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Companies looking to protect their unique and memorable expressions have new support from the Brazilian Trademark Office (INPI). INPI has recently revised its interpretation of Article 124, Item VII, of the Brazilian Industrial Property Law, now permitting the registration of advertising slogans as trademarks, provided they meet distinctiveness requirements. This policy update represents a significant development in the protection of intellectual property and offers new trademark opportunities for companies seeking to safeguard their brand expressions.

Expanded Criteria for Slogan Trademark Registration

Under the revised guidelines, INPI will evaluate whether an advertising slogan functions solely as a promotional tool or also serves to identify the origin of goods or services. If a slogan exclusively promotes, it may still lack the distinctiveness required for trademark registration. However, if a slogan meets distinctiveness standards and also acts as a source identifier, it may now qualify for trademark status.

The updated criteria outline several characteristics of expressions considered primarily promotional, including those that:

• Recommend a product or service,
• Highlight specific qualities or attributes,
• Reflect the company’s mission, values, or concepts,
• Persuade or call the audience to action, or
• Distinguish the product or service from competitors.
• Emphasis on Distinctiveness Through “Originality”

A central factor in determining eligibility for trademark protection is the “distinctive character” of the expression. INPI has introduced the concept of “originality,” interpreted through exclusion, as a basis for assessing distinctiveness. Under this standard, a slogan will meet the originality requirement if it is neither descriptive, comparative, nor solely promotional or complimentary of a product or service’s quality or the manner in which they are offered.

Implications for Businesses

This policy update marks a substantial shift in Brazil’s trademark landscape and opens new avenues for companies previously unable to secure trademark protection for their slogans. Businesses with pending applications or previously rejected trademark requests now have the opportunity to seek reconsideration under these updated criteria.

INPI’s new approach to trademarking advertising slogans aligns with global trends in intellectual property, recognizing the importance of protecting brand assets that resonate uniquely with consumers. This change enables companies to better safeguard distinctive expressions that support their brand identity, marking a notable advancement in Brazil’s trademark policy.

In a public seminar on October 30, 2024, the Brazilian Patent and Trademark Office (BPTO) announced a change in its interpretation of Article 124, item VII, of the Brazilian Industrial Property Law (BIPL) – Law 9.279/96. This amendment will permit the registration of certain slogans as trademarks, a shift from the BPTO’s previous stance, which prohibited the registration of purely advertising expressions.

Historically, the BPTO has refused registration for phrases that serve solely an advertising function, without any distinguishing purpose to identify the origin of a product or service. Under the current interpretation, slogans such as “Amo muito tudo isso,” “So delicious dairy free,” and “Make the impossible possible” were denied, as they were deemed non-distinctive advertising expressions. Phrases that merely promote product qualities, convey a company’s mission or values, or encourage consumer action have been classified as lacking the distinctive function required for trademark status.

With this policy change, however, the BPTO will allow registration of slogans that possess an original and distinctive character, capable of serving as an identifier of product or service origin. Advertising expressions that remain merely descriptive, promotional, or without originality will continue to be refused under Article 124, item VII.

This revision aligns Brazil with many countries where trademark treaties permit slogan registration and reflects the BPTO’s acknowledgment of the growing importance of originality in brand expressions. Additionally, it recognizes the challenges companies face in protecting slogans through other legal means.

The new policy will take effect on November 27, 2024, and will apply to both new applications and those currently under review. Companies are strongly encouraged to consider registering their distinctive slogans to safeguard against potential third-party claims and ensure the exclusive right to use their unique brand expressions.

McCoy Russell is prepared to support its clients should this change impact their trademark strategies and portfolios. Contact us if we can be of assistance.

Bringing over two decades of expertise in trademark practice, McCoy Russell serves start-ups and iconic brands alike. The firm has developed cornerstones in well-known mark protection to trade dress and product configuration, as well as worldwide portfolio development and management as a part of its Trademark practice approach.

One of McCoy Russell’s key strengths lies in the development and implementation of a global protection and enforcement strategy for famous trademarks, leveraging the benefits of their extra protection. Clients appreciate the firm’s streamlined and cost-effective approach in establishing, maintaining, and defending well-known and famous mark status. McCoy Russell has actively contributed to the Famous and Well-Known Mark Committee for the International Trademark Association (INTA) for several years.

