Archive for the ‘Intellectual Property Law’ Category



On Dec. 16, 2020 in Attia, et al.  v. Google, LLC, et al.,  the Ninth Circuit Court of Appeals held that a misappropriation claim under the Defend Trade Secrets Act of 2016, §18 U.S.C. 1836, et seq. (“DTSA”) may be brought for misappropriation that started prior to the DTSA’s enactment as long as the claim also arises from post-enactment misappropriation or from the continued use of the same trade secret.

The DTSA mirrors the Uniform Trade Secrets Act (“UTSA”) and also expands the Economic Espionage Act, which criminalizes misappropriation of certain trade secrets. Many states, including Florida, have based their trade secrets laws on the UTSA.  Until the enactment of the DTSA in 2016, trade secret misappropriation claims were generally brought under state statutes, e.g., Florida’s Uniform Trade Secret Act (“FUTSA”).

The DTSA allows plaintiffs to bring a federal claim for any trade secret misappropriation that occurred on or after May 11, 2016.   In Attiva v. Google, LLC, the Ninth Circuit decided that a claim under the DTSA can still be brought, even if the misappropriation actually started before the enactment of the DTSA, as long as the misappropriation continued through the DTSA’s enactment date (May 11, 2016) and involved the same trade secret.  In reaching its decision, the Ninth Circuit explained that the Uniform Trade Secrets Act (“UTSA”), includes an anti-continued use provision while the DTSA lacks a similar provision.  Noting that Congress was aware of the UTSA at the time the DTSA was enacted, the court concluded that the apparently deliberate omission of an anti-continued use provision indicated that the DTSA was not intended to be limited in this way.  In its reasoning, the Ninth Circuit pointed out that the DTSA language discussing “a continuing misappropriation constitutes a single claim of misappropriation” relates only to a statute of limitations argument and does not intrinsically prohibit DTSA misappropriations claim from being brought on the basis of continued use.

Although the DTSA is a relatively new statute and has not “seen” much litigation, the Attiva decision clearly expands the DTSA’s reach and is expected to be relied on by other federal courts asked to rule along the same lines.   Additionally, the decision represents a significant shift in trade secrets law which may cause more plaintiffs to commence trade secrets misappropriation actions in federal court because:

  • it allows for claims of trade secrets misappropriation to be brought under the DTSA at least in district courts “under” the Ninth Circuit even if the misappropriation began before the 2016 enactment of the DTSA;
  • it expands potential liability for defendants of trade secret claims under the DTSA;
  • it provides plaintiffs with protection where state statutes following the UTSA may not.


WE THANK YOU FOR READING THIS BLOG AND HOPE YOU FOUND IT INFORMATIVE.  HOWEVER, THE CONTENT IS PROVIDED FOR INFORMATION ONLY AND DOES NOT CONSTITUTE LEGAL ADVICE.  If you have any questions about trade secret misappropriation as either a potential plaintiff or defendant, contact us for a consultation.  Also contact us for a complimentary trade secret checklist to ensure you or your company are taking the appropriate steps to protect your trade secrets.


Troy & Schwartz, LLC

Where Legal Meets Entrepreneurship™

(305) 279-4740





IMPORTANT TRADEMARK LAW UPDATE: The Trademark Modernization Act of 2020

The Trademark Modernization Act of 2020 (“TMA”) was signed into law by President Trump on Dec. 27, 2020 as part of the COVID-19 relief and government funding package.  This article summarizes the several significant benefits provided to trademark owners under the TMA.

  1. Presumption of Irreparable Harm to a Trademark Owner by an Infringer

The TMA makes it easier for a trademark owner to obtain injunctive relief against an infringer. Prior to the new law, trademark owners were required to prove that they will be “irreparably harmed” if the infringer is not enjoined from further use of the infringing mark.  Now, as long as the owner can demonstrate infringement, the owner will enjoy a legal presumption that the harm caused by continued infringement will be irreparable, thereby increasing the owner’s likelihood of obtaining injunctive relief.   Many times, an owner’s main goal is simply to stop the infringement through injunction rather than proceed with an expensive drawn-out trial.  The TMA should help facilitate this objective.

  1. Trademark Applications Originating from Outside the United States

A couple of years ago the United States Patent & Trademark Office (“USPTO”) made it an administrative requirement that foreign trademark applicants must be represented by a U.S. licensed attorney. This was done to help reduce fraud on the USPTO by some foreign applicants whose applications too often indicated that they were actually using their marks in the United States, a requirement under U.S. law, when in fact they were not.

