Business and Tax Lawyer Blog

A recent Florida Intellectual Property lawsuit provides clear warning to business owners – check trade names and logos out before sinking time and money into building a brand name for your business. The trademark infringement lawsuit was brought by a Florida business, The Wigglebutt Inn, against Indiana-based Wigglebutt Doghouse.

Prior to filing suit, Florida-based Wigglebutt Inn advised Wigglebutt Doghouse of the existence of its registered trademark – registered with the USPTO June 1, 2010 in connection with dog boarding and dog care. The Florida operation had begun operations in September 2009. The Cease and Desist letter provided the “Doghouse” 14 days in which to stop using “Wigglebutt” or other similar names. As the “Doghouse” failed to comply with The Wigglebutt Inn’s demand, the “Inn” filed a lawsuit against the “Doghouse” in U.S. District Court in Fort Myers, Florida, for violations of Federal trademark laws and Florida law.

The Wigglebutt Doghouse was incorporated in May of 2010, nine months after the Florida operation opened for business. The Doghouse filed legal papers to do business in the State of Indiana on September 29, 2010, three months after The Wigglebutt Inn secured its Federal Registration for the name. The “Doghouse” then spent over a year building their business under the name Wigglebutt Doghouse. They now face the necessity of defending their right to use that name – expending money and time in the effort. Further, if they are unsuccessful, they could be prevented from continued use of the name and, more importantly, could be required to turn over branded products, packaging and print materials to The Wigglebutt Inn for destruction and to turn over profits earned under the Wigglebutt name.

So what is the “moral” of this story? Before you launch your new business, service or product, make sure that the name has not been registered with the USPTO and is not already in use in commerce. Run a Google search; contact an intellectual property attorney for a check of USPTO registrations. Check for State registrations – both trademark and fictitious names. Check the corporate records in your state to see if the name is currently in use. Preliminary research and due diligence will save you time and money in the long run.

Continue reading "Trademarks and Trade names - Why Businesses Should Check Name Availability" »

When a business owner decides to register his trademark or service mark, she can do so either at the state or federal level. The primary difference is that federal registration through the United States Patent and Trademark Office provides protection at a national level, however a state registration will not protect against infringement in another state.

There are a number of benefits that come along with federal registration which make the process well worth it. Here are a few of them.

1) Public Notice: The primary benefit of trademark registration is that it creates public notice of the business owner’s claim of ownership. Once your mark is registered, the general public is deemed to have knowledge that the mark is owned by you.
2) Presumption of Ownership: Registration creates a legal presumption of your exclusive ownership of the mark and gives you the right to use the mark in connection with the goods or services specified in the registration.
3) Federal Registration Symbol: Once your mark is registered, you have the right to use the symbol ®. You are permitted to use the TM or SM designation to put the public on notice of a claim of ownership even if you have not yet filed an application, but you can only use ® after the USPTO has actually registered the mark.
4) Ability to Bring an Action in Court: Registering your mark gives you the ability to bring an action in federal court when your mark is infringed upon.
5) Protection Against Foreign Infringers: A U.S. registration serves as the basis to obtain trademark registration in foreign countries and allows you to record the registration with the U.S. Customs and Border Protection Service in order to provide some protection against imported infringing products.

To read more about the benefits of federal registration as well as the process in general, see Trademark FAQs on the USPTO website.

Continue reading "Top 5 Benefits of Federal Trademark Registration" »

Does it seem curious that one brand name can be used on multiple products and services all at the same time? The reason is that federal law allows business owners to claim intellectual property rights in one or more of 45 different trademark and service mark categories. For example, a recent Wall Street Journal article chronicled the legal issues that Twitter is facing with regard to trademarking the term “tweet” due to the fact that two other Internet companies had trademarked the term first. The problem here is that Twitter and the two rival companies are involved in the same field and so there is a high risk of confusion. The article points out other companies who have trademarked different variations of “tweet”, such as a line of dolls called tweets, a record and video production company, a whipped marshmallow maker, a seller of bird remediation and pest control systems, among others. The difference is that these products really do not relate to the tech world and so the risk of confusion is much lower.

A business owner or prospective business owner should familiarize themselves with the 34 different trademark and 11 different service mark categories and determine which of them relate to their goods or services in order to gauge the likelihood of consumer confusion, keeping in mind that goods or services could potentially fall into more than one category. New applications that are too similar to existing marks in a given category or industry may be denied by the trademark examiners and, even if approved, an existing mark owner could challenge the designation in court, leading to a costly legal battle. The bottom line is that business owners should pick categories that will clearly block product competition that could be confusing to consumers and the public in general.

Continue reading "The Importance of Categories in Trademark and Service Mark Protection" »

Twitter is a highly successful Internet company that became an overnight sensation due to the modern appeal of social networking as well as the help of several high-profile celebrities. Twitter is essentially an online messaging service that allows its users to post 140-character messages known as “tweets”. It is fair to say that most Americans are familiar with Twitter and probably associate the company with the term “tweet”. Sounds great for Twitter, right? Well, there’s just one small problem. Twitter does not own “tweet” because of two Internet companies who claimed variations of the term first. Twitter’s attempts to trademark the term have been suspended by the U.S. Patent and Trademark Office and Twitter’s lawyers have argued that “tweet” was already well-known as a Twitter term before the rival companies filed their applications.

After several months of litigation, the Wall Street Journal reports that one of the companies has agreed to transfer its registered trademark of “tweet” over to Twitter. The moral of this story is that business owners should be proactive in filing for their trademarks and servicemarks. If they are not, they may find themselves left with no recourse when their unprotected names and phrases have grown in value. If you wait until after the fact to file for trademark and servicemark protection, there will likely be additional litigation that is costly and does not guarantee a favorable result. Furthermore, settlement negotiation will be costly as well, necessitating attorney’s fees and payments to regain control of the mark. The bottom line is that business owners should take steps to protect their interests sooner rather than later.

Continue reading "Twitter Quibbles Over Control of the Term “Tweet”" »

In May, Sports Clips reached a billion dollars in haircuts. While only franchising for 16 years, Sports Clips is the number one hair care provider for men’s and boy’s haircuts. With over 780 stores in 38 states, Sports Clips continues to grow with 120 new stores projected to open this year. By focusing on a niche market, Sports Clips has been able to create and refine the haircut experience. In recent years, Sports Clips has ranked in the top 10 in Forbes’ Top 20 Franchises to Start and in the top 50 “fastest growing” franchises in Entrepreneur Magazine’s Franchise 500.

One unique business practice which has lead to Sports Clips' success is its use of non-exclusive licensing agreements. Through careful use and implementation of non-exclusive licensing deals, Sports Clips has partnered with organizations such as the NBA, MLB and NHL. Often times, these organizations are seen as having competing business interests and often employ the use of exclusive licensing arrangements. Non-exclusive license agreements typically have less restrictive terms binding one or both of the parties. However, in exchange, these agreements are usually much less profitable for one or both of the parties than an exclusive licensing deal.

To learn more about this article, visit Sport Clips Reaches "Billion Dollars" in Haircuts.

Continue reading "Sports Clips-A Growing Franchise" »

Major film studios and record labels have gone before Congress to request more protection against foreign websites that profit from counterfeit and bootlegged products. The Senate's Judiciary Committee responded by proposing a new bill, referred to as (S968). The proposed bill would force online advertisers, e-billing companies and search engines to stop supporting sites found to be "dedicated" to copyright or trademark infringement.

Because the internet is global, piracy-sites can operate without scrutiny from countries that either choose to turn a blind eye, or refuse to recognize U.S. Copyright and Trademark rights. Senate Bill 968 would allow federal agents to direct U.S. companies that direct traffic, process payments, and serve advertisements online to end their support. However, federal court must first determine if a website is dedicated to infringing activities. In addition, Copyright and other mark owners would be able to seek injunctive relief against those U.S. companies that do not comply.

Once a site is deemed "dedicated" to infringing, the enforcement measure would make companies that operate name servers to re-direct online users away from it. However, this measure will not stop people from going to the site, because they are accessible through numerical addresses and foreign domain servers.

The concept behind SB 968 has been used to crack down on online-gambling websites. Yet some industry insiders are concerned that the bill, if enacted, could create an undue restraint on commerce, as well as undermine measures to create a more reliable and secure domain-name system.

To read more on this article, visit Policing the Internet.

Continue reading "Hollywood and Record Industry Ask Congress for Help Policing Global Piracy" »

After years of litigation and multiple appeals, including a petition to the United States Supreme Court, the case against LFP Publishing Group (d/b/a Hustler magazine) is coming to a close.

The case was brought by Maureen Toffoloni on behalf of her daughter's estate. Ms. Toffoloni is the mother of Nancy Benoit, who was murdered in 2007 by her husband, professional wrestler Chris Benoit. In March of 2008, Hustler magazine published nude photos of Nancy Benoit that were made 20 years prior to her death. Nancy Benoit immediately requested that the photographer destroy the film and negatives so the images could never be published. However, the photographer kept a videotape of the images, which were later lifted from the video and released by Hustler.

Initially, a federal district court dismissed the right-of-publicity suit filed by Ms. Toffoloni, finding that the images related to a legitimate matter of public concern. This decision was reversed by the 11th U.S. Circuit Court of Appeals, explaining that the magazine's constitutional rights had to be balanced “with an eye toward that which is reasonable and that which resonates with our community morals.”

At issue was whether the right of privacy implicated in the 14th Amendment to the U.S. Constitution was trumped by the freedom of press provided for in the First Amendment.

Most states recognize the right to privacy against "the appropriation of another's name and likeness ... without consent and for the financial gain of the appropriator." The Supreme Court's affirmation of the 11th Circuit's decision granted Ms. Toffoloni with the legal authority (known as the right of publicity) to control such images "in order to maximize the economic benefit to be derived from her daughter's posthumous fame." The trial to determine the amount of damages involved is set to begin on June 13, 2011.

To read more regarding the history of this case, visit Mom's Privacy Suit Over Old Hustler Pix of Murdered Daughter Gets Green Light.

Continue reading "Trial for Damages in Privacy Suit Against Hustler Set to Begin Monday, June 13th " »

The ever popular iPhone has officially outranked Blackberry in the battle of the smartphones. However, Apple is still in 2nd place as smartphones utilizing Google's Android OS account for over 36 percent of the U.S. market share. In a twist of irony, Palm, the company responsible for launching the smartphone movement, has continued to lose users in recent years. In fact, Palm's current market share is last among all other smartphones.

To read more on this article, visit iPhone passes Blackberry among users.

Continue reading "iPhone Surpasses the Blackberry in the Battle for Users" »

On May 3, a mere day following Operation Neptune's Spear, The Walt Disney Co. filed three (3) Trademark applications with the United States Patent and Trademark Office for the rights to the name "SEAL Team 6". SEAL Team Six, formally referred to as "DEVGRU", is the Tier One counter-terrorism Special Mission Unit responsible for neutralizing Osama Bin Laden.
Although, the United States Navy no longer officially refers to the Unit as SEAL Team Six, it is unclear whether Disney will be granted the Trademark. In the past, other companies have been unsuccessful in registering a combat related theme. However, within its applications, Disney made it quite clear that, if successful, it intends to use "SEAL Team 6" for a range of products ranging from toys and video games to Christmas stockings.

To learn more about this article, visit Disney Applies for Seal Team 6 Trademark.

Continue reading "Can Disney Obtain Trademark Protection for "Seal Team Six"?" »

The infringement battle between the Recording Industry Association of America ("RIAA") and LimeWire has settled outside of court for approximately $105 million in damages. The action was initiated by the RIAA in response to LimeWire's person-to-person ("P2P") file sharing application.

The settlement amount is significantly lower than what analysts had previously estimated, with some approximating a value in excess of $150,000 per song. Since the parties settled without a trial, they avoided being held to a verdict. Therefore, the award of damages received by the RIAA will most likely be kept by the RIAA, and not be redistributed to the artists whose works are the basis of this infringement claim.

To learn more about this article, visit LimeWire, RIAA 'Settle' for Only $105M.

Continue reading "LimeWire Reaches Settlement with RIAA" »

In a move that reads like the script of a movie itself, Mike Tyson's tattoo artist is suing Warner Brother's Entertainment to halt the release of "The Hangover 2." The savvy artist responsible for the tribal design that now adorns Mr. Tyson's face retained the right to register the design at the time the work was performed. Therefore, legally, the artist has control as to whom he allows to recreate the image and is, of course, entitled to compensation for each recreation.

Apparently, the creative team behind the sequel to one of the most successful comedies of all time forgot to obtain permission to prominently display the very recognizable image on one of the movie's main characters. As a result, the artist is seeking injunctive relief hoping to prevent the movie's release. One obvious solution, and most likely the artist's true intent, is for the studio to pay the artist an enormous sum of money to make this problem go away in order to avoid delaying the film's release.

To learn more about this article, visit Tyson's Artist Sues to Stop 'Hangover 2'.

Continue reading "Could Alleged Copyright Infringement Hold Up the Release of a Summer Blockbuster?" »

In this final entry of our series dedicated to international protection and enforcement of intellectual property, we will discuss how one secures copyright protection on an international level. Keep in mind, most countries do not require copyright registration in order to enjoy protection. However, most countries do require registration (particularly the United States) if you wish to bring an action for infringement.

"International Copyrights" do not actually exist, but most countries offer protection to foreign works under certain conditions. Those conditions have been simplified as a result of several international copyright treaties and conventions. If the country in which recognition or enforcement is sought is a party to said convention or treaty, then the work may be protected through compliance with the terms of the convention/treaty.

The United States has copyright relationships with only the countries who are a party to these international copyright agreements. It is crucial that either the creator of the work or his/her attorney confirm whether a nation is a member to these treaties prior to publishing the work within that nation.

To read Parts 1 and 2 of this series, wherein we discuss Trademarks and Patents respectively, please click here.

Continue reading "Are There International Copyrights?" »

Part one of this series on international intellectual property registration focussed on Trademarks. Today, we will address Patent protection on a global level.

The World Intellectual Property Organization ("WIPO"), is an agency created by the United Nations in 1967. Its mission is to guarantee the protection of intellectual property rights worldwide. To facilitate this goal, one of the many programs the WIPO currently manages is known as the Patent Cooperation Treaty ("PCT"). The PCT is a mechanism for filing patents in multiple countries using only one set of documents. By filing one “international” patent application with the U.S. Patent and Trademark Office ("USPTO"), U.S. applicants can concurrently seek protection in over 125 countries.

To read more on international patent protection, visit the United States Patent and Trademark Office's website.

Continue reading "How do I Register a U.S. Patent Internationally?" »

This is the first in a series of blogs dedicated to explaining how one may protect their intellectual property rights on an international level. Presently, there are several international intellectual property agreements designed to streamline the process for an applicant to register their intellectual property in multiple jurisdictions.

Today, we will discuss how you can "globalize" the legal rights associated with the official registration of a Trademark issued by the United States Patent and Trademark Office ("USPTO').

In 2004, the World Intellectual Property Organization ("WIPO") implemented The Madrid Protocol (discussed in greater detail later in this series) to streamline the process for registering trademarks in multiple countries. It provides individuals and businesses a cost effective and "standardized" way to protect their marks in multiple countries through the filing of one application with a single office.

By filing one trademark registration application with the USPTO, domestic applicants may concurrently seek protection in over 65 countries.

To read more on The Madrid Protocol, visit the United States Patent and Trademark Office's website.

Continue reading "Can I Protect My Domestic Trademark Internationally?" »

YouTube has created a video explaining its thoughts on copyright infringement and piracy due to an increase in occurrences of infringement by its users. The cautionary video also includes the possible consequences arising from such violative acts. The video goes on to explain the various forms of copyright infringement, including common misconceptions regarding what most individuals do not view as illegal. The video also explains fair use of copyright content and how to use the content legally. YouTube has a three strikes rule. If an individual has three uncontested copyright infringement claims, the individual’s YouTube account will be banned for life. You can view the YouTube Video if you wish to see the YouTube Copyright School.

To read more on this article, visit YouTube Unveils Copyright School Program.

Continue reading "YouTube has Created a “Copyright School Program” Video" »

The future of Smartphones may be at risk due to the rise in sales of tablets, not laptops, as some analysts predict.

Analysts also state that laptop and netbook sales will be hampered for a short period, while consumers discover the capabilities of a tablet. Since most individuals use their smartphones for media and data instead of calling features, many consumers are expected to choose tablets due to the smartphone's storage capacity and prices. With smartphone prices ranging from $200 to $600, industry analysts suggest upgrading to a tablet that has a screen three times the size?

According to a 2008 Nielsen survey, consumers are texting more frequently than making voice calls, and their data usage has increased exponentially. There are many who view the smartphone as a smaller tablet, putting it in the same market, which could start to diminish smartphone sales.

To read more on this article, visit Size Matters: Tablets vs. Smartphones.

Continue reading "Smartphones vs. Tablets, Which Product Will Reign Supreme?" »

Energy Secretary Steven Chu has stated that his department will be making it easier and cheaper for entrepreneurs to license technologies developed at the agency’s 17 national laboratories. The incentive program is an effort to promote innovation and job growth, and patents will be available for a $1,000 fee from May to mid-December. Companies can apply for the patent using a simplified, standard agreement available online. The department is hoping to help businesses turn ideas into innovative products by removing the burdensome paperwork and offering patent licenses at a lower cost. Small businesses create two out of three jobs in the Unites States, and federal agencies are focusing more programs that will cater to small businesses and entrepreneurs.

To read more on this article, visit US will offer $1,000 patents to spur job growth.

Continue reading "U.S. to Offer Patent Licenses for $1,000 to Help Small Businesses" »

Wells Fargo acquired Wachovia back in 2008 during the peak of the financial meltdown. Since that time, consumers and analysts alike have wondered when Wachovia would actually transition and take on Wells Fargo's name.
All of Wachovia's signage and systems for North and Central Florida, as well as Greater Tampa, are set to change over to the Wells Fargo brand by the end of June. The rest of Florida is set to complete its conversion by the end of July.
Following the merger, Wells Fargo became one of the largest banks in the world, and the third largest in Florida. It also operates over 9,000 commercial branches and 12,000 ATM's nationwide.

Continue reading "Wachovia Set to Convert Name to Wells Fargo" »

Today, Warner Brothers Digital Distribution announced that Facebook users will soon be able to stream "The Dark Knight" through the studio's Facebook page. Further, the studio announced its intent to make many other movies available through Facebook streaming over the coming months.

Viewers (i.e., Facebook members) will be able to view WB titles for a cost of $3, which will only be available for 48 hours. The $3 cost is apparently equal to 30 Facebook credits, sales from which Facebook takes a 30% cut.

This move could potentially put Facebook in direct competition with companies such as Hulu and Netflix. Despite Facebook's massive user base, Netflix seems well positioned to face any challenges. Last January, Netflix reported 63% annual growth, and claims to have 6% of the U.S. population as subscribers.

Continue reading "Can Facebook Compete with Netflix and Hulu?" »

Local eatery, The Times Grill, has been acquired by another local business.
Recently, Times Grill owner, Kelly Harris, made the difficult decision to close all of its Jacksonville locations. However, there is an upside, as those locations are being re-branded as Original Bubba Burgers Grills.

Jacksonville-based Bubba Burgers is known for producing frozen beef patties, typically sold in retail grocery stores. With its acquisition of the Times Grill, Bubba plans to re-open the restaurants under a new casual dining-fast food business model.

Under this new business model, there will be no waiters or waitresses. Instead, diners will select and customize their own hamburgers. If successful, Bubba Burgers hopes to expand the concept nationally, including airports, stadiums and college campuses.

To read more on this article, visit Times Grill to Re-Open.

Continue reading "Jacksonville's Times Grill Re-Opens with a New Name and New Business Model" »

A trademark is any name, word, symbol or device used by a manufacturer or merchant to identify his or her product or goods in order to distinguish them from those goods manufactured or sold by others.

The basic tenant upon which trademark law is founded is the business tort, unfair competition, under which a seller using a mark similar to one already in use could be liable for the buyer's likely confusion between two products or services. The law of trademark addresses the narrower issue of whether the confusion arises from the marks used to identify the goods.

In 1946 Congress passed the Lanham Act, which provides for federal registration of trademarks and their protection against infringement (enforced by federal courts). A trademark arises from regular usage of the mark, and only lasts as long as the usage continues.

Continue reading "Trademarks, What Not to Do: Common Mistakes and Misconceptions (Vol. 3 of 5)" »

A copyright , as defined by Black's Law Dictionary, is the exclusive set of rights which protect orifinal works of art and authorship, giving the creator the exclusive right to publish their works or the right to determine whom else may publish.

Under the current system, copyright protection is not for an indefinite period of time. That is why it is always important to consult an attorney when you have an idea or work you wish to protect.

Copyrights under the 1976 Act protect "original works of authorship fixed in any tangible medium of expression." Interestingly, the level of "originality" required is not susceptible to a precise definition and is the subject of a considerable body of case law.

Rights enumerated within a copyright exist automatically, and do not require registration in order for the author to enjoy protection. However, registration is required in order to pursue copyright protection in a court of law.

Continue reading "Copyrights, What Not to Do: Common Mistakes and Misconceptions (Vol. 2 of 5)" »

Intellectual Property, commonly referred to as IP Law, is the law that regulates the rights that exist in creative works and inventions. The four most commonly known rights are trademarks, patents, copyrights and service marks.

In this five part series, we will discuss the differences between these four common types of intellectual property, and the common pitfalls/misconceptions on encounters when considering registration of his or her own IP.

Finally, and possible most importantly, this blog series will convey how crucial it is to consult an attorney who specializes in intellectual property for advice and guidance.

Continue reading "Intellectual Property, What Not to Do: Common Mistakes and Misconceptions (Vol. 1 of 5)" »

As a creator of original content, especially on the internet, you must be constantly vigilant and take quick, affirmative steps to stop those who may try and merely reproduce it. But as the internet has grown, and become an excellent source of advertising, “authors” and various websites have begun the practice of copying works and using citations or link-backs in an effort to minimize the appearance of plagiarism.

An interesting distinction between copyright infringement and plagiarism is that plagiarism occurs when one tries passing off the work of another is his or her own. Copyright infringement occurs by merely copying the work without the regard or appreciation of whether it is wrong.

Therefore, when plagiarized articles or works appear on websites, or hosting forums, the question of liability comes into play. The Digital Copyright Millennium Act was drafted in an effort to provide a degree of immunity to ISP’s, so long as they act quickly to remove or disable the infringing material. However, in order to take advantage of the DCMA’s protection, an ISP must have no actual knowledge of a potential infringement, but takes immediate action once it becomes aware of a possible violation.

Continue reading "How Can I Stop Online Infringement?" »

Today, in the United States, it can be difficult to obtain a patent. Patents grant the holder the exclusive right to prevent others from making, using, or selling the patented idea without the patent holder’s permission. So, it is important for the patent holder to be vigilant in order to stay aware of potential infringers.

The tests to determine infringement vary from country to country, and differ based on whether it’s a claim of direct or indirect infringement. Currently, the Untied States recognizes that someone is guilty of directly infringing a patent by making, using, selling, or importing in the US an patented invention without authority, during the term of that patent. A party may still be guilty of infringement without any actual knowledge of a preexisting patent. This in known as indirect infringement and a claim can arise when the violator has an idea that a patent may exist, but neglects to perform adequate due-diligence.

Remedies for infringement may not only include actual damages, but also punitive damages, as well as equitable relief.

Continue reading "Are You the Victim of Patent Infringement?" »

Over 40k students at the University of Hawaii had personal information including social security numbers and grades posted to an unsecure server. The information had been posted inadvertently by a faculty member at UH.

When the error was discovered, the University contacted each student notifying him or her of the breach. The University has repeatedly apologized for this happening. The FBI and the Honolulu police department are investigating how the breach occurred. UH removed the posted files and disconnected the server from the network. Supposedly, before the university removed the files, anyone with an Internet connection could perform a standard Google search, and the students' information would appear.

UH is not unfamiliar with this type of problem. Reports indicate that this is the third major breach in the university system since last year. Former affected students are advised to get credit reports and contact call centers setup by the university and FBI if they feel their personal information has been compromised. It is unknown at this time whether privacy lawsuits will be filed against the university, as, depending on the damages involved and any culpable negligence on the university's part, a cause of action may be available.

To learn more about the article, visit APNewsBreak: University posts info of 40K students.

Continue reading "40k students at the University of Hawaii have their personal information posted " »

A Federal Court recently sentenced a former DuPont employee to serve 18 months in prison and pay nearly $50,000.00 in fines and restitution for stealing trade secrets. Michael Mitchell worked at DuPont in the sales and marketing department. His primary duty was to market a new material that is several times stronger than Kevlar. Mitchell left the DuPont in 2006 but not without taking several confidential documents containing proprietary information about the new material. He apparently sold and traded the secret documents to his subsequent employers, who were also in the business of distributed Kevlar-like material.

It is unclear exactly how Mitchell was caught, but investigators located the secret documents on Mitchell's personal computer.  It was also revealed that several executives from one of DuPont's competitors once flew to Richmond, VA, where DuPont is headquartered and where Mitchell worked, for the sole reason of meeting with him and obtaining confidential information about DuPont's products.

A trade secret is a process, formula, or pattern that the public is not aware of and cannot reasonably find out.  The information must also confer an economic benefit on the company.  In order to assert rights to a trade secret, the company must take reasonable steps to maintain the secrecy of the information.  As seen in the DuPont situation, it is plain that companies and the authorities may go to great lengths to prevent suspected trade secret theft.

