In order to prevail on a trademark infringement claim, one must prove two elements: (1) that one possesses a legally protectable trademark; and (2) the defendant’s use of the same or similar mark creates a likelihood of confusion as to source, affiliation, or sponsorship.
Read MoreA trademark is a word, phrase, and/or design that serves to identify the source of a product or service in the eyes of consumers. A trademark need not be registered with the U.S. Patent and Trademark Office (“USPTO”) in order to be protected, but with federal registration the owner of the mark has put others on notice that the trademark already is in use. Federal registration also provides the registrant with the exclusive right to use the mark nationwide on or in connection with the goods or services listed in the registration. In addition, a registrant has the ability to bring an action concerning the mark in federal court and can file the trademark registration with the U.S. Customs Service to prevent importation of infringing foreign goods.
Read MoreIn order to register a copyright for original content, you must complete three steps: (1) complete an application providing information such as the title, author, and date of creation; (2) pay the fee associated with registration (typically via credit/debit card or ACH transfer via Pay.gov); and (3) submit your work to the Copyright Office. You can complete these steps yourself through the registration portal of the United States Copyright Office at https://www.copyright.gov/registration/ or contact your intellectual property counsel for assistance in preparing and filing the application.
Read MoreA cease and desist letter is an informal means of enforcement used by the owner of certain intellectual property to notify an unrelated third-party that they have use of the same or similar IP that infringes upon the owner’s rights and allows that third party an opportunity to “cease and desist” all such infringement right away, in an effort to avoid more formal, and costly, enforcement tactics.
Read MoreThe first step in protecting valuable intellectual property rights is to ensure you do, in fact, own such rights. Since patent, copyright, trademark and trade secret rights arise differently, you should first ensure that your use is enforceable against what you have identified as an infringing use. The next step is to determine what options are available to you and which of those options are within your budget and appetite for conflict. Enforcing IP rights can take many forms, ranging from cease and desist letters, to UDRP proceedings or arbitration, proceedings with the Trademark Trial and Appeal Board, or federal lawsuits.
Read MoreFailing to register a trademark with the United States Patent and Trademark Office (USPTO) deprives the trademark owner of various rights and benefits not available at common law, including nationwide rather than local protection, diminished burden of proof for trademark infringement, public notice of the owner’s rights in the trademark, and an easier transition in seeking foreign registrations.
Read MoreLicensing Agreements, particularly in the context of intellectual property, are written, legal contracts between two parties wherein the owner of the IP at issue gives permission to another party to use the IP. The agreement, between the licensor (the IP owner) and the licensee (the permitted party) should set forth the specific terms of the agreement between the parties, including the specific IP at issue, whether the license is exclusive or non-exclusive, terms of use, term of the agreement, what rights are retained by the licensor, and other key terms.
Read MoreThe transfer or sell of IP rights generally occurs through a written assignment of ownership rights from the owner to another party. An assignment is a complete transfer of all ownership in and rights to the IP included in the assignment. A license, on the other hand, is a written agreement allowing a third party to use certain IP for a stated term and does not transfer ownership of the IP.
Read More“Work for hire” means that one party has expressly hired another to create original content that the parties intend will belong to the person doing the hiring. This type of agreement is valid only as to certain types of works, as specific in the Copyright Act.
Read MoreSection 107 of the Copyright Act “the fair use of a copyrighted work … for purposes such as criticism, comment, news reporting, teaching … scholarship, or research, is not an infringement of copyright.” 17 U.S.C. § 107. The question of fair use has been described as “the most troublesome in the whole law of copyright,” and while no definition of “fair use” has been coined that is workable in every case, the U.S. Supreme Court has noted that fair use is “traditionally defined” as “a privilege in others than the owner of the copyright to use the copyrighted material in a reasonable manner without his consent.” The analysis is a mixed question of both fact and law and requires a case-by-case analysis to determine whether the use at issue is “fair use.”
Read MoreThe protection of software most often involves copyrights, as the two go hand-in-hand. Since the greatest protections are afforded to federally registered copyrights, the most important steps in protecting your software are confirming ownership of the software and registering with the U.S. Copyright Office. Similarly, some software may be subject to patent protection, which requires federal registration with the United States Patent and Trademark Office. Once registered, protection of software is accomplished through standard means of IP enforcement – cease and desist letters, alternative dispute resolutions measures such as arbitration or mediation, and even federal court litigation. However, specific to software is the need to ensure that you are utilizing proper software development, licensing, and indemnity agreements as well.
Read MoreFor a patent to be issued, your idea must meet four conditions: (1) able to be used; (2) a clear description of how to make and use the invention; (3) new, or “novel”; and (4) “not obvious.”
Read MoreU.S.-based owners of various forms of intellectual property need to understand that U.S. laws typically do not protect against foreign infringement. The best means of protecting IP internationally is to seek formal registration in whatever countries your business operates.
Read MoreUtility patents protect the utility or function of an invention or improvement thereof, whereas design patents protect the design or ornamental appearance of an article of manufacture.
Read MoreA copyright protects the tangible expression of an idea, whereas a trademark protects a particular designation of source for a particular good or service.
Read MoreWhile both refer to specific trademark rights, the TM is used to identify trademark rights that are not federally registered with the United States Patent and Trademark Office (including pending applications), while the R mark identifies a mark that is obtained federal registration with the USPTO.
Read MorePatent troll litigation is where business acquire patents not through inventorship and without the intent to use these patents, and then bring lawsuits or demands against other companies to force settlements or obtain licensing fees.
Read MorePut simply, a trade secret is information which derives independent economic value from being not generally known or readily ascertainable through proper means. It could be anything from a customer list to the highly secret formula for Coca-Cola.
Read MoreUnlike other forms of intellectual property, like patents or copyrights, there is no formal registration process for creating a trade secret. Instead, the act of keeping the information confidential and taking reasonable steps to safeguard it creates the applicable rights.
Read MoreThe patent prosecution process generally involves a pre-grant stage, comprised of preparing and filing the patent application, arguing and negotiating with the USPTO, and the granting of the patent, and a post-grant stage wherein the rights afforded by the patent are maintained and enforced for the remainder of the patent period.
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