According to recent coverage, new U.S. Patent and Trademark Office (“USPTO”) Director John A. Squires has signaled a new approach that leaves room for more AI-based inventions while also exploring AI as a tool for attempting to improve examination and chip away at the Office’s backlog.

His remarks align with the August 4, 2025 §101 memo reminding examiners not to over-apply the “mental process” category, to evaluate claims “as a whole,” and to credit concrete technological improvements where warranted — points called out specifically for AI/ML (machine learning).

USPTO Launches AI-Powered Search Pilot

On the tools front, the USPTO has launched an Automated Search Pilot that uses an internal AI system to surface and rank prior art for applicants and examiners. The initiative is positioned as one more lever to reduce pendency.

Operational Shifts and Workforce Impacts

These policy moves arrive alongside sweeping operational shifts. The agency has limited examiner interview time and is revising production and docketing, changes that reportedly may make it harder to hit counts.

At the workforce level, an executive order excluded the USPTO Patents unit from collective-bargaining coverage, effectively ending Patent Office Professional Association (“POPA”) representation. Government-wide “return-to-office” directives have also curtailed regular telework. The USPTO has additionally closed its Denver regional office and is rethinking its regional footprint.

Historically, the Office recruited technologists with union-protected telework and the ability to live in lower-cost markets. Raising production expectations while tightening interviews and telework may hinder training and retention, especially for new examiners within their probationary period, who take time to reach full efficiency.

PTAB Changes Raise Questions

At the Patent Trial and Appeal Board (“PTAB”), parallel proposals and interim practices would significantly narrow when Intellectual Property Rights (“IPRs”) can be instituted (for example, after earlier validity adjudications). Academics led by Mark Lemley allege that these changes are unlawful under the America Invents Act and effectively eliminate PTAB proceedings. Opinions about the PTAB have long been mixed, with some viewing it as a “patent killer” and others seeing it as a critical check on poor examination quality and a cost-effective way to invalidate patents without the overhead of district court trials.

Key Takeaway

There are certainly a lot of changes, and a well-trained examiner corps has been the USPTO’s backbone for years. Only time will tell whether these shifts improve examination quality. For now, the practical takeaway is that the Office is trying to open the door for AI-related innovations to be patentable while piloting AI tools to help examiners work down the backlog.

Matt Miller, Taylor Dunne, and Devin Ricci are members of Kean Miller’s Intellectual Property and Patent Litigation groups, helping businesses, inventors, and creative professionals protect, enforce, and maximize the value of their intellectual property. They provide strategic guidance to publicly traded companies and major manufacturers in all phases of patent litigation and across a variety of industries.

A New York federal judge recently allowed a plaintiff to assert that Once Upon a Time in Shaolin, that one-of-a-kind, highly restricted Wu-Tang album, could be a trade secret.[1]

Historically, courts have rejected trade secret claims over unreleased musical works (e.g. unreleased recordings of Prince or Janet Jackson) on the theory that music is essentially meant to be heard, and costless secrecy is just a temporary business tactic until commercial release.[2] In other words, if the secret was going to be released soon anyway, it is functionally just a copyright claim in waiting.

While this ruling is unusual, so too is the background of Shaolin: to start, the album is not intended for release until October 8, 2103. Judge Chen emphasized both the distant public release date and the fact that Wu-Tang produced only a single copy of the album to distinguish Shaolin as “qualitatively different” from other unreleased music in previous jurisprudence. Here, secrecy was not merely a cradle before release. Instead, secrecy was baked into the album’s entire value. The album was designed to be secret and exclusive for an extended period of time; a significant part of its worth is derived from not being published. Indeed, Wu-Tang intended the album to be secret in part as a protest of the devaluation of musical expression in the digital age.[3] Thus, the court reasoned, it is proper to treat it under trade secret doctrine because it meets the classic trade secret elements: independent economic value from secrecy and reasonable efforts to maintain secrecy.

To be clear, the court didn’t yet affirm it is a trade secret, but it let the claim survive motion practice.

Although a bit avant garde, the position is relatively defensible.

  • Trade secret protection and copyright protection are not mutually exclusive.
    “If you allow trade secret for music, won’t that conflict with copyright doctrine or preempt it?” Not necessarily. Most courts hold that trade secret claims demand an additional showing (proof of a confidential relationship, misappropriation, breach of duty, etc.) beyond copyright claims such that federal copyright law often does not preempt a trade secret claim.[4] The presence of a valid copyright does not necessarily bar trade secret protection if the other elements are met. Indeed, when it comes to software, another work of authorship traditionally protected by copyright law, trade secrets have become the dominant form of protection, so the analogy is apt. If code can be secret, why can’t a musical work under like conditions of extreme secrecy?
  • Different works often require different protection strategies.
    Just as software can be protected by both trade secret and, later, by copyright (or patent in narrow cases), chemical formulae often sit at this intersection too. Sometimes protected via trade secret (if kept secret) or via patent (if publicly disclosed and meeting patentability). The choice depends on business strategy.
  • Secrecy as part of the value proposition.
    The ruling underscores that trade secret doctrine isn’t just about locking down stuff temporarily. If the very mystique or exclusivity of non-disclosure is part of the economic value (as with Shaolin), trade secret law may be a suitable tool. Thus, if the owner of the work limits access to a music piece and charges for that exclusivity, the secrecy is arguably part of its commercial play.
  • Enforcement path for theft before release.
    Without trade secret, you’d have to rely entirely on contract (NDA) or wait until publication to enforce copyright. Moreover, if someone flips your album before you’re ready to release, you might be stuck. Trade secret gives you a path to act before public release.

There will be pushback to this decision, and additional case law will be needed to determine the implications of this ruling. We readily acknowledge the following issues are at play; in fact, this article was borne out of an intraoffice debate about these issues:

  • Slippery slope: If music works become trade secrets, will every unreleased song or demo be litigated as a trade secret? Will labels clutter the docket with trade secret claims?
  • Public disclosure tension: One of the traditional trade secret rules is that once disclosed publicly, secrecy is lost. But music is usually meant for performance, samples, previews — how do you calibrate what constitutes the “secret” portion? Will this decision mark the beginning of a shift in what society considers valuable in music as an art form?
  • Overlap with copyright doctrine: Some fear duplication of copyright ideas (e.g. prior recordings) under a trade secret guise. Critics will argue: enforce via copyright, not trade secret, lest doctrines conflict. Afterall, the purpose of copyright law is to reward creativity in exchange for eventually pushing the work into the public domain. 
  • Judicial skepticism and precedent: Many courts have dismissed trade secret claims about music under the “waiting for release” rationale. The Wu-Tang approach is an outlier, and is specific to the facts at hand – notably, there appears to be no actual plan to release the album in the near future, which is consistent with Wu-Tang’s original plan to keep it a secret for the better part of a century.

Much like Wu-Tang’s approach to music, this ruling is bold and challenges the status quo. This decision marks a distinct departure from the typical approach to the protection of music as intellectual property and bends the contours of traditional trade secret doctrine, but it makes sense if you accept that independent economic value can derive from not releasing a work. Just as software thrives behind closed doors until launch and chemical formulas may live in the shadows until monetization, musical works, in specially restricted contexts, shouldn’t be disqualified from trade secret treatment as a matter of principle.

Yes, the doctrine needs guardrails and we can expect a long line of subsequent jurisprudence to flesh out those details. But as long as plaintiffs show real secrecy, real independent economic value from that secrecy, and real misappropriation, treating a musical work as a trade secret in some instances is a defensible and forward-looking intellectual property evolution. It also has the potential to extend the effective life of protection indefinitely as long as the work remains a secret.

[1] PLEASRDAO, an exempted foundation company, Plaintiff, v. MARTIN SHKRELI, Defendant., No. 24-CV-4126 (PKC) (MMH), 2025 WL 2733345 (E.D.N.Y. Sept. 25, 2025)

[2] Paisley Park Enterprises, Inc. v. Boxill, 253 F. Supp. 3d 1037, 1046 (D. Minnesota 2017)(noting that Plaintiffs failed to demonstrate that the disputed recordings were a trade secret because the “only economic value of the recordings derives from the right to sell the recordings to the public” and while the timing of a sale might affect the value of the recordings, “Plaintiffs cannot realize any independent economic value by keeping the contents of the recordings secret”); Anderson v. Jackson, 2005 WL 8166024, at *6 (C.D. Cal. Aug. 8, 2005)(noting that the “[p]laintiffs fail[ed] to identify anything in or about the song that derived ‘independent economic value’ by virtue of its secrecy”).

[3] Pleasrdao, 2025 WL 2733345 at *2.

[4] See, e.g., Stromback v. New Line Cinema, 384 F.3d 283, 303 (6th Cir. 2004)(requirement of proof of a confidential relationship provided the extra element required for a trade secret claim to survive federal preemption under copyright law; Computer Associates International, Inc. v. Altai, Inc., 982 F.2d 693, 717 (2d Cir.1992)(“breach of duty is the gravamen of such trade secret claims, and supplies the “extra element” that qualitatively distinguishes such trade secret causes of action from claims for copyright infringement that are based solely upon copying”); Dun & Bradstreet Software Servs., Inc. v. Grace Consulting, Inc., 307 F.3d 197, 218 (3d Cir.2002) (“if [Plaintiff’s] misappropriation of trade secrets claim was based on such breach of duty of trust and confidentiality, it would survive preemption in this case.”); Ez–Tixz, Inc. v. Hit–Tix, Inc., 919 F.Supp. 728, 737–38 (S.D.N.Y.1996) (holding that because “plaintiff’s claim for trade secret misappropriation require[d] proof of a breach of confidence, it [was] not preempted by federal law”).

A trademark is a word, name, symbol, or device (or combination thereof) used by a person or which a person has a bona fide intention to use in commerce to identify and distinguish goods or services from those of others. A mark is used (a) on a good when placed on the goods or containers, tags, or labels and the goods are sold or transported in commerce or (b) on a service when used or displayed in the sale or advertising of the services and the services are rendered in commerce. A trademark functions to identify who is the source of the good/service, not what it is. For example, Band-Aid identifies who it is in terms of the generic category of adhesive strips.

This use must be with a purpose to identify a source, meaning that a consumer can determine the source of the goods or services based on such use. Unlike a piece of art that merely has aesthetic beauty, a mark must be used to identify source. It is possible that an original work of authorship – which may be subject to copyright protection – is used in a manner so as to identify source. However, if the work of authorship is perceived as merely ornamental, then such use does not trigger trademark rights.

Ornamental use is often an issue when a popular quote is prominently displayed across the front of a T-shirt. This type of ornamental use is perceived as decorative or expressive and not an identifier of the manufacturer of the brand of T-shirt. Ornamental use is not sufficient to trigger trademark rights. See In re Peace Love World Live, LLC, 127 USPQ2d 1400 (TTAB 2018) (registration of the mark “I Love You” denied for bracelets finding the phrase to be merely ornamental as a term of endearment and not serving to identify and distinguish the source of the bracelet).

The point is that to acquire rights in a mark, the use must function to identify the source and not merely be ornamental. In the event of an ornamental objection in any USPTO trademark prosecution, the applicant may submit a new specimen showing proper use on the label of the product, packaging, or advertising with an affidavit or declaration that the new specimen was in use as of the date the application was filed. See TMEP 904.05. Alternatively, the applicant may amend the filing to a 1(b) intent to use application.

The U.S. Fifth Circuit Court of Appeals addressed the fair use defense in a copyright dispute in Keck v. Mix Creative Learning Center, L.L.C., 116 F.4th 448 (5th Cir. 2024). In this case, Mix Creative began selling art kits online so students could learn during the pandemic. The kit included PowerPoint slides featuring an artist’s biography and artwork samples, along with a lesson plan and supplies. Michel Keck was one of the artists whose work was featured in the art kit. Jacqueline Kenneally discovered Keck’s dog-themed artwork online, after searching Google Images for paintings of dogs. She decided the artwork would interest her students and copied the images from the internet for the kits. The kits included printed out slides with full images of Keck’s artwork and supplies including paint, paint brushes, collage paper, and a lesson plan. Only six Keck-inspired kits were purchased, for a total of $240. Keck filed a civil action against Mix Creative and its sole proprietor, Jacqueline Kenneally, alleging copyright infringement. When the defendants were notified of Keck’s lawsuit, they immediately stopped selling the Keck-inspired kits and removed the category of art kits from the website.

After Keck filed the action claiming copyright infringement, the district court granted summary judgment in favor of the defendants based upon the fair use defense. The fair use defense is codified in 17 U.S.C. 107 and lists several examples of fair use, including criticism, comment, news reporting, teaching, scholarship, or research. Courts apply four factors to determine whether the use of a particular work is fair, including: (1) the purpose and character of the use, including whether such use is of commercial nature or is for nonprofit educational purposes; (2) the nature of the copyrighted work; (3) the amount and substantiality of the portion used in relation to the copyrighted work as a whole; and (4) the effect of the use upon the potential market for or value of the copyrighted work.

The Fifth Circuit noted that the central question of the first factor is whether the new work supersedes the object of the original creation or instead adds something new, with a further purpose or different character. Citing the U.S. Supreme Court decision in Campbell v. Acuff-Rose Music, Inc., 510 U.S. 569, 114 S.Ct.1164 (1994), the Fifth Circuit found that the use of the work was transformative as the art kits had an educational purpose that was significantly differing from the original, decorative purpose of Keck’s dog-themed artwork. Pointing to the recent Supreme Court decision in Andy Warhol Found. For the Visual Arts, Inc. v. Goldsmith, 598 U.S. 508, 143 S.Ct.1258 (2023), Keck argued that the purpose of the infringing work was substantially the same as the purpose of the original photograph, namely “the online, e-commerce sales of Keck’s entire works.” However, the Fifth Circuit concluded that the art kits had an educational objective, while the original work had a mere aesthetic or decorative objective and thus, the purpose of the use was not substantially the same. The Court noted that there was little threat that the art kit would serve as a substitute for the original work; Mix Creative does not participate in the same market as Keck. The Fifth Circuit found that the district court correctly rejected Keck’s copyright claim and that the district court did not abuse its discretion in finding Keck, not his counsel, liable for over $100,000 in attorneys’ fees, citing 17 U.S.C. 505.

Michael Messier filed a Petition for Cancellation of the New Orleans Saints fleur-de-lis service mark, No. 992210 (“Saints Mark”). Mr. Messier asserted that he is a direct descendent of the Kings of France (Scotland, Aragon, and Castille) and that “he and his family own intellectual property rights in the Fleur-de-Lys, Orleans, and Saints marks.” However, the Petition contained no claim that he or his family currently use any fleur-de-lis mark in commerce or receive any revenues through licensing. The Trademark Trial and Appeal Board granted the Saints’ motion to dismiss as Mr. Messier failed to allege a commercial interest in the registered mark or reasonable belief in damage from the mark’s continued registration, which Mr. Messier appealed.

The Federal Circuit concluded that it lacked jurisdiction since Mr. Messier lacked standing. The Court noted that to cancel the Saints Mark, Mr. Messier must allege (1) an actual or imminent injury-in-fact that is concrete and particularized, (2) causal connection between injury and the conduct complained of, and (3) likely redressability by a favorable decision. However, he failed to satisfy this burden since he failed to allege that he is injured by the Saints Mark. To satisfy this injury requirement, the alleged injury must be more than a general grievance or abstract harm. The Court noted that Mr. Messier did not allege that he or his family make or offer for sale any products or services using the fleur-de-lis design. He did not allege that he is involved in any commercial entertainment services in connection with football or any other form of commerce where he uses the fleur-de-lis design. The Court concluded that Mr. Messier had not met his burden to show a concrete and particularized injury sufficient to have standing for this appeal. His allegations of hypothetical or future possible injury were insufficient to confer Article III standing.

A pair of recent intellectual property wins by Kean Miller under the Uniform Domain Name Dispute Resolution Policy (UDRP) tracks the busy trend of domain name cases filed with the World Intellectual Property Organization (WIPO). The wins further highlight the trend of successful transfers of fraudulent and abusive domain name registrations to its rightful owners (an approximate 88.7% transfer rate[1]). Over 6,000 of these types of domain name cases are predicted to be filed in 2025[2]. These cases predominantly seek to capitalize on a trademark owner’s good name and business reputation in an effort to trick consumers into either purchasing counterfeit products, which are neither made nor licensed by the trademark owner, or providing certain personal or financial information to the bad faith actor for illegal means.

UDRP, which is administered by WIPO, provides the legal framework for efficiently resolving disputes between trademark owners and bad faith domain name registrants in connection with abusive and fraudulent registration and use of internet domain names[3]. These proceedings can provide a much quicker and more cost-effective means of shutting down infringing domains. And, unlike a claim under the Digital Millennium Copyright Act (DMCA), the UDRP has the power and ability to transfer the target domain to the rightful trademark owner. UDRP is utilized across the industry for domain name disputes that meet the following criteria:

(i) the domain name registered by the domain name registrant is identical or confusingly similar to a trademark or service mark in which the trademark owner/complainant (the person or entity bringing the complaint) has rights;

(ii) the domain name registrant has no rights or legitimate interests as to the domain name in question; and

(iii) the domain name has been registered and is being used by the registrant in bad faith[4].

Trademark owners/complainants can demonstrate the requisite bad faith by showing:

(i) Circumstances indicating that the domain name was registered or acquired primarily for the purpose of selling, renting, or otherwise transferring the domain name in question to the rightful owner of the trademark or service mark or to a competitor of that rightful owner, in exchange for valuable consideration that exceeds the domain name registrant’s out-of-pocket costs for acquiring the name;

(ii) The domain name was registered to prevent the rightful owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the domain name registrant has engaged in a pattern of such conduct;

(iii) The domain name was registered or acquired mainly for the purpose of disrupting the business of a competitor; or

(iv) By using the domain name, the domain name registrant intentionally attempted to attract internet users to the registrant’s website (or other online location) for financial gain, by creating a likelihood of confusion with the rightful trademark owner as to the source, sponsorship, affiliation, or endorsement of the registrant’s website or the location of a product or service on the registrant’s website[5].

Of course, this list is not exclusive, and a trademark owner can meet its burden of proof by demonstrating other similar circumstances indicative of bad faith, depending on the facts specific to a particular case.

Kean Miller’s recent wins have been based on claims involving bad faith actors who have registered confusingly similar domain names in an attempt to trade off the goodwill of the rightful trademark owners. At least one went so far as to copy recognizable images and information of the rightful owner, in an effort to redirect internet users to fake listings for the purchase of counterfeit products for commercial gain. Kean Miller has further successfully procured the transfer of a domain name from a registrant attempting to “typosquat” a domain name, a process through which a bad actor seeks to register and use a minimally mis-typed version of a particular well-known domain name in an effort to trick internet users into visiting the registrant’s own site for various illegal and fraudulent means. Kean Miller continues to track these fraudulent domain name trends, and stands ready to support your business against these bad faith actors.

[1] https://static1.squarespace.com/static/58febdfcbf629aa913a85974/t/681117cf705c8635d05d9c90/1745950673053/2025-q1-domain-dispute-digest.pdf.

