In This Issue:
Q&A with Jennifer Rea Deneault NYIPLA 2025-2026 Board of Directors: New Board Member PTAB is more Aggressively Reversing § 101 Rejections Under the Trump Administration By: Charles R. Macedo, Partner, Thomas Hart, Associate, Lewis Derenzis III, & Joshua Jacobson, Law Clerks, Amster, Rothstein & Ebenstein, LLP When Licensing Meets Trade Dress: The Big League Chew Shredded Chewing Gum Case Through the Eyes of a Licensor By: Giselle Ayala “Blanding Out”: Exploring the Complexities of the “Blanding” Minimalist Design Trend and What It Means for Your Client’s Trademark Rights By: Mike A. Ortega When AI Writes Your Claims: A New Frontier for Prosecution History Estoppel By: Sarah Lim, New York Law School, JD Candidate
Summer/Fall 2025
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President's Corner Q&A with Jennifer Rea Deneault NYIPLA 2025-2026 Board of Directors PTAB is more Aggressively Reversing § 101 Decisions Under the Trump Administration By Charles R. Macedo, Thomas Hart, Lewis Derenzis III, and Joshua Jacobson When Licensing Meets Trade Dress: The Big League Chew Shredded Chewing Gum Case Through the Eyes of a Licensor By Giselle Ayala "Blanding Out": Exploring the Complexities of the "Blanding" Minimalist Design Trend and What it Means for Your Client's Design By: Mike A. Ortega When AI Writes Your Claims: A New Frontier for Prosecution History Estoppel By: Sarah Lim, New York Law School, J.D. candidate Notable Trademark Decisions, October 2025 By: Scott Greenberg and Vrudhi Raimugia NYIPLA Highlights Historian's Corner Board Minutes NYIPLA Events Welcome New Members Upcoming Programs
ABIGAIL STRUTHERS
I am honored and privileged to be writing you a note from the “President’s Corner” as I lead the NYIPLA into its 104th year. And what a year it has been so far. But times like these—when we are seeing rapid changes in the legal and policy landscape—shine a light on the tremendous value of our organization: a community of professionals who not only represent diverse interests and viewpoints, but who are also united in the common goal of supporting and improving the practice of intellectual property law. Keeping track of new developments in the current environment takes a village, and I’m proud to report that NYIPLA has risen to the occasion by continuing to offer cutting edge programming to our membership and the IP bar at large. In addition to our larger events—like June’s successful “Hot Topics in Trademark and Copyright Law” forum—our PTAB, legislative action, and other practice group committees have been working overtime to provide the quality analysis and impactful engagement that give NYIPLA its well-deserved reputation for thought leadership in the field. At the same time, NYIPLA continues to offer the unmatched opportunities that attracted me to this organization when I joined roughly 20 years ago. Our long tradition of training and mentorship for junior practitioners was on full display at our ninth annual Summer Associate Moot Court event in July, where I was inspired both by the dedication of our volunteer judges and mentors and by the hard work and skill of our participating summer associates. And there are avenues for involvement for our members at all levels of seniority abound. I can attest to this personally—when I attended my first NYIPLA meeting in 2005, I would never have guessed how far saying “yes” to volunteer roles in this organization would take me. I treasure this community, and I am incredibly grateful to my predecessors, our Board, and our membership—because of you, NYIPLA is thriving, even in an age where bar associations are facing challenges across the board. Our “Judges' Dinner” last year was the most well-attended it has been post-pandemic, and our membership is growing. With your support, I look forward to continuing those trends and to making the most of this year together.
NYIPLA President's Corner
March 27th, 2026 New York Hilton Midtown Hotel
24th ANNUAL OUTSTANDING PUBLIC SERVICE AWARD
Honorable Raymond T. Chen Circuit Judge United States Court of Appeals, Federal Circuit
THE NEW YORK INTELLECTUAL PROPERTY LAW ASSOCIATION
Keynote Speaker
Dave Barry Author, Humorist and Pulitzer Prize Winner
NYIPLA SPOTLIGHT
How long have you been a member of the NYIPLA? I always knew that NYIPLA hosted engaging events and had a robust membership, but I did not become actively involved until 2020. I delayed becoming involved until I could devote more time to NYIPLA activities. I now know that was not necessary and NYIPLA encourages involvement at a variety of levels and I could have learned more had I showed some interest earlier in my career. - Why did you first join the Association? I initially became involved through the Young Lawyers Committee. At the time, it was led by Eric Greenwald who now serves on the Board. He encouraged me to attend and gave me freedom to organize events which gave me a sense of connection to the legal community that I was missing while working from home during the pandemic. - Has your membership in the Association benefited your practice? If so, how? Participating in NYIPLA has given me a sense of community and an ability to give back outside of my billable work. I am particularly thankful for the friendships that I have formed through the association. There is something special about planning an event with people you connect with but do not regularly work with. In addition, the connections that I made through NYIPLA have helped me in my billable work by connecting me with new clients and getting to know people that are involved in the same matters as my firm including those acting as co-counsel as well as opposing counsel. With which committees have you been involved during your membership? From 2021 to 2023, I served as co-chair of the Young Lawyers Committee. I also served as co-chair of the then-newly formed Membership Committee from 2024 to 2025 and now serve as its Board Liaison. From 2023 to 2025, I participated on the Associate Advisory Council. I am thrilled to be participating in the Publications Committee as a Board Liaison. I also enjoy attending meetings for other committees, such as the Legislative Action and PTAB Committees. NYIPLA actively encourages participation in committees. They are the heart of the association. - How would you like to contribute as a Board member? What are your goals for your time on the Board, and what do you hope to accomplish? I would like to support the initiatives of the organization’s president Abby Struthers. She is a strong leader with terrific ideas for moving the organization forward. She also listens to the ideas of all members and adds new initiatives based on those ideas. Abby has more ideas than time so I would like to help her implement as many of her initiatives as possible. - How does your involvement with the NYIPLA compare with your involvement in other bar associations? NYIPLA was the first bar association that gave me the opportunity to join the Board. I plan to dedicate substantial time to the organization in that role. I will also continue participating in other bar associations as I have found exposure to different associations is beneficial. How does your involvement with the NYIPLA compare with your involvement in other bar associations? NYIPLA was the first bar association that gave me the opportunity to join the Board. I plan to dedicate substantial time to the organization in that role. I will also continue participating in other bar associations as I have found exposure to different associations is beneficial. - Is there anything else that you wish to share or comment upon? NYIPLA offers a seat at the table for everyone so please consider getting involved. You will find that your professional and personal life will benefit in ways that you never imagined. Thank you!
Q&A with Jennifer Rea Deneault NYIPLA 2025-2026 Board of Directors: New Board Member
PTAB Is More Aggressively Reversing § 101 Rejections under the Trump Administration By: Charles R. Macedo, Partner, Thomas Hart, Associate, Lewis Derenzis III, & Joshua Jacobson, Law Clerks, Amster, Rothstein & Ebenstein, LLP
I. Introduction Since the arrival of the Trump administration and former Acting Director Coke Morgan Stewart at the U.S. Patent Trial and Appeal Board (“PTAB”), the PTAB has changed its approach in ex parte appeals with respect to reviewing patent-eligibility rejections under 35 U.S.C. § 101. While there remains a fair number of affirmances, there is nonetheless a growing number of reversals of such rejections, as well as a noticeable shift toward greater leniency in determining what qualifies as a patentable invention. While last year there were few instances where the PTAB appeals panel found § 101 rejections reversible, this year, there are over 50. II. How the USPTO Analyzes 35 U.S.C. § 101 Before diving into the examples, it is helpful to understand how the USPTO analyzes § 101. Under the Guidance first issued during the first Trump Administration and endorsed during the Biden Administration,1 at the USPTO, the first step in a § 101 analysis (Step 1) is to ask “[i]s the Claim to a process, machine, manufacturer or composition of matter?” (the four “Statutory Categories” of inventions set out in § 101).2 Next, the Examiner is prompted to apply the two-step Alice-Mayo test in Steps 2A, and 2B. Step 2A, labeled “The Judicial Exceptions” asks “[i]s the claim directed to a law of nature, a natural phenomenon (product of nature), or an abstract idea?”.3 Step 2B, labeled “The Inventive Concept”, asks “[d]oes the claim recite additional elements that amount to significantly more than the Judicial exception?”.4 The USPTO in July 2024 published the flow chart (shown in the margin) to illustrate these steps as Examiners are instructed to apply them.5 The USPTO further explains with respect to Alice/Mayo Step 1 (USPTO Step 2A), that the Examiners should break this step into two additional “PRONGS”6 of inquiry as illustrated in the following flowchart:7 In “PRONG ONE” of Step 2A, the USPTO instructs Examiners to ask “[d]oes the claim recite an Abstract Idea, Law of Nature, or Natural Phenomenon?”8 If not, then the claim is not directed to a judicial exception.9 If the claim does recite any of these, the USPTO instructs Examiner to then ask, as “PRONG TWO” of Step 2A, “[d]oes the claim recite additional elements that integrate the judicial exception into a practical application?”10 If so, the claim is not directed to a judicial exception.11 If not, then the Examiner is instructed to continue to Step 2B discussed above.12 As noted above, at Step 2B, the claim must recite additional elements that amount to significantly more than the judicial exception in order to be patent eligible.13 In 2018, under the prior Trump administration, the USPTO issued a memorandum interpreting Berkheimer, a Federal Circuit case, to require the Office to provide specific evidence to support its Step 2B rejection.14 As a recent PTAB decision explained: Further, according to the USPTO Memorandum, dated April 19, 2018, of Changes in Examination Procedure Pertaining to Subject Matter Eligibility, noting subject matter eligibility decision (Berkheimer v. HP, Inc.) (i.e., the “Berkheimer Memorandum”),[i]n a step 2B analysis, an additional element (or combination of elements) is not well-understood, routine or conventional unless the Examiner finds, and expressly supports a rejection in writing with, one or more of the following: 1. A citation to an express statement in the specification or to a statement made by an applicant during prosecution that demonstrates the well-understood, routine, conventional nature of the additional element(s) . . . . 2. A citation to one or more of the court decisions discussed in MPEP § 2106.05(d)(II) as noting the well-understood, routine, conventional nature of the additional element(s). 3. A citation to a publication that demonstrates the well-understood, routine, conventional nature of the additional element(s) . . . . 4. A statement that the Examiner is taking official notice of the well-understood, routine, conventional nature of the additional element(s) . . . . 15 On August 4, 2025, the USPTO issued a memorandum indicating the Office continues to require the use of specific evidence in evaluating patent eligibility.16 III. Developments in Examiners’ Approach to 35 U.S.C. § 101 Notwithstanding the fact that the approach outlined above has been technically the same since the first Trump Administration, and was endorsed in 2024 during the Biden Administration, the PTAB has recently increased the number of reversals of patent-eligibility rejections under § 101. Below, we marshal the PTAB reversals as of the time of writing of this article based on the eligibility step at which the PTAB found reversible error. A. 35 U.S.C. § 101 Step 1 Under the first step of the patent eligibility test, the PTAB reversed two cases of § 101 rejections in 2025, both involving claims where Examiners mischaracterized permissible language as impermissible “transitory” signals.17 In particular, the PTAB rejected what it deemed to be improper claim constructions by the Examiners, where they attempted to characterize permissible language as impermissible “transitory” signals.18 These cases deal with one of the traditional difficulties in this area regarding “transitory” signals. Before Alice/Mayo, the Federal Circuit had found ineligible, in In re Nuijten,19 claims that include “transitory forms of signal transmission” as not directed to statutory subject matter. In both decisions, the PTAB took the Examiner to task for misapplying the principle of law set forth in Nuijten, and more particularly, with excessively overbroad claim constructions under the BRI framework. In Ex parte DEV, the PTAB rejected the Examiner’s assertion that “transient memory” includes or is included within “transitory media”.20 Similarly, Ex parte JHA overturned a patent-eligibility rejection where the claim did not expressly state the phrase “non-transitory”.21 Instead, the PTAB recognized that other terms in the claim could be relied upon to recognize the non-transitory nature of the claim.22 B. 35 U.S.C. § 101 Step 2A-Prong One In its August 4, 2025, memorandum, the USPTO instructed Examiners to consider the Prong One investigation more carefully.23 Specifically, it instructs Examiners to “be careful to distinguish claims that recite an exception (which require further eligibility analysis) from claims that merely involve an exception (which are eligible and do not require further eligibility analysis).”24 This instruction flows from the earlier July 24, 2024 regulations and its discussion of Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir. 2016), as well as the Supreme Court’s concerns in Alice. This admonition is also starting to appear in PTAB decisions. Consistent with this instruction, the PTAB has reversed Examiner rejections under Prong One of Step 2A when the rejection does not expressly recite one of the USPTO identified abstractions. For instance, in Ex Parte SHIMUTA, the PTAB explained that a claim directed to implementing a “blood pressure estimating device” was not directed at a mental process, simply because it involved a calculation:25 We disagree with the abstract idea analysis provided by the Examiner. Such a broad-brush approach in identifying purported recitations of abstract ideas is overly inclusive and runs counter to the USPTO Guidance, which “[a]ll USPTO personnel are, as a matter of internal agency management, expected to follow.” 84 Fed. Reg. at 51. “[T]he Court [in Alice] has explained that ‘[a]t some level, all inventions embody, use, reflect, rest upon, or apply laws of nature, natural phenomena, or abstract ideas,’ and has cautioned ‘to tread carefully in construing this exclusionary principle lest it swallow all of patent law.’” MPEP § 2106.04(II)(A)(l) (citing Alice, 573 U.S. at 216). “The ‘directed to’ inquiry, therefore, cannot simply ask whether the claims involve a patent-ineligible concept, because essentially every routinely patent-eligible claim involving physical products and actions involves a law of nature and/or natural phenomenon." Id. (quoting Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir. 2016)) (internal quotation marks omitted). “Examiners should accordingly be careful to distinguish claims that recite an exception (which require further eligibility analysis) and claims that merely involve an exception (which are eligible and do not require further eligibility analysis).” Id. (emphasis added). We disagree with the Examiner's analysis that claims 1 and 9 recite mental processes. Non-Final Act. 2, 4. We determine that apparatus claims 1 and 9 each recites a structurally complete, non-abstract invention in which the recited structural components (e.g., electrocardiographic electrode, photoplethysmographic sensor, blood pressure estimator) interact with each other and involve using additional applications, which we determine does not recite one or more judicial exceptions.26 Here, under this reasoning the issue is not whether the claims merely involve “commercial or legal transactions,” but whether the claim is directed to such commercial or legal transactions. The Examiner’s broad-brush approach of quoting the whole claim and then ignoring (or discounting as merely generic computer components) the structural components that clearly interact with each other “runs counter to the USPTO Guidance”, and is reversible error, as explained in SHIMUTA.27 Presently, the PTAB has evidenced a greater willingness to call out Examiners for mischaracterization of the claims.28 In Ex parte CAJIAS, the PTAB ruled that the Examiner improperly classified claim 1 as reciting an abstract mental process.29 The invention at issue was directed to “navigation systems,” particularly the “bloom filter enabled information exchange between a data service and a client for updating digital map data of a geographic region in a map version agnostic manner and bandwidth efficient manner.”30 Improperly, the Examiner held that the calculations could practically be performed entirely in the human mind. The PTAB reversed the Examiner’s findings, holding that these calculations could not be performed entirely in the human mind.31 This is notable as the USPTO’s July 24, 2025 memorandum specifically instructed Examiners not to expand the mental process grouping in a manner that encompasses claim limitations that cannot practically be performed in the human mind.32 Similarly, in Ex parte LAM, a § 101 rejection was reversed under Prong One because the claims were not directed to “sales”, as characterized by the Examiner.33 The Board recognized that such a mischaracterization was wrong and ignored the fact that the claims were instead directed to using depth sensors and image sensors for a camera in a non-conventional way that reduces false positive product determinations, which is NOT directed to an abstract idea.34 In Ex parte GALLAGHER, the PTAB overturned a § 101 rejection for mischaracterizing a claim as requiring “initiating a transaction” and “processing a contract.” PTAB further explained that the reversal was also based on Examiner’s improper labeling of the claim as being within the “certain methods of organizing human activity’ grouping of abstract ideas”.35 The Board relied on the fact that "in the Guidance a ‘mental process’ is a distinct category from the ‘certain methods of organizing human activity’ grouping of abstract ideas and not a subgrouping as the rejection asserts.”36 With respect to proceedings involving alleged issues with abstract ideas, the Board has also reversed Examiners’ § 101 rejections for: Limitations being insufficient to fall into the category of mathematical relationships and failing to provide evidence or explanation on how the human mind is equipped to perform particular cardiac evaluation;37 and Ignoring a limitation of whether the additional elements add more than insignificant extra-solution to the judicial exception;38 Furthermore, Examiner decisions citing issues with natural phenomena have also been reversed by the PTAB. In Ex parte LAURENT, a claim directed to crushed insect particles with parts separated had different characteristics than found in nature and was thus “markedly different.”39 In addition, a medium comprising “ammonium-containing contaminant” and bacteria that can oxidize ammonium, the focus of Ex parte JAFFE, was not a natural phenomenon because: (a) a contaminant containing ammonium is not a natural phenomenon because ammonium is human made, even if such contaminants are found in nature; and (b) the recited components are claimed in a medium, so it is not sufficient for them to exist individually in nature to invalidate under § 101.40 Lastly, the following cases also track the August 4, 2025, memorandum: Ex parte GHOSH, Appeal 2024-001820, App. 17/193,260 (PTAB Sep. 10, 2025) (PTAB held that the Examiner provided no evidence or explanation for how the human mind is equipped to practically perform cardiac evaluation by generating electrical signals from tissue of a patient using electrodes and analyzing the electrical signals to determine the efficacy of the heart's left bundle branch engagement) Ex parte PRONOVICI , Appeal 2024-003576, App., 17/142420 (PTAB Jun. 26, 2025) (Board made clear that including a mathematical formula does not limit the claim to a mental process. The Board clarified that the claims relate to a medical system that identifies “events from mechanical motion data” in an improved patient specific way to control delivery and timing of cardiac pacing and concluded that they are directed to more than a mere “mental concept”) Ex parte KALE, Appeal 2024-004119, App. 16/458,924 (PTAB Aug. 26, 2025) (claim is directed to an adaptive control machine learning method which is a specific improvement in the software arts, not an abstract idea; distinguishing Recentive as “conventional” machine learning, while invention here modifies machine learning technique by being “tuned during training” and adjusting “number of hidden layers” or “kernel calculation” to implement a support vector machine; also claims delineated steps through which results were achieved) Ex parte MILLAHN, Appeal 2024-001756, App. 16/837,486 (PTAB Aug. 22, 2025) (“We agree with Appellant that a human observer could not determine three-dimensional poses or relationships between the medical instrument and bone, contrary to the Examiner’s assertions. Appeal Br. 12–13; Ans. 4–10. According to the claim, this requires use of two-dimensional camera images, bone location data points, and a tracking array monitored as the positional relationships and poses change with the movements of the medical instrument and bone during a surgical operation. The computations required would be beyond human capability in any practical sense.”) C. 35 U.S.C. § 101 Step 2A-Prong Two Step 2A-Prong Two of the USPTO’s 35 U.S.C. § 101 analysis has become the most likely pathway to obtaining a favorable patent-eligibility finding. In the past year, the PTAB relied on Prong Two in at least 27 reversals of § 101 decisions.41 Here, the critical question is whether additional elements of the claim add sufficient information to integrate the judicial exception into a practical application. In its July 24, 2025, memorandum, the USPTO provides additional guidance, explaining that in computer-related technologies, Examiners can conclude that claims are eligible in Step 2A-Prong Two by finding that a claim reflects an improvement to the functioning of a computer or to another technology or technical field, integrating a recited judicial exception into a practical application of the exception.42 For example, in Ex parte GUAY, the focus was on an invention directed to a method of prioritizing the transmission of trading data: The invention examines incoming data, determines the highest priority, and sends the high priority information over a fiber optic link. Subsequently, the lower priority information is sent over a radio frequency link at a slower rate, freeing up bandwidth for the higher priority information.43 While the Examiner found the invention to be an abstract idea that merely implemented generic computer capabilities, the PTAB instead held it to be a “technical improvement because the claim is directed to ‘a novel technique for ‘optimiz[ing] the utilization of bandwidth constrained links.’”44 Under Step 2A-Prong Two, the Examiner’s rejection failed for “present[ing] insufficient reasoning to show that the claim does not integrate the judicial exception into a practical application by solving a technological problem.45 Similarly, in Ex parte KANNAN, the PTAB concluded that an invention relating to altering the time periods of background processes, such as prefetch or patrol reads, is an improvement to the functioning of solid state storage memory.46 In accordance, the PTAB overturned the findings of the Examiner,47 and the impetus for the reversal was in Step 2A-Prong Two; the PTAB explained that the Examiner only provided conclusory statements failing to explain why the additional elements in combination would not be sufficient.48 Like in Ex parte GUAY, the Examiner did not meet the burden. The PTAB provided similar reasoning in Ex parte ROGAN, finding that an airport airside advertising system that senses and displays an advertisement when an aircraft is detected provided a “specific improvement in a practical application,”49 at least in part because it was more “energy sufficient that previously known systems.”50 This type of argument has been persuasive at the PTAB: Ex parte BAKER, Appeal 2025-003213, App. 17/753,727 (PTAB Aug. 29, 2025) (accelerating iterative training of a neural network by using data calculated in a previous iteration is "an improvement to a technical problem") Ex parte ZHOU, Appeal 2025-000871, App. 17/557,989 (PTAB Aug.21, 2025) (a cloud firewall resource management method that trains a machine learning model on network traffic logs to generate cloud network scaling recommendations is “a technical solution . . . to the problem of determining how to scale firewalls appropriate for the network traffic being observed” because it determines a predicted usage cost and provides a corresponding recommendation) Ex parte JEANNE. Appeal 2025-000119, App. 16/465,637 (PTAB Aug.13, 2025) (a method of gyroscope calibration in an electronic toothbrush that collects sensor data and adjusts the calibration settings “improves the technology for calibrating a gyroscope of a toothbrush”) Ex parte TATAVU, Appeal 2024-002847, App. 16/675,483 (PTAB Jul.10, 2025) (a method of creating a database hierarchy which combines both static and dynamic groups is an "improved method of database management" because it allows a user to retrieve members of both groups in a single query) Ex parte KOGAN, Appeal 2024-004123, App. 16/817,836 (PTAB Jul. 8, 2025) (a method of sensory parameter adjustment that prompts users to apply preconfigured sensory settings is a "specific improvement in the computer technology of modifying user interfaces" because it prevents sensory sensitive users from having to manually update and tune App. settings) Ex parte CIRULIS, Appeal 2024-004139, App. 15/541,787 (PTAB Jul.1, 2025) (a cyclone monitoring apparatus that measures the acoustic noise profile of a cyclone is an improvement in the "technical field of material separation" because it focuses on a specific means that improve the relevant technology "instead of being directed to a result or effect") Ex parte VERNON, Appeal 2024-001628, App. 17/874,874 (PTAB Jun. 02, 2025) (a computer modeling and additive manufacturing system which creates internal lattice formations that conform to the curvature of tubular structures, is an improvement to "a system for creating an internal formation of a tubular structure") Ex parte SENGER, Appeal 2024-000583, App. 17/099,477 (PTAB Mar. 11, 2025) (a mobile App. which facilitates compliance with drug and alcohol recovery is "an improvement in the technical field of patient monitoring and compliance" because it sends rewards to the user's mobile device based on user proximity); Ex parte ROYERE, Appeal 2023-002048, App. 16/634,365 (PTAB Feb. 20, 2025) (a method of operating a nuclear reactor according to the threshold linear power from the relaxing step is an "improvement in the technical field of nuclear reactor operation") Ex parte BEATY, Appeal 2024-000120, App. 16/388,623 (PTAB Feb. 14, 2025) (a biosensor which adjusts its calculation of blood glucose for uncompensated resistance is an improvement in the field of glucose monitoring) Ex parte CAO, Appeal 2024-002159, App. 16/591,239 (PTAB Feb.13, 2025) (a hybrid quantum-classical computer which "splits the linear system to be solved into subsystems that are small enough to be solved by the quantum computer" and then uses the classical computer to complete the linear calculation, enables "noisy quantum computers, which have limited circuit depth, to practically solve linear systems—a technology improvement.") Ex parte PARK, Appeal 2024-000459, App. 16/773,604 (PTAB Feb.20, 2025) (a geophysical prospecting method that estimates residual moveout (RMO) errors by running multiple RMO error picking algorithms and comparing the results is "improved methodology for choosing among multiple [residual moveout (RMO)] error correction techniques" because it improves information quality of a subsurface region) Ex parte DESJARDINS, Appeal 2024-000567, App. 16/319040 (PTAB Sep. 26, 2025) (finding the claim reflects an improvement in training the machine learning itself) Ex parte ANNAU, Appeal 2025-001016, App. 16/240,514 (PTAB Oct. 3, 2025) (“we do agree with Appellant that the ordered combination of the steps in claim 1 does provide a specific process that provides a particular improvement in neural network training – adding dither values during neural network training to improve accuracy when quantized values are used”) Ex parte RAMAMURTI, Appeal 2025-001087, App. 16/663,623, (PTAB Oct. 7, 2025) (“[T]he Specification describes how the specific tree structure recited in the claims allows for de-duplicating parts of strings such that that the number of sub-strings that need to be labeled is reduced. . . Because of that improvement, the abstract idea recited in the claims has been integrated into a practical application”) Ex parte LEI, Appeal 2024-002789, Application 16/744,874 (PTAB Sep. 19, 2025) (Murphy, APJ) (finding that the Examiner’s decision “fail[ed] to acknowledge or credit the claimed creation of a specific type of data packet ‘directed to an improvement of an existing technology’”) Ex parte WHITHAM, Appeal 2025-000785, App. 17/155191 (PTAB Oct. 1, 2025) (“[W]e agree that the step of sending, in real-time, the selected one or more user configuration tasks for presentation on a display screen of a user device for completion while the particular server operation is performed in the background, in order to interleave user configuration tasks with longer-running server operations and reduce the overall time for shop creation, provides an improvement that integrates the abstract idea into a practical application”) Ex parte MCENTEE, Appeal 2025-000171, App. 14,680,391 (PTAB Aug. 18, 2025) (“Under the guidance of USPTO Example 42, we agree with Appellant that the additional elements of claim 1 integrate the abstract idea (such as mental processes) into a practical application.") Ex parte BARRY, Appeal 2024-002203, App. 16/921,595 (PTAB May 19, 2025) (a method which helps avoid self-trading by highlighting trades made within the same company improves user interfaces by displaying information even when in a collapsed view and thus improves the “field of computer user interfaces:) Ex parte MIRZA, Appeal 2024-003559, App. 17/218,757 (PTAB May 7, 2025) (minimizing computer demands through reduced data consumption in a trading system “solves a problem that uniquely arises in the fields of computer technology”) Ex parte NEWMAN, Appeal 2024-002188, App. 16/411,389 (PTAB Jun. 06, 2025) (a blockchain based method of secure data storage that generates a multi-dimensional slidechain is a “technical improvement in secure data storage across a network in a multi-dimensional distributed database” because thousands of contracts can be consumed simultaneously across the multi-dimensional slidechain) Ex parte GROSSMAN, Appeal 2024-003196, App.16/705,140 (PTAB May 19, 2025) (automatically analyzing, comparing, and optimizing workflows through a trained autoencoder to improve efficiency and accuracy overcomes a problem in the field of design workflows) Ex parte LIS, Appeal 2024-002090, App. 13, 952, 866 (PTAB Mar. 24, 2025) (a method of executing trades which handles various communication interfaces, across multiple devices, through a server associated API “is a specific improvement in computer capabilities beyond simply claiming a desirable result”' relying upon Gemalto, PTAB found claim recites “a sufficiently specific implementation” to integrate the abstract idea into a practical application directed to the abstract idea) Ex parte ZHANG, Appeal 2024-001035, App. 12/762,298 (PTAB May 22, 2025) (“Although claim 5 recites a