Trademark Protection – Cease and Desist

In America, a lot of successful companies like Apple, Disney, Google and Microsoft invest time and money into trademark protection.  However, trademark protection is not limited to large companies, many smaller companies including sports teams and universities also invest in trademark protection.  In some cases, they have whole departments in charge of brand management where they go out and look for use by others of their trademark or brand.  Why do these companies and universities spend so much time and money policing their trademark?

A trademark can represent real money to companies, teams and colleges.  A trademark represents a companies goodwill and is associated with a companies brand.  Successful companies invest in their brand to engage and build customer recognition.  Customers who associate a brand with a product or service are more likely to make purchasing  decisions based on the brand recognition.  To help customers easily recognize the brand, companies use trademarks and logos on their products.  In addition, some of these companies and colleges license the use of their brand to others.  For example, most NCAA college sports teams require that you obtain a license before selling branded apparel or products bearing their logo.  Why?  If a company or college does not protect its brand they risk loosing their brand.  You’ve heard the phrase “use it or lose it,” with a brand or trademark its– “protect it or lose is.” Therefore, many colleges and companies actively monitor trademark use by others and when the find use which is problematic, they actively take steps to stop it.

Thousands of trademark lawsuits are filed each year because someone uses someone else’ trademark.  In fact, in the past ten years, over forty thousand trademark cases have been filed to stop someone from using a particular trademark or logo.  Each case can involve hiring a trademark attorney and paying a settlement fee.  The cost for each trademark lawsuit can be very expensive and it represents a large investment, monetarily, emotionally and it can take a long time.  Weighed against the cost of the filing a trademark lawsuit, the failure to file a trademark lawsuit may cause a business or university to lose its trademark.  The cease and desist letter is a good first step to resolve any dispute between the parties prior to paying for the cost of litigation.

A trademark owner has an obligation to police and enforce a trademark which may include preventing someone from causing consumer confusion and this may include filing a lawsuit and seeking an injunction.  Typically, a trademark owner begins protection of their trademark with a trademark registration.   After a trademark has been registered, the next step to protecting a trademark is to send a cease and desist letter.

A cease and desist letter asks someone to stop using a brand, trademark or logo.  These Cease and Desist letters can ask someone to stop using the mark.  In other cases, the party may make a list of demands related to the use, such as to stop using the mark and destroy specific items. Sometimes, the brand owner demands an accounting and monetary payment in exchange for resolving the matter without a lawsuit.   There is no obligation to send a Cease and Desist letter, but if one is sent, the receiving party should carefully consider their options and respond accordingly.  Seeking a lawyer would be a good start.

If you are interested in discussing your options related to sending or receiving a trademark letter, please contact our office and schedule an appointment with one of our trademark attorneys.


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Online Trademark Search

A trademark search can involve reviewing the official records of the United States Trademark Office, which are free.

Before Applying for a trademark, you should conduct an online trademark search.  Because trademarks are awarded to the first user of a mark, a trademark search may reveal if there are any other trademarks which have been registered or if any trademark applications have been filed which are the same or similar to your mark.  Because many of the trademark databases are available online for free, you can conduct your own search in advance of filing a trademark  application.  If you want you can conduct your own search using our online trademark search.  Alternatively, you can search the federal database yourself for any marks which are similar or identical to your mark or you can search Google.

There are many different types of trademark searches.  The cost associated with conducting a search can range from free to very expensive, depending on the scope of the search.  Often a trademark applicant simply wants a knock-out or clearance search. In other cases, they may want an international, common-law and federal trademark search.  If this is of interest, you should contact a trademark attorney to help you determine which type of online trademark search is right for you.  After you finish the search, you can  apply for a trademark online by simply answering a few questions.

The most common, a clearance search can be used to determine if there are any pending applications with the United States Trademark Office which are identical to your mark.  It can be used to review registered trademarks, pending trademark applications, abandoned trademark applications and trademark registrations.  Other trademark searches which may be beneficial to conduct include a common law search, a state-by-state search, an international search, a domain name search and a corporate name search.

A common law trademark search involves researching if others are using the same name or mark you wish to register.  In some cases, this may include a search on Google or some other internet search engine.  Because not every trademark is registered, a common law search may uncover some uses which a knock-our or clearance search won’t.

A state-by-state trademark search may also be helpful.  Because a trademark may be registered federally or at the state level, sometimes searching the records of every state can uncover additional uses which a federal, knock-out or common law search won’t find.  Often times the state databases are not available on line and the only way to uncover any registrations is to use one of the commercial databases which we can access.

Because trademarks are used all around the world, sometimes it is beneficial to investigate if a mark is registered outside of the United States. Some of these international countries make their database available for free, while others do not.  Because obtaining individual access to these databases may be difficult, if not impossible, if this is a concern you should speak to one of our trademark attorneys.

After you have completed your search, if you still want to prepare a trademark application, you can use our online trademark application process and with a few short answers, one of our trademark attorney’s can prepare your trademark application.

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IBM patents add 1.2B to revenue

PatentIBM Patents add almost 1.2B to IBM’s revenue.  That’s 1.19 billion dollars to IBM’s revenue as a result of its intellectual property licensing.  This also includes 82.5 million which a jury recently awarded to IBM in a patent infringement suit against Groupon for infringing four of IBM’s e-commerce patents which were awarded back in the 1980s.

Here is a copy of the Jury Verdict.   IBM-jury-verdict

Originally, IBM requested 167 million dollars for patent infringement of its four e-commerce patents.  At the conclusion of the trial, the jury determined that Groupon willfully infringed each of IBM’s four patents.  Groupon failed to prove that the IBM patent claims were invalid, that Groupon had a license to one of IBM patents or that the IBM patent rights were exhausted as a result of a license to Facebook and Google.  As a result of the jury award, the judge may increase this award even more.

IBM has been one of the biggest names in the patent world. Most years, it files and for the last 25 years has received the most patents out of any company in the United States.  IBM patents represent a large investment and last year it cost IBM $6 billion.  That is a lot of money to make more computer software, methods and devices.  Most of the biggest companies in America pay a license to IBM for IBM patents, including Amazon, Google, Facebook, Twitter and LinkedIn. This was the first patent case IBM has had to take to trial in the last 25 years and was the first patent case it has taken since the patent laws were change to make it more difficult to bring a patent infringement case.

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How to Copyright a Website

A common question we get from new businesses is how to copyright a website.  The U.S. Copyright Office does not expressly recognize websites as being copyrightable.  However, you can register the text, images, sounds, movies, computer code or even databases associated with a website or web page.

A website is generally considered to be an interconnected set of electronic pages which are located on a computer and are provided to the public across the internet.  They often contain multiple works such as text, artwork, photographs, music, videos or other copyrightable content which can be easily copyrighted.  The website may also be registered as a compilation or collective work in certain situations.

To register a website, you will need three things.  A completed application, a filing fee and a copy of the materials you wish to register.  Generally, each work to be protected must be registered separately; However, in some cases you may be able to file a single application for a group or collection of works.  Most people find that the most difficult part of the copyright application process is completing the application for copyright registration.

Because most websites are produced by a particular computer browser on a particular computer as visual and textual material, most website copyright applications are not registered with the actual computer code (typically HTML).  If there is a reason to register the computer code, the copyright application must only extend to the actual portion of the website computer code which was created by a human being and not the portion of the computer code which was written by a computer.

Contact one of our copyright attorneys to talk about how to copyright a website or we would be happy to talk with you about the various pros and cons about copyright registration and protecting your business website.


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Remedies for Patent Infringement

What patent infringement remedies are available when someone violates your patent rights?  What happens when someone infringes your patent rights?  Can you sue them?  Can you get money?  Can you stop them?  Yes, in some cases.

One of the main benefits of a patent is the ability to exclude others.  A patent gives the owner the right to stop someone from infringing upon their patent rights.  However determining what you are entitled to when someone violates your patent, is very difficult.

Patent law is a balance between encouraging an inventor to invent and allowing society to grow.  Protecting the investment of time, cost and ingenuity which an inventor contributes to create an invention inthe inventor to a reward for the inventor to invent.  to get a promoting growth of our society by allowing others to use these inventions after the patents expire.  Patent law is the preferred mechanism for protecting and enforcing rights related to an invention, although contracts can also be crafted which also protect an inventor in certain situations.

Generally, patent law allows a patent owner to enforce it patent rights by stopping any infringing use and obtain payment for any damages suffered by the unauthorized use of the patented invention.  Typically, the court will stop the infringement through an injunction though a court order which can be a preliminary or permanent injunction depending on the stage of the litigation.  In addition, patent law also allows patent owners to collect money for any losses suffered as a result of the unauthorized use by the infringer.

In order to obtain patent infringement remedies, a federal lawsuit must be filed in federal court. Alternatively, the parties can agree to settle their dispute through arbitration.  When the infringing goods come from outside the U.S., the International Trade Commission (ITC) may be utilized to resolve the dispute.  However, no compensation for past infringement or attorney’s fees are available in an ITC proceeding.

The patent owner may sue to recover monetary damages. When trying to determine the amount of money to award, the court will typically look towards the amount of cash necessary to restore the patent owner to the same financial position he or she would have been in had the infringer violated the patent owner’s rights. The three traditional modes of measuring compensatory damages are lost profits, established royalty, and reasonable royalty.

  • Lost profits, in the form of sales diversion, price erosion, or increased expense, are an appropriate basis for recovery when the patent owner or an exclusive licensee exploits the lawful exclusive rights of the patent directly by manufacture, use, or sale.
  • If the owner chooses to exploit the patent through offering licenses at an established royalty rate, that rate is the appropriate basis for recovery.
  • Absent sufficient evidence of lost profits or an established royalty, the patent owner may in any case recover against the infringer not less than a reasonable royalty. A reasonable royalty is the royalty that willing parties would have agreed to had they negotiated a license under the patent.

To preserve the ability to get the greatest amount for any infringement, the patent owner should ensure proper notice is placed on any product covered by the patent.  For example, notice is given when the patent owner marks each patented product with the designation “patented,” or the abbreviation “pat.,” followed by the patent number. Such notice should be applied to the patented article or articles made by a patented process.

If this is not possible, labels bearing the notice should be applied to the packaging for the articles. In the absence of this marking, actual notice of the specific patent must be given to an infringer, and damages can then only be obtained for infringements after notice.

If you have any questions or need assistance in determining the appropriate patent infringement remedy,  contact one of our patent attorneys today at 913-345-0090.

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Fanciful Trademark

Many people wonder about a Fanciful Trademark?  Why should anyone want a fanciful trademark?

Fanciful Trademarks are stronger than Suggestive Marks

Quaker Oats, as a stylized mark, is an example of a strong distinctive pictorial trademark, incorporating a distinct image of a man on its products.

Generally, trademarks help consumers distinguish one product or service from another by acting as a source identifier.  It helps consumers wanting to purchase Quaker Oats branded oatmeal purchase Quaker Oats and not some “knock-off.”

Trademark protection offers greater protection for stronger marks and less protection for weaker marks. Generally, stronger marks are marks which are distinctive and weaker marks are marks which are descriptive. Fanciful, Arbitrary and Suggestive marks are strong marks which are typically considered distinctive enough to receive trademark registration on their own.

Fanciful trademarks are marks which are typically made up and only have meaning when applied to a good or service.  An example of a fanciful trademark is Exxon or Xerox.  The words themselves have no meaning other than to indicate a brand of product.

The next strongest type of mark is an Arbitrary Mark, which is a mark which has meaning but as applied to a particular good or service, is unrelated.  An example of an arbitrary mark is Peter Pan for peanut butter.  Peter Pan is a name of a children’s character in a book but as applied to peanut butter, it has no particular meaning.  As to peanut butter, it is distinctive.

Suggestive Marks are considered the next strongest because they suggest some character or quality of the good or service.  Suggestive Marks do not describe the good or service, but require some form of imagination on behalf of the consumer to associate the mark with the good or service.  Suggestive marks are also protectable, but not as much as Fanciful or Arbitrary Marks.

Descriptive Marks describe the particular good or service and are protectable after a showing of sufficient good will.  An example of a descriptive mark is Bank of America.  On the other hand, Generic marks are not protectable because they are simply a common name for the product or service.  An example of a generic mark would be lite beer for light beer.

If you have questions about choosing a strong trademark, please contact our office to schedule a meeting with one of our trademark attorneys.

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Copyright Application vs. Copyright Registration

Today, the U.S. Supreme Court announced that it will take on the issue of whether a copyright registration or a copyright application is required before bringing a copyright infringement suit.

Currently, depending on the location of your copyright lawsuit, some courts require a copyright registration.  Other Courts simply require that you have filed a copyright application prior to bringing suit.  This means there is a split among the Federal Courts as to whether a copyright owner must fully register their works before suing.

Copyright Law does not require a registration to have a copyright.  However, before you can bring a copyright lawsuit you must have an application.  According to Section 411(a) of the Copyright Act:

No civil action for infringement of the copyright in any United States work shall be instituted until . . . registration of the copyright claim has been made in accordance with this title. In any case, however, where the deposit, application and fee required for registration have been delivered to the Copyright Office in proper form and registration has been refused, the applicant is entitled to institute a civil action for infringement if notice thereof, with a copy of the complaint, is served on the Register of Copyrights.

On its face, copyright registration must have been made prior to bringing suit.  However, various federal courts have interpreted that requirement differently.

Courts in favor of allowing suit based on a copyright application. Some courts reason that copyright applications are routinely granted.  The is the only barrier to receiving a registration is the application.  In addition, because the Copyright Office is backlogged, the filing of the application is enough.  Requiring a registration will punish the victim of a potential copyright infringement.  Refusing a lawsuit until their registration is approved will punish them even further.

Courts in favor of the copyright registration requirement.  Some courts believe the copyright law is clear on its face. According to Section 411, registration ….[must] be made before a lawsuit can be filed.  There is no ambiguity or wiggle room.  Even if the copyright registration process takes months, the courts can not be used to settle a copyright dispute until a registration is received.

It is unclear how the Supreme Court will respond.  I suspect the Court will take a literal approach to the registration requirement.  Copyright lawsuit filings have been increasing since 2009.  Prior to 2009 there were only thirty thousand copyright cases filed.  Since 2009 that number has grown annually, reaching over five thousand cases in 2015. It is unclear how many of those lawsuits involve registered works, but if registration is required the number of copyright lawsuits will decrease which will ultimately decrease the number of cases the courts will have to decide.

The Supreme Court granted the petition for writ of certiorari in the case of Fourth Estate Public Benefit Corp. v. LLC.  If you have a copyright case which involves a registered or unregistered copyrighted work, you should contact one of our copyright attorneys.

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Searching for Patents

Searching for Patents can Save Thousands of Dollars.

Patent Searches can save Thousands

Recently the U.S. reached its 10 millionth patent. Internationally, there are more than 1 million patent applications filed each year but only about 50-70% of them result in a patent. A conservative estimate for preparing and filing each application is around $10,000. This means that the odds are roughly 50-50 that an inventor will receive a patent after spending $10k (and no, there are no refunds).

Many of the patents that are rejected, are rejected because they are not new or they are obvious in light of existing patents.  A professional, properly conducted patent search can help identify patents which may indicate the invention is not new or that if new, is obvious. In addition, searching for patents can help identify who the competition is, who a potential licensee is and how others have attempted to solve the same problem and failed.  The benefit of the patent search can often be non-monetary.  Generally, the cost for the patent search can begin around $500 to $2,500 (and can go up from there).

If you hire an attorney conduct a search and spend around $500, the results may indicate that your patent may be unsuccessful. In this case, the search just saved you $9,500.  If as a result of the search, the inventor makes changes to the invention and the application on the modified invention is allowed, the $500 search just help save your $10,000 investment.  Then, if the inventor turns the patent into a profitable business, the benefit of the search can often far exceed its cost.

Prior to filing an application, we encourage our clients to consider searching for patents, which can result in a better application and may save an inventor thousands of dollars.

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Trademark Actions – Reverse Passing Off

Trademark law protects your business against confusion, which can be created by Forward Confusion, Reverse Confusion, Passing Off and Reverse Passing Off.  If this occurs, a trademark infringement lawsuit may be necessary to protect your business.

Trademark Rights

Trademark law functions as a type of unfair competition law and protects businesses against competitors stealing customers or harming the goodwill of the business by creating confusion.

Trademark law covers a business’s brand, slogan, logo and packaging and it may be enforced federally (under the Lanham Act) or on a state-by-state basis under existing state laws.  If a business is likely to loose customers or looses customers as a result of confusion between competitors, then the business may be able to bring a trademark infringement action under the Lanham Act.

In general, the first user (referred to as the senior user) has superior trademark rights over the later user (referred to as a junior user).  If necessary, the senior user can file a trademark lawsuit to stop the junior user from causing confusion.  This confusion can be as to source, affiliation, sponsorship and endorsement between the competing companies and it can occur before the sale, at the time of the sale or after the sale has occurred.

Forward Confusion

Typical trademark confusion which occurs when customers mistakenly think the junior user’s goods or services are associated or come from the senior user.  This is forward confusion and is the traditional confusion which is examined.  Customers want to buy the senior user’s products (think Original Pasta Co.) and mistakenly purchase the junior user’s products (think New Pasta Co.), believing them to be the senior user’s. For example, customer’s want to buy Original Pasta’s pasta in the red and white bag and they buy the red and white bag of pasta, but it is New Pasta Co.’s pasta.  The customer’s mistakenly purchased New Pasta Co’s pasta thinking it was Original Pasta’s pasta.

