Legal Information : Intellectual Property Law

Legal Tips : Intellectual Property Law

 
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20-Feb-2009
IS MY PRODUCT LABEL PROTECTED?
Generally a product label would be considered trade dress if the label has been used in such a manner so as to denote the product source. Trade dress is a protected form of intellectual property on a common law, state and federal level. However, as...
 
30-Jan-2009
TYPES OF TRADEMARK INFRINGEMENT
TRADEMARK INFRINGMENT: PALMING OFF One popular form of trademark infringement and unfair competition is referred to as palming off or passing off. The following three situations make up this particular type of infringement: Where an individu...
 
02-Jan-2009
TRADEMARKS MUST BE DISTINCTIVE
All potential trademarks are placed into one of three categories: inherently distinctive, non-inherently distinctive or no distinctiveness. Trademarks that are placed in the "no distinctiveness" category are not eligible for trademark protection. ...
 
12-Dec-2008
DOES MY BUSINESS NAME QUALIFY FOR TRADEMARK PROTECTION?
Generally a business name is protected under the same legal theories as a trademark. A business name is considered a trade name instead of a trademark unless the trade name is being used by the business in a "trademark" sense, i.e, attaching the tra...
 
21-Nov-2008
TERM OF PROTECTION FOR A COPYRIGHT
Works created after January 1, 1978, are protected by copyright from the moment of creation for the author's life plus 70 years after the author's death. If a work has multiple authors, the work is afforded protection for all of the author's lives p...
 
26-Sep-2008
WHAT IS PUBLICATION FOR COPYRIGHT PURPOSES?
When filing a copyright registration application, you must state whether the work has been published and if it has been published you must state the date of first publication. The 1976 Copyright Act defines publication as follows: "Publication" ...
 
12-Sep-2008
Works Made for Hire
The copyright law specifically defines what constitutes a work made for hire. When considering whether a work is a work made for hire, you must first consider the relationship of the parties and whether or not the work was prepared by an employee or...
 
29-Aug-2008
WHO IS THE COPYRIGHT CLAIMANT?
Only the author of a work or one deriving their rights through the author can claim copyright ownership. One may derive authorship rights from the creator through a work made for hire. The most common work made for hire arrangement is the employer/...
 
29-Aug-2008
WHO IS THE COPYRIGHT CLAIMANT?
Only the author of a work or one deriving their rights through the author can claim copyright ownership. One may derive authorship rights from the creator through a work made for hire. The most common work made for hire arrangement is the employer/...
 
22-Aug-2008
CORRECT USE OF THE COPYRIGHT NOTICE
A copyright notice should be placed on all original works of authorship regardless of whether you have actually filed for a copyright registration. The copyright notice puts the public on notice that the work is protected by copyright, identifies the...
 
31-Jul-2008
WHAT IS COPYRIGHTABLE?
The United States Copyright Act provides copyright protection for "original works of authorship fixed in any tangible medium expression, now or later developed, from which they can be perceived, reproduced or otherwise communicated, either directly o...
 
31-Jul-2008
WHAT IS COPYRIGHTABLE?
The United States Copyright Act provides copyright protection for "original works of authorship fixed in any tangible medium expression, now or later developed, from which they can be perceived, reproduced or otherwise communicated, either directly o...
 
03-Jul-2008
IMPROVEMENTS TO LICENSED INTELLECTUAL PROPERTY - The Licensee's Perspective
If licensee is responsible for making improvements, then the licensee needs to give serious thought and consideration to how those improvements are going to be implemented. If the licensing agreement is a nonexclusive agreement, then the licensee wi...
 
27-Jun-2008
IMPROVEMENTS TO LICENSED INTELLECTUAL PROPERTY - The Licensor's Perspective
When entering into a licensing agreement, it is important to consider the likelihood of future improvements to that intellectual property either by the licensor or the licensee. This is an important aspect of a licensing agreement for both parties. ...
 