[2] Id.

[3] https://www.wipo.int/amc/en/domains/guide/#What_is_the_2.

[4] Id.

[5] Id.

For the serious handbag collector, purchasing a Hermès Birkin is a pinnacle achievement. Beyond the eye-watering price tag for the purse alone, being offered a Birkin for purchase is often the result of several thousand dollars in prior sales with Hermès and a positive, established relationship with a salesperson who is authorized to offer Birkin bags to hand-selected customers deemed worthy of carrying a Birkin. The pre-owned market does not offer any price relief, as a Birkin is one of the few fashion items capable of appreciating in value. So, it comes as no surprise that handbag enthusiasts who don’t have the cash for the bag itself, or the time, money, or desire to spend on purchasing other items, look to other options.

And those shoppers with a TikTok account may have learned this past week of a new “option” to source dupes of Birkins and other luxury brand products direct from Chinese manufacturers. In these viral posts, the content creator claims that—in direct response to the U.S. Tariffs—they are exposing many of the world’s costliest luxury goods are made at a sliver of the retail price in China. Many of the videos include links to where individuals can purchase goods directly from the Chinese manufacturer.

To be clear, regardless of whether the goods are purchased directly from a third-party manufacturer that is involved with the designer item’s production, the item purchased is still a counterfeit. But that hasn’t stopped many shoppers from buying $5 leggings said to be produced from the same manufacturer as Lululemon or $50 Louis-Vuitton style bags. As a direct result of these viral videos, the Chinese wholesale marketplace app DHgate jumped to the No. 3 spot of free iPhone apps in the U.S. Apple App Store, from No. 352 less than a week ago.[1] Of course, using DHgate is not a solution for avoiding tariffs, as any Chinese imports to the U.S. will still be impacted by the tariffs and potential seizure by customs officials. But those details may be less important to a buyer who is only shelling out $1,400 for a Birkin dupe instead of the minimum $15,000 for an authentic Hermès purchase.

With this swarm of videos has come the question—how are brands able to identify as being made in one country when a significant portion of the bag is made elsewhere? Much confusion often exists at the consumer level about what the “made in” tag means, with ordinary consumers assuming that if a product is identified as being made in a specific country, say Italy, a consumer may assume that a product bearing a “made in Italy” tag includes all Italian-made materials and craftsmanship. Yet, due to the often-complex supply chain in the fashion industry, there is often not a clear through-line about the country of origin. And the fact that this murkiness exists is no secret. For example, in 2017 the luxury brand Louis Vuitton received heat after an investigative report claimed that near-entire shoes for the Louis Vuitton Moet Hennessy (LVMH) luxury group were made in Romania, with only the soles being added in Italy.[2]

Generally, every article of foreign origin into the U.S. must be marked with its country of origin. The country of origin means the country or territory where the good originates. The marking rules and regulations can vary across different products and industries, particularly when a good’s manufacture begins in one country and is completed in a second country. For textiles and apparel products, the country of origin to be marked is:

(1) The country where the good was wholly obtained or produced;

(2) If (1) is not applicable, the country where the product underwent a change in tariff classification or met other requirements specific to the article, which are specified in 19 USC 102.21 (e);

(3) If (1) nor (2) apply, then the country is where:

a. 50% or more of the exterior surface area is formed by major parts that have been knitted or crocheted directly to the shape used in the good (“knit to shape”); or

b. The good was wholly assembled;

(4) If (1)–(3) do not apply, the country of origin is where the most significant assembly or manufacturing process occurred; OR

(5) If none of the foregoing apply, the country of origin is the last country where an important assembly or manufacturing process occurred.[3]

In luxury brands, the most labor-intensive part of the production, such as elaborate embroidery and embellishments, are done on panels and then assembled to create the finished product in the “made in” location.[4] High end designers, such as French designer Isabel Marant, have acknowledged that much of haute couture originates with Indian artisans.[5]

Considering the murkiness in the marking rules being an open secret for fashion—assuming what they claim is true, why are these manufacturers now speaking up? Based on comments from the content creators, the videos appear to be a response to the U.S.’s ongoing trade war with China after Trump placed 145% tariffs on Chinese imports, to which China retaliated with its own 125% tariffs on U.S.-imported goods.[6] It’s reasonable to believe some are chasing new buyers, but other commentators suggest that the videos are intended to communicate to U.S. consumers how much they actually rely on China for goods they believe originate in other countries. Indeed, the Peterson Institute for International Economics determined in 2024 that 40% of all footwear and 25% of all textiles and clothing imported into the U.S. came from China.[7] Some of the videos also directly attack “made in China” stigma, where Chinese-manufactured goods are treated as synonymous with being cheap or poor quality. Whatever the reason, the claims made should all be taken with a massive grain of salt—as the claims are directly contrary to the full-throated representations made by various European fashion houses and could be merely a well-timed effort by counterfeiters to sell counterfeit luxury items under the guise of being the “same” as a quality product.