judgment or evaluation by reciting ‘performing a conditional test . . . to determine if the condition for executing the command is met,’ this mental process is integrated into a practical application because claim 5 improves the functioning of a computer or other electronic appliance.”). D. 35 U.S.C. § 101 Step 2B Although occurring in lesser numbers than Step 2A, Step 2B has shown a significant number of § 101 reversals. So far, 5 cases in 2025 were overturned based on these grounds.51 A developing trend in this phase of the § 101 process is the Board’s focus on the failure of the Examiner to support their arguments or delineate what the claim adds to the judicial exception. As a means of illustration, consider Ex parte GRASSADONIA, in which the PTAB determined that the Examiner did not consider “whether the additional elements provide an improvement to authentication techniques.”52 Despite the Examiner alleging that the invention was a fundamental economic practice and abstract concept, the PTAB emphasized that the Examiner’s rejection neglected to explain the invention was well-understood, routine, or conventional.53 In Ex parte NISHIYAMA, the PTAB held that the Examiner’s determination that the invention did not transform the nature of the claim was unfounded.54 The PTAB found under Step 2B that the Examiner failed to demonstrate that the “controller that is configured to control the detector to selectively detect the 2-ethylhexanoic acid from a mixture containing two or more kinds of substance” is well-understood, routine, or conventional.55 Using similar reasoning, the PTAB in Ex parte SUN ruled that there was no indication that the Examiner re-evaluated the combination of additional claims to determine whether the combination should be considered well-understood, routine, or conventional.56 The invention related to a virtual power plant (VPP) that utilized prior energy and reserve market data, past renewable generation and VPP consumption data, and upcoming weather data to optimize its energy delivery through mobile electrical energy storage (MEE).57 The Examiner claimed this was an abstract idea without an inventive concept.58 Nevertheless, the PTAB reversed, finding that the Examiner failed to consider that the control of delivery, charging, and discharging of MEE units in a virtual power plant were not well-understood, routine, or conventional.59 Other cases have followed a similar trend, with the Examiner failing to show the invention was well-understood, routine, or conventional: Ex parte LANFRANCHI, Appeal 2024-001895, App. 16/895,696 (PTAB July 29, 2025) (“Even if, as the Examiner contends, the use and training of deep neural networks with LSTM cells was well-known, the Final Action does not establish that it was well-known, routine, or conventional to train the network in the specific manner claimed. We accordingly conclude that the Examiner has not established that the claims are ineligible under Section 101 and, therefore, do not sustain the rejection.”) Ex parte SULTAN, Appeal 2024-001030, App. 17/106,400 (PTAB Feb. 06, 2025) (“Although the Examiner cites evidence (i.e., the ‘Treadmill reference’) that it was well-known for exercise machines to be automatically adjusted to simulate a hill, for example (see Ans. 5; see also Final Act. 5), the Examiner has not shown that it was well-known, routine, or conventional for exercise machines to receive information via and be controlled by a remote host server. Indeed, the claims require transmitting information via a host server to control an exercise machine, such as by executing a requested competition program. See Claims App. 21 (claim 21), 24 (claim 30, 26-27 (claim 41).”) E. Berkheimer Memorandum Reversals under the Berkheimer memorandum have occurred at a similar frequency to those under Step 2B. At the time of the writing of this article, 5 cases were reversed in 2025 under the Berkheimer memorandum standards.60 One such case is Ex parte DUNJIC.61 There, the invention involved a method and system for completing data transfer with options for desired transfer methods.62 Ultimately, the Board decided to overturn the rejection as the Examiner “[did] not point to any support found in the Specification that evidences the well-understood, routine, and conventional nature of the additional elements, nor [did] the Examiner provide other types of evidence to demonstrate such elements were well-understood, routine, and conventional.”63 In Ex parte SCHEKALL, the PTAB also cited the Berkheimer memorandum as the reason for reversal.64 Examiner did not “adequately support the rejection with the required evidence and explanation.”65 The invention, which is a method for automated savings and matching contributions in employer sponsored savings plans, was initially determined to be directed to an abstract idea, but the burden of evidence was not met, and the PTAB accordingly reversed.66 Examiners have struggled in other § 101 decisions to adequately meet the evidentiary standard established in the Berkheimer memorandum: Ex parte UPADHYE, Appeal 2024-003798, App. 17/067,165 (PTAB June 26, 2025) (“We are not persuaded, on the present record, that the Examiner has provided the evidence required by the Berkheimer Memorandum to support the Examiner’s determination that claim 1 does not recite an inventive concept (i.e., that it is well-understood, routine, and/or conventional to use payment card rails to facilitate communication for a P2P payment between a payment processing system and a sender AHI, as claimed).”) Ex parte MATULA, Appeal 2024-002629, Application 17/115,157 (PTAB Mar. 27, 2025) (“Because the Examiner fails to provide adequate factual findings to comply with the Berkheimer requirement, the Examiner has erred with respect to Step 2B of the Guidance, and we are constrained by the record to reverse the Examiner’s rejection of claims 1–20 on procedural grounds.”) Ex parte SCHMITT, Appeal 2024-001047, Application 17/014,619 (PTAB Mar. 12, 2025) (“Moreover, the references upon which the Examiner relies for evidence to establish that the claims are well-understood, routine and conventional (i.e., Schmidt and Saint-Ramon) are insufficient because neither reference discloses the degree of specificity recited in claim 1.”) IV. Conclusion With the increasing number of PTAB decisions reversing Examiners’ § 101 rejections, it becomes clear that the U.S. Patent Trial and Appeals Board is taking a new approach to patent eligibility. This development is ongoing, and affected parties should continue to monitor the decisions for more clarity on what is to come. V. Table [1] See 2024 Guidance Update on Patent Subject Matter Eligibility, Including on Artificial Intelligence, 89 Fed. Reg. 58128, 58132-58133 (July 17, 2024); 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50, 51-57 (Jan. 7, 2019). [2] MANUAL OF PATENT EXAMINING PROCEDURE § 2106.03 (9th ed., Rev. 01.2024); see also 35 U.S.C. § 101. [3] MPEP § 2106.04. [4] Id. § 2106.05. [5] 89 Fed. Reg. at 58132 (Patent Eligibility Guidance). [6] MPEP, supra note 3, § 2106.04. [7] 2024 Guidance Update on Patent Subject Matter Eligibility, Including on Artificial Intelligence, 89 Fed. Reg. 58128, 58133 (July 17, 2024). [8] MPEP, supra note 3, § 2106.04. [9] Id. [10] Id. [11] Id. [12] Id. [13] MPEP, supra note 3, § 2106.05. [14] United States Patent & Trademark Office, Changes in Examination Procedure Pertaining to Subject Matter Eligibility, Recent Subject Matter Eligibility Decision (Berkheimer v. HP, Inc.), Memorandum, Apr. 19, 2018. [15] Ex parte DUNJIC, Appeal 2024-004133, Application 17/095,024, at 11-12 (PTAB May 21, 2025) (applying the Berkheimer memo to reverse § 101 rejection under Step 2B for lack of evidentiary support by the examiner; quoting Berheimer memo at 3-4). [16] Charles Kim, Reminders on Evaluating Subject Matter Eligibility of Claims Under 35 U.S.C. § 101, U.S. Pat. & Trademark Off. (Aug. 4, 2025), https://www.uspto.gov/sites/default/files/documents/memo-101-20250804.pdf. [17] Ex parte JHA, Appeal 2024-003734, Application 16/937,708 (PTAB Aug. 15, 2025); Ex parte DEV, Appeal 2024-001942, Application 17/682,332 (PTAB June 18, 2025). See infra Table. [18] JHA, Appeal 2024-003734; DEV, Appeal 2024-001942. [19] 500 F.3d 1346 (Fed. Cir. 2007). [20] DEV, Appeal 2024-001942, at 7-8. [21] Ex parte JHA, Appeal 2024-003734, at 5. [22] Id. [23] United States Patent & Trademark Office, Reminders on Evaluating Subject Matter Eligibility of Claims Under 35 U.S.C. 101, Memorandum, Aug. 4, 2025, https://www.uspto.gov/sites/default/files/documents/memo-101-20250804.pdf. [24] Id. at 3. [25] Ex parte SHIMUTA, Appeal 2024-001746, Application 16/278,879, at 5-7 (PTAB June 12, 2025). [26] Id. at 5-6 (emphasis added). [27] See Id. at 5-7. [28] SHIMUTA, Appeal 2024-001746; Ex parte CAJIAS, Appeal 2024-003198, Application 16/664,452 (PTAB Sep. 12, 2025); Ex parte LAM, Appeal 2024-001647, Application 16/429,8201 (PTAB Apr. 1, 2025); Ex parte GALLAGHER, Appeal 2024-003776, Application 16/837,854 (PTAB Feb. 13, 2025); Ex parte LALOI, Appeal 2025-001442, App. 16/689,999 (PTAB Sep. 23, 2025); Ex parte BLACKLEY, Appeal 2025-00150, App. 17/499,176 (PTAB Sep. 19, 2025); Ex parte LAURENT, Appeal 2024-000085, App. 16/473,945 (PTAB June 3, 2025); Ex parte JAFFE, Appeal 2024-003423, App. 16/651,737 (PTAB July 29, 2025). See infra Table. [29] CAJIAS, Appeal 2024-003198, at 11. [30] Id. at 2. [31] Id. at 9. [32] See 2024 Guidance Update, supra note 7, 58134-5138. [33] Ex parte LAM, Appeal 2024-001647, Application 16/429,8201, at 6-10 (PTAB Apr. 1, 2025). [34] Id. at 8-11. [35] Ex parte GALLAGHER, Appeal 2024-003776, Application 16/837,854, at 8 (PTAB Feb. 13, 2025). [36] Id. [37] Ex parte LALOI, Appeal 2025-001442, App. 16/689,999, at 5-8 (PTAB Sep. 23, 2025). [38] Ex parte BLACKLEY, Appeal 2025-00150, App. 17/499,176, at 11-18 (PTAB Sep. 19, 2025). [39] Ex parte LAURENT, Appeal 2024-000085, App. 16/473,945, at 3-6 (PTAB June 3, 2025). [40] Ex parte JAFFE, Appeal 2024-003423, App. 16/651,737, at 2-10 (PTAB July 29, 2025). [41] Ex parte GUAY, Appeal 2024-001513, Application 16/948,938, (PTAB Apr. 8, 2025); Ex parte KANNAN, Appeal 2025-000613, App. 17/233,174 (PTAB Sep. 22, 2025); Ex parte ROGAN, Appeal 2024-001619, App. 17/786,116 (PTAB June 6, 2025); Ex parte BAKER, Appeal 2025-003213, App. 17/753,727 (PTAB Aug. 29, 2025); Ex parte ZHOU, Appeal 2025-000871, App. 17/557,989 (PTAB Aug.21, 2025); Ex parte JEANNE. Appeal 2025-000119, App. 16/465,637 (PTAB Aug.13, 2025); Ex parte TATAVU, Appeal 2024-002847, App. 16/675,483 (PTAB Jul.10, 2025); Ex parte KOGAN , Appeal 2024-004123, App. 16/817,836 (PTAB Jul. 8, 2025); Ex parte CIRULIS, Appeal 2024-004139, App. 15/541,787 (PTAB Jul.1, 2025); Ex parte VERNON, Appeal 2024-001628, App. 17/874,874 (PTAB Jun. 02, 2025); Ex parte SENGER, Appeal 2024-000583, App. 17/099,477 (PTAB Mar. 11, 2025); Ex parte ROYERE, Appeal 2023-002048, App. 16/634,365 (PTAB Feb. 20, 2025); Ex parte BEATY, Appeal 2024-000120, App. 16/388,623 (PTAB Feb. 14, 2025); Ex parte CAO, Appeal 2024-002159, App. 16/591,239 (PTAB Feb.13, 2025); Ex parte PARK, Appeal 2024-000459, App. 16/773,604 (PTAB Feb.20, 2025); Ex parte DESJARDINS, Appeal 2024-000567, App. 16/319040 (PTAB Sep. 26, 2025); Ex parte ANNAU, Appeal 2025-001016, App. 16/240,514 (PTAB Oct. 3, 2025); Ex parte RAMAMURTI, Appeal 2025-001087, App. 16/663,623, (PTAB Oct. 7, 2025); Ex parte LEI, Appeal 2024-002789, Application 16/744,874 (PTAB Sep. 19, 2025); Ex parte WHITHAM, Appeal 2025-000785, App. 17/155191 (PTAB Oct. 1, 2025); Ex parte MCENTEE, Appeal 2025-000171, App. 14,680,391 (PTAB Aug. 18, 2025); Ex parte BARRY, Appeal 2024-002203, App. 16/921,595 (PTAB May 19, 2025); Ex parte MIRZA, Appeal 2024-003559, App. 17/218,757 (PTAB May 7, 2025); Ex parte NEWMAN, Appeal 2024-002188, App. 16/411,389 (PTAB Jun. 06, 2025); Ex parte GROSSMAN, Appeal 2024-003196, App. 16/705,140 (PTAB May 19, 2025); Ex parte LIS, Appeal 2024-002090, App.. 13, 952, 866 (PTAB Mar. 24, 2025); Ex parte ZHANG, Appeal 2024-001035, App. 12/762,298 (PTAB May 22, 2025). See infra Table. [42] See 2024 Guidance Update, supra note 7, 58134-58138. [43] GUAY, Appeal 2024-001513, at 2-4. [44] Id. at 8-10. [45] Id. at 9. [46] Ex parte KANNAN, Appeal 2025-000613, App. 17/233,174, at 12-13 (PTAB Sep. 22, 2025). [47] Id. at 11-13. [48] Id. at 12-13. [49] Ex parte ROGAN, Appeal 2024-001619, App. 17/786,116, at 8-10 (PTAB June 6, 2025). [50] Id. at 9-10. [51] Ex parte NISHIYAMA, Appeal 2023-003152, Application 16/575,967 (PTAB Feb. 3, 2025); Ex parte SUN, Appeal 2025-000099, App. 16/822,592 (PTAB Sep. 2, 2025); Ex parte LANFRANCHI, Appeal 2024-001895, App. 16/895,696 (PTAB July 29, 2025); Ex parte SULTAN, Appeal 2024-001030, App. 17/106,400 (PTAB Feb. 06, 2025); Ex parte GRASSADONIA, Appeal 2025-003211, Application 18/132,662, at 15 (PTAB Sep. 17, 2025). [52] GRASSADONIA, Appeal 2025-003211, at 15. See infra Table. [53] Id. [54] NISHIYAMA, Appeal 2023-003152, at 9-12. [55] Id. [56] Ex parte SUN, Appeal 2025-000099, App. 16/822,592, at 4-14 (PTAB Sep. 2, 2025). [57] Id. at 1-3. [58] Id. at 4-5, 9-10. [59] Id. at 13-14. [60] Ex parte UPADHYE, Appeal 2024-003798, App. 17/067,165 (PTAB June 26, 2025); Ex parte DUNJIC, Appeal 2024-004133, App. 17/095,024 (PTAB May 21, 2025); Ex parte SCHEKALL, Appeal 2024-002289, App. 17/085,322 (PTAB May 1, 2025); Ex parte MATULA, Appeal 2024-002629, App. 17/115,157 (PTAB Mar. 27, 2025); Ex parte SCHMITT, Appeal 2024-001047, App. 17/014,619 (PTAB Mar. 12, 2025). See infra Table. [61] DUNJIC, Appeal 2024-004133, at 13. [62] Id. at 2-4. [63] Id. at 12. [64] SCHEKALL, Appeal 2024-002289, at 11-13. [65] Id. [66] Id. at 2-5, 9-13.
TAKEAWAY No. 1: The PTAB is more critical of unreasonably broad claim constructions being used to assert a claim covers non-transitory signals.
TAKEAWAY No. 2: A claim does not recite a mental step just because it performs a calculation if the calculation could not be practically performed entirely in the human mind.
TAKEAWAY No. 3: Examiners can conclude that claims are eligible in Step 2A-Prong Two by finding that a claim reflects an improvement to the functioning of a computer or to another technology or technical field.
TAKEAWAY No. 4: The Examiner must show whether the elements, or a combination of elements, of an invention are well-understood, routine, or conventional.
TAKEAWAY No. 5: The PTAB is reversing rejections not supported by at least one of the four methods provided in the Berkheimer memorandum.
2025 § 101 Reversals
Step 1
Ex parte JHA, Appeal 2024-003734, App. 16/937,708 (PTAB Aug. 15, 2025) Ex parte DEV, Appeal 2024-001942, App. 17/682,332 (PTAB June 18, 2025)
Step 2A, Prong One
Ex parte SHIMUTA, Appeal 2024-001746, App. 16/278,879 (PTAB June 12, 2025) Ex parte CAJIAS, Appeal 2024-003198, App. 16/664,452 (PTAB Sep. 12, 2025) Ex parte LAM, Appeal 2024-001647, App. 16/429,8201 (PTAB Apr. 1, 2025) Ex parte GALLAGHER, Appeal 2024-003776, App. 16/837,854 (PTAB Feb. 13, 2025) Ex parte LALOI, Appeal 2025-001442, App. 16/689,999 (PTAB Sep. 23, 2025) Ex parte BLACKLEY, Appeal 2025-00150, App. 17/499,176 (PTAB Sep. 19, 2025) Ex parte LAURENT, Appeal 2024-000085, App. 16/473,945 (PTAB June 3, 2025) Ex parte JAFFE, Appeal 2024-003423, App. 16/651,737 (PTAB July 29, 2025)
Step 2A, Prong Two
Ex parte GUAY, Appeal 2024-001513, App. 16/948,938, (PTAB Apr. 8, 2025) Ex parte KANNAN, Appeal 2025-000613, App. 17/233,174 (PTAB Sep. 22, 2025) Ex parte ROGAN, Appeal 2024-001619, App. 17/786,116 (PTAB Jun.06, 2025) Ex parte BAKER, Appeal 2025-003213, App. 17/753,727 (PTAB Aug. 29, 2025) Ex parte ZHOU, Appeal 2025-000871, App. 17/557,989 (PTAB Aug.21, 2025) Ex parte JEANNE. Appeal 2025-000119, App. 16/465,637 (PTAB Aug.13, 2025) Ex parte TATAVU, Appeal 2024-002847, App. 16/675,483 (PTAB Jul.10, 2025) Ex parte KOGAN , Appeal 2024-004123, App. 16/817,836 (PTAB Jul. 8, 2025) Ex parte CIRULIS, Appeal 2024-004139, App. 15/541,787 (PTAB Jul.1, 2025) Ex parte VERNON, Appeal 2024-001628, App. 17/874,874 (PTAB Jun. 02, 2025) Ex parte SENGER, Appeal 2024-000583, App. 17/099,477 (PTAB Mar. 11, 2025) Ex parte ROYERE, Appeal 2023-002048, App. 16/634,365 (PTAB Feb. 20, 2025) Ex parte BEATY, Appeal 2024-000120, App. 16/388,623 (PTAB Feb. 14, 2025) Ex parte CAO, Appeal 2024-002159, App. 16/591,239 (PTAB Feb.13, 2025) Ex parte PARK, Appeal 2024-000459, App. 16/773,604 (PTAB Feb.20, 2025) Ex parte DESJARDINS, Appeal 2024-000567, App. 16/319040 (PTAB Sep. 26, 2025) Ex parte ANNAU, Appeal 2025-001016, App. 16/240,514 (PTAB Oct. 3, 2025) Ex parte RAMAMURTI, Appeal 2025-001087, App. 16/663,623, (PTAB Oct. 7, 2025) Ex parte LEI, Appeal 2024-002789, App. 16/744,874 (PTAB Sep. 19, 2025) Ex parte WHITHAM, Appeal 2025-000785, App. 17/155191 (PTAB Oct. 1, 2025) Ex parte MCENTEE, Appeal 2025-000171, App. 14,680,391 (PTAB Aug. 18, 2025) Ex parte BARRY, Appeal 2024-002203, App. 16/921,595 (PTAB May 19, 2025) Ex parte MIRZA, Appeal 2024-003559, App. 17/218,757 (PTAB May 7, 2025) Ex parte NEWMAN, Appeal 2024-002188, App. 16/411,389 (PTAB Jun. 06, 2025) Ex parte GROSSMAN, Appeal 2024-003196, App.16/705,140 (PTAB May 19, 2025) Ex parte LIS, Appeal2024-002090, App. 13, 952, 866 (PTAB Mar. 24, 2025) Ex parte ZHANG, Appeal 2024-001035, App. 12/762,298 (PTAB May 22, 2025)
Step 2B
Ex parte NISHIYAMA,Appeal 2023-003152, App. 16/575,967 (PTAB Feb. 3, 2025) Ex parte SUN, Appeal 2025-000099, App. 16/822,592 (PTAB Sep. 2, 2025) Ex parte LANFRANCHI, Appeal 2024-001895, App. 16/895,696 (PTAB July 29, 2025) Ex parte SULTAN, Appeal 2024-001030, App. 17/106,400 (PTAB Feb. 06, 2025) Ex parte GRASSADONIA, 2025-003211, App. 18/132,662, at 15 (PTAB Sep. 17, 2025)
Berkheimer Memorandum
Ex parte DUNJIC, Appeal 2024-004133, App. 17/095,024 (PTAB May 21, 2025) Ex parte UPADHYE, Appeal 2024-003798, App. 17/067,165 (PTAB June 26, 2025) Ex parte MATULA, Appeal 2024-002629, App. 17/115,157 (PTAB Mar. 27, 2025) Ex parte SCHEKALL, Appeal 2024-002289, App. 17/085,322 (PTAB May 1, 2025) Ex parte SCHMITT, Appeal 2024-001047, App. 17/014,619 (PTAB Mar. 12, 2025)
When Licensing Meets Trade Dress: The Big League Chew Shredded Chewing Gum Case Through the Eyes of a Licensor By: Giselle Ayala1
Licensing is a powerful commercial tool that allows intellectual property (“IP”) owners to expand their market reach without surrendering their IP ownership rights.2 Through a well-drafted license agreement, a brand owner can leverage another company’s manufacturing, distribution, or marketing infrastructure to reach new consumers while maintaining control over the quality and presentation of the product.3 This structure also creates an efficient way to monetize intangible assets: instead of incurring production or marketing expenses, the licensor earns royalties based on the licensee’s sales, generating a steady revenue stream while keeping its intellectual property portfolio intact.4 For licensees, the arrangement provides access to an established brand identity, saving years of investment in developing consumer recognition.5 That said, even the most promising licensing deal can backfire if the licensor misunderstands the scope of its intellectual property rights or neglects to protect them. Problems can also arise when the language of the licensing agreement is imprecise or fails to reflect the licensor’s interests and ownership rights. In the context of trade dress, this becomes even more delicate: the visual identity of a product may be central to its value yet easily compromised by unclear drafting or casual communications between licensor and licensee. The licensor must ensure that the agreement clearly defines what is being licensed and includes provisions that safeguard its trade dress and the goodwill it represents. The ongoing Big League Chew case6 offers a compelling illustration of these dynamics. What began as a long-standing and seemingly successful licensing relationship eventually turned into a dispute over trade dress ownership and control. The case highlights how the interaction between contract language and intellectual property protection can become a source of conflict, particularly when the visual identity of a product—the very element that consumers associate with the brand—lies at the center of the disagreement. The purpose of this article is not to reach definitive legal conclusions but rather to share some reflections and insights into the Big League Chew case—which, in fact, involves multiple related cases—and to consider the key legal issues that may influence their outcome. I. The parties and their contractual story Big League Chew Properties LLC and Ford Gum & Machine Company Inc. share a long business history centered on the iconic “Big League Chew” bubble gum (the “BLC gum”) a product that blends nostalgia, sports culture, and distinctive packaging. The idea of shredded bubble gum came to life in the late 1970s, and the iconic BLC gum was officially launched in 1980 by Rob Nelson, a former baseball player. Nelson’s concept was simple but clever: to offer players and fans a fun, harmless alternative to chewing tobacco.7 That idea inspired the gum’s distinctive form — shredded pieces resembling the loose tobacco traditionally chewed by baseball players, a habit many considered part of the sport’s “cool”8 culture. From the start, the product was an instant hit, capturing the spirit of baseball while appealing to both children and adults.9 More than forty years later, Big League Chew remains a nostalgic and enduring favorite among bubble gum consumers. During those decades, over one billion pouches of the BLC gum have been sold.10 Figure 1. The BLC gum11 Regarding the IP related to the BLC gum, the Big League Chew trademarks were originally created by Rob Nelson in 1979. Nelson partnered with Jim Bouton, a former New York Yankees player, to pitch the idea to different companies, and eventually partnered with Amurol Confections Company.12 Initially, the trademarks and intellectual property associated to the BLC gum were jointly owned by Nelson and Bouton through The Jim Bouton Corporation. The “BIG LEAGUE CHEW” trademark for chewing gum (Serial No. 73219786) was registered on October 18, 1983, initially under Jim Bouton, though jointly owned by Bouton and Rob Nelson.13 In 1999, The Jim Bouton Corporation sold the Big League Chew intellectual property to The Big League Company.14 The rights were transferred to The Rob Nelson Company (“TRNC “)15 in 2003 and later, in 2014, to Big League Chew Properties, LLC (“BLCP”), the current owner.16 Throughout this history, the trademarks and trade dress have been exclusively owned and controlled by Nelson or his authorized companies, with no ownership rights granted to any licensees, including Ford Gum. In 2010, TRNC, as the licensor, entered into a License Agreement with Ford Gum & Machine Company, Inc. (“Ford Gum”), granting Ford Gum the exclusive right to manufacture, market, distribute and sell the BLC gum.17 Since 2010, the parties have made three amendments to the original agreement.18 These amendments reflect the evolving business relationship between the parties while maintaining the core licensing arrangement. The clarity—or lack thereof—in that agreement later became central to the dispute. II. The conflict The dispute arose when questions surfaced regarding the ownership and continued use of the trade dress associated with the BLC gum. In May 2022, Ford Gum was acquired by Chaver Capital Partners and Greyrock Capital Group. Following the acquisition, Ford Gum began extending purchase offers to acquire ownership of BLCP’s trademarks and related intellectual property. According to court filings, several offers were made, but none were accepted by BLCP or by Rob Nelson. By early 2024, the parties appeared to continue their business relationship without interruption. However, in March 2024, Ford Gum notified BLCP of a third party, Smackin' Snacks LLC (“Smackin”), allegedly infringing on the trade dress of the shredded BLC gum. When BLC did not immediately pursue enforcement action, Ford Gum’s CEO, Scott Lerner, proposed a plan to address the infringement. On March 26, 2024, Lerner emailed Rob Nelson stating: “Considering the recent discovery of a potential competitive product to Big League Chew, Ford Gum would like to file for a trade dress on the product form of ‘shredded gum.’ Once we due [sic] this we would like to send a cease-and-desist letter to Hilco. I am seeking your approval for us to take this action on behalf of Ford Gum. If you want to discuss this live, I might suggest we set up a call for next week. Thanks.”19 On the same day Rob Nelson replied: “Scott—excellent idea. I approve.”20 Ford Gum characterizes this exchange as the “March 2024 Agreement,” arguing that it constituted a valid and enforceable contract transferring ownership of the shredded gum trade dress in the BLC gum to Ford Gum. Ford Gum contends that the terms were sufficiently clear: Ford Gum would own, register, and enforce the trade dress at its own expense. To bolster its claim, Ford Gum points to Nelson’s approval in the email and to a subsequent text message from September 2024, which they assert confirmed the parties’ intent. On April 1, 2024, Ford Gum filed a trade dress application before the USPTO seeking registration of the trade dress associated with the BLC gum under Section 1(a) of the Lanham Act, alleging use in commerce.21 Around the same time, Ford Gum also initiated litigation against Smackin’ in the US District Court for the Central District of California. On November 18, 2024, BLCP filed a complaint against Ford Gum in the Northern District of Illinois, adding another layer to the dispute. To challenge Ford Gum’s trade dress application, BLCP later filed a notice of opposition to Ford Gum’s trade dress application, followed by Smackin’s own opposition on May 30, 2025. Both opposition proceedings were suspended pending resolution of the related litigations.22 In Big League Chew Properties LLC v. Ford Gum & Machine Company Inc., both parties sought early judicial relief, each filing a motion for preliminary injunction (“PI”), which underscores the significance of the trade dress at issue. The Court referred the matter to Magistrate Judge McShain, who recommended denying both motions, finding that neither party demonstrated a likelihood of success on the merits. For BCLP, the Magistrate concluded that while it established ownership of the shredded gum trade dress through continuous use since 1979, it failed to show that Ford Gum’s filing of a trade dress registration application constituted an infringing “use in commerce.”23 Additionally, the Magistrate found that BCLP did not sufficiently demonstrate that Ford Gum breached the License Agreement, as the shredded gum configuration was not explicitly included in the agreement’s definitions of “Trademarks” or “Trade Dress.” For Ford Gum, the Magistrate rejected the argument that the March 26, 2024, email exchange constituted a valid and enforceable contract transferring ownership of the shredded gum trade dress to Ford Gum. The Magistrate found that the email lacked definite and material terms, such as consideration and the transfer of goodwill associated with the trade dress, which are essential for a valid assignment of trademark rights.24 The Court ultimately denied both motions for preliminary injunctions, concluding that neither party met the burden of showing entitlement to such extraordinary relief. In Ford Gum & Machine Company, Inc. v. Smackin’ Snacks LLC et al.,25 Ford Gum accused Smackin’ and its co-founders of copying its well-known shredded gum design, on the market since 1979. Around the same time, BLCP filed its own claims, asserting that Smackin’ deliberately imitated its distinctive “Shredded Gum Trade Dress” to capitalize on its goodwill. Both actions raise allegations of trade dress infringement and unfair competition under the Lanham Act. III. Inside the dispute: what licensors can learn so far Now that we have a general understanding of the case, let’s turn to some reflections particularly relevant to licensors. You might be wondering why we have gone through the entire procedural background instead of jumping directly to the key takeaways. The answer is simple: in a licensing agreement, as in any other business relationship, the context and history between the parties are just as important as the written terms of the deal, the IP assets at issue, or the deal execution. No reflection would be complete without understanding the controversy surrounding the trade dress associated with the BLC gum. A. Regarding trade dress protection Trade dress is a distinctive form of IP within the broader realm of trademarks. It refers to the unique presentation of a product or service — its packaging, design, or overall appearance — when it serves as a source identifier in the minds of consumers. Trade dress rights arise through consistent use and public recognition, not merely from creative intent or design alone. However, unlike traditional trademarks, trade dress protection has not always been recognized,26 and the body of law governing it remains less developed.27 This alone brings added complexity for licensors who seek to protect a specific product configuration or packaging. Under Section 43 of the Lanham Act,28 Courts have recognized the protection of trade dress.29 In the case of the BLC gum, the trade dress at issue is the shredded form of the BLC gum, which according to BLCP has characterized their product for more than 40 years.30 However, the unique design of a product is not enough to make it legally protectable. A claimed trade dress must be both distinctive and nonfunctional. For purposes of this article, we will focus only on the distinctiveness requirement. Trade dress protection requires distinctiveness. This means that the trade dress owner must clearly and specifically identify the unique design features that distinguish the product. A broad or generalized description will rarely suffice. Turning to the Big League Chew litigation, BLCP’s shredded chewing gum design had not, until now, been the subject of any formal legal challenge. This case has brought the product’s configuration to the forefront of critical questions concerning the scope of trade dress protection. For licensors, this case illustrates the challenges that can arise from the protection of trade dress, particularly when it involves a product configuration rather than traditional packaging or labeling. i. Distinctiveness determination At the heart of trade dress protection lies the question of distinctiveness—the ability of a product’s overall appearance to signal its source to consumers. Regarding product configuration, this inquiry is particularly complex, as design elements often serve both aesthetic and functional purposes. Therefore, courts and the USPTO require a trade dress claimant to show that the product’s design is not merely ornamental. In the United States, distinctiveness can be established in two ways: through inherent distinctiveness or by acquiring distinctiveness over time (secondary meaning). These doctrines—though conceptually related—carry different evidentiary burdens and have produced divergent approaches among the circuits. In the Big League Chew litigation, the central issue will likely turn on which form of distinctiveness, if any, can be established for BLCP’s shredded chewing gum. ii. Inherent distinctiveness One of the primary challenges in establishing distinctiveness for product configuration31 is that, as courts have observed, “product designs are more likely to be seen merely as utilitarian or ornamental aspects of the goods. […] Product designs are therefore not ordinarily considered inherently distinctive and are thus normally protected only upon proof of secondary meaning.”32 This judicial skepticism reflects the tension between protecting creativity in design and preventing monopolization of functional or aesthetic product features. In this context, federal circuits remain divided over the appropriate test for inherent distinctiveness. The Second Circuit focuses on whether a particular product configuration is likely to serve primarily as an indicator of origin.33 The Eleventh Circuit, by contrast, applies a four-factor analysis considering: (1) whether the design is a “common” or basic shape or design; (2) whether it is unique or unusual within the relevant field; (3) whether it constitutes a well-known form of ornamentation for that class of goods; and (4) whether it is capable of creating a commercial impression distinct from the product itself.34 The Third Circuit has adopted a three-part test examining whether the design is (1) “unusual and memorable,” (2) “conceptually separable” from the product, and (3) “likely to serve primarily as a designator of origin.”35 In the Big League Chew litigation, the approaches of the Ninth and Seventh Circuits are likely to be most relevant. Therefore, whether BLCP can establish inherent distinctiveness for its shredded bubble gum configuration remains to be seen, but the outcome will likely turn on how the court characterizes the BLC gum design. Because courts rarely find product configurations to be inherently distinctive, most claimants—including BLCP in the Big League Chew litigation—should instead