Continue reading "Stiff Penalties For Trade Secret Theft" »

What is product branding all about? We all know about trademarks and service marks - - a company develops a word or phrase or design logo that describes their product, they register a trademark with the USPTO and proceed to sell their product under that Mark. That is the basis on which Branding begins. Companies then spend a great deal of time and money “linking” those Marks to some emotion or desire that will motivate the consumer to buy the product or service. They promote the consumer’s belief in their products’ ability to make the purchaser more attractive, more successful, smarter, cooler, more date-worthy, faster, richer and generally more “something.” Branding can be accomplished through television advertising, product appearances in movies, celebrity endorsement, public relations events, print advertising, radio advertising, through the print media and by word of mouth. Most of these branding vehicles are controlled and generated by the owner of the Mark. Successful businesses, both large and small, undertake some level of branding.

Unfortunately, in 2010, some of the best run branding “machines” fell afoul of the one thing they could not control - - the news media and viral internet rants due to SEC investigations, massive product recalls, oil spills and other matters. See The 10 Biggest Brand Disasters of 2010 for more information. The impacted business will likely recover financially from these problems, but it will be a long time before the public’s memory starts to fade.

Continue reading "Branding Takes a Hit in 2010" »

The Director's Guild of America has teamed up with other entertainment associations and are looking to the federal government for continued support in controlling Internet piracy. The Department of Homeland Security's U.S. Immigration and Customs Enforcement (ICE) recently launched "Operation in our Sites." in support of these efforts.

In fact, the operation found early action and has seized at least nine domain names of nine different websites that hosted pirated material. Assets were seized from various banks and other third party intermediaries such as PayPal in an effort to discourage contributing to online piracy.

Online advertising companies that facilitate or contribute to pirating companies will also be regulated closely and face heavy penalties if they are caught assisting. The operation's efforts will not be restricted to just domestic violators but international entities who infringe as well. For further information check out the article Fight Against Internet Theft Expands.

Continue reading "The Director's Guild of America Looks to the Federal Government for Help Regualting Intellectual Property Rights" »

In 2009, a Korean Motel called "Hilton Motel" had a suit filed against it in Seoul District Court by the international Hilton hotel chain (HLT International). HLT demanded that the owner of the motel, identified only as Mr. Yoon, cease using their trade name and that he pay HLT an indemnity of $25,541.

Hilton had registered both "Hilton" and its Korean equivalent as trademarks, which gave them exclusive rights to the name. HLT also announced that there are "numerous" lodging establishments in Korea that use the Hilton name illegally, and HLT was planning to bring suit against each one individually. At least one Korean hotel owner changed the name of his establishment to avoid a lawsuit. You can read more about this case at Hotel giant Hilton files lawsuit over naming rights.

Continue reading "Korean "Hilton Motel" sued by Hilton for Trademark Infringement" »

It was a great news story - In late 2009, a group calling themselves the "Yes Men" played a joke involving the US Chamber of Commerce. They put up a phony site along with a phony press release, supposedly quoting the chamber's President, Thomas Donahue, in a speech on global warming. Several national news outlets, including CNBC and Fox News, picked up the story and reported on it as real, even interrupting broadcasting to report on the "breaking" story. The US Chamber of Commerce was not amused by the joke.

The Chamber issued a DMCA takedown notice to the Yes Men's hosting provider, saying that the website clearly infringes on their copyright by directly copying design aspects of their official government site. The Yes Men countered by saying that if the ISP takes down the site, the Chamber will be liable for misrepresentation of infringement. They cited a US Supreme Court opinion, which stated that "parodies must often use substantial portions of an original work to make their point." But legal precedent also implies that parodies can be considered infringing if they are too close to the mark.

The "real" Chamber of Commerce, recognizing the value of its name and reputation, aggressively pursued its legal rights in court, U.S. Chamber Files Civil Complaint to Protect Trademark and Intellectual Property from Unlawful Use, and created a web page, U.S. Chamber of Commerce "The Facts," specifically responding to "false accusations and misstatements" of their policy. This dual approach addressed not only the Chamber's legal defense of its intellectual property rights, but also attempted to minimize the damage to their public image.

Protect your intellectual property - your trade name, trademark and service mark. Contact Jacksonville, Florida business attorneys Wood, Atter & Wolf, P.A. for legal counsel.

Find out more about this story at Yes, but is it funny? US Chamber issues takedown notice for Yes Men parody.

Many companies reach customers by paying for placement of selected words or phrases (key words) at the top of Internet search engine results. Companies generally bid on the selected search terms, agreeing to pay a certain amount to the search engine each time someone clicks on their ad. This is known as "pay per click."

Currently, there are no restrictions on which keywords can be used. For example, any software company can bid to have their ads appear anytime someone searches for Microsoft, by bidding on the term "Microsoft" – even though they clearly do not have the trademark for that name. This may be changing, however, as one search engine giant has already lost a related trademark infringement case tried under European law. The European decision is under appeal, so the decision is not yet finalized. Even when that decision against the search engine company is finally resolved, the issue of a business' claim against the competitor who secured the "pay per click" remains open in the U.S.

If you believe your trade or product name has been infringed, please contact Jacksonville, Florida trademark attorneys Wood, Atter & Wolf, P.A. for legal counsel.

Find out more about this story at Are Competitors Hijacking Your Trademarks in AdWords?

A Federal Judge in the US District Court in Houston, Texas has ruled that the signage used by Trend Setter Realty infringes on a RE/MAX trademark design under both Texas and federal law. The court reaffirmed RE/MAX's red-over-white-over-blue sign design as a protected trademark.

According to RE/MAX Senior Vice President and Chief Legal Officer, Geoff Lewis, RE/MAX attempted to convince Trend Setter to change its signs several times before taking the matter to trial. An important aspect of the RE/MAX argument were the results of a consumer study they conducted with the two signs. Over 25% of those surveyed believed that Trend Setter Realty was affiliated with RE/MAX because of the similarity of the design.

Trademark infringement claims, especially those dealing with something as subjective as design, can be difficult to prove. If you have any questions about trademark issues, please contact a trademark attorney - contact Wood, Atter & Wolf, P.A. for legal counsel.

Find out more about this story at RE/MAX Wins Major Trademark Victory.

Most business owners already know that protecting their trade names, products and ideas with patents and trademarks provides protection from unfair competition. A recent study shows that they can also lead to higher profits for the trademark and patent holders.

Patents and trademarks allow companies to confidently outsource production for cost savings, without fear of losing their intellectual property to an unscrupulous production partner. They also allow businesses to sell their products in wider domestic or international markets for a higher price, compared to other products without the same distinction. Having a trademark or patent can also help differentiate a product from others on the market to attract more buyers.

Licensing allows business owners to expand their operations by selling permission to use the company's trademarked or patented property to other companies; patents and trademarks provide the foundation for successful licensing agreements. Trademark and patent registration is a complex process that requires the assistance of an experienced attorney. If you have a trademark or patent idea you would like to register, please contact Wood, Atter & Wolf, P.A. for legal counsel.

Find out more about how patents and trademarks can help you earn more money at Better profits tied to getting patents and trademarks.

New York City announced in October 2009 that it would be taking steps to assert its legal right to the name "Tavern on the Green." The name belongs to a world-famous restaurant, situated in New York City's Central Park and was reportedly appraised at $19 million. The license to run the restaurant is granted by the City of New York.

After the restaurant's concessionaire, the LeRoy family, declared bankruptcy earlier this year, the city went about looking for a new restaurateur to take over the license. At the time, the request for proposal stated there was no authority to pass along the name Tavern on the Green" along with the license. The city then decided to challenge the LeRoy family's claim to the trademark in bankruptcy court.

The restaurant was originally named by Robert Moses, the parks commissioner, in 1934. Warner LeRoy trademarked the name in 1973, without challenge by the city. The LeRoys claim that they have proof of the legality of the original trademark, as well as proof that they have spent money to defend the trademark against other restaurants.

In response, the city decided to register the name "Tavern in the Park" as a backup name for the famous restaurant. However, in December, an examining attorney for the Patent and Trademark office issued an opinion that the name was essentially too generic to be considered a trademark. Owners of the "Tavern on the Green" trademark also charged that the proposed name was confusingly similar to their mark. This dispute highlights the value of a good trademark, as a business asset in selling a business and the need to register and maintain that trademark by defending it from use by other businesses.

Find out more about this story at A $19 Million Question.

Continue reading "New York, NY - Questions about who owns the $19 million name "Tavern on the Green"" »

Joe Frazier, the former heavyweight boxing champion, tried unsuccessfully to sue the Oneida Indian tribe in Federal Court for using his picture without permission. The picture was used to promote a boxing match between Frazier's daughter and Muhammad Ali's daughter at the Oneida-owned Turning Stone Casino. The former heavyweight champion objected to the use of his picture in a way that promoted commercial gambling. The 2nd US Court of Appeals in Manhattan ruled that it had no jurisdiction in the case because of the tribe's sovereign status. To pursue the matter further, Frazier will have to sue the casino owners in an Oneida run court.

Tribal sovereignty is a complex legal issue. While congress recognizes that tribes have an inherent right to govern themselves, congress can limit that sovereignty. For example, tribal jurisdiction over their own residents had been well-established, but jurisdiction in matters between tribal and non-tribal persons is less clear cut. If your business is being affected by a legal matter, please contact Wood, Atter & Wolf, P.A. for legal counsel.

You can find out more information about this case at: Court in NY: Joe Frazier can't sue tribe here.

IBM's mainframe computers were introduced in the 1960's and are now used to process sensitive financial, government and health care data. IBM's rivals – mostly smaller companies trying to run IBM software on cheaper hardware – have accused Big Blue of illegally freezing them out of the mainframe market by making their mainframe operating software inoperable with non-IBM mainframes. The rivals, represented by the The Computer and Communications Industry Association, allege that IBM is deliberately locking out competition in violation of US antitrust laws. IBM has stated that they believe they are "fully entitled to enforce our intellectual property rights and protect the investments that we have made in our technologies."

United States antitrust law prohibits unfair business practices, including anti-competitive behavior. Antitrust laws make certain practices illegal that are deemed to harm either other businesses and / or consumers. If you believe that your business has been a victim of a monopoly illegally protecting its dominant market position, contact Wood, Atter & Wolf, P.A. for legal counsel.

You can read more about the case by visiting Justice Dept probing IBM's computer market conduct.

A rule has been issued that rescinds regulations that limited the number of continuing patent applications and number of claims that could be included within a patent application.

Previously, USPTO rules had allowed applicants to file unlimited continuing applications, requests for continued examination, and claims. New regulations, enacted under the Bush administration in August of 2007 were considered by the biotech industry to unfairly limit their ability to protect their intellectual property. Biotech firms rely on continuing patent applications more than other industries.

The regulations in question never actually came into effect, as an inventor named Triantafyllos Tafas sued the USPTO for overstepping its authority almost immediately after the regulations were proposed. GlaxoSmithKline also filed a complaint against the USPTO. Many other organizations, including BIO, the Pharmaceutical and Research Manufacturers of America, and the American Intellectual Property Law Association filed amicus briefs in support of the complaint filed by GlaxoSmithKline. The case was still being litigated when the newly-appointed Director David Kappos decided to withdraw the regulations.

In deciding to rescind the rules, the USPTO has taken a step toward allowing biotech firms the patent protection they need to promote research and innovation.

Find out more about this story at USPTO Rescinds Controversial Patent Rule Changes Proposed by Prior Administration.

Continue reading "US Patent and Trademark Office Rescinds Controversial Biotech Intellectual Property Regulations" »

The American Civil Liberties Union (ACLU) has filed suit against three parties to a patent that covers genetic testing for breast cancer. The patent is held by the University of Utah, which licenses it to Myriad Genetics. They are both named in the suit. The third party named in the suit is the US Patent and Trademark Office (USPTO) itself, for issuing the patent in the first place. All three defendants filed motions to have the case thrown out. New York District Court Judge, Robert Sweet, has ruled that the case may proceed to trial.

The background of the case surrounds the discovery of mutations of the BRCA1 and BRCA2 genes, which were identified by researchers at the University of Utah as markers of high risk for breast and ovarian cancer. The University patented this information and licensed it to Myriad Genetics, which has attempted to stop academic researchers from sharing research results gained through use of this information.

Patent suits usually challenge on the grounds that a patent was awarded despite the fact that the discovery did not meet patent requirements of being new and non-obvious. The suit by the ACLU is unusual, in that it challenges the whole notion of awarding patents for genes as unconstitutional. The ACLU asserts that patents should not be allowed to grant ownership rights over "products of nature, laws of nature, natural phenomenon, basic human knowledge and thought." They also claim that the potential of the patents to stifle further research is unconstitutional as well; section 8, clause 8 of the constitution directs congress to "promote the Progress of Science and the useful Arts."

Now that the motions for dismissal have been denied, the defendants will have to submit arguments against a summary judgment in the plaintiff's favor. The outcome of this dispute will have long-lasting implications for gene-based health care and for the future course of biomedical research. Find out more about this case and its implications for biomedical research, by visiting Judge refuses to block lawsuit over patenting genetic tests.

If you have a business legal issue, please contact Wood, Atter & Wolf, P.A. for legal counsel.

The US Department of Justice has announced the formation of a task force that will focus on fighting US and international crimes committed in relation to US intellectual property. The task force will work closely with state, local and international law enforcement agencies. It will also closely scrutinize current intellectual property enforcement activities as well as look at the the links between international intellectual property crime and organized crime.

The recently created Office of the Intellectual Property Enforcement Coordinator, which reports to the President of the United States, will look to the task force to offer recommendations on fulfilling its mission of creating a strategic plan for handling the evolving landscape of intellectual property protection.

Intellectual property crimes include the creation and selling of pirated and counterfeited digital media, luxury apparel, auto and airplane parts and even medication and infant formula; the market for these good is said to exceed $200 billion in the US alone and poses a significant public safety risk.

In the past, the large number of agencies involved in monitoring and enforcing intellectual property laws have made decisive action difficult. It is hoped that this new task force will help streamline and concentrate these efforts. View the full article about the new task force and its responsibilities by visiting Can US get tough on intellectual property crime?

If you have a dispute with respect to intellectual property, please contact Wood, Atter & Wolf, P.A. for patent, trademark and copyright legal counsel.

Native American activists have long tried to contest the federal trademark status awarded to the Washington Redskins NFL football team. The history of the case is this: in 1999 the Trademark Trial and Appeal Board ruled that the name “Redskins” which is considered a derogatory term for Native Americans, was too offensive to trademark. Subsequent lower court and federal court rulings overturned that decision, granting the trademark. The Supreme Court decision not to hear the case effectively upholds the decision of the federal court allowing the trademark.

The law governing trademarks, known as the Lanham Act, does not allow trademarks that “may disparage … persons, living or dead … or bring them into contempt, or disrepute” to be registered. The decisions in this case, however, were based on the fact that the plaintiffs did not file their suit within the time allowed. The new case would have asked the Supreme Court to allow disparaging trademarks to be revoked without a time limit.

The Washington Redskins football team has always held that the term is not meant as an offense. However, the National Congress of American Indians (NCAI) has described the name as “patently offensive, disparaging, and demeaning and perpetrates a centuries-old stereotype,” adding that the term comes from a time when Native American body parts, especially scalps, were bought and sold as novelty items by European settlers.

Several sports teams across the US have dropped names or mascots that might be considered derogatory by Native Americans. Florida State University, along with several other universities and a few professional teams like the Atlanta Braves and Cleveland Indian baseball teams, have refused to change their team names to drop references to Native Americans. You can read more about this case at Supreme Court Fumbles Native American Mascot Challenge.

If you have a question about a trademark issue for your business, please contact Wood, Atter & Wolf, P.A. for legal counsel.

The US Patent and Trademark Office recently awarded Man & Machine with rights to the name “Mighty Mouse” to refer to the company’s “cursor control devices.”

Man & Machine won the rights despite the fact that CBS had actually filed for the trademark six months earlier. During this same time period, Apple was also using the name for its own computer mice. In a bold move, Man & Machine actually sued Apple and CBS for trademark infringement the same day that they filed the application with the US Patent and Trademark Office. CBS and Man & Machine settled the dispute out of court. As part of the settlement, CBS abandoned its registration, allowing the Man & Machine registration to be approved without further complications.

This story shows how important it is to protect your company’s trade names, and to do so as soon as soon as possible in the development process. Changing the name of a product after you have already spent considerable time and money on developing and marketing it is an unnecessary setback that can be avoided with a proactive approach to registering trademarks.

If you have a business legal matter, please contact Wood, Atter & Wolf, P.A. for expert legal counsel.

Find out more about this story at Mighty Mouse trademark awarded to Man & Machine, Mister Trouble can stop hanging around now.

United States Patent and Trademark Office (USPTO) director, David Kappos, has announced that his organization will be rolling out a program designed specifically to aid small and medium businesses in obtaining patents more quickly. He attributed the decision to his belief that the USPTO needs to maintain a strong relationship with small innovators. Specifically, the USPTO has designed a program that will fast-track the patent process for independent inventors.

The program will only be offered to small and medium sized businesses, and will have the added effect of easing the backlog of patent applications at the USPTO. Under the program, companies can take advantage of the new, accelerated status only by abandoning currently unexamined applications that they have already filed. The USPTO believes this will help small and medium businesses self-select which patent application are the most important to them.

Kappos stated that the USPTO would work simultaneously to streamline their approval processes to further relieve the backlog. Kappos also said that he is eager to hear opinions from independent investors on how to make the patent system work better for them. He will be working in tandem with the US Congress to institute patent reform.

A level playing field for small and medium businesses when it comes to patents will provide an incentive that promotes innovation. You can read more about the patent reforms and how they will impact small and medium businesses at USPTO in small business patent pledge.

If you have an idea for a patent, please contact Wood, Atter & Wolf, P.A. for legal counsel.

Coach, a luxury brand handbag maker, has sued Target Corp., America’s number two retailer, for selling a knockoff purse that appeared to be an exact copy of a Coach handbag design. The bag in question displayed the signature “C” logo and a copied version of Coach’s distinct tag. Target claims to believe that the handbag was a genuine Coach product. Coach is suing Target for trademark infringement.

Trademark infringement is the use of another party’s trademark without authorization or license. Infringement can include use of a mark that is either identical or confusingly similar to an existing trademark. In a case where the trademark is not copied exactly, the court will determine if there is a likelihood of confusion among consumers, leading them to believe that the item was produced by the rightful trademark holder.

If you believe that your trademark may have been infringed, please contact Wood, Atter & Wolf, P.A. for legal counsel.

Find out more about this story at Coach sues Target for $1M.

Sun-Maid is updating their Sun-Maid girl's new look, and it is sparking controversy. The iconic symbol has been transformed from a girl in a loose-fitting smock to a modern young woman in tight-fitting clothes. The new symbol has been described by some as "Barbie Doll in Amish attire." The update follows on the heels of other well-known symbol modernization of such iconic figures as Betty Crocker, Aunt Jemima and Mrs. Butterworth.

The original drawing of the Sun-Maid girl was made in 1915, and was inspired by Lorrraine Collett Peterson, a young California girl who posed for the watercolor that is the basis of the symbol. Lorraine's look has been updated slightly over the years, but the basis of the image has always been the original watercolor – until now. The new computer animated Sun-Maid girl is a real departure from the original. Comments from conservatives to feminists are less than positive, and mostly focus on the woman's adult shape and snug top.

According to a company spokesman, the redesign was done to bring the company's image into the twenty first century as well as to help educate modern consumers about healthy food choices. It is rumored that the Sun-Maid girl will be featured in upcoming advertising doing the things a modern woman would do, such as going to the gym and shopping. See the old and new logos and find out more about the new Sun-Maid girl at 'Sun-Maid girl' makeover sparks controversy.

Companies spend a lot of money to update logos in order to freshen up their brand image and appeal to modern customers. But they do need to be careful; the image they have worked so hard to establish over the years can be damaged by a makeover that rubs consumers the wrong way. If you have a business trademark issue, please contact Wood, Atter & Wolf, P.A. for legal counsel.

Small companies that are trying to attract investors have historically relied on their recorded patents to protect their inventions while disclosing information. But according to the US Patent and trademark Office, it takes an average of thirty four months – almost three years – to get a patent approved. There were more than 1.2 million patents pending at the end of the 2009 fiscal year.

The patent delay causes a big dilemma for inventors with highly marketable ideas. A patent gives extensive rights to manufacture, use or sell an invention for a certain number of years. If an entrepreneur waits for a patent, they may run out of money or risk a bigger company stealing their thunder. But if they release their product without patent protection, they risk someone else stealing their ideas and competing with them in the market.

A patent not only provides inventors with protection, it also gives them more credibility with potential investors. The significant delay in getting a patent could be slowing economic recovery, as small businesses and inventors wait for patent approval before launching products.

Read more about how patents affect innovation and the economy at Patent delays slow company.

If you have a business legal matter, please contact Wood, Atter & Wolf, P.A. for legal counsel.

In Mississippi, the same computer software that has been used to hunt down child predators on the internet is now about to be used to target those who illegally download copyrighted content like music and movies from the internet. Mississippi Attorney General Jim Hood has stated that he feels the state needs to get ahead of counterfeiters and pirates if they are going to be able to make a difference in this growing crime trend.

The office currently uses software called "Operation Fairplay" to track downloaded child pornography and keep an eye on child predators. This spring they expect to begin using a modified version of the software that will target illegal downloads of music, movies, software, and other copyrighted electronic information. Hood warns Mississippi resident that anyone caught downloading more than $100 worth of copyrighted materials can be prosecuted for a felony. He asks parents to take a part in making sure their kids are aware of the new crackdown.

Hood also announce that Mississippi will be using the software as part of the nation's first statewide task force aimed at stopping intellectual property theft. The task force will be known as" "Operation Knock Off the Knock-Offs.'' Hood hopes it will serve as a model for other states. It is believed that counterfeiting and pirating costs the US economy $250 billion annually. Read more about the Mississippi anti-pirating task force at Mississippi Attorney General to Target Intellectual Property Theft.

If you have a copyright or intellectual property matter, please contact Wood, Atter & Wolf, P.A. for legal counsel.

The latest ruling in an ongoing copyright dispute between MGA Entertainment and Mattell ensures that the popular Bratz dolls will remain on store shelves come January. A court had recently ruled that the 2010 version of Bratz dolls would be made by Mattell, not MGA. MGA was ordered to stop making the dolls and to turn over ownership of the dolls to Mattell. But a US court of appeals has suspended the order while considering its verdict in the case.

The dispute started when Mattell charged that the Bratz designer, Carter Bryant, was working at Mattell when he designed the Bratz. That would possibly give Mattell rights to the design, depending on their employment contract. A US court ruled last year that MGA had breached copyright laws by selling the dolls. MGA was subsequently ordered to stop selling the dolls, but in the latest decision the court called the earlier ruling "draconian;" MGA has stated that they would go out of business if the right to produce Bratz were taken away.

The court ordered Mattell and MGA to attempt to come to an agreement on their own. You can find out more about what will become of the Bratz doll line at Bratz dolls to remain on shelves in Mattel-MGA battle.

If you have questions about employment contracts, work for hire, or copyright infringement, please contact Wood, Atter & Wolf, P.A. for legal counsel.

When a company wants to introduce a new product, they need to be careful that they are not infringing on someone else's existing patent or trademark. The following are four examples of out of the ordinary patents and trademarks that may trip up a new product introduction.

Apple Computers vs. McIntosh

When Apple started developing the Macintosh, they deliberately spelled the name wrong in order to sidestep any trademark infringement issues with McIntosh, a high-end audio equipment manufacturer. McIntosh objected, and Apple ended up paying McIntosh an undisclosed licensing fee to be able to use the name in perpetuity.

Amazon one-click

Amazon patented its one-click web checkout system in 1999. Since then it has licensed use of the technology to other companies – but not to rival Barnes and Noble, which they sued for using a similar feature on their website. Long held up as an example of a patent that should never have been awarded, much of the patent was turned over in 2007, but Amazon still protects what is left of it.

Color trademarks

If you want to make pink insulation, you may get a cease and desist letter from Owens Corning. The same holds true if you want to start a wireless phone company; it would be best to stay away from the T-mobile signature magenta. Yes, it is possible to trademark a color as it relates to a specific product or service.

Verizon Droid

When Verizon wanted to name its new phone Droid, they had to ask permission from Lucasfilm, which patented the term in 1977 – the year Star Wars came out. Verizon currently uses the name under license.

You can read about several more surprising patents at They Own WHAT? Nine Tech Patent and Trademark Oddities.

If you have an original product that you would like to patent, or if you need to make sure you are not infringing on someone else's patent or trademark, please contact Wood, Atter & Wolf, P.A. for legal counsel.

Bernie Karl, the proprietor of the Chena Hot Springs Resort outside Fairbanks, Alaska, has built a portable geothermal generator that he says can provide enough power for 250 houses. The self-proclaimed "imagineer's" machine uses 165°F water to produce large quantities of electricity.

Mr. Karl collects water from underground hot springs lying beneath his resort and pipes it into his device. The hot water then boils refrigerant contained inside casing surrounding the pipes. Next, the boiling refrigerant causes a connected turbine to spin, thereby generating electricity.

According to a 2007 Massachusetts Institute of Technology report, tapping into 2% of the energy contained inside the Earth as heat could yield 2,000 times more energy than is used globally! I'm all for new, unorthodox technology that can give us energy with minimal damage to the environment. How can one not be a fan of green innovation?