Though the claims by content creators may not change the minds of consumers that believe luxury pieces are a worthwhile investment, there is no doubt that these claims continue to draw negative press to luxury brand markups and the actual “worth” of such products. The surge in popularity of apps like DHgate also illustrate how effectively Chinese creators can leverage platforms like TikTok to influence U.S. consumers.[8] A scandal last year about Dior and Armani utilizing sweatshops in Milan threw water on claims that the high price tags are justified by the brands avoiding human rights violations, and Q1 stock reporting from brands like LVMH signal tough times ahead.[9] It’s undoubtable that these videos call into sharp question, for many U.S. consumers, where these luxury brands are actually crafted and whether the “made in” tags actually reflect the quality they have come to expect with the high price tags. It also calls into question what can be done about these luxury counterfeiters that are offering purportedly Chanel Boy Bags and Hermès Birkins without the hefty price tags.

What can be done all comes down to the tricky situation of trademark and trade dress enforcement ability in China. Just last year, luxury retailer Burberry won a significant infringement claim and was awarded £675,668 in damages by the Jiangsu Provincial High People’s Court relating to infringement by the holder of a Chinese trademark registration for Baneberry, under which it sold in approximately 40 pop up shops products bearing Burberry’s iconic checked pattern and a logo resembling Burberry’s Equestrian Knight design.[10] In addition to the infringement, the Chinese court found that Baneberry had registered their trademarks in bad faith. This ruling signified to many an increasing ability to bring actual enforcement action against infringers in China, which, according to the Organization for Economic Cooperation and Development, accounts for more than 80% of the world’s counterfeit goods.[11]

But China’s willingness to support U.S. efforts to weaken counterfeiting are inseparably connected to the two countries’ trading relationship. Beijing has taken steps since 2019 to increase IP enforcement efforts by introducing stricter trademark laws, increasing penalties for infringement, and establishing specialized IP courts. But those efforts could stall as tensions increase, putting at risk the ability to challenge infringers, increased counterfeiting, and increased cyber espionage.[12] There are theories that China is considering giving free reign to counterfeiters that target American brands (such as often-counterfeited brands like Ralph Lauren, Tom Ford, Calvin Klein, Coach (Tapestry), Jimmy Choo (Capri), The Row, Estée Lauder, and La Mer) in response to the trade war. Social media content creators have also noted Zara, H&M, and Stanley as at risk since many of their products are known to originate in China. Such a strategy would not be without precedent. In 2023, in response to U.S. and E.U. sanctions related to the Ukraine invasion, Russia ended the requirement for goods entering Russia to provide a certification of IP ownership of the goods.[13] While the products could still be inspected by local authorities, reports reveal these inspections to be relatively lax and many of the certifications clearly faked.[14] As a result, many counterfeit luxury goods have flooded the market in the EU through Turkey. Also at risk is the possibility of retaliatory measures; China has previously threatened to cancel trademark registrations and patents in response to past trade disputes.[15]

For U.S. companies watching these developments, a few measures can be taken to best arm themselves against these volatile times. First, companies seeking expansion in and manufacturing in China should seek to register patents and trademarks early. China has a “first to file” trademark application process that can allow bad faith actors to apply for trademark applications on established brands, complicating the enforcement process when the time comes. Second, companies should also be sure to invest in their security infrastructure to protect proprietary designs and trade secrets.

[1] Sarah Perez, “Chinese marketplace DHgate becomes a top US app as trade war intensifies”, TechCrunch (Apr. 14, 2025) (https://techcrunch.com/2025/04/14/chinese-marketplace-dhgate-becomes-a-top-us-app-as-trade-war-intensifies/).

[2] Alexandra Lembke, “Revealed: the Romanian site where Louis Vuitton makes its Italian shoes”, The Guardian (Jun. 17, 2017) (https://www.theguardian.com/business/2017/jun/17/revealed-the-romanian-site-where-louis-vuitton-makes-its-italian-shoes).

[3] 19 USC 102.21(c). See also “Marking of Country of Origin on U.S. Imports”, U.S. Customs and Border Protection (last accessed Apr. 15, 2025) (https://www.cbp.gov/trade/rulings/informed-compliance-publications/marking-country-origin-us-imports).

[4] Emily Chan, “What Does the ‘Made In’ Label On Our Clothes Actually Mean?”, British Vogue (Jan. 18, 2024) (https://www.vogue.co.uk/article/what-does-made-in-label-mean-clothes).

[5] Kai Schultz, et al, “Luxury Fashion Relies on Indian Artisans. The Labels Tell a Different Story”, Bloomberg (Sept. 28, 2023) (https://www.bloomberg.com/features/2023-india-luxury-fashion-supply-chain/).

