I Double Dare You

What happens when a trademark owner allows a registration for a mark to lapse? What if someone else wants to register the same mark? Is it abandoned?

Armstrong filed an application for registration of the mark “Double Dare” for several classes of goods and services including:
IC 041. Entertainment, namely, a continuing children’s show, and segments thereof, broadcast over television, cable televiion (sic) and the internet

Viacom filed an opposition to Armstrong’s application after the application was published, and Viacom sued Armstrong for a declaratory judgment that Viacom still had “common law” rights in the “Double Dare” mark, even though it allowed the federal registration to lapse.

According to Viacom, it has continued to use the mark. Continuous use of a mark in commerce establishes a common law right in a mark, even without a registration.

But the district court in New York dismissed the declaratory judgment action as being too speculative, at least until Armstrong’s application registers. To add complexity, the opposition proceeding is suspended, preventinng the mark from being registered, until after a final resolution of the declaratory judgment lawsuit.

So, until Viacom either fails to appeal the decision of the district court or the appellate process is completed, Armstrong’s application will be suspended.

Armstrong’s intent-to-use application is part of a pattern of trademark squatting, according to Viacom’s declaratory judgment action. So, it will be interesting to see what happens in this case, assuming the matter is not settled by the parties first, as so often happens in situations similar to this.

The takeaway is to be very careful and circumspect when considering whether to file an application for a mark with a registration that has lapsed but remains well known. You’ll want to have evidence that the mark has been completely abandoned by the original owner.

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trade secret

Court dismisses DNC trade secret case

The Democratic National Committee (DNC) sued the Russian Federation and others for theft of trade secrets and other counts. 

The “relief from the alleged activities of the Russian Federation should be sought from the political branches of the Government and not from the courts,” because sovereign nations cannot be hauled into civil lawsuits without some waiver of their sovereign immunity. 

The DNC’s trade secret claims under the Defend Trade Secrets Act and a local Uniform Trade Secrets Act were dismissed because the DNC failed to identify facts that supported a conclusion that it owned any valuable trade secrets, took reasonable measures to protect, and derived commercial benefits from keeping the allegedly purloined information as trade secrets.  anything about the development of the list and strategies or the value of their alleged secrecy. The DNC made “conclusory allegations” that were “insufficient to state that the stolen documents were trade secrets.”

Also, the dissemination of already publicly released documents is not misappropriation, and trade secret law only protects against misappropriation. The DNC failed to allege liability, except for the Russian Federation, for any of the hacks of the DNC’s computer systems. The remaining defendants were not liable for use of documents, even if previously trade secret, after the documents were published. Use of “documents that had already been published by the Russian Federation and WikiLeaks is not an unlawful or improper use of the documents.” A “trade secret that becomes public knowledge is no longer a trade secret.” And “…so long as the disseminator did not participate in any wrongdoing in obtaining the materials in the first place,” the dissemination is protected free speech. 

The Court distinguished between soliciting someone “…to steal documents…” and “…a request for material that had been stolen,” already.  The law is clear that “journalists are allowed to request documents that have been stolen and to publish those documents.” 

The trade secret claims were dismissed “with prejudice” as barred by the First Amendment and for failure to state a claim for which the relief sought could be granted. So, the only course open for the DNC is to request reconsideration or to appeal the decision.

Lesson:  Take reasonable measures to protect your trade secrets like encryption and training for those that have access to trade secret information. Keep track of your trade secrets and how the information came into your possession, how much it cost, and the measures taken to protect it.

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Do I need a patent attorney to file a U.S. patent?

If you are filing a patent in the U.S., the law does not require you to have a patent agent or attorney.

That said. A patent application is not easy to draft without significant training. Even for experienced patent attorneys, with all of the changes that are occurring in the law, drafting a patent application that will stand up to a legal battle in the future is challenging, to say the least.

So, you SHOULD hire the best patent attorney that you can afford, if you really NEED a patent.

The real question is … why do you need a patent?

I’m a US registered patent attorney and make my living from preparing, filing and stewarding patent applications through the patent office.

Most innovative and creative startups don’t NEED a patent.

If you need a patent, then you should be prepared to spend the money to get a good one.

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How do I avoid copyright infringement?

Either independently develop or license from a reliable source all of the images and other works of authorship that you use personally and in your businesses. If you do this, then you won’t infringe anyone’s copyright.

There is a legal way to use copyrighted works in the US without getting a license. It’s called “fair use” and is a limited defense against copyright infringement for use of a copyrighted work for a specific purpose. There are 4 factors to consider:

  • the purpose and character of your use of the copyrighted work;
  • the nature of the copyrighted work, itself;
  • the amount and substantiality of the portion taken (used); and
  • the effect of the use upon the potential market for the copyrighted work.

You’d like to know that your use is “fair use” BEFORE being sued. But this is a difficult analysis, even for an intellectual property attorney.

Typically, a legal opinion for a relatively easy analysis would cost $10,000. So, “fair use” is not for everyone.

Also, fair use is merely an affirmative defense to copyright infringement. So, relying on fair use basically admits infringement. If you’re analysis is wrong, it’s going to cost you.

So, it’s better to own or license works.

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