I am very pleased to welcome Maria Luisa Palmese to Wuersch & Gering. Maria brings with her many years of experience as a patent lawyer and patent litigator, assuring that Wuersch & Gering will be able to serve all facets of our clients’ intellectual property needs. Read more here.
On Monday, December 14, 2015, the Department of Transportation (DOT) published its anticipated new regulations regarding the registration of drones (“Small Unmanned Aerial Systems,” which are defined as drones weighing up to 55 lbs., including any payload). More here.
Anyone watching or reading the news over the last few months will have noticed an increase in stories concerning drones. These stories reach from the mundane (drones being used to inspect pipelines and powerlines) to the ridiculous (a man shooting down his neighbor’s drone with a shotgun). Drones are a fairly new technical innovation and, unfortunately, the laws concerning safe drone operations, both for pleasure and profit, have not caught up. Nevertheless, there are some rules and regulations in place and the U.S. government agency responsible for the safety of U.S. airspace, the Federal Aviation Administration (“FAA”) has not been idle. This article shall provide a very general overview of what rules and regulations must be observed when operating a drone for commercial purposes.
By some estimates, one million drones or more may be sold this holiday season. When operated for pleasure by hobbyists, there are very few pitfalls for drone operators, as long as common sense prevails. Drones cannot be operated near airports and no higher than 400 feet above ground level, to assure that the drone does not enter the national airspace. Other restrictions also apply, such as operating a drone over a sports event or other large gathering of people, which is generally prohibited.
Drones can have many uses in the business environment. From taking aerial shots of homes for real estate companies, pipeline and power line inspections, replacing security foot patrols in large industrial establishments, for television and movie productions, and for landscape and cityscape photography, the advantages of using a drone are clear. Technology has advanced to the point where certain drones can operate entirely autonomously, following a pre-programmed flight path before returning to the point of origin, taking video or still pictures along the way. For some tasks, the cost savings are potentially significant. It is, therefore, not surprising that many companies are hoping to use drones in one way or another.
However, when a drone is used for a commercial purpose, the operator can easily find him or herself in hot water.
Recently, in a much publicized case, the FAA proposed to fine SkyPan International, a Chicago-based drone operator, $1.9 million for repeatedly violating FAA regulations and flying drones in restricted airspace. The FAA contends that SkyPan conducted 65 flights over Chicago and New York, all without clearance from air traffic controllers. While the fine will probably be appealed and may be reduced, this case highlights why the issue of commercial drone operations is one that must be taken seriously.
The FAA is currently working on new rules specifically for the commercial operation of small (less than 55lb total weight) drones. Pending promulgation of such rules, which may include a requirement that all drones – private and commercial – must be registered with the FAA, certain existing laws are being used by the FAA to impose rules and limitations on how, when and by whom drones can be flown commercially. In order to avoid being fined, every commercial drone operator must be aware of these rules and follow them to the letter.
There are presently three methods of gaining FAA approval for flying civil (non-governmental) drones for commercial purposes:
- Special Airworthiness Certificates – Experimental Category (SAC-EC) for civil aircraft to perform research and development, crew training, and market surveys;
- obtaining a type and airworthiness certificate for a drone in the Restricted Category (14 CFR § 21.25(a)(2) and § 21.185) for a special purpose or a type certificate for production of the drone under 14 CFR § 21.25(a)(1) or § 21.17; and
- filing a Petition for Exemption with a civil Certificate of Waiver or Authorization (COA) for civil aircraft to perform commercial operations in low-risk, controlled environments. This is commonly referred to as the “Section 333 Exemption” and will, for most operators, be the easiest to comply with.
Section 333 of the FAA Modernization and Reform Act of 2012 grants the Secretary of Transportation the authority to determine whether an airworthiness certificate is required for a drone to operate safely. It authorizes the FAA to grant exemptions from FAA rules limiting commercial operation of Unmanned Aerial Systems (drones) pending the adoption of permanent rules. To obtain a Section 333 Exemption, a petition is filed with the FAA. The information submitted with the petition must include, among other items, information about the drone itself, the operator of the drone, the pilot in command and the nature of the operations to be conducted with the drone. The petitioner must also state with specificity with regard to which rules and regulations the exemption is sought. Petitioners should allow at least 120 days for processing and review of any exemption requests.