[6] Dhani Mau, “Hey, Quick Question: Why are Chinese Fashion Manufacturers Going Viral on TikTok Amid the Tariffs Chaos?”, Fashionista.com (Apr. 14, 2021) (https://fashionista.com/2025/04/chinese-suppliers-manufacturers-tiktok-luxury-fashion-brands).

[7] Id.

[8] Sarah Kent, “’Trade War TikTok’ Takes Aim at Luxury”, BusinessofFashion.com (Apr. 15, 2025) (https://www.businessoffashion.com/articles/sustainability/trade-war-tiktok-luxury-brands-chinese-factories/).

[9] Id.

[10] Maura O’Malley, “‘An important moment in Chinese IP litigation’ – Burberry celebrates trademark infringement win in ‘key market’”, Global Legal Post (May 8, 2024) (https://www.globallegalpost.com/news/an-important-moment-in-chinese-ip-litigation-burberry-celebrates-trademark-infringement-win-in-key-market-1386955387).

[11] “Behind the U.S.-China Trade War is a High-Stakes IP Battle”, The Fashion Law (Apr. 9, 2025 (https://www.thefashionlaw.com/behind-the-u-s-china-trade-tariffs-is-a-high-stakes-battle-over-ip/).

[12] The Fashion Law, note 11.

[13] Noëmie Leclercq, “Putin weaponises counterfeit luxury goods amid Ukraine war”, Glitz.com (Sept. 2, 2023) (https://www.glitz.paris/en/entourage/2023/02/09/putin-weaponises-counterfeit-luxury-goods-amid-ukraine-war,109911779-evg).

[14] Id.

[15] The Fashion Law, note 11.

On October 10, 2024, during an oral argument, the Federal Circuit was presented with an argument that patent applications, filed before the filing date of the challenged patent but not published until after the filing date of the challenge patent, are not “printed publications.” The panel admitted that the argument carried weight, creating worry in the patent community of potential impacts of such a ruling. However, the Federal Circuit issued its opinion on January 14, 2025, finding that a patent application is prior art and that the effect of the application as prior art stems from its filing, not its publishing date.[1]

The case is Lynk Labs, Inc. v. Samsung Electronics Co., Ltd., which followed a finding of unpatentability by the PTAB in an inter partes review (IPR). The Board’s ruling, challenged by Lynk Labs, found that a patent application filed before Lynk Labs’ priority date, but published after, could be used as prior art to invalidate the challenged claims. The prior art application introduced by Samsung was abandoned and a patent was never issued. Nevertheless, the Federal Circuit agreed with the PTAB’s decision.

Section 311(b) of the America Invents Act (AIA) states that a patent can be challenged in an IPR “only on the basis of prior art consisting of patents or printed publications.”[2] Lynk argued that a patent application that was not published prior to a challenged patent’s filing date is not included in “printed publications” because it was not publicly available at the critical time. Lynk cites to a handful of case law in saying that “the statutory phrase ‘printed publication’ has been interpreted to mean that before the critical date [of the challenged patent] the reference must have been publicly accessible to the public interested in the art.”[3] Lynk argued that had Congress intended patent applications to be used as prior arts in IPR, it would not have expressly left them out as a category in 311(b).[4]

The Federal Circuit agreed with Lynk: “The touchstone of whether a refence constitutes a printed publication is public accessibility.” citing Weber, Inc. v. Provisur Techs., Inc., 92 F.4th 1059, 1067 (Fed. Cir. 2024). However, the Court goes on to critique Lynk’s focus of printed publications under 35 U.S.C. § § 102(a) and 102(b). The Court points out that Congress created a “special rule” in § 102(e)(1)[5] for published patent applications. Under § 102(e)(1), a person shall be entitled to a patent unless “(e) the invention was described in – (1) an application for patent, published under 122(b), by another filed in the United States before the invention by the applicant for patent.” (emphasis added).

Because patent applications are published and publicly accessible, they are printed publications. Further, as stated by the Court, “102(e)(1) treats this type of printed publication as prior art as of a time before it became publicly accessible—i.e., as of its filing date.” The term “printed publications” does not have its own temporal element. Rather, such element is found in the applicable statute for each type of printed publication. The rule for patents as prior art presents similar wording, granting a patent prior art status as of its filing date.[6] Thus, in a similar IPR situation, 311(b) can include as prior art a patent that did not become a patent until after the challenged patent’s priority date.

Ultimately, the Court concluded that “the plain language of §§ 311(b) and 102(e)(1) permits IPR challenges based upon published patent applications, and such published patent applications can be deemed prior art in IPRs as of their filing date.” Additionally, the Court went on to analyze the historical context of 311(b), finding nothing to sway its interpretation. Finally, the Court further confirmed its interpretation, finding that making patent applications available as prior art under 311(b) is fully consistent with Congress’s purpose in limiting the types of patentability challenges in IPRs.

