Uncategorized

Copyright Errors Might Be Fatal

Unicolors v. H&M, 2020 U.S. App. LEXIS U.S. App. LEXIS 17097 (9th Cir. May 29, 2020)

This ruling is a big change in the way that copyright lawsuits are to be handled in the quixotic Ninth Circuit.

The copyright owner used a way of grouping copyrighted items together into a single application. Unfortunately, it used the wrong one.

A judgment for $266,209.33 in damages and $514,565.47 in attorney’s fees and costs was reversed by the court of appeals, sending the matter back to the district court. According to Section 411(b)(1) of the Copyright Act a registration certificate that contains inaccurate information or errors can still serve as the basis for a lawsuit unless “…the inaccurate information was included on the application for copyright registration with knowledge that it was inaccurate…” and “…the inaccuracy of the information, if known, would have caused the Register of Copyrights to refuse registration.” 

The Copyright Act provides a way for district courts to seek advice from the Register of Copyrights. It used to be optional, but it is now mandatory in the Ninth Circuit if the registration certificate contains inaccurate information and that the inaccurate information was included on the copyright registration application with knowledge that it was inaccurate.

Authors and artists should be careful to correctly use applications that allow a group of copyrighted works to be registered in a single application. Rules have been relaxed and allow cost effective registration if you know what you are doing.

Consider taking iPscaling’s copyright creative workshop to learn the correct way to file for your copyright registrations. It’ll get you started right, and you won’t have to lose three quarters of a million dollars to learn this lesson.

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Uncategorized

Patent & Trademark Office Deadlines

The United States Patent and Trademark Office has provided a cost-free way to extend some deadlines that could not be met due to the pandemic. Some responses may be extended to June 1, 2020 if the delay was due to COVID-19 related circumstances. If you need help, schedule an online video meeting with Chris Paradies, a U.S. Registered Patent Attorney in Tampa, Florida, using this link: https://iPscaling.as.me/paradies.

Certain deadlines from March 27th to May 31st may be eligible for extension to June 1, 2020.

PATENT DEADLINE EXTENSIONS

The following responses in patent matters are included (without limitation):

  • reply to an Office notice issued during pre-examination processing1 by a small or micro entity;
  • reply to an Office notice or action issued during examination or patent publication processing;
  • issue fee;
  • notice of appeal under 35 U.S.C. § 134 and 37 C.F.R. § 41.31;
  • appeal brief under 37 C.F.R. § 41.37;
  • reply brief under 37 C.F.R. § 41.41;
  • appeal forwarding fee under 37 C.F.R. § 41.45;
  • request for an oral hearing before the Patent Trial and Appeal Board (PTAB or Board) under 37 C.F.R. § 41.47;
  • response to a substitute examiner answer under 37 C.F.R. § 41.50(a)(2);
  • amendment when reopening prosecution in response to, or request for rehearing of, a PTAB decision designated as including a new ground of rejection under 37 C.F.R. § 41.50(b);
  • maintenance fee, filed by a small or micro entity;
  • request for rehearing of a PT AB decision under 3 7 C.F .R. § 41.52;
  • request for rehearing of a PTAB decision under 37 C.F.R. §§ 41.125(c) or 41.127(d); or
  • petition to the Chief Judge under 37 C.F.R. § 41.3.

The patent office as provided additional instructions and may consider other extensions than those specifically listed. The patent office will waive the petition fee in 37 C.F.R. § 1.l 7(m) when the patent applicant or patent owner files the delayed response or fee with a petition under 37 C.F.R.
§ l.137(a) and the statement: “A practitioner, applicant, patent owner, petitioner, third-party requester, inventor, or other person associated with the filing or fee was personally affected by the COVID-19 outbreak, including, without limitation, through office closures, cash flow interruptions, inaccessibility of files or other materials, travel delays, personal or family illness, or similar circumstances, such that the outbreak materially interfered with timely filing or payment.” See 35 U.S.C. § 41(a)(7).

The inclusion of this statement is treated as a request for sua sponte waiver of the petition fee under 37 C.F.R. § 1.17(m). This petition to revive may be submitted via the USPTO patent electronic filing systems (EFS-Web or Patent Center) using document code PET.RELIEF or by mail directed to Mail Stop Petition, Commissioner for Patents, P.O. Box 1450, Alexandria, VA 22313-1450.

Notice that the list of reasons in the statement is not all inclusive. If the outbreak materially interfered with timely filing, for any reason, then an extension of time may be requested using a no fee petition.