The TMA now tackles this on-going problem legislatively.  Due to on-going concern regarding the proliferation of applications and registrations (particularly emanating from China) for trademarks that are not actually in use in United States commerce, the TMA also calls for the USPTO to implement new procedures that will allow third parties to more readily challenge pending applications and issued registrations that may be suspect.  Under current practice, challenges to pending applications are limited in scope, and challenges to registrations require costly cancellation proceedings.  The commentator has successfully represented clients in cancellation proceedings before the Trademark Trial and Appeal Board which generally involve adherence to the Federal Rules of Civil Procedure.   And yes, these proceedings can take a while to complete.

A potential bona fide trademark applicant may find that a third party has a registered mark that will likely prevent registration of the applicant’s mark on likelihood of confusion grounds.  The applicant could attempt to obtain cancellation of the registered mark, but again such a proceeding can be costly and take a long time.  The TMA provides streamlined procedure for challenging issued registrations.

The TMA also calls for a broadening of the scope of evidence that a third party may submit for consideration by the examining attorney during examination of another pending application (including evidence of non-use).  Both changes will help clear the way for legitimate trademark users to obtain registration of their marks.

Finally, the TMA requires the Government Accountability Office to conduct a study regarding the problem of false and inaccurate claims of use in trademark applications and registrations, and to report to Congress recommendations based on the results of the study as to any changes to trademark law that will improve the accuracy of the Trademark Register or reduce inaccurate or false claims of use.

  1. Take-Home Points
  • Foreign trademark applicants need to understand that the U.S.’s requirement for bona fide trademark use within the U.S. is a requirement for both obtaining registration of the mark and maintaining registration of the mark. Any foreign trademark applicant should utilize the services of a U.S. trademark attorney who will presumably require proof of usage in the U.S. as part of the documentation provided to the USPTO.
  • Thanks to the TMA, trademark applicants now have more options to contest suspect registrations. This can be particularly beneficial to smaller business owners by reducing the overall costs involved.
  • Thanks to the TMA, registered trademark owners need not prove irreparable harm to obtain an injunction providing the other elements are met. Again, this can be particularly beneficial to smaller business owners by reducing the overall costs involved.

Questions About Trademark Matters?

Contact Susan Troy at 305-279-4740 for legal matters involving trademark applications and trademark infringement.  We are here to serve you and answer your questions related to intellectual property & business law.  See her reviews at where she has received Client’s Choice Badges for both 2019 and 2020.  She is also a registered patent attorney.





Troy & Schwartz, LLC

Where Legal Meets Entrepreneurship™

(305) 279-4740





Posted by Susan Dierenfeldt-Troy, Esq.

Troy & Schwartz, LLC

Where Legal Meets Entrepreneurship™

Patent claims may be rejected on anticipatory grounds under 35 U.S.C § 102 and/or on obviousness grounds under 35 U.S.C. § 103.  This blog discusses the USPTO’s obligations when making rejections on obviousness grounds, an area of patent law that can be particularly confusing as a November 9, 2020 decision by the CAFC demonstrates.


In order for a reference to be proper for use in an obviousness rejection, the reference must be analogous art to the claimed invention.   This does not require that the reference be from the same field of endeavor as the claimed invention, in light of the Supreme Court’s instruction that “[w]hen a work is available in one field of endeavor, design incentives and other market forces can prompt variations of it, either in the same field or a different one.”  KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 402 (2007).  Rather, a reference is analogous art to the claimed invention if:  (1) the reference is from the same field of endeavor (even if it addresses a different problem); or (2) the reference is reasonably pertinent to the problem faced by the inventor (even if it is not in the same field of endeavor as the claimed invention).   However, in order for a reference to be “reasonably pertinent” to the problem, it must “logically have commended itself to an inventor’s attention in considering the problem.”  In re Icon Health and Fitness, Inc., 496 F.3d 1374, 1379-80 (Fed. Cir. 2007).