Trade dress is a significant focus for McCoy Russell, recognizing it as a valuable branding asset. The firm has extensive experience in developing and procuring global trade dress and product configuration protection. McCoy Russell has successfully aided in establishing product configuration protection for renowned consumer products both in the US and internationally, offering strategic counsel with a commitment to cost-effectiveness.

The firm’s trademark practice encompasses a wide array of services, including trademark searches, brand analysis, trademark filings, preparation of tiered strategic worldwide filing recommendations, brand due diligence, IP audits, review of branding agreements, assignments, renewals, in-house trademark training, and customs registrations. McCoy Russell is dedicated to pursuing filings and enforcement in over 130 countries, collaborating seamlessly with a network of trusted IP colleagues.

McCoy Russell continues to strengthen its Trademark and Branding specialty with active exposure to diverse perspectives, regulatory updates, and collaborative efforts with industry experts through volunteering in INTA. Please contact us at [email protected] if you think we can be of assistance.

In the realm of intellectual property (IP), businesses rely on many forms of protection to safeguard their innovations. Trade secrets and patents both serve critical roles in protecting valuable assets, but they differ in terms of application, longevity, and enforcement.

Trade secrets protect confidential business information that gives a company a competitive advantage, such as proprietary formulas, techniques, or processes. One major benefit is their indefinite protection, as long as the information remains secret. Unlike patents, trade secrets don’t require a formal application, making them a cost-effective and immediate option. However, if the information is disclosed, either intentionally or through misappropriation, the protection is lost. Additionally, proving theft of trade secrets may be challenging in legal disputes.

Patents provide exclusive rights to an invention, typically for 20 years from the filing date. These rights are granted for inventions that meet specific criteria: they must be novel, non-obvious, and useful. While patents offer strong protection and the potential for monetization through licensing, the process is lengthy and expensive. Once a patent expires, the invention becomes part of the public domain.

Navigating the decision between trade secrets and patents requires careful consideration of the business’s unique needs. McCoy Russell has the experience and expertise to help businesses evaluate these options and develop a tailored IP protection strategy and protect their intellectual property portfolios. Through educational trainings and expert guidance, businesses can maximize the value of their innovations and maintain a competitive edge.

McCoy Russell recently hosted a Pumpkin Carving event at the firm’s collaborative space. From intricate designs to silly and spooky faces, it was a fun opportunity to reconnect in person and enjoy a fall evening together.

The United States Patent and Trademark Office (USPTO) has recently discovered a coding error in its patent term adjustment (PTA) software. This error affected patents issued between March 19, 2024, and July 30, 2024, potentially causing incorrect calculations in the delay under 35 U.S.C. 154(b)(1)(A) (“A” delay) and the overlap under 35 U.S.C. 154(b)(2)(A) (“Overlap”). Other PTA calculations were not impacted.

The error was a result of a software update, and the USPTO has since corrected the issue. While the overall PTA for many affected patents remains accurate, some may contain miscalculations where the “A” delay and the “Overlap” did not balance, leading to potential discrepancies in the overall patent term.

The USPTO estimates that approximately 1% of patents issued during this period may be affected. Impacted patentees can request a revised PTA determination under 37 CFR 1.705(b), and the USPTO has waived the associated fees for requests based solely on this error. These requests must be submitted within two months of the patent grant date, with a possible extension of up to seven months if required.

This issue does not affect other types of PTA calculations, and the USPTO will manually review each request. Patentees are encouraged to contact USPTO officials for further inquiries regarding the error and the process for requesting reconsideration.

The Portland Retro Gaming Expo recently hosted its largest event celebrating classic video and arcade games that have shaped popular culture. This year’s expo featured panels with iconic innovators such as Nolan Bushnell (Atari), Ted and Carrie Tahquechi, Jeff Minter (Tempest 2000), and Daniel and Carlose Pesina (Mortal Kombat) highlighting the industry’s rich history.