rely on evidence of acquired distinctiveness, demonstrating that consumers have come to associate the design with a single commercial source. iii. Acquired distinctiveness If a trade dress claimant cannot establish inherent distinctiveness, it may still obtain trade dress protection by proving acquired distinctiveness, also known as “secondary meaning.” Generally, a trade dress claimant may present a range of evidence to show that its product configuration has acquired secondary meaning, including consumer testimony, survey evidence, advertising expenditures, and evidence related to the length and exclusivity of use in commerce. Consumer testimony. Offering consumer testimony can be more challenging than it initially appears. Courts generally give little weight to testimony from a claimant’s own employees or agents,36 industry insiders, or experts retained by counsel. Likewise, affidavits prepared for litigation and statements from a limited number of consumers are often deemed insufficient,37 as they fail to reflect the perception of the broader consuming public regarding the product configuration as an indicator of source. In the Big League Chew case, it remains unclear whether BLCP will present consumer testimony, as the parties have not yet entered the discovery phase of the litigation. However, it is possible that such evidence will be introduced, given BLCP’s repeated emphasis on the iconic status and long-standing recognition of its shredded bubble gum, which has been on the market for more than forty years. Survey evidence. Survey evidence can significantly strengthen a trade dress claimant’s case—provided that the survey follows an “accepted methodology.” The challenge, of course, lies in determining what qualifies as accepted. Surveys that target the relevant consumer group, clearly distinguish between pertinent and irrelevant stimuli, and successfully link the trade dress to a specific commercial source are most likely to be considered reliable and persuasive.38 At this early stage of the Big League Chew litigation, there is insufficient information to know whether survey evidence will play a role. That said, licensors should view the case as a powerful reminder that, regardless of how well-established a product may be in the marketplace, conducting consumer surveys to measure recognition and source association can prove invaluable if trade dress rights in the product design are ever challenged. Advertising expenditures and the nature of advertising. The nature and scale of advertising can be critical when defending the validity of an alleged trade dress, particularly in establishing secondary meaning for a product configuration. However, not all types of advertising have the same probative value. Courts and the TTAB have mostly focused on “look-for” advertising, which is advertising that consistently emphasizes the feature sought to be protected. Furthermore, it is not enough that the advertising featuring the product’s design has made the product popular. To be probative of secondary meaning, such advertising must function as a channel through which the trade dress itself operates as a commercial source identifier. In TBL Licensing, LLC v. Vidal,40 the claimant argued that its advertising highlighting certain features of its boots supported a finding of secondary meaning in the product’s configuration. The court, however, found that the claimant had not presented evidence of “look-for” advertising explicitly directing consumers to identify the product by the specific design features comprising the alleged trade dress,41 i.e., where the primary goal is to emphasize the design over the brand name42 so that, the public recognizes the trade dress as emanating from claimant.43 Figure 2. INTA44 In the Big League Chew case, both BLCP and Ford Gum—who are defending the trade dress associated with the shredded BLC gum—have preliminarily offered advertising evidence in the complaint against Smackin’. The pleadings include several examples of promotional materials and social media posts45 depicting the shredded gum as presented to the public. However, it remains uncertain whether this type of publicity will qualify as effective “look-for” advertising in the eyes of the court. Notably, the product’s shredded form appears as the focal point in several images, and Ford Gum included comparative visuals of other chewing gum products to emphasize the distinctiveness of the Big League Chew design.46 Figure 3. PACER47 Also, although BLCP has prominently featured its product configuration in advertising materials, many of these pieces also include labeling and packaging displaying the “BIG LEAGUE CHEW” trademark. This joint use of the product configuration and the word mark could undermine a claim of trade dress distinctiveness. The court may question how strongly the product design itself functions as a source identifier in the minds of consumers, if it has consistently appeared in conjunction with the “BIG LEAGUE CHEW” mark.48 For licensors, this serves as a valuable reminder that not all advertising automatically strengthens trade dress claims. To be persuasive, marketing efforts should intentionally highlight the distinctive elements of the product’s configuration and explicitly invite consumers to associate those features with a single commercial source. In litigation, such “look-for” advertising can often make the difference between a design that is merely recognizable and one that is legally protectable. The length of use of the trade dress Evidence of long-term use of a trade dress can also support a claim of secondary meaning, particularly if the use has been exclusive. Courts may consider the duration of use as a factor in determining whether the trade dress has acquired distinctiveness. For example, continuous use for five years49 may be accepted as evidence of distinctiveness in some cases, such as in ex parte examinations by the Patent and Trademark Office. However, if the use has not been exclusive, the strength of this evidence may be diminished. In the Big League Chew case, the length of use will likely support BLCP’s claim of trade dress ownership, as the company has already showed evidence of its continuous use of the shredded bubble gum configuration since 1979. A challenge, however, may arise from a potential argument by Smackin’ that such use has not been exclusive, given that it has been shared with Ford Gum. Although this overlap could be explained by the existence of a licensing agreement, any counterclaim by Ford Gum suggesting that BLCP transferred or abandoned its trade dress rights could weaken BLCP’s position. Additionally, at least two other companies have marketed shredded chewing gum or shredded candy products. One example is Just Born, Inc., which introduced a product called “SHREDDERS” under its Mike and Ike brand around 2015. Although the product was later discontinued, its presence in the marketplace could nonetheless be used to challenge BLCP’s claim of exclusive use of the shredded product configuration. Figure 4. Facebook.50 Additionally, the Kraft Foods Company LLC currently sells, through an exclusive distributor, a shredded chewing gum product known as “SHRED HEADZ”, whose configuration closely resembles that of Big League Chew. The existence of a competing product with a similar appearance could further complicate BLCP’s claim of distinctiveness and exclusive use, particularly if consumers perceive both products as variations of a common design rather than as indicators of separate commercial sources. Figure 5. http://hilcousa.com51 Figure 6. TikTok52 Widespread copying or competing use by others can weigh heavily against a finding of secondary meaning, as it undermines the exclusivity that trade dress protection is meant to reward. Courts often view this kind of marketplace overlap as evidence that the design serves a primarily aesthetic or functional role rather than a source-identifying one.53 For licensors, such competing use not only weakens the evidentiary foundation for secondary meaning but also highlights the importance of early enforcement and consistent brand presentation to preserve the distinctiveness of their trade dress. The effect of federal registration of trade use As we have discussed already, what qualifies as sufficiently distinctive to warrant trade dress protection for a product configuration remains unsettled. Depending on the forum, the burden of proof may shift, particularly in federal court, where circuit courts have adopted differing approaches to distinctiveness.54 This uncertainty reinforces the value of obtaining federal registration, which offers both procedural and evidentiary advantages to trade dress owners and licensors. In the context of a trade dress application, if a product design is deemed sufficiently distinctive, the USPTO will grant registration. Such registration places the trade dress owner or licensor in a stronger position to defend the mark against unauthorized use and strengthens its position in litigation.55 Federal registration on the Principal Register provides significant benefits: it serves as prima facie evidence of validity, ownership, and the exclusive right to use the trade dress in commerce.56 This also creates a presumption of distinctiveness and non-functionality that can be invoked in infringement actions.57 Further, after five years of continuous use and compliance with statutory requirements, the registration may achieve “incontestable” status.58 That said, incontestability does not make the protection of trade dress immune to all challenges,59 one of those possible challenges is that trade dress has been abandoned. That said, abandonment requires continuous non-use for three years.60 For trade dress claimants without federal registration, the situation is different because their burden of proof is considerably higher. This means that a trade dress claimant, who faces litigation and has not registered before the USPTO, must affirmatively establish that its trade dress is distinctive, non-functional, and has been consistently used in commerce. By contrast, claimants with a trade dress registration benefit from a presumption of validity, which shifts the burden of proof to the defendant to rebut distinctiveness or non-functionality. This evidentiary advantage makes federal registration a powerful tool in trade dress protection and enforcement. In the Big League Chew litigation, the court may view BLCP’s failure to pursue federal registration as a relevant—though not dispositive—factor in evaluating the strength and protectability of its shredded bubble gum configuration. Without the presumption of validity that registration affords, BLCP will likely need to rely on extensive evidence of distinctiveness, non-functionality, and consumer recognition to sustain its claim. For IP licensors, this case underscores the strategic importance of proactively securing trade dress rights. Registration not only strengthens a licensor’s enforcement position but also mitigates uncertainty in future disputes where questions of ownership and distinctiveness are likely to arise. B. Lessons related to licensing agreements Licensing is one of the most powerful tools trade dress owners can implement to monetize their rights.61 However, a licensing agreement is not a mere formality, it is a strategic document that determines not only the commercial exploitation of the trade dress but also the scope of its protection. The Big League Chew case illustrates how the omission or imprecision of certain terms can give rise to complex legal questions. i. Licensing agreements must be strategically drafted and revised periodically The first lesson emerging from the Big League Chew case is that licensing agreements must be drafted strategically and revisited periodically. A licensing agreement is not static; it is a living document62 that should evolve alongside the product, the market, and the relationship between the parties. Here, BLCP first entered into a licensing agreement with Ford Gum in 2010. Although this arrangement appears to have served both parties well for many years, the facts suggest that circumstances changed significantly once Ford Gum’s ownership shifted, in 2022. While the precise details of the parties’ relationship remain unclear, these facts underscore that when a licensee undergoes a change in ownership or control, the licensor should proactively reassess whether the parties’ expectations remain aligned. Ensuring that the new corporate entity is a suitable and compatible partner is essential to maintaining the integrity and viability of the licensing relationship. Further, in the case at hand, the licensing agreement63 appears to have been drafted with BLCP’s interests in mind, but it contains no provision addressing potential changes in the licensee’s ownership or management. Including a clause of this nature—at minimum, one requiring a review or renegotiation of the agreement upon such changes—could have proven beneficial if properly implemented. Of course, this observation is made in hindsight. Nonetheless, in light of the facts in the Big League Chew case, this omission underscores an important lesson for licensors: the need to anticipate and plan for structural or managerial changes that may affect the licensing relationship. ii. The importance of defining the intellectual property licensed The second key point concerns the definition of the licensed intellectual property. In theory, a license should clearly identify what is being licensed. In practice, however, many agreements rely on boilerplate language such as “all intellectual property related to the product.” Others, like the one at issue in the Big League Chew case, fail to adequately encompass all relevant IP assets. As we have seen, trade dress, particularly product configuration, is not synonymous with trademark, even though both are protected under the Lanham Act. Trade dress encompasses the total image of a product, its shape, configuration, color, and design, the sum of features that serve as source indicators. Further, unlike trademarks, trade dress protection often depends on secondary meaning.64 Therefore, when a license omits explicit reference to trade dress, courts may be reluctant to infer its inclusion. In the Big League Chew licensing agreement, the licensed property was defined primarily in terms of trademarks and associated goodwill.65 The product’s distinctive configuration—shredded bubble gum—was not expressly included. Absent a specific reference to trade dress, Ford Gum has argued that the product configuration of Big League Chew gum was not covered by the agreement. This conclusion appears to have been preliminarily accepted by the Court, as it formed part of the rationale for denying BLCP’s request for a PI. Additionally, this omission raises important questions. Why did the agreement fail to reference the BLC gum product configuration? Was this an oversight, or a strategic decision to limit the scope of the license? Either possibility carries significant implications. If unintentional, it reflects a failure to secure a valuable intellectual property asset. If deliberate, it suggests that the BLCP underestimated the commercial importance of its product’s design. Finally, defining the scope of the license serves the interests of both parties. For the licensor, it preserves ownership, prevents dilution, and limits unauthorized expansion. For the licensee, it clarifies the boundaries of permissible use and reduces the risk of inadvertent infringement. Ambiguity benefits neither side; it merely invites judicial interpretation. iii. Balancing obligations and rights: control, oversight, and naked licensing A third key point is that in licensing there must be a balance between the licensee’s obligations and the licensor’s rights of control. The Big League Chew case illustrates how an imbalance between these two forces can lead to disputes over trade dress ownership. In Big League Chew, BLCP now contends that Ford Gum breached their agreement when it filed to register the shredded-gum product configuration before the USPTO. Nevertheless, the licensing agreement between the parties failed to identify that product configuration as part of the licensed IP. Furthermore, the agreement provided that the “Licensee”, i.e., Ford Gum, would have “sole discretion regarding the use of trade dress developed or proposed by the [licensor]”.66 This provision is particularly detrimental, as it could be interpreted as evidence of inadequate oversight, a potential indicator of “naked licensing” where uncontrolled use erodes the trade dress’s source-identifying function and results in loss of rights. Thus, while granting broad autonomy may foster innovation, it can also jeopardize ownership. Here, Although the agreement required Ford Gum to “consult” with BLCP, such language may not suffice to demonstrate adequate control in a legal sense. Courts often look for concrete mechanisms of oversight—approval rights, inspection clauses, and termination provisions—to determine whether a licensor fulfilled its duty of quality control. In practice, licensors must strike a careful balance between control and flexibility. Excessive control can discourage licensees or stifle creative development, while too little control risks the erosion of goodwill and distinctiveness. iv. Clear and formal communication is key Clear communication between licensor and licensee is fundamental to the integrity and success of any licensing transaction. Further, when it comes to trade dress, where protection hinges on the continuous and consistent use in commerce effective communication between licensor and licensee is key. Miscommunication or assumptions can erode the very value the agreement seeks to preserve. Thus, clarity in communication is not a mere procedural courtesy; it is an essential safeguard for both business and legal certainty. The Big League Chew case illustrates the risks that arise when clarity is absent in communications surrounding trade dress rights. Ford Gum has argued that a trade dress assignment agreement existed based on a single email exchange, despite the absence of any explicit reference to “trade dress” or “goodwill.”67 In doing so, Ford Gum seeks to rely on this ambiguous communication as the foundation for claiming ownership of the distinctive product configuration associated with the shredded BLC gum. This reliance on a single email, lacking any formalities or precision underscores how easily misunderstandings can transform into costly and prolonged litigation.68 Ultimately, this case serves as a cautionary tale for trade dress owners navigating the complexities of licensing. Conclusion The ongoing dispute involving the validity and ownership of the trade dress associated with the Big League Chew shredded chewing gum offers a timely and instructive example of the legal and practical complexities that arise at the intersection of licensing and trade dress rights. It underscores that the success of a licensing arrangement depends not only on the commercial potential of the trade dress involved, but also on the clarity, precision, and foresight embedded in the licensing agreement. Ambiguities regarding the scope of licensed IP, insufficient mechanisms for oversight and control, and informal or unclear communications can all undermine the licensor’s ability to maintain ownership and enforceability. Ultimately, this case serves as a cautionary tale: even long-standing and seemingly harmonious licensing relationships can unravel when the underlying agreements fail to anticipate changes in business dynamics, ownership, or market circumstances. [1] Giselle Ayala is an attorney specializing in trademark and copyright law, with a focus on their intersections with AI, media, advertising, and licensing. She advises businesses and non-profits on brand protection, licensing, and corporate matters. [2] Michael Stone, The Power of Licensing: Harnessing Brand Equity (Am. Bar Ass’n 2018). [3] Emily Heaslip, What Is Brand Licensing? Pros and Cons for Small Businesses, U.S. Chamber of Com. (Feb. 6, 2024). Available at: https://www.uschamber.com/co/start/strategy/brand-licensing-pros-and-cons. Accessed on Oct. 6. 2025 [4] Royalty Structures and Revenue Sharing: The Business Side of IP Licensing, IIPRD (Sept. 14, 2020). Available at: https://www.iiprd.com/royalty-structures-and-revenue-sharing-the-business-side-of-ip-licensing/. Accessed on Oct. 6. 2025 [5] Étienne Rouet, The Impact of Brand Licensing on Consumers’ Perceptions: The Case of the Luxury Brand (2015). Available at: https://www. researchgate.net/publication/273764681_THE_IMPACT_OF_BRAND_LICENSING_ON_THE_CONSUMERS%27_PERCEPTIONS_-_The_case_of_the_ Luxury_Brand. Accessed on Oct. 6. 2025 [6] Big League Chew Properties LLC v. Ford Gum & Machine Company Inc., 1:24-cv-11837, (N.D. Ill.) [7] Historically, baseball players used chewing tobacco for practical reasons as much as habit. It helped keep their mouths moist in dusty fields, and pitchers sometimes used the resulting saliva to throw the notorious “spitball,” a pitch later banned by Major League Baseball. Tobacco and Baseball Have Long Shared a History, Truth Initiative (Mar. 28, 2024). Available at: https://truthinitiative.org/research-resources/emerging-tobacco-products/tobacco-and-baseball-have-long-shared-history-zyn. Accessed on Oct. 7. 2025. [8] Rob Nelson recalled his inspiration for Big League Chew while playing in the minor leagues with Jim Bouton: “At that time in the minor leagues, a lot of guys did chew tobacco. But I never did. … Maybe an inning later, I said to Jim, ‘You know, if we shredded bubble gum and put it in a pouch, we could look cool and have some fun with it. We’d look like tough guys but wouldn’t make ourselves ill.’ Another inning later, Jim said to me, ‘I really like that idea. What would you call it?’ I remember saying, ‘I don’t know, uh, Big League Chew?’” Rob Nelson, quoted in Luke O’Neil, The History of Big League Chew, the Greatest Bubble Gum Ever Made, Esquire (July 8, 2019). Available at: https://www.esquire.com/sports/a28325969/big-league-chew-history/. Accessed on Oct. 7. 2025. [9] “The Story of Big League Chew,” Yabba Swacky Snack Shack (date unknown), https://yabbaswackysnackshack.com/the-story-of-big-league-chew/ (last visited Oct. 14, 2025). Available at: https://yabbaswackysnackshack.com/the-story-of-big-league-chew/ Accessed on Oct. 7. 2025. [10] Big League Chew Props. LLC v. Ford Gum & Mach. Co., No. 1:24-cv-11837, at 5 (N.D. Ill. Oct. 3, 2025) (PACER Doc. 127) [11] Id at 7. [12] At the time Amurol Confections Company was a subsidiary of the Wrigley Company. Id at 8. [13] Id. [14] Id at 9. [15] Id. [16] Id. [17] The License Agreement also included provisions for Ford Gum to lease specialized equipment from TRNC to produce the shredded bubble gum. This arrangement was formalized through an Equipment Lease Agreement, which was later replaced by an Equipment Purchase Agreement in 2012, allowing Ford Gum to purchase the equipment outright. Id at 31. [18] The first amendment in 2012 adjusted the Guaranteed Minimum Royalty (GMR) payments and incorporated the Equipment Purchase Agreement. The second amendment in 2014 added Big League Chew Properties, LLC (BLCP) as a licensor alongside TRNC. The third amendment in 2019 extended the term of the License Agreement to 2045, with options for further renewals, and revised the royalty structure and minimum gross sales requirements. Id. [19] Big League Chew Props. LLC. (N.D. Ill. Oct. 3, 2025) (PACER Doc. 121) [20] Id. [21] Ford Gum’s application proceeded without objection from the examining attorney and was approved for publication in the Official Gazette on November 27, 2024. It is now suspended pending litigation. [22] The related litigations are Ford Gum & Machine Company, Inc. v. Smackin’ Snacks LLC et al., No. 2:25-cv-01529-MWF-SK (C.D. Cal.), and Big League Chew Properties LLC v. Ford Gum & Machine Company Inc., No. 1:24-cv-11837 (N.D. Ill.). [23] Big League Chew Props. LLC. (N.D. Ill. Oct. 3, 2025) (PACER Doc. 69) [24] The Magistrate also dismissed Ford Gum’s claims of trade dress ownership based on acquiescence or abandonment, finding insufficient evidence to support these defenses. [25] Big League Chew Properties LLC., 1:24-cv-11837, (N.D. Ill.) [26] Unlike traditional trademarks, trade dress protection has not been always been recognized. In the early 1900s courts generally affirmed the Commissioner of Patents (predeecssor of the USPTO) decisions refusing the protection of product configuration. Later, the 1946 Lanham Act acknowledged the registrability of product shapes. However, the law of trade dress protection has been mostly developed via litigation. Theodore H. Davis, Jr., Management and Protection of Brand Equity in Product Configurations, 1998 U. Ill. L. Rev. 59 (1998) [27] That said, other protection for the design features of a product can be obtain through copyright, if the artistic features of the product are separable from its functional design. The basis of this protection is the US Constitution’s Intellectual Property Clause, Article I, Section 8, Clause 8, which grants Congress the power "to promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries". U.S. Const. art. I, § 8, cl. 8. [28] Section 43(a) of the Lanham Act provides a cause of action against the unauthorized use by any person of “any word, term, name, symbol, or device, or any combination thereof ... which ... is likely to cause confusion ... as to the origin, sponsorship, or approval of his or her goods.” 15 U.S.C. § 1125(a) [29] Under Section 43 of the Lanham Act , Courts have recognized the protection of trade dress as the “appearance of labels, wrappers and containers used in packaging” of a particular product, as well as “the total look of the product,” including “the design and shape of the product itself.” 4 J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition § 8:4, at 8-15 (4th ed. 2005). [30] Big League Chew Props. LLC. (N.D. Ill. Oct. 3, 2025) (PACER Doc. 1) [31] Considering trade dress in a broader sense, the Supreme Court in Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763 (1992), held that trade dress, like a word mark, may qualify for protection if it is inherently distinctive. However, the Court did not address whether product configuration can ever be deemed inherently distinctive, leaving that question unresolved and generating ongoing uncertainty in the lower courts. Davis, supra note. [32] Restatement (Third) of Unfair Competition § 16 cmt. b (Am. Law Inst. 1995). [33] Knitwaves, Inc. v. Lollytogs Ltd., 71 F.3d 996, 1009 n.6 (2d Cir. 1995) [34] Brooks Shoe Mfg. Co. v. Suave Shoe Co., 716 F.2d 854, 857-58 (11th Cir. 1983) [35] Duraco Prods., Inc. v. Joy Plastic Enters., Ltd., 40 F.3d 1431 (3d Cir. 1994) [36] Krueger Int'l, Inc. v. Nightingale Inc., 915 F. Supp. 595, 609 (S.D.N.Y. 1996) [37] Rubik's Brand Ltd. v. Flambeau, Inc., No. 17-CV-6559 (PGG) (KHP), 2021 WL 341847 (S.D.N.Y. Jan. 31, 2021). See also Mechanical Plastics Corp. v. Titan Techs., Inc., 823 F. Supp. 1137 (S.D.N.Y. 1993) [38] Michael Keyes. Secondary Meaning, Surveys & TTAB: Workhorse Gets Worked Over (date), LinkedIn. Available at: https://www.linkedin.com/pulse/secondary-meaning-surveys-ttab-workhorse-gets-worked-over-keyes-uhxnc/ Accessed: Oct. 14, 2025. [39] Mark P. McKenna & Caitlin Canahai, The Case Against Product Configuration Trade Dress, in Trademark Law and Theory: Reform of Trademark Law (Graeme B. Dinwoodie & Mark D. Janis eds., Edward Elgar 2021) [40] In TBL Licensing, LLC v. Vidal, No 1:21-cv-00681, 2022 WL 17573906 (E.D. Va. Dec. 8, 2022) [41] Shoko Naruo & Brendan Bement, What Not to Look For: Establishing Secondary Meaning in Product Design Trade Dress, IPWatchdog (Apr. 27, 2023). Available at: https://ipwatchdog.com/2023/04/27/what-not-to-look-for-establishing-secondary-meaning-in-product-design-trade-dress/# Accessed: Oct. 14, 2025. [42] Rejection of Handbag Design Highlights the Requirements and High Evidentiary Bar to Clear for Trade Dress Protection, Moses & Singer LLP, https://www.mosessinger.com/publications/rejection-of-handbag-design-highlights-the-requirements-and-high-evidentiary-bar-to-clear-for- trade-dress-protection (last visited [date]). [43] In re Jasmin Larian, LLC, Serial No. 87522459, EXA-24 (TTAB Jan. 19, 2022) (opinion). Available at: https://ttabvue.uspto.gov/ttabvue/ttabvue-87522459-EXA-24.pdf. Accessed: Oct. 14, 2025. [44] Brief of Amicus Curiae International Trademark Association in Support of Appellant, TBL Licensing, LLC v. Vidal (INTA Amicus Brief), inauthor (Apr. 5, 2023). Available at: https://www.inta.org/wp-content/uploads/public-files/advocacy/amicus-briefs/TBL-Licensing-Amicus- Brief-filing.pdf Accessed: Oct. 14, 2025. [45] Ford Gum & Machine Company Inc., 1:24-cv-11837, (N.D. Ill.). (PACER. Doc. 1.) [46] Id. [47] Id. [48] In the context of trade dress infringement Courts have noticed that placing labeling may prevent a finding of likelihood of confusion between two similar product designs. Versa Prods. Co. v. Bifold Co. (Mfg.), 50 F.3d 189, 203 (3d Cir. 1995) [49] Central Tools, Inc. v. Prods. Eng’g Corp., 936 F. Supp. 58 (D.R.I. 1996) [50] Promotional image for “Mike and Ike Shredders.” Credit: MIKE AND IKE, Facebook post May 12, 2015. MIKE AND IKE, There’s a New Candy Shredding It Up! Mike and Ike Shredders Send Your Taste Buds into Frenzy with Sour Wildberry and Sweet Fruit Punch Flavors!, FACEBOOK May 12, 2015. Available at: https://www.facebook.com/photo.php?fbid=10153665816614239&id=16424074238&set=a.321789 964238archivedatPERMA.CC/XXXXarchivedatPERMA.CC/XXXX Accessed: Oct. 10, 2025. [51] Hilco, Kool-Aid Sour Shred Headz Sour Watermelon Bubblegum (2.12 oz.). Available at: https://www.hilcousa.com/res/uploads/brands/ products/files/Kool-Aid-Shred-Headz-Sour-Watermelon-Bubblegum-2.12oz.png Accessed: Oct. 8, 2025. [52] @smileswmyles, TikTok video. (Jun. 30, 2025). Available at: https://www.tiktok.com/@smileswmyles/video/7521923678657891597 [53] Douglas A. Rettew & Max Jarquin, “Useful” to Know: Recent Developments on Utilitarian and Aesthetic Functionality, Finnegan (July 22, 2021). Available at: https://www.finnegan.com/en/insights/articles/useful-to-know-recent-developments-on-utilitarian-and-aesthetic- functionality.html [54] Mark V.B. Partridge, Trade Dress Protection and the Problem of Distinctiveness, 1 J. Marshall Rev. Intell. Prop. L. 225 (2002) Available at: https://repository.law.uic.edu/cgi/viewcontent.cgi?article=1012&context=ripl [55] Danielle Rubano, Trade Dress: Who Should Bear the Burden of Proving or Disproving Functionality in a Section 43(a) Infringement Claim? 6 Fordham Intell. Prop. Media & Ent. L.J. 185 (1995). Available at: https://ir.lawnet.fordham.edu/cgi/viewcontent.cgi?article=1107&context=iplj [56] 15 U.S.C. § 1057 [57] Charles L. Cook & Theodore H. Davis, Jr., Litigating the Meaning of “Prima Facie Evidence” Under the Lanham Act: The Fog and Art of War, 103 Int’l Trademark Ass’n Rep. 2 (2013). Available at: https://share.google/enR3PpHOM11at5J8t [58] 15 U.S.C. §1065 [59] Eco Mfg. LLC v. Honeywell Int’l Inc., No. 03-2704, 2003 U.S. App. LEXIS 26430 (7th Cir. Dec. 31, 2003). [60] 15 U.S. Code § 1127 [61] Michael Stone, The Power of Licensing: Harnessing Brand Equity (Am. Bar Ass’n 2018) [62] Intellectual Property Licensing and Transactions: Theory and Practice (Cambridge Univ. Press 2022), Available at: https://doi.org/10.1017/9781009049436 (open access under CC BY-NC-ND 4.0). [63] Ford Gum & Machine Company Inc., 1:24-cv-11837, (N.D. Ill.). (PACER. Doc.1. Exh. A) [64] Stone, The Power of Licensing: Harnessing Brand Equity (Am. Bar Ass’n 2018) at 463. [65] ‘"Trademarks" shall mean trademarks which are comprised of the term "BIG LEAGUE," including, without limitation all common law trademarks for BIG LEAGUE CHEW, and the registrations listed in Schedule l(a) annexed hereto, and the goodwill associated therewith. (b) 'Trade Dress" shall mean original artwork, graphics, and associated package designs, characters, displays, literary materials, and audio and visual materials which are applied to packaging and advertising for or used in connection with the Licensed Products whether provided by TRNC or Licensee.’ Id. Section 1(a), (b). [66] Id. [67] “The alleged March 2024 Agreement consists of an email from Scott Lerner, the President and CEO of Defendant, to Rob Nelson, founder, president, and owner of Plaintiffs, stating: Considering the recent discovery of a potential competitive product to Big League Chew, Ford Gum would like to file for a trade dress on the product form of “shredded gum.” Once we due [sic] this we would like to send a cease-and- desist letter to Hilco. I am seeking your approval for us to take this action on behalf of Ford Gum. If you want to discuss this live, I might suggest we set up a call for next week. Thanks. R&R at 33 (quoting R. 33-23). That same day, Nelson responded with the following: “Scott - excellent idea. I approve.” Id. (quoting R. 33-23).” Big League Chew Props. LLC, No. 1:24-cv-11837, at 5 (N.D. Ill. Oct. 3, 2025) (PACER Doc. 121) [68] Stone, The Power of Licensing: Harnessing Brand Equity (Am. Bar Ass’n 2018) at 94.
