Volume 1, Issue 4 December 2013

Litigation news and recent relevant rulings
Volume 1, Issue 4 December 2013 


U.S. Patent and Trademark Office

Texas Statutes Online

U.S. Supreme Court IP Decisions


Joe Gregory



Joe is an experienced litigator who has represented clients in many diversified areas, including personal injury, patent and trademark cases, commercial litigation, employment litigation, construction litigation and insurance defense cases. He has extensive trial experience, having taken more than 35 jury trials to verdict and obtaining numerous summary judgments for his clients on a variety of cases ranging from employment to personal injury matters.  Joe has been Board Certified in Personal Injury and Trial Law by the Texas Board of Legal Specialization since 2002.  Joe is also certified to practice before The United States Patent and Trademark office.

  • Represented Plaintiffs and Defendants in patent-related lawsuits and appeals involving a variety of technologies and industries, including web browser technologies, oil well drilling, fluid formation, pipeline valve design and camera technology.
  • Represented Plaintiff in trademark litigation against a Las Vegas casino.



  • Representation of employers in the areas of Workers Compensation, Sexual Harassment, Discrimination, ERISA and Wrongful Termination.
  • Representation of employers before the Texas Division of Workers Compensation in Contested Case Hearings, Benefit Review Conferences and Appeals.
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Wishing you a happy holiday season and a joyous new year!

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In This Issue:

In the News...

Texas Now Using Uniform Trade Secret Act

On May 2, 2013, Texas Governor Rick Perry signed into law the Texas Uniform Trade Secrets Act, which is substantially similar to the model Uniform Trade Secrets Act (USTA). Texas is the 48th state to adopt the UTSA (New York and Massachusetts are the only states that have not yet adopted it).

The Texas UTSA creates Chapter 134A of the Texas Civil Practice and Remedies Code, and replaces existing Texas law governing the misappropriation of trade secrets. However, it does not affect contractual remedies for trade secret disclosures.

The Texas UTSA, like the model TSA defines trade secrets more broadly than the model UTSA by including a process, financial data, or list of actual or potential customers. The definition also includes, like the model UTSA, a formula, pattern, compilation, program, device, method, technique, pial data, or list of actual or potential customers or suppliers, that:


  1. Derives independent economic value, actual or potential, from not being generally known to, and not being readily ascertainable by proper means by, other persons who can obtain economic value from its disclosure or use.
  2. Is the subject of efforts that are reasonable under the circumstances to maintain its secrecy.
  3. However, the Texas UTSA allows authorized reverse engineering.


The new law provides that there is a presumption in favor of granting protective orders to preserve the secrecy of trade secret information. Courts may enjoin actual or threatened misappropriation. Normally, the injunction ends when the trade secret has ceased to exist, but the injunction may be continued for an additional reasonable period of time to eliminate a commercial advantage that otherwise would result from the misappropriation.

A court may also order affirmative acts to protect the secrecy of trade secrets. The law authorizes courts to use reasonable means to protect a trade secret in litigation, and protective orders may:


  1. Limit access to confidential information to only the attorneys and their experts.
  2. Allow for in-camera hearings.
  3. Seal the records of the action.
  4. Order any person involved in the litigation not to disclose an alleged trade secret without prior court approval.


In addition to injunctive relief, claimants under the new law can seek damages for the actual loss caused by the misappropriation, as well as for unjust enrichment. The court can also impose a reasonable royalty for a misappropriator's unauthorized disclosure or use of a trade secret. Exemplary damages and attorneys' fees are available for the willful and malicious misappropriation of trade secrets. Attorneys' fees are also available if a claim of trade secret misappropriation is made in bad faith.

The Texas UTSA provides that it will be interpreted and construed in the same way as the UTSA is interpreted in other states, to effectuate the goal of uniformity in trade secret laws across the states.

The Texas UTSA took effect on Sept. 1, 2013 and applies to trade secret misappropriation that occurs on or after that date. Trade secret misappropriation that occurs before the effective date or a continuing act of misappropriation that began before the effective date is governed by Texas law in effect immediately before that date.

Practical Implications

Employers in Texas should familiarize themselves with the Texas UTSA because it replaces the long-standing common law governing trade secrets. Employers that operate in Texas and other states that have adopted UTSA should benefit from the relative uniformity of trade secret laws across jurisdictions.



Recent Decisions...