Since the 1970s, the video game industry has evolved dramatically—from simple pixelated games to immersive modern experiences. This growth was fueled by creative innovations, many of which were protected through patents. The first notable patent was Ralph Baer’s “interactive television gaming system,” which led to the Magnavox Odyssey, the first home console. This marked the beginning of companies using patents to secure competitive advantages, particularly as the industry matured during the “Golden Age” of arcade games and home consoles in the late 1970s and 1980s.

Initially, patents covered physical hardware like controllers and cartridges. However, companies began protecting gameplay mechanics, such as Namco’s 1994 patent for the “loading screen mini-game” US Patent 5,718,632 which prevented competitors from using similar features until the patent expiration in 2015.

Patents have also played an essential role in preserving gaming history. When companies file patents, they are required to provide detailed descriptions of their inventions, which often serve as valuable documentation of technological developments in the gaming industry. Today, retro gaming continues to thrive, with many older patents having expired, allowing fans and hobbyists more freedom to recreate and distribute classic games. However, trademarks and copyrights still provide some protection for the innovators.

As the games industry has continued to evolve, and more recently with the rise of virtual reality, augmented reality, and artificial intelligence, the role of patents will likely grow more complex. Companies will continue to secure patents on cutting-edge technology to maintain competitive advantages.

The patent system has played a critical role in shaping the games industry, providing companies with the tools to protect their inventions and push technological boundaries. The history of retro gaming patents remains a testament to the technological creativity and legal ingenuity that have defined the industry for decades.

McCoy Russell has particular expertise in developing branding and patent strategies for protecting gaming products and innovations.

The U.S. Patent and Trademark Office (USPTO) recently announced that it will be terminating the After Final Consideration Pilot Program 2.0 (AFCP 2.0). This decision follows public feedback expressing hesitancy toward the proposed fee for participation in the program. Consequently, the program will end on December 15, 2024, with the Office no longer accepting requests after December 14, 2024.

As some background, AFCP 2.0 was introduced as a means of fostering better communication between the USPTO and patent applicants while streamlining the patent prosecution process. It allowed patent examiners extra time, at no cost to applicants, to review and consider responses following a final rejection. This time could also be used to schedule and conduct interviews with applicants if their response did not place the application in condition for allowance.

As AFCP 2.0 nears its expiration, it is essential to consider its potential impact on patent applicants and the broader patent prosecution process, which includes the following considerations:

• Increased Formality After Final Rejection: Without the additional review time provided by AFCP 2.0, patent applicants may encounter a more formalized and potentially rigid prosecution process after a final rejection. This could lead to a rise in Requests for Continued Examination (RCE) filings, which would increase both the time and cost of the prosecution process.
• More Strategic Responses Required: In the absence of the additional review time under AFCP 2.0, applicants may need to adopt more strategic approaches when responding to non-final rejections. This could involve introducing additional claim amendments or arguments earlier in the process to reduce final rejections.
• Potential Backlog Increase: A rise in RCE filings could contribute to an existing backlog of patent applications at the USPTO, further delaying the processing time for applicants seeking patent protection for their innovations.

The expiration of AFCP 2.0 signals a subtle shift in the patent prosecution process, particularly when dealing with final rejections. Applicant may wish to re-evaluate their prosecution processes before the program closes at the end of day on December 14, 2024.

Hosted in Phoenix, Arizona September 23-25, AUTM’s Western Region Meeting brought together leaders and experts from both academia and industry to explore the latest advancements, challenges, and opportunities in technology transfer.

McCoy Russell Partner Justin Wagner had the opportunity to attend informative panels such as a presentation regarding the latest double patenting updates by Rivka Monheit and Donna Cyr and a panel about evaluating IP disclosures using AI, as well as panels discussing the ever-increasing prevalence of AI in patent procurement.

The AI-centered themes at the Western Region Meeting align with IronCrow AI, a technology spinoff from McCoy Russell, which incorporates the use of AI in its toolkit.  IronCrow AI serves to empower patent professionals with cutting-edge solutions, enhancing their ability to innovate and excel in the rapidly evolving field of intellectual property.

The AUTM Western Region Meeting provides a unique platform for professionals to come together, collaborate, and share knowledge. Justin, along with many esteemed peers in AUTM’s Western Region Meeting Planning Committee, have contributed to shaping an engaging, informative, and entertaining experience for all attendees.