“Blanding Out”: Exploring the Complexities of the “Blanding” Minimalist Design Trend and What It Means for Your Client’s Trademark Rights By: Mike A. Ortega1
Introduction A logo is more than just an intangible corporate asset, it is one of the most prominent forms of direct and indirect communication vehicles that a brand has in its arsenal.2 With about 75% of consumers being able to recognize a brand by its logo, a corporate logo is vital to establishing instant recognition of your brand by consumers.3 By improving logo familiarity, brands see improvements in conversion rates by 42% on average.4 For these reasons, establishing a strong and distinctive logo that consumers can easily recognize should be a top priority for any brand. Why then do companies tend to redesign or completely overhaul their well-established and easily recognizable logos? Given Additionally, with consumer recognition being the key feature of a corporate logo, why do some brands opt for a stripped down and oversimplified logo after what is seemingly a lifetime of using their logo to build up brand recognition and brand equity? From British car manufacturer Jaguar to luxury fashion brands such as Burberry and Saint Laurent, brands are now opting for logos that exude pure minimalism and forego distinctive design elements that were previously key features of their logos and visual identity. This design phenomenon, known as blanding, is a persistent trend that has seem to fully ingrained itself in the world of corporate visual identity, and has serious implications for a corporate client’s trademarks. While blanding does offer some benefits for brands in certain contexts, it can pose a serious threat to a brand’s visual identity and can also weaken a brand’s potential for trademark enforcement. Part I of this note defines the concept of blanding in the context of corporate logos, provides examples of corporate logo blanding, and examines its effects on corporate visual identity. Part II discusses the latest example of corporate logo blanding gone wrong: the infamous attempted blanded redesign of the Cracker Barrel logo. Part III details the challenges that blanded redesigns of corporate logos can present to a company’s trademark rights and its enforcement strategies. Finally, Part IV outlines guidance on communicating certain considerations that a corporate client should keep in mind when it comes to blanded logos and what it could mean for its trademark rights moving forward. I. What is Blanding? “Blanding” refers to a trend in branding where logos are made to look more uniform, simple, and less distinctive.5 Famously, the blanding of a logo involves foregoing the use of loud, distinctive design elements, typefaces, and colors and instead utilizing sans serif fonts, muted plain colors, clean lines, and a generous amount of white space.6 More intensified blanding can require stripping a logo of its design elements on an even more granular level, including the removal of all borders, details, textures, shadows, and gradients incorporated in the design that were meant to give a logo depth.7 Ultimately, all that may be left after a logo has been blanded is nothing more than simple shapes or colors.8 Although the term “blanding” seems to have entered the lexicon around 2018 after major luxury fashion brands like Burberry, Berluti, and Saint Laurent took on the trend,9 examples of corporate logo blanding can be found well ahead of that time. An example of a company whose corporate logo has been blanded more than once is UPS, an American company providing postal, courier, and other logistics services around the world.10 From the years 1916 to today, the UPS logo has undergone some notable changes, including a blanding of the corporate logo before anyone even had a name for the design trend. As seen above, the UPS logo has come a long way from its avian-themed origins. After having adopted its first logo in 1916, which used an eagle with a tied package in its talons, UPS set the bird free and instead adopted a wordier logo in 1937 that utilized the shield as a carrier for its company name, slogan, and date of inception.11 Then, in 1961, UPS introduced its first blanded logo – a medieval shield composed of a singular solid line serving as a carrier for the UPS company name, along with a string-tied package in the form of a rectangular shape.12 Notably, the first blanded UPS logo was devoid of depth-based design elements such as shadowing, and utilized a muted color palette that involved notable white space.13 A 2003 redesign of the UPS logo then reintroduced the brown and gold color palette along with some shine and shadowing to give the logo some depth. Finally, in 2014, UPS blanded its logo again by maintaining the style and shapes of the previous versions of its medieval shield but opting to exchange the three-dimensional and gradient shield to a flat and simple shield.14 The end result is a one-dimensional shield utilizing only the colors yellow and dark chocolate, with the company name in lowercase and in a sans-serif font. Although corporate logo blanding is a rather polarizing design trend for some consumers, there are a number of benefits that have been touted by designers and branding experts. First, simplification of a corporate logo via blanding can make a brand more instantly recognizable and memorable, and common blanding elements, such as the utilization of cleaner lines and fewer design components, can make a design seem more user-friendly and approachable than a busier logo.15 Additionally, more established brands can use blanding to highlight their strong position in their industry by stripping their logos of excessive details and relying only on their famous word mark to define their company and brand.16 There are a number of utilitarian benefits serving as drivers for the blanding trend. For starters, bold colors and sans-serif fonts are highly adaptable across the vast and diverse media which brands must use to communicate with consumers.17 A blanded logo utilizing bold colors and sans-serif fonts can be conveniently scaled up or down, and can adapt to be legible on various canvases, such as a phone screen, on print, or even on billboards.18 A blanded logo is even easier to utilize on the goods they are used in connection with, and can be easily reproduced as a design on apparel or as a badge on an automobile.19 Most importantly, blanded logos are particularly effective in a digital world, where visual space for branding is limited.20 Given the limited pixel space available on mobile phones, brands have opted to lead with a mobile-first design mentality and strongly consider how a blanded logo may appear on mobile devices.21 Functional benefits aside, corporate logo blanding is not without its faults. With blanding persisting as such a popular trend, brands across all industries are forfeiting distinctive design elements that are key to their visual identity. While this has serious implications for a company’s trademark rights and enforcement potential, the more immediately recognizable consequence at large is a corporate logo homogenization across all industries.22 If brands across various different industries are all opting to strip down their corporate logos to bare minimalist aesthetics, the end result is a sea of sameness.23 Take the logos depicted above as an example of this sea of sameness amongst blanded corporate logos. Although these logos may appear almost identical at first glance, they are used in connection with vastly different goods and services. The Beats logo on the left, owned by Beats Electronics, LLC is recognized for its use in connection with headphones in International Class 9, while the Target logo in the center, owned by Target Brands, Inc., is most recognized for its use in connection with retail store services in International Class 35. Although these corporate logos have long since coexisted with one another, the popular online social media platform Pinterest introduced a blanded corporate logo in 2011 that is formed from similar minimalist design elements as the Beats and Target, opting for a white “P” inscription on a bold red background.24 While these companies offer different products and services from one another, they all rely on basic design elements that makes visual differentiation difficult at first glance. Beyond the forfeiture of design distinctiveness in corporate logos, blanding an established and recognizable logo can risk the connection between a brand and its consumers. On a visual level, brand logos convey a very different meaning to consumers with strong brand commitment than to those without, as consumers with strong brand commitment tend to see strong connections between themselves and the brand and consider the brands to be an integral part of their lives.25 As such, a redesigned logo that is inconsistent with a consumer’s original perception of the brand motivates consumers to defend their brand commitment by evaluating the redesigned logos negatively.26 II. Blanding Backlash: Cracker Barrel’s Attempted Redesign and Reversion The most recent and perhaps most extreme example of a negative consumer response to a corporate logo’s blanding is the infamous rebrand of the Cracker Barrel logo. On August 19, 2025, the American restaurant and retail outlet Cracker Barrel unveiled a new blanded logo that featured a simpler design with just “Cracker Barrel” written on a gold background.27 This blanding effort involved a significant overhaul of the iconic Cracker Barrel logo, which was built around an image of a man, sitting near the large wooden barrel, and complemented by a smooth yellow banner with warm brown lettering in two styles.28 A statement by the company noted that the rebranded logo was “[a]nchored in Cracker Barrel’s signature gold and brown tones,” and noted that the blanded logo was “now rooted even more closely to the iconic barrel shape and word mark that started it all.”29 According to the restaurant chain’s new CEO, the rebrand was needed, as Cracker Barrel’s customer traffic was down 16% compared to 2019, and research conducted by Cracker Barrel indicated that consumers thought the brand fell short of competitors with regard to the quality of the food to value and convenience.30 What started as an effort to spruce up the Cracker Barrel brand through corporate logo blanding ended in a total disaster. Consumer backlash to the corporate logo’s blanded rebrand was so severe that it ended up being reflected in the company’s stock value, which dropped almost $10 in the course of one day, from $59.02 to $50.76.31 Some consumers believed that the new blanded logo was “cold and sterile” and felt as though “[t]he new rebrand took the feeling away[.]”32 Although Cracker Barrel attempted to stand by its decision to bland its logo while also acknowledging the backlash in an August 25, 2025 statement on its website,33 the company ultimately relented and via a new statement on its website a day later, decided to abandon the blanded rebrand of its “Old Timer” logo.34 III. Trademark Challenges Caused by Blanding In addition to potential consumer backlash, corporate logo blanding can result in a number of trademark law challenges. However, given the usual distance between designers and legal during the rebranding process, such trademark law challenges are not often taken into consideration when deciding on a new logo. a. Blanded Logos Provide Limited Trademark Enforcement Power In a scenario where a brand is opting to bland their corporate logo down to common geometric shapes or basic designs and symbols, the registrability of the new blanded logo can be immensely difficult, or in some cases, not possible at all. Generally, symbols and designs that are inherently distinctive can be registered and protected as marks, and will not require the need for proof of secondary meaning in order to be granted registration status.35 This could include symbols and designs that are comprised of certain geometric shapes. However, even in cases where the applied-for design is distinctive and qualifies for trademark protection, the mark may only be entitled to a narrow scope of protection if there is extensive third party use of similar designs.36 A blanded logo that utilizes design elements that are also commonly used by third-parties in connection with the goods or services covered by the blanded logo may be considered a “weak” mark, and may not be afforded “the breadth of protection afforded [to] the owner of a “strong” mark.”37 In this scenario, a competitor’s mark may come closer to the owner of a “weak” mark “without violating [its] rights than would be the case with a strong mark.”38 As a result, the owner of a blanded logo that utilizes commonly used elements will typically only be able to successfully claim trademark infringement occurred in cases where there is a striking similarity between the marks at issue.39 In cases where a blanded logo utilizes common geometric shapes or basic designs and symbols, obtaining registration of the blanded logo may not even be possible. Most common geometric shapes such as circles, ovals, and squares are typically not regarded as being inherently distinctive enough to serve as a mark on their own given how common the use of such shapes is in all areas of advertising.40 Because of this, such shapes on their own are not regarded as indicators of origin absent evidence that the subject matter has acquired distinctiveness under §2(f) of the Trademark Act, 15 U.S.C. § 1052(f).41 Applications for registrations of a mark composed of such shapes that present evidence of acquired distinctiveness will be scrutinized by the U.S. Patent and Trademark Office solely on the basis of a statement of substantially exclusive and continuous use for five years in order to determine whether it truly establishes that the subject matter is perceived as a trademark by the purchasing public.42 Unless an application for a newly introduced blanded logo is filed at least five years after the brand has started utilizing the mark in commerce, the brand will be unable to provide sufficient evidence of acquired distinctiveness of their blanded logo. Without a trademark registration, a brand’s trademark enforcement power over its blanded logo is notably limited. b. Potential for a Newly Introduced Blanded Logo to be Target of Trademark Infringement Claim Additionally, blanding a logo down to design elements that are commonly used by competitors of a brand for similar goods or services could make the brand a target of a trademark infringement claim. A well-known example of a corporate logo blanding resulting in a trademark infringement claim is PayPal, Inc. v. Pandora Media, Inc., No. 1:17CV03816 (S.D.N.Y. 2017). In 2016, Pandora Media, Inc. introduced an overhauled new “P” logo, which would serve as its new mobile app icon for its subscription-based music streaming service.43 This newly blanded “P” logo turned in the dark blue, serifed “P” that that was previously used as the symbol for Pandora in favor of a bolder sans serif “P” without the hole in the letterform.44 Less than a year later, PayPal, Inc. filed suit against Pandora Media, Inc. in the Southern District of New York, claiming trademark infringement, trademark dilution, and false designation of origin.45 According to PayPal, Pandora’s adoption of the new blanded logo was “confusing, frustrating, and delaying consumers in their efforts to locate and use the PayPal payments platform when they [were] met with two nearly identical logos.”46 As part of its pleadings, PayPal included screenshots of social media posts made by consumers that detailed their confusion between the PayPal logo and the new blanded Pandora logo, one of which included a social media post by a consumer stating: “[t]he Pandora and PayPal logos are now too similar. I tried sending money through my Pandora!”47 In describing the marks at issue, PayPal described its own logo as an “iconic logo” that includes “capital Ps depicted in a distinctive, block-style sans serif type, with no . . . or hole in the top part of the P, and the use of PayPal’s familiar deep-blue color range.”48 PayPal then described the Pandora Logo as “a capital P in block style, sans serif, with no [hole in the top part of the P], in the same deep-blue color range.”49 PayPal highlighted the confusion between the logos by noting that both the PayPal logo and the Pandora logo serve as “identifiers on customers’ mobile devices” that guides customers to the respective mobile applications.50 While Pandora admitted in its July 10, 2017 Answer that its new blanded logo included “the letter ‘P’ in blue with no serifs and [no hole in the top part of the P]”, it denied that PayPal’s logo was “in the same deep-blue color range.”51 Months later, in November 2017, the case was settled pursuant to a written settlement agreement between PayPal and Pandora Media.52 Although the terms of the settlement agreement were not shared,53 Pandora continues to use a similar blanded “P” logo and in a Brand Guidelines document that was last updated in March 2020 and is still available on its “Pandora Developers” website, Pandora provides the following guideline as part of its “Don’ts” for use of the blanded “P” logo: “DO NOT use blue or blue gradient logo.”54 c. Renouncing Old Logo in Favor of New Blanded Logo Can Jeopardize Currently Held Trademark Registrations One additional issue that brands can run into when transitioning over to a new blanded logo involves its already registered trademarks. Under 15 U.S.C. §1058, the owner of a trademark registration must periodically file affidavits or declarations of use or excusable nonuse of the mark with the U.S. Patent and Trademark Office in order to maintain their trademark registrations as active.55 The purpose of these affidavits and declarations of use or excusable nonuse is to remove marks that are no longer being used in commerce from the register.56 As part of the required declaration of use filing, a trademark registration owner must “[i]nclude one specimen showing how the mark is in use in commerce for each class in the registration, unless excusable nonuse is claimed….”57 The specimen of use included with the §8 affidavit or declaration must show the mark to be essentially the same as the mark that appears in the registration.58 In instances where the specimen provided reflects a change in the mark since the trademark registration issued, the affidavit or declaration’s acceptance will depend on the degree of change in the mark, and a material alteration of the mark will result in refusal of the affidavit or declaration on the ground that the registered mark is no longer in use.59 If a brand has transitioned from using its original logo to using only its blanded logo, and the blanded logo has stripped the original logo down so substantially of distinctive features to the point that it is no longer essentially the same mark as the registered mark, the brand may be at risk of losing its trademark registration. If a trademark registration owner is claiming excusable nonuse, the owner will not only need to “set forth the date when such use of the mark in commerce stopped and the approximate date when such use is expected to resume[,]” but will also have to “recite facts to show that nonuse as to those goods, services, or classes is due to special circumstances that excuse the nonuse and is not due to an intention to abandon the mark[.]”60 As part of its examples of special circumstances that do not excuse nonuse of a mark, the U.S. Patent and Trademark Office’s Trademark Manual of Examining Procedure states that “[n]onuse related to a business decision is not beyond the owner’s control and does not excuse nonuse.”61 Further, it also explicitly states that use of the mark in another form, or “[u]se of a mark as an essential part of a materially different composite mark does not excuse the failure to use the mark at issue.”62 A brand’s publicly announced decision to rollout a new blanded logo that is not essentially the same as the registered mark is not likely to qualify as a special circumstance that would excuse nonuse of the registered logo, and should the brand wish to maintain its trademark registrations for the old logo that it has not used in commerce for some time, it may be refused the opportunity to do so. Further complicating maintenance and renewal of a brand’s old logo is the potential for abandonment. If a registered mark has not been in use for three consecutive years, and the owner of that registered mark has done nothing to try to resume use of the mark, the USPTO may presume that the owner has abandoned the mark.63 Additionally, a registration for a mark that a brand has transitioned out in favor of a new logo could have its registrations targeted by a cancellation proceeding, which is a proceeding in which the plaintiff seeks to cancel an existing registration of a trademark on the Principal or the Supplemental Register.64 A petition to cancel may be filed against a trademark registration at any time on grounds that the mark has been abandoned.65 Should a brand publicly announce its rebrand and transition from its old logo to a new logo, it may find its trademark registrations being targeted by cancellation proceedings, with its own announcements and press releases being used against it as evidence attached to a Petition to Cancel. IV. What Your Clients Need to Know Before They Bland With so many potential issues that could arise from the adoption of a blanded logo, attorneys that are representing corporate clients that are considering a rebrand should provide appropriate guidance to ensure that those corporate clients understand the pitfalls associated with the process of rebranding and the incorporation of blanded logos. If your corporate client is considering blanding their logo, make sure your corporate clients consider doing the following: Continue Use of the Old Logo in Commerce in Some Form or Fashion: Should your clients decide to adopt a new blanded logo, they should consider whether they are fully ready to divest from the older or original logo. Considering the potential for consumer backlash to a blanded logo, a corporate client may want to continue using the older or original logos in commerce in connection with its goods or services in some way so as to ensure that its trademark rights are still intact and are not vulnerable to cancellation. Additionally, by continuing to use the older or original logos in commerce in connection with its goods or services, a corporate client will have specimens available that it can submit with any trademark registration maintenance or renewal filings. Conduct Full Comprehensive Trademark Searches of the Competitive Field to Assess How Commonly Its Design Elements are Used: Before launching and rolling out any new logo, a corporate client should have a full comprehensive trademark search conducted for its new logo to assess what the competitive landscape looks like in terms of visual identity and logo use by other companies offering the same goods and services as the corporate client. This is critical in the context of blanded logos, which utilize basic geometric shapes and other design elements that are almost certainly used by other companies both in the competitive field and outside of it. Do Not Fully Commit to a Rebrand Before Exercising Due Diligence: A corporate client should hold off on rolling out or even announcing a rebrand of its logo until due diligence has been exercised. A prematurely announced or rolled out blanded logo could prove to be a PR disaster or result in costly litigation, and may land the corporate client at a point of no return. A rebrand that involves a revamped visual identity and the implementation of a new logo is already a complicated business endeavor to pull off. If the corporate client is following the blanded logo trend, there are additional pain points that can complicate rebranding efforts even further. However, with proper legal counsel and the exercise of caution in the rollout, these pain points can be avoided. [1] Mike A. Ortega, Esq. is an Associate Attorney at Powley & Gibson, P.C. He holds a B.A. from Rutgers University and a J.D. from the Rutgers University School of Law. Before joining the firm, Mike A. Ortega, Esq. was a Senior Trademark Consultant at the global brand consultancy, Interbrand. The views expressed by associate in this article are his own and do not represent the views of Powley & Gibson, P.C. [2] See Michael Walsh, Karen Winterich & Vikas Mittal, Do Logo Redesigns Help or Hurt Your Brand? The Role of Brand Commitment, 19 J. ProD. & Brand Mgmt. 10.1108/10610421011033421 (2012). [3] See Logo Statistics, CropInk, https://cropink.com/logo-statistics (last visited Oct. 9, 2025). [4] See 5 Reasons Why Logos Are Important for Advertising, Inkbot Design, https://inkbotdesign.com/logos-important-advertising/ (last visited Oct. 9, 2025). [5] See A Critique of Critiques of Blandification, NAN, https://www.nan.xyz/txt/a-critique-of-critiques-of-blandification/ (last visited Oct. 9, 2025). [6] See What Is Blanding and Why Has It Become Popular, W. Brand Agency, https://www.wbrand.agency/blog/what-is-blanding- and-why-has-it-become-popular (last visited Oct. 9, 2025). [7] See Oversimplified Logos: The Simplified Logo Trend, Fabrik Brands, https://fabrikbrands.com/branding-matters/logo-design/over simplified-logos-the-simplified-logo-trend/ (last visited Oct.9, 2025). [8] See id. [9] See A Critique of Critiques of Blandification, supra note 4. [10] See UPS Logo, 1000 Logos, https://1000logos.net/ups-logo/ (last visited Oct. 9, 2025). [11] See id. [12] See id. [13] See id. [14] See id. [15] See Oversimplified Logos: The Simplified Logo Trend, supra note 6. [16] See id. [17] See Blanding: The Branding Paradox, Base Design, https://www.basedesign.com/opinions/blanding-branding-paradox (last visited Oct. 9, 2025). [18] See id. [19] See Oversimplified Logos: The Simplified Logo Trend, supra note 6. [20] See id. [21] See Blands: The Oversimplification of Brands, Distinctive Bat, https://www.distinctivebat.com/blog/blands-the-oversimplification-of- brands/ (last visited Oct. 9, 2025). [22] See Oversimplified Logos: The Simplified Logo Trend, supra note 6. [23] See The Rise of Blanding, Flux Branding, https://fluxbranding.com/the-rise-of-blanding/ (last visited Oct. 9, 2025). [24] See Pinterest Logo, 1000 Logos, https://1000logos.net/pinterest-logo/ (last visited Oct. 9, 2025). [25] See Walsh, Winterich & Mittal, supra note 1 (citations omitted). [26] See id. [27] See Cracker Barrel Tries to Update its Image—And Logo—But Faces a Backlash from Some Customers, AP News (Aug. 28, 2025), https://apnews.com/article/cracker-barrel-new-logo-rebrand-efforts-67f3181a144cd639eb33d1066f85ef08 (last visited Oct. 9, 2025). [28] See Cracker Barrel Logo, 1000 Logos, https://1000logos.net/cracker-barrel-logo/ (last visited Oct. 9, 2025). [29] See Cracker Barrel Tries to Update its Image, supra note 26. [30] See Cracker Barrel’s CEO Explains Why the Company Changed its Logo and What it Means for Stock, AP News (Aug. 27, 2025), https://apnews.com/article/cracker-barrel-new-logo-why-ceo-stock-c64a8ae259cc1bcaa27aae89df56c961 (last visited Oct. 9, 2025). [31] See https://www.usatoday.com/story/money/2025/08/22/cracker-barrel-stock-drop-logo-rebranding-backlash/85781888007/ [32] See Mike Snider, Cracker Barrel Logo Change Timeline: When Did the New Logo Debut?, USA Today (Aug. 27, 2025), https://www.usatoday.com/story/money/2025/08/27/cracker-barrel-logo-change-timeline/85845032007/ (last visited Oct. 9, 2025). [33] See Mike Snider, Cracker Barrel Statement on New Logo, USA Today (Aug. 26, 2025), https://www.usatoday.com/story/ money/2025/08/26/cracker-barrel-statement-new-logo/85828594007/ (last visited Oct. 9, 2025). [34] See All the More, Cracker Barrel, https://www.crackerbarrel.com/allthemore (last visited Oct. 9, 2025). [35] See 1 J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition § 7:25 (5th ed. 2025). [36] See id. [37] See Puma-Sportschuhfabriken Rudolf Dassler, K.G. v. Superga S.P.A., 204 USPQ 688 (TTAB 1979) (finding that the use of stripe and bar designs on the sides of athletic shoes was so common that the Opposer had ownership over a “weak” mark that was not afforded as much protection as a “strong” mark is afforded). [38] See id. [39] See ASICS Corp. v. Wanted Shoes, Inc., No. SACV04-1261AHSMANX, 2005 WL 1691587, at *6 (C.D. Cal. Jan. 25, 2005) (finding that there was a striking similarity between ASICS' Stripe Design mark and the defendant's infringing stripe design on its shoes where the stripes were displayed in the same size, manner and location on the shoes). [40] See 1 J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition § 7:29 (5th ed. 2025). [41] See TMEP § 1202.11. [42] See id. [43] See Nicole V. Lee, Pandora Overhauls Its Branding to Look the Way Music Sounds, Fast Company (Oct. 6, 2016), https://www.fastcompany.com/3064564/pandora-overhauls-its-branding-to-look-the-way-music-sounds (last visited Oct. 9, 2025). [44] See id. [45] See Complaint at ¶ 7, PayPal, Inc. v. Pandora Media, Inc., No. 1:17CV03816 (S.D.N.Y. 2017), ECF No. 1. [46] See id. at ¶ 5. [47] See id. at ¶ 39. [48] See id. at ¶ 3. [49] See id. at ¶ 4. [50] See id. at ¶¶ 4, 5. [51] See Answer to Amended Complaint at ¶ 4, PayPal, Inc. v. Pandora Media, Inc., No. 1:17CV03816 (S.D.N.Y. 2017), ECF. No. 22. [52] See Stipulation of Dismissal, PayPal, Inc. v. Pandora Media, Inc., No. 1:17CV03816 (S.D.N.Y. 2017), ECF. No. 29. [53] See PayPal and Pandora Settle Lawsuit Over Mimicked Logo, Inside Radio (Dec. 5, 2017), https://www.insideradio.com/ free/paypal-and-pandora-settle-lawsuit-over-mimicked-logo/article_a31d3a9c-d342-11e7-a07f-cf3539dc63da.html (last visited Oct. 9, 2025). [54] See Brand Assets, Pandora Developer, https://developer.pandora.com/docs/developer-resources/brand-assets/ (last visited Oct. 9, 2025). [55] See TMEP § 1604. [56] See id. [57] See 37 C.F.R. §2.161(a)(7). [58] See TMEP § 1604.13. [59] See id. [60] See 37 C.F.R. §2.161(a)(6)(ii). [61] See TMEP § 1604.11. [62] See id. [63] See id. (citing 15 U.S.C. §1127). [64] See TBMP § 301.01. [65] See 15 U.S.C. § 1064(3).