18-Apr-2008
PRELICENSE CONSIDERATIONS
Before entering into any licensing agreement there are several things that should be taken into consideration. I will discuss specifically the pre-license considerations dealing with trademarks, but these considerations are also highly relevant for ...
 
27-Mar-2008
LICENSING CONSIDERATIONS FOR INTELLECTUAL PROPERTY: ROYALTIES
Most licenses involve some type of money payment. When negotiating a license, the licensor must decide and negotiate with the licensee what type of payment they desire, i.e., a lump sum payment or periodic payments. Payments for use of a license ar...
 
29-Feb-2008
LICENSING CONSIDERATIONS FOR INTELLECTUAL PROPERTY: PART FOUR OF AN EFFECTIVE LICENSE
The fourth main requirement of an effective license is that the licensing agreement must specifically state what rights are reserved by the licensor. Many times a licensor will reserve rights to the intellectual property for their own use or for the...
 
22-Feb-2008
LICENSING CONSIDERATIONS FOR INTELLECTUAL PROPERTY PART THREE OF AN EFFECTIVE LICENSE
The third main requirement of an effective license is that the licensing agreement must specifically state what rights to the intellectual property are being licensed. Generally a licensor does not grant the licensee the right to utilize all availab...
 
08-Feb-2008
LICENSING CONSIDERATIONS FOR INTELLECTUAL PROPERTY PART TWO OF AN EFFECTIVE LICENSE
The second main requirement of an effective license is that the intellectual property must be protected by law or at least be eligible for protection by law. Therefore, if you have a trademark that you want to license to another business or individu...
 
11-Jan-2008
LICENSING CONSIDERATIONS FOR INTELLECTUAL PROPERTY PART ONE OF AN EFFECTIVE LICENSE
Over the next four weeks we will look at four main requirements to have an effective licensing agreement. The first main requirement is that the party granting the license must actually own the intellectual property and you must have valid intelle...
 
20-Dec-2007
LICENSING CONSIDERATIONS FOR INTELLECTUAL PROPERTY PART II
It is very important to first determine what type of licensing agreement that you need. There are many different types of agreements involving different types of intellectual property. Once it is determined exactly what intellectual property you ar...
 
16-Nov-2007
LICENSING CONSIDERATIONS FOR INTELLECTUAL PROPERTY PART I
From a licensor's perspective - Licensing is an excellent way to increase your profits without having to recreate the wheel or develop new products. In the next few weeks we will look at critical points that should be included in all licensing agree...
 
25-Oct-2007
PROPER COPYRIGHT NOTICE - PART III
This week we are turning our attention from trademark symbols to the proper use of a copyright notice. Although the use of a copyright notice is no longer mandatory in the United States as intellectual property attorney's we highly recommend it. Th...
 
19-Oct-2007
CONSEQUENCES OF NON-USE OR MISUSE OF TRADEMARK SYMBOLS - PART II
Because there are federal statutes governing the use of trademark symbols, it follows that there are consequences of non-use and/or misuse of those symbols. The greatest consequence comes with non-use of the trademark symbol ® after obtaining a fe...
 
12-Oct-2007
PROPER USE OF INTELLECTUAL PROPERTY SYMBOLS TRADEMARK SYMBOLS - Part I
For the next several weeks we will discuss how to appropriately use intellectual property symbols as well as any consequences for improper use and/or non-use. The well-known federal trademark symbol, which is an R enclosed within a circle ®, may O...
 
27-Sep-2007
BUSINESS NAMES AND TRADEMARKS
Generally your business name, also known as a trade name, does not function as a trademark. A trade name used only to identify your company and not your particular goods or services will be denied a federal trademark registration. However, if you u...
 
10-Sep-2007
THE THREE P'S OF IP - PROTECT, PROMOTE AND PROFIT FROM YOUR INTELLECTUAL PROPERTIES - PART II
Protection is an imperative component to exploiting and profiting from your intellectual property. Intellectual property is a label for different legal theories of protection being copyright, trademark, patent, trade secrets, and rights of publicity...
 
31-Aug-2007
THE THREE P'S OF IP - PROTECT, PROