Author Archives: Karen McDaniel
ALERT: Don’t be Fooled by Bogus Operators Claiming You Need to Take Action on Your Trademarks or Patents
There are a growing number of bogus operators who send misleading communications to patent and trademark owners. These operators often pose as a government agency, or an ostensibly legitimate-looking company. They may use company names that resemble official patent and trademark offices and agencies, like U.S. Trademark Compliance Office, International Register of Patents & Trademarks, and World Intelligent Property Office (WIPO).
One of their primary tactics is to send an official looking communication or “notice” informing you that you must take action (oftentimes pay money) to preserve your rights. The solicitations may refer to upcoming deadlines concerning your registration or application.
The operators use information from public databases to contact legitimate intellectual property owners with “urgent” solicitations for legal services, monitoring services, U.S. Customs trademark recordation services, and registration in the operator’s own private registry. Oftentimes, these services are unnecessary or do not have an immediate deadline. Both the USPTO and WIPO (the legitimate WIPO) have lengthy lists of these fraudulent operators on their websites. A sample solicitation is attached.
Don’t be fooled.
We are your intellectual property attorneys. In general, if you receive an official government notice, you will receive it through us. If you are receiving such types of communications from companies other than Briggs, chances are they are not legitimate. Or, if they are legitimate, we can confirm it for you after a brief review.
If you have received such a notice and have a concern about its legitimacy, please bring it to our attention. Above all, don’t send money without first understanding what the notice is and whether it is legitimate.
There is a case pending before the U.S. Supreme Court currently on this issue. Oral argument is scheduled for March 27, 2017.
The case is In re TC Heartland.
The law for nearly the last 30 years (since VE Holding, 1990), has been that an infringer is subject to suit any place in which it is subject to personal jurisdiction. Selling infringing product into a district generally is sufficient to find personal jurisdiction. So, for example, an accused infringer who has nationwide sales can generally be sued in any state in the country.
A patentee has typically chosen one of two routes: a) suing in the patentee’s home district (e.g., 3M suing in District of Minnesota court), or b) suing in what is seen as a favorable location – known as “forum shopping.” Forum-shopping has created certain pockets of high density for patent litigation, most notably, the Eastern District of Texas, where jury verdicts in favor of plaintiffs have historically been higher than the national average.
The TC Heartland case could change all that. The question before the Supreme Court is whether the current view is correct, or whether it should be restricted to a rule that accused infringers may only be sued in a district (state) where they are more traditionally doing business (such as where their headquarters are located).
In TC Heartland, the district court (in Delaware) and the appeals court (the Federal Circuit) held that the accused infringer could be sued in Delaware, a district in which the accused infringer’s presence essentially amounted to shipping infringing product totaling about 2% of its total sales for that year.
If the Supreme Court disagrees, the practice that has been in effect for nearly the past 30 years may change. And if it does disagree, this won’t be the first time the Supreme Court has disagreed with the Federal Circuit.
One wonders if this is all still in (over)reaction to patent trolls?