When AI Writes Your Claims: A New Frontier for Prosecution-History Estoppel By: Sarah Lim, New York Law School, JD Candidate
Introduction Generative AI tools are reshaping patent practice. A 2024 survey of IP professionals found that while 43% are not currently using AI in their practice, those who have adopted AI tools report significant efficiency gains and improved accuracy as the most significant benefits. Early adopters report 50-70% reductions in claim-chart-generation time and faster docket clearance. USPTO Former Director Vidal acknowledged in her 2024 guidance that AI tools now possess the ability to draft technical specifications, generate responses to Office actions, and even draft patent claims with minimal human input. The reality is more complicated. Patent claims aren't just technical descriptions—they're legal instruments where every word matters. Prosecution History Estoppel (“PHE”) limits a patentee's ability to reclaim scope surrendered during prosecution.1 If AI writes your claims without careful oversight, it might introduce unnecessary limitations or inadvertent disclaimers that permanently narrow your patent. In patent litigation, opponents will use every prosecution statement against you.2 This article examines how AI-generated language creates new PHE risks, addresses the counterargument that "AI is just a tool if properly reviewed," and proposes practical safeguards grounded in documented AI failures in legal practice. The Foundations of Prosecution History Estoppel PHE balances two competing interests: the Doctrine of Equivalents (“DOE”) (which extends patent scope to catch trivial variations) and public notice (which requires clear boundaries).3 Under DOE, a patent can cover products that don't literally infringe but use equivalent elements.4 PHE restricts this flexibility. When you narrow claims during prosecution, you surrender the territory between your original and amended claims.5 Courts won't let you reclaim it later by arguing equivalents.6 The Supreme Court has emphasized that this doctrine protects competitors who rely on your prosecution statements.7 You can't tell the Patent Office one story to get allowance, then tell a court a different story to expand coverage.8 Three cases define modern PHE doctrine. Warner-Jenkinson Co. v. Hilton Davis Chem. Co. established that claim amendments made for substantial patentability reasons trigger estoppel.9 If you can't explain why you amended, courts presume you did it to overcome prior art—and you bear the burden of proving otherwise.10 This creates a rebuttable presumption: unexplained narrowing surrenders intermediate claim scope.11 Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co. went further.12 The patentee had added specific limitations during prosecution—certain sealing rings and magnetizable materials.13 When sued for infringement under the DOE, the Federal Circuit held that any narrowing amendment completely bars equivalents for that element.14 The Supreme Court rejected this absolute rule but clarified critical points. Estoppel applies to any narrowing amendment—not just those made to avoid prior art.15 Whether you amend to overcome §102, fix §112 problems, or clarify ambiguities, the effect is what matters.16 Your subjective intent is irrelevant. Justice Kennedy put it bluntly: arguing you "had no intention of surrendering subject matter" conflates your reason with the amendment's effect.17 Courts look at what the record shows, not what you secretly meant. The Court did preserve some flexibility. Although narrowing creates a presumption of estoppel, it's rebuttable.18 If the equivalent was unforeseeable when you amended, or if your amendment rationale only tangentially relates to the equivalent at issue, you might escape the bar.19 These exceptions are narrow.20 The default rule remains: narrow your claims, and you presumptively surrender everything between the original and amended scope.21 Teva Pharmaceuticals USA, Inc. v. Sandoz, Inc. clarified that courts treat prosecution history as intrinsic evidence—part of the patent itself.22 When interpreting claims, judges give substantial weight to what applicants said and did during prosecution.23 If your AI-generated response contains admissions or clarifications, courts will interpret those statements as part of the intrinsic record.24 The fact that a machine wrote them changes nothing. When AI Drafts Claims: New Risks of Estoppel and Disclaimer Here's where AI creates problems. The first major risk involves over-narrowing amendments. AI lacks strategic judgment, and when faced with a prior art rejection, it tends to pile on limitations indiscriminately. Consider a hypothetical scenario: confronted with prior art showing a four-wheeled vehicle, AI might rewrite a claim from "A vehicle with four wheels" to "A vehicle with four wheels aligned in a straight line along a tangential axis, further comprising a steering wheel." While this certainly avoids the cited art, it also surrenders coverage of normal cars through unnecessary limitations. Under Festo, each narrowing amendment presumptively bars recapturing that scope.25 A skilled prosecutor would add one carefully chosen limitation to overcome the rejection while preserving fallback positions. AI, by contrast, throws in everything available, not realizing it's creating excess estoppel with each added feature. The Federal Circuit has held that even rewriting a dependent claim into independent form can trigger estoppel,26 yet AI might make precisely this move simply because it achieves allowance. Inadvertent disclaimers present a different but equally serious danger. AI-generated Office Action responses often use absolute language that creates binding limitations on claim scope. Modern language models produce fluent, persuasive arguments, but they lack the subtle precision required in patent prosecution. An AI might confidently write: "The present claims require feature Y, whereas Smith lacks this." Or it might argue: "Unlike the prior art, the invention does not include element Z." These statements can constitute clear disavowals under Federal Circuit precedent.27 Human prosecutors argue more carefully, saying instead "Smith doesn't show Y"—a phrasing that implies the claim possesses this feature without declaring it essential. AI doesn't grasp these subtleties. It overstates to be convincing, inadvertently locking the patentee into narrow interpretations. The "clear and unmistakable" disclaimer standard28 is easily met by such unguarded AI prose. Inconsistency in terminology poses another trap. AI-generated claims might alternate between functionally equivalent terms—using "mounting member" in one claim and "attachment member" in another without recognizing the potential legal significance of this variation. When the examiner issues an indefiniteness rejection under 35 U.S.C. § 112(b),29 the applicant's clarification necessarily limits claim interpretation to whichever specific term is chosen, potentially excluding subject matter that would have been covered under a broader reading. Human drafters maintain rigorous terminological consistency precisely to avoid creating such unintended distinctions. AI, trained on diverse patent literature using varied terminology, may not recognize that consistency matters. The loss of strategic scope represents perhaps the most fundamental problem. Patent prosecutors deliberately build flexibility into claims, anticipating future claim construction battles and potential design-arounds. They balance breadth against allowability, knowing that claims should be drafted at the appropriate level of generality—broad enough to be valuable but narrow enough to overcome prior art. AI doesn't think strategically in this manner. Given an invention disclosure, it might fixate on the specific details of one embodiment rather than identifying the true point of novelty and drafting broader language around that concept. Experienced attorneys iterate toward claims that are both allowable and valuable, making tactical judgments about which features to include and which to omit.30 AI lacks this judgment entirely. It generates text that sounds plausible and may achieve allowance, but without any consideration of whether the resulting claims will be worth enforcing. Documented Cases: When AI Goes Wrong in Legal Practice The theoretical risks aren't hypothetical. As of July 2025, a database maintained by legal researcher Damien Charlotin identifies 206 cases where generative AI produced hallucinated content that led to court warnings or punishments—and these cases have been appearing daily since April 2024.31 The 2023 Schwartz case provides a stark illustration of how AI can mislead even experienced attorneys. In the landmark Mata v. Avianca case, attorney Steven Schwartz of Levidow, Levidow & Oberman used ChatGPT to supplement his legal research when preparing a response to a motion to dismiss. Judge P. Kevin Castel discovered that six of the submitted cases were "bogus judicial decisions with bogus quotes and bogus internal citations," calling it an "unprecedented circumstance." When Schwartz asked ChatGPT if the cases were real, the chatbot falsely assured him they were authentic and "can be found in reputable legal databases such as LexisNexis and Westlaw". The incident made the front page of The New York Times and resulted in a sanction hearing.32 A more recent example emerged in July 2025 involving MyPillow CEO Mike Lindell's attorneys. Two lawyers representing Lindell in a Colorado defamation case were ordered to pay $3,000 each33 after using artificial intelligence to prepare a court filing filled with mistakes and citations of cases that didn't exist. According to Professor Maura Grossman of the University of Waterloo, the sanctions were "reasonably light, given these were not unsophisticated lawyers who just really wouldn't know better. The kind of errors that were made here were egregious".34 Legal researcher Charlotin has identified three distinct categories of AI errors in court filings. The first involves completely fabricated cases created by AI chatbots out of whole cloth. The second consists of fake quotes attributed to real cases—the AI correctly identifies an actual decision but invents language that never appears in it. The third category proves hardest to spot: situations where both the citation and case name are correct, but the legal argument being cited is not actually supported by the sourced case. This last type of error passes surface-level verification because the case exists and seems relevant, yet it fundamentally misrepresents what the court held. These cases involved litigation, not patent prosecution. But the underlying problem is identical: AI generates fluent, professional-sounding text that contains subtle but critical errors. As Schwartz admitted in his affidavit, he "had never previously used ChatGPT for conducting legal research and therefore was unaware of the possibility that its contents could be false," and he "greatly regrets having utilized artificial intelligence" without absolute verification.35 The patent prosecution gap warrants careful consideration. No documented cases yet exist of AI-generated claim language causing PHE problems in patent litigation. This absence is unsurprising patents granted today won't be litigated for years, and parties rarely publicize prosecution missteps even when they recognize them. But the pattern from litigation cases suggests this is a matter of when, not if. The same AI that confidently cites fake cases will confidently draft overly narrow claim amendments or create inadvertent disclaimers. The crucial difference is timing and visibility. In litigation, fake citations trigger immediate judicial scrutiny and sanctions. In patent prosecution, the damage remains hidden until enforcement—potentially a decade later when the attorney has moved on and the client discovers their patent is worthless due to unnecessary estoppel created during prosecution. Attorney Intent vs. AI-Generated Text Can you later argue that AI-generated language wasn't an "intentional" surrender? That the disclaimer shouldn't apply because "an AI wrote it"? No. Patent prosecution is conducted in the applicant's name through registered attorneys. The applicant owns all submissions to the USPTO. That a machine drafted certain phrases is irrelevant to PHE or disclaimer analysis. These doctrines are objective, not subjective. Courts ask what a reasonable competitor would understand from the record—not what you privately intended. Festo directly addressed this. Even if you had "no intention of surrendering" additional territory, what matters is the amendment's effect.36 Similarly, prosecution disclaimer turns on whether your statements constitute "clear and unmistakable" disavowal from the record's perspective.37 The attorney who files the response adopts the AI's words as their own. By signing, you assert the content is truthful and accurate. There's no "AI immunity" defense. Trying to blame AI in litigation would backfire—it looks like an admission of incompetence. From a doctrinal perspective, AI-generated language is fully attributed to the applicant. The public, competitors, and courts treat prosecution history as reflecting your positions. Warner-Jenkinson lets patentees rebut the estoppel presumption by proving an amendment was unrelated to patentability,38 but that requires evidence in the prosecution history. A silent motive like "we only amended because AI suggested it" won't help. The buck stops with the human filer. If AI causes problematic prosecution statements, your client's patent rights suffer. Courts won't entertain "the robot did it" as a PHE defense. The Counterargument: "AI Is Just a Tool—Review Solves Everything" Proponents of AI-assisted prosecution make a compelling case. They argue that with proper human oversight, AI's benefits far outweigh its risks. The efficiency gains are demonstrably real. AI claim-charting platforms report 50-70% reduction in chart-generation time, leading to faster docket clearance and allowing attorneys to manage larger caseloads without compromising quality. AI-powered prior art searches can analyze vast databases more comprehensively than manual searches, identifying relevant references that human searchers might overlook, particularly in fields with high volumes of prior art such as technology and pharmaceuticals. McKinsey’s 2023 report on the economic potential of generative AI observed that professional service sectors including law stand to gain substantial productivity improvements from responsible AI adoption.39 Accuracy improvements extend beyond speed. AI tools can flag inconsistencies in claims, detect antecedent basis errors, and ensure compliance with jurisdiction-specific requirements, minimizing the risk of office action rejections. By ensuring that applications are correctly formatted and compliant from the outset, AI reduces the likelihood of rejections based on non-substantive errors such as formatting, inconsistent terminology, or non-compliance with jurisdictional rules. Patent offices can process AI-prepared applications more quickly since fewer issues require manual intervention. Cost savings benefit clients directly, particularly individual inventors and small entities. By automating routine aspects of the patent drafting process, law firms can reduce the hours billed for these tasks, thereby lowering the overall cost of obtaining a patent. This democratization of patent protection could enable innovators who previously found the process prohibitively expensive to secure meaningful intellectual property rights. The standard response to AI concerns emphasizes human review as the ultimate safeguard. Attorneys should review all AI output carefully before filing, proponents argue. If humans maintain final control and verify every statement, AI becomes merely a productivity enhancer—like a junior associate who drafts quickly but needs supervision. This argument has merit. In its April 11, 2024 Guidance on Use of AI Tools, the USPTO states that a practitioner submitting a paper must have reviewed and verified the contents; simply relying on the accuracy of an AI tool is not a reasonable inquiry. This guidance makes clear that responsibility rests with the practitioner, not the tool.40 Why This Defense Is Insufficient The "just review it" argument fails for three interconnected reasons: skill degradation, cognitive biases, and economic pressures. The first concern involves the erosion of professional competence. There's a growing recognition among patent professionals that reliance on AI could lead to a degradation of skills. Patent drafting and prosecution are complex processes that require understanding of relevant patent laws, strategic approaches to claim drafting, office action responses drafted with awareness of potential PHE, and mastery of procedural nuances. Overreliance on AI could result in a workforce less equipped to handle complex cases that require nuanced understanding and judgment. When attorneys routinely accept AI-drafted claims with minor edits, they lose practice in the strategic thinking required to spot over-narrowing or inadvertent disclaimers. Over time, the very expertise needed to effectively review AI output erodes. Junior attorneys who learn prosecution in an AI-assisted environment may never develop the judgment to recognize subtle PHE problems. This creates a vicious cycle: as practitioners rely more on AI, their skills atrophy, making them less capable of spotting AI errors, leading to greater reliance on AI. The endpoint is a profession that has outsourced its core competency—strategic claim drafting—to tools that lack the judgment to perform it well. The second problem stems from well-documented cognitive biases. Human reviewers suffer from "automation bias"—the tendency to trust computer-generated output more than human judgment.41 When attorney Schwartz asked ChatGPT whether the cases it cited were real, he accepted the AI's false assurances without independent verification. This pattern repeats across professions whenever humans interact with automated systems that appear authoritative. AI-generated text appears fluent and professional, making errors harder to spot than obviously machine-like output. The prose reads well, citations look properly formatted, legal arguments sound persuasive—so reviewers skim rather than scrutinize. The third type of AI error—where citations are real but don't support the stated proposition—is particularly insidious precisely because it passes surface-level review. In patent prosecution, this manifests as amendments that sound reasonable but surrender more scope than necessary, or arguments that sound persuasive but inadvertently disclaim embodiments. The reviewer thinks "this sounds right" and moves on, never asking "but did we need to narrow this much?" The third factor involves economic realities. Patent prosecution operates under time and budget constraints. The use of AI in patent drafting and prosecution raises significant ethical and liability questions: Who is responsible when an AI-generated application is rejected or, worse, leads to a patent that is easily invalidated or unassertable due to errors or omissions? Firms bill by the hour or work on fixed fees. AI's promise is efficiency—getting more done in less time. But thorough review of AI output to catch strategic errors takes nearly as long as drafting from scratch. The economic incentive structure pushes toward superficial review: check the formatting, verify the citations exist, ensure the argument sounds plausible, then file. Partners reviewing junior attorney work can spot obvious errors through experience. But when reviewing AI output, that same experience creates false confidence—"the AI wouldn't make that mistake" or "surely the technology is sophisticated enough to avoid that issue." Responsibility diffuses between human and machine, with each assuming the other caught the problem. Former Director Vidal’s guidance recognizes that AI tools can assist in drafting patent specifications, generating Office Action responses, and even drafting patent claims, while emphasizing that responsibility for the accuracy of any submission lies entirely with the attorney or agent of record. However, commentators have noted that this responsibility is largely aspirational because the USPTO currently lacks enforcement mechanisms to determine whether practitioners have reviewed or verified AI-generated content before submission. Unlike litigation settings, where judges may impose immediate sanctions for false citations, errors in patent prosecution may remain undiscovered for years—surfacing only in litigation, when PHE issues arise, and the damage is irreversible.42 Additional Systemic Risks: Prior Art and Data Security Beyond claim drafting, AI creates two additional prosecution hazards that deserve attention. The first involves the proliferation of AI-generated prior art. AI systems can rapidly generate vast amounts of text, images, and even hypothetical inventions. Services such as "All Prior Art" and its sister company "All The Claims" use AI to churn out millions of computer-generated technical disclosures with the explicit goal of creating prior art to prevent future patents. Although many commenters express hesitancy regarding AI-generated disclosures, especially those lacking human review, concerns exist that the sheer volume could create undue barriers to patentability if all are treated as presumptively enabled prior art. Despite these concerns, the efficiency gains offered by AI in automating prior art searches are widely recognized. The irony is stark: AI can both create fake prior art that shouldn't qualify under §102, and simultaneously fail to find real prior art that does. The speed at which AI can generate and publish information may create situations where relevant prior art is created and made public in the short window between invention and patent filing, complicating priority determinations. Practitioners may find themselves in a bizarre arms race where AI is used both to generate defensive publications and to search for them, with the quality and legitimacy of both activities remaining questionable. The second major concern involves confidentiality breaches. The use of AI in drafting patent applications necessitates the input of sensitive and potentially proprietary information into the system. This raises significant concerns about data security and the confidentiality of potentially groundbreaking inventions. Any breach could lead to loss of intellectual property or accidentally give competitors undue advantage. Public AI services like ChatGPT could treat your prompts as training data or inadvertently expose them through shared conversation links or security vulnerabilities. One detailed prompt describing an invention could constitute enabling public disclosure, destroying novelty under 35 U.S.C. § 102(a)(1).43 When using AI to conduct prior art searches and other forms of research, practitioners should be wary of inputting confidential client information and should carefully review the tool's data policies to prevent inadvertent disclosure. Even enterprise AI solutions pose risks. AI drafting software is only as good as the data it has been trained on. In the ever-changing field of patent law, where many documents are maintained in secrecy for months if not years, keeping AI systems up-to-date with the latest laws, regulations, case laws, prior art, and practice strategies is a monumental task. The lag between legal developments and AI training updates could lead to applications drafted according to outdated standards or incorporating superseded legal interpretations. Practical Guidelines for AI-Assisted Patent Prosecution The key to responsible AI use in patent prosecution lies in tiering usage according to risk. Not all prosecution tasks carry equal PHE danger, and practitioners should calibrate their reliance on AI accordingly. For low-risk mechanical tasks, AI can be deployed extensively with minimal concern. Formatting and consistency checks, antecedent basis verification, detection of obvious errors such as missing claim dependencies or undefined terms, prior art organization and initial review, and generation of draft background sections all fall into this category. These tasks involve pattern recognition and standardized rules where AI excels and where errors, if they occur, are easily caught and carry minimal legal consequence. The middle tier requires more caution. Initial claim drafting may benefit from AI assistance as a starting point, but only as a rough draft requiring substantial human refinement. Similarly, office action analysis and strategy development, along with boilerplate response arguments, can leverage AI's speed while demanding careful attorney oversight. The AI may spot issues or suggest approaches, but the final strategic decisions must remain in human hands. The highest-risk category demands intensive human review regardless of AI involvement. Final claim language requires meticulous attention because every word matters—a single unnecessary limitation can surrender valuable patent scope. Arguments distinguishing prior art present high disclaimer risk and must be crafted with precision to avoid inadvertent admissions. Claim amendments trigger estoppel and therefore require careful consideration of what scope is being surrendered. Interview summaries and clarifications similarly create binding prosecution history and cannot be delegated to AI without thorough vetting. Strategic control must remain firmly in the attorney's hands. AI cannot distinguish between a client's commercially critical features and throwaway implementation details. When prior art threatens allowance, skilled prosecutors make tactical decisions about which claim elements to narrow, accepting estoppel in less important areas while preserving breadth where it matters most. AI lacks this judgment and will indiscriminately narrow everything to achieve allowance. Before accepting any AI-suggested amendment, attorneys should ask themselves: "If I make this change, what design-around am I leaving open for competitors?" This question forces consideration of the long-term enforcement consequences that AI cannot evaluate. Following USPTO Former Director Vidal's guidance, practitioners must review all AI-generated documents to independently verify accuracy and relevance. But best practices should go further. Firms should require a second attorney review for all AI-drafted claim amendments, implementing a mandatory quality control step that catches errors the first reviewer might miss due to automation bias. Specialized checklists for reviewing AI output should be developed, going beyond general prosecution checklists to specifically flag common AI pitfalls like over-narrowing, absolute language, and inconsistent terminology. Every use of AI should be documented in the file, noting which tool was used and what review was conducted. This creates an audit trail and demonstrates that the attorney exercised professional judgment rather than blindly accepting machine output. All practitioners in the firm should receive training on common AI failure modes, including the three types of hallucinations identified by legal researchers—completely fabricated content, false quotes attributed to real sources, and real citations that don't actually support the stated proposition.44 Confidentiality presents another critical concern. Practitioners must exercise extreme caution when using AI tools and carefully review data policies to prevent inadvertent disclosure of client inventions. Enabling details should never be input into public AI services like ChatGPT, which may use prompts as training data or inadvertently expose them through shared links. Instead, use enterprise solutions with clear data protection guarantees, or deploy local AI models that don't transmit data externally. Every AI prompt should be treated as a potential publication under §102—if you wouldn't post the description publicly before filing, don't put it into a public AI system. The language AI generates requires scrutiny and often revision. Practitioners should engineer their prompts to minimize harmful language, explicitly instructing the AI to draft responses that distinguish prior art using cautious language without categorically disclaiming embodiments. AI should be told to avoid absolute terms like "requires," "must have," "does not include," "always," and "never," which create clear disclaimers. As a general principle, use AI more for non-critical descriptive sections and less for precise claim language where subtle word choices have major legal consequences. Documentation serves multiple purposes in AI-assisted prosecution. Prompts and outputs should be kept in the file for internal quality control, allowing the firm to track whether AI tools or approaches consistently introduce problems. File notes should record key decisions, such as: "AI suggested adding feature X to overcome Smith reference; accepted after independent review, with awareness that this creates estoppel for equivalents lacking X." This demonstrates that the attorney exercised professional judgment and considered the estoppel implications, rather than blindly implementing AI suggestions. Such documentation may prove valuable if PHE issues later arise in litigation. The risk of skill degradation demands proactive countermeasures. As practitioners rely more heavily on AI for drafting, they lose practice in the strategic thinking required to craft optimal claims. This creates a dangerous feedback loop where declining skills make attorneys less capable of spotting AI errors, leading to greater dependence on the very tool that caused the skill erosion. Firms should combat this through regular training programs focused on strategic claim drafting without AI assistance, using case studies that analyze how overly narrow amendments created unnecessary PHE in real litigation. Mentorship programs should pair junior attorneys with experienced prosecutors who can teach the nuanced judgment that AI lacks. Periodic "AI-free" drafting exercises help practitioners maintain their core competencies and ensure they retain the expertise needed to effectively supervise AI tools. Staying current on evolving guidance is essential. The USPTO began incorporating AI into the patent evaluation process in 2020, and this integration will likely accelerate. Practitioners should monitor USPTO notices, MPEP updates, and professional responsibility guidance from bar associations as these institutions grapple with AI's implications for patent practice. Survey data suggests that AI adoption in patent prosecution remains cautious but is growing, with practitioners attempting to balance efficiency gains against quality concerns. As the technology and legal framework evolve, best practices will need to adapt accordingly. Finally, client education plays a crucial role in responsible AI use. Many clients, excited by AI's promise of faster and cheaper patent prosecution, may push for heavy reliance on these tools without understanding the risks. Attorneys should explain PHE in accessible terms, making clear that quick allowances obtained through aggressive AI-driven claim narrowing may produce weak patents that are easily designed around. A strategically drafted patent that takes longer to prosecute but maintains valuable enforcement scope is worth far more than a hastily allowed patent with crippling estoppel. This conversation aligns client expectations with professional obligations and helps clients understand why thorough attorney review cannot be eliminated in the name of efficiency. Conclusion AI drafting tools hold genuine promise. The 50-70% efficiency gains reported by early adopters are real.45 AI's ability to conduct comprehensive prior art searches represents a significant advancement. The legal sector stands to realize substantial productivity gains through responsible AI adoption. But efficiency without strategy is dangerous. The 206 documented cases of AI hallucinations in legal filings since April 2024 demonstrate that even sophisticated attorneys can be misled by fluent-but-wrong AI output.46 In patent prosecution, such errors don't trigger immediate sanctions—they create time bombs that detonate years later in litigation. PHE will faithfully apply to AI-generated amendments just as to any other. The fundamental question remains: Who is responsible when an AI-generated application leads to a patent that is easily invalidated or unassertable due to errors or omissions? The law's answer is clear: the attorney of record. A balanced approach, where AI tools are used to augment rather than replace human expertise, may be the key to navigating the risks and reaping the benefits of this technological advancement. Use AI for mechanical tasks—consistency checking, formatting, error detection. Reserve human judgment for strategy—claim scope, amendment selection, argument framing. The practical takeaway: Always review AI-drafted claims with heightened skepticism. Edit out absolute language or needless limitations creating estoppel. Use minimal narrowing—the smallest amendment necessary to overcome prior art.47 Draft cautious arguments steering away from "invention must" or "does not include" statements.48 Maintain strategic control—don't let AI dictate what to claim. Protect confidentiality by reviewing data policies and avoiding input of confidential information into AI systems. Document systematically and maintain paramount human oversight. When AI writes your claims, you—the practitioner—speak through them. You'll be held to every word. Courts won't accept "the AI wrote it" as a defense to PHE or claim limitations harming your client's enforcement rights. Drafters must remain masters of their claims, harnessing AI's power while rigorously ensuring prosecution records tell the story they intend—and no more. [1] Charles R. Macedo & Robert A. Armitage, Prosecution History Estoppel After Festo, 20 BERKELEY TECH. L.J. 59 (2005). [2] Id [3] Graver Tank & Mfg. Co. v. Linde Air Prods. Co., 339 U.S. 605, 609 (1950). [4] Warner-Jenkinson Co. v. Hilton Davis Chem. Co., 520 U.S. 17, 30 (1997). [5] Id. at 33. [6] Id [7] Id. at 33–34. [8] Id [9] Id. at 30–31. [10] Id. at 33. [11] Id. at 33–34. [12] Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., 535 U.S. 722 (2002) [13] Id. at 728–29. [14] Id. at 732. [15] Id. at 736. [16] Id. at 736–37. [17] Id. at 738. [18] Id. at 738–40. [19] Id. at 740–41. [20] Id [21] Id. at 737–38. [22] Teva Pharms. USA, Inc. v. Sandoz, Inc., 574 U.S. 318, 325–27 (2015). [23] Id. [24] Christopher A. Cotropia, Patent Claim Interpretation and Information Costs, 9 LEWIS & CLARK L. REV. 57, 72–76 (2005). [25] Festo, 535 U.S. at 738. [26] Honeywell Int'l, Inc. v. Hamilton Sundstrand Corp., 370 F.3d 1131, 1140–45 (Fed. Cir. 2004) [27] Macedo & Armitage, supra note 1, at 85–88. [28] Vita-Mix Corp. v. Basic Holding, Inc., 581 F.3d 1317, 1324 (Fed. Cir. 2009). [29] 35 U.S.C. § 112(b) (2012). [30] Warner-Jenkinson Co. v. Hilton Davis Chem. Co., 520 U.S. 17, 23–24. [31] Damien Charlotin, AI Hallucination Cases Database (2025), https://www.damiencharlotin.com/hallucinations/ [32] Sara Merken, New York Lawyers Sanctioned for Using Fake ChatGPT Cases in Legal Brief, REUTERS (June 22, 2023), https://www.reuters.com/legal/new-york-lawyers-sanctioned-using-fake-chatgpt-cases-legal-brief-2023-06-22/ [33] Olivia Prentzel, MyPillow CEO’s Lawyers Fined for AI-Generated Court Filing in Denver Defamation Case, The Colorado Sun (July 7, 2025), https://coloradosun.com/2025/07/07/mike-lindell-attorneys-fined-artificial-intelligence/ [34] Maura Grossman, quoted in A Recent High-Profile Case of AI Hallucination Serves as a Stark Warning, South Carolina Public Radio (July 10, 2025), https://www.npr.org/2025/07/10/nx-s1-5463512/ai-courts-lawyers-mypillow-fines [35] Steven A. Schwartz, Affidavit ¶¶ 8–9, Mata v. Avianca, Inc., No. 1:22-cv-01461 (S.D.N.Y. May 25, 2023), quoted in Lyle Moran, Lawyer Cites Fake Cases Generated by ChatGPT in Legal Brief, Legal Dive (May 30, 2023), https://www.legaldive.com/news/chatgpt-fake-legal-cases-generative-ai-hallucinations/651557/ [36] Festo, 535 U.S. at 738. [37] Macedo & Armitage, supra note 1, at 92–95. [38] Warner-Jenkinson, 520 U.S. at 33. [39] McKinsey Global Institute, The Economic Potential of Generative AI: The Next Productivity Frontier (June 2023), https://www.mckinsey.com/mgi/our-research/the-economic-potential-of-generative-ai-the-next-productivity-frontier [40] United States Patent and Trademark Office, “USPTO Issues Guidance Concerning the Use of AI Tools by Parties and Practitioners” (Apr. 10, 2024), https://www.uspto.gov/about-us/news-updates/uspto-issues-guidance-concerning-use-ai-tools-parties-and-practitioners [41] Raja Parasuraman & Victor Riley, Humans and Automation: Use, Misuse, Disuse, Abuse, 39 Hum. Factors 230, 236–37 (1997). [42] Oblon LLP, USPTO Issues Detailed Guidance on Use of AI-Based Tools Before the Office (Apr. 12, 2024), https://www.oblon.com/uspto-issues-detailed-guidance-on-use-of-aibased-tools-before-the-office? [43] 35 U.S.C. § 102(a)(1) (2011). [44] supra Part IV. [45] Justin Doop AI claim charting- patent prosecution (July. 5, 2025), https://www.solveintelligence.com/blog/post/ai-claim-charting-patent-prosecution [46] supra note 31. [47] Festo, 535 U.S. at 738. [48] Vita-Mix, 581 F.3d at 1324; see Macedo & Armitage, supra note 1, at 87.
