Category: Firm Post

U.S. Trademarks Now Require a U.S. Attorney

By Hoge Fenton | 08.13.2019 | Firm Post

U.S. Trademarks Now Require a U.S. Attorney The United States Patent and Trademark Office (USPTO) has changed its rules regarding filings by foreign individuals and companies. Effective August 3, 2019, all foreign domiciled parties must be represented by a U.S. licensed attorney in connection with trademark-related submissions to the USPTO. Any individual with a permanent legal residence outside the United States or entity with its principal place of business outside the United States now needs a U.S. licensed attorney to file documents with the USPTO on their behalf. This new requirement applies to: Applications and registrations to the United States Patent & Trademark Office (USPTO) Proceedings before the Trademark Trial and Appeal Board (TTAB) All foreign domiciled parties who wish to file new trademark or service mark applications in the United States Filings prior to August 3, 2019 Applications filed prior to the effective date of this rule will remain valid, but a U.S. attorney must be appointed for any future filings – such as Office Action responses or Statements of Use. Similarly, maintenance filings for registrations issued prior to August 3 must also be submitted by a U.S. attorney. Madrid Protocol International applications with extensions to the U.S. filed through the World Intellectual Property Organization using the Madrid Protocol may initially be filed without a U.S. attorney, but the requirement for a U.S. attorney will be made in all Office Actions. Canada Canadian trademark attorneys and agents who are reciprocally recognized by the USPTO’s Office of Enrollment and Discipline […]

Panel Agrees IP Is Key To Earn Interest From VCs

By Hoge Fenton | 08.8.2019 | Firm Post

Hoge Fenton intellectual property and patents Attorney Amy J. Embert recently joined in a panel of sought-after IP experts, sharing in-depth patent and due diligence strategies for early-stage startups at a recent seminar for the Fogarty Institute for Innovation. Amy Embert: Don’t make any assumptions and presume that something may be obvious when you’re filing your provisional application, Amy points out. The document needs to stand on its own, fully describing all aspects of the invention. Yet, it can be wise to have it reviewed by an attorney before filing to ensure it is well-written, understandable and complete. “Be ready to show investors where you can protect your invention and your strategy for the coming years. Your IP portfolio is most important in the early stages of a company, and slightly less as you grow and have other assets.” To read the full article, click here.

Judicial Reformation of a Will – Like Running Through a Minefield!

By Hoge Fenton | 07.16.2019 | Firm Post

Our trust and estate litigation team recently took a will contest case to trial in which the decedent’s estate planning documents did not accurately reflect her intent. At issue was what, if anything, the court would do about it. The consequences of having a will which does not express what the decedent intended can be devastating to the heirs. Those contesting the will face the burden of proving the decedent’s intentions, and the evidentiary hurdle is high. There must be clear and convincing evidence. In California, the intent of the testator – and not merely words on a page – govern the disposition of one’s estate. In determining that intent the court gives great weight to what the testator originally communicated to the drafting attorney. In our case, the attorney who drafted the will testified at trial as to what the decedent said about how she wanted her community property controlled. Fortunately, that attorney had maintained detailed notes of the client meetings. Ultimately, we persuaded the court and prevailed at trial. Practice Pointer: Although this situation is rare, it underscores the importance of attorneys, financial advisors, and related professionals keeping good notes that reflect the intentions of their clients. Click here for the full article, authored by Denise E. Chambliss and Mallory L. Homewood, and reprinted with permission of the Eastern Alameda County Bar Association (EACBA Newsletter, Summer 2019). This article is provided as an educational service by Hoge Fenton for clients and friends of the firm. This communique is an overview […]

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