New Law in Utah Prohibits Certain Internet Crimes

On March 26, 2010, the governor of Utah signed into law the Utah E-Commerce Integrity Act (S.B. 26), which prohibits certain Internet-related conduct, including phishing, pharming, spyware and cybersquatting that involves "a computer, software, or an advertisement located in, sent to, or displayed in" Utah. (Legislative history of the bill, and alternate text versions can be found here.)

Essentially, the bill provides the following:

• Prohibits the facilitation of "certain types of fraud and injury through use of electronic communications;"
  
• "Allows for the removal of domain names and online content by an Internet registrar or [ISP] under certain circumstances;"
  
• "Forbids the use of various types of software, commonly called spyware, if used for certain purposes;"
  
• "Provides exceptions from spyware provisions for various types of communications and interactions, including authorized diagnostics;"
  
• "Prohibits the registration of domain names under certain circumstances, commonly referred to as cybersquatting;" and
  
• "Provides civil penalties for a violation of cybersquatting provisions".

It also prohibits the passage of contrary laws by subdivisions of the state and makes other technical changes.

Key among the provisions are definitions of what activities constitute phishing, pharming, spyware and cybersquatting. Notably, the statute only applies to activities that occur after July 1, 2010 (although for cybersquatting and infringement, the effective date is May 11, 2010).

Any ISP that is "adversely affected by the violation"; "an owner of a web page, computer server or trademark that is used without authorization by the violation;" or 3) the attorney general may file suit to recover damages for phishing or pharming activities. Either actual damages or "a civil penalty not to exceed $150,000" per violation can be awarded.

In the case of spyware, not only are the ISP, attorney general and trademark owner whose mark was used to deceive others able to file suit, but the owner of "a software company that expends resources in good faith assisting authorized users harmed by a violation" of this provision can also sue. The damages awarded in these instances can be actual and liquidated damages of between $1,000 and $1,00,000 as well as attorneys fees and costs. There are certain exceptions to the damages thresholds, depending on the circumstances.

The cybersquatting provisions are structured similarly to the AntiCybersquatting Consumer Protection Act (15 USC § 1125(d)), and permit the transfer of an affected domain name in the case of a successful judgment against the defendant, but also differ in certain ways from the federal provisions. Specifically, they allow personal names to be included in the scope of protection under the act and exempt domain name registrars from legal action except in cases of bad faith or reckless disregard. There are other differences as well, but these were the most obvious.

Top 10 Ways to Preserve Your Trademarks

On Friday (April 16), during the Pennsylvania Bar Institute's Fourth Annual IP Institute, I delivered a presentation on Top 10 Ways to Preserve Your Trademark, co-presented with Rex A. Donnelly of RatnerPrestia in its Wilmington, DE office.

I will be uploading both the article and PowerPoint presentation that we co-developed to my firm's web site as quickly as feasible, and you are welcome to review them there. In sum, however, the topics we covered were:

1. Choose a Mark You Can Protect
   
2. Register Your Mark
   
3. Be Truthful with the Trademark Office
   
4. Keep Using Your Mark
   
5. Maintain Your Registration
   
6. Update Your Protection
   
7. Use Your Mark Correctly
   
8. Make Sure Others Use Your Mark Correctly
   
9. Police for Infringement and Dilution
   
10. License Your Mark Wisely
    

(I had responsibility for topics 3,4,5,7 and 9 – and wrote the sections for topics 3,4,6,7 and 9 in the article (Mr. Donnelly and I swapped topics 5 and 6 the morning of our presentation)). I also attended many of the presentations by my colleagues, and was particularly impressed with the "Mock" hearings (Mock Markman Hearing, Mock Preliminary Injunction Argument, Mock TTAB Cancellation Hearing), which were all presided over by judges currently sitting on the bench. I hope the course planners expand those sessions to additional topics next year.

I welcome your comments.

UPDATE on 5/7/10: The published article and the accompanying slides are now available on my firm's web site. The direct links are here: "Top 10 Ways to Preserve Your Trademark," Pennsylvania Bar Institute's Fourth Annual IP Institute (April 16, 2010), co-written with Rex A. Donnelly of RatnerPrestia – (with presentation slides).

Fraud on the PTO – A Trademark Perspective

Last Friday (April 9), during the American Bar Association Intellectual Property Law Section conference, I delivered a presentation on Trademark Prosecution Ethics, and in particular, the history and current status of the fraud in the procurement theory used to cancel registrations (or oppose applications) when material misrepresentations have been made to the Patent & Trademark Office during the application or renewal process.

I plan to upload both my article and my PowerPoint presentation to my firm's web site as quickly as feasible, and you are welcome to review them there. In sum, however, my conclusions were as follows:

"While the test for determining that an applicant's or registrant's conduct in filing an application or maintaining trademark registrations was fraudulent has become more stringent, applicants, registrants and their counsel still face some pitfalls in the process. Indeed, although certain amendments of an inaccurate filing may be accepted (provided that no challenge to the validity of the application or registration has yet been filed), it is clear that both the TTAB and the Federal Circuit discourage carelessness in preparing these filings.

Accordingly, applicants and registrants are strongly encouraged to do at least the following to avoid increasing the risk of claims or counterclaims of fraud on the USPTO, and thus, loss of a pending application or a particular registration:

• Conduct appropriate due diligence to ensure that the marks sought to be registered (or renewed) qualify as "in use" or validly subject to the "intent to use" process;
  
• Ensure that the intended signatory for the declaration has the appropriate level of personal knowledge to support the allegations of use or intent to use, exclusive right to use the mark and other averments of fact;
  
• Ensure that any licensees upon whose use the applicant/registrant will rely to maintain the registration properly use the mark in commerce and provide sufficient evidence to the applicant/registrant to support the maintenance filing; and
  
• Undertake proper due diligence before filing an Opposition or Cancellation proceeding to ensure that the trademark or service mark forming the basis of a challenge to another application or registration does not have any exposure to a counterclaim for fraud on the USPTO and thus at risk for cancellation during the pendency of the proceeding.
  

Note that undertaking these preparations cannot completely moot claims of fraud on the USPTO, but they lend support and reasonableness to a potential response that no "intent to deceive" can be demonstrated by clear and convincing evidence. Finally, this entire line of cases confirms that the USPTO, TTAB and Federal Circuit Court of Appeals have strong interests in ensuring that the trademark Register be kept current and accurate, and demonstrates a disfavor of carelessly filed and unreliable factual statements about the use or non-use of trademarks and services marks in active use in U.S. commerce.

I welcome your comments.

UPDATE on 4/20/10: The slides from the presentation can be found on the ABA's IPL Section site.

UPDATE on 5/7/10: The published article and the accompanying slides are now available on my firm's web site. The direct links are here: "Ethics in Trademark Application Prosecution: Alleging 'Fraud in the PTO' After In re Bose," ABA Intellectual Property Law Section 25th Annual Conference (April 9, 2010) – (with presentation slides).