Notable Trademark Decisions, October 2025 By: Scott Greenberg and Vrudhi Raimugia
Federal Circuit Vacates and Remands TTAB’s Holding that Confusion Is Likely; Board Did Not Sufficiently Consider the Evidence of Third Party Use of Similar Marks In a precedential decision, the United States Court of Appeals for the Federal Circuit (“CAFC”, or the “Court”) vacated and remanded the holding of the USPTO’s Trademark Trial And Appeal Board (the “Board”) that confusion was likely between Applicant Apex Bank’s mark ASPIRE BANK for “banking and financing services” and Opposer CC Serve Corporation’s previously registered mark ASPIRE for credit card services. The CAFC panel found that, in view of the Board’s correct finding that the parties’ services were related, the Board failed to sufficiently consider the evidence of similar third-party marks being used in connection with equally related services. Apex Bank v. CC Serve Corp., __ F.4th __, 2025 USPQ2d 1224, 2025 U.S. App. LEXIS 24802 (Fed. Cir. Sept. 25, 2025). The Court noted that likelihood of confusion is a question of law, based on findings of relevant underlying facts, namely findings under the factors established in the case E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973) (“DuPont Factors”), each of which presents a question of fact for which the Board’s finding is reviewed for substantial evidence. The Court then affirmed, as supported by substantial evidence, the Board’s finding under the second DuPont Factor that there was a “high degree of similarity” between the parties' services, i.e. Opposer CC Serve’s “credit card services”, which the Board found to be encompassed by Applicant Apex Bank’s “banking and financing services”, so that the second Dupont Factor weighed heavily in favor of finding likelihood of confusion. 2025 U.S. App. LEXIS 24802 at *5. However, the Court held that the Board’s consideration of the sixth DuPont Factor was legally flawed. The sixth DuPont factor considers "[t]he number and nature of similar marks in use on similar goods." DuPont, 476 F.2d at 1361, and evidence of third-party use of similar marks on similar goods is relevant to show that a mark is relatively weak and entitled to only a narrow scope of protection. In the present case, the Board had focused solely on Aspire Bank’s evidence of nine third-party uses of “Aspire”- formative marks in connection with the exact services of Opposer CC Serve, i.e. credit card services, and found that nine such instances were not a sufficient number to demonstrate weakness. However, the CAFC panel held that it was error for the Board to not also consider Aspire Bank’s evidence of 42 other third-party marks in use for other types of financial services, given the Board’s correct finding on the second DuPont Factor that Aspire Bank’s banking and financing services were highly similar to CC Serve’s credit card services: We have held that the sixth DuPont factor does not require identical goods—only similar ones. …Here, we find the Board's definition of similarity to be too narrow. When the Board has already made a factual finding that the services are highly similar—in fact, partially legally identical—in its analysis of the second DuPont factor, …the Board should retain the same scope in its consideration of similarity under the other factors. 2025 U.S. App. LEXIS 24802 at *8 (citations deleted). In addition, the Court held to be inadequate the Board’s consideration of the first DuPont Factor, which considers the similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation and commercial impression. In the present case, the Board had held that this factor weighs in favor of likelihood of confusion. However, the Court also vacated the Board’s analysis of this factor, “because reconsideration of the sixth DuPont factor may result in a different determination of the mark's commercial strength or weakness and affect the overall commercial impression.” Id. at *9. Therefore, the Court vacated the Board’s findings with regard to the sixth and first DuPont Factors and remanded the case “for the Board to consider the number and nature of similar marks used on similar goods and the appearance, sound, connotation, and commercial impression of the marks in light of its finding that the parties' services are highly similar.” Id. at *10. Apex Bank v. CC Serve Corp., __ F.4th __, 2025 USPQ2d 1224, 2025 U.S. App. LEXIS 24802 (Fed. Cir. Sept. 25, 2025). [SG] Ninth Circuit Revives Trader Joe’s Suit Against Trader Joe’s United Union The United States Court of Appeals for the Ninth Circuit (“the Ninth Circuit”), in Trader Joe’s Co. v. Trader Joe’s United, in September, reversed the District Court’s dismissal of Trader Joe’s Company’s trademark infringement suit against Trader Joe’s United (“TJU”), a labor union representing its employees. Trader Joe’s had brought claims under the Lanham Act, alleging that TJU’s sale of merchandise, such as tote bags, mugs, and apparel, bearing designs and logos similar to Trader Joe’s distinctive red branding, typeface, and concentric circle logo infringed and diluted its federally registered trademarks. The District Court had dismissed the action, finding no plausible likelihood of consumer confusion, determining that the Norris-LaGuardia Act (“NGLA”) barred injunctive relief because the dispute arose out of an ongoing labor controversy, and awarding more than $112,000 in attorneys’ fees to the union. The Ninth Circuit held that the District Court erred in dismissing the trademark infringement claim at the pleading stage by misapplying the multifactor AMF Inc. v. Sleekcraft Boats test used to assess the likelihood of consumer confusion. The Ninth Circuit emphasized that such determinations were highly fact-intensive and rarely suitable for dismissal and viewed the complaint’s allegations in the light most favorable to Trader Joe’s, finding that three key factors, the strength of the mark, the relatedness of the goods, and the similarity of the marks, favored Trader Joe’s, while the other five factors were neutral. Trader Joe’s marks were undisputedly strong and well known; the parties’ goods, although not identical, were sufficiently related because both involved consumer merchandise such as tote bags and apparel; and the visual similarities between the union’s and Trader Joe’s marks, including their red coloring, capitalized font, and circular design, were significant enough to plausibly cause some confusion among the consumers. The Ninth Circuit rejected the District court’s narrow view that only directly competing goods could create confusion, reiterating that even complementary or related goods may do so if consumers could believe they share a common source or sponsorship. The Ninth Circuit also found error in the District Court’s dismissal of Trader Joe’s dilution claim. The District Court had concluded that TJU’s use of the Trader Joe’s marks constituted nominative fair use and therefore could not constitute dilution. However, the Ninth Circuit observed that TJU had never raised nominative fair use as a defense, and that deprived Trader Joe’s of a fair opportunity to respond. The Ninth Circuit reminded that the nominative fair use analysis required a distinct three-factor test established in New Kids on the Block v. News America Publishing, Inc., which the District court failed to apply. The Ninth Circuit also addressed the District Court’s determination that the NLGA stripped it of jurisdiction to grant injunctive relief in the case. The Ninth Circuit noted that NLGA prohibited Courts from issuing injunctions in cases “involving or growing out of a labor dispute.” The District Court had reasoned that because Trader Joe’s filed its trademark suit shortly after the National Labor Relations Board issued a complaint against it for unfair labor practices, the trademark dispute must have stemmed from an ongoing labor controversy. On the contrary, the Ninth Circuit held that the conclusion was premature and at the pleading stage, no factual record existed to determine whether the trademark claims and requested injunction were indeed rooted in a labor dispute or whether they pertained instead to the union’s commercial sale of allegedly infringing merchandise to the public. The Ninth Circuit explained that determining whether the NLGA applied would require analysis of whether the employer-employee relationship was the matrix of the controversy, a fact-intensive inquiry inappropriate for early dismissal. In reversing and remanding the case, the Ninth Circuit underscored that trademark infringement and labor disputes occupy distinct spheres of federal law and that the Lanham Act protects trademark owners from unauthorized commercial use of their marks, while the NLGA limits federal courts’ interference in labor organizing activities. The Ninth Circuit concluded that where a union’s use of an employer’s trademark extends beyond organizing or identification purposes into the sale of commercial goods, Lanham Act claims may proceed. Consequently, the Ninth Circuit reversed the dismissal of Trader Joe’s Lanham Act claims for infringement, dilution, unfair competition, and false designation of origin, as well as related state-law claims, vacated the District Court’s attorneys’ fee award to TJU, and remanded for further proceedings to develop the factual record and reconsider the applicability of the NLGA. Trader Joe's Co. v. Trader Joe's United, 150 F.4th 1040; 2025 USPQ2d 1149; 2025 U.S. App. LEXIS 23131 (9th Cir. Sept. 8, 2025). [VR] District Court Rejects Eli Lilly’s Proposed Consent Judgment and Injunction Due to Procedural and Legal Deficiencies In this case, Eli Lilly and Company v. Defendants (two Seattle-area medical clinics and their physicians), the U.S. District Court of Washington (“the Court”) denied the parties’ Joint Motion to Approve and Enter Consent Judgment and Permanent Injunction, citing multiple legal and procedural deficiencies. Eli Lilly, a major pharmaceutical company, had sued the defendants in June 2024 for allegedly using its “Mounjaro” and “Zepbound” trademarks, both FDA-approved drugs containing tirzepatide, to promote and sell compounded tirzepatide without authorization, in violation of the Lanham Act and Washington’s Consumer Protection Act (CPA). The Court had previously dismissed the CPA claim but allowed the federal trademark and false advertising claims to proceed. The parties eventually settled and jointly requested that the Court approve a consent judgment and issue a permanent injunction, but the Court declined. The judge emphasized that a consent judgment differed from a standard settlement or stipulated dismissal because it made the Court responsible for enforcing the agreement through contempt powers. Therefore, before entering such a judgment, a Court must ensure that it is “fair, reasonable, equitable, and consistent with public policy.” However, the parties failed to explain why a consent judgment was necessary instead of a simple dismissal or to provide any information demonstrating fairness or legality. They also did not submit their settlement agreement, even though they asked the Court to retain jurisdiction to enforce it, making it impossible for the Court to evaluate whether it was lawful or fair to third parties. Moreover, the proposed consent judgment improperly sought to have the Court declare Eli Lilly’s trademarks “valid and enforceable,” despite the case never having reached a stage that would justify such a ruling. Since the litigation ended early, with no factual findings on the merits, the Court found it premature to make any declarations about the validity of Eli Lilly’s trademarks. The Court also rejected the parties’ request for a permanent injunction, which had been tied to the consent judgment. The judge noted that the parties did not address any of the four legal factors required for injunctive relief under eBay Inc. v. MercExchange (2006), including irreparable harm, inadequate legal remedies, balance of hardships, and public interest. The Court emphasized that simply stating that the parties had “agreed to resolve this case” was insufficient. The Court further criticized the proposed injunction for including overly broad provisions, such as deeming it served on all affiliates and employees of the defendants, and for asking the Court to supervise a confidential settlement agreement that had not even been submitted. Ultimately, the Court held that it could not “rubber stamp” the parties’ proposal or devote judicial resources to supervising a private settlement that failed to meet federal standards for fairness and legal compliance. Accordingly, the judge denied the motion in full, without prejudice, leaving the parties free to pursue an alternative resolution, such as a standard stipulated dismissal, outside the Court’s continuing jurisdiction. Eli Lilly & Co. v. Alderwood Surgical Ctr. LLC, 2025 U.S. Dist. LEXIS 185992 (W.D. Wash. September 22, 2025). [VR] TTAB Upholds Refusal of Princeton Equity Group’s Mark as Geographically Descriptive, Cautions Against Waiving Arguments on Appeal In a precedential opinion issued recently, the Trademark Trial and Appeal Board (“TTAB”) considered Princeton Equity Group LLC’s (“the applicant’s”) bid to register the mark “PRINCETON EQUITY GROUP” for “financial services, namely, strategic financial advisory services, providing equity capital for others” in International Class 36. The Trademark Examining Attorney issued a final refusal to register the mark on two independent grounds. First, under Section 2(e)(2) of the Trademark Act, the Examining Attorney found the mark to be primarily geographically descriptive of the applicant’s services. Second, under Section 2(d), the Examining Attorney determined there was a likelihood of confusion with an existing registration for the mark “PRINCETON ENTREPRENEURIAL HUB”, which covered related financial and monetary support services for startup ventures. After these refusals were made final, the applicant appealed to the TTAB and simultaneously filed a request for reconsideration. The TTAB temporarily suspended the appeal to allow for reconsideration, but when the Examining Attorney maintained the refusals, the appeal resumed. In reviewing the appeal, the TTAB addressed the Section 2(e)(2) refusal first. The TTAB noted that instead of offering substantive legal or factual arguments, the applicant stated only that it “repeats and restates the arguments and evidence set forth” in its previous responses to the United States Patents and Trademark Office (“USPTO”) during prosecution and added that it is “common” for financial companies to use geographic terms in their trademarks. The applicant cited three registrations containing the term “ASPEN” as examples. The TTAB found these references inadequate and irrelevant, explaining that prior registrations of other marks would not control the outcome in a different case. The TTAB cited In re Nett Designs, Inc. and In re Boulevard Entertainment, Inc. for the principle that each case must be decided on its own merits, even if similar marks were registered in the past. The TTAB also discussed the procedural issue of waiver and forfeiture of arguments on appeal. It emphasized that arguments not developed in an appeal brief are considered waived, and a mere statement incorporating earlier filings “by reference” is insufficient to preserve those arguments for review. The TTAB also noted that allowing such incorporation would undermine the rule limiting appeal briefs to 25 pages and would improperly shift the burden of sorting through past arguments onto the Board. Citing SmithKline Beecham Corp. v. Apotex Corp. and In re Killian, the TTAB reiterated that skeletal, conclusory, or perfunctory arguments are treated as waived. Although it found the applicant’s presentation inadequate, the TTAB chose, out of fairness, to review the record in this case because it had not previously issued a precedential ruling on this precise procedural issue.On the merits of the Section 2(e)(2) refusal, the TTAB applied the established three-part test for determining whether a mark is primarily geographically descriptive. The test requires showing that: (1) the term is the name of a place known generally to the public; (2) the public would make a goods/place or services/place association, assuming the goods or services originate from that place; and (3) the goods or services in fact originate from that location. The Board found all three elements satisfied. The Board determined that “Princeton” refers to a well-known geographic location i.e. Princeton, New Jersey. Further, the applicant’s business is located in Princeton, and they provide their financial services from that location. The TTAB also highlighted that because “Equity Group” merely describes the nature of the applicant’s services and adds no distinctiveness, the primary significance of the mark as a whole remained geographic. As a result, consumers would likely associate the financial services with the town of Princeton. The TTAB further dismissed the applicant’s arguments about other marks containing geographic names, noting that such examples did not establish any legal right to registration, and held that the USPTO’s decision-making process was not bound by past errors or inconsistencies in prior registrations. Having found that the applicant’s mark is primarily geographically descriptive, the TTAB affirmed the Section 2(e)(2) refusal. Since that refusal alone was sufficient to bar registration, the TTAB declined to reach or analyze the alternative refusal under Section 2(d) for likelihood of confusion with the mark “PRINCETON ENTREPRENEURIAL HUB”. In conclusion, the TTAB held that the marks primarily signifying a geographic location where the applicant’s services originate are not registrable under Section 2(e)(2); and that applicants must properly and explicitly argue their positions in appeal briefs rather than incorporating earlier filings by reference. The TTAB’s ruling affirms the Examining Attorney’s decision and serves as a precedent warning that undeveloped or perfunctory arguments in TTAB appeals may result in waiver and affirmance of refusal. In re Princeton Equity Grp. LLC, 2025 TTAB LEXIS 242; 2025 USPQ2d 829 (TTAB June 6, 2025). [VR]
NYIPLA Highlights
We are delighted to recognize past NYIPLA President Dale Carlson on receiving the 2025 Distinguished IP Practitioner's Dinner Award for Student or Clinic Member Contribution from the Judge Janet Bond Arterton Inn of Court, Connecticut IP Law Association (CIPLA), and Connecticut Bar Association IP Section on November 13th, 2025. Dale’s decades-long commitment to the intellectual property community—including his service as the 88th President of NYIPLA, his stewardship as the Association’s historian, and his distinguished career in practice and academia—has profoundly shaped generations of young IP lawyers. The award recognizes the achievement and influence of Quinnipiac Law’s Intellectual Property Concentration, established in 2004 by Professor Emeritus John Morgan, who also played a key role in launching Dale’s teaching career in 2000. The program has become a hallmark of the School of Law’s dedication to preparing students for practice in one of the most dynamic areas of the legal profession. This honor reflects Dale’s exceptional dedication to educating students, bridging theory and practice, and inspiring future practitioners to engage meaningfully with the profession. It also highlights the law school’s strong ties to Connecticut’s legal community and its commitment to innovation in legal education. NYIPLA would like to congratulate Dale on this well-deserved recognition. Julie Pinette gave the award. Her comments are included below. “My name is Julie Pinette and I sit on the Board of the Judge Janet Bond Arterton Inn of Court. It's my pleasure to present the Student or Clinic Member Contribution Award tonight. Professor Dale Carlson began his career in corporate practice with Union Carbide Corporation and then later with Olin Corporation. He then transitioned to private practice at Wiggin and Dana where he practiced for twenty years. While his accomplishments are too extensive to list here tonight, I imagine that he is particularly proud of serving as the 88th President of the New York Intellectual Property Law Association from 2010 to 2011. In the spring of 2000, Professor Carlson taught his first course at Quinnipiac as an adjunct professor. He retired as the head of the patent practice group at Wiggin and Dana in 2013 and became a full-time faculty member of Quinnipiac in 2014. He is now the head of the IP concentration and in his 26th year of teaching. As his current and former students all know, he still serves as the NYIPLA historian and authors the Historian's Corner column. Dale "Best Mode" Carlson, as he is known in some circles, has been many law students' first exposure to the intellectual property discipline. Drawing on his experiences from both in-house and law firm settings, he brings real world experience to the classroom, helping students to bridge the gap between academic life and life as a practicing lawyer. He not only teaches students the foundations of intellectual property, but encourages his students to participate in IP attorney organizations well before they even graduate. Students are in this room tonight because of his commitment to fostering young IP attorneys. And I am here before you tonight because I sat in Professor Carlson's classroom ten years ago. Professor Carlson, for your significant contributions in educating students about intellectual property law, both inside and outside of the classroom, it is my distinct pleasure to present you with this year's Student or Clinic Member Contribution Award.”
Historian's Corner
BY: DALE CARLSON
It’s hard to imagine that 2025 marks twenty years of my serving as NYIPLA historian. The two decades have passed in a flash. In celebration of twenty years, this column highlights ten of my favorite prior ones. Appendix A presents my very first column after I was appointed historian by then-president Ed Vasallo. That column is from the September/October 2005 issue of the NYIPLA Bulletin. It discusses the bleak situation that existed before relief came in the form of the Patent Act of 1952, co-authored by NYIPLA past president Giles Rich. In fact, Judge Rich lived until age 95 and was at the time the oldest living active federal judge in the history of our nation. This can be compared with NYIPLA past board member, Judge Pauline Newman, who is now age 98 but has unfortunately not been able to hear cases lately. Ah, politics, always a culprit! Appendix B provides a “Back to the Future-ish” word-play on Judge Newman’s early years on the bench by juxtaposing her presentation in 1984 at Arrowood Conference Center in Westchester about the creation of the Federal Circuit TWO YEARS earlier with the TWO DECADES she had completed on the bench by the time of publication of the January/February 2006 issue of the NYIPLA Bulletin. The Arrowood gathering was just one of a long string of Fall CLE weekend seminars hosted by the NYIPLA back then. Appendix C, from March/April 2007, discusses another CLE weekend seminar, this one held at Mohonk Mountain House in the Fall of 1989. The featured speaker and guest of honor was Howard T. Marker, former Chief Judge of the Federal Circuit. Past President John Pegram presented Judge Markey with a teddy bear as a token of NYIPLA’s appreciation of his service on the bench. As an aside, Judge Markey looked a bit like his mascot in latter years, and so those in the inner circle labeled him “Judge Teddy Bear”. Appendix D, from March/April 2008, describes booklets provided by NYIPLA past board member Phil Shannon about the early history of our Association. One booklet included discussion about a patent appeals court a full half-century before the Federal Circuit was created. Appendix E, from March/April 2009, describes NYIPLA member Joe Catanzaro’s meetings with C. Yardley Chittick. At the time, C. Yardley was the oldest living registered patent attorney in the United States. He made it to age 107 and two-thirds. The column describes his encounters with Humphrey Bogart and Thomas Edison. Appendix F, from August/September 2009, reflects on the life of past president William C. Conner. A companion piece in that issue of the Bulletin provides NYIPLA Past President David H.T. Kane’s personal reflections about Judge Conner. David, a mentor of mine, revitalized the Fall CLE weekend seminar hosted by the NYIPLA for many years. Appendix G, from December/January 2010, describes the passing of NYIPLA past presidents Lorimer C. Brooks and Al Robin, in addition to the passing of Judge Conner. They were all kingpins of our profession. Appendix H, from February/March 2010, describes both Judge Rich and his dad, G. Willard Rich, in the context of the very first NYIPLA Judges' Dinner at the Waldorf on December 6, 1922, back when the Waldorf was located where the Empire State Building is now. Clearly the NYIPLA was the launching-pad for Judge Rich’s long and distinguished career of years on the federal bench. During my time as NYIPLA president, Past President John Pegram kindly agreed to serve as interim historian. And so he wrote, or is it writ? One of his columns is included in Appendix I, from April/May 2011. He describes women who played a significant role in our Association years ago. One such woman was past board member Evelyn M. Sommer. She preceded me in teaching patents at Quinnipiac Law School. Appendix J, from February/March 2016, describes the passing of past board members David Ryan and Evelyn Sommer. As the title to column suggests, they were giants in the IP field. If you wish to read any of the other history columns, you can find them at nyipla.org or you can email me at dale.carlson@quinnipiac.edu . Enjoy!
“As Time Goes By – And So It Goes”
Historian's Corner - Appendix A
Historian's Corner - Appendix b
Historian's Corner - Appendix c
Historian's Corner - Appendix d
Historian's Corner - Appendix E
Historian's Corner - Appendix f
Historian's Corner - Appendix G
Historian's Corner - Appendix h
Historian's Corner - Appendix i
Historian's Corner - Appendix j
The Board meeting was held at the offices of Hughes, Hubbard & Reed with members attending in-person and via Zoom. In attendance were: Patrice Jean, President Abigail Struthers Paul Bondor David Bomzer (Zoom) Jeffrey Coleman (Zoom) Cheryl Wang Robert Rando (Zoom) Jenny Lee Christopher Loh Lauren Emerson (Zoom) Eric Greenwald Ashley Ross (Zoom) Hon. Roslynn Mauskopf Deirdre Clarke (Zoom) Jonathan Berschadsky James Breen (Zoom) Jenna Deneault Nick Forgione Christine-Marie Lauture (Zoom) President Patrice Jean called the meeting to order at around 5:13 pm ET. Paul Bondor joined at 5:16 pm, Eric Greenwald joined at 5:21 pm and Christine Lauture joined at 6:07 pm. The board waived the reading of the minutes and approved the minutes from the previous board meeting. Financial Report. Jeff reported that revenue was up across the board. Judges' Dinner expenses are in-line with previous year so far, but ultimately will be a bit higher. Day of Dinner CLE was much smaller loss. Board discussed cost savings implemented such as floral arrangements. Discussed impact of new agency policies on attendance, with less judges from PTO, PTAB & ITC. Some judge’s paid the government rate themselves. New members. All new members deferred to next year. Conner Inn of Court. Patrice reported the Conner Inn reached out to NYIPLA to see if there’s joint opportunity to support increasing membership. Board approved motion. Amicus Briefs Committee. Abby noted request from LAC-NJ for input on DNJ pattern jury instructions, with comments due by April 30th. Legislative Action Committee. Paul reported there has been no noticeable traction on PERA, PREVAIL, or RESTORE acts. Confirmation hearings in May which might provide a sense of direction on policies. Appears to be interest in focusing on pricing in pharma/health sector. PTO is interested in S. Ct. guidance on Section 101. Chris Israel to have quick call with PTO to figure out its desired approach & goals. Judges' Dinner – Board discussed feedback received, from the logo on the dessert chocolate to Judge Salas’s impactful speech. Discussed ways to involve junior lawyers at the dinner generate more buzz for the event, and explore early bird pricing. Subcommittee will be set up. 2025 Hon. William C. Conner Writing Competition. Judge Mauskopf reported that 35 submissions were received, with review divided into 17 papers per group. Submissions included those from law schools outside of NYC metro area which suggests increased outreach to law schools was successful. Board discussed the submissions and committee recommendations. Motion to approve the committee’s recommendations for winner and runner up unanimously passed. Previous/ Upcoming programs 03/12 Young Lawyers Committee Happy Hour Abigail Struthers reported event was well-attended, 55 registered; first event that turned a profit because no rental & no advance drink fees, only what was consumed. 03/18 PTAB Committee Meeting David Bomzer – 25 attendees via zoom 03/21 Day of Dinner CLE Program Paul Bondor – well-attended & well-received; less money lost; covered new administration’s priorities with perspectives from Coke Stewart at USPTO, Judge Stark with judicial insights, Peter Anthony Pappas with Senate insights; and Chris Israel tying everything together. 03/25 Columbia Careers in IP Law Program Patrice Jean – turnout not as high as expected but attendees gave positive feedback; protests on campus may have had impact on attendance. 04/03 Patent Infringement Skills Program Jennifer Deneault – event was well-done; at Groombridge with 2 in-house and 2 outside counsel panelists. 04/09 AABANY x YLC Game Night Jenny Lee - joint event with AABANY’s IP Committee at Fish & Richardson; started during board meeting 04/15 PTAB Committee Meeting David Bomzer – Covers revamped Director Review under new administration 04/16 Litigation Funding Program Feikje van Rein – 1.5 hrs in-person at Orrick; 10 registered so far; good speakers lined up including Former Chief Judge Linaris from NJ, Denise DeFranco who spoke at Biosimilars & John Colikowski head of IP policy at Nokia 04/29 AI Copyright Webinar Lauren Emerson – 12 – 1 pm via Zoom; will report next meeting 04/30 Patent Committee meeting in-person at Haug Partners - title pending, Joy & Clint organizing 05/07 Annual Meeting 2-9 pm at Union League Club Abigail Struthers – CLE program panel, PTAB Ken Adamo moderator; speaker for dinner pending confirmation 05/28 NYIPLA x JPAA Joint Program 5-6:30 pm via Zoom 06/26 TM Half-Day CLE Program Deirdre Clarke – planning is going well; John Welsh keynote speaker to give overview of TTAB & Fed updates; Panel on NAD proceedings; How Not to Be Copywrong panel; Fashion Law Committee to cover dupes in cosmetics including Elf v Benefits case; Elaina Van Horn to speak on anti-counterfeiting; Tiffany Wu to provide FTC updates; 1 panel pending TBD possibly Copyright Committee or Entertainment Media & Social Media committee 07/16 Moot Court CLE Program Rob Rando – at Thurgood Marshall courthouse; 2nd Circuit moot court; planning to begin 2025 One-Day Patent CLE Program Abigail Struthers – Aiming for Nov date; not much to report yet; Design Patent group may present something special Nominations sheet included; Motion to approve was passed. Rob & Chris moving off the board; AAC James Breen & Nick Forgione staying on; Lindsey Fleischman and RJ McLaughlin to join; Christine Lauture transitioning to co-chair of Entertainment Sports & Social Media Committee. Committee Reports. NYIPLEF received submissions for scholarship; meeting tomorrow; likely awarding 2 scholarships at annual meeting. Old Business. None New Business. None. Executive Session to be scheduled to discuss RRR agreement. Meeting adjourned at 6:50 pm ET.