Patent Update: Legislation to take effect Dec. 18, 2013

As Congress continues to propose new legislation to “improve” the Leahy-Smith America Invents Act (AIA), practitioners and stakeholders must not forget that significant law and rule changes implementing the Patent Law Treaty of 2000 (PLT) take effect Dec. 18, 2013. The Patent Law Treaties Implementation Act of 2012 (PLTIA) was enacted on Dec. 18, 2012, and the USPTO published its final rules on Oct. 21, 2013. Some of the most significant changes relax the requirements for securing an application filing date, provide for restoration of a priority claim if an application is unintentionally filed beyond the priority term, and eliminate the “unavoidable” standard for reviving abandoned applications and obtaining acceptance of delayed fee payments. The USPTO’s final rules also make other changes to miscellaneous application filing and processing rules.

Relaxed Filing Date Requirements for Non-Provisional Utility Patent Applications

Utility patent applications filed on or after Dec. 18, 2013, will be awarded a filing date regardless of whether they include any claims, under amended 35 USC § 111(a)(3) and (4):

(3) Fee, oath or declaration, and claims.–The application shall be accompanied by the fee      required by law. The fee, oath or declaration, and 1 or more claims may be submitted after the filing date of the application, within such period and under such conditions, including the payment of a surcharge, as may be prescribed by the Director. Upon failure to submit the fee, oath or declaration, and 1 or more claims within such prescribed period, the application shall be regarded as abandoned.

(4) Filing date.–The filing date of an application shall be the date on which a specification, with or without claims, is received in the United States Patent and Trademark Office.

The USPTO is making conforming changes to 37 CFR § 1.53.

Note that amended § 111(a)(4) no longer requires “a drawing” to secure a filing date. However, as the USPTO warns in the Federal Register Notice, 35 USC § 113 still provides that a drawing may be required “where necessary for the understanding of the subject matter sought to be patented,” and that the absence of any such necessary drawing may preclude patentability.

Relaxed Filing Date Requirements for Subsequent Applications

Subsequent applications filed on or after Dec. 18, 2013 can be filed by making reference to the prior application, without submitting a copy of the prior application at the time of filing, under new 35 USC § 111(c):

(c) Prior Filed Application.–Notwithstanding the provisions of subsection (a), the Director may prescribe the conditions, including the payment of a surcharge, under which a reference made upon the filing of an application under subsection (a) to a previously filed application, specifying the previously filed application by application number and the intellectual property authority or country in which the application was filed, shall constitute the specification and any drawings of the subsequent application for purposes of a filing date. A copy of the specification and any drawings of the previously filed application shall be submitted within such period and under such conditions as may be prescribed by the Director. A failure to submit the copy of the specification and any drawings of the previously filed application within the prescribed period shall result in the application being regarded as abandoned. Such application shall be treated as having never been filed, unless [the application is revived].

The USPTO is implementing this new option under 37 CFR § 1.57:

Sec. 1.57 Incorporation by reference.

(a) Subject to the conditions and requirements of this paragraph, a reference made in the English language in an application data sheet in accordance with Sec. 1.76 upon the filing of an application under 35 U.S.C. 111(a) to a previously filed application, indicating that the specification and any drawings of the application are replaced by the reference to the previously filed application, and specifying the previously filed application by application number, filing date, and the intellectual property authority or country in which the application was filed, shall constitute the specification and any drawings of the subsequent application for purposes of a filing date under Sec. 1.53(b).

The Federal Register Notice warns of the consequences of misidentifying the prior application:

[T]he applicant can file a petition under Sec. 1.53 to have the application accorded a filing date as of the date the specification and drawings of the intended previously filed application are filed in the Office using that specification and drawings (rather than the specification and drawings of the application specified on the application data sheet).
This means that if the prior application is misidentified, the subsequent application will not be awarded a filing date until the correct specification is filed. If these procedures were pursued close to the grant or abandonment of the prior application, continuity of pendency could be lost.

When the prior application is a foreign application, new CFR § 1.57(a)(4) requires submission of a certified copy of the prior application within the later of four months from the filing date of the subsequent application or 16 months from the filing date of the prior application:

(4) A certified copy of the previously filed application must be filed in the Office, unless the previously filed application is an application filed under 35 U.S.C. 111 or 363, or the previously filed application is a foreign priority application and the conditions set forth in Sec. 1.55(h) are satisfied with respect to such foreign priority application. The certified copy of the previously filed application, if required by this paragraph, must be filed within the later of four months from the filing date of the application or sixteen months from the filing date of the previously filed application, or be accompanied by a petition including a showing of good and sufficient cause for the delay and the petition fee set forth in Sec. 1.17(g).

These changes take effect Dec. 18, 2013, and apply to patent applications filed, and patents granted, before, on, or after that date.  If you’re interested in consulting our Patent and Trademark Department please contact, Joe Gregory.

