The Dobrusin Law Firm - Intellectual Property

Strategic Intellectual Property Law

Month: May 2022

Dobrusin Law Firm Announces the Recipient of Its 2022 Women Lawyers Association of Michigan Foundation Scholarship

The Dobrusin Law Firm champions efforts to elevate women in the legal profession. For four years, the firm has contributed to the Women Lawyers Association of Michigan Foundation to fund an annual scholarship. We are delighted to announce that the 2022 Dobrusin Law Scholarship recipient is Estella Park Riahi, a student at Michigan State University College of Law.

“Estella is a talented, socially-conscious, bright legal mind with an impressive business background,” said Kristen Pursley, managing shareholder of The Dobrusin Law Firm and Chair of the Women Lawyers Association of Michigan Foundation. “She has distinguished herself in the classroom and the community, and I’m sure she will be a leader in whatever discipline she pursues.”

Originally from Los Angeles, Estella earned her undergraduate degree from the University of California, San Diego. After college, she spent eight years working for her family’s business, which provides traditional Korean clothing to a racially and ethnically diverse clientele in L.A. There, Estella learned to empathize with and understand the challenges of fellow community business owners, many of them immigrants in her local hometown of Koreatown. The experience instilled in her a desire to understand the law and how it could work to support emerging businesses, especially those who struggle with access to legal services.

This summer, Estella will clerk at a boutique law firm and assist with its intellectual property and transactional practices, focusing on technology startups and new businesses. In the fall, she will participate in Michigan State University College of Law’s First Amendment Law Clinic, where she will educate Michigan high school students regarding student press censorship, privacy issues, copyright, and trademark law involving social media and the internet.

With contributions from The Dobrusin Law Firm and 11 other law firms and corporations, the Women Lawyers Association of Michigan Foundation awarded $42,000 in scholarships to Michigan’s brightest law students. “Our organization’s mission to advance women in the legal profession is ongoing,” said Ms. Pursley. “Estella and the other 11 recipients have not only demonstrated their excellent academic performance at Michigan law schools, but they also exhibit leadership and a commitment to important areas of the law, including STEM, social justice, equality, child advocacy, and domestic violence.”

Since 1997, the Women Lawyers Association of Michigan Foundation has awarded more than $730,000 to over 280 women law students. For more information and a list of all recipients and sponsors, please click here.

Understanding Specimens: A Bad Example of a Good Trademark Can Delay or Doom Your Application

The U.S. Patent and Trademark Office (USPTO) won’t issue a trademark registration for a mark that isn’t currently “used in commerce,” and it will cancel an existing mark if the owner does not show they are actively using their mark. But the USPTO won’t just take an applicant’s word that they are using their mark in commerce. The USPTO requires proof; they need a real-life example of how the trademark is used with the goods or services in the application or registration maintenance filing. They want to see what consumers see, meaning the applicant must submit a “specimen” demonstrating their use of the mark before it will issue or renew a registration.

However, not every specimen submitted makes the cut. The USPTO has very specific requirements for specimens, and if you want to avoid delays or the denial of your trademark application, you need to ensure yours is acceptable.

Goods v. Services

Because of the inherent differences between goods and services, the way marks are used with each differs. For example, you can put a label on a bottle of soda, but you can’t necessarily put one on an accountant.

Accordingly, what constitutes an acceptable specimen depends on whether it is associated with a good or service. For both goods and services, the specimen must show the trademark as actually used in commerce, so it directly associates the trademark with the goods or services. Trademark use is very specific, you can’t just use a mark in any manner and consider it “using your trademark.”

For goods, an acceptable specimen could be:

  • A tag or label containing the mark attached to the product.
  • Product packaging or a container showing the trademark on the packaging.
  • Sales displays at a location where the goods are available for purchase.
  • A website displaying the mark where the goods can be purchased or ordered.

For services, an acceptable specimen could:

  • Show the mark used for the services on an advertisement, brochure, website printout, or other material.
  • Include the mark on a television or radio ad.
  • Show the mark on business signs where the services are provided.
  • Show the mark on business cards or letterhead.
  • Show the trademark on a service vehicle.

Specimen Requirements

The USPTO will likely reject a specimen and thus reject your application or registration maintenance filing unless it meets these requirements:

  • It must be a real example of how you use your trademark in commerce in providing your goods or services. Mockups, proofs, and renderings of intended packaging won’t cut it.
  • It must show your trademark used with the goods or services listed in the application. A label displaying the mark won’t be accepted unless the label is shown on or attached to an actual product in the specimen, for example.
  • It must depict the same trademark as shown on the drawing submitted with the initial application.
  • There must be a specimen for each class of goods or services in your application or registration maintenance filing.
  • It must show your use of your trademark as opposed to use by someone else.
  • It must show the trademark used in a way that directly associates the mark with the goods or services.
  • It must show the trademark used in a way that consumers would see it as a source indicator for the goods or services in the application.
  • If the specimen is a webpage, it must include the URL and date you accessed or printed the webpage.

How and When to Submit Specimens

The USPTO won’t accept physical specimens, so don’t try shipping your product or business card to Washington. The specimen must be submitted electronically through the TEAS system.

If you are already using your mark in commerce, you should submit your specimen with your application. If you are filing an “intent-to-use” trademark application, you can either submit your specimen before the USPTO approves your application for publication by filing an Amendment of Allege Use (AAU) or after it issues a Notice of Allowance (NOA) by filing a Statement of Use (SOU). You also need to submit a specimen of the mark as currently being used in commerce with your affidavit or statement of use that must be filed between the fifth and sixth year after registration and then every ten years after that.

If you have questions about acceptable trademark specimens or need assistance with your trademark application, please contact the attorneys at The Dobrusin Law Firm.

The Dobrusin Law Firm Announces an Exciting New Sponsorship With the Flint City Bucks

We are thrilled to announce that The Dobrusin Law Firm is an official sponsor of another great team – the Flint City Bucks of the United Soccer League! This weekend, the Bucks begin regular season play at historic Atwood Stadium, Kettering University’s home field.

Founded in 1995, the Bucks have been one of the most successful minor league soccer teams in the country, qualifying for eleven U.S. Open Cups, winning eleven divisional championships, and securing four national titles. In 2000, they were the first Premier Development League squad to defeat a Major Soccer League (MLS) team in the U.S. Open Cup when they beat the New England Revolution at Foxboro Stadium. The MLS has drafted more than 80 Bucks players since 1999, and Bucks alumni currently play professional soccer in the U.S., England, Scotland, Norway, Belgium, Israel, Trinidad & Tobago, and Puerto Rico.

The Dobrusin Law Firm’s decision to sponsor the Bucks aligns with our community-oriented values. “We chose the Bucks, not simply because of their championship pedigree,” said Founding Partner Eric Dobrusin, “but also for their commitment to the Flint community and the organization’s desire to be a source of pride for the City of Flint.” The firm is exploring how to leverage this opportunity to introduce “the beautiful game” to kids in Flint and Pontiac and offer local youth unique experiences with the team.

This coming season promises to be exciting as the Bucks look to add a fifth championship star to their jerseys. To view the team schedule and purchase game tickets, please visit flintcitybucks.com.

Let’s go, Bucks!

Dobrusin Sponsors Bucks Soccer

Flint City Bucks Sponsored by The Dobrusin Law FIrm

Photo Credits: Franklin Dobrusin

Daniela Walters, Main Street Pontiac, and Flagstar Bank Support Pontiac Small Businesses with “Pontiac’s BIG IDEA Grant Program”

The Dobrusin Law Firm is proud of Shareholder Daniela Walters’ continued dedication and commitment to the City of Pontiac through her role as Advisory Council chair for Pontiac’s BIG IDEA Grant Program. Sponsored by Flagstar Bank and coordinated by Main Street Pontiac, the program provided $500,000 in grants and loans for small businesses that proposed BIG IDEAS to bring jobs and growth to the city.

An economic stimulus for growth in downtown Pontiac and city-wide, Pontiac’s BIG IDEA Grant Program provided more than 70 grants of up to $10,000 to small businesses over the program’s five-year run. A competitive application process determined the grants’ recipients, with an annual $50,000-$100,000 award going to a business with a game-changing BIG IDEA to produce a significant number of jobs or greatly attract visitors to Pontiac.

An ardent supporter of our hometown city, Daniela was instrumental in the program’s success from its inception, starting as a program member up to her current role as Advisory Council chair. As chair, Daniela devoted her time throughout the grant process, coordinating the overall program, reviewing grant applications, and working with the council to select the recipients, and managing fund distribution. Our office staff, including Kim Tombrella and Jim Luckhardt, have also spent the past few years interfacing with recipients as our office also provided a central location for applicants and recipients.

Additional partners in the program included CEED Lending, BUILD Institute, ProsperUS Detroit, T. Ramsey & Associates, and the Pontiac Community Foundation.

The Dobrusin Law Firm is honored to be a part of the Pontiac community and appreciates Flagstar Bank, Main Street Pontiac, and Daniela’s dedication to making our city grow and thrive.

 

Pictured: Daniela Walters and Sean Preston, CEO of Yaktown Don’t Back Down

EU’s Unitary Patent System Due to Finally Arrive Later This Year. Here’s What You Need to Know.

