The Dobrusin Law Firm - Intellectual Property

Strategic Intellectual Property Law

Month: February 2022

Erin Klug Elected to Secretary of the Barn Sanctuary’s Board of Directors

It’s no secret shareholder Erin Klug has a passion for animals and their well-being. One outlet for her passion is The Barn Sanctuary, a Chelsea, Michigan nonprofit that provides a loving home to farmed animals in crisis. Erin was recently elected to its board of directors because of her longstanding dedication to the organization and the cause; only a few days later, she was elected secretary.

Founded in 2016, The Barn Sanctuary rescues and rehabilitates farmed animals—the most abused and neglected group of animals in the world—by offering them a safe haven where they can recover, thrive, and demonstrate the need for society to progress to a plant-based lifestyle. More than 100 cows, pigs, chickens, turkeys, ducks, sheep, and goats call the sanctuary home.

This is the second leadership role in the animal rights and welfare space Erin has assumed of late. In September 2021, she was voted Chair-Elect of the State Bar of Michigan’s Animal Law Section, a group of attorneys that provides education, information, and analysis about legal issues affecting animals. Erin also serves as board member for Attorneys for Animals, a Michigan nonprofit organization advocating for animals and providing resources for those that care about them.

To learn more about The Barn Sanctuary’s story, visit its website where you can make a donation, get involved, or subscribe to the Barn Moosletter.

Bryan Lemanski Appointed to Rochester Hills Historic Districts Commission and Study Committee

Dobrusin Law Firm attorney and Rochester Hills, Michigan resident Bryan Lemanski has been appointed to a three-year term on the city’s Historic Districts Commission.

The Rochester Hills City Council selects and appoints members based on their experience in archaeology, architecture, building construction and engineering, historic preservation, and community service. Bryan holds a Bachelor of Science in Industrial and Operations Engineering from the University of Michigan.

The Commission investigates requests for establishing or changing historic districts, approves or disapproves plans for work on resources within those areas, and maintains a list of potential districts. Bryan was also named to the Historic Districts Study Committee, which evaluates and advises on preservation and protection of resources within historic areas.

According to the Rochester Hills website, the city “has a rich heritage dating back to the early 1800s. In 1978, the former Avon Township established a study committee that evaluated and eventually recommended areas of the township to be designated as historic districts.” Currently, there are 30 such areas in Rochester Hills.

Michigan Lawyers Weekly Honors Erin Klug As a “Go To Lawyer” in Intellectual Property

Michigan Lawyers Weekly™ has announced its first-ever class of “Go To Lawyers” in Intellectual Property, which includes Dobrusin Law Firm shareholder Erin Klug.

Highly valued by her clients and well-respected by her colleagues, Erin is a standout in both the IP bar and the Michigan legal community generally. She is a talented patent, trademark, and copyright attorney who represents large corporations, innovative companies, and solo entrepreneurs in intellectual property opportunities and strategy. Erin’s pragmatism, problem-solving abilities, and well-reasoned counsel have earned recognition from peers and clients alike.

According to the Michigan Lawyers Weekly’s nomination criteria, a Go To Lawyer is:

  • An expert in their field, well-versed in the nuances of the case law, statutes, and regulations clients will encounter.
  • Experienced and enjoys a record of success, with many matters that give testimony to the quality advice they can provide.
  • A creative thinker who identifies all options for a client.
  • One to whom other lawyers make referrals because of their expertise and accomplishments.
  • An attorney another Michigan lawyer might call when requiring legal help in that field.

The “Go To Lawyers” designation is another in a long series of accolades for Erin and her legal knowledge and IP subject-matter expertise. She has received awards from Crain’s Detroit Business, DBusiness Magazine, and Super Lawyers®. Michigan Lawyers Weekly named her to its 2017 class of Michigan Lawyers Weekly Up & Coming Lawyers, and the Oakland County Executive selected Erin for 2016’s Elite 40 Under 40.

Erin is also an active member of her communities, volunteering her time and energy to lead organizations and important causes. She serves as the president-elect of the Women Lawyers Association of Michigan (she received the WLAM’s Leadership Award in 2017) and is a past president of the Women’s Bar Association, Oakland Region. Erin was recently elected to the board of directors of the nonprofit Barn Sanctuary, besides her current role as chair-elect of the State Bar of Michigan’s Animal Law Section Council.