TRADEMARK DEADLINE EXTENSIONS

The trademark office has provided instructions about the forms to use, types of matters eligible, and the language of the statement. The following responses for trademarks are included:

  • response to an Office action, including a notice of appeal from a final refusal, under 15 U.S.C. § 1062(b) and 37 C.F.R. §§ 2.62(a) and 2.141(a);
  • statement of use or request for extension of time to file a statement of use under 15 U.S.C. § 1051(d) and 37 C.F.R. §§ 2.88(a) and 2.89(a);
  • notice of opposition or request for extension of time to file a notice of opposition under 15 U.S.C. § 1063(a) and 37 C.F.R. §§ 2.l0l(c) and §2.102(a);
  • priority filing basis under 15 U.S.C. § 1126(d)(l) and 37 C.F.R. § 2.34(a)(4)(i);
  • priority filing basis under 15 U.S.C. § 1141g and 37 C.F.R. § 7.27(c);
  • transformation of an extension of protection to the United States into a U.S. application under 15 U.S.C. § 114lj(c) and 37 C.F.R. § 7.3 l(a);
  • affidavit of use or excusable nonuse under 15 U.S.C. § 1058(a) and 37 C.F.R. § 2.160(a);
  • renewal application under 15 U.S.C. § 1059(a) and 37 C.F.R. § 2.182; or
  • affidavit of use or excusable nonuse under 15 U.S.C. § l 141k(a) and 37 C.F.R. § 7.36(b).

For abandoned applications, the Trademark Electronic Application System (TEAS) “Petition to Revive Abandoned Application” form should be used. For canceled/expired registrations, trademark owners should use the TEAS “Petition to the Director” form.

In all trademark cases, the petition must include a statement: “The delay in filing or payment was due to a practitioner, applicant, registrant, or other person associated with the filing or fee was personally affected by the COVID-19 outbreak, including, without limitation, through office closures, cash flow interruptions, inaccessibility of files or other materials, travel delays, personal or family illness, or similar circumstances, such that the outbreak materially interfered with timely filing or payment.”

The inclusion of this statement is treated as a request for a waiver of the petition fee under 37 C.F.R. § 2.6(a)(l5).

The petition for trademarks must be filed not later than two months after the issue date of the notice of abandonment or cancellation. 37 C.F.R. §§2.66(a)(l), 2.146( d)(l). If the applicant or registrant did not receive a notice of abandonment or cancellation, the petition must be filed not later than six months after the date the trademark electronic records system indicates that the application is abandoned or the registration is canceled/expired. 37
C.F.R. §§ 2.66(a)(2), 2.146(d)(2).

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trademark, Uncategorized

Trademark Disputes

Can I use a word the same or similar to a famous mark in my advertising copy?

What about an apparently abandoned mark? Is that available?

Will I get sued if…?

Can I get a trademark for…? 

I see questions like these often in my practice, at parties and on social media.

Hi, I’m Chris Paradies, a registered patent attorney and Florida Bar certified intellectual property attorney, and I’m going to answer all of the confusion surrounding trademark registration and lawsuits.

I’m not going to get into “fair use”, much, which is a defense to trademark infringement. While I would like to include this, it would just make this training too long. And in most cases, you just don’t want to be relying on a fair use defense.

So, let’s look at trademarks.

There are some common misunderstandings that make it hard to talk about trademarks. But most of these will be addressed as we discuss this topic. Just agree to keep an open mind, and forget what you think you already know about trademark disputes.

First, always remember, the point of owning a trademark or service mark is to identify your company as the source of particular goods or services. If you start here, and remember this, it makes everything else easier. 

Why?

You’d like to have as distinctive a mark as possible. So, you’re not likely to be delving deep into the unanswerable questions. Instead, you’re looking for a distinctive mark that your customers will readily identify with your brand and ONLY your brand.

The point of distinctiveness is not to see how close you can come to someone else’s mark. You’re not looking for how close you can come to being likely to confuse consumers…

With this in mind, the very difficult likelihood of confusion scenarios become: “Is there any possibility of confusion?” That question is usually much easier to answer. 

What do I mean by “likelihood of confusion”? 

That’s the analysis used in court to determine if an owner of a mark can stop a third party from using or registering the same mark or a similar mark. The factors used in this analysis are sometimes referred to as Dupont factors, because lawyers like to refer to the name of a litigant from an appellate case that is cited by other lawyers in the courts.    