Once granted, the exemption will be specific to the drone or drones named (usually by the manufacturer’s name/type) in the petition and will spell out all restrictions regarding use of the drone(s) for the purposes specified in the petition. Most exemptions will include the following pre-defined restrictions:
- Drones may not be operated in excess of 400 feet above ground level.
- Drones may not exceed a ground speed of 100 mph.
- Operations authorized by the grant of exemption are limited to the drone or drones named in the petition, which must weigh less than 55 pounds including payload.
- All operations must be “line-of-sight” from the Pilot in Command (PIC).
- In addition to the PIC, there must be a second person, who acts as an observer.
- The PIC (but not the observer) must hold any one of the following certifications (licenses): airline transport pilot, commercial pilot, private pilot, recreational pilot, or sport pilot. This means that when a drone is operated for a commercial or business purpose, the PIC must in all cases be a licensed pilot.
- The PIC must hold a current FAA airman medical certificate or a valid U.S. driver’s license issued by a state, the District of Columbia, Puerto Rico, a territory, a possession, or the Federal government (note that Sport Pilot licenses do not require that the pilot obtain an FAA airman medical certificate).
- The PIC must meet the flight review requirements specified in 14 CFR §61.56 in an aircraft in which the PIC is rated on his or her pilot certificate.
- The drone must be registered with the FAA and the registration number (commonly referred to as an “N-number”) must be affixed to the drone. The numbers on the drone must be as large as practicable.
- Night flight will generally be prohibited, though it may be possible to obtain an exemption specifically for night operations, in which case the FAA will likely require that the drone be equipped with a rotating beacon and other position and navigation lights.
Depending on the purpose of and the manner in which the drone is to be operated, more specific restrictions and may also be included.
Of these restrictions, the most difficult to comply with would appear to be that the PIC must hold at least a sport pilot license. It means that where commercial drone operations are concerned, the drone cannot be flown by just anyone. A company wishing to employ drones must, as a logical consequence, also employ a licensed pilot.
One might be tempted to argue that this requirement is unnecessary, considering that these are “toys” that can be flown by anyone, requiring very little skill to operate. However, since drones have been observed flying as high as 2000 feet above ground and can weigh 50 pounds or more, the potential consequences of a collision with an aircraft are apparent and there have been reports of near misses. The ingestion of a 50 pound machine into a jet engine could have fatal consequences. It should not surprise anyone that the FAA, having as one of its primary tasks the safeguarding of the national airspace, would seek to minimize the risk by regulating drone use.
The FAA is keenly aware that not only commercial drones can present risks to airspace users, but privately used drones as well. It is for these reasons that new rules are currently being written that will in all likelihood require the registration of every drone that is privately owned and operated, even if for pleasure only. The FAA has assembled a task force of government and industry stakeholders to work out the details of these new requirements. It is likely that registration will take place at the time of sale. Retroactive application of the registration requirement to drones sold prior to December 2015 should be expected, though that is among the details to be decided. The task force is to propose specifics by November 20, 2015, with the registration requirement to be in place by mid-December. Whether this timeline is realistic remains to be seen.
Considering all of the foregoing, it becomes obvious that anyone wishing to use their drone in a commercial enterprise of any kind will have to comply with some more or less burdensome regulations or run a substantial risk of being fined or otherwise punished by the FAA. We urge all parties considering the commercial use of drones to obtain legal guidance before doing so.
For more information please contact Thilo C. Agthe at 212-509-4714 or via email at firstname.lastname@example.org.
Canadian’s have always been considered a polite people. They are about to become even “Nice-er” according to my friend and colleague Lorraine Fleck.
The Canadian Intellectual Property Office (CIPO) recently announced that starting Fall 2015, it will accept trademark applications with goods and services grouped and classed according to the Nice Classification. The implementation of the Nice Classification is in advance of Canada changing its trademark system as it joins the Madrid Protocol and Singapore Treaty.
Future blog postings will address how the changes to Canada’s trademark system will affect Canadian and foreign brand owners.