MINUTES OF APRIL 9, 2025 MEETING OF THE BOARD OF DIRECTORS OF THE NEW YORK INTELLECTUAL PROPERTY LAW ASSOCIATION In-Person at Hughes, Hubbard & Reed & Virtual via Zoom New York, New York
MINUTES OF MAY 7, 2025 MEETING OF THE BOARD OF DIRECTORS OF THE NEW YORK INTELLECTUAL PROPERTY LAW ASSOCIATION In-Person at Union League Club New York, New York
The Board meeting was held at the Union League Club with members attending in-person. In attendance were: Abigail Struthers, President Paul Bondor Hon. Roslynn Mauskopf (Ret.) Michael Johnson Jenny Lee Cheryl Wang Patrice Jean Lauren Emerson Eric Greenwald Jonathan Berschadsky PJ Murphy III Laura Chubb Jeffrey Coleman James Breen Lindsey Fleischman Nicholas Forgione RJ McLaughlin Michael Scerbo President Abby Struthers called the meeting to order at 5:47 pm ET. Adjourned 6:11 pm ET. The board waived the reading of the minutes and approved the minutes from the previous board meeting. Welcome. Abby welcomed the new members and discussed the board book. She noted certain forms that board members would need to sign, including the conflict of interest. President’s Remarks: Abby commented on the successful efforts of Immediate Past President Patrice Jean and Past President Rob Rando in increasing membership to numbers comparable to pre-pandemic levels. She shared her goals and vision for the term. President Struthers thanked the Past Presidents for attending the meeting and for their valuable input & participation. Copyright Committee: Abby noted board approval needed for comments in response to Notice of Inquiry regarding a study of the Copyright Claims Board. Board members discussed initial thoughts. Abby noted that an email will circulate for voting after members have had an opportunity to review. Old Business. None New Business. None. Executive Session to be held tomorrow to discuss RRR agreement. Meeting adjourned at 6.11 pm ET
MINUTES OF JUNE 11, 2025 MEETING OF THE BOARD OF DIRECTORS OF THE NEW YORK INTELLECTUAL PROPERTY LAW ASSOCIATION In-Person at Arnold & Porter & Virtual via Zoom New York, New York
The Board meeting was held at the offices of Arnold & Porter with members attending in-person and via Zoom. In attendance were: Abigail Struthers, President Hon. Roslynn Mauskopf (Ret.) Michael Johnson Jenny Lee Lauren Emerson Ashley Ross (Zoom) Jonathan Berschadsky Deirdre Clarke PJ Murphy III Laura Chubb Jeffrey Coleman Jennifer Rea Deneault James Breen (Zoom) Lindsey Fleischman (Zoom) Nicholas Forgione RJ McLaughlin Michael Scerbo President Abigail Struthers called the meeting to order at 5:08 pm ET. The board waived the reading of the minutes and approved the minutes from the previous board meeting. Abby reminded everyone that all board members must complete the Conflict-of-Interest electronic form. No financial report for this month. Fiscal year just closed April 30th and audit begins soon. Jeffrey Coleman also reported there were 170 new members, which included a number of students from NYIPLEF and Conner Writing, and the rest were largely from the Judge’s Dinner. The board waived the reading of the new members’ names and approved the new members for admission. Membership Committee: Jenna and Nick addressed updates to the committee selection list, specifically through the new member welcome email. Legislative Action Committee. Judge Mauskopf mentioned that the committee met with Chris Israel on June 4th, discussing the firing of the library of congress and registrar of copyrights. New bill to appoint library of congress appointed by congress and registrar of copyrights appointed by president, confirmed by the senate. No bill has been floated yet, but seems to be a potential solution. Idea to move the copyright office to the USPTO – vocally opposed by the industry. Big Beautiful Bill provision 10-year moratorium on state level AI legislation/regulation – lots of opposition in senate from both sides of the aisle. PERA and PREVAIL on hold – awaiting John Squires confirmation. Upcoming hearing for No Fakes act. Expected John Squires confirmation by July 4 recess. Secretary Lutnick appropriations hearing – discussion on fee diversion from the patent office. Lauren suggested a liaison from each committee to increase representation from each sector of IP law. More involvement from Chris Israel and ACG. Judge Mauskopf outreach to Coke Stewart for D.C. trip to meet with John Squires once confirmed. Abby flagged that Colman alerted NYIPLA to the NYS patent settlement bill – declaring that any pharma settlement is per se anti-competitive. Tony and Rob proposing text for NYIPLA white paper. Mike flagged a second bill that NYIPLA has already written a white paper on. (California v. non-California). Abby flagged Senator Tillis’ BBB language to increase tax liability on proceeds from third party litigation. Judges' Dinner – March 27, 2026. Abby reported that the contract with Hilton was signed and outreach to potential speakers is in progress. She shared the proposed recipient for Outstanding Public Service Award. The board approved moving forward with the proposed recipient and reaching out for next steps. The board approved the proposal for a two-table minimum required to book a hospitality suite. Deirdre discussed potential “early-bird pricing”, to encourage early reservations – proposal at the July meeting. Discussion of off-site events. Ideas floated to increase attendance by younger attorneys. Amicus Briefs Committee. Abby provided the monthly report noting the committee is considering filing an amicus brief in Ingenico Inc. v. Ioengine, LLC in support of rehearing en banc. Amicus briefs will be due July 2, 2025. Rob Isackson to provide initial draft. Feikje will send out conflict check. Associate Advisory Council. Eric Greenwald will provide a report at the next meeting. Previous/ Upcoming programs 05/07 Annual Meeting – Abby provided a report, noting Judge Brown’s magical presentation and the CLE panel, including Ken Adamo, Jamie Simpson, David Kappos and Terry Rea 05/28 JPAA Joint Program – hosted by Jordan Garner with two attorneys from the JPAA. Discussed both patent and trademark practice at the JPAA, highlighting differences between Japan and US. 06/26 TM Half-Day CLE – Deirdre encouraged board members to attend and went through the program details. 07/16 Second Circuit Moot Court Program – organized by Rob Rando. Venable, Arnold & Porter, Goodwin and Haug Partners are the participating firms. Hypothetical involves NIL and use of AI in witness statements. 08/07 Patent Law & Practice Committee Meeting – Jeffrey Reported that the program will cover patent eligibility on AI. Speaker - Robert Frederickson (Goodwin) 11/04 One-Day Patent CLE Program – to be hosted at Arnold & Porter. Initial programming call with committees to be held in late June. Fall JAMS CLE Series – PJ reported that JAMS will plan multiple programs with their speakers alongside NYIPLA. Committee Reports: YLC: additional co-chair participation on the monthly call to encourage YLC members to get involved with other committees. Two committees per month. Abby to reach out to the co-chairs for availability. Old Business: None New Business: Deirdre mentioned the ethics presentation from INTA. Would like to coordinate her to present for NYIPLA, either virtually or in-person. Michelle Galloway, of counsel at Cooley. Meeting adjourned at 6:18 pm ET.
MINUTES OF JULY 9, 2025 MEETING OF THE BOARD OF DIRECTORS OF THE NEW YORK INTELLECTUAL PROPERTY LAW ASSOCIATION Virtual via Zoom New York, New York
The Board meeting was held via virtual format via Zoom. In attendance were: Abigail Struthers, President Paul Bondor Hon. Roslynn Mauskopf (Ret.) Michael Johnson Jenny Lee Cheryl Wang Patrice Jean Lauren Emerson Eric Greenwald Jonathan Berschadsky Deirdre Clarke PJ Murphy III Laura Chubb Jeffrey Coleman Jennifer Rea Deneault Lindsey Fleischman Nicholas Forgione RJ McLaughlin Michael Scerbo President Abigail Struthers called the meeting to order at 5:05 pm ET. The board waived the reading of the minutes and approved the minutes from the previous board meeting. Abby reminded the board to complete the Conflict of Interest form. Financial Report. Jenny reported that financials were trending in a good direction - still ahead. Deposit for hotel has been paid. Audit is in progress – materials are being submitted. The Board discussed corrections to be made in this year’s audit. Results of audit will be presented at the September board meeting. New Members. Jenny reported there were 19 new members, mostly students. The board waived the reading of the new members’ names and approved the new members for admission. Discussed lapsed memberships and the draft welcome message to new members with invitation to join committees. Legislative Action Committee. Judge Mauskopf reported that the committee met July 2nd and discussed items in the Big Beautiful Bill. Highlights included: items not in the BBBill, such as AI moratorium on passing state legislation, and tax on 3rd party litigation funding. The Committee discussed Sen Tillis’s resignation and the potential impact to the IP subcommittee as well as the IP-related bills he championed, such as PERA. AI Action plan expected to be reported in mid-late July – unclear which IP issues might be included. Committee members also discussed mandamus petitions being filed by SAP & Motorola, challenging PTAB discretionary denials. Update on John Squires – hearings are over but not yet confirmed. Judges' Dinner – March 27, 2026. Abby discussed interest in having an author as the guest speaker. Board members discussed potential candidates. Pricing structure was revisited. Motion to keep pricing the same as last year was approved. Amicus Briefs Committee. Abby reported that no immediate filings coming up. Most recently, Committee chose to monitor the Ingenico Inc. v. Ioengine, LLC case. Committee will continue to monitor a number of cases including Hikma Pharm (skinny drug labels), RiseAndShine Corp v PepsiCo (whether strength of trademark is question of law or fact), Thomson Reuters (whether AI training on copyrighted materials is fair use), and Recentive Analytics v Fox Corp. Associate Advisory Council. Eric Greenwald reported Michael, Lindsey & RJ will be joining Nick on the AAC. Starting August, recurring meetings to discuss programming & engagement. Previous/ Upcoming programs 06/17 PTAB Committee Meeting – Covering recent PTAB decisions 06/26 TM Half-Day CLE – Deirdre reported it was well attended – approx. 70 people and 15 presenters. Panels were well-received. Firms also brought summer associates, and Young Lawyers Committee sent out an email blast. 07/15 PTAB Committee Meeting – Program entitled Review of Acting Director Coke’s Review of Decisions 07/16 Second Circuit Moot Court Program – organized by Rob Rando. Venable, Arnold & Porter, Goodwin and Haug Partners are the participating firms. Hypothetical involves NIL and use of AI in witness statements. 07/25 Patent Law & Practice Committee Meeting 08/06 Design Patent Committee Meeting – Author Rinaldi, who wrote Patented: 1000 Design Patents, will be speaking about his book. Location still needed. 08/07 Patent Law & Practice Committee Meeting Robert Frederickson speaking – he represented Recentive Analytics in the AI machine learning case. 08/07 Entertainment / YLC Happy Hour – Estimate attendance will be around 50-65 attendees 10/09 YLC Happy Hour “Cheers and Chairs” 11/04 One-Day Patent CLE Program – to be hosted at Arnold & Porter. Prelim planning calls held; Former commissioner of patents confirmed as speaker with Patrice. Might need to move the date since its voting day in NYC. Fall JAMS CLE Series – October 22nd, looking for 2 active NYIPLA members; this will be 1st in series. Fall IP Transactions Bootcamp– Planning in progress; Oct 14, 21, 28th evening tentatively similar to past years. Covering an array of IP practice areas, including Copyright, Trademark, Fashion, Entertainment, M&A due diligence, Cybersecurity & IP Transactions. Committee Reports: None Old Business: None New Business: None Meeting adjourned at 6:45 pm ET.
The Board meeting was held at the Union League Club with members attending in-person and via Zoom. In attendance were: Abigail Struthers, President Paul Bondor Hon. Roslynn Mauskopf (Ret.) Michael Johnson Jenny Lee Cheryl Wang Patrice Jean Lauren Emerson (Zoom) Eric Greenwald (Zoom) Ashley Ross (Zoom) Jonathan Berschadsky Jeffrey Coleman Lindsey Fleischman Nicholas Forgione RJ McLaughlin President Abigail Struthers called the meeting to order at 4:15 pm ET. The board waived the reading of the minutes and approved the minutes from the previous board meeting. Audit Report. Stephanie Crocenzi provided the financial audit results. She reported that no issues arose while conducting the audit. For the 1st year in a decade, there was an increase in net assets. Revenue from Judges' Dinner was higher this year over last year. Membership fees are the 2nd largest revenue category. A motion to approve the financials was passed. New Members. Jenny reported there were 15 new members. The board waived the reading of the new members’ names and approved the new members for admission. Amicus Brief Committee. Paul reported that many cases are being monitored but none that require an immediate vote. He noted that the committee decided not to submit an amicus brief in the Cox v Sony Music case regarding whether service providers can be liable if they are aware of certain activity. The committee is monitoring cases such as Hikma Pharm v. Amarin, RiseandShine Corp v. Pepsico, as well as a couple of AI-related cases, Thomson Reuters v. ROSS and Bartz v. Anthropic. Legislative Action Committee. Judge Mauskopf reported on the hearings coming up including AI this week. She noted that succession planning with Sen Tillis is unclear. In the meantime, Abby has connected with one of the co-sponsors of PERA, Rep Kevin Kiley. She noted that PREVAIL bill may still move forward but there is no consensus as to whether anyone wants to discuss the RESTORE act. The board discussed the potential benefit to the organization and membership if a visit on the hill were planned with Judge Mauskopf. She noted personnel changes and vacancies at various levels & across various branches, such as with the USPTO’s PPAC & TPAC and at the federal circuit. Other noteworthy updates include Shiri Perlmutter’s (Copyright Office) win at the Court of Appeals and Secretary Lutnick considering having a percentage of patent profits from universities receiving federal funding go to the government. Judges' Dinner – March 27, 2026. Abby confirmed Dave Barry as the guest speaker. Motion was passed to award the proposed OPS award nominee. The board discussed whether to host the Day of Dinner CLE this year. Upcoming programs 09/16 Monthly PTAB program via Zoom 10/09 YLC Happy Hour “Cheers and Chairs” at the Joyce Public House 5:30 – 8 pm ET. Board liaisons to reach out to their committee chairs. 11/05 One-Day Patent CLE Program – to be hosted at Arnold & Porter. Planning is well underway & should be done soon. Many panels are already set. There will be panels on ethics as well as AI. Fall JAMS CLE Series – October 22nd at the JAMS building. Mock exercises for litigators. Fall IP Transactions Bootcamp – Planning in progress; Oct 14, 21, 28th evening tentatively similar to past years. Feikje noted that marketing support was needed. 11/12 Mock Interview & Resume Review at Groombridge from 6-8 pm ET. AAC & YLC co-hosting. Old Business: None New Business: The board discussed proposal from a French attorney at a Joint Patent Practice CLE, for a joint event with an NYIPLA committee and the Unified Patent Court. Meeting adjourned at 5:50 pm ET.
MINUTES OF SEPTEMBER 15, 2025 MEETING OF THE BOARD OF DIRECTORS OF THE NEW YORK INTELLECTUAL PROPERTY LAW ASSOCIATION In-Person at Union League Club & Virtual via Zoom New York, New York
MINUTES OF OCTOBER 7, 2025 MEETING OF THE BOARD OF DIRECTORS OF THE NEW YORK INTELLECTUAL PROPERTY LAW ASSOCIATION In-Person at Arnold & Porter & Virtual via Zoom New York, New York
The Board meeting was held at the offices of Arnold & Porter with members attending in-person and via Zoom. In attendance were: Abigail Struthers, President Paul Bondor Hon. Roslynn Mauskopf (Ret.) (Zoom) Michael Johnson Cheryl Wang Patrice Jean (Zoom) Lauren Emerson Eric Greenwald (Zoom) Ashley Ross (Zoom) Jonathan Berschadsky (Zoom) Deirdre Clarke PJ Murphy III (Zoom) Laura Chubb Jeffrey Coleman Jennifer Rea Deneault (Zoom) Lindsey Fleischman (Zoom) Nicholas Forgione (Zoom) RJ McLaughlin President Abigail Struthers called the meeting to order at 4:07 pm ET. The board waived the reading of the minutes and approved the minutes from the previous board meeting. Financial Report. Jeff Coleman reported on behalf of Jenny Lee. Financials are up over last year’s balance. Judges' Dinner revenue was higher than last year. Currently, at a deficit but that is typical for this time of year. Feikje noted that the RRR admin fee is higher but the admin expenses are now spread over the year. New Members. Jeff Coleman reported on behalf of Jenny Lee. Membership is down a bit, some in Active 3-years, Associate, Corporate and Students. 12 new members since last meeting, 9 of which are students. The board waived the reading of the new members’ names and approved the new members for admission. Amicus Brief Committee. Paul reported that 2 cases being monitored were denied cert & have been removed from the monitor list. In the Rise & Shine v Pepsico case the government amicus is expected around May 2026 & at that point the ABC might weigh in. There are 4 Fed Circuit cases being monitored, nothing definite – ChromaDex pending oral argument, Regenex oral argument today, Teva no decision but argued in Sept, Rideshare v Lyft affirmed IPR finding claims invalid under Section 101 & fed court determined PTO guidance is not binding. Paul noted the committee welcomes members with copyright, trademarks & trade secrets related expertise to advise on notable cases that may be worthwhile for NYIPLA to weigh in. He will reach out to the relevant committees. The board discussed advocating for Congress to weigh in on what is currently the “wild west” landscape of AI cases. Board members also discussed membership interest in following & having NYIPLA weigh in on AI & fair use. Legislative Action Committee. Judge Mauskopf noted that the report is brief due in part to the shutdown. She noted the USPTO RIFs were not temporary furloughs but layoffs affecting admin staff not examiners. The USPTO also announced closure of its Denver, CO office. PERA hearing is still being held tomorrow; though there is steam, it’s not expected to really move forward. The USPTO has welcomed Director Squires and Coke Stewart will continue as deputy director. Conner Inn Writing Competition. Judge Mauskopf reported the rules were amended to address AI generated content. The board discussed the rule change & how the rule should be worded. Judge Mauskopf noted that entrants will be required to sign a copy of the rules as part of the submission process. She brought forward a proposal to increase the award amount by $500, which the board voted on and approved after members discussed prizes for comparable competitions. Judges' Dinner – March 27, 2026. Abby reported the keynote speaker has been confirmed and the nominee for OPS award. Details for the Day of Dinner CLE to be confirmed. Previous/ Upcoming programs a. 9/30 Trial Skills: Developing an Innovator Case theme Around Apportionment - With Mark Abate, Abby noted event was recorded, and reported attendance was not as high as expected. b. 10/09 YLC Happy Hour “Chairs and Cheers” - Eric Greenwald reported event will be held at Joyce Public House – expecting 30-50 attendees with 50 registrants so far. c. Fall IP Transactions Bootcamp - Jonathan Berschadsky reported that planning is all set; agenda is finalized. He discussed marketing support & whether it makes sense to do the bootcamp every 2 years. d. 10/15 Patent Litigation Committee Meeting - Michael Johnson reported this is eligible for CLE credit, the presentation will focus on Source Code reviews e. 10/21 PTAB Committee Meeting - P.J. Murphy reported it is via Zoom at 4 pm ET hosted by Charlie & Ken f. 10/22 The Value of Perspective: A Dynamic Discussion of Neutral Case Analysis and Moot Proceedings in Complex IP Litigation - P.J. Murphy reported this will be at the JAMS office in NYTimes building – PJ moderating panel ; Abby & Rob Rando & 2 former judges – neutral case eval & moot proceedings. g. 11/05 One-Day Patent CLE Program - Abby noted this event will take place at Arnold & Porter, right before board meeting; great panels & speakers h. 11/12 Mock Interview & Resume Review - Eric Greenwald reported that some interviewers are still needed for this annual event Committee Reports. AAC planning another event for young lawyers & law students – mental health related Seton Hall event – Newark – panelists needed – no date set yet – looking at Oct for event NYIPLEF – 1st meeting & in the process of planning gala – Jan 28 or 29 at Greenberg Traurig Old Business: None New Business: Inquiry from World Trademark Review The board discussed potential collab for event taking place today or tomorrow; WTR asked for co-promotion; short notice for this event but discussed if it might make sense in the future. It was noted that WTR is a for-profit org and the board decided to table this for next year. Invitation to 3/3 Roundtable in NYC from IP Office of Singapore Arbitration group; members discussed experience from last year Meeting adjourned at 5:48 pm ET.
