applicant can request prioritized or "fast track" examination at the USPTO under the newly promulgated "Track 1" procedure of 37 C.F.R. 1.102(e). To obtain the Track 1 prioritized examination, the following conditions must be met when the application is filed: (1) the application must be an original utility or plant non-provisional application (i.e., this procedure is not available for international national stage entry applications, design applications, reissue applications, provisional applications, or reexamination proceedings, but is available for continuation and divisional applications, including a continuation application of an international application designating the US); (2) the application must be filed with an executed inventor oath or declaration and all applicable filing and publication fees; (3) the application must not contain more than four independent claims, more than thirty total claims, or any multiple dependent claims; and (4) a request for prioritized examination must be filed together with a $4000 filing fee and a $130 processing fee. Currently, there is no reduction in the $4000 fee for small entity applicants.

The USPTO indicates that it will only grant a maximum of 10,000 application requests for prioritized examination in fiscal year 2011, which concludes September 30, 2011.

Once an application is granted the prioritized status, the application will be placed on the examiner’s special docket throughout its course of prosecution until a final disposition is issued. A “final disposition” is defined to mean (1) mailing of a notice of allowance; (2) mailing of a final Office action; (3) …

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