If you have any questions regarding the upcoming changes to Canada’s trademark system, please contact us.
Not really a trademark matter, but of great concern to all fans of freedom of speech.
Well, I knew that politics was a dirty game — but I didn’t realize just how unethical some Senators would be in licking their masters’ boots.
You might recall that Senate Bill 444 sought to repeal Nevada’s Anti-SLAPP law. A scummy Senator put the bill up, at the behest of a scummy lawyer. They did it in the dark of the night, hoping nobody would notice.
It got through the Senate, but when it got to the Assembly, the people’s voice was heard. The bill was dead.
Then, Wynn Resorts’ lobbyist proposed a compromise. The compromise was reasonable. We might not have liked it, but there was no reason not to agree to the compromise.
But it was not a compromise.
It was a lie.
It was intended to mollify the opponents of Senate Bill 444 so that we would back off, shut up, and stop looking.
View original post 288 more words
The TTAB’s decision can be found here: http://ttabvue.uspto.gov/ttabvue/v?pno=92046185&pty=CAN&eno=199
Of course, this does not mean that the team has to change its name. Considering the past statements of the owners, I suspect that they will remain the Washington Redskins for the foreseeable future. I also suspect that the owners will appeal. Stay tuned.
As reported recently by the IPKat here, a Belgian court has made a very curious finding. Rather than as a color mark, it classified the famous red sole of Christian Louboutin’s shoes as a shape mark and then not only found against Louboutin, but also declared the mark invalid.
Frankly, I’m puzzled by this. Unfortunately, I’ve not been able to find an English translation of the judgment and I don’t speak Flemish. However, I’m fairly sure Louboutin will appeal and the last word on this has not been spoken. Stay tuned…
Yes, I haven’t blogged for a while. The truth is, things have been hectic, both personally and professionally and other matters demanded my attention. Well, I’m back.
In February of 2013, I posted a list of eight reasons why there are disadvantages to using the Madrid system to obtain a US trademark registration. At the time I promised to post a similar list of positives.
Therefore, much later than anticipated, here is a non-comprehensive list of some of the advantages of using the Madrid system over the filing of a national application in the US:
- No need to show use in commerce before receiving a registration. As you may know, national applications in the US require a showing that the mark is in use in commerce before the USPTO will issue a registration. This is actually a double-edged sword, as explained in my previous post. However, the advantage of obtaining a registration, which could then be cited against later filed trademarks by the USPTO, should not be underestimated. Note, however, that the same effect can be obtained by using Section 44 of the Lanham Act, which permits foreign filers to obtain registrations (based solely on their bona-fide intent-to-use) without having to show use in commerce.
- Ease of filing and no need to involve US-counsel unless an office action is issued by the USPTO. While most extensions of protections will eventually require retaining US-counsel, the initial filing is accomplished via WIPO. This means a not insignificant cost savings at the outset. In particular where the goods or services are simple (think “beer” in Class 32), i.e. where there is practically no likelihood of a rejection based on a lack of specificity in the description of goods, the cost savings could be significant. Keep in mind, however, that the European penchant for throwing everything plus the kitchen sink into an application means that the likelihood of not receiving an office action is very remote. It gets even worse if class headings are used. In my view, the simpler the description of goods, the more likely it will be that going the Madrid route will result in a significant cost savings. If, however, you choose to file an application for extension of protection with descriptions of goods and services in multiple classes and for hundreds of goods or services, the costs will escalate tremendously once it becomes time to answer the inevitable office action.
- Ease of filing of assignments is the final advantage I can think of. If an international registration is assigned, WIPO will forward the new owner’s information to the USPTO and that new owner will be recorded as the holder of the US registration. There is a very obvious administrative advantage here, one that should not be underestimated. Remember, however, that the US requires that trademarks be assigned along with “the goodwill of the business symbolized by the mark.” Non-US owners of international registrations should therefore take care that their assignment documents should include the necessary “magic language” in order to withstand challenge in the US, should there ever be a dispute over the validity of the registration.
I’m sure there are other advantages and I invite my esteemed readers to provide additional examples in the comments as their fancy might strike them.