Texas Courts – Copyright Litigation

On Friday, Nov. 8, 2013, the U. S. Circuit Court of Appeals for the Fifth Circuit, which comprises Texas, Louisiana, and Mississippi, affirmed a $3.2 million damages award for copyright infringement in favor of Kipp Flores Architects, L.L.C. against Hallmark Design Homes, L.P. The jury’s award is based upon the alleged profits earned by Hallmark from sales of homes that the jury found infringed upon Kipp Flores’ copyrighted architectural drawings.

Kipp Flores is an architectural firm that creates, markets, and licenses architectural designs, many of which are registered with the U.S. Copyright Office. Hallmark obtained copies of certain copyrighted architectural designs pursuant to a license from Kipp Flores. The license entitled Hallmark to build one home based upon each design. The agreement expressly provided that additional licenses for additional units could be purchased but, according to Kipp Flores, Hallmark failed to pay additional license fees in connection with its reuse of the licensed plans.

Kipp Flores’ initial complaint for copyright infringement alleged that Hallmark infringed its copyrights by making digital and paper drawings and plans based upon them, constructing houses based upon them, and selling homes that are copies of or derivatives of the copyrighted designs. Joined in the suit along with Hallmark were its limited liability partners, who were alleged to be individually liable for copyright infringement by virtue of the fact that they had legal power and ability to supervise and control Hallmark’s activities and had a financial interest in them.

Kipp Flores has successfully sued for infringement of its copyrighted designs at least once before; it obtained a substantial verdict against home builders in Virginia in 2001.  Architectural works receive copyright protection under the Architectural Works Copyright Protection Act of 1990 (AWCPA), which provides copyright protection to original architectural designs in various formats, including designs embodied in structures. Prior to the AWCPA, copyright protection was given only to original architectural plans and technical drawings, not to designs embodied in buildings.

Practical Implications
Builders and architects should take care not to copy others’ copyrighted designs, and those who seek to protect their designs should register them with the U.S. Copyright Office.

Trademark 101

Asking the Important Questions

Many entrepreneurs and small businesses try to handle their intellectual property (in this case, trademarks) independently. While this works in some circumstances, entrepreneurs and small businesses often make the same mistakes when dealing with trademark searching and clearance which could be avoided relatively easily. 

Trademark searching and clearance involves the collection and analysis of information in order to assess a potential trademark’s viability from an availability and protectability standpoint.

The process of trademark searching and clearance is crucial for businesses from a risk management standpoint, particularly those who rely heavily on a specific logo or brand.

Consequences of an inadequate search or, God forbid, the failure to search can be drastic and can include being sued for trademark infringement (which can result in significant monetary damages) and/or an injunction that completely stalls a product launch or advertising campaign.

Common Mistakes To Avoid

While the process of trademark searching and clearance can be complicated, there are common mistakes that an entrepreneur or small business can take steps to avoid:

#1. Failing to Consult a Trademark Attorney

While this may come across as redundant, manipulative or simply not helpful from a common-sense standpoint, it is no lie that many entrepreneurs and small businesses get into trouble with their brand, logo or other trademark assets because they made decisions or took actions without consulting a trademark attorney.

Searching a trademark can be complicated and there are many potential pitfalls which can be avoided if an entrepreneur or company consults an experienced trademark attorney first.

Most trademark search mistakes occur when the process of searching and clearance is conducted by a business manager or other personnel or, surprise, more often than you’d think, by an attorney who does not specialize in trademarks. Therefore, make sure the attorney you consult actually has experience in trademarks.

In addition to consulting an attorney who specializes in trademark law, startup companies and entrepreneurs can avoid other common mistakes when it comes to safeguarding their brand or image by conducting a proper trademark search.

While this also may seem like common sense, you would be surprised at the number of entrepreneurs who build an entire business model and brand without so much as conducting a preliminary search, much less a full-fledged trademark search.

Many trademark infringement claims could have been completely avoided if the company or entrepreneur had taken the time and made a small expenditure up front to conduct a trademark search not just before launching their business, but before finalizing their business model.

If a proper search is conducted, it may help to surface any mark held by a third-party, which could potentially be an infringement risk.

If a proper search is conducted up front, the company or entrepreneur will have the time to choose a different name, brand or image or obtain permission to use that particular name, brand or image from the third party who owns it.

A proper trademark search can also help the company or entrepreneur defend against claims that the alleged infringement was willful (which raises the severity of the infringement claim).