Annual Meeting By: Programs Committee On May 7, 2025, Incoming Association President Abigail Struthers welcomed members and guests at the Union League Club. Abigail expressed her appreciation for outgoing president, Patrice P. Jean. The Annual Meeting started off with a CLE program on "The PTAB: Where We've Been - and Where We're Going," and we were joined by the following speakers: David J. Kappos, Former Under Secretary of Commerce for IP and Director, USPTO, Cravath, Swaine & Moore LLP Teresa Stanek Rea, Former Acting Under Secretary of Commerce for IP and Acting Director, USPTO, Rea Consulting LLC Jamie L. Simpson, Chief Policy Officer and Counsel, Council for Innovation Promotion (C4IP) Kenneth R. Adamo, Principal, Law Office of KRAdamo (Moderator) After the CLE program, members were invited to join us for the Committee Meetings, Annual Meeting of Members, Board Meeting, and the Awards Dinner. PTAB Committee Meeting: The Director’s Take On Time Bar, Discovery and Prior Claim Construction Decisions in Semiconductor Components v. Greenthread By: PTAB Committee On Tuesday, May 20, 2025 at 4:00 p.m. ET, the NYIPLA PTAB Committee discussed "The Director’s Take On Time Bar, Discovery and Prior Claim Construction Decisions in Semiconductor Components v. Greenthread. Acting Director Stewart continues to use director review to challenge seemingly unfair practices at the PTAB. In Semiconductor Components Industries, LLC v. Greenthread, LLC, IPR 2023-01242, IPR2023-01243, and IPR2023-01244, Paper 94 (PTAB April 24, 2025) (Stewart), the Acting Director issued an Order granting director review, vacating the final written decision (in all three IPRs) and remanding to the Board for further proceedings. Semiconductor Components addresses how time-bar decisions should be addressed at the PTAB, and what discovery should be granted and what claim construction orders from related proceedings can be presented in the briefing process. During the May 2025 PTAB Committee Meeting, Co-chairs Charley Macedo and Ken Adamo addressed this order and its implications on PTAB Practice. Navigating Japanese Patent & Trademark Law: Insights from Practitioners By: US Bar - Japan Patent Office and Japan Patent Attorneys Association (JPAA) On May 28, 2025, attendees joined NYIPLA and the Japan Patent Attorneys Association (JPAA) for a joint webinar exploring key aspects of Japanese patent and trademark law. Experienced practitioners from both jurisdictions provided practical insights, compared approaches, and highlighted recent developments impacting cross-border IP strategy. Speakers: Shinichi Ueda, Founding Partner, Ueda & Nakajima IP Law Firm (UNIP) Chihiro Iijima Wein, Trademark Attorney, Oshima, Nishimura & Miyanaga PPC Moderator: Jordan Garner, Partner, Leason Ellis LLP PTAB Committee Meeting: Monthly Update from the PTAB Committee By: PTAB Committee Attendees joined the NYIPLA PTAB Committee for its monthly meeting on Tuesday, June 17, 2025, at 4:00 p.m. ET via Zoom, where Co-Chairs Charley Macedo and Ken Adamo shared the latest committee updates. Hot Topics In Trademark & Copyright Law By: Trademark Law & Practice Committee On June 26, 2025, NYIPLA presented its annual Hot Topics in Trademark & Copyright Law half-day CLE program at Hughes Hubbard & Reed LLP. Sessions included: Meanwhile, Back at the TTAB - John L. Welch, Senior Counsel, Wolf, Greenfield & Sacks, P.C. National Advertising Division - Jared I. Kagan, Counsel, Debevoise & Plimpton LLP; Suzanne M. Hengl, Partner, Baker Botts LLP; and Zheng Wang, Attorney, BBB National Programs Update from the Federal Trade Commission - Tiffany Woo, Attorney, Federal Trade Commission The Impact of AI in Media: Through the Lens of Industry Professionals - Marcie Cleary, Partner, Frankfurt Kurnit Klein & Selz PC; Alicia Taylor, Partner, The Law Offices of Robert A. Celestin; Dawn David-Swan, Senior Cybersecurity Engineer, Financial Services; Michael Antonucci, Senior Counsel, TED Conferences; and Aliya Nelson, Partner, Greenspoon Marder LLP (Moderator) FY25 Updates: Measuring Success and CBP’s Enforcement of the DMCA - Alaina van Horn, Chief, Intellectual Property Enforcement Branch, U.S. Customs and Border Protection How Not to be Copy-Wrong with Copyright - Sudipta Rao, Head, Global Legal Brand Protection, Rights Creation, Novartis; Cheryl Wang, Attorney; Bryan Davidson, Vice President, Business and Legal Affairs, iHeartMedia; and Lauren B. Emerson, Partner, Leason Ellis LLP (Moderator) "Dupes" in the Fashion and Cosmetics Industry: A Discussion of Benefit v. e.l.f. Cosmetics - Hillary Lyon, Assistant General Counsel, e.l.f. Beauty, Inc.; Kathleen E. McCarthy, Partner, King & Spalding LLP; Anthony F. Lo Cicero, Partner, Amster Rothstein & Ebenstein LLP (Moderator) PTAB Committee Meeting: Review of Acting Director Coke's Discretionary Review Decisions By: PTAB Committee In recent months, Acting Director Coke Morgan Stewart has issued around fifty decisions discretionarily denying institution of trial in inter partes review proceedings. At the same time, Stewart has also denied an almost equal number of requests for discretionary denial. Attendees joined Co-Chairs Charley Macedo and Ken Adamo of the NYIPLA PTAB Committee on Tuesday, July 15, 2025, to find out what this means for parties to inter partes review proceedings as they discussed trends from these decisions. 9th Annual Summer Associate Moot Court Argument CLE Program By: Robert J. Rando, Past President of NYIPLA, & Partner at Patrick | Doerr LLP; Jennifer R. Deneault, NYIPLA Board Member, & Partner at Groombridge, Wu, Baughman & Stone LLP; and Jessica M. Stauring, Associate at Paul Hastings LLP This year's Summer Associate Moot Court Argument, which took place at the Thurgood Marshall U.S. Courthouse on July 16, 2025, was centered on name, image, likeness rights, appellate jurisdiction, and evidentiary issues surrounding the use of AI-generated material. Participating firms, which included Arnold & Porter LLP; Goodwin Procter LLP; Haug Partners LLP; Venable LLP, presented an oral argument on behalf of the interested parties. The Judges heard the argument, retired to conference the case, and returned to the bench with their comments. They also answered questions related to the mock argument and their deliberations in the case conference. The program was followed by a Networking Reception from 7:00 PM - 8:00 PM. The Judges' Panel consisted of the following: Hon. Debra Ann Livingston, Chief Judge, U.S. Court of Appeals, Second Circuit Hon. Richard J. Sullivan, Circuit Judge, U.S. Court of Appeals, Second Circuit Hon. J. Paul Oetken, District Judge, U.S. District Court, Southern District of New York Business Development Strategies Tailored for Patent Practitioners By: Patent Law and Practice Committee On July 25, Rudhir Krishtel joined the Patent Law and Practice Committee to discuss business development strategies tailored for patent practitioners. A former patent litigation partner at Fish & Richardson and senior in-house counsel at Apple, Rudhir now leads Krishtel, a professional training and coaching firm. In this session, he offered a candid look into the BD strategies that drive sustainable growth for IP lawyers—sharing practical insights from both private practice and in-house perspectives. Patented: 1,000 Design Patents With Author Thomas Rinaldi By: Design Patent Committee Architectural designer and author Thomas Rinaldi presented Patented: 1,000 Design Patents—a remarkable visual archive celebrating over a century of product and industrial design through original U.S. patent documents. This one-of-a-kind collection highlights the creative genius of designers, inventors, and innovators from around the world. From iconic figures like Eero Saarinen, Charles Eames, Isamu Noguchi, Ettore Sottsass, Raymond Loewy, and George Nelson to anonymous yet indispensable objects like tape dispensers, pencil sharpeners, and food processors, the book offers a compelling look at the evolution of everyday design. Selected from over 750,000 patents issued since 1900, these documents form a unique and fascinating history of modern design. Part reference, part visual delight, Patented is both an essential guide and an irresistible browse for design enthusiasts, historians, and curious minds alike. About the Author Thomas Rinaldi is a New York-based architectural designer at Walter B. Melvin Architects, specializing in historic facades. He holds degrees from Georgetown and Columbia Universities and is the author of several books on architecture. His photography has appeared in The New York Times, Wall Street Journal, and New York Post, and he has lectured widely, including at the New York Public Library and the Society of Architectural Historians. Patent Law & Practice Committee Meeting: Recentive Analytics, Inc. v. Fox Corp. By: Patent Law & Practice committee Robert Frederickson, an IP litigation attorney at Goodwin Procter, represented Recentive Analytics at the Federal Circuit in the court’s first decision to address subject matter eligibility under section 101 of machine learning and artificial intelligence inventions. In addition to Recentive Analytics, Robert represents both technology and life sciences companies who are pursuing other innovative applications of machine learning, including detecting zero-day cyberattacks, identifying druggable sites on disease-causing proteins, assessing electronic medical records to predict health outcomes, and enhancing traditional hit-to-lead and lead optimization approaches in drug development, among others. On August 7, 2025, this fireside conversation with Robert explored the opportunities and challenges of obtaining and enforcing machine learning and artificial intelligence patents given the current state of the Supreme Court’s and Federal Circuit’s section 101 jurisprudence. PTAB Committee Meeting: Continuing Update on Latest Decisions at PTAB By: PTAB committee Attendees joined Co-Chairs Charley Macedo and Ken Adamo of the NYIPLA PTAB Committee on Tuesday, August 19, 2025, where they continued to report on the latest decisions at the PTAB. PTAB Committee Meeting: Patent Eligibility at the PTAB and the USPTO in 2025 By: PTAB committee Attendees joined Co-Chairs Charley Macedo and Ken Adamo of the NYIPLA PTAB Committee on Tuesday, September 16th, 2025, where they shifted their focus to discuss Patent Eligibility at the PTAB and USPTO. Featuring Guest Speaker Lewis Derenzis III, the presentation focused on (1) recent CAFC law, (2) USPTO Patent Eligibility Guidance and Policy, and (3) PTAB Decisions overturning 101 rejections. Trial Skills: Developing an Innovator Case Theme Around Apportionment By: Mark Abate On September 30, Mark Abate, Partner at Pillsbury Winthrop Shaw Pittman LLP, discussed the following: Overview of the Law of Apportionment A New Way of Thinking About Apportionment: Developing an Innovator Case Theme Around Apportionment Chairs & Cheers: A Networking Happy Hour with NYIPLA Committee Chairs By: Young Lawyers Committee On October 9, 2025, attendees joined NYIPLA’s Young Lawyers Committee for Chairs & Cheers: A Networking Happy Hour with NYIPLA Committee Chairs! They enjoyed an evening of casual networking with law students, fellow young lawyers, and the attorneys who co-chair NYIPLA’s committees. This was a great opportunity to make connections, learn more about different practice areas, and explore ways to get involved in the organization, all in a relaxed and welcoming setting open to both members and non-members. IP Transactions Bootcamp By: programs Committee NYIPLA hosted the 2025 IP Transactions Bootcamp, which was geared towards junior and mid-level associates. This year's program was held virtually, where attendees learned practical skills from experienced attorneys and in-house counsel. On October 14, 2025, the following topics were discussed: Copyright, Trademarks & Fashion Review of issues unique to nuances of trademark and copyright law to keep in mind when negotiating agreements such as licenses, assignments, and co-branding joint venture deals. Lauren B. Emerson, Partner, Leason Ellis LLP John Maltbie, Director of Civil Enforcement, Intellectual Property, Louis Vuitton North America Kathleen E. McCarthy, Partner, King & Spalding LLP Sherli Furst, Partner, Leichtman Law PLLC (Moderator) "Game Face & Brand Space: NIL in Sports and Media” Join our panelists as they explore the evolving legal landscape of Name, Image, and Likeness (NIL) in sports and media, where branding, contracts, and IP strategy collide. This panel will unpack how athletes, influencers, and those in media monetize identity and what attorneys should be mindful of to navigate the deals behind the fame. Paul Haberman, Partner, Mueller Haberman Law Group AJ Rudowitz, Senior Trial Associate, Duane Morris LLP Camille Turner, Partner, Haug Partners Christine-Marie Lauture, Associate General Counsel, Fortune Media (Moderator) On October 21, 2025, the following topics were discussed: Patents Review of common terms, conditions and issues that arise in patent related IP transactions. Jenny Lee, Partner, Haug Partners LLP David Bomzer, Partner, Cantor Colburn LLP Troy LaMontagne, Counsel - Technology Transactions, Axiom Legal Matt Prater, Attorney Christopher C. Smith, Shareholder, Brooks Kushman "IP & Contracts: Swipe Right for Strong Clauses" Jan Bösing, Partner, BARDEHLE PAGENBERG Angela Collison, Sr. Manager, Intellectual Property, Canon USA Heidi Lunasin, Special Counsel, Duane Morris LLP Nicole Woods, Assistant General Patent Counsel, Eli Lily and Company Thomas Kowalski, Partner, Duane Morris LLP (Moderator) Government & University Review of prominent issues relating to university and government contracts. Jennifer Mandina, Senior Contracts Manager, University at Buffalo Richard F. Kurz, Partner, Haug Partners LLP Derek M. Maughan, Deputy General Counsel, Pacific Northwest National Laboratory David Bomzer, Partner, Cantor Colburn LLP (Moderator) On October 28, 2025, the following topics were discussed: Mergers & Acquisitions/Due Diligence Briana Barron, VP, Intellectual Property, Arcus Biosciences Jonathan Berschadsky, Partner, Merchant & Gould P.C. Christopher Loh, Partner, Venable LLP Timothy McNamara, Vice President, Technology, Sourcing, and Intellectual Property, Goldman Sachs Ethics in Mergers and Acquistions/Due Diligence Jonathan Berschadsky, Partner, Merchant & Gould P.C. Christopher Loh, Partner, Venable LLP AI in Tech Transactions This session will cover a number of hot topics when addressing the use of AI in services covered by a technology contract, including IP ownership and licensing rights, anonymization, liability and indemnity, data privacy, and evolving AI regulations. Mark Doerr, Managing Partner, Patrick Doerr LLP Mark Francis, Partner, Holland & Knight LLP Ethics in AI Notetaking – Privilege and Confidentiality Considerations This session will cover attorney considerations with respect to AI notetaking tools Boris Segalis, Partner, Morrison Foerster LLP Patent Litigation Committee Meeting: Tips for High Quality Software Source Code Reviews By: Patent Litigation Committee On October 15, 2025, attendees joined the Patent Litigation Committee for the presentation, "Tips for High-Quality Software Source Code Reviews", featuring guest speaker Bert Schiettecatte, Expert Software & Hardware Engineer. PTAB Committee Meeting: Director Review and Discretionary Denials at the PTAB under the Squires Administration By: PTAB committee On September 22, 2025, John Squires was sworn in as Under Secretary of Commerce for Intellectual Property and Director of the U.S. Patent and Trademark Office. Prior to Squires taking over, previously Acting Director Coke Stewart issued 180 Director Review decisions, and established new discretionary denial procedures for PTAB proceeding. Since Director Squires' formal appointment, he has taken over responsibility for director review and delegated the discretionary review to now Assistant Director Stewart. On October 21, 2025, the PTAB Committee continued its monthly update on Director Review Decisions and Discretionary Denial Decisions since its August PTAB Committee including: New Director Review Decisions by Director Squires; New Discretionary Review Decisions by previously Acting Director Coke and now Assistant Director Coke” One-Day Patent CLE Seminar By: programs committee On November 5, 2025, the NYIPLA held the One-Day Patent CLE Seminar at Arnold & Porter. Topics and speakers included: Morning Featured Speaker Coke Stewart, Deputy Undersecretary of Commerce for Intellectual Property and Deputy Director of the United States Patent and Trademark Office Legislative and Administrative Patent Law Update The panel will discuss the status and general substance of several proposed patent law bills in Congress as well as a summary update on new policy initiatives at the USPTO under the administration. Chris Israel, Senior Partner, American Continental Group John Lee, Chief Counsel, U.S. House of Representatives, Committee on the Judiciary Robert Rando, Partner, Patrick Doerr (Moderator) Update on Patent Eligibility at the Federal Circuit and the USPTO So far this year, the Federal Circuit has issued two important decisions on Patent Eligibility, Recentive Analytics Inc. v. Fox Corp. and PowerBlock Holdings Inc. v. IFIT Inc., the PTAB has reversed over 40 patent eligibility rejections, and the Office issued its August 4, 2025 “Reminders on evaluating subject matter eligibility claims under 35 U.S.C. 101”. Our panels will provide a review of these important developments and provide guidance to patent practitioners on how to use these developments in patent prosecution before the office and on appeal to the PTAB. Robert Frederickson III, Partner, Goodwin Procter Joshua A. Hartman, Partner, Merchant & Gould P.C. Clint Mehall, Partner, Davidson Kappel LLC Charles R. Macedo, Partner, Amster, Rothstein & Ebenstein LLP (Moderator) Practice Pointers on Trade Secrets Verdicts- Options for Relief and Their Fate on Appeal This panel will focus on trade secret damages, lessons learned from the Insulet Corporation v. EOFlow Co., Ltd., et al case and how notable Trade Secret damage awards fare on appeal. Stay tuned for some practice pointers from the Insulet case as well as pointers to minimize the chances that an award will be reduced, or even worse, thrown out on appeal. Dana Trexler, Managing Director, Stout Robert D. Carroll, Partner, Goodwin Procter R.J. McLaughlin, Associate, Pryor Cashman Rachel Blitzer, Partner, Latham & Watkins LLP (Moderator) Data Rights in AI - Navigating Cybersecurity, Privacy, and IP Risks in Generative AI Amanda Weare, General Counsel, Collibra Boris Segalis, Partner, Morrison Foerster LLP (Moderator) Luncheon Speaker Vaishali Udupa, Previous Commissioner for Patents, USPTO, and Counsel, McDermott Will & Schulte The Road Ahead: Key 2025 Federal Circuit Decisions and Cases to Watch in Patent Litigation This panel will examine recent Federal Circuit decisions and upcoming cases poised to shape key aspects of patent litigation, such as Ecofactor v. Google, Lashify v. ITC and Roku v. Access Advance. Antony Pfeffer, Vice President and General Counsel, Tractable AI Joe Sherinsky, Assistant General Counsel, Litigation & Intellectual Property, Mitsubishi Chemical Holdings Angie Verrecchio, Assistant General Counsel, Johnson & Johnson Christopher Cariello, Partner, Orrick, Herrington & Sutcliffe (Moderator) Ethical Considerations when using AI Melvin Garner, Partner, Leason Ellis LLP Audrey Trace, Associate, Leason Ellis LLP Stephanie L. Casino, Contract Specialist, Emory University (Moderator) Shop Local: Trends in District Court Litigation Rules The 2020s have seen more divergence in local rules for patent litigation among federal district courts than at any time before. Litigating in the District of Delaware, District of New Jersey, Eastern District of Texas, Eastern District of Virginia, and Central and Northern Districts of California, requires careful attention to the guidelines of particular judges, only some of which are memorialized as rules. This session will explore case scheduling, Markman practice, fact and expert discovery, dispositive motion practice, and narrowing of claims and contentions in advance of trial across these patent-heavy jurisdictions, with a special focus on Hatch-Waxman and design patent litigation. Jennifer R. Deneault, Partner, Groombridge, Wu, Baughman & Stone Elizabeth D. Ferrill, Partner, Finnegan Preston K. Ratliff II, Partner, Paul Hastings Andrew Roper, Partner, Haug Partners Annie Bolton, Associate, Haug Partners November YLC Meeting - Building Your Brand: Business Development for Young Lawyers By: Young Lawyers Committee On November 11, 2025, attendees joined the Young Lawyers Committee for a special roundtable discussion on business development for young lawyers. This interactive session explored practical strategies, skills, and personal experiences to help emerging attorneys build relationships, grow their professional networks, and develop business early in their careers. Mock Interview & Resume Review Workshop By: Young Lawyers Committee and the Associate Advisory Council The Young Lawyers Committee and the Associate Advisory Council of NYIPLA invited our student and active members to attend a mock interview and resume review workshop at the offices of Groombridge, Wu, Baughman & Stone LLP on November 12, 2025. The event included mock interviews and resume reviews with current practicing attorneys, and was followed by an opportunity to network with the attorneys in attendance. . PTAB Committee Meeting: Monthly Update from the PTAB Committee By: PTAB committee Attendees joined the NYIPLA PTAB Committee for its monthly meeting on Tuesday, November 18, 2025, at 4:00 p.m. ET via Zoom, where Co-Chairs Charley Macedo and Ken Adamo shared the latest committee updates.
NYIPLA Events
Last First Firm/Company/Law School State Membership Akter Naorin Maurice A. Deane School of Law, Hofstra University NY Student Allison Annie Haynes and Boone, LLP NY Active 3+ Allison Rasheeda CUNY School of Law NY Student Allong Tracy UNH Law NH Student Amicon Keehle New York Law School NY Student Amine Tara Fordham University School of Law NY Student Amir Ayde New York Law School NY Student Amir Joseph Brooklyn Law School NY Student An Jing Altman & An LLP NY Active 3+ Anderson Sean Winston & Strawn LLP NY Active 3+ Auito Darrin HEA Law PLLC VA Associate Bae Joanne O'Melveny & Myers LLP NY Active 3+ Balchand Kavita Maurice A. Deane School of Law, Hofstra University NY Student Basov Daniel Cowan Liebowitz & Latman, PC NY Active 3+ Berne Alexander Foley Hoag LLP NY Active 3- Biehn Derek Active 3+ Bilderbeck Ray Gish PLLC NY Active 3+ Bleile Matthew Quinnipiac University School of Law CT Student Blikshteyn Dina Haynes and Boone, LLP NY Active 3+ Boss David Columbia University School of Law NY Student Boynes Lexi Willkie Farr Gallagher NY Active 3- Briggins Chanel Authentic Brands Group NY Corporate Bucca Daniel BakerHostetler DC Active 3+ Butt Noor George Washington University Law School DC Student Cantwell Michael Maurice A. Deane School of Law at Hofstra University NY Student Carey Rachel Garden NY Associate Cariello Christopher Orrick, Herrington & Sutcliffe LLP NY Active 3+ Caroddo Jack Touro University Jacob D. Fuchsberg Law Center NY Student Cerwinski Robert Gemini Law LLP NY Active 3+ Chen Joe Fox Rothschild NJ Active 3+ Chestukhin Dasha Cowan Liebowitz & Latman, PC NY Active 3+ Chong Esder Rutgers University Law School--Newark NJ Student Chung Stacey Haley Guiliano LLP NY Associate Cipriani Nick Benjamin N. Cardozo School of Law NY Student Cohen Adrienne Morrison & Foerster LLP NY Associate Coster Emily King & Spalding LLP NY Student Cueto Emily Brooklyn Law School NY Student Curiel Ryan A&O Shearman NY Active 3+ Dahlin Heather Fordham University School of Law NY Student Dai Amanda Fordham University School of Law NY Student DeFlorio Sarah Rutgers Law School NJ Student Denisenko Daria New York Law School NY Student Last First Firm/Company/Law School State Membership Dennhardt Jeffrey WilmerHale LLP NY Active 3+ Desai Anish Paul, Weiss, Rifkind, Wharton & Garrison LLP NY Active 3+ Dicks Tianni Quinnipiac University School of Law CT Student Dincheva Iva Fox Rothschild NY Active 3- Djadda Linda Emily C. and John E. Hansen IP Law Institute NY Student Dowdy Laura Fordham University School of Law NY Student Doyle Kieran Cowan Liebowitz & Latman, PC NY Active 3+ Duguid Debra King & Spalding LLP NY Student Edwards Joseph University of New Hampshire School of Law NH Student Eguakun Eghosa The University of Memphis Cecil C. Humphreys School of Law TN Student Ellison Niko New York University School of Law NY Student Erickson Adam Haynes and Boone, LLP DC Associate Evande Roxanne Herbert Smith Freehills Kramer LLP NY Associate Evelson Alexander Groombridge, Wu, Baughman & Stone LLP NY Active 3- Farrar Rachel Pryor Cashman NY Student Ferdinand Che Maurice A. Deane School of Law, Hofstra University NY Student Fernandez Rosa Maurice A. Deane School of Law, Hofstra University NY Student Fields Zachary Herbert Smith Freehills Kramer LLP NY Active 3+ Fitzpatrick Torrie Brooklyn Law School NY Student Francis Mark Holland & Knight LLP NY Active 3+ Fridman Jen King & Spalding NY Student Fuller Jenna Herbert Smith Freehills Kramer LLP NY Active 3+ Fundytus Marian Amster, Rothstein & Ebenstein LLP NJ Active 3+ Furnari Allison Cowan Liebowitz & Latman, PC NY Active 3+ Gaballah Mena A&O Shearman NY Active 3+ Gada Upanshi NYU School of law NY Student Gallant Thomas Maurice A. Deane School of Law at Hofstra University NY Student Gandesha Raj White & Case LLP NY Active 3+ Gaza Anne Young Conaway Stargatt & Taylor, LLP DE Associate Georgek Kevin White & Case LLP NY Active 3+ Gilman Timothy Schulte Roth & Zabel NY Active 3+ Gkini Katherine Albany Law School NY Student Goodnight Cassie Axinn, Veltrop & Harkrider LLP NY Active 3+ Graber Jennifer WilmerHale LLP NY Active 3+ Grady Caroline Cadwalader, Wickersham & Taft LLP NY Active 3- Grillo Matthew Pillsbury Winthrop Shaw Pittman LLP NJ Active 3- Guevara Genesis Maurice A. Deane School of Law, Hofstra University NY Student Hahm Victoria Columbia University School of Law NY Student Haque Saiba City University of New York School of Law at Queens College NY Student Hector William Venable LLP CA Associate Hedayat Shayan Northeastern School of Law MA Student Heimann Lukas Fordham University School of Law NY Student Last First Firm/Company/Law School State Membership Hendershott Jack Morgan, Lewis & Bockius LLP NY Active 3+ Hernandez Eleesia St. John's University School of Law NY Student Ho Krystina Paul Hastings LLP NY Active 3+ Iancu Andrei Sullivan & Cromwell CA Associate Incháustegui Sebastián Columbia University School of Law NY Student Jacobsen Jeffrey Kirkland & Ellis LLP NY Active 3- Jadun Ryed Benjamin N. Cardozo School of Law NY Student James Khila City University of New York School of Law at Queens College NY Student Jung Jinah Oklahoma City University School of Law OK Student Kaganis Maria St. John's University School of Law NY Student Kan Cindy WilmerHale LLP NY Active 3+ Kaplan Justin Pryor Cashman NY Student Kasanzew Cameron Cadwalader, Wickersham & Taft LLP NY Active 3+ Keeler Robert Ice Miller LLP NY Active 3+ Kettle Kamanta ArentFox Schiff LLP NY Active 3+ Kim Priscilla Columbia University School of Law NY Student Kim Mary Jean Fox Rothschild LLP NY Active 3+ Kim Namho Columbia Law School NY Student Kleiman Ariella Haynes and Boone, LLP NY Active 3+ Klotz Rahnuma Rutgers University Law School--Newark NJ Student Knight Justin Maurice A. Deane School of Law, Hofstra University NY Student Kolpakov Nicoletta New York Law School NY Student Kong Jing Rutgers Law School NJ Student Kovach Madison Leason Ellis LLP NY Student Koziel Tom Hughes, Hubbard & Reed LLP NY Active 3+ Kravitz Adam Amster, Rothstein & Ebenstein LLP NY Active 3+ Krispin Whitney University of Connecticut School of Law CT Student Kropaneva Alexandra St. John's Univeristy School of Law NY Student Kutzik Jordan Benjamin N. Cardozo School of Law NY Active 3- Kwon Youngseon St. John's University School of Law NY Student Kwon Janice Carter Ledyard & Milburn NY Active 3- LaFayette Shantelle Mayer Brown LLP NY Active 3- Lamb David Gish PLLC NY Active 3+ Lee Dong Gun Patrick Doerr LLP NY Active 3- Lee Moon Northwestern Pritzker School of Law IL Student Levenson Andrea Haynes and Boone, LLP CA Associate Levine Harrison Roger Williams University School of Law RI Associate Lian Joyce Cornell NY Student Lieberman Matt New York University School of Law NY Student Lim Fievel Steptoe LLP NY Active 3- Linden Eli Fordham University School of Law NY Student Little Shathera George Washington University Law School DC Student Last First Firm/Company/Law School State Membership Liu Letitia Cardozo Law School NY Student Lopa Anton Pryor Cashman NY Student Luong Cody Maurice A. Deane School of Law, Hofstra University NY Student Macchiaroli Ric Pillsbury Winthrop Shaw Pittman LLP VA Associate Mack Justin Garden NY Associate Maddry Tyler Hunton Andrews Kurth LLP NY Active 3+ Mahinepeu Francis Fordham University School of Law NY Student Manno Elizabeth Venable LLP NY Associate Manzon Jessica Benjamin N. Cardozo School of Law NY Student Mariona Sofia University of Connecticut School of Law CT Student Mariottini Deborah Desmarais LLP NY Active 3+ Mark Nicole Maurice A. Deane School of Law, Hofstra University NY Student Masure Tyler Maurice A. Deane School of Law, Hofstra University NY Student Mattes Catherine Quinn Emanuel Urquhart & Sullivan , LLP NY Active 3+ McAleer Brianna St. John's University School of Law NY Student McArdle Christopher Alston & Bird LLP NY Active 3+ Miller Daniel Patlytics NY Active 3+ Miller-Frankel Zach Fordham University School of Law NY Student Milov Joelle Cowan Liebowitz & Latman, PC NY Active 3+ Miranda Diana Maurice A. Deane School of Law at Hofstra University NY Student Mirzai Frohar Maurice A. Deane School of Law, Hofstra University NY Student Mojica Lissi Garden NY Associate Moore David Potter Anderson & Corroon LLP DE Associate Moore Abigail Baker Botts LLP NY Student Morejon Helen Rutgers University Law School--Newark NJ Student Muniz Christian St. John's University School of Law NY Student Nahhas Gaby Pryor Cashman NY Student Narty Yasmine Rutgers University Law School--Newark NJ Student Natour Sara Axinn, Veltrop & Harkrider LLP NY Active 3+ Ng Nicole Haug Partners LLP NY Student Oakes Jonnette Washburn University School of Law KE Student Organ Daniel Haley Guiliano LLP NY Active 3+ Owusu Godwin Benjamin N. Cardozo School of Law NY Student Palapura Bindu Potter Anderson & Corroon LLP DE Associate Pangarkar Reema Cowan Liebowitz & Latman, PC NY Active 3+ Paz Canton Sonia Brooklyn Law School NY Student Pedi Nicole Potter Anderson & Corroon LLP DE Associate Penn Brittany Herbert Smith Freehills Kramer LLP NY Active 3+ Petrie Kyle Desmarais LLP NY Active 3+ Pimentel Katrina New York University School of Law NY Student Pirron Abigail Paul Hastings NY Associate Potter Amanda Morrison & Foerster LLP NY Active 3+ Last First Firm/Company/Law School State Membership Prakash Shivani Akin Gump Strauss Hauer & Feld NY Active 3- Przybylski Jennifer Desmarais LLP NY Active 3+ Ramdass Juliet Maurice A. Deane School of Law, Hofstra University NY Student Rasheed Farheena United States Patent and Trademark Office VA Government/Academic Rieffel Kevin Haley Guiliano LLP NY Active 3+ Roberts Daniel Dechert LLP PA Associate Roberts Stephanie Morgan, Lewis & Bockius LLP DC Associate Roberts William University of Connecticut School of Law CT Student Robinson Renee Harvard University School of Law MA Student Rosanio Gabriel WilmerHale LLP NY Active 3+ Rovner Philip Potter Anderson & Corroon LLP DE Associate Rush Stacy Knobbe, Martens, Olson & Bear LLP NY Active 3+ Savit Aaron Axinn, Veltrop & Harkrider LLP CT Associate Scambia Nicholas Willkie Farr & Gallagher LLP NY Active 3- Schoelermann Ryan Maurice A. Deane School of Law NY Student Segalis Boris Morrison Foerster LLP NY Active 3+ Segovia Li Haocheng Seton Hall University School of Law NJ Student Shah Unmesh Jones Day NY Active 3+ Shin Julie Jones Day NY Active 3+ Shin Monica Fordham University School of Law NY Student Shu Tianyuan Indiana University IN Student Sidapara Adi Garden NY Associate Silimon Ruth Herbert Smith Freehills Kramer LLP NY Associate Silverberg Sabrina Hughes, Hubbard & Reed LLP NY Active 3+ Silverstein Hanna Rutgers Law School NJ Student Solaro Isabella Cornell Law School NY Student Song Heeseong Hanwha Solutions Corporation NY Student Stagliano Catherine Benjamin N. Cardozo School of Law NY Student Stauring Jessica Paul Hastings LLP NY Active 3- Steephenson Becky A&O Shearman NY Active 3+ Stein Jonathan Albany Law School NY Student Sullivan Moira UNH Franklin Pierce School of Law NH Student Sun Jane Fordham University School of Law NY Student van Liempt Rifah Hofstra Law NY Student Veit Coop Garden NY Associate Verano Hailey O'Melveny & Myers LLP NY Active 3+ Villatoro Iveth Greenberg Traurig LLP NY Associate Vogel Ron Ballard Spahr NY Active 3+ Vogler Nate Morrison & Foerster LLP NY Active 3+ Vrana Robert Young Conaway Stargatt & Taylor, LLP DE Associate Wadhwa Meena New York City Law Department NY Student Wang Katherine King & Spalding LLP NY Student Last First Firm/Company/Law School State Membership Webb Carys Cravath, Swaine & Moore LLP NY Active 3+ Wechter Louis Haley Guiliano LLP NY Active 3+ Weiswasser Elizabeth Paul, Weiss, Rifkind, Wharton & Garrison LLP NY Active 3+ Wells Richard Venable LLP DC Associate Welsh Joze Desmarais LLP NY Active 3+ Werblowsky Tova Jones Day NY Active 3+ Wettre Christian Herbert Smith Freehills Kramer LLP NY Active 3- Whisnant Mason Morgan Lewis NY Active 3- White Wesley Orrick Herrington & Sutcliffe LLP NY Active 3+ Wilson Samantha Young Conaway Stargatt & Taylor, LLP DE Associate Winstead Taqwa Quinnipiac University School of Law CT Student Woo Eileen Regeneron NY Corporate Woodward Logan The University of Texas at Austin School of Law TX Student Wright Allyn University of Connecticut School of Law CT Student Wueste Michael Desmarais LLP NY Active 3+ Yang Jerrit Arnold & Porter Kaye Scholer LLP NY Active 3+ Zhao Jing Ying O'Melveny & Myers LLP NY Active 3+
WELCOME NEW MEMBERS
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Events and Announcements
February 02/04/2026 Biologics & Biosimilars 02/05/2026 AABANY IP Committee x NYIPLA Young Lawyers Committee Presents: Board Games Night 02/10/2026 Half-Day IP Symposium with the Hon. William C. Conner Inn of Court & Benjamin N. Cardozo School of Law 02/17/2026 PTAB Committee Meeting 02/24/2026 AAC x YLC Networking Event at IGolf