In a move to "incentivize innovation," the Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office (USPTO) rescinded former patent regulations that some said imposed undue restrictions on patent applicants. The old rules were enacted in August 2007 by the previous administration and were "highly unpopular from the outset."

The rules limited patent applicants in two ways. One set of regulations impeded the process of getting extra continuation applications. Continuation applications allow an inventor to disclose additional claims while maintaining the priority date of the original patent. Applicants were allowed two continuations as a matter of right. The USPTO granted additional requests for continued examination however only upon a showing of good cause.

Another regulation limited patent applications in substance. The so-called "Claims Rule" permitted only five independent claims per application. The rule further limited the total amount of claims per application to twenty-five. Anyone exceeding the guidelines was required to submit extra information to help patent examiners process the applications. These rules were put in place to expedite the patent process, however critics said they merely weakened it.

If you are considering patenting your invention, contact a competent patent attorney to arrange a consultation.

Bloggers beware! Recently, the Recording Industry Association of America (RIAA) issued Google a take down notice for hosting websites that were either streaming or distributing music without authorization. Most, if not all, of the websites included in the notice have blog addresses and have either been removed from the internet or have had the music download feature disabled.

Have you noticed your protected work being reproduced on the internet without your permission? When the owner of copyrighted material, or as in this case the owner's representative, seeks to stop online infringement, a first step is to issue a take down notice under the Digital Millennium Copyright Act (DMCA). To be valid, the notice must contain several elements. For example, a claimant shall identify both the copyrighted work that has been infringed and the infringing material. Also, the claimant must include a statement that the owner has not permitted such use. The remaining requirements for a DMCA take down notice are listed in the United States Code, 17 U.S.C. Section 512(c)(3).

On the other hand, if you notice that materials on your website have been blocked or deleted by the service provider, it may be due to a DMCA claim. In that event, you may pursue a counter-notice. A counter-notice ensures that copyright owners and their representatives do not cause the removal of non-infringing materials.

If you find yourself in any of these situations, it may be wise to contact an experienced intellectual property attorney before proceeding.

A new invention is often followed by imitating competitors unless, of course, that new invention is protected by a patent. That various blanket with sleeves products serve as a perfect example.

You're probably familiar with the infomercial-promoted Snuggie, the blanket with sleeves. With the Snuggie, a user can stay "totally warm" and still have the "the freedom to use [their] hands." The product seems fresh and has been referred to as a trailblazer. However, the Snuggie is not the first of its kind. It is predated by the Slanket, the original blanket with sleeves. In turn, the Slanket is predated by the Freedom Blanket, also called the original blanket with sleeves. Although the inventors of the Freedom Blanket have made online claims that their sleeved blanket idea was stolen, they have not sought legal action. Similarly, the Slanket inventor, Gary Clegg, has not sued because he never patented his product. He claimed that he attempted to patent the Slanket, but was told by patent lawyers it would not be feasible. Clegg considers the Snuggie's marketing campaign to be advantageous to Slanket sales because the Snuggie's popularity has raised consumer awareness about the product in general.

These products exemplify the importance of patent protection. Because the inventors of the Freedom Blanket and the Slanket did not seek patent protection, competitors were free to borrow their idea and create similar products. To determine whether or not you should seek a patent for your invention, get in touch with a patent attorney to explore your options.

The United States intellectual property offices (U.S. Patent and Trademark Office and U.S. Copyright Office) are open to comments about a new world wide treaty that could affect copyright laws. The World Intellectual Property Organization has recently considered an international treaty that would create minimum standards in copyright laws to provide people who are blind or face other visual impairments better access to copyrighted materials.

The draft treaty is sponsored by the World Blind Union and was introduced at the May 2009 session of the WIPO's Standing Committee on Copyright and Related Rights. At the committee meeting, the United States delegates indicated a commitment to enhancing accessibility of copyrighted works. They also stressed the National policy of gathering information about proposed ideas through consultations, information meetings, and notices of inquiry with citizens.

Anyone is invited to comment on the draft treaty. Comments are due on November 13, 2009 and may be submitted electronically.

"Power to the People – Power Belongs to the People." The Rock Art Brewery in Morrisville, VT adopted that phrase in celebration of being able to keep the name of their 10th anniversary beer, the Vermonster, after settling a trademark dispute with a national beverage manufacturer. Earlier, the makers of Monster energy drink, Hansens Beverage Company, attempted to stop the small brewery from using that name. The Rock Art owner received a cease-and-desist letter demanding immediate abandonment of the term Vermonster. The letter explained that use of the word 'monster' would create confusion among consumers between the beer and the energy drink.

After receiving the notice, the brewery owner used the internet to broadcast what had happened. Public outcry ensued as he received support from the internet community. He also received support from stores in neighboring states as they pulled Monster Energy drinks and other Hansen Beverage Co. products from their shelves. Even a United States Senator observed anyone confusing energy drinks and beer should "lay off the energy drinks."

Though the precise details of the settlement are confidential, Hansen will allow Rock Art to continue marketing the Vermonster brew throughout the nation and Rock Art will not enter into the energy drink business.

The 13th Monopoly World Championship was held this week in Las Vegas Nevada. Out of the 41 international contestants, Bjorn Halvard Knappskog, a 19 year old from Norway, emerged victorious. He won $20,580.00, which is the amount of rainbow colored currency in a Monopoly board game.

Monopoly is one of the most distributed board games in U.S. history, with more than 200 million games sold throughout the world. For the few who are unfamiliar with Monopoly, it is a real estate trading game. The goal of the game is to become the wealthiest player by buying property and charging other players rent when they land on it.

There is some dispute over the origin of the game's concept. Some sources say it emerged from The Landlord's Game, which was invented in 1904. Hasbro, the owner, maintains that Charles Darrow invented it during the Great Depression. He was initially rejected by Parker Brothers, now a Hasbro subsidiary, when he approached them with game proposal. The company finally acquired the rights to Monopoly after Darrow began building game sets by hand and selling them. Consumer demand for the game was convincing.

Darrow patented the "game of barter" in 1935, which is currently assigned to Parker Brothers. The Monopoly brand also received trademark protection in 1935.

In 2008, the United States Congress established a new Office of Management and Budget administrative post: U.S. Intellectual Property Enforcement Coordinator. On September 23, President Obama delegated that position to Victoria Espinel, former Assistant USTR for Intellectual Property and Innovation.

Ms. Epinel's primary job will be to combat counterfeiting and bootlegging of software, music, films, and drugs. She'll have her work cut out for her in trying to encourage countries like China to crack down on piracy abroad and prevent such illicit materials from entering the U.S.

I applaud the decision to create a dedicated executive IP position in order to fight the rampant problem of copyright violations. Not enough is being done to make certain that artists rightfully receive proper recognition and compensation for their works.

 Microsoft has prevailed in its appeal from a $388 million dollar penalty levied against it in a patent infringement case. Uniloc, a California security software company, filed a lawsuit in 2003 against the software giant, claiming that Microsoft infringed on its patent for an antipiracy software-registration system.

Judge William Smith, of the U.S. District Court for the District of Rhode Island, overturned the initial decision and held that Microsoft does not have to pay any damages to Uniloc. The award would have been among the biggest ever granted in an American civil patent action.

Usually computer software is protected by copyright law, so this is a unique case in which a patent was issued. We don't have all the facts, so it's hard to draw any conclusions, but I find myself pulling for the little guy!

A thoughtful patent attorney can ensure that your rights aren't bulldozed by big business.

A lawsuit commenced by guitarist Joe Satriani against a wildly popular British band and its record company has been dismissed. Satriani alleged that Coldplay stole substantial parts of his 2004 song "If I Could Fly" and improperly used them in their hit song "Viva La Vida."

From court records of the case, it seems that there was a settlement between the parties. Neither side is admitting that any agreement was reached. Interestingly, another musician, Yusuf (Cat Stevens) is now claiming that "Viva La Vida" ripped off his song "Foreigner Suite" from 1973.

I went through an entire week with Coldplay's version of the song going through my head. I even downloaded it, and listened to it on repeat, hoping that I would get sick of it, and stop singing the song in the shower. It would have been interesting if this case had gone to trial to find out what really happened!

The standard for proving fraud in trademark applications, which is grounds for invalidation, has been intensely debated this year. In my post in March 2009, the Trademark Trial and Appeal Board (TTAB) suggested that "inaccurate declarations of use" could possibly amount to fraud. Months later, the TTAB issued a ruling that such inaccuracies only made a "presumption of fraud", which an applicant could overcome by correcting any falsities on the application before a challenge arose. Thus applicants were provided an "option to cure" any inaccurate statements on their trademark applications. The above standards were unfavorable to trademark applicants due to the high risk of trademark cancellation due to invalidation. Under such rule, applicants and their attorneys were required to go above and beyond due diligence in determining the course of use for their potential trademarks.

As if in step with the increasing level of protection for trademark applicants, a recent decision from the United States Court of Appeals for the Federal Circuit provided an even narrower standard to proving fraud and canceling applications. Now the challenger has the burden of proving the applicant had "actual intent to deceive the United States Patent and Trademark Office." In approving this higher standard, the Court reversed the previous TTAB decision and remarked that the TTAB "erroneously lowered the burden of proof" required to invalidate an otherwise legal trademark application.

Despite this added protection, accuracy and honesty is still extremely important in trademark applications. If you are considering obtaining a trademark, first consult with an experienced trademark attorney.

A recent post of mine discussed the financial woes of the United States Patent and Trademark Office (PTO), which are connected with the decrease in applications being filed. A solution may be on the horizon. However, it does not appear to be favorable to future inventors. A letter from the Secretary of Commerce, Gary Locke, urges the Obama Administration to grant the PTO the ability to temporarily raise fees.

The reasoning behind such a "limited interim fee adjustment" is that it is the option with the least adverse effect. Other alternatives include cutting the budget by eliminating PTO services or using Federal tax dollars to subsidize operations. The proposal considers increasing standard application fees, maintenance fees, and time extension fees by roughly fifteen percent.

In contemplation of a possible fee increase, now is the time to patent your invention. Contact a competent patent attorney to arrange a consultation and determine the best course of action.

Blogging has become a popular and effective way to disseminate information about your business and personal life. While some bloggers prefer to use original content in their posts, it is also acceptable to borrow media and information from other internet sources. As a result, many blogs are the product of information that has been copied and modified. Because some of the materials on the internet may be copyright protected, it is important to observe the following guidelines when borrowing to blog.

Use ideas. Recall that a copyright only protects the expression of an idea. It does not protect the ideas or information behind the expression. Therefore you have more liberty to use other people's ideas and information so long as you're not copying the manner in which such information is arranged or expressed.

Public Domain. Materials created prior to 1923 or prior to 1977 without a copyright notice are considered to be in the public domain. That means they are not afforded copyright protection. Thus, you have free reign over public domain materials.

Beware of infringement claims. Realize that in the event of an infringement complaint, you may not be able to remove the troubles by simply taking down the infringing post. Most people take a lighthearted approach to the unauthorized copying of protected materials; they assume a case will be dismissed when they remove the protected materials. They also assume copyright infringement only applies when the copied work is misappropriated for commercial use or to make a profit. Such assumptions are not true. The act of infringement is committed, regardless of whether it's for a commercial purpose, when the work is displayed without the owner's permission or not pursuant to the fair use doctrine.

A Florida boat manufacturer, Hell's Bay , obtained a settlement in its case (which included a trade dress claim) against Beavertail, a Minnesota based boat manufacturing company. Hell's Bay, located in Titusville, Florida, has many boat designs, including several shallow water skiffs. In Hell's Bay's case against Beavertail, Hell's Bay claimed that a number of Beavertail's skiff designs copied those of Hell's Bay designs for skiffs. Hell's Bay also claimed its shallow water skiffs were entitled to trade dress protection because of the uniqueness of the hull designs and the skiff's look.

Trade dress deals with the way providers of goods and services package or design their products. In evaluating whether "packaging" or design of products can receive trade dress protection, courts use the same criteria as they use in trademark claims, and trade dress may be entitled protection even though it is unregistered. Some of the criteria courts look at in determining whether to afford trademark or trade dress protection are whether there is a likelihood of confusion as to the source of the goods, whether the mark is functional, and whether the mark is inherently distinctive or has acquired a secondary meaning. If the packaging or design deserves trade dress protection courts can award injunctive relief along with monetary damages. In the Hell's Bay case, the exact settlement terms were not disclosed and no liability was found or admitted; however, as part of the settlement, Beavertail did discontinue manufacturing the questioned designs, destroy its molds for those hulls, and give Hell's Bay some monetary compensation.

If you are a business owner it is important to remember that product design and packaging, including the 'look and feel' of your business, may be entitled to trade dress protection as long as they meet the required standards. If you have questions about trade dress and trademarks, please let me know.

Several former Mail Boxes Etc. franchisees in Florida have been certified as a class, in their California lawsuit against UPS. The Superior Court for Los Angeles County certified the class-action lawsuit in July. The suit was brought by over a hundred former Mail Boxes Etc. franchisees. Known as the Platinum Shield Association, they have claimed that UPS, since acquiring Mail Boxes Etc., has destroyed what was once a growing, stable, and profitable franchise. The former Mail Boxes Etc. franchise owners claim that UPS coerced them into changing from their profitable Mail Boxes Etc. Centers to The UPS Store through a program called "Gold Shield." They also say UPS then tried to destroy the remaining Mail Boxes Etc. franchises that refused to change to The UPS Store by discontinuing national advertising and stopping all support for the Mail Box Etc. franchisees.

Another group of unhappy UPS franchisees is the Brown Shield Association, and they are also litigating against UPS, alleging that UPS has engaged in competition with its own franchisees by offering lower prices to customers who use direct-pickup instead of dropping of packages at local The UPS Stores. Both groups face long fights before their cases will ever see an end. The case led by the Platinum Shield Association started in 2003 and is just at the point of sending out notices to potential members of the class action.

What do you do if you own a franchise and the franchisor sells to another company? Are you obligated to accept changes in your Franchise Agreement? Disputes can be complicated, costly, and take a long time to resolve. If you are purchasing a franchise or you own one already these are issues you might want to find out about by talking to your franchisor and a franchise attorney.

In November 2008, Pepsi introduced its latest and greatest logo. It is blazing forward with its advertising blitz this year with the "Refresh Everything" campaign. The beverage company is pulling all the stops to improve its market share and overtake Coca-Cola.

When originally launched, many people commented that the new logo looked an awful lot like President Obama's campaign emblem. Talk about getting off on the wrong foot! Instead of attracting new people to the brand, the new symbol was already seen as a rip-off. I'd say the more troubling issue is that Pepsi had such a strong logo, that is easily recognized and identified around the world. Why look like an imposter? And why spend the time, money, and energy to re-educate the consuming public?

Not surprisingly, Pepsi owns Tropicana, whose recently introduced new logo was widely panned despite a $35 million dollar investment! Seems to me that a ton of money was spent in both instances for marginal aesthetic gain. Pepsi would do well to invest its resources more judiciously--it appears to be grasping at straws to catch up to Coke!

Do you think Pepsi's rebranding was worth it? Please post your comments or contact me to discuss!

You may have noticed this fashion ad posted on internet news sites or broadcasted on entertainment TV shows. The image of the incredibly thin model is central not only to an ongoing self-esteem and body image debate in the fashion world, but also to the issues of copyright infringement and fair use in the intellectual property law world.

The battle began when internet websites, Photoshop Disasters and Boing Boing, reproduced the admittedly altered Ralph Lauren ad. Boing Boing also included a caption commenting on the model's unrealistic dimensions. Ralph Lauren filed a Digital Millennium Copyright Act (DMCA) complaint, alleging that the reproduction of the image amounted to copyright infringement and did not fall within fair use, which permits the copying of protected works for the purpose of parody and critical commentary. Photoshop Disasters removed the airbrushed photo, while Boing Boing stood its ground. The editor of Boing Boing issued a razor-sharp response, warning that future attempts to "silence their criticism" will be met with "copious mockery." In light of Boing Boing taking the offense, many organizations have shown their support for Photoshop Disasters and Boing Boing in what appears to be a victory for Fair Use and freedom of speech.

If you have any questions concerning whether or not the reproduction of a work is fair use, consult with an experienced copyright attorney.

Aside from being known for its innovative search algorithm, bird's eye view maps, and expansive email in box storage capacity, Google has also gained renown for uniquely celebrating historical dates and holidays. The site's homepage usually features an altered Google logo to remind people of the special event. Most recently, the search engine paid homage to the 57th anniversary of the first barcode, which was invented around October 1949 and received a patent on October 7, 1952. Unlike the vertical lined specimen featured on Google, the first barcode was circular and resembled a bull's-eye.

When Google unveiled its encoded logo, some internet bloggers initially suspected a brainwashing conspiracy. However, others have confirmed the image is merely an innocent bar code translation of the website's name.

The emergence of this technology has streamlined many areas of our lives. The bar code established a standard medium for transferring information quickly and efficiently. For example, a retail store can keep track of merchandise inventory and prices through the use of bar codes and scanners. When you inquire about the price and stock quantity of a particular item, the clerk can provide you a fast and accurate answer by simply scanning the barcode.

Companies spend millions of dollars enlisting branding firms to revitalize logos they have deemed old and tired. Potential gains include rejuvenating your brand's image, building up new good will among consumers and redefining your place in the market. On the flip side, a perfectly good brand may be tarnished by a questionable makeover.

Major players like Pepsi, Walmart, and UPS all have put their logos under the knife in recent years. It's definitely a balancing act as these businesses have to take care to maintain enough of a connection between the old and new images while modernizing their respective logos to stay fresh.

Also, think of the consumer--with familiarity comes comfort. When updating a logo, will your followers continue to be loyal? How many will turn up their noses at the changes? And for those who never liked to brand anyway, overcoming their existing bias is a gamble.

Notable rebranding misses of late include Kraft, Tropicana and Xerox. A common flaw to all of these redesigns is that they risked the unique qualities of the original in the name of "progress." A company must consider the reaction of its existing customer base as well as that of the new one it wants to bring in!

In the next segment, I'll compare the old and new looks for Pepsi! Stay tuned…

Oprah Winfrey and Dr. Mehmet Oz are suing over 50 small beauty product and dietary supplement companies across the country, claiming that the businesses falsely professed that the TV personality and her recurring talk show health expert endorsed their merchandise.

Among Oprah's list of grievances are consumer fraud and unauthorized use of names, likenesses, and trademarks. Many of the defendant companies appear to be fly-by-night outfits, running credit card scams. The victims are unsuspecting buyers of their vitamins, anti-cellulite and anti-wrinkle creams, and tooth-whitening products. Oprah is incensed that her reputation was purportedly tied to these questionable organizations.

The clout Oprah has today is mind-boggling, but not surprising! People will run out and buy anything if it gets a thumbs-up from her. The same goes for any powerful or famous person. To think that these companies would misrepresent the facts just to capitalize on her sphere of influence is a testament to Oprah's power in the market. While we could argue that a little more caution from viewers in making purchases couldn't hurt, trademark laws exist to protect consumers from being confused as to who endorses which products.

Ensure that your name isn't associated with sketchy characters! Contact a trademark attorney for protection!

The time it takes to get a patent approved by the United States Patent and Trademark Office is getting longer and longer. The average wait for a first response from the USPTO to a patent application is now more than 2 years. From start to issue, the current average time lag is nearly 3 years!

The USPTO has over 1.2 million patent applications pending and received about 497,000 new applications in 2008. As I discussed in a previous entry, there is something of a budgetary crisis going on at the USPTO right now and unfortunately the agency simply does not have enough resources to dedicate to the examination and review of patent applications at this point. Unfortunately, the current economic situation has forced many governmental agencies to tighten their belts, meaning processing gets delayed, and the public has to wait longer and longer. Inventors are no exception.

What does this mean for your invention? It has become difficult to predict the time frame in which a patent may be issued, and this uncertainty may adversely affect your ability to secure investors and bring in new capital to your firm based on near-future intellectual property rights. Furthermore, infringers may come out of the woodworks while your patent is being processed. The best course of action is to apply early and get the ball rolling ASAP! Issued patents give cease and desist letters a lot more teeth when asking an infringer to stop.

Contact a patent attorney to get started right away with the patent process!

In a surprising new trend, investment firms and new businesses are gobbling up a new kind of capital. They are seeking to buy, sell, and license patents via auctions. Under such a system, inventors make their patents available for sale and transfer all or part of their rights to the highest bidder.

The potential benefits of this emerging market that are being touted by analysts include increased innovation, reallocation of costs, and a reduction in patent litigation. In our capitalist society, we are told that market forces will naturally determine the value of a specific product and thereby encourage entry into that field. We can expect patent auctioning to grow rapidly but we are a long way off from seeing patents up on eBay.

While I believe in the alienability of patent rights and freedom of contract, I think both inventors and investors alike should be wary of jumping in headfirst without carrying out proper due diligence. We've seen unbridled trading of nontraditional assets before in the mortgage industry and it played a big role in the recent economic crisis here in the U.S.!

Contact a comprehensive patent attorney and consult with a business development expert to gauge the worth of your invention!

If you are thinking about registering a company trademark under an alternate domain name, think again. The American Automobile Association (AAA) recently sued James Van Johns, a Pennsylvania resident, for violating federal cybersquatting laws. According to the Anticybersquatting Consumer Protection Act, a trademark holder can sue anyone who registers or uses a domain name that may confuse consumers or mislead them into believing the website is endorsed by the mark holder.

Van Johns had registered the website AAA.net which appeared similar to AAA's website, AAA.com. This would have likely confused consumers trying to connect with AAA, especially since Van John's site featured advertisements for AAA's competitors.

Fortunately, the parties were able to settle and each side paid their own legal fees. As a result of the settlement, Van Johns had to release AAA.net to AAA without any payment. He is further prohibited from registering any other web addresses similar to AAA.

Marvel Entertainment and Disney may lose some of the rights to characters and stories involving the Fantastic Four and X-Men come 2014. The children of the Jack Kirby, the late artist of several comic books, have given the entertainment giant notice of their intention to recapture the copyrights to the characters conceived by Mr. Kirby.

There is precedent here: in a similar action, the heirs of Jerry Siegel, the creator of Superman, successfully regained some of the rights to the character's origin from Time Warner. This could potentially be a large blow to Disney, which recently acquired Marvel for $4 billion dollars.

The U.S. Copyright Act enables creators to end old copyright grants after a lengthy waiting period and revert them back to themselves. I think artists should be fairly rewarded for their creations, but I also believe in honoring one's commitments. Here it would be ideal if the heirs can work out some agreement by which they are justly compensated but Marvel and Disney retain the ability to use the characters!

Shelden Kaplan, longtime engineer and innovator, passed away September 21, 2009 from complications resulting from liver cancer. At the fore of Mr. Kaplan's many accomplishments are the creations of the ComboPen, and EpiPen, respectively.

The ComboPen is used by the military to treat soldiers poisoned by nerve agents. The EpiPen is a later derivative that contains epinephrine and serves to save people with lethal allergies. Millions upon millions of people have acquired prescriptions for EpiPens, and innumerable deaths have undoubtedly been prevented by the device.

What's amazing about Mr. Kaplan is that he never received any profits, amassed any royalties, or garnered any fame from his invention. I think it's remarkable that someone would toil away on such a salubrious technology in complete anonymity!

Amazon has taken it upon itself to break into customers' Kindles and surreptitiously erase copies of Nineteen Eighty-Four by George Orwell that it has deemed illegally obtained. Kindles are wireless reading devices sold by Amazon that store and display e-books and other digital information.

Amazon did not get permission from users to remove data but unilaterally made the decision to invade users' collective privacy. Once media is recorded on someone's personal device, it is effectively personal property and generally cannot be taken without a court order. What Amazon did is tantamount to vigilante justice.

Individuals' personal electronics are their own and their contents must be respected! I would be furious if a company skulked into my digital space and took what was rightfully mine! Furthermore, if these allegations are true, controversy could open up a whole can of censorship and/or freedom of speech worms. In the event of illicit activity, there are proper judicial channels and legal remedies available to those that have been truly wronged.

Consult an intellectual property attorney to properly enforce your copyrights!

Louis Vuitton, the high-end fashion retailer, has been awarded $32.4 million dollars in its trademark and copyright infringement case against Akanoc Solutions, Inc., and Managed Solutions, Inc., a pair of website hosting companies. The case, Louis Vuitton Malletier v. Akanoc Solutions, Inc. et al., was held in the U.S. District Court for the Northern District of California and a jury rendered the verdict.

What's unique about this case is that the defendants did not commit any direct violations themselves, but hosted sites that sold Louis Vuitton knock-offs. Contributory trademark infringement is a legal theory wherein a defendant may be liable for assisting trademark infringement or having control over others who directly infringe.

In order to be held accountable for the acts of others, the defendant must know or should have known that another's conduct constitutes infringement and the defendant must give substantial assistance or encouragement to those that directly infringe. I think it's fair that secondary actors and entities that enable infringement are liable for either actively helping infringers or looking the other way!

Want to keep your trademark safe from any type of infringer? A trademark lawyer can preserve the strength of your brand!

An upcoming case, Ride the Ducks v. Bay Quackers, is set to highlight the importance of sound marks, an often overlooked, but key concept of trademark law. A Georgia tour company called Ride the Ducks is suing Bay Quackers, a San Francisco tour company, claiming that the latter distributes kazoos that produce a quacking sound that is identical to the one made by Ride the Ducks' Wacky Quacker noisemaker.

While this may seem somewhat ridiculous, a sound can establish a link in a listener's mind, creating a mental association with a particular business. To qualify for registration, a sound mark must be source identifying and must either be inherently distinctive or have acquired distinctiveness. Famous sound marks include NBC's chimes, the Pillsbury Doughboy's giggle, AOL's "You've got mail" alert, and MGM's lion's roar.

In addition, colors, 3D marks, graphics, scents, and other non-drawing formats also may be eligible for trademark registration. You work tirelessly to carefully sculpt your brand image and amass goodwill. It's critical to employ both common and unorthodox IP protection to uphold your company's reputation!

A trademark attorney can help you craft a personal IP game plan!

Businesses know it is important to protect their trademarks from infringement. If they do not protect their marks, they could lose their exclusive right to use the marks. Some businesses are more aggressive than others in protecting their marks. McDonald's aggressively protects their trademarks. They have filed several lawsuits over the years, attempting to protect the "Mc" term in restaurant and food product use. The key factors in trademark infringement cases are whether the use of a similar mark will cause consumer confusion as to the source of the goods or services or is deceptive in some way.

In the latest installment of the "Mc" lawsuits, a Singapore restaurant franchise has finally won a trademark infringement case brought against it by the international franchise giant McDonald's. The lawsuit started in 2001, when McDonald's sued Malaysian Chicken Curry, which advertises itself as McCurry, for trademark infringement for the use of the term "Mc". McDonald's claims exclusive right of the "Mc" term in restaurant and food product advertising. The Malaysian Chicken Curry restaurant started in 1999 and serves Malaysian style cuisine. The restaurant is named after one of its popular dishes, Malaysian Chicken Curry. McCurry lost the case at the trial level, but after appeals, the court ruled in favor of McCurry.

While McCurry must be happy with their result, this finding will have dramatic effects on the strength of McDonalds' "Mc" designation in Malaysia. Will there be a snowball effect if other countries follow in the High Court of Malaysia's footsteps? Do you think the American court system would have come to a conclusion different from its Malaysian counterpart? Do you think sometimes businesses go too far in trying to protect their trademarks? There are so many possibilities--let's discuss!

Franchisors and franchisees must protect the trademarks and service marks that identify their services or goods, but they also must be careful not to infringe upon other's trademarks or service marks. Litigation can be costly, and whether you win or lose, a lawsuit could potentially bankrupt your business.

One such example of a franchise having to litigate a case is Paris Hilton's lawsuit against Hallmark Cards. The dispute is over the use of a likeness of Paris Hilton's head and the slogan "THAT'S HOT." This phrase was the topic of a previous Celebrity Trademark spotlight I did, featuring the scrawny blonde drama queen's trademark application, which is still pending with the USPTO. Hallmark Cards used the likeness and slogan on a card sold in its franchise stores. Paris Hilton has trademarked the slogan she made popular in the television show, "The Simple Life". The case is has not been finally decided; however, Hallmark Cards recently lost its appeal for dismissal. The 9th Circuit Court of Appeals has remanded the case to the trial court so the disputed issues can be decided.

The whole purpose of trademarks and service marks is to give businesses something to uniquely identify their services or goods. Obviously, you want to use your franchise's trademarks and service marks as often as possible for branding purposes; however, when preparing advertising or marketing material for your franchise, it might be a good idea to consult with an attorney to make sure any likenesses or images used are not already protected.

The Electronic Frontier Foundation has asked the United States Copyright Office to grant an exemption to the Digital Millennium Copyright Act so that iPhone users may load outside programs onto their phones. Circumventing a manufacturer's software is referred to as "jailbreaking" and Apple says that an allowance of it could lead to devastating hacker attacks.

What are some of the potential results spelled out by Apple? Cell tower crashes from improper external commands, signal disruption, privacy concerns, exposure to viruses, increased piracy, and the spreading pornography to children. Quite the doomsday prediction!

I think that Apple should strive to protect its technology without resorting to scare tactics and sensationalism. To me, brazenly touting fatal consequences that are remotely possible undermines its credibility. Apple should make its case based on its legitimate IP rights, not on public fear.

Do you think that this forecast is realistic? Please post your comments.

David Kappos, nominated to become the next Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office, addressed the Senate Judiciary Committee on July 29 as part of his confirmation hearing. As I had mentioned in an earlier post, Mr. Kappos previously served as IBM's vice-president and assistant general counsel for intellectual property.

Among other things, Mr. Kappos vowed to root out counterfeiting and piracy, highlighted his plethora of qualifications, and tackled questions about potential conflicts of interest with regard to future IBM patents. He intends to pursue an international anti-piracy strategy, working in conjunction with many foreign governments, particularly those in Asia. Many senators reacted favorably to Mr. Kappos and his confirmation appears to be imminent. The panel is expected to vote on Kappos in early August.

Mr. Kappos' resume certainly is impeccable, and he seems to be saying all the right things about his upcoming position. His plate will definitely be full as budget concerns at the USPTO loom over all policy decisions. I only hope that his ambitions aren't just pipe dreams and that concrete actions will be taken to make good on his promises!

An inventor named Paul Pantone has discovered a way to use Mountain Dew to help power cars. Mr. Pantone has developed the Global Environmental Energy Technology Fuel Processor which is a system that can be retrofitted onto existing internal combustion engines and enables them to run on a mixture that's up to 80% water. Check out the details of his apparatus in this YouTube video.

Interestingly, Mr. Pantone alleges that he worked on GEET for 25 years until he was framed for securities fraud and committed to a mental ward by seedy businessmen. Supposedly this was retaliation for Mr. Pantone's refusal to sell his patent. Mr. Pantone goes on to contend that by using GEET, greenhouse gases and emissions from a single car can be reduced by up to 90%!

The jury's still out regarding the efficacy of GEET as no independent verifications of Mr. Pantone's claims have been done. Still, the fact that he was issued a patent gives him some measure of credibility. Even if the technology and Mr. Pantone's history seem somewhat far-fetched, you have to admire his creative spirit!

This is my first blog entry that incorporates video. How did you enjoy it? Is it user-friendly enough? Does it keep your interest better? I need feedback! Please chime in.

Judge Sotomayor's career in the judicial system has spanned 30 years and she has ruled on both ends of the spectrum, issuing favorable judgements to both plaintiffs and defendants in IP matters.

In 1997, in Castle Rock Entertainment, Inc. v. Carol Publishing Group, 150 F.3d 132 (2d Cir. 1998), Judge Sotomayor held that a trivia book based on Seinfeld, called The Seinfeld Aptitude Test, violated various copyrights. She also found in favor of licensees of the rights to The Three Stooges in an action to protect their property.

However, in another major case, Tasini v. New York Times et al., 533 U.S. 483 (2001), Judge Sotomayor ruled against a number of freelance journalists claiming that major news outlets had improperly duplicated their work and displayed it on databases like LexisNexis without permission and in violation of copyright laws. Judge Sotomayor opined that these news organizations were in compliance with the Copyright Act of 1976. Ironically, the U.S. Supreme Court ultimately struck down her ruling!

Despite the variation in her decisions, I am glad that there will be a judge on the U.S. Supreme Court with some IP savvy to tackle what is sure to be a huge slate of cases involving new technology.

How do you feel about Judge Sotomayor's qualifications? How do you think her background will affect the Supreme Court's decisions? Please post your comments or contact me to discuss!

Judge Sonia Sotomayor was confirmed by the United States Senate on August 6 and will be sworn in as a member of the U.S. Supreme Court on August 8. Despite coming under fire from a variety of Republican opponents, Judge Sotomayor was voted in by a 68-31 tally.

Judge Sotomayor was a highly-decorated intellectual property attorney in private practice, and served as a partner in a Manhattan law firm prior to her tenure as a judge. She has relevant experience in cyberlaw and appears to be a quantum leap over Judge David Souter, the technologically-challenged Justice she is replacing.

Judge Sotomayor has impeccable credentials from her college years through her time on the bench. Her dedication and enthusiasm are striking: while doing trademark work for Louis Vuitton, she routinely took to the streets in a bulletproof vest and tracked down people peddling fake Louis Vuitton purses!

I admire Judge Sotomayor for her remarkable experiences and, being an intellectual property attorney myself, share her passion for clients! Up next, I'll go through some of her past history with IP cases.

Competitors to Google are working feverishly to invalidate or delay a settlement agreement between Google and numerous authors and publishers that would avoid copyright infringement litigation over the digitization of literary works for the Google Books platform.

Google Books is a digital book system which scans in books, converts them into text, and makes them available and searchable online. Authors and publishers sued Google for unauthorized use of copyrighted materials. In October 2008, Google and the complainants came to an agreement that would allow Google Books to continue development.

The settlement has not been approved yet and raises antitrust issues into which the United States Department of Justice is launching an investigation. Companies like Microsoft, Amazon, and Yahoo are banding together to fight the deal as they claim that it unfairly insulates Google from liability for violating copyrights.

I think that if Google freely contracts with the authors and publishers, then it should be honored. The other tech businesses should draft their own agreements to secure the same rights instead of whining about Google! What do you think? Please post your comments!

The United States Patent and Trademark Office is shifting toward full electronic patent application processing with a program called e-Office Action. After successfully testing it with a pilot project, the USPTO is moving forward with plans to implement the e-Office Action program.

Once the new program is in place, applicants will receive notices from the USPTO in e-mail form, alerting them to view new correspondence through the Private PAIR retrieval system on the USPTO website. This system obviates the need for paper mailings and is intended to streamline patent prosecution by getting information to applicants much faster.

Any registered patent attorney or agent is eligible to participate in the e-Office Action program and may submit provisional and non-provisional applications including utility, plant, design, reissue applications, and national stage applications.

I have been filing my clients' trademark applications with the USPTO for some time now, using an electronic system, similar to this procedure. Work is submitted instantaneously--truly an attorney's dream!

KB Toys, longtime vendor of children's toys, regrettably has filed for bankruptcy and is currently liquidating its assets in order to satisfy its creditors. Among the items up for bid were KB Toys trademark, logos, and domain name as the retailer is shutting down all of its approximately 460 stores.

For a business that began in the 1920s, they have only been using the name, "KB Toys" since 1996, according to their trademark registration, and "Kay-Bee Toys" since 1997, according to another trademark registration.

Those registrations cite a handful of other prior registrations. A trademark is any word, name, symbol, device, or any combination thereof used to identify and distinguish goods. One may last forever, but can expire due to either non-use or loss of distinctiveness. Ownership can arise due to either public use or registration, but registration affords many more advantages when it comes to deterring infringement.

Trademarks are assets. As such, these assets may be transferred or sold by executing an assignment. A retail operator called CE Stores secured the rights to KB Toys' intellectual property for $2.1 million dollars and may capitalize on the good will that KB Toys built up since its inception in 1922.

It's a shame that KB Toys has been forced into a situation where it has to part with the good will of its own intellectual property, isn't it?

Twitter can't seem to catch a break when it comes to trademarks. The United States Patent and Trademark Office has preliminarily denied Twitter's bid to trademark the word "tweet." Twitter appears to have lost the race, not against time to prevent their potential trademark from becoming generic, but against three other companies that filed applications containing the word "tweet."

TweetMarks, Cotweet, and TweetPhoto all submitted trademark applications for their respective names that predate Twitter's filing. What's ironic is that these are all independent sites that were created to piggyback onto Twitter! The USPTO wrote that a trademark on "tweet" would likely cause confusion among consumers as to its source. The goal of a trademark is for the public to be able to unequivocally identify a brand.

Twitter has indicated that it even if the trademark is ultimately registered, it would allow liberal use of "tweet" unless it would be injurious to the company. Now it seems that Twitter will be unable to protect the term at all. No matter what the outcome, millions will still be tweeting, including me!

I can think of other grounds upon which "tweet" would be denied registration. Trademarks should describe a product or service. They cannot be generic nouns, like "milk," "car," or "scissor." I have heard the word used as a noun ("Post a tweet so I'll know what you are doing"). Similarly, trademarks cannot be used as verbs ("Her thumbs are sore from tweeting on her phone"). Thus, trademark registration should only be granted if "tweet" was used as an adjective, as in, "Your tweet micro-blog is always updated," or "Stop sending tweet messages at the dinner table."

I can help you navigate the subtle trademark registration rules. Let me know if you have a question about them.

Even the United States Patent and Trademark Office isn't immune to posthumous Michael Jackson mania. The USPTO has opened a new exhibit in conjunction with the National Inventors Hall of Fame and Museum to commemorate the late Gloved One's contributions to intellectual property.

Catch it while you can! The exhibit is slated to run from July 15 to September 7, has no entry fee, and all are welcome to visit. As I mentioned in an earlier post, Michael Jackson was very savvy when it came to IP and even had his own patent for gravity-defying shoes.

Whether you loved him or hated him, there is no denying the indelible imprint Michael Jackson left. This is exemplified by the many trademarks he left behind, including this one, for his Heal the World Foundation. With all the bizarre news reports swirling about both his life and death, it's nice to focus on some of the positive things he did!

Want to see the exhibit in person? It's located inside the USPTO headquarters at 600 Dulany Street, Alexandria, VA, 22314.

The Volt can run on electricity alone, but requires lots of charging so who knows if such mileage results are remotely attainable for the average driver. The Volt's range on electric-only propulsion is 40 miles when it is completely charged. Theoretically, you could get infinite mileage for as long as the battery pack has enough power.

I think that potential licensees and car buyers should be wary of such lofty projections and also consider the fact that the development time of the Volt was considerably shortened, while the Prius is tried and true and has been around for nearly a decade!

I am skeptical that the quality and reliability of the Volt will be adequate as its creation appears to be a knee-jerk reaction to the giant spike in gas prices. Unless the Volt ends up being bulletproof and achieves insane fuel economy, Toyota will likely be the victor in this fight.

Do you think the Volt will pan out? Please post your comments or contact me to discuss!

Two auto industry titans are duking it out to sell their respective hybrid powertrain technology to other manufacturers and suppliers. Toyota and General Motors, the #1 and #2 carmakers in the world, are approaching competitors to license their slew of patents and other intellectual property to them.

Toyota has long been the preeminent leader in hybrid vehicles, introduced the first-generation of the ubiquitous Prius model with Hybrid Synergy Drive in 2001 and has sold millions upon millions of them. True to form, GM was late to the game and is rushing its plug-in hybrid model to market, the 2010 Chevrolet Volt powered by the Voltec propulsion system.

GM is touting the virtues of the Volt which has garnered preliminary mileage estimates of 230 mpg! At this stage, the 230 mpg claim seems ludicrous, but the Environmental Protection Agency appears to be backing it up.

Do you think 230 mpg is possible? Please post your comments! Up next, I'll discuss why I think we should reserve judgment as to the efficacy of the Volt.

Have you noticed that some brand names include the name of a location to denote where the products originate, while others include a location that is completely unrelated?

You can use a geographical or regional name in your trademark as long as its meets two requirements: the mark cannot be geographically misdescriptive or deceptive. First the term cannot be geographically misdescriptive. This means the mark identifies a location other than the origin of the goods or services. For example, Durango chewing tobacco is completely unrelated to the city of Durango. The product is neither produced or distributed from there.

Second, the mark cannot be deceptive. A mark is deceptive when consumers reasonably believe the goods or services originate from the described area due to that area's reputation. Back to the Durango example, that brand is both misdescriptive and deceptive because the city of Durango does in fact produce similar tobacco products. Therefore, consumers would reasonably infer that the Durango brand also originates from the named city.

On the other hand, misdescriptive terms are permitted if they are not deceptive, meaning consumers will not likely believe goods or services come from that area. For example, the Yukon is a trademark for an SUV. Although the Yukon is also the name of a location, it is not known for manufacturing SUVS. Therefore, consumers are not deceived into making the false connection between the product and the location.

Some of the reparations sought by the plaintiffs in a class-action suit against YouTube, the ubiquitous video sharing website, have been thrown out by a U.S. federal judge. Judge Louis Stanton, of the Southern District of New York, denied a number of plaintiffs' claims for statutory damages.

YouTube is a subsidiary of Google and receives 1.2 billion video views per day. Its level of exposure has soared as amateurs and professionals alike post over 65,000 new videos every day. The clips uploaded run the gamut from home videos to pro sports highlights to news updates.

The judge ruled that statutory damages for all domestic and foreign works that are not timely registered are barred by the Digital Millennium Copyright Act of 1998. He further declared that some of the videos in question were foreign works not governed by U.S. copyright law and therefore punitive damages would not be available for them. This decision appears to have no bearing on several of the other plaintiffs as their works fall under the Copyright Act.

YouTube is by no means out of the woods yet, as another, far more ominous lawsuit has been filed against Google by Viacom, to the tune of $1 billion dollars. At this stage, Google's main defense seems to be that as long as it immediately takes down illegal videos once it becomes aware of a violation, it is in compliance with the Copyright Act.

I, for one, really enjoy YouTube videos and hope that it can find a way to operate within the bounds of copyright law. It would be a shame for such an innovative site to be shut down, so hopefully some sort of licensing agreement or other permission can be secured.

What're your feelings on YouTube? Please post your comments or contact me to discuss!

A federal jury in Minnesota has awarded the Recording Industry Association of America $1.92 million dollars in its copyright infringement case against Jammie Thomas-Rasset, a 32 year-old woman from Brainerd, MN, for allegedly offering 24 songs for download on the Kazaa file-sharing platform.

Approximately 35,000 people have been threatened with legal action by the recording industry for illegal downloading, but Rasset's case was the first and only one of its kind to reach trial proceedings. For copyright violations, juries may enter verdicts of up to $150,000 per song pursuant to federal law.

Online music piracy has exploded since the advent of peer-to-peer networking and was popularized on the heels of software such as Napster. According to a 2007 study by the Institute for Policy Innovation, music piracy costs American workers $2.7 billion dollars annually, and 71,060 jobs are lost each year. Piracy divests artists of their rights to their own intellectual property and circumvents the traditional financial compensation structure. Currently, there are myriad channels available for legally acquiring music including iTunes, Zune, and Amazon.

Piracy remains a rampant problem, but the helter-skelter pursuit of individual offenders is not the answer. The recording industry should focus its collective energy on ensuring that P2P networking sites themselves are implementing adequate precautionary measures to deter copyright infringement. Such a strategy would effect a more equitable distribution of liability and prevent individuals from shouldering a disproportionate share.

The Recording Industry Association of America has triumphed over Usenet.com in a copyright infringement case originating in October 2007. The favorable ruling was issued by a federal court in the Southern District of New York, but the exact parameters of the punishment have yet to be determined. They could range from heavy fines to the complete disintegration of Usenet.

Usenet isn't a traditional peer-to-peer networking site, but affords users access to over 120,000 newsgroups enabling them to retrieve files on-demand from a single server hosted by Usenet that draws from stored content on several servers. The RIAA accused Usenet of actively encouraging users to share music illegally via its unusual structure.

This case represents a watershed moment in terms of the RIAA's tactics as it is now pursuing companies that are facilitating piracy instead of tracking down individuals. Furthermore, the RIAA is approaching internet service providers and requesting that they convey RIAA copyright infringement notices to their customers and suspend service for repeat offenders. The RIAA will refrain from taking legal action against the ISPs themselves in exchange for their cooperation.

The RIAA should be focusing on large-scale violations and the entities that make them possible. The RIAA's new outlook makes more than a little sense from both fault-finding and efficiency standpoints. It will be much easier to combat music piracy by going after the big fish.

Do you think this is a better strategy for the RIAA? Please post your comments or contact me to discuss!

In 1999, total revenue in the US from sales and licensing of music was nearly fifteen billion dollars. By the end of 2000, that figure had dropped to just over six billion dollars. In fact, the Recording Industry Association of America (RIAA) has reported a decline in revenue for nine out of the last ten years, making the first decade of the twenty-first century the first decade that music sales were lower at the end of the decade than the beginning.

Of course, the last decade saw two separate recessions, which cannot have helped music sales. And sales during the 1990's were certainly helped a great deal by consumers re-purchasing all of their favorite taped and vinyl music on CDs.

An RIAA representative cited growing pains adjusting to digital music as the reason for the decline, saying that the music industry has been trying to adapt to rapid changes in how consumers buy and listen to music. He went on to admit that the music industry has had trouble monetizing evolving music delivery methods.

Thanks to Napster and other digital file sharing sites, customers now expect to download music from the internet for free or for very little money. So instead of purchasing a complete album of music for fifteen dollars, they can cherry pick songs for one dollar each on Apple's iTunes, or use an unauthorized file sharing site to get music.

According to Forrester Research, only sixty four percent of Americans believe that music is worth paying for. Another study showed that unauthorized file sharing sites still account for 90% of downloaded music. Find out more about the music industry's struggles at Music's lost decade: Sales cut in half.

These statistics reflect the current difficulties faced by artists trying to protect their interests due to constant advances in music delivery systems, however, as a starting point, musicians and songwriters must also take the first and most basic step of protection – filing a copyright on their "creation" at the outset.

If you live in the Jacksonville, Florida or Orlando, Florida area and need to have a copyright on your music or believe your copyright has been infringed, please contact our firm Wood, Atter & Wolf, P.A., for business legal counsel.

The estate of late pop star Michael Jackson filed suit recently against two California-based organizations that it claims have infringed on its "King of Pop" and "Thriller" trademarks while pretending to be a charitable organization endorsed by Jackson.

This is the first trademark infringement suit filed by the estate since Jackson's death in June of 2009. The Heal the World Foundation and an affiliated corporation called United Fleet were named in the suit, which states that the defendants have registered 6 trademarks and applied for 41 more that could be considered "identical or confusingly similar" to the Michael Jackson estate's trademarks. The suit seeks to both to prevent the defendants from using the trademarks and also asks for the destruction of any infringing products.

Trademarks were developed as a means of protecting the public by making it easy for them to identify the source of a given good. Trademark holders need to be vigilant to prevent their marks from being infringed upon by parties with no rights to the mark. This not only protects their financial interests but helps them maintain their good name with the public.

If you have an unresolved business legal matter, please contact a trademark attorney our firm for expert legal counsel.

Find out more about this story at Michael Jackson Estate Alleges Violations of Trademarks, Rights of Publicity.

True story: I loved Twitter. Then I hated Twitter. And now I use it only to diversify my online social media portfolio. I mean, the micro-blogging site has even spawned new lingo in the English language! As I just used the term, an update posted on Twitter is referred to as a "tweet."

Consequently, Twitter has submitted a trademark application to the U.S. Patent and Trademark Office for the word "tweet." This process likely will turn into a race against the clock as "tweet" may become genericized before Twitter can fully establish its rights in the term.

A genericized trademark refers to one that has become so prevalent that it comprises the definition for a general class of product or service. Such a trademark no longer carries the specific connotation intended by the applicant but has developed into the generic description itself. Notable examples of genericized trademarks include "cellophane." Companies like Xerox take painstaking efforts to educate the public not to use the word as a verb ("Xerox this memo,") but rather, as an adjective ("Make a Xerox photocopy.")

What this means is that Twitter must actively take measures to inhibit broad usage of "tweet" or else it may effectively forfeit some of its rights in the word. One option is to formally notify users of proper trademark use. I would love to be part of the ad campaign that promotes phrases like, "Send me a tweet micro-blog." It is critical for trademark applicants to maintain the fine balance of popularizing their brands while concurrently preventing genericide so that they may retain their full intellectual property rights in their trademarks.

Are these rules nitpicky? Sure they are! But they all serve a purpose. Want to find out more? Send me a tweet!

Goldman Sachs Group, Inc. is currently doing damage control after learning that one of its former computer programmers, Sergey Aleynikov, allegedly made off with highly sensitive computer code comprising Goldman Sachs' latest trading model. A trading model consists of a series of algorithms that temporally optimize risk. The model dictates investment strategy and transactions are made accordingly. This entire process is referred to as automated trading.

A trading model constitutes key intellectual property and enables investors to make moves more quickly than more traditional means. Automated trading has become more and more popular as it has yielded huge profits for investment banks. Higher levels of speed and volume confer a considerable competitive edge, so banks seek to create models that execute trades as quickly as possible. Million dollar transactions can take place less than a second!

What's surprising about Goldman Sachs' predicament is that the theft was allegedly perpetrated by a programmer, and not a high-level trader. In addition, Aleynikov is accused of stealing actual computer code as opposed to memorizing the platform and drafting a new, copycat version. This indicates that companies must identify potential leaks from every angle and take a variety of precautions.

I wonder if Goldman Sachs had confidentiality agreements with its employees. With rogue former employees like Aleynikov, it may not have made a difference, since he probably doesn't have the assets to compensate Goldman Sachs for their financial losses and business advantages. I also wonder if there were non-compete agreements in place, preventing former employees from running off to work for a competitor, or start their own business. Furthermore, I wonder how much of Goldman Sachs' information could have been protected under trade secret laws, where minimizing the exposure of these secrets to employees would offer them the best protection.

Are you a business whose assets are in intellectual property? Do you have special skills, customer lists, or processes you don't want your competitors to have? An intellectual property lawyer with a strong foundation in business law can help you cover all your bases!

Independent internet radio service providers have struck a deal with the Copyright Royalty Board that will keep them afloat. The internet stations were concerned that astronomical royalties would inflate their costs to the point of sinking their businesses. Some had worried that required royalties could potentially be set at double their total revenue!