  1. Are you using the “word” as a mark, to identify your goods and services, or are you using the word descriptively?
  2. If you’re using the word as a mark, are you using it to identify you or your company as the source of any similar goods or services?
  3. Are you serving the same customers?
  4. Are you using the same channels of commerce?
  5. How many other companies are using the “word” or something similar as a mark and in what types of goods or services?
  6. Is the “word” used in combination with design elements in the logo, as part of the logo?
  7. Who used the “word” first as a trademark or service mark?

Once you answer all of these questions, then you should consult with a trademark or “intellectual property” attorney in your state or country.

If your company is a corporation or limited liability company, you won’t be able to sue without an attorney.

If the “word” is registered as part of a design as a logo by a third party, and you are using it in commerce as a mark to identify your company as the source of goods or services, after the filing date of the application for registration, then be thankful that you have not already been sued.

If you’re using it to identify the brand of goods or services that you are reselling, then you have to look at “fair use” to determine if your use of the third party’s mark is a permitted use.

And remember that there is little upside for you to bring a lawsuit against a third party to continue using any particular word, descriptively, if there are lots of other words that you can use to describe your goods or services.

With all that said, if you want to sue in the U.S., you have the right. I would advise against bringing a lawsuit against a trademark owner unless you have at least a few hundred thousand dollars you would like to blow. But I am sure there are attorneys out there that could use your money better than you.

So what are the “Dupont factors”? 

It all comes down to whether your trademarks and trade dress are distinctive or are likely to cause confusion among likely consumers of your product or service. The more distinctive your mark is from other marks, the less likely that any of the factors considered in the case referred to as Dupont will be relevant to your situation.

  1. Relatedness. How related are the goods that are being sold? The more related; the more likely that confusion ensues.
  2. Similarity. How similar are the marks? The more similar; the more likely confusion ensues. It could be any type of similarity, whether in appearance or in sound (as spoken) or in meaning or in commercial impression or in any other way.
  3. Channels. Are the channels of commerce that are likely to continue similar? A channel of commerce is how your product or service is discovered and distributed. Some examples are retail, direct sales, distributors…, if the channels are the same; the more likely that confusion ensues.
  4. Conditions. Under what conditions do consumers make a decision to purchase your product? The more likely the purchase is an impulse purchase; the more likely that confusion ensues.
  5. Fame. How famous is the prior mark? The more famous the mark; the more likely that confusion ensues.
  6. Number. How many other brands are using similar marks on related goods? The fewer brands using similar marks on similar goods; the more likely that confusion ensues.
  7. Actual. Is there actual confusion. The more actual confusion among actual relevant consumers; the more likely confusion ensues.
  8. Concurrent. Have the marks been used concurrently for an extended time without actual confusion? The shorter the period that similar marks have been used on similar goods without actual confusion; the more likely actual confusion.
  9. Variety. How many goods is the senior brand (i.e. the earlier brand use of the mark) being used on? The more goods; the more likely that confusion ensues.
  10. Consent. Has the senior brand consented to the particular use made by the junior mark? A consent agreement may be entered into by two parties that provides for concurrent use of similar marks. This may be relevant to a confusion analysis, especially if the agreement sets out limitations on the uses made of the mark by the parties. Alternatively, consent may be given without any agreement, if the senior party new or should have known of the junior party’s use. Legally, this implied consent is called laches or estoppel, depending on the facts. The less deliberate and obvious the attempts to avoid confusion; the more likely confusion ensues, regardless of consent.  
  11. Exclude. The right to exclude others from using its mark is considered. A federal registration gives a user the right to exclude others, but a “common law” use of mark, without registration, doesn’t give rise to the right to exclude, necessarily. The stronger the right to exclude; the more likely confusion ensues. 
  12. Extent. What is the extent of any possible confusion? The greater the extent of possible confusion; the more likely confusion ensues.

These factors are not exclusive. Anything else that is relevant to the use and giving rise to confusion should be considered

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trade secret, Uncategorized

Trade Secret Safety

It’s no secret that trade secret theft is rampant, and it seems that much of it is being supported by Chinese sources.

Recently, Hongjin Tan, a Chinese national and former scientist at Phillips 66, was sentenced to 2-years imprisonment following a guilty plea for copying files that contained trade secrets relating to battery technology. He downloaded hundreds of files to a flash drive before tendering his resignation. Some of those files were later found on Tan’s external drive at his home.

The technology was work $1 billion. Wouldn’t it have been a good idea to restrict access to those files? Do you have any restrictions on who can download restricted files in your business?

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iPscaling

Scaling your company’s iP or iPscaling is how innovative or creative businesses build value.

The “Concertina” principle shows business owners the way to build business value fast and efficiently.

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