Reverse Confusion

However, there is a second type of confusion — Reverse Confusion which may also infringe a trademark.  In a reverse confusion situation, the junior user creates customer confusion but in reverse.  In contrast to the example above, the customer’s mistakenly think the senior’s users goods or services come from the junior user.  This may happen for example, when the junior user dominates the market with goods or advertising.  In such a case, the senior user’s brand loses value because it may become associated by the consuming public with the junior user instead of the senior user.

For example, Original Pasta Co makes macaroni under the name MACS and New Pasta Co make macaroni under the name MAX.  New Pasta Co. makes theirs MAX pasta with a green stripe. Customers see lots of advertising showing MAX macaroni with a green stripe and they go to Original Pasta Co asking to purchase the green stripe macaroni under the name MACS, mistakenly believing Original Pasta Co is the same as or affiliated with New Pasta Co.   Customers then learn that Original Pasta Co does not have a green stripe macaroni and they think Original Pasta Co stole the MACS mark from New Pasta Co, believing them to be selling macaroni which was a knock-off of New Pasta Co. MAX pasta.

In this case, there was not forward confusion.  Customer’s didn’t mistakenly purchase New Pasta Co’s pasta thinking it was Original Pasta Co, they actually went to Original Pasta Co to purchase the macaroni.  They just thought Original Pasta Co was an imitator of New Pasta Co and thought they and their products were inferior.  This is an example of reverse confusion.

Passing Off

Another area of interest to trademark infringement is Passing Off and Reverse Passing Off.  Passing off (or palming off, as it is sometimes called) occurs when a a company misrepresents his own goods or services as someone else’s. Reverse passing off, as its name implies, is the opposite: The company misrepresents someone else’s goods or services as his own.  In the case of Original Pasta Co and New Pasta Co., passing off would be if Original Pasta Co. made green striped macaroni and advertised and sold it to the public.  If New Pasta Co, made an inferior green striped macaroni and sold it as Original Pasta Co’s green striped macaroni, that would be Passing Off. The public would believe that the inferior macaroni product was Original Pasta Co’s and their reputation and goodwill would be harmed and/or diluted.

Reverse Passing Off

Reverse Passing Off occurs when New Pasta Co. purchases Original Pasta Co’s green striped macaroni, repackages it under their own name and sells it as their own.  In this case, the public would come to associate the qualities of Original Pasta Co’s green striped macaroni product with New Pasta Co’s. and Original Pasta Co’s goodwill would become diluted over time.

If you have questions about trademark infringement and whether Forward Confusion, Reverse Confusion, Passing Off or Reverse Passing Off has occurred, please contact one of our trademark attorney to discuss your trademark rights.

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10M Patent – Standing on Shoulders of Greatness

10 Mill Patent Cover

New Cover of Patent, celebrating 10th Million U.S. Patent

The 10th Million Patent was issued on June 20, 2018 to Joseph Marron for a “Coherent LADAR Using Intra-Pixel Quadrature Detection,” which relates to lasers.  This milestone in U.S. patent history truly shows that we are standing on shoulders of those who have come before us.  According to the USPTO, the 10th Million Patent shows that the U.S. patent system helps society progress through human ingenuity as referenced in the Constitution through Article III section 8, in which Congress was called on to “promote the Progress of Science and useful Arts.”

“Never before in history has innovation offered the promise of so much to so many in so short a time.” – Bill Gates

Throughout our history, encouraged by the U.S. Patent system, innovation has fueled amazing economic growth in our Country. Our growth is based on the development and often improvement of others.  We are standing on shoulders of those whose inventions has helped us and furthered our society.  With a 225-year history of awarding patents, it is amazing to realize that in just thirteen years between 2001 and 2014, more than three million U.S. patents were issued.  Over the years, as society has changed, the patents issued to our inventors has changed.

#1 1790 Pot ash
#1M 1911 Puncture resistant tire
#2M 1935 Rail Car Braking System
#3M 1961 Automatic machine language coding system
#4M 1976 Asphalt recycling process
#5M 1991 Ethanol production process
#6M 1999 Data synchronization process
#7M 2006 Polysaccharide Fibers
#8M 2011 Artificial vision system
#9M 2015 Windshield wiper fluid system
#10M 2018 frequency-modulated laser detection and ranging system

According to the USPTO, the new cover design, incorporates a design, typography, and printing, is a “forward-looking, contemporary take on the significance of what the document represents, with a particular emphasis on the value of a patent and its role in the future of our economic and cultural growth.”

As we celebrate the 10th Million U.S. Patent, lets remember what Sir. Isaac Newton said to Robert Hooke in 1675: “If I have seen further, it is by standing on the shoulders of giants.”

...standing on the shoulder's of giants.

Newton’s Letter to Hooke


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