Internet radio stations continuously stream music and draw over 42 million American listeners every week. Traditional radio stations have licensing agreements in place which enable them to legally broadcast music and which are paid for by substantial income from advertising.

The contract agreed upon by the parties spans 10 years, expires in 2015, and includes a graduated royalty fee structure whereby artists and record companies receive progressively higher payouts over time which may be tendered in the form of a cut of the stations' profits. The compensation paid will be directly proportional to the popularity of the radio stations.

Some key stations, such as such as Pandora, have yet to join the deal, but it is anticipated that they will soon sign on the dotted line. Such an agreement was critical for internet radio as it needed a plan that would enable it to be financially viable. The industry is still fairly new and in its formative years, so very few independent providers are turning a profit right now. It will take some time before these providers can compete with larger stations that are affiliated with large media conglomerates.

I love internet radio and listen to it practically every day! It has so many more dimensions than regular radio and gives users new ways to mix and match music to suit their individual tastes. I'm glad that some middle ground could be found so that internet radio can go on uninterrupted!

Are you a fan of internet radio? Let me know what you think!

Computer giant International Business Machines, Corp. has been taken to court by MOSAID Technologies, Inc., a Canadian intellectual property development firm, for suspected unlicensed use of MOSAID's technology. It is claimed that IBM manufactured and sold microprocessor and circuit products that use Dynamic Random Access Memory patents belonging to MOSAID. The suit was filed in U.S. District Court in Delaware and alleges six different counts of infringement.

MOSAID has been a trailblazer with respect to DRAM and has enjoyed a virtual monopoly over the DRAM licensing market. MOSAID has agreements in place with Fujitsu, NEC, Toshiba, Hitachi, Mitsubishi Electric, and Oki Semiconductor. Interestingly, MOSAID says that its hand was forced regarding IBM due to stalled talks between the parties regarding possible licensing for the patents in question.

This is not the first time that MOSAID has cried foul; it has filed suits against Samsung, Infineon, and several other companies in the past for similar conduct. Samsung ultimately settled with MOSAID and came away with a five-year license agreement to use MOSAID's inventions.

I think MOSAID is doing the smart thing by actively pursuing companies it feels are infringing upon its patents and ensuring that it is justly compensated for its innovation. Despite the difficult process of initiating litigation against every potential copycat, it is imperative that intellectual property be guarded as fiercely as possible so that your business can reap the hard-earned benefits of its R&D. Patent prosecution can and does pay dividends for decades.

Contact a patent attorney to protect the fruits of your labor for years to come!

Several gene research groups have taken legal action against Myriad Genetics & Laboratories, the University of Utah, and the United States Patent and Trademark Office in an ostensible attempt to end human gene patenting in the United States. The suit centers around two human genes with ties to breast and ovarian cancer for which the University was granted seven patents and licensed them to Myriad.

The objective of the plaintiffs appears to be to reverse over 20 years of precedent providing for the allowance of patents on human genes. Thousands of patents have been issued on human genes and a victory for the gene research groups would result in a seismic shift in the legal landscape.

I think that we should carefully scrutinize what we consider to be patentable human gene processes. However, I strongly believe that innovation should be rewarded, and that access to technology should have minimal limits. Researchers should be fairly compensated for their efforts and the public should also enjoy the benefits of progress.

Eliminating the potential for patents altogether would remove a considerable incentive for entities to invest R&D money into exploratory projects, and ironically may prevent breakthroughs from occurring in the first place. On the other hand, it is important to ensure that people aren't excluded from the use of new gene technology to the point that public health suffers. For that reason, it is critical that both advancement and access are maximized!

Do you think human genes should be patentable? Please post your comments or contact me to discuss!

Ever since he suffered an accident as a baby, Sam Genensky was classified as legally blind, having about 20/1000 vision in the only one of his eyes that worked. Despite this difficulty, Dr. Genensky became a pioneer of low vision improvement and designed a system called Randsight that magnifies text 31 times its original size and displays it on a video screen.

Dr. Genensky broke the chains of his poor eyesight and went on to graduate with honors from Brown University, earn a PhD in mathematics, and work as a mathematician for RAND Corp. for many years. It was during his time at RAND that he was able to make his stunning breakthrough.

Dr. Genensky's penchant for innovation started at an early age; in high school he altered a pair of his father's binoculars from World War I to help him read the blackboard in class. It's no wonder that he was able to create technology to help similarly-situated people. Dr. Genensky said that Randsight enabled him to read 130 words per minute!

I think it's simply amazing that a man with such a disadvantage was able to have more success than the average person with full capabilities. Dr. Genensky passed away on June 26th, 2009, but clearly has left a lasting legacy. Not only was he a brilliant inventor, he was a great inspiration!

What do you think of Dr. Genensky's accomplishments? Please post your comments!

Jay Leno may be the predictable, humorless, lisping shadow of the much more talented, suave, and hilarious Conan O'Brien, but that's not the only thing our mega-chinned lackey was lacking. For five years, thejaylenoshow.com domain name did not belong to the veteran comedian and former Tonight Show host. Instead, it was occupied by one Guadalupe Zambrano in order to drum up interest in his real estate page. Fortunately, Jay Leno now has rightful possession of the web address after the World Intellectual Property Organization recently mandated that it be returned to him.

Cybersquatting refers to bad faith registration of a domain name so as to profit from someone else's trademark. To add insult to injury, cybersquatters often attempt to extort money from the trademark holders by offering to sell the addresses back to them. The U.S. Antisquatting Consumer Protection Act was enacted to deter this type of exploitation. Misleading users in an effort to draw them to a particular site is banned by the Act.

The WIPO held that following a 30-year career, Leno had procured common law trademark rights to his name, and gave Zambrano a 10-day window to surrender the web address to Leno. A domain name represents one of the keys to widespread recognition, builds website traffic, and helps to create a natural association between a site and a person or entity.

I'm glad that the WIPO issued a decisive ruling and empowered trademark holders. People who have worked for years to build goodwill in their names deserve protection. Opportunistic cybersquatters should not be rewarded for their deceptive tactics! However, I don't know why this is the only registered trademark with Jay Leno's name. If you know, would you please pass it along to me?

By now, everyone has heard of Byrd and Melanie Billings, the Florida couple who were gunned down in cold blood in their own home in early July, 2009. Not one detail of this sad story is run of the mill as the Billings were the proud parents of 17 children, 13 of whom were adopted and have special needs. Now another puzzling wrinkle has been added to mix; Mr. Billings reportedly copyrighted his children's names and repeatedly alleged infringement.

I know what you're thinking: "Copyrighting a name?! Is that possible?!"

My answer is no. And even if it is, it's doubtful that he would be able to pursue a copyright infringement claim. Copyrights protect an expression of creativity on a tangible medium. I don't care how creative Hollywood parents get with their babies' names--it's not eligible for copyright protection. Write a poem with the kid's name, and now the poem is eligible for copyright protection.

Strangely, Mr. Billings frequently sent letters to the Florida Department of Children and Families, accusing the agency of infringing upon copyrights on his children's names and demanding $100 million dollars in silver coins or Federal Reserve notes. He claimed that the DCF violated copyrights, trademarks, contracts, admiralty and maritime law, the Truth in Lending Act, and committed libel. This story has gotten odder and odder in the days have since the shootings.

Mr. Billings appears to have had a checkered past including ownership of a strip club, alleged involvement in an adoption scam, and associations with disreputable individuals. This has led some to speculate whether the killings were a contract hit. Unfortunately, nothing conclusive has been discovered as to motive.

Despite the darker facts that have emerged, the Billings seem to have been a sweet couple blessed with the wherewithal to take care of several developmentally-disabled children. It's tragic that some of their own colleagues may have been responsible for their murders, and I sincerely hope that the perpetrators are brought to justice and punished to the full extent of the law. I can't fathom such callous indifference to life!

How do you feel about these new revelations? Please post your comments!

Numerous reports have surfaced alleging that the underlying ideas for one of the wildly successful Harry Potter books may not have come from author J.K. Rowling but instead may have been an imitation of a preexisting fictional personality dubbed Willy the Wizard.

Rowling's 2000 fantasy novel, Harry Potter and the Goblet of Fire, is contended to have a striking resemblance to a book written by British author Adrian Jacobs in 1987 titled "The Adventures of Willy the Wizard – No 1 Livid Land." Interestingly, it is claimed that Jacobs, who died several years ago, had unsuccessfully submitted the manuscript for his novel to the same literary agent that currently represents Rowling. Jacobs' estate has commenced a copyright infringement action against Rowling's publishing company, Bloomsbury Publishing Plc.

Copyrights enable authors, artists, musicians, and other composers to guard their intellectual property and deter plagiarism. In the absence of a license agreement or other authorization, the original author has exclusive rights to reproduce or create derivatives of his or her work.

I, for one, hope that the accusations are unmeritorious as Rowling has been an inspiration to many and substantiation of such claims would cast a dark cloud over a series that has entertained millions. Duplicating another's original literary work and passing it off as one's own is tantamount to theft and would be extremely distasteful, especially for a multi-billion dollar franchise such as that of Harry Potter.

What's your reaction to these allegations? Please post your thoughts and comments!

 The Associated Press has reached an agreement with All Headline News, to drop its intellectual property lawsuit alleging that AHN essentially stole AP stories and tried to pass them off as its own. The complaint included misappropriation of news reports as well as copyright and trademark infringement.

The suit was filed in January 2008 in the U.S. District Court for the Southern District of New York and the AP relied heavily on the theory of "hot news." This theory was originally set forth in International News Service v. Associated Press, 248 U.S. 215 (1918), wherein the Supreme Court held that, as far as ownership rights, breaking news may be treated like quasi-property. U.S. District Court Judge P. Kevin Castel ruled that "hot news" could serve as a basis for a misappropriation claim in the instant case, because money, time, and resources were expended to gather this information. This decision was somewhat surprising as most view "hot news" to have limited applicability.

The AP accused AHN of actively copying its news information without a license and rewriting it to appear as AHN's original work. The suit was ultimately resolved in June 2009 and as part of the deal, AHN conceded that it had used AP intellectual property without permission in several instances.

If someone had pilfered my work, I would find out whether they intended on giving me credit for my work, or whether they intended to compensate me for what was rightfully mine! It is unsettling when people try to take credit for someone else's efforts, because it doesn't offer any motivation for creative, hard-working individuals to keep contributing to the public sphere.

Want to insulate yourself from intellectual property theft? Contact an intellectual property attorney to learn how to guard your important business content!

The word patent may naturally evoke ideas of innovative inventions and gadgets. But you should also be aware that patentable subject matter encompasses more than just tangible inventions or machines. It is also possible to patent a process or method.

You can obtain a utility patent for any new and useful process, machine, article of manufacture, or composition of matter. A process is defined as a series of steps or acts to be performed. To determine if a process is patentable, the examiners at the USPTO apply a number of tests, such as whether the process includes laws of nature, natural phenomena, or abstract ideas, which are all non-patentable, or whether the process transforms an article into a different state or thing, which is consistent with patentable subject matter. Previously, the main test was whether a process produces useful, concrete, or tangible results. This standard has been overruled by court rulings.

A process is not sufficiently transformative if it merely involves gathering data into an algorithm, such as conducting clinical tests and determining if any abnormalities exist. On the other hand, a process is patentable if it transforms the raw data into a particular visual depiction for display. In such case, the data is representative of a physical object or article.

For more information about obtaining a patent for your novel and useful process, contact a competent patent attorney.

We all know Apple, the trendy electronics and software brainchild responsible for mesmerizing us with iPhones and iPods. The technology giant hypnotizes us, and we truly believe that without their fresh, avant-garde products, we are not sexy or cool. (*Ahem* Despite their marketing prowess, I still believe I can be sexy and cool as a PC girl.)

What most don't know is how unequivocally silent Apple has been when it comes to disclosing information about its research and development. Despite online advances such as Facebook, Twitter, and other sources for disclosure, the company remains tightlipped with respect to its engineering.

Strict controls are imposed in the name of security to prevent employees from releasing any valuable information and harsh sanctions are in place for those who do. Apple is virtually impervious to leaks and even goes so far as to keep its own employees in the dark; many themselves are shocked when new products, such as the latest iPhone 3GS, are unveiled. The company is also famous for its product plan ruses designed to mislead both outsiders and also its own employees as to the state of certain Apple technology.

Even seemly innocuous information, such as the health of CEO Steve Jobs following a secret liver transplant, is kept under lock and key. Such unwavering devotion to discretion is a calculated business model and is indicative of executives that fully appreciate the high value of intellectual property. However, this secrecy can breed suspicion and give birth to consipiracy theories among consumers. Trade secrets are critical for any business and comprise the essence of brand image and identification, but today's sophisticated public demand the truth and trust in the products they support.

What measures should your business take to protect its trade secrets? An intellectual property attorney can show you how to preserve your sensitive information, and balance a positive brand name image.

Like most other modern business owners, you likely use keyword adverting through internet search engines. Most advertisers use generic terms such as 'massage' or 'furniture' as keywords. However, using the registered trademark of another as a keyword for your product or service may constitute infringement. So if you plan on using a third party trademark in this manner, proceed with caution and observe the tips below.

In case you are unfamiliar with the terminology, keyword advertising involves the advertiser using the services of an internet search engine, such as Yahoo! or Google to attract customers. The advertiser will purchase from the online search service certain terms or keywords that correspond to its products or service. When a potential customer enters the keyword into the search engine's website, they are directed to the advertiser website.

If your advertising efforts result in a likelihood of consumer confusion, you could be liable for trademark infringement. The best practice is to refrain from using another company's name as a keyword. Instead, employ generic terms that refer to your business. If you do use another company's exact name or trademark, avoid using the term in the description of your website. Alternately, make it clear to consumers that another party owns the mark and that you are only using it for advertising or comparison purposes.

When applying for trademark registration with a use-based application, it is necessary to provide information regarding use of the mark in commerce. While the lay definition of 'commerce' is simply business transactions, the legal definition provides specific requirements.

In Federal Trademark terms, commerce refers to that which is regulated by the U.S. Congress. This includes interstate commerce, which is any transaction between states. For example, using the mark in the ordinary course of trade across state lines or out of the country is satisfactory. Other forms of interstate commerce include advertising over the internet because it involves the transfer of information through communication networks that cross state lines and is available to a national audience. In addition, advertising through television qualifies as use in commerce even if produced and broadcasted within one state. This is because television is federally regulated.

Proof of use in commerce is accomplished with a sworn statement declaring how the trademark is used as well as the date of its first use. For more information regarding use in commerce or trademark applications in general, contact a qualified trademark attorney.

 Congress has received a request from the United States Patent and Trademark Office for rule changes to offset ongoing heavy financial losses the agency has sustained. Revenue from patent filing and maintenance fees has been shrinking rapidly and the USPTO has been forced to make budget cuts across the board.

A steady influx of patent portfolios from companies, a substantial backlog, and internal red tape all have contributed to diminishing returns. Annually, the USPTO receives approximately 450,000 applications which must be analyzed and then either granted or rejected by one of 6,285 patent examiners.

The USPTO has approached various congressional committees for appropriations and suggestions on how to address its shortfalls. Ominously, USPTO surveys have revealed that patent attorneys and companies believe that the USPTO's economic condition may deteriorate further.

The agency looks to improve efficiency and bolster operations as President Barack Obama recently nominated David Kappos to be the new Under Secretary of Commerce for Intellectual Property and Director of the USPTO. Kappos currently serves as IBM vice-president and assistant general counsel for intellectual property.

Kappos has been a patent-reform advocate, lobbying for higher-quality patents and a reduction in excessive patent litigation. Hopefully this new director will implement new, cost-effective strategies and steer clear of such knee-jerk reactions as increasing patent fees.

Will the USPTO's monetary woes affect the progress of your patent? File early with the help a thorough patent attorney to avoid potential delays and higher expenses!

Popular social networking website Facebook implemented a new policy effective as of June 13, 2009 enabling users to register URLs for their usernames. What this means is that a Facebook user may register, for instance, www.facebook.com/pepsi as the address for his or her profile. The registry process is a first-to-register system awarding a specific username to whomever requests it the earliest.

Users with no connection to, or legal permission from, registered trademark owners may seek to register existing trademarks on Facebook and preempt the registered trademark owners from obtaining their rightful usernames. An association of your trademark with an unrelated profile, especially on a platform as prevalent as Facebook, unfortunately can have detrimental consequences for your product, service, and/or brand image.

My firm has used its own trademark on its Facebook page. It is "www.facebook.com/WoodAtterWolf." I would be incensed to know that other law firms might be using our trademark to direct traffic away from our profile, towards themselves, and I would certainly take measures to stop this infringing use.

Facebook has included some limited safeguards but the onus is on the registered trademark owners to actively ensure that misuse does not occur. If you have discovered infringement, Facebook provides a link to report unauthorized use of your trademark to them.

I am curious as to ICANN's (the Internet Corporation for Assigned Names and Numbers) role in this subject. ICANN has adopted several domain name dispute policies, including the UDRP (Uniform Domain Name Dispute Resolution Policy) for its accredited registrars. My guess is that many Facebook users who use another's trademark name for their profile will find themselves tangled up in a domain name dispute resolution procedure. This could be a messy situation, since there are many complicated and intricate rules even under the UDRP.

Unsure of the implications this development may have on your registered trademark? A trademark attorney can inform you of all the potential ramifications.

The recently deceased superstar was known by many names: the King of Pop, M.J., Jack-o, and the list goes on. We also recognize him either as a dark-skinned cherub-faced child or a pale, middle-aged man with over-processed facial features. Why don't we also know him as an Intellectual Property Goldmine? Love him or hate him, the supremely talented character was a genius when it came to securing various forms of intellectual property during his long and decorated career as an artist and performer. Michael Jackson brilliantly relied on copyrights, trademarks, and even patents to protect his work, and was an avid collector of others' proprietary works.

Jackson registered his name with the U.S. Patent and Trademark Office and held a multitude of trademarks ranging from performances to merchandise to fan clubs. Even for a personality as distinctive as Jackson, trademarks played an important role in further distinguishing him from others.

Not only did Jackson guard his own work and attributes, he even acquired copyrights to other music. He owned a 50 percent stake of Sony/ATV, a joint venture which controls publishing rights to two hundred and fifty one Beatles songs. Jackson famously outbid Paul McCartney to purchase the song-copyright catalog in 1985. Today, Sony/ATV is estimated to be worth upwards of $1 billion dollars.

Amazingly, Michael Jackson even patented his very own invention, a method and means for creating an anti-gravity illusion. The patent features a shoe interfitting with a peg protruding from a stage and enables a wearer to lean forward at a 45 degree angle to the floor without falling. It certainly appears to be unprecedented for a musician to have obtained a patent himself.

Universal Music Group, the copyright holder of Prince's song, "Let's Go Crazy," earned over $6.9 billion in 2007. In February of that same year, toddler Holden Lenz was lucky to take 6.9 steps on his own two feet. But that didn't stop Universal from suing Holden's parents for copyright infringement, when they posted a 30-second video on YouTube of the baby bobbing to "Let's Go Crazy," playing faintly in the background of their kitchen in Pennsylvania.

Long before the tot could sing a nursery rhyme, his case set a precedent in federal court. The Northern District of California interpreted the Digital Millenium Copyright Act (DCMA) as requiring copyright owners to conduct a good faith evaluation of alleged infringement to consider fair use of the work, prior to sending takedown notices to websites like YouTube. Failure to do so could expose the owner to damages. This case essentially placed the burden of preventing online copyright infringement back on the owner.

The DCMA establishes safe harbors for internet hosts, so that they are not liable for the infringing acts of individual website owners or public posts on websites. Online companies like Facebook, MySpace, and YouTube enjoy the benefit of this safe harbor if they expeditiously remove allegedly infringing material, upon receiving a Takedown Notice from the owner. The online company then must notify the posting party, so that he can send a counternotification that he believes, in good faith, that he is not infringing. Unless the owner filed an infringement suit against the posting party, the online company, obviously caught in the middle of this war, then has 14 business days to restore the material on their site.

Because the Takedown Notice is relatively easy to send, and it starts such a flurry of burdens on online companies, the Lenz case requires copyright owners to do their due diligence to first determine whether there has been fair use of their material. Otherwise, the copyright holder faces liability for misrepresentation.

While strict copyright laws are intended to promote creativity, by protecting the rights of those who express creativity on a tangible medium. Although initially counterintuitive to place the burden back on copyright owners to perform due diligence investigations on alleged infringers, this requirement may, in itself, promote creativity. Lenz's attorney, Corynne McSherry argued that people who post on online sites "create a new and more vibrant public sphere," and that these posts should not be discouraged.

I absolutely agree with McSherry. I am one of millions of Facebook junkies. My friends' videos, photos, and posts are what make Facebook so intriguing (and addictive). The fair use of copyrighted material becomes a springboard for my friends' own creative works. Without my friends' contributions, the allure of Facebook would literally fade away.

What do you think? Read more about this story in an article by the ABA Journal. I'd love to hear your comments--contact me to discuss!

In 2008, a California appeals court decided that even if a patient is harmed by a manufacturer of a generic drug for failing to warn consumers of possible side effects, the manufacturer of the brand name equivalent could still be liable for negligent misrepresentation.

In Conte v. Wyeth, Inc., the plaintiff, Elizabeth Conte, was prescribed Reglan for acid reflux. The generic equivalent is metoclopramide. After using the generic version of the drug for four years, she developed tardive dyskinesia, a neurological disorder. The condition is associated with tremors and involuntary twitches. Judge Peter Siggins reasoned that name-brand drug manufacturers know or should know that doctors would prescribe the generic equivalents, and the brand name manufacturers thus must educate doctors and consumers about possible side effects of the drugs, regardless of which version is ultimately prescribed.

It is important to note that the manufacturers of the generic drugs are not absolved. They simply now share liability with their brand-name competitors.

Warez is a term internet users created that refers to illegally downloaded copyrighted works. It likely originated from the plural of "software" as such groups often use specialized computer programs and servers to transfer large amounts of data, such a music and digital films.

Illegal downloading is a serious crime in the United States. In fact, I discussed the harsher penalties recently imposed by President Bush in the Pro-IP Act of 2008.

A Federal Court of Appeals recently upheld a 30-month sentence for downloading copyrighted works through a warez group. The defendant was guilty of illegally downloading films and music from the Czech Republic.

In this case, the defendant was indicted under a Federal statute for willful copyright infringement by reproducing or distributing during a 180-day period at least ten copies of one or more copyrighted works with a retail value of more than $2500. Even though the defendant had no criminal record and did not benefit financially from the activity, a federal judge determined that the prison sentence was reasonable.

All things considered, it is a good idea to be aware of the downloading activities on your computers or networks. According to federal law, many people may qualify for harsh penalties, including some very hard time.

On August 1st of last year, Copyright Office fees changed. While basic electronic filing will still be $35.00 per claim, the fees for form CO filing (which is filed electronically, printed out, then mailed to the Office) will jump to $50.00. Paper applications for published photographs will increase to $65.00. Currently, the fee for form CO filing is $45.00 and the fee for a paper application for published photographs is only $45.00. The Copyright Office stated that increased fees for paper applications are associated with the higher cost of processing them.

A copyright protects the expression of your original works of authorship including literary, artistic, or musical compositions and sound recordings. For example, if you register an original set of song lyrics, you can prohibit others from reproducing them without your express authorization. In this manner you may be able to charge royalties in exchange for such authorization.

The change in fee structure may seem slight. However, in light of the current economy, any future increase in registration fees should provide you with the necessary reason to expedite your copyright application and submit it before the changes take effect.

My advice? Get your copyright applications filed before the fee changes! Don't forget to contact a good copyright or intellectual property lawyer to assist you.

Are you a college or graduate student with a good idea for a new invention? Check out the Collegiate Inventors Competition. The competition has recognized, rewarded, and encouraged hundreds of inventors worldwide since 1990. To be eligible, you must either be a graduate or a college student, or have been enrolled as such in the past 12 months.

An entry shall include a model of your invention that is complete and workable. The invention must be the original work of the applicant and cannot have been made available for public use or patented more than one year prior to submission. Entering the competition does not constitute a public disclosure. Two winners will receive cash prizes of $15,000.00. Additionally, 12 finalists will each win a $2,000.00 cash prize and an all expenses paid trip to present their work to a panel of judges.

Even if you miss this year's competition, you still need to protect your invention! Do a patent search to see what other inventions are similar to yours. It might be in your best interest to file a patent application, to prevent others from using your methods to build your invention. Schedule a consultation with a patent attorney to discuss your legal rights.

If you have a successful business, you may want to consider expanding through franchising. By franchising, you can grow larger and faster because the franchisees provide the funds for the growth, not you.

One important issue to consider before franchising is whether you have developed a strong trademark for your business. This is crucial because a strong trademark delivers a consistent message to consumers about your franchise's products and services. Franchisees will pay higher royalties for a franchise like Subway, which has a nationally reputed trademark, than they will for a franchise with little or no consumer recognition.

In the very least, be sure to register your trademark before franchising. Registration provides a presumption that your trademark is valid. This will facilitate any claim of infringement in the unfortunate event that one of your franchisees attempts to improperly license or use your trademark.

A strong trademark is a term or phrase that does not merely describe the goods or services. Rather, strong trademarks require imagination, thought, or perceptions to link the mark with the provider of the goods or services. Such marks may suggest the quality of the goods or services, or may not have anything at all to do with the goods or services. For example, Greyhound might imply that a bus line provides fast transportation. Apple, on the other hand, may have nothing to do with a line of computers.

In an earlier post, it was stated that an inaccurate declaration of use on a trademark application would amount to fraud unless corrected before registration. According to a recent Trademark Trial and Appeals Board case, however, such inaccurate statements of use can be cured even after trademark registration.

If the registrant corrects the false statement prior to any challenge to the registration, it creates a presumption against fraud. This means that if the challenging party produces no other evidence to support registration fraud, the registrant will be found not-guilty of fraud. This decision provides a positive direction for future trademark registrants, even though it is not binding and therefore not mandatory authority. The option to cure a statement that has the potential to incur liability of fraud is a benefit to the trademark owner. Many future owners are initially unsure about the exact intended use of their mark. As a result, a common practice is to overstate such declarations of use because an understatement will likely lead to insufficient trademark protection.

Don't take a chance with your trademark application! Have a competent trademark attorney prepare or review your application.

It's one thing to have a patentable invention, but it's quite another to have a valuable invention. Before seeking a patent, or if you already own a patent, before selling or licensing the rights, it is important to ascertain its monetary value. That way, you will be able to make better decisions regarding whether or not to invest in a patent. Additionally, knowing how much your invention is worth enables you to negotiate more effectively with potential buyers. Practitioners use the following factors to assess the value of a patent.

Is there a market? First determine if anyone would be willing to purchase your invention. To do this, identify whether or not consumers actually need the product. You might accomplish this through personal experience, if the idea for your invention was born out of necessity, for example. This is usually only effective if the situation giving rise to such necessity is common to other people. If a market exists, determine its size. For example, try to figure out if the invention would serve a specialized niche of consumers or a broad base.

Are there comparable products? Another factor is to identify any comparable products already on the market. What are the other products' price points, and does your invention offer something new? For example, your invention may solve a problem in a specific area in which other similar products already exist. Highly valued products are those offering significantly more benefits than the competition.

Has this ever happened to you? You come up with a great idea for an invention. But before giving any thought to getting a patent, you contact a company and offer to sell your lucrative and profitable idea. Have you forfeited your rights to patent the invention? How do you disclose a proposal without forfeiting ownership?

You may still be able to patent your invention. The patent application will require proof that you came up with the idea first. One way to establish you are the inventor is to provide evidence of correspondence between you and the company discussing the idea.

However, a more effective method to avoid forfeiting a claim to an invention is to plan ahead by filing a provisional application for patent. A provisional application grants an earlier filing date as well as "Patent Pending" status to be used when disclosing your idea. Protection lasts up to 12 months from the filing date and is a relatively inexpensive investment. Thus, you are able to disclose your invention to potential buyers without fear of it being stolen and without the higher application costs associated with non-provisional patent applications. Before the 12-month period lapses, you can either allow the pendency status to expire or convert the provisional application to a non-provisional application, which will provide the benefit, if the application is granted, of being able to sue for patent infringement.

You can protect your secret formulas, recipes, or processes through trade secret law as long as the information at question is valuable to your business and you keep the information secret. But what measures do you have to take to maintain secrecy?

The Florida Uniform Trade Secrets Act, which governs trade secrets in Florida, only requires the information to be subjected to efforts that are reasonable under the circumstances to maintain secrecy.

One of the more famous cases that concern the maintenance of trade secrets is that of Coca-Cola. As you may be familiar, the secret formula for Coca-Cola is known to only a handful of senior executives. Each recipe holder must swear by oath not to disclose the secret recipe. This inclusive group appoints a successor when one of them dies to ensure the number of individuals with knowledge of the Coke formula remains constant. Finally, the designated executives are not permitted to travel together because a single accident might eliminate the formula's existence.

Another case involved KFC's extreme measures taken to protect their recipe from being stolen, during its relocation.

Surely, you do not have to go to these extremes to protect your trade secret. Secrecy is the main requirement. Therefore, you can maintain secrecy simply by not disclosing your information. You can accomplish this by keeping written documents, such as recipes, in a secured environment such as a safe or even a locked drawer. Also, if you must disclose your information, to essential employees for example, be sure that you use a confidentiality agreement or have them sign a non-disclosure form. Furthermore, if you wish to protect a website source code, you can prevent Internet users from viewing the code.

I disclosed the secret to preserving trade secrets in an article published by the Jacksonville Business Journal; read to find out more!

If your employer assigns you the task of producing a creative work, such as a photograph or a collage for advertising purposes, do not automatically assume you will own the intellectual property (IP) rights or even receive credit for it.

The employer usually owns the IP rights to anything made in the "ordinary course of employment." This is known as the work-for-hire doctrine. As with most legal concepts, the doctrine defines the "ordinary course of employment" in a very precise manner, reducing it into factors to be considered together. One factor is whether or not the work is produced during company time or with company resources. Another factor is whether either party takes action to indicate ownership of the intellectual party. Finally, a third inquiry is whether the work is included in the employee's job description. Projects that are within the employee's job description are likely considered works-for-hire.

However, you can still retain IP ownership over property created in the ordinary course of employment by executing a written agreement with the employer. Negotiate with your employer so that the terms of the agreement are clear and all parties involved are aware of expectations and responsibilities. Retaining such rights is important because IP licensing can be highly profitable.

If you have thought about engaging in creative endeavors for your employer, consider whether the product is going to be a work-for-hire. If you are unsure about your rights, or wish to retain certain rights with the ability to license, contact me for advice regarding negotiations and drafting the written agreement.

KFC. Coca-Cola. Pepsi. What do these companies have in common? Their success depends largely on a secret recipe or formula. If your business is built upon such a recipe or formula, then you may have considered protecting your information as a trade secret.

In Florida, the Florida Uniform Trade Secrets Act governs trade secrets. A trade secret is defined as information that is subject to efforts to maintain secrecy and derives value from not being generally known to other persons who could obtain value with it. See my advice for trade secret holders, in the Jacksonville Business Journal.

As mentioned earlier, a trade secret offers legal protection such as damages or an injunction. Unlike trademarks or patents, trade secret protection does not require a formal registration. To gain protection, you must generally follow three guidelines: the information cannot be generally known to the public, the information must be valuable to your business, and finally, you must take reasonable measurements to protect the secrecy of the information. Your trade secret may last as long as you protect it.

Want more information about protecting your trade secrets? Contact me, and I will be happy to give you a consultation.

Perhaps the most important question in the patent process is "Do I really need a patent?" In the excitement of innovation, it is easy to prematurely opt for a patent. On the other hand, you may have a marketable invention and not even realize it. To answer the question above, consult the factors below.

Does your idea have value? Before applying for a patent, it may be wise to determine if the proposed invention or system will be of any value to consumers. A patent prohibits others from copying your invention but does not guarantee that you will make any money from it.

Do you thoroughly understand the market implications of the invention? Patent applications are sometimes created so narrowly that they fail to protect future market applications. Before seeking a patent, consider all the possible uses for your product or system as well as the possible ways to market it. This will assist your attorney in drafting a patent that protects your interests both in the present and in the future.

How much are you willing to invest? In exploiting an invention, the patent application fees are but a single step in process. Consider the available resources needed for the entire project. In addition to obtaining a patent, you may also need to develop and execute a marketing plan and a manufacturing plan if the invention involves physical products.

If you have considered obtaining a patent, contact an experienced intellectual property attorney for advice regarding how to proceed or whether another form of protection is more applicable.

You may be familiar with Octomom, the Florida woman who recently gave birth to octuplets, but have you heard of Octomom the brand? Nadya Suleman, "affectionately" nicknamed "Octomom" by the tabloid media, recently applied to the USPTO to register the nickname as a trademark for use with clothing and disposable diapers. The application presents some interesting issues.

Commentators say the term "Octomom" is probably capable of functioning as a trademark as long as it is used to identify a brand or a source of goods or services. Others contend that trademark examiners will think otherwise. The application includes a section stating the "mark identifies Nadya Suleman, whose consent(s) to register is made of record." Such a statement may cause her mark to be perceived as identifying a person, rather than products or services.

In the same light, even if Suleman was to trademark her own name, surnames usually receive the same treatment as descriptive marks under trademark law. Therefore terms that include a name, "Jones Cosmetics" for example, are not protectable without a secondary meaning. Suleman has not established a secondary meaning for her name or nickname, because she has yet to use the term in commerce to identify clothing or disposable diapers. It is likely that the USPTO may require her to offer proof that the name has a reputation connected with the listed goods and not merely to her.

If you have considered obtaining a trademark for a brand that contains a name, contact an experienced trademark attorney for advice regarding secondary meaning requirements.

If you have registered a trademark for your business, you may have also thought about using your logo with promotional merchandise. Many trademark holders increase brand awareness by affixing their mark to hats, t-shirts, or mugs. There are different methods of ensuring that the logo retains its protected status while you use it in this manner.

The best way to protect the mark is through registering multiple classes on the trademark application. For example, in addition to stating the mark will be used in connection with your particular goods or services, also indicate the mark will be used with classes that include promotional items such as t-Shirts, Class 25, and coffee mugs, Class 21.

In the alternative, if money is a concern, you may enforce your mark without registering for additional classes. Common law trademark rights can prevent others from using your mark in a particular region, with specified goods or services, if you are already using the mark. Because federal registration can cost anywhere from $275 to $ 325 per class, common law enforcement may be a more economical choice for business promoters with limited start-up capital. However, while common law rights protects the mark, they do not provide the same presumption of validity and ownership as federal protection.

If you have any questions about obtaining a trademark, or about common law trademark rights, contact an experienced trademark attorney.

Controversy surrounds a future Washington D.C. memorial dedicated to the late Dr. Martin Luther King Jr. The Martin Luther King Jr. National Memorial Project Foundation, a nonprofit organization, arranged the construction of the memorial and is paying for it through private fundraising efforts. The Foundation will transfer the memorial to the National Park Service upon completion. Dr. King's descendants charged the Foundation nearly $800,000 in licensing fees for the use of his words and image in the fundraising materials.

In response to the royalties payments, critics have blasted the King family for "profiteering." One professor even stated, "any family would be so thrilled to have their forefathers celebrated and memorialized in D.C. that it would never dawn on them to ask for a penny."

Those criticizing the King Family fail to acknowledge they have a right of publicity. In the past, when commercial merchandisers or publishers used Dr. King's words or image without permission, the Kings sued for their share of the income. The right of publicity is a common law doctrine, which allows an entity to charge royalties for, or prevent altogether, the commercial use of a protected name, likeness, or personality. Unlike copyrights or trademarks, the right of publicity does not expire after a certain number of years or death of the property holder. Rather, the right is descendible to the holder's heirs and lasts as long as it is enforced.

To date, the King Family has not charged for the actual memorial because it only features public domain materials, which are not protected and can be used by anyone. The Foundation may be liable to the Kings for future fees, however, if it uses words or quotes that fall within the Family's property rights. Some argue against this because the memorial will be given to the government, not a commercial entity. However, the King's should be permitted to charge at least a nominal fee in order to maintain their right of publicity.

In response to businesses' growing frustration with the limited availability of simple internet domain names, the Internet Corporation for Assigned Names and Numbers (ICANN) plans to sell new top-level domain (TLD) names.

Domain names have historically ended with these popular TLDs: .com, .net, and .edu. Currently, there are only 21 TLDs. ICANN proposes to make "personalized" TLDs available to any business with $185,000. Allowing a business to have their name become the TLD opens up an enormous, and possibly endless, combination for domain names. For example, a famous fast food chain can end their domain name in ".mcdonalds." Subdomain names for the TLD can also be available to identify a particular business, like "bankofamerica.bank."

The availability of personalized TLDs will become a nightmare from the intellectual property enforcement standpoint. The increasing number of domain names means additional time and money to monitor misappropriation, and to protect customers from infringers.

In attempting a preemptive strike against infringers, ICANN proposes that it will review applicants who must argue why they should be awarded a particular TLD. Grounds for rejecting an applicant include: having a TLD that is confusingly similar to another, pursuing an immoral TLD like .xxx, or seeking a culturally or politically insensitive TLD.

As the economy undulates up and down, many people seek ways to cut costs. Inventors are no exception. If you are thinking about registering a patent, consider the following tips to help reduce the application fees, which I also share with my patent clients.

Be up-front. Provide your patent attorney with a complete and detailed description of the invention early in the application process. This reduces the need for later revisions, which increases costs. Attorneys often charge based on the amount of work performed. Therefore the total application price may increase if there are numerous updates and revisions. For instance, I usually charge a flat rate for preparing the application, but any work that needs to be done after that is completed on an hourly billing rate.

Be knowledgeable. Patent attorneys are experts at intellectual property law, but they may not be as well versed in the subject matter of your invention. It is therefore crucial that you provide them with enough of this information to complete the patent application. Giving your attorney sufficient information about the particular field of science or engineering relevant to your invention eliminates the need to engage in extensive research, which may also drive up costs.

Be complete. Before applying for a patent registration, have a complete idea, with sketches or drawings of your invention. Adding new features and alternate embodiments after the attorney has already drafted the application can further impact costs. While you do not need a prototype to file an application, I usually advise that my clients build a prototype. Seeing the invention in action and testing it often reveals features that need tweaking and improvement. It can be costly to add these updated features once I have filed the patent application.

What do these tips have in common? Communication. As with many attorney-client relationships, it is important to be open with your attorney. In any event, your patent attorney will likely let you know if you have provided sufficient information or if more information is needed.

While many people avoid hiring an attorney by filling out one-size-fits-all legal forms, if you plan to file your own trademark application, you may want to reconsider. Assistance from a trademark attorney is a wise investment.

Each and every field on the trademark application form has legal significance. That is, every entry defines legal rights, and an inappropriate entry may grant or deny an unintended legal benefit. Often, trademark owners commit several common errors while filing their own application, such as not selecting the proper filing basis or submitting an improper specimen. Another mistake is filling out the application by seeing how colleagues have completed theirs, or filling it out "the way I always do." Cookie-cutter answers are not always appropriate for a new trademark application.

Further, trademark owners may declare that they have used a trademark in commerce when, in fact, they have not. In trademark law, commerce refers to use across state lines. Because the Trademark Examiners do not always verify whether this requirement is met, your registered trademark may, in fact, be invalid and unenforceable.

Have a trademark attorney help you file your application. A good attorney should sit down with you to discuss your trademark, and the best way to maximize your legal rights by properly filing your application.

Congress is in the process of enacting new patent legislation that would introduce a first-to-file system, a significant change to current United States patent law.

If the amendment passes, the effective date of an invention will be the date the application is filed instead of the date of actual invention. Currently, the United States is one of the few counties to follow the first-to-invent system. Under this system, inventors apply for patents after first conceiving an idea then diligently reducing it to practice, which can be achieved by building a prototype. The effective date is determined by the date the inventor conceived the idea.

The first-to-file system is not without its critics. The main critique is that the system is unfair to the small independent inventor because it lends an advantage to well-funded corporations, which have sufficient capital to win the race to the Patent Office. This argument is based on the notion that independent inventors often create their inventions before investing in a patent application. On the other hand, large companies are able to file multiple applications first, and then proceed with the most workable ideas.

Many of my clients are independent inventors, who tinker with inventions as a hobby. For this reason, I affectionately refer to them as "garage inventors." I oppose a first-to-file system for patent applications procedures, because I do believe that it would unfairly prejudice garage inventors. This certainly would discourage them from continuing to contribute their innovations and ideas to this country's economy.

In order to register your trademark with the USPTO, you will need to submit a specimen. You may have heard this term or read about it, but what exactly does it mean? Also, what is the proper way to submit a specimen for a trademark application?

First of all, a specimen is "an actual example" of your mark being used in commerce or with the identified goods or services. This is more than a drawing of your mark.

For trademarks used with goods, a specimen is an example of the mark with the actual product or packaging. This includes tags or labels, containers, displays, or simply a photograph of the product bearing the mark. Invoices, brochures, and other documents are generally not acceptable forms of specimens for goods. However, such materials may be sufficient for service mark specimens.

For service marks, a specimen should show the mark used in conjunction with sale or advertising of the service. Examples include, signs, brochures, business cards, or stationary. The only requirement is that the document containing the mark also references the nature of the service. For example a business card bearing your mark along with the phrase automobile detailing service is sufficient.

In any event, your specimen should not include the actual product (or service for that matter) and must be either flat and no larger than 8 ½ by 11 inches if filing by paper application or contained in a digital JPEG image if filing electronically.

For questions regarding protecting your works of authorship, contact an intellectual property lawyer today.

Wood, Atter & Wolf recently hosted an exhibit at the 2009 Business & Career Expo, hosted by the Jacksonville Regional Chamber of Commerce at the Prime Osborn Convention Center. Admission was FREE to the public!

We showcased Trademark and Franchise law with Alpha Growth Strategies, who are experts in business development and franchising. Together, we featured legal and business consultations regarding trademark registration, licensing, and business/franchise evaluations.

The Expo featured 250 exhibits, and attracted over 1500 people. For more information on next year's event, contact us.

I recently gave a seminar entitled, "From Emblems to Empires," which teaches business owners how to use trademarks to produce, protect, and promote their business. In line with the business growth topics, Franchise Law professor and former restaurant franchise CEO, Jim Cataland talked about the characteristics of a franchisable concept. Bill Saccula, president of Alpha Growth Strategies, told us about businesses that are making the transition into becoming a franchise operation.

The event was held at Havana-Jax in Jacksonville, Florida. There was a networking mixer and heavy hors d'oeuvres were served. Admission was $15.00, but free for members of:

- JAAA (Jacksonville Asian American Alliance)

- IndoUS Chamber of Commerce of Northeast Florida

- Puerto Rico Chamber of Commerce of Northeast Florida

The event was a great success; hope you can make the next one.

When does a fan's admiration become copyright infringement? This question was at issue when J.K. Rowling, author of the famed Harry Potter novels, filed a complaint against Steve Vander Ark, a fan of the series. In ruling for infringement, a federal judged enjoined Ark from publishing his book, "The Harry Potter Lexicon" and awarded Rowling monetary damages.

Prior to writing the book, Ark created a website, also called "The Harry Potter Lexicon." The website defines and cross references characters and elements from Rowling's novels in addition to providing updates about Harry Potter film releases and events.

During the lawsuit, Ark defended his position with fair use. Fair use is a legal defense that allows an author or artist copy a limited amount of preexisting material, without permission, for incorporation into a new work.

However, the judge determined that the Lexicon was a mere compilation of Rowling's copyrighted work and did not qualify as a new expression for the fair use defense. Other examples of compilations include "Best Of" albums such as Best Hits of the 1980s. Generally, the creators of such compilations must either own the rights or have authorization to use the individual works.

I'm sure you noticed this artistic image of Barack Obama during the 2008 Presidential Election. Street artist, Shepard Fairey, created it and based the work on an Associated Press photo found on Google Image. Now, AP claims that the artist copied their photo without the "required permission." Is this an example of copyright infringement? For now, the parties' attorneys are not disclosing much information; however Fairey's lawyer has brought mentioned the doctrine of fair use.

Fair use is a legal defense to avoid copyright infringement liability. It is not an exact rule; rather, it weighs various factors: the purpose and character of the use, the nature of the work that was copied, the amount the copyrighted work was copied, and the effect of the new work on potential markets for the copyrighted work.

Fairey's poster features a portrait of Barack Obama looking into the distance and splashed in red, white, and blue. At the bottom is an underlined word reading, "HOPE." Fairey said he made the picture specifically for the campaign after being requested to do so. However, the Obama campaign was hesitant about using an image to which they did not own the rights. Although the image was never officially used by the Presidential campaign, supporters distributed copies of the popular image at rallies and posted it on their websites

Now that the election is over, Fairey's work will be displayed in an art exhibit at the Institute of Contemporary Art in Boston as well as an exhibit at the National Portrait Gallery in Washington. The work is also being published in various books pertaining to the 2008 Election.

If you are an artist and wish to create a piece of artwork based on previous work, you may want to first consider getting authorization from the original owners. You can be sure that the details will be negotiated. Our law firm not only does trademark registration, but also negotiates licensing deals, drafts cease & desist letters, and is well-equipped to litigate a dispute. If you need assistance in these matters, contact us.

There is a new way to stay informed of the news and notices from the United States Patent and Trademark Office by using an RSS feed. Now, instead of constantly checking the Official Gazette and Federal Register Announcements, you can receive real time updates on your email homepage.

RSS, or Rich Site Summary, is an information format that allows you to receive updates as they are published. You can use a favorite web mail homepage or an RSS feed reader to receive multiple lists of information by "subscribing" to each source. For example, with your Yahoo or Google homepage, you can get the latest headlines from the New York Times as well as recent blog entries from your favorite blog.

You can also subscribe to the Trademark Lawyer Blog by clicking the Subscribe icon on this page.

What happens to your intellectual property when you share it on a social network such a Facebook? For a short period of time, user content such as photos appeared to belong to the website.

Recently, Facebook briefly changed its terms of service. The new terms appeared to claim ownership in the intellectual property rights of any user content you uploaded, even after you deleted your account. Critics claimed that under this version of the terms, Facebook could potentially use your photos for commercial purposes or prevent you from doing the same.

After protest from users, Facebook CEO, Mark Zuckerberg, reverted back to an original version of the terms of use. The language granting Facebook such extensive ownership of your content appears to be absent. Zuckerberg stated in his blog that it is necessary to have some license over user content in order for the network to exist.

The team at Facebook is now in the process of drafting new terms of service that is more user friendly and easier to understand. Facebook users are encouraged to provide ideas for the new document. Read more about this topic here.

You may have seen advertisements wherein one brand name compares its product with that of its direct competitor. Such ads point out key differences between the products while displaying the competitor's trademark. You may have wondered how an advertiser can use another company's trademark without being liable for infringement. Also, if you own a business, you may have wondered if you are permitted to use your competitor's trademark in your advertisements.

Comparative advertising is widely used and even encouraged in the United States because it relays more information to consumers, enabling them to make better choices. If you plan to engage in comparative advertising, however, you should be careful to use the competitor's trademark in a way that is accurate and non-deceptive. You should also show that the products sold under the competitor's mark are different form yours. Also, do not give the impression that the competitor endorses or supports your product. Finally, in displaying the competitor's trademark in your advertisement, do not alter their logo or name in any way, and remember to include the proper designation such as "TM" or "®."

The most popular form of comparative advertising is when a product is "compared with other leading brands." Other brand names are not specifically identified, therefore avoiding allegations of improper use of the marks.

Another form of comparative advertising actually involves permissive use of the competitor's brand name. For example, if Cheer laundry detergent wanted to compare their product with Tide, Cheer may agree to pay Tide for permission to use the Tide logo.

It is possible to have a federal trademark, state trademark, or both. You can register a mark with the United States Patent and Trademark Office to obtain a federal trademark. By registering with the USPTO, you may protect your mark from infringement throughout the United States for a fee of $275.00 per class of goods or services. On the other hand, you can register your mark through The Florida Department of State, Division of Corporations to acquire a state trademark. In this manner, you may protect your mark from infringement in the State of Florida for a fee of only $87.50 per class of goods or services.

Why register in both? In the event of infringement, you can seek remedies under both the federal and state laws. I recommend filing both federal and state applications if your competition in your industry is fierce and lucrative. An example of this would be the technology industry, especially prior to the ".com" bubble bursting.

You must, however, qualify to file for a trademark registration. Be sure that your trademark qualifies for registration before paying the filing fees, since those are non-refundable.

Congratulations to Doctor Easy Medical Products! They recently registered trademarks for a name and logo with the Florida Department of State, Division of Corporations. They registered the same trademark and logo with the United States Patent and Trademark Office in November 2008.

The Elephant Ear Washer and logo depicting a blue elephant spouting water from its trunk identifies a product that Doctor Easy produces. The product is an ear-washing device, which incorporates a pump spray bottle and a plastic "elephant trunk" tube that is long and flexible.

Have you considered registering a trademark? Before seeking federal or state registration, you may want to determine the geographic area you'll use the mark and how much you are willing to pay for the application fee. For a federal registration, filing fees are $275 per class of goods/services. For a Florida registration, filing fees are $87.50. Filing fee costs differ from state to state.

For more information on state and federal trademarks, contact a trademark attorney.

If you are a trademark applicant or registrant with the United States Patent and Trademark Office, be weary if a company contacts you offering services such as trademark monitoring or document filing. Such companies may appear to be affiliated with the USPTO and often request fees for their services. They usually send official looking communications that include personalized information like your trademark file number or the name of your mark. Such items are public information. Do not be confused as these companies are not government entities. They merely attempt to profit from public naivety. In a recent news article, the USPTO has warned that it does not provide such trademark services and is not affiliated with any such companies that do.

Further, if you have employed an attorney to file your trademark application, then you should not receive any correspondence from the USPTO. Your attorney acts as your agent in dealing with trademark matters. Therefore, all USPTO communications should go to your counsel.

If a company or organization that appears to be affiliated with the USPTO has contacted you or requested fees, you may file a complaint with the Federal Trade Commission.

If you have any questions regarding the trademark filing process, or are unsure if you have received a communication from the USPTO, contact an experienced trademark attorney.

Small businesses rely on their proprietary assets, and many of these business depend on global transactions. However, less than one fifth of these businesses realize that their federal trademark and patent protections are limited to the United States. Are your IP assets protected abroad?

Without a doubt, profits fall prey to overseas counterfeiting and piracy. Counterfeiting is the creation of imitation products while piracy involves the unauthorized use or reproduction of software.