“Use In Commerce”: What It Means and What Applicants Need to Show to Obtain a Trademark Registration

The Lanham Act, which governs trademarks, may put things more artfully, but “use it or lose it” is a fundamental aspect of trademark law, as is “use it or never get it in the first place.” That is because the U.S. Patent and Trademark Office (USPTO) won’t issue a trademark registration for a mark that isn’t being “used in commerce,” and it will cancel an existing mark if the owner does not show they actively use their mark.

Trademarks such as brand and product names, logos, slogans, and taglines are designed to identify and distinguish companies, goods, and services from others in the marketplace. If a mark is not in the marketplace, it serves no purpose other than to clutter the federal trademark register. While you can start the trademark application process based on an intent to use the mark in commerce, you still need to prove actual use before the USPTO will issue a registration.

But not every use of a trademark constitutes a “use in commerce” sufficient to support registration. If you are applying for a trademark or want to ensure the USPTO does not cancel your currently registered mark, here is what you need to prove about your use of the trademark in commerce.

“Bona Fide” Use in Commerce Required; Token Sales Won’t Cut It

Section 45 of the Lanham Act defines the term “use in commerce” as “the bona fide use of a mark in the ordinary course of trade, and not made merely to reserve a right in a mark.” The language regarding “bona fide use” was added to the law in 1998 to eliminate the practice of “token use,” or use made solely to reserve rights in a trademark. So, slapping a label containing your mark on a product and selling it to your Aunt Marie out of state for five dollars won’t cut it with the USPTO.

Goods v. Services

What constitutes bona fide use of a mark depends on whether it is being used in connection with goods or services.

  • A mark is deemed to be used in commerce on goods when:
  • It is placed in any manner on the goods or their containers or the displays associated with the goods or on the tags or labels affixed to them, or if the nature of the goods makes such placement impracticable, then on documents associated with the goods or their sale.
  • The goods are sold or transported in commerce.
  • When used with services, a mark will be considered used in commerce when it is used or displayed in the sale or advertising of services and the services are rendered in commerce or the services are rendered in more than one State or in the United States and a foreign country and the person rendering the services is engaged in commerce in connection with the services.

How Much and What Kind of Use Is Sufficient for “Bona Fide” Use?

Aside from the preceding statutory definitions of “use in commerce,” the Lanham Act does not define what constitutes “bona fide use of a mark in the ordinary course of trade” because, as the USPTO notes in Section 901.02 of the Trademark Manual of Examining Procedure (TMEP), “use in the ordinary course of trade will vary from industry to industry.” The TMEP also cites the Senate committee that drafted the statutory intended “that the revised definition of ‘use in commerce’ be interpreted flexibly so as to encompass various genuine, but less traditional, trademark uses, such as those made in test markets, infrequent sales of large or expensive items, or ongoing shipments of a new drug to clinical investigators by a company awaiting FDA approval….”

Given the everchanging landscape of commerce, the USPTO identified factors it will consider when determining compliance with the statutory requirement for a “bona fide use of a mark in the ordinary course of trade,” including:

  • The amount of use.
  • The nature or quality of the transaction.
  • Typical use within a particular industry.

Demonstrating use in commerce to support a trademark application requires submitting specific information and specimens to the USPTO. Given the importance of satisfying the “use in commerce” requirement, it is advisable to consult with an experienced trademark attorney to ensure your mark has the best possible chance of obtaining registration.

If you have questions about “use in commerce” or need assistance registering your trademark, please contact the trademark attorneys at The Dobrusin Law Firm.

The Dobrusin Law Firm Continues Its Commitment to the Women Lawyers Association of Michigan Foundation Scholarship Program for 2022

Since 1998, the Women Lawyers Association of Michigan Foundation (WLAM Foundation) has encouraged and supported the next generation of women attorneys by partnering with other benefactors to fund annual scholarships. This year, the Foundation will award $42,000 to 12 outstanding law students attending Michigan’s five accredited law schools (University of Michigan Law School, WMU Cooley Law School, Michigan State University College of Law, Wayne State University Law School, and University of Detroit Mercy School of Law).