There have been many discussions over the years about the utility of the Madrid Protocol. One of the questions most often repeated, at least in my experience, is whether it makes sense for non-US owners of trademarks to use the Madrid Protocol to extend protection of their internationally registered marks into the United States. As can be easily imagined, this is a hotbed of debate. Recently, in the context of a discussion on LinkedIn, I came across a list of reasons NOT to use Madrid in the US, authored by my colleague Nicholas Wells of Wells IP Law in Salt Lake City, Utah (http://www.wellsiplaw.com/). Because I am in total agreement with the reasons set forth, I asked and received permission to replicate the list here. I’ve added some remarks and thoughts that are mine, but in essence this is Nicholas’ list:
- Inability to use the Supplemental Register (i.e., to move a mark to the Supplemental Register to save it from abandonment when the mark is descriptive and acquired distinctiveness can’t be shown).
- Inability to change class numbers to place goods in the class that USPTO requires. WIPO’s classification of goods and/or services cannot be modified by the USPTO. If WIPO misclassifies goods or services, the applicant’s only recourse is to prevail on WIPO to correct the misclassification, which correction will then be transmitted to the USPTO and adopted. This is onerous, takes time and there is no guarantee that WIPO will agree to reclassify.
- Inability to move goods between classes, even when the class that the goods belong to per USPTO is already part of the application. This is not a problem in a national application.
- Inability to add classes (e.g., goods are listed as “blankets and clothing” in the original app.: a direct filed national application lets you split into classes 24 and 25 by paying another per-class official fee but under Madrid the USPTO requires you to drop whichever one is in the wrong class. If the application lists class 25, the blankets must be deleted. If the application was filed in class 24, the clothing must be deleted – this can lead to the deletion of core goods or services from an application, potentially rendering it practically worthless to the applicant).
- Inability to add other statutory filing bases (specifically, inability to add Section 44(d) priority claim to a non-US application outside of the normal Madrid priority process).
- Weakness of Madrid registrations in a dispute (because use has not been shown during the registration process, the registration can be used defensively but not offensively unless use is first shown, which places the burden on the owner of the registration and catches many mark owners off guard). My advice to my clients is usually to not use a registration in an opposition, infringement or cancellation proceeding unless the mark actually in use in commerce in the United States.
- Inability to modify marks (WIPO permits no modifications; USPTO permits non-material modifications either during prosecution or post-registration; this is very helpful for minor updates of design marks, but is impossible for Madrid-based US registrations).
- Dangers of missed maintenance deadlines; because mark owners track the renewal of the International Registration and are often more accustomed to measuring from the filing date, they are at risk of missing (a) the 5-6 year post-registration filing deadline for the affidavit of use (pursuant to Section 8 of the US Trademark Act) and the fact that these affidavits of use must also be filed every ten years, measured by the US-registration date, not the WIPO renewal date.
I will add one more reason to Nicholas’ already comprehensive list: There is actually not much of an administrative advantage to obtaining an extension of protection in the US. As mentioned in point no. 8 above, separate affidavits of use must be filed in the USPTO, independent of the renewal applications that are filed through WIPO. Therefore, in most cases a foreign owner will still have to retain US trademark counsel to file these affidavits for the owner, especially since the affidavits must be accompanied by specimens showing how a mark is actually used. The selection of such specimens is crucial, as the USPTO will reject inappropriate specimens which, if the proper steps are not taken in a timely manner, could lead to the cancellation of the registration.
Do I think that foreign trademark owners should shy away from extensions of protection to the US? No, but I do believe that the matter needs to be carefully considered on a case-by-case basis. There are obvious advantages to using the Madrid Protocol to obtain extensions of protection in the US and it would be unfair to dwell only on the negative. In a future posting, I will provide a list of positives that come with going the Madrid route to obtain a trademark registration in the United States.
Yes, I realize this is a trademark blog. However, as does every Blogger, I reserve the right to go off-topic once in a while, as I do here. Marc Randazza, whom I have the honor of calling a friend, talks about the 1st Amendment, the media, Anti-SLAPP suits and other topics in this recent video aired on the Reason TV YouTube channel. This is worth watching.