Stopfakes.gov is a great resource to help determine whether you should seek international protection. The website features different tool-kits to educate business owners about intellectual property (IP) protection in various foreign countries. Also included are instructions for filing a compliant against international infringers.

Strategy Targeting Organized Piracy (STOP) is part of a government effort with a two part objective. The first part is to strengthen IP enforcement throughout the world. The second part is to prevent IP crime throughout the world. STOP, along with other government organizations, provide protection to domestic businesses by regulating U.S. boarders and preventing the importation of counterfeited products, for example.

For more information on international trademarks or patents, contact a trademark attorney who understand the need to work closely with IP counsel abroad.

Worthington Millwork, based in Jacksonville, Florida, specializes in the design of architectural columns. Their website features a user-friendly approach to custom-designing columns; clients use the "3-Step Column Builder" to chose the base, column, and capital combination.

In addition to receiving trademark registration for their logo earlier this year, the company has recently been issued a Certificate of Trademark Registration from the U.S. Patent & Trademark Office for their name: Worthington. The mark consists of standard characters without a claim to any particular font, size, style, size, or color. This means that parties intending to use the name in any context--for example, over the radio, in different colors, or different fonts--will have to receive permission from Worthington Millwork.

Trademark registration includes many benefits such as the right to file a Complaint in federal court. By registering their name, Worthington has ensured that others will not be able to use it in the same class of goods or services. Improper use would lead to customer confusion and Worthington would have the power to take legal action. Thus trademark registration protects the company. Registration also protects the consumer by discouraging impostors from marketing inferior goods or services under the same name.

Are you interested in registering your company name or logo? Contact a trademark attorney for advice and help with the process.

"You got the right one baby!"

"The breakfast of champions"

"Reach out and touch someone"

These are slogans that identify Pepsico, Wheaties, and AT&T. Slogans and jingles can add enormous value to your business or brand by generating consumer good will and awareness. Not only will customers associate the slogan with your product or service, but the slogan may also evoke positive feelings. How many times have you had Mazda's "Zoom zoom zoom" song stuck in your head all day? A trademark identifies the source of origin of goods or services. However, trademark registration is not limited to names and logos. You can also register a slogan. In order to register a slogan as a trademark, the slogan must have acquired a distinctive character as a consequence of use and the slogan must associate, in the eyes of the public, between the goods or services and their origin. For more information about obtaining trademark registration for a slogan, contact a competent trademark attorney.

Clients from coast to coast often ask me: "Should I register my trademark with the U.S. Trademark Office or in with the state in which I do business?" My laconic answer is: YES!

It is possible to have a federal trademark, state trademark, or both. You can register a mark with the United States Patent and Trademark Office to obtain a federal trademark. By registering with the USPTO, you may protect your mark from infringement throughout the United States for a fee of $275.00 per class of goods/services.

On the other hand, you can register your mark with the state in which you do business. The Florida Department of State, Division of Corporations to acquire a state trademark. In this manner, you may protect your mark from infringement in the State of Florida for a fee of only $87.50 per class of goods/services.

Have you considered registering a trademark? Before seeking federal or state registration, you may want to determine the geographic area you'll use the mark and how much you are willing to pay for the application fee.

For more information on state and federal trademarks, contact a trademark attorney.

Before applying for a trademark, carefully consider the goods and services with which you plan to use your mark. It is better to be precise, otherwise you may lose your trademark protection.

During the application process and before the issuance of a registration number, a trademark applicant must declare whether the mark will be used in connection with all the goods or services listed in the application. Afterward, the trademark owner must periodically make similar declarations in order to renew the registration.

In the U.S., you can only register a mark for actual use. For example, you cannot declare that the mark is used in conjunction with all types of apparel when you only use the mark with accessories for women. Recent decisions from the Trademark Trial and Appeal Board (TTAB) suggest that inaccurate declarations of use may be considered fraudulent and invalidate the trademark in its entirety. Although fraud normally requires a willingness or knowing element, the TTAB has reasoned that trademark applicants are in a position to know whether their declaration of use is accurate. Therefore, any inaccuracies may amount to fraud.

Every line in the application form has legal significance! Carefully examine and document how you use or intend to use your mark in order to avoid an inaccurate declaration of use on your application. By omitting uses on your application or renewal, you may lose protection for the mark in connection with that particular good or service. But by being over inclusive, you may end up with no protection at all.

For assistance with registering trademarks or for information regarding proper filing methods, contact a competent trademark attorney.

Worthington Millwork, based in Jacksonville, Florida, specializes in the design of architectural columns. Their website features a user-friendly approach to custom-designing columns; clients use the "3-Step Column Builder" to choose the base, column, and capital combination.

The logo you see here has recently been issued a Certificate of Trademark Registration from the U.S. Patent & Trademark Office. In addition to the logo's design, the colors, blue and white, are essential features of the trademark.

First used in commerce in 1985, the mark identifies the brand and appears on the Worthington Millwork website, as well as their on their product catalog and company literature. For nearly 20 years, Worthington Millwork has been providing residential and commercial customers with architectural columns, wall niches, and many other functional and decorative architectural details.

Registering your company name or logo provides several benefits such as notice of your ownership and allowing you to bring an action in federal court if someone uses your trademark with the same goods or services for which it is registered.

Do you have a unique logo or name for your business? Consider contacting a trademark attorney to help with the process.

Eolas is suing Apple and 22 other companies, including Adobe, Amazon, Apple, Blockbuster, Citigroup, Ebay, Frito-Lay, Google, J.C. Penney, JP Morgan Chase & Co., Office Depot, Playboy, Staples, Sun Microsystems, Texas Instruments, Yahoo and YouTube.

The suit alleges that these companies are in violation of Eoals' US Patent Numbers 5,838,906 and 7,599,985, which involve fully-interactive browser embedded applications. The company has stated that they developed their technology over 15 years ago, long before the marketplace had heard of them or thought of using them.

Intellectual property rights are the foundation of most business models, especially those based on technology. The US patent system has been very effective in protecting innovators from competitors who would unfairly profit from the innovator's hard work.

If you have a business legal matter, please contact our firm for legal counsel.

Find out more about this lawsuit at Patent holder that won against Microsoft now targets Apple.

Have you ever said, "Wrap it in cellophane" to ask for your food to be wrapped in plastic? How about, "Kleenex is softer to blow your nose" to recommend facial tissue to a friend, or "I need a xerox of this report" to request a photocopy of your document?

Cellophane, Kleenex, and Xerox are all trademarked brand names. By using a brand name to describe a generic product, you may be furthering trademark dilution.

Dilution occurs when a trademark becomes so overused that the trademark starts to identify a product itself, rather than the brand or company behind the product. Personally, I find that to be the case with "Band-Aid" and "Google." Why? Because we over-look the fact that the plastic bandage for our paper cut was not, in fact, made by Johnson & Johnson, even if we did ask for a Band-Aid. In addition, how many other Internet search engines are used when we're asked to "Google it"? Compare this with consumers' attitudes to other products: watch how noses turn up to cola that did not originate from the Coca-Cola company!

If a trademark becomes too diluted, it may become a generic term and lose protection under trademark laws. Companies on the verge of losing their protected status due to dilution will often launch extensive and expensive campaigns to prevent the public from using their trademarks in a generic fashion.

Are you concerned about the dilution of your trademark? Contact a trademark attorney for a consultation.

During the week of June 22-27, 2009, inventors and innovators gathered in Alexandria, VA for Innovation Week. The United States Patent and Trademark Office hosted this event at their headquarters in order to celebrate the important role patents and the USPTO play in the economy and the advancement of science and technology.

The event was open to the public and included dexhibits on display, technology specific presentations to patent examiners, and a multi-day conference for independent inventors.  Interested parties were able to attend Innovation Week as a spectator or were able to take a more active role in the event by participating as a keynote speaker, technology specific presenter, and patent exhibitor.

As the Internet becomes a more integral part of life and business, disputes inevitably arise over domain name use. A domain name, sometimes called an "Internet address" or "URL", is registered with a domain name registry. The Uniform Domain Name Dispute Resolution Policy (UDRP) provides trademark owners a remedy against infringing use of domain names.

Domain name registrars can adopt the UDRP by incorporating its language. In that case, you will be contractually bound to the terms of the UDRP when you sign a registration agreement. By registering a domain name, you represent that you are authorized to use that term. In other words, you warrant that the word you use for your domain name will not infringe on another person's protected trademark.

A valid trademark owner can file a complaint with an approved dispute resolution service provider if abusive domain name registration is suspected. Abusive registration includes using a domain name that's considered identical or misleadingly similar to a protected mark, in bad faith, and with out authorization from the owner of the protected mark. The offender may be required to submit to an administrative proceeding such as arbitration by an independent panel of the dispute resolution service. If the panel determines that the offender has violated policy rules, the offender's domain name may be suspended or transferred to the owner of the original trademark. In any event, offenders are not entitled to refunds from the domain name registrar.

If you suspect improper use of your registered trademark in an internet domain name, contact a competent trademark attorney to explore the possibility of filing a complaint.

In October 2008, federal agents arrested over 60 members of the California based Mongols Motorcycle Club. The three-year undercover operation was code named "Operation Black Rain ." In addition to the normal criminal charges, the indictment also sought to control the gang's "very identity": their own registered trademark.

The Mongols, investigators learned, operated more like a legitimate corporation rather than a typical gang of outlaws. Most notably is their ownership in intellectual property. "Mongols" is a registered trademark (Reg. No. 2,916,965) listed as being used with "services, namely, promoting the interests of persons interested in the recreation of riding motorcycles. The bikers have also registered as a trademark their logo, seen above.

These marks could be classified as "collective marks", that is, a trademark used to identify membership in an association. As an intellectual property attorney, I am appalled to find out that a registrant could be banned from using their own trademarks for the purposes they have claimed. Sure, they may be involved in criminal activity, but if they are, in fact, a group of people interested in riding motorcycles, punish their criminal acts, not the way they identify themselves. Is it even constitutional to prevent someone from identifying themselves as a member of a group? Is it rational to presume that every member of this group is a criminal?

In what was termed an unprecedented move, the U.S. Attorney filed a restraining order against the motorcycle gang to prevent them from using their name or trademark. The order was granted in United States v. Ruben Cavazos, et. al. The Federal judge stated that, as an asset to the defendant, Mongol Nation, the trademark would be subject to forfeiture as the defendants were convicted in criminal proceedings. Additionally, the court ordered defendants and virtually anyone connected to them–agents, family members-to surrender all paraphernalia containing the name and trademark.

What are your opinions in this matter? I welcome your thoughts and comments.

No "orphan works" are not the labors of a parentless child. Orphan works are copyrighted materials where the creator is difficult or impossible to find. If a reasonable effort is put into finding the creator, the work is considered to be orphaned. The problem arises when people want to make legitimate and good-faith use of the orphan work, but can't find the creator to enter into a licensing agreement.

In Canada, my native country, the Copyright Board of Canada has permitted the issuance of licenses on behalf of lost authors for the use of orphan works. As of August 2008, the Board issued 226 licenses, and only seven applications have been denied.

Here in the U.S., legislation is pending in Congress, intended to ease the orphan works problem. It is similar to the Canadian model, in that reasonable steps must be undertaken to locate the creator. If a license is granted to a good faith user, the legislation proposes to attach an orphan works symbol on the licensed material, in the event that the original author surfaces. If and when the original author steps forward, the good faith user will then have to pay reasonable compensation, the amount to be determined by the parties or by a court of law.

If you have expressed your creativity in any form, protect your expressions from becoming orphaned! Contact a copyright attorney to register your works.

"Pseudo mark" is a designation the U.S. Patent & Trademark Office assigns to marks that has an alternative meaning or spelling. For example, if the mark was comprised of H2O arranged in a cascading manner, the pseudo mark field in the USPTO database might display the mark as "water fall."

The USPTO assigns pseudo marks in their database to assist in the trademark search process.

The pseudo mark label does not show up on the registration certificate, and this categorization has no legal significance.

In general, the "TM" symbol used in conjunction with a trademark means that the party using that mark is claiming ownership of the mark, but has not registered the mark. The "R" symbol can only be used to show that a trademark has been registered.

There is a classification for trademarks for words that are literally associated with the products they identify. These marks are generic. Words like "milk," "car," or "towel" are all generic words, because they are the nouns of those particular goods. Generic marks can never be used as trademarks. It prevents others from using those words to label those products.

Just because a party uses the "TM" symbol on a generic mark does not make that word a trademark. In fact, three cases before the Trademark Trial and Appeal Board specifically stated that "The presence of the letters 'SM' or 'TM' do not transform an otherwise unregistrable designation into a mark." See In re Remington Products Inc., 3 USPQ2D 1714 (TTAB 1987), In re Anchor Hocking Corp., 223 USPQ 85 (TTAB 1984), and In re Minnetonka, Inc., 212 USPQ 772 (TTAB 1981).

Wonder if your trademark is registrable? Contact me for a consultation.

The trademark application can only be filed by the party who is the owner of (or is entitled to use) the mark as of the application filing date. The applicant may be any person or entity capable of suing and being sued in a court of law. "Entities" includes corporations, partnerships, joint ventures, unions, associations and other organizations capable of suing and being sued in a court of law.

If the president of a corporation is identified on a trademark application as the owner of the mark, when in fact the corporation is the owner, the application is void, because only an owner can file an application. However, if the president and a related company both use the mark, the president will be permitted to be named the owner, if in fact he or she really is using the mark.

If the applicant owns all (or substantially all) of the related company in such a way that he or she controlled that company's activities, there is unity of control, meaning that the the applicant and the company are considered to be a single source, and either could be named as the trademark owner for purposes of trademark application.

For more detailed rules on the trademark process, refer to the TMEP (Trademark Manual of Examining Procedures).

Trademark registration is a complex task, with legal implications lurking in every field on the application. Seek the assistance of a trademark attorney to guide you through this process.

The new Pro-IP Act makes current copyright laws more strict, in a sense. For instance, any property used to commit (or facilitate the commission of) a criminal offense involving copyrighted works may be seized. This provision amends §506 of the existing Copyright Act. Also, it makes it unlawful to export unauthorized copies of protected works from the U.S.

The new Pro-IP Act amps up enforcement efforts against counterfeiting and piracy. One of the ways it achieves this is that the Act creates a position, appointed by the President: the Intellectual Property Enforcement Coordinator (IPEC), within the Executive branch. The role of the IPEC is to develop & implement a Joint Strategic Plan to combat counterfeiting and piracy. In addition, the Act increases funding and resources to enforce copyright laws.

Not surprisingly, copyright holders, owners, and registrants are happy about these stricter laws that protect them and their works. However, public advisory groups and those advocating for more access to creative works educational settings are concerned that this new law does not benefit groups that it intends to benefit, namely, the public and students. Some criticisms are regarding the increase in expected litigation, making it cost-prohibitive to give the public or students access to a greater variety of creative works. Another concern is that the PRO-IP Act is of more benefit to big media companies, rather than the public and independent artists.

The new Pro-IP Act is the thankfully succinct nickname for the new "Prioritizing Resources and Organization for Intellectual Property" Act. Its objective is to protect innovation, and to better encourage creative contributions to the U.S. economy. President Bush signed the bill into law on October 13, 2008.

In an age where an 11-year old's act of downloading music can cost his parents a six-figure (and in some cases, seven-figure!) judgment, the new Pro-IP act makes it more likely that these judgments roll into the eight-digit categories.

Downloading music is not the only way that copyright laws can be violated. Any type of "copy and paste" work could be an act of infringement. This has widespread implications as more people, including children, are blogging, sharing ring tones, and personalizing web pages.

Now I've seen it all. ...all except for Elvis, that is. In browsing through the Copyright Office's FAQs, there is an answer to the question posed: "How do I protect my sighting of Elvis?"

Copyright protects creative expression on a tangible medium. That means that the expression must have some element of creativity to be protected. While works like sculptures, paintings, and musical scores are obviously creative expressions; lists and forms are among items that are not, and cannot be protected.

A "tangible medium" is something like paper, canvas, or digital recordings. So while a song you sing outloud is, in itself, not eligible for copyright protection, it can be if you write the lyrics on paper or save the melody to a CD.

So to answer the question about whether a sighting can be protected, the answer is unequivocally "No." However, while the sighting itself cannot be protected, if you took a photograph (a creative expression on a tangible medium), the photograph can be eligible for copyright protection. For the Copyright Office's detailed answer, click here.

Invention submission companies and product development companies help patent and trademark owners license and sell their inventions, products, and services. A cursory internet search of these terms will turn up a plethora of hits. Beware! Like any industry, there are legitimate businesses, and there are scams. When choosing one of these companies, keep these tips in mind:

Tip 1: Be familiar with what you own. If you have an invention, be sure you are familiar with the disclosures and descriptions in your patent. If you have a trademark, be sure that it is registered, and be aware of which specific goods and services your trademark will be identifying. If what ends up on the market is not what your patent or trademark claims to be yours, you might lose out on rights to the marketed products or services.

Tip 2: Research the company. Don't be shy about asking the firm for references and credentials. Once you get this information, follow up with them. Check with organizations like the Better Business Bureau. Find out if there is any pending litigation against them, and what issues are in dispute.

Tip 3: Be careful with your money. Almost every patent and trademark owner is enthusiastic and eager to start mass production and distribution. This excited ambition is easily exploited by dishonest enterprises. Be weary of large fees due in advance. When you do forward your money, know exactly how this money is being used. Have an attorney review any agreements before signing the dotted line. Once the deal is signed, be sure to ask for regular accounting statements, so you know how much in royalties you are earning, and you know which parties have licensed your patents and trademarks.

Licensing, marketing, and distributing your products involves an array of legal specialties, include contract analysis, negotiating licensing terms, and enforcement of ownership rights. Be sure to have an attorney familiar with all these facets to assist you.

In my previous post, I shared strategies the USPTO recommends for doing your patent search. Here are some practical tips I have to offer when doing your own search:

Tip 1: When doing your search, keep in mind that even if you don't find your exact invention, look at inventions that are similar to yours. You will need to cite these similar inventions in your patent application.

Tip 2: Remember that it's the CLAIMS that control what is patented, so verify that your invention has not been described in a prior claim. Use the rest of the patent document to interpret terms used in the claims.

Tip 3: Look at the figures and drawings. Pictures speak a thousand words. Save yourself the grief of reading through a patent document--your invention may be nothing like the patented invention, and you can determine this with one glimpse of the figure. Many people have trouble viewing the figures. You need to download the appropriate software; the links are available here at the USPTO site. I find that an easier way to look at full patents and images is to go to www.google.com/patents, type in the patent number I found from the USPTO database, and download the .pdf file.

Tip 4: When you find a patent that is similar to your invention, take a look at the column labelled "References Cited." These are patents that are similar to the patent you just found. Take a look at the patents under "References Cited" to see if they are similar to your invention too.

Tip 5: Take notes. Once you get into the research, you'll see what I mean! All the patents will begin to look the same, and you'll mix them up. List the name, patent/application number, and the title of the patent at the top of a 3-hole punched sheet of paper. Use the entire page to take notes and make your sketches. Highlight key terms on the patent document itself. Keep everything together in a binder, so you can re-arrange and insert/remove notes as needed.

Tip 6: Learn from prior patents. If the patent examiner finds prior art that makes your invention OBVIOUS or NOT NOVEL, you'll be out of luck. Find a way to distinguish yourself from the inventions disclosed in the claims of the prior patents.

Tip 7: Don't be afraid to ask for help. Find Patent and Trademark Depository Library (PTDL) staff in your state. They are available to provide training on U.S. patent search processes and research tools including the Cassis DVD-ROM system, the PubWEST database, and the USPTO website. You can also contact a patent attorney for advice and assistance.

I've often said that doing a patent search is a lot like making pizza from scratch: they are tasks that require some skill, but the skills can be self-taught or hired. Both tasks can also be excrutiatingly tedious, but they can also be educational and fun.

Before your invention can qualify for patent registration, there are two basic requirements that must be satisfied: your invention must be NOVEL and UNOBVIOUS. This means that it can not have already been invented, and that it can not be an obvious variation of something that has already been invented. The way to find out whether your invention is novel or unobvious is to do a patent search.

You can hire a patent attorney, patent agent, or a patent research firm to do the search for you. This will likely cost you several hundred dollars. In the alternative, you can undertake this task on your own. Here are seven tips offered by the U.S. Patent Office for doing your own search:

Step 1. Brainstorm keywords related to the purpose, use and composition of the invention.

Step 2. Look up the words in the Index to the U.S. Patent Classification to find potential class/subclasses.

Step 3. Verify the relevancy of the class/subclasses by using the Classification Schedule in the Manual of Classification.

Step 4. Read the Classification Definitions to verify the scope of the subclasses and note "see also" references.

Step 5. Search the Issued Patents and the Published Applications databases by "Current US Classification" and access full-text patents and published applications.

Step 6. Review the claims, specifications and drawings of documents retrieved for relevancy.

Step 7. Check all references and note the "U.S. Cl." and "Field of Search" areas for additional class/subclasses to search.

Stay tuned to my next blog post, where I offer my 7 tips to help you along your patent search.

Of the five titles of the Digital Millennium Copyright Act ("DCMA"), I have the most inquiries about Title II, the Online Copyright Infringement Liability Limitation Act ("OCILLA"). This title addresses liability of online service providers ("OSPs") in copyright infringement actions.

With the advent of the Internet, instances of copyright infringement exploded. Copying another's work is as easy as a copy and paste from one source to another. Copyright owners faced the challenge of enforcing their rights against online infringers, who were either difficult and/or expensive to find, and once found, these infringers often had no money to compensate the original author/creator. As such, copyright owners turned to OSPs as parties in litigation, since OSPs were easier to find, and often had more financial resources to pursue.

The DMCA was signed into law in 1998 to better protect OSPs from the massive onslaught of infringement claims. In general, OCILLA created safe harbors for OSPs, such that OSPs could not be held liable for copyright infringement if its capacity was only as a passive conduit for Internet information, and if it did not know about or actively participate in the alleged infringement.

To qualify for these safe harbors, OSPs should do the following:

1) Designate an agent to receive infringement claim notices from copyright owners;

2) Designate a person to deal with those infringement claim notices;

3) Implement and execute a policy to terminate the accounts of repeate copyright infringers, and make this policy known to all Internet subscribers;

4) Take action, such as removing or blocking access to allegedly infringing content, once alleged infringement has been discovered; and

5) Accomodate and cooperate with measures that copyright owners take to identify or protect their copyrighted works (which could include use of watermarks or encryption to prevent copying and pasting of their work).

For more information, visit the U.S. Copyright Office website.

Around the world, all eyes would turn to Times Square in New York City on New Year's Eve. Millions would watch as Dick Clark entertained us, and finally counted down to the infamous dropping ball in the seconds before the new year arrived in the Big Apple.

He was born on November 30, 1929, but he alleges in a recent trademark registration that he has been using his name, "Dick Clark," since 1948 to "promote the goods and services of others by allowing sponsors to affiliate their goods and services with a television celebrity." (Reg. No. 3533080).

Dick Clark also holds the phrase, "Dick Clark's New Year's Rockin' Eve," to be his trademarks. He has one registration for the phrase's use in association with slot machines (Reg. No. 2688315). He also has a pending application for use of the phrase in conjunction with pre-recorded CDs, DVDs, and video tapes (Ser. No. 77612030).

Interestingly, his familiar sign-off catchphrase is not a registered trademark: "For now, Dick Clark. So long!"

Congratulations to Metro Diner, a local restaurant in the historic San Marco neighborhood in Jacksonville, Florida! They have registered three trademarks with the State of Florida: their name, their logo, and their slogan, "Where The Locals Eat."

The logo, as you can see, is in the signature dark and light green colors. Their slogan is very apropos to their typical customers who crowd the diner for breakfast and lunch.

Protect your business identity--register your trademarks today. Contact a trademark and business attorney to help you through the process.

A divorced, single mother of four is taking on the mogul of sexy lingerie. She can do it because she spent $12,000 to build a prototype and apply for a patent, which was issued in 2004.

Katerina Plew invented a bra featuring numerous loops and hooks, so the straps can be positioned in a combination that would keep them hidden under most styles of clothing. Plew sent a copy of her patent and various promotional materials to Victoria's Secret, in hopes that she could license the rights to them. About a year after Victoria's Secret cancelled their appointment with her, Plew saw her invention offered for sale at a Victoria's Secret store. Watch the AP video featuring Plew's story.

Plew took the proper steps to protect her invention. Take a look at the patent for this bra. Without this patent, she would not be able to prove how others are infringing upon how her invention is made. If you have an invention, I recommend that you build a working prototype, and seek the advice of a patent attorney before attempting to market or promote your invention.

Last summer I took a vacation far from my office in Jacksonville, Florida, to visit New York City for the first time. It was an interesting experience, to say the least. One of the most interesting sights, of course, being The Naked Cowboy.

The Naked Cowboy is not your average guitar-strumming entertainer. You can't miss him: he's the buff guy in white briefs, a straw hat, cowboy boots, and oh yeah, he spends most of his days in the middle of Times Square. If that's not surprising enough for you, he allegedly makes $5,000 per hour.

Recently, Mars, Inc. launched an ad campaign for their product, M&Ms. The TV commercial features a blue version of their candy coated chocolate, standing in Times Square, dressed in a manner that unmistakably is mimicking The Naked Cowboy.

The Naked Cowboy, whose real name is Robert Burke, is suing Mars, Inc. for $6 million for trademark infringement, unfair use of his image to endorse a product he does not support, and attorneys' fees. See the Complaint he filed here. The trademark infringement allegations are based on Burke's registered trademarks of the name "The Naked Cowboy," and his image (Reg. Nos. 2560456 & 2760208, respectively).