Conversely, not conducting a proper trademark search can possibly be used as evidence that the company or entrepreneur acted willfully.

#2. Trademark searches can be preliminary or they can be full trademark searches.

Preliminary trademark searches generally involve searches conducted for free on the internet and the U.S. Patent and Trademark Office (USPTO) database (using the Trademark Electronic Search System (TESS)) to determine if there are any direct conflicts. If one of these searches identifies a direct conflict, it means that the potential mark is either unavailable or will only become available if additional acts are taken to obtain clearance (e.g,. purchasing conflicting rights). Depending on time and budget constraints, taking such clearance actions may not be a realistic option – especially for a small company or entrepreneur.

A USPTO search will typically pull up existing federal applications or registrations for marks that are identical to or applicable to products or services that are closely related or identical.

While USPTO searches are useful as a preliminary search, they are not good enough to completely clear a proposed mark for full registration.

Limitations on USPTO searches are
  1. The USPTO database only includes federal trademark applications and registrations.
  2. The USPTO database does not include common law marks.
  3. A USPTO search may not reveal applications or registrations for marks that may be similar enough to cause consumer confusion although they are not identical, nor do they appear to have a direct conflict.


Thus, if you have a brand, mark or image you would like to protect by obtaining a trademark, it is probably not a good idea to rely solely on a USPTO or general internet search unless:

  1. You intend to use your mark in a limited manner for a short period of time or
  2. Your mark is so descriptive and distinct that it would be extremely unlikely for a third-party to have conflicting rights that would be enforceable.


#3. Ignoring abandoned registrations.

Here’s another mistake startups and entrepreneurs make when it comes to protecting their brand or image: Even if they’re trying to go through the trademark process and conduct searches, many startups and entrepreneurs mistakenly assume that they shouldn’t worry about applications that have been abandoned or trademarks that are the subject of cancelled registrations.

Remember, although a trademark registration is cancelled or an application is abandoned, there is still the possibility that the underlying trademark may be in use and/or that the owner of the underlying trademark may have common law rights in the mark.

Ignoring those applications and registrations can be a huge mistake if the mark is in use or if the trademark has not been officially and legally abandoned (e.g. the use has stopped temporarily). There are many reasons why a trademark registration may be cancelled or an application abandoned which have nothing to do with whether the trademark is in use. For example, docket failures and failures to overcome USPTO office actions are reasons a trademark registration may be cancelled or an application abandoned.

Therefore, if you’ have conducted a trademark search and you come across an abandoned application or cancelled registration for a mark that is similar to the mark you want to use and the mark is for a related good or service, you will probably want to conduct further investigations to determine whether the mark is still in use and, if the mark is no longer in use, to determine when the use stopped and whether the owner has plans to pick the use back up again.

#4. Review nature and extent of potentially conflicting trademark's use.

Sometimes even a full trademark search isn't enough because it often will not reveal important details about the actual use of a trademark in the marketplace. In order to assess the likelihood of confusion and the level of risk associated with a third party’s trademark that may potentially conflict with yours, you should determine the nature and extent of any potentially conflicting trademark’s use.

“Likelihood of confusion” is the crucial test in trademark infringement and unfair competition claims. Although there is some variation among our circuit courts of appeal, there are similar factors that are generally considered when assessing the likelihood of confusion with a potentially conflicting third-party trademark.

Some important factors to assess with regard to a potentially conflicting mark’s use are:

  1. The length of time the third party mark has been in use.
  2. The goods or services for which the mark is used.
  3. The representative consumer of the good or service.
  4. The price point of the good or service.


Finally, one other important factor to assess is the third party’s history of trademark enforcement. If the third party has a history of active litigation regarding trademark infringement or unfair competition, you may really want to think twice before pursuing a mark that could potentially conflict or be confused with that mark.

Because basic internet searches may not be sufficient to determine the information needed to fully assess the use of a third party’s mark, it may be advisable to engage a trademark investigator to do the job.  Contact Joe Gregory to consult with our Trademark Department. 


Effective Litigation Is Not 'Boilerplate' -
Shaping The Future Together

The Willis Law Group knows each case and client is unique and we proceed accordingly by building individualized solutions, communicating regularly, being responsive and reaching efficient resolutions. We are based in Dallas, Texas and have offices in Houston, New Orleans, Oklahoma City and San Antonio. Our boutique legal defense firm has 28 attorneys practicing a wide variety of insurance defense and commercial litigation work, including construction, employment & labor, environmental, healthcare, rig/oil well disasters, insurance coverage and professional services.
Copyright © 2013 The Willis Law Group, P.L.L.C., All rights reserved.

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