In 2019, our firm established a scholarship under the WLAMF umbrella, joining a circle of donors that has included General Motors, Masco Corporation, Miller Canfield, and Dickinson Wright. Managing shareholder and WLAMF president Kristen Pursley announced The Dobrusin Law Firm Scholarship will be offered again this year with an award totaling $3,500.

The Foundation Board will begin reviewing students’ applications this month. The scholars will be announced in April and recognized at the WLAMF Annual Meeting in June 2022.

Patent Mistakes Happen. A Patent Reissue Application Can Fix Them.

Nobody’s perfect, and neither are many issued patents. Often, errors and defects in a patent may threaten its validity and make it wholly or partly inoperative. In such cases, a reissue application is a valuable tool for correcting defects and ensuring the ongoing protection of a patent.

What Is a Patent Reissue Application?

As described in the U.S. Patent and Trademark Office’s (USPTO) Manual of Patent Examining Procedure (MPEP), a patent holder can file a reissue application “to correct an error in the patent, where, as a result of the error, the patent is deemed wholly or partly inoperative or invalid. An error in the patent arises out of an error in conduct which was made in the preparation and/or prosecution of the application which became the patent.”

What Types of Errors Can Be the Basis for a Patent Reissue?

As explained in the MPEP, an error that sufficiently supports a reissue must cause the patent to be “deemed wholly or partly inoperative or invalid, by reason of a defective specification or drawing, or by reason of the patentee claiming more or less than he had a right to claim in the patent.” Therefore, only substantive errors can justify a reissue. Patent corrections related to spelling, grammatical, typographical, editorial, or clerical errors are not sufficient unless such an error renders the patent wholly or partly inoperative or invalid.

According to the USPTO, the most common reasons for filing a reissue application are:

  • The claims are too narrow or broad.
  • The disclosure contains inaccuracies.
  • The applicant failed to or incorrectly claimed foreign priority.
  • The applicant failed to refer to or incorrectly referred to prior co-pending applications.

What Are the Requirements for Submitting a Patent Reissue Application?

The following elements are all required to obtain a reissue patent:

  • The patent’s specification, claims, or drawings must be wholly or partly inoperative or invalid.
  • The error was made without deceptive intent (this requirement was removed for patent reissue applications filed under the AIA).
  • The patent owner must surrender the original patent.
  • The patent owner must pay the appropriate fee.
  • The application for reissue cannot contain any new matter.
  • If the reissue application enlarges the scope of the claims in the original patent, it must be filed within two years from the grant of the original patent.

A patent holder must include each of the following items in their reissue application:

  • The specification, drawings, and claims as amended, including the entire original patent.
  • Where applicable, a “chain of title” signed by an assignee and written consent by the assignee.
  • An offer to surrender the original patent.
  • A reissue declaration stating that the applicant believes the original patent to be “wholly or partly inoperative or invalid” because of a defective specification or drawing or because of claiming more or less than the owner had a right to claim.
  • A claim for the benefit of foreign priority, if appropriate.

Reissue Risks

Filing a reissue application is not without some risk. Since the Examiner will review the application as it would an original patent application, it reopens the patent prosecution of the claims, allowing the Examiner to raise objections or questions regarding validity or allowance.

The reissue declaration that the patent holder must submit with their application also poses some potential dangers that require consideration before seeking a patent reissue. Most patent owners seek reissue due to litigation and want to amend the claims to specifically cover the alleged infringing product. In such circumstances, the declaration, made under oath, is an admission by the patent owner that they have claimed less than they are entitled to. However, at that point they may have a valid claim that seems to read on the alleged infringing product and may lose it all during the re-examination process Additionally, the claims may be narrower, and the oath is an admission in court that the patent is invalid.

Accordingly, patent owners must tread carefully when seeking reissue related to litigation as the inventor’s oath or declaration for a reissue application must also state that the applicant believes the original patent to be wholly or partly inoperative or invalid by reason of a defective specification or drawing, or by reason of the patentee claiming more or less than the patentee had a right to claim in the patent.

If you have questions about patent reissue applications or concerns that an existing patent may contain errors needing correction, please contact the attorneys at The Dobrusin Law Firm.

Contact Information

The Dobrusin Law Firm
29 W. Lawrence St.
Suite 210
Pontiac, MI 48342

Phone: 248-292-2920
Fax: 248-292-2910
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