With the Complaint filed in February, it could be months or years until the case is dismissed, settled, or goes to trial. For updated information, contact me, and I'll see what information I can dig up.

So you're in business. You've registered your trademark, identifying the goods or services you're offering. Your business may be restricted to your city, or you may have customers/clients in big cities like Jacksonville or a small town like Palatka. In any event, one of the biggest mistakes my clients make is to file away their trademark's Certificate of Registration, and not give their trademark a second thought.

Florida Statute 495.071 prescribes the duration and renewal procedures for Florida trademarks. Here are some tips:

1. Registration expires 5 years from the date of registration.

2. Renewal can be filed as early as 6 months before the date of registration expiration.

3. Prepare a statement that your trademark is still in use in Florida, for the same class of goods or services as when you filed your registration.

4. Prepare to provide a specimen showing use of your mark in connection with those goods or services.

5. Set aside $87.50 (per class of goods & services) for the filing fee.

One of the biggest misconceptions is that an idea can be patented. Even a Yahoo or Google search about patenting an idea will lead people to believe that this is the case. Often, I will have a creative mind book a consultation with me to discuss patenting an idea for an invention. Truth be told, their ideas usually are very good ones. However, they have no idea how to make or build this invention. For example, if someone told me that a great invention would be a machine that would stop world hunger. Although it's a fantastic idea, unless this inventor knows how to build one, there is no patentable subject matter.

Assuming that this idea for an invention is novel and unobvious, there is a requirement that the inventor can describe how this invention is built or put together. This is because a patent is like a recipe: anyone with skill and knowledge in the field of that invention should be able to pick up a patent, and understand how a workable version of this invention is built.

Just because you know how to build the invention doesn't mean you need a prototype to get a patent.

Questions about whether your invention is patentable? Contact me for a consultation.

The Trademark Expo was held recently at the U.S. Patent & Trademark Office headquarters in Alexandria, Virginia.

Trademarks play a critical role in our marketplace both here at home and around the world. From the moment our GE alarm clocks wake us up, until we turn off our Sony TVs after the late night news, we are bombarded with brand names. The Trademark Expo pays homage to this enormous influence on our choices of goods and services by featuring displays, exhibits, company booths, roaming mascots, and seminars.

The Expo is free and open to the public. All individuals, businesses, and educational institutions that hold a valid registered U.S. trademark are encouraged to apply to exhibit.

Last year's Expo attracted 7,000 people.

Being a patent attorney, I feel the pressure of people's expectations that I be the first to hear about new inventions. While procrastinating on the Internet, I couldn't help but notice a recent article about the Top 10 Wacky Inventions for the Home. It includes a fruit bowl that emits UV light, allegedly to keep fruit fresher for longer, a device that tells you what mood your plant is in, and a waterproof PC.

We've all heard that necessity is the mother of invention, but in this case, the desire for trinkets is the cool big sister coming home from college, and wowing you with what she's learned in Science 101 classes.

Doctor Easy Medical Products' trademark, seen above, was recently registered with the U.S. Patent & Trademark Office. This logo is used to identify a product with a plastic tube that directs a stream of fluid into the ear to flush out ear wax. The inspiration for the term "elephant" came from the fact that the plastic tube was long and flexible, resembling an elephant's trunk.

This logo helps consumers identify Doctor Easy Medical Products as the authentic source for the ear washer, as well as other health & beauty products. To register a logo, name, or slogan that helps consumers identify your goods or services, consult with a trademark attorney.

Just because another party has registered a trademark does not necessarily exclude you from using and registering that trademark as well. Trademark protection depends on the scope of use, extent of use, use of the trademark in a geographic location, and association with a particular set of goods or services, among other factors.

Furthermore, a registered owner may agree to allow another to use the registered trademark, or grant a license to another to use that trademark. Permissive use or licensing involves negotiation of fees, costs, use, and royalties.

On the other hand, registration does not guarantee exclusive ownership. Rights associated with registration may cease if the owner stops using the trademark (either entirely or for the purposes stated in the application for registration), if the owner fails to pay maintenance fees, or if another party can prove that the registered owner was not, in fact, the first to continuously use the trademark to identify goods or services.

Trademark rights continue as long as the owner continues to use it consistently to identify goods or services. A trademark owner can lose rights to the trademark through abandonment of the mark, non-use of the mark, or by granting naked licenses. Tally-Ho Inc. v. Coast Community College District, 889 F.2d 1018, Footnote 6 (11th Cir. 1989).

Getting our minds out of the gutter, "naked licenses" have nothing to do with nudity. Naked licenses are when a trademark owner licenses the use of a trademark without controlling the quality of the goods or services provided by the licensee. If consumers cannot expect consistency of goods or services associated with a trademark, in effect, consumers will cease to attribute those products with that mark. This is essentially the same as non-use of a trademark.

Quality control is vital in trademarks and licensing, which is why many franchises thrive. The intolerance for anomalies assures consumers that they can depend on the goods and services to be exactly as they expect. This high level of predictability is the secret to many franchises' success.

So trademark owners, don't be caught with your pants down when licensing the your rights. Ensure that your licensees are delivering the same quality of goods and services that you have originally attached to your trademark.

While monogamy is the prevailing standard accepted in our society when it comes to spouses and boyfriends or girlfriends, this is not necessarily so when it comes to a license for your patent or trademark.

When you offer the rights to use your patent or trademark, in exchange for fees and royalties, you are licensing those opportunities to another. That other party is called the licensee.

A monogamous license, more appropriately termed, an exclusive license, is where you have only one licensee. Typically, licensees agree to paying higher fees and royalties for the benefit of being the only ones who are allowed to benefit from the intellectual property. NBC was hugely successful last month, because they were the exclusive network to provide Olympic coverage.

There are times, however, where it benefits the patent or trademark owner to enter into a licensing agreement with as many licensees as possible. This is a non-exclusive license. Although a licensee will probably pay less in fees and royalties, the patent or trademark owner benefits from collecting this revenue from multiple licensees. Franchises are an excellent example of non-exclusive licenses to numerous franchisees for the use of trademarks, patents, and other proprietary assets.

From my office in Jacksonville, Florida, to a corner store in Hawaii, you would be hard-pressed to find anyone in the 12-35 year old demographic who does not know Beyonce.

For all six of you who don't, here's a quick pop-culture review: a former member of the '90s R&B trio, "Destiny's Child," Beyonce released her first solo album in 2003. From there, her commercial appeal exploded. Her success as an entertainer includes:

- multiple movie roles, one of which earned her a Golden Globe nomination for her role on the big-screen adaptation of the Broadway hit, "Dreamgirls;"

- endorsement contracts for Pepsi, L'Oreal, and Tommy Hilfiger; and

- bragging rights for being crowned as the first non-model and non-athlete woman to grace the cover "Sports Illustrated Swimsuit Issue."

Why would Beyonce, whose name is a registered trademark with incredible brand name recognition, suddenly want to change her name to "Sasha Fierce?"

Beyonce wants to be known by the name of her alter ego, whom she describes as: "the fun, more sensual, more aggressive, more outspoken side and more glamorous side that comes out when I'm working and when I'm on the stage."

In all seriousness, my question remains, "Why?" I am skeptical that Beyonce wants to change her name for personal reasons. I think "Sasha Fierce" has much more aggressive connotations, but what it makes up for in vamped up sex appeal, it lacks in sincerity. I also imagine that the name change is an attempt to market a whole new line of products, cuing consumers to fear being associated with a brand that was SO five minutes ago.

This Pseudonym Movement has been done by other artists, often as an early indication of the demise of their popularity. These celebrities panic to re-create themselves, rather than attempt a come-back in the more-distant future. For example, Prince became "The Artist Formerly Known as Prince." Puff Daddy has been known as P. Diddy, Sean Combs, and Sean John. And in the extreme, Garth Brooks took a walk on the rock side as his alter ego, Chris Gaines.

My advice to Beyonce would be to stick with what works. People around the world envy her talent and career opportunities. Be greatful and proud of who she is, and the brand that she has become. Leave re-inventing the wheel to the has-beens.

Go ahead, roll your eyes. I am. And I'm synchronizing it with an annoyed sigh and a defeated slouch. As irritating / overrated / superficial / predictable / contrived / insincere / underwhelming as Paris Hilton is, I have to give the girl credit for this undeniable irony: the emaciated "celebutante" consistently manages to shove her brand name down the American consumer's throat.

Get this: the goods and services identified by the "PARIS HILTON" trademark (Reg. #3249904) includes "conducting parties in nightclubs" and "personal appearances by a media celebrity."

Other (so-called) notable Paris Hilton trademarks:

- her initials, as a logo

- the title, "Paris Hilton's My New BFF" for her new MTV reality show, where contestants vie for for the coveted title of Paris' new best friend

- And who could show their face in public without Paris' signature stamp of approval: "THAT'S HOT" (Ser. #77163240)

Which celebrity would you like to see on my Celebrity Trademarks spotlight? Have you wondered whether your name or image is eligible for trademark registration? Ask me.

Recently, at the Florida Coastal School of Law campus in Jacksonville, Florida, law professor, Carolyn Herman and patent attorney, Clark Wilson, presented a seminar entitled, "Identifying Intellectual Property Issues for the General Practitioner." It was a succinct presentation covering patent, trademark, and copyright laws.

This is the second annual presentation of this seminar, which was given in conjunction with Florida Coastal's Alumni Weekend celebration. I recommend this seminar to attorneys, business executives, entrepreneurs, and inventors alike, and would encourage anyone interested in attending to sign up for the seminar again next year.

How did powdered urine, an artificial penis, and a jock strap have two California entrepreneurs likely to plead guilty to charges of conspiracy to defraud the government?

When those items are the "Whizzinator" and "Number 1," which have been put together to help government employees pass drug tests, that's how.

It has been reported that a truck driver for the Department of Transportation beat mandatory drug testing by using these proxy pee products. In another instance, a Whizzinator customer allegedly used this product to pass a probation officer's drug test.

I was not able to confirm that there was a patent filed for this invention. Assuming that this invention is novel and unobvious (the two most basic requirements for an invention to be patentable), I can't help but wonder: does the use of this invention threaten national security if government employees in certain positions are trying to beat a drug test? If so, it could mean that an application was filed, but the government issued a secrecy order, preventing the publication typical of most patent applications. Specifically, Sec. 115 of the Manual of Patent Examining Procedures states:

If the agency concludes that disclosure of the invention would be detrimental to the national security, a secrecy order is recommended to the Commissioner for Patents. The Commissioner then issues a Secrecy Order and withholds the publication of the application or the grant of a patent for such period as the national interest requires.

I did, however, see that the term "Whizzinator" is a federally registered trademark (Reg. #2782181).

In spite of the registered trademark, prosecutors are seeking to take control of the Internet domain names, http://www.whizzinator.com/ and http://www.gonumber1.com/. Check them out while you can!

In 2007, President George W. Bush awarded eight individuals and corporations with the 2007 National Medal of Technology and Innovation at a lavish White House ceremony.

This annual award is the highest honor the President can confer upon an American citizen for innovative contributions and achievements. The medal can be awarded to persons, organizations, or corporations. The first awards were granted in 1985 by President Regan.

The list of recipients includes: AT&T, David Packard (of Hewlett-Packard), The DuPont Company, Bill Gates, Merck & Co., Proctor & Gamble, 3M, Johnson & Johnson, IBM, Motorola, Xerox, and eBay.

Two years ago, the managing partner of my law firm bought me my first set of golf clubs, had them personalized for me, and hooked me up with private lessons. Little did he know: he created a monster.

It doesn't take a golf fanatic to appreciate that Tiger Woods could very well be the greatest golfer in history. But it's not just his game on the course that makes him a multi-millionaire--"Tiger Woods" as a brand name is worth millions in endorsing goods and services.

The name, "Tiger Woods," as a trademark, has been used since 1997 to identify golf gear and athletic apparel (Reg. #2306354). But that's just the beginning of the list of trademarks in Tiger's name; here's more:

- his autograph

- the "TW" logo on his website and clothing

- the names and logos for the Tiger Woods Foundation

- an image of his signature fist pump (Ser. #79055290)

Curious about another celebrity's trademarks, or want to know how to make your name a brand name? Let me know!

Politicians made the rounds in Jacksonville, Florida during 2008, promoting their campaigns. In a country where corporate powerhouses like Napster have made headlines for prosecuting teenagers who download music without permission or payment, could presidential candidates McCain or Obama be accused of a similar transgression?

Apparently so. The band, the Foo Fighters, has accused McCain of misappropriating their song, "Hero," for the purpose of promoting his campaign. Similarly, Obama has been under fire for using the legendary song, "Soul Man" without Sam Moore's permission.

Even McCain's running-mate and co-maverick, Sarah Palin, has been in cahoots with the band, Heart, for the use of the song, "Barracuda." If Heart has not been compensated for the use of their hard-driving rock song, they should be! Association with the song has given birth to a pop culture brand name. This has parleed into an entire line of "Sarahcuda" products, the intent of which are obviously to promote Palin.

Copyright misappropriation is theft. Because I represent musicians, most of whom are garage bands and independent artists, I do a lot of advising as to proper channels to get permission for using the music and lyrics of popular artists. On the flip side, I also stand up for these "lone voices," when they feel that another artist has misappropriated their work. My name is Jo-Anne Yau, and I approved this message.

I recently presented my seminar, "From Emblems to Empires: Using Trademarks to Promote, Protect, and Produce Business." The audience were the members of IMPACTJax, a young professionals' group that is part of the Jacksonville Regional Chamber of Commerce.

I discussed the importance of promoting a business name by building a brand name. The goodwill and reputation should then be protected through trademark or patent registration. Only then can defensive and offensive strategies have any teeth against potential infringers. Once a business achieves a level of success with those trademarked or patented assets, I explain why franchising the operation is among other options for expanding the business. In the alternative, for entrepreneurs interested in minimizing the risk of owning a business, I also discuss the advantages of buying a franchise.

Couldn't make it to the original presentation? Contact me to see when this seminar will be presented at a venue near you.

The "secondary meaning" concept is critically intertwined with trademarks and trademark law.

Secondary meaning occurs when a trademark achieves a meaning to consumers associated with the goods or services it identifies.

For example, the primary meaning of the word, "zoom" can be defined as "to move quickly," or "to get a closer look at something." However, when used as "Zoom Zoom," consumers easily associate the slogan as identifying Mazda vehicles. Therefore, "Zoom Zoom" has achieved secondary meaning with the public, because of their association of the phrase with the Mazda brand name.

The stronger the trademark's secondary meaning, the stronger the trademark becomes when disputes arise involving ownership or use of the mark. These disputes typically arise in the form of cease and desist notices, or Complaints filed in court, alleging infringement, dilution, unfair trade practices, consumer confusion, etc.

Finally, a movie that depicts the struggles of "garage inventors," the innovators who make up most of my patent clients. These are the ones who tinker with inventions in the evenings and on weekends, until one day, an invention is born.

"Flash of Genius," starring Greg Kinnear, is based on the true story of Robert Kearns, who, in the 1960's, invented the intermittent windshield wiper for automobiles. Among the hurdles he faces are the high cost of protecting his invention with a patent, and infringement by the automobile industry. The movie is about Kearns' resolve to take on corporate giants through litigation, and assert his rights as the inventor.

"Flash of Genius" was released on October 3, 2008.

Go ahead, call me conservative. So what if I waited for the reviews in "Flash of Genius" to come out before shelling out $15. And $12.50 for popcorn and a drink. Looks like my fence-riding might have saved me the cash I could use instead on buying 4 gallons of gas.

Viewers who enjoyed the movie included inventors who could relate to the trials and triumphs of their trade. If anything then, real-life inventors appreciated the accurate portrayal of the challenges they face.

Those who didn't sing praises, however, included movie critics who felt the film lacked the pizzazz that today's audience demands from big-screen Hollywood.

While I may have missed the movie this weekend, if it sticks around the theaters long enough, maybe I'll catch it next weekend. Or catch it when it comes out on TV. Without the trek to the theater, that ought to save me another gallon of gas.

Federal statutes governing trademark laws are found under the Lanham Act (Title 15 of the U.S. Code). The federal statutes are extensive, providing definitions, detailing procedures, and laying out remedies for aggrieved parties. Disputes under the Lanham Act are brought under federal court.

In addition to these statutes, common law and state statutes also govern trademark laws. Common law is the body of law defined by the courts, and detailed research may be required to find the answers to the questions you are looking for. In addition, each state sets forth its own statutes, and its own courts have jurisdiction to resolve disputes. For example, statutes governing Florida trademarks are set forth in Florida Statutes Chapter 495.

It is important to note that the attorney representing you in state or federal court must be admitted to practice in that particular court or jurisdicition.

If a distinct logo, name, or slogan is used to identify goods or services, the first one to use that trademark is entitled to ownership of that trademark. However, the rights associated with ownership of that mark are limited.

It is thus highly recommended to register the trademark. For a reasonable filing fee, registration offers many other benefits to the owner. Examples include the right to sue for infringement, and getting the clock ticking on the five-year wait before the trademark achieves an "incontestable" status.

Whether offering goods or services at a local or world-wide level, registering a trademark is always recommended. So where should a business begin this process?

If doing business in only one state, then trademark registration should be done with the Department of State. This is true for small businesses and growing chains alike.

Once a business markets and promotes to consumers across state lines, it becomes eligible for federal trademark registration at the U.S. Patent & Trademark Office. This has been an integral step in business growth and franchising. However, it is recommended that the trademarks are also registered at the state level where the business is conducted. In the event that a competitor infringes upon that trademark, then remedies at both the state and federal level may be available.

Despite the fact that there is no such thing as an "international trademark," filing an application for a U.S. trademark can lay the foundation for applying for trademark registration in other countries. There are procedural requirments involved, so consultation with a trademark attorney is advised.

In order for your trademarks to be eligible for registration at the U.S. Patent & Trademark Office, your goods or services must be offered to consumers in more than one state. This is an easier endeavor for businesses with high visibility and high accessibility to the public, like restaurants, gas stations, hotels, etc. However, internet sales and marketing across state lines can qualify as doing "interstate commerce."

For businesses catering only to their home state, they ought to register their trademarks at the state level.

When considering a trademark to identify your goods or services, it is always a good idea to see if that trademark is already in use by someone else, and to what extent this trademark is being used. This is particularly important if that other party is a direct competitor.

This is done by doing a trademark search. The U.S. Patent & Trademark Office has a database, as do most Departments of State. However, other databases and resources should be checked as well. This is because the proper owner of a trademark is not the first party to file for registration, but the first one to use it in commerce.

Trademark searches can be performed by a attorney or by private firms that specialize in this service. In any event, find a professional competent in trademark searches to perform this service for you.

No. Anyone can file their own trademark registrations, but it is highly recommended that you seek legal advice to help you with the process. This is because a trademark lawyer will be familiar with procedural and substantive requirements of filing an application for registration. Having an attorney help you can save time, money, and potentially, grief involved in the application process.

Are collective marks considered to be trademarks? They sure are. Collective marks are used by unions, organizations, and other types of associations to identify membership in that group. Collective marks can be logos, slogans, or names.

Examples of collective marks include the logo for the Fraternal Order of Police, and the name "Boys and Girls Club of America."

As with all trademarks, it is strongly recommended to register a collective mark with state or federal trademark offices.

When you have a trade secret, nothing is more important than keeping it secret.

Arguably the most famous recipe in the restaurant industry, the Colonel's secret recipe with 11 herbs and spices is written on a piece of paper kept in a vault at their corporate offices. The yellowing sheet of notebook paper, handwritten by the Colonel himself, however, had to be transported this week to a temporary location for safekeeping while KFC beefed up security. Transportation security measures included bodyguards for the recipe and handcuffing the briefcase containing the recipe to KFC's president.

Much ado about nothing? Not at all. If the holders of a trade secret fail to take reasonable measures to maintain the secrecy, the value of their secret will be lost if the details are publicized.

I specifically discussed the KFC secret recipe in a recent article published in the Jacksonville Business Journal. The value of the KFC franchise, an internationally recognized business, comes from exclusive access to the recipe, which arrives prepared and ready to be used by the restaurant.

American citizenship is not required to file for trademark registration in the U.S. The basic requirements are that the applicant is using the mark in association with goods and services across state lines, and that the mark is not infringing on the mark of another.

There is technically no such thing as an "international trademark." To secure trademark protection in other countries, an application must be filed in those countries. That process can begin with filing a U.S. trademark application.

While registering your trademark is not mandatory, registration offers many advantages. The following only scratch the surface at the benefits of trademark registration:

It gives notice to the public and to your competitors that you claim ownership of the trademark. An owner of a registered trademark is presumed to be the rightful owner, unless proven otherwise.

If someone else tries to use the same or a similar trademark, you can then assert your ownership rights. This can be accomplished by sending a cease and desist letter or filing a claim for infringement.

You can allow others to use your trademark by licensing the rights to use your trademarks. You can control the way your trademark is used: for particular purposes, in certain places, or for a given length of time. This strategy is fundamental in business growth, business development, and franchising.

Registration with the U.S. Patent & Trademark Office provides a basis for you to apply for trademark registration in other countries. On a related note, you can prevent infringing foreign goods from being imported.

Service marks are names, logos, slogans, and other marks that identify the source of a service. Legally, they are the same as a trademark, which is a mark that identifies the source of goods. The terms "service mark" and "trademarks" are often used interchangeably.

While the "SM" symbol is sometimes used to denote a service mark, "TM" will do just as well. However, once registered with the U.S. Patent & Trademark Office, the "R" symbol is used.

Often, businesses will have both service marks and trademarks. For example, visitors at Disney theme parks who want to avoid the long line for attractions can make a reservation, and get whisked to the front of the line at their designated time. Disney named this service, "FASTPASS," which is a registered service mark. On the other hand the mark, "Mickey Mouse" has been in use since the 1930s, to identify goods like cartoons and comic strips.

"Can I get a patent on an invention that combines two or more old inventions?"

The answer depends on whether combining existing inventions creates new and unexpected results. This satisfies the U.S. Patent & Trademark Office's requirement that an invention be novel and unobvious. Novelty and unobviousness can be achieved if the components cooperate to achieve a benefit that the components could not achieve alone.

For example, combining a pencil with an eraser on the end offers the benefit of writing compositions faster than if the pencil and eraser were separate components. The advantages of the pencil cooperate with the advantages of the eraser to provide an additional benefit when they are combined.

However, the combination of your toothbrush, your comb, and your nail clippers do not cooperate to offer something more than if you used each item individually.

In effect, if your creation involves combining separate inventions, you could be eligible for patent registration if your invention as a whole offers more benefits than do the sum of its parts.

Businesses often use their business name to create a logo. Both the name and the logo are trademarks identifying goods and/or services. Should they be filed on the same trademark application?

No. Even if the logo is a stylistic version of the business name, if they can be used separately, they should each be filed on separate trademark applications. Filing an application for the logo protects only the graphic representation of the business name. To protect the business name itself, separate trademark registration will protect the use of that name, regardless of the font, color, or manner in which the business name is being presented.

Most people think of a company logo when they think of a trademark. The Nike "swoosh" is a classic example of this type of trademark. But many people don't realize that you can trademark many things that are unique, including product names, signature sounds, and much more. As a general definition, a trademark can include any word, name, symbol, device or combination of these things, and it must be used in commerce to differentiate a product or service from others on the market.

 For example, an apple grower would not be allowed to trademark the word "apple" for his business, because it is too common and does not distinguish his product from those of other apple growers. But if the apple grower decided to start a computer company in the early eighties, he would be able to trademark "Apple" because, even though it is a commonly used word, it is not a word commonly used to describe computers. In this case, "Apple" would clearly distinguish one type of computer from another.

Perhaps most surprisingly, certain sounds can be trademarked if they are associated with a particular good or service. A well-known example would be the Intel "Bong," used in their television commercials. You can find out more about unusual trademarks by visiting You Can Trademark a Lot More Than You Think.

Trademark is a complicated legal issue. If you have a product or service that you would like to protect via trademark, you will need to seek the advice of a business law attorney. Please contact our Jacksonville, Florida area firm for expert legal counsel regarding trademarks, patents and copyrights.

Generic drugs can cost significantly less than their brand name counterparts. But are they really identical? The US Food and Drug Administration (FDA) has regulatory oversight to ensure that both generic and brand name drugs are safe and effective. US patents grant an inventor a twenty year right to manufacture and sell their patented medicine. After the patent expires, anyone can sell the drug, as long as they can prove to the FDA that it is "bioequivalent" to the brand name drug. But bioequivalent is not always the same as identical. In addition to the active ingredient of a medication, there are also the additions of inert components and coatings of the pill to consider. Each of these steps being carried out appropriately may be critical for the safety and efficacy of the final product.

The problem is that patents are crafted to reveal the least amount of trade secret information as possible. This means that a generic drug producer may, in part, have to guess how to manufacture the drug. There is growing evidence that variations in the manufacturing process of generic drugs could make them significantly less safe and effective than is commonly believed.

The best tactic for Florida consumers to protect themselves is to use brand name drugs if possible, and to discuss any generic substitutions with their doctor and pharmacist. Find out more about generic drugs versus brand name drugs at Generic Drugs: Caveat Emptor!

If you have a patent or trademark law matter you would like to discuss, please contact our Jacksonville, Florida area firm.