The Federal Circuit’s ruling eases the worries of the patent community and maintains the status quo. A contrary decision would call into question previous IPRs which relied on applications as printed publications to invalidate challenged claims. Fortunately, the Federal Circuit avoided such consequences, following years of precedent and the clear language of the law.

[1] Lynk Labs, Inc. v. Samsung Elecs. Co., Ltd., Case No. 2023-2346, (Fed. Cir. 2025) (23-2346.OPINION.1-14-2025_2450365.pdf).

[2] 35 U.S.C. § 311(b).

[3] In re Klopfenstein, 380 F.3d 1345, 1348 (Fed. Cir. 2004); see also Acceleration Bay, LLC v. Activision Blizzard Inc., 908 F.3d 765, 772 (Fed. Cir. 2018) (explaining that public accessibility is the “touchstone in determining whether a reference constitutes a ‘printed publication,’” and then noting the Board’s finding that the reference “was not publicly accessible before the critical date” (emphasis added) (cleaned up)); In re Lister, 583 F.3d 1307, 1311 (Fed. Cir. 2009) (“In order to qualify as a printed publication within the meaning of § 102, a reference ‘must have been sufficiently accessible to the public interested in the art.’” (citation omitted));

[4] Stephen Schreiner, attorney for Lynk Labs, details his argument at Patent Applications Published After the Priority Date of a Challenged Patent Are Not ‘Printed Publications’ for IPRs.

[5] This case was governed by pre-AIA language.

[6] See pre-AIA 35 U.S.C. § 102(e)(2) and current 35 U.S.C. § 102(d).

This article was originally published by Biz New Orleans.

NEW ORLEANS – Devin Ricci and Mary Love, Intellectual Property Lawyers with Kean Miller, have issued a statement urging businesses and individuals to exercise caution to avoid unauthorized use of NFL-related branding or while streaming game broadcasts to avoid hefty fines or legal action.

Ricci and Love highlighted that the NFL maintains strict control over its intellectual property, including game broadcasts, logos, team names, and slogans. “Many facets of the Big Game are protected by copyright and trademark laws,” Ricci explained. “The NFL actively enforces these rights through measures such as takedown notices, cease-and-desist letters, and lawsuits.”

Businesses planning to stream the game must ensure they have the appropriate licensing. A commercial license is typically required for public screenings in establishments such as bars, restaurants, or event venues. Relying on personal streaming subscriptions for such purposes is a violation of the NFL’s licensing agreements and could lead to significant penalties. Love advised, “Check with your service provider to confirm that your streaming package includes the necessary commercial rights.”

The NFL also owns trademarks on terms like “Super Bowl” and associated branding, which cannot be used for promotional or advertising purposes without explicit permission. “Unauthorized use of NFL trademarks is prohibited at both state and federal levels,” Ricci noted. “Businesses can avoid infringement by opting for general terms like ‘The Big Game’ instead.”

The financial consequences of violations are substantial. Under the Copyright Act, statutory damages range from $750 to $30,000 per work, with potential increases up to $150,000 for willful infringement. Similarly, the Lanham Act allows for damages between $1,000 and $200,000 per counterfeit mark, which can escalate to $2 million for willful violations. Both statutes permit the recovery of attorney’s fees, further increasing the costs of non-compliance.

The lawyers stressed that the NFL is particularly vigilant about protecting its brands during high-profile events like the Super Bowl. For businesses unsure about compliance, consulting legal counsel is strongly recommended. “The costs of obtaining the proper licenses pale in comparison to the potential damages of a legal dispute,” Love said.

Kean Miller’s guidance serves as a reminder of the critical importance of respecting intellectual property rights, particularly as New Orleans gears up for a landmark Super Bowl celebration.

An owner of a trademark or service mark used in commerce may request registration on the principal register by filing an application with United States Patent and Trademark Office.  The registration provides certain benefits including prima facie proof of ownership and validity and constructive use throughout the country.  While registration is great for brand management and protection, once the registration is obtained notice should be provided.  

15 U.S.C. 1111 provides that a registrant may give notice that its mark is registered by displaying with the mark the words “registered U.S. Patent and Trademark Office” or “Reg. U.S. Pat. & Tm. Off.” or the R enclosed within a circle ®.  The statute further provides that in any suit for infringement by a registrant failing to give notice of registration, no profits or damages shall be recovered under the provisions of this chapter unless the defendant had actual notice of the registration.  While this statute does not create a defense in an infringement action, it does limit the remedies a registrant may pursue. A registrant who fails to provide notice of registration may still obtain an injunction but will not be able to recover damages and profits, unless the registrant can prove the defendant had actual notice of the registration.    

A registrant should be sure to put a notice adjacent to the mark when used in connection with the brand of goods or services subject to the registration. The notice should be put on a label, box, or website, as may be appropriate, to give this notice of registration.  If an infringement action becomes necessary, the registrant will want the be able to pursue all possible remedies, and not be limited by registrant’s own failure to give notice.