After a decade of efforts, the age of the Unitary Patent in the European Union (EU) appears to be imminent. It is expected that in the second half of 2022, inventors will be able to obtain patent protection in all participating EU states by filing a single application with the European Patent Office (EPO), thereby building on European patents granted by the EPO under the European Patent Convention (EPC) rules. This change in the European patent system means obtaining patents on the continent will soon become much simpler and much cheaper.

Background of the Unitary Patent

In December 2012, European countries and the European Parliament agreed to lay the groundwork for creating a Unitary Patent protection system throughout all EU member states. The two EU regulations establishing the Unitary Patent system went into force on January 20, 2013. In February 2013, all EU member states except Poland, Spain, and Croatia signed an intergovernmental treaty to establish a Unified Patent Court (UPC) to govern and administer the new system.

However, the UPC Agreement, a cornerstone of the Unified Patent framework, has yet to come into force because the three EU countries with the most European patents in effect in 2012 needed to ratify the agreement. One of those countries – Germany – has yet to do so. As such, the UPC is in a preparatory phase initiated on January 19, 2022, that should last eight to ten months. During this time, it is expected that Germany will deposit its instrument of ratification of the UPC Agreement, which will then trigger a preliminary period of three to four months before the UPC Agreement comes into force.

The Unitary Patent Framework

A European patent granted by the EPO on or after the date the UPC Agreement enters into force will form the basis of a Unitary Patent. Therefore, an applicant must first obtain a European patent before the EPO registers a Unitary Patent.

To be eligible for a Unitary Patent, the European patent must have been granted with the same set of claims, and the applicant must file the request no later than one month after the publication of the grant in the European Patent Bulletin. If a patent owner does not request the unitary effect, the patent will remain a “classic” European patent.

After the UPC Agreement enters into force, the Unitary Patents will only cover the EU member states that have already ratified the agreement. Currently, the following 17 member states will participate in the Unitary Patent when it starts: Austria, Belgium, Bulgaria, Denmark, Estonia, Finland, France, Germany, Italy, Latvia, Lithuania, Luxembourg, Malta, the Netherlands, Portugal, Slovenia, and Sweden.

Although they are members of the EU, Spain and Poland have announced that they will not be parties to the UPC Agreement.  Additionally, as a result of Brexit, the UK is also no longer a party to the UPC Agreement. Outstanding ratifications will likely occur successively for Cyprus, Czech Republic, Greece, Hungary, Ireland, Poland, Romania, and Slovakia.

Key Features of the Unitary Patent System

Here are some key features to expect as the Unitary Patent system kicks into gear over the coming year:

  • Single annual fee. Owners will be able to maintain a Unitary Patent by paying a single annual fee to the EPO.
  • Translations ultimately not required. For a transitional period of at least six years, the application for unitary effect must be accompanied by an English translation of the description of the European patent if the patent is in French or German. If the patent is in English, it must include a translation of the description into any one of the languages of the EU. A translation will no longer be required at the end of this transitional period.
  • Harmonized patent law throughout all participating countries. Unitary Patents will confer uniform protection since the substantive patent law in infringement cases has been harmonized in the Agreement on a Unified Patent Court.
  • UPC to have exclusive jurisdiction but opt-out available during transition. The UPC will have exclusive jurisdiction over infringement claims and invalidity litigation concerning Unitary Patents, and any UPC decision will be controlling in all countries covered by the Unitary Patent. However, for a transitional period of at least seven years, litigation involving ‘classic’ European patents may be brought either before national courts or the UPC, at the claimant’s option. During this transitional period, “classic” European patent holders may exempt their patent from the UPC’s jurisdiction. This opt-out will no longer be allowed after the end of the transitional period.

If you have concerns about how these developments and upcoming changes will affect your European patent portfolio or plans on the continent, please contact the attorneys at The Dobrusin Law Firm.

The Dobrusin Law Firm Sponsors Pontiac Economic Summit Revisit

Not only is our firm located in Pontiac’s downtown business district, but we are also avid proponents of the city’s economic development. Recently, The Dobrusin Law Firm sponsored the Greater Pontiac Committee of 50 Economic Summit Revisit, held on April 2, 2022, at Oakland University.

The mission of the Greater Pontiac Community Coalition, founded by Reverend Douglas Jones, is to “collectively exercise actions and advocacy to generate individual, social, and institutional change.” The Committee of Fifty focuses on economic development, helping to design, review, and implement initiatives to make Pontiac a “City of Destination.”

The Revisit is a follow-up to the Committee of 50’s 1st Annual Economic Summit in November 2021 and an opportunity for subgroups to present plans and results generated since the fall meeting.​

Founding Shareholder Eric Dobrusin has long been committed to Pontiac’s renaissance. In 2018, the Coalition honored Eric with its Community Courage Award for his work to positively impact the city, including his involvement with the Oakland University-Pontiac Initiative Early Childhood Group.

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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