August 26, 2019

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.

August 20, 2019

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.

August 19, 2019

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.

August 19, 2019

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.

June 30, 2019

May I copyright my business name?

You can’t copyright the name of your company.

You might be able to trademark the name or a portion of the name, if that makes sense.

So, what is the difference?

Copyright protects how you say something, and it isn’t available for names or short phrases.

Trademarks (and service marks) identify your company as the source of particular goods (or services).

You probably want to get some professional help if you are considering scaling up the value of your intellectual property (IP).

June 30, 2019

May I refer to a trademarked product when selling my product?

Yes, but be careful.

Having the right does not mean that you won’t be sued in America.

This particular right is described in the Lanham Act as a type of fair use.

The factors for “nominative” fair use are as follows.

  • a product or service must not be readily identifiable without use of the mark,
  • The user only uses so much of the mark as is necessary.
  • The user does not do anything to imply sponsorship or endorsement

In fact, it would be useful to provide a prominent disclaimer such as:

“All trademarks both marked and unmarked belong to their respective companies, and use of a trademark nominatively to refer to a particular product or service does not imply sponsorship or endorsement.”

June 21, 2019

Is there any copyright associated with classic fables like ‘Little Red Riding Hood’?

The purpose of copyright law is to give a incentive to the creative arts. The term of copyright exclusivity has increased over time, but there are still many works that are no longer protected by copyright.

These classics are in the public domain.

However, the version that most of us find familiar may not closely resemble the classic telling of the fable.

Copyright protects the the expression and not the idea. So, a new retelling of a classic fable is protected by copyright.

So long as your telling of the classic fable starts from the classic fable and is independently develops how you retell the story, you’re OK.

Of course, it would be wise to avoid similarities with any Disney version.

And asking for a copyright clearance search and opinion from a lawyer that specializes in copyright law would be a good idea if you plan to make significant money from your retelling.

June 20, 2019

What does “merely descriptive” mean?

A trademark or service mark is stronger and easier to protect if it is inherently distinctive, such as KODAK or XEROX.

However, most marketing folks gravitate toward more descriptive marks that are not inherently distinctive and, therefore, more difficult to register and protect. Some are “merely descriptive” and can’t serve as a trademark.

PURE APPLE for applesauce made from 100% apples would be merely descriptive of the product and could not serve as a trademark.

Oftentimes, the issue in a federal application for registration of a mark is not as black and white.

What happens when the trademark office refuses an application for descriptiveness? There are several options.

First, the mark may be abandoned and a more distinctive mark selected.

Second, evidence may be presented that the mark is suggestive but not merely descriptive. For example, the mark as a whole may have other connotations in customers’ minds than merely describing some aspect of the product or service.

Third, the Applicant may elect to publish the mark on the supplemental register, which sacrifices some of the benefits of a federal regisration:

  • no nationwide constructive notice of the registrant’s ownership;
  • no priority of use nationwide of the registered mark effective from the filing date of the federal application; and
  • no evidentiary presumptions in Federal Courts.

However, the supplemental registration is not an admission of descriptiveness, and Applicant may elect to apply for registration on the principal register with proof of distinctiveness (ordinarily relying on a presumption after five years of continuous use).

Fourth, if the mark has already been used and acquired distinctiveness, then evidence of acquired distinctiveness may be provided to overcome the refusal.

Fifth, Applicant may appeal the refusal to the Trademark Trial and Appeal Board, which is the most expensive and time consuming option. (It’s often not successful, either.)

June 20, 2019

Why Register Your Copyright?

Oracle was awarded $36 million in copyright-related damages, $29 million in attorney’s fees, and $3.4 million in taxable costs in a case heard by the Supreme Court of the United States.

Why was it awarded fees and costs?

Oracle prevailed in a copyright infringement lawsuit for its registered copyrights.

Under copyright law, a copyright owner of a registered copyright may recover fees and certain costs (taxable costs) associated with enforcing its copyright against an infringer, if the registration was filed properly, within the time allotted.

This is super important reason for registering your copyrights.

Consider the escalating costs of attorneys’ fees in IP litigation. It could cost you $200,000 in fees, easily, for even a simple copyright litigation.

You’ll want to make sure that your copyright in your “works of authorship” are properly registered within the time limits provided under the statute.

June 20, 2019

Should I trademark my upcoming business name?


Your business name is the legal name of your business. This is not your brand.

While your brand might be the same or similar to your business name, it doesn’t have to be.

I’ve seen people trademark business names with the “inc.” and all, and this is just so wrong.

Your trademarks protect a brand that you attach to goods (or a service mark used in providing services), and the trademark identifies your business as the source of those goods.

A registered trademark protects your brand by preventing others from using confusingly similar trademarks.

I caution entrepreneurs to establish their company and to register it with their secretary of state before filing for a trademark registration.

Then, the company, a separate legal entity, can file for and own its trademark (not the individual entrepreneur).

If you have a bona fide intent to use a trademark or service mark, you may file an application to register the trademark or service mark after you have formed your company or corporation that will own the trademark or service mark.

Also, I caution entrepreneurs to conduct due diligence on their marks. Check to see what your competitors are doing. Make sure that your marks are distinctive (i.e. different than anybody else’s marks) before using or registering the marks.