The Case

These requirements were re-visited by the U.S. Court of Appeals (CAFC) in its Nov. 9, 2020 decision in Donner Technology, LLC v. Pro Stage Gear, LLC.  Donner had petitioned the Patent Trial & Appeal Board (PTAB) for an inter partes review (IPR) of U.S.  patent no. 6,459,023 (the ‘023 patent), asserting that the various claims of the ‘023 patent were obvious under 35 U.S.C. § 103 in view of U.S. Patent No. 3,504,311 (Mullen).  The ‘023 patent is directed to guitar effects pedals, electronic devices that affect the amplified sound of a guitar.  The specification explained that there was a need for “ ‘an improved pedals effect board which  allows easy positioning and changing of the individual guitar effects while providing a confined and secured area for cable routing and placement.’ ”

The Mullen reference related to electrical relays where an “ ‘object of the invention is to provide an improved support for supporting one or more relay structures and for providing wiring-channel space for receiving wires that would be connected to the relay structures to connect the relay structures in various controlled structures.’ ”  Donner contended that figures in the Muller patent depict a structure that is analogous to the structure claimed in the ‘023 patent which includes surfaces for mounting relays, cable connection openings, and areas for accommodating routing cables.

The PTAB found in favor of Pro Stage Gear, finding that Donner had not shown that Mullen falls within the scope of analogous art under either of the two tests.  On appeal to the CAFC, the parties did not dispute that the 023 patent and Mullen were not from the same field of endeavor.  The only issue on appeal was whether Mullen was “reasonably pertinent to one or more particular problems to which the ‘023 patent relates.”

The CAFC found that the PTAB had failed to establish whether it had meaningfully considered all of the evidence Donner had put forth, including expert testimony, to try and establish that Mullen was reasonably pertinent to the problems faced by the 023 patent’s inventor.   Additionally, the PTAB also failed to “properly identify and compare the purposes to which Mullen and the ’23 patent relate.”

Proper analysis requires that the “problems to which the claimed invention and reference relate must be identified and compared from the perspective of a person having ordinary skill in the art.”  Making conclusory statements without more is insufficient to determine whether a reference is analogous art.  Here, the PTAB merely asserted that the ordinary skilled person would have a “relatively low level of skill and would have had “a poor understanding of Mullen’s relay technology.”  Interestingly, the PTAB had acknowledged that there may be “ ‘pertinent similarities between Mullen and the ‘023 patent but concluded that those similarities, even if credited, did ‘not establish why a person of ordinary skill would have considered a reference from a different technology and time.’ ”  The CAFC disagreed, explaining that such a person may consult a reference.  The issue is not whether the person would have understood every last detail of a reference but “whether she understood portions of the reference relevant to solving the problem well enough to glean useful information.”

The CAFC concluded that the PTAB had applied the wrong analogous art standard.  It declined to hold that “no reasonable fact finder could conclude under the reasonably pertinent standard, that Mullen is not analogous art.”  Instead, it vacated the PTAB’s decision and remanded for consideration of the proper standard for analogous art.


Here is a simple example of analogous art.  An inventor files a patent application for a collapsible ski pole and the examining attorney cites analogous prior art for a collapsible tent pole patent. Here the tent pole patent would likely be reasonably pertinent to the problem the ski pole inventor was trying to solve: to provide less unwieldy, more readily transported poles.   Whether or not the ski pole will qualify for patent protection will depend on structural differences between the two poles and whether any ski pole structure would have been obvious over the prior art.

The patents at issue in the Donner matter of course involve more complex structures than the ski pole/tent example.  Whether or not Mullen, an invention from the 1970s, is reasonably pertinent to the problem the guitar pedal effects patent was trying to solve will now be assessed by the PTAB using evidence and expert testimony.   If yes, then the PTAB will evaluate whether the ‘023 patent is obvious over the Mullen patent.   Unfair in this situation? Is it likely that the ‘023 patent inventor found and “used” what was shown in the Mullen patent for a structure related to improving guitar effects pedals? The PTAB’s first decision suggested that it was not “pleased” with this particular IPR.  The 023 invention must have value in the market place for Donner to have spent the money involved so far on legal fees to try and invalidate the ‘023 patent.   Stay tuned for an update on the PTAB’s new decision.

Take Home Points

Whether dealing with the prosecution of a patent application or an IPR proceeding involving an existing patent, the USPTO must apply the appropriate standards in considering analogous prior art. Failure of the USPTO to do so during patent application prosecution can provide the patent applicant with the opportunity to try and overcome the USPTO’s reliance on the cited analogous prior art.  In an IPR proceeding, failure of the PTAB to properly apply the two analogous art tests may well result in an appeal of the matter to the CAFC as in the Donner Technology, LLC v. Pro Stage Gear, LLC matter by the losing party in the IPR proceeding.   



Call us at (305) 279-4740 for a complimentary consultation on matters related to obtaining patent protection or handling a legal dispute before the PTAB or the CAFC.  


May you and your loved ones stay safe & be well during these challenging times.

© 2020 by Troy & Schwartz, LLC





Picking a company name that meets the above criteria is often easier said than done.   The last thing a new company needs is a legal dispute involving the alleged infringement of someone else’s trademark.  Anybody who has been involved in a lawsuit understands that they are costly, stressful, and can take on a life of their own.  A registered trademark owner may of course give you the chance to comply with an initial cease and desist letter.  However, your compliance will generally require you to stop using the mark, transfer any domain name rights, etc.  The upshot?  You’ll have to start over in branding your business.

Here are some tips on getting your company off and running with a viable name.

  1. Do a Google search on the name to see what other companies may already using the same or a similar name.
  2. Do a search of your state’s corporate or limited liability company records in the states where the company will do business to see if anyone is using the same or similar name. Also check the state’s registered trademark records since some companies do obtain state-registered marks.  For Florida, this information can be found here.
  3. Do a search of the U.S. Patent & Trademark Office (USPTO) for federal trademark registrations of your proposed name. Do not think that merely changing a letter in your proposed name or reversing the order words in a multi-word work will save you from a legal dispute with the owner of the registered mark.  Additionally, if you plan to file a trademark registration application for your company name with the USPTO, you should select a name that has a solid chance of meeting the USPTO’s trademark registration requirements.  This means that your mark must not be confusedly similar to a registered mark.
  4. Do a search of domain name registrar websites such as to see if the domain name you want is available. Not only are domain names a necessity in today’s e-commerce world, but domain names also may have associated trademark rights.  Therefore, a minor change in the registered domain name, e.g., by registering the plural form (sABC) of the registered domain name (ABC) could result in a trademark dispute.
  5. The best company name is one that is distinctive and memorable for both branding purposes and obtaining valuable registered trademark rights.
  6. Come up with at least three names you like and get the reactions of trusted individuals.
  7. If you plan to have a logo designed, ensure that there is a contract in place assigning all of the creator’s intellectual property rights to your company.
  8. If you are a non-US company planning to expand into the United States, note that US trademark law will apply to you.
  9. Watch out for cultural implications involving your mark if you plan to register it in other countries.
  10. Consider having an intellectual property law attorney do a professional trademark search.

We are proud of the legal services we provide to our business and entrepreneurial clients on all matters related to trademark law.  Contact us at 305-279-4740 to discuss your questions on trademark law matters.   Doing things right the first time in selecting a company name and building your brand could save you some real headaches and a lot of money down the road.  


Troy & Schwartz, LLC


Miami, Florida

Where Legal Meets Entrepreneurship

This blog is for informational purposes only and does not constitute legal advice.







 Posted by Susan Dierenfeldt-Troy, Esq.

Troy & Schwartz, LLC

Where Legal Meets Entrepreneurship™

Have a question on specimens for your filed trademark application after reading this blog? We can help ensure the specimens you file will meet the USPTO’s requirements so that your registration will actually issue if the other requirements are met. Our trademark law legal services include: prosecuting trademark applications;  representing clients before the Trademark Trial and Appeal Board; and representing clients in trademark infringement lawsuits.

 Call us at 305-279-4740 (Miami, Florida) for a complimentary consultation.

So your proposed trademark has met the USPTO’s two threshold requirements for registration:  1) there is no likelihood of confusion with existing registered marks; and 2) the mark is not merely descriptive or generic.  Nevertheless, the examining attorney has refused registration because the applicant’s provided specimens, required for demonstrating usage of the mark in commerce, do not meet the USPTO’s requirements.   This commentator has previously blogged on this topic and is doing so again because there seems to be a lot of confusion over the importance of specimens to the trademark registration process.

Indeed, as a trademark attorney, I have found that specimens are often the most misunderstood requirement for obtaining a registered trademark.  That’s why our firm’s trademark legal services involve advising clients about specimen requirements from the get go.  At times, we have advised clients to modify their specimens before we submit them to the USPTO in a 1A application.  For intent-to-use applications where specimens are not filed with the application but will be required if the mark receives a Notice of Allowance (a preliminary approval of a pending specimen) we work with clients to ensure that they will have suitable specimens commensurate with USPTO requirements for “goods” marks and “services” marks when the Statement of Use is filed.  This may include reviewing the Client’s website and recommending layout changes so “specimen” screen shots will meet the USPTO’s specimen requirements.  Additionally, we ensure that all submitted specimens clearly identify the applicant as the provider of the goods/services, another essential specimen requirement.

The specimen requirement is no joke.  Between Sept. 17 and Sept. 23, 2020, the Trademark Trial and Appeal Board (“Board”) affirmed the decisions by three USPTO examining attorneys who had all refused registration on unacceptable specimen grounds for three different trademarks.  All three applicants ended up spending a lot on legal fees only to be denied registration of their marks upon appeal.  The following summarizes the three decisions and the commentator’s practice tips.

The case: In re Iguana Yachts.    Here the mark was a “goods” mark with following description: “Boats; amphibious vehicles; professional boats, and professional amphibious vehicles in the fields of security, military rescue, and transport of goods and people.”  The submitted specimens comprised a banner, a business card, and a website extract with a “custom build quote form.”   The Board concluded that there was no evidence that the banner or business card were displayed or distributed at tradeshow, i.e. the specimens were not actually used in interstate commerce as point-of-sale displays.  Likewise, there was no evidence as to how the quote form was used to actually place orders on the website for the specified goods.  In essence, the provided specimen were mere advertisements.  Advertisements may be suitable for service marks but are never suitable for goods marks.

Practice Tip.   Ensure that a specimen submitted for a good(s) is not mere advertising.  If the specimen represents a point-of-sale display, a customer must have either the ability to buy the good right there or to be able to place an order for the good associated with the mark.  That is, the specimen must show how the mark is being used in interstate commerce by the applicant.  The mark must also be displayed prominently to ensure that a potential customer identifies the mark with the good.   Here, perhaps the website could have been easily amended to provide for a website-related point of sale display before the specimen was ever submitted to the USPTO.   All specimens must also specify the applicant as the provider of the goods/services.  This requirement is in keeping the trademark law’s focus on the consumer – the consumer has the right to know who is providing the good/service under the mark.

The case:  In re Charlie’s EnterprisesEnergy, LLC.     Here the slogan mark was for food goods:  “Peas, fresh; Vegetables, fresh.”  The specimen consisted of “[a] picture of the proposed slogan in use on a semi-trailer wrap.”  Additionally, the mark presented in the application did not match the display on the truck.   The applicant argued that the wrap was a form of packaging.   Indeed, packaging can serve as a goods specimen as long as it shows the mark AND the source of the goods, generally the manufacturer or distributor.  Here the Board held that a trailer wrap is not a common packaging for vegetables even though a trailer wrap may be a common way of displaying the mark associated with bulk goods (such as lumber).

Practice Tip.  Ensure that the submitted specimen is the type commonly used for the particular good.  Additionally, ensure that the specimen’s mark and the mark shown in the application are equivalent.  All specimens must also show the source of the goods as the following decision again demonstrates.   Perhaps this registration could have been saved if the trailer wrap had at least showed the applied-for mark in its entirety.  However, if the goods being transported were sealed in packages for sale at, e.g., a grocery store, a photo showing the packaging with the required info would likely have been accepted.

The case: In re Systemax, Inc.    This case involved the situation where the specimens submitted for a service mark application failed to show an association between the mark and the application’s recited services. The specified services were for “holding company service, namely, providing business management, business administration, and human resource management services to subsidiaries and affiliates.”  The applicant submitted copies of annual reports and website screen shots which failed to show an association between the mark and the recited holding company services.   As such, the Board agreed with the examining attorney and the mark was not registered.  This commentator notes that any website screen shot being submitted as a service mark specimen should clearly show the mark on each and every page where a description of the service is presented.  Additionally, the applicant, as the service provider, should be readily discernable.  Annual reports, invoices, business plans, and the like are not specimens for trademark registration services.

Practice Tip.  This case is a perfect example of how any thorough trademark attorney will first carefully review the applicant’s website before submitting any screenshots as specimens.  If deficiencies are found, the attorney should advise the client to amend the layout of the website and/or the content before screen shots are submitted as specimens.



May you and your loved ones stay safe & be well during these challenging times.

© 2020 by Troy & Schwartz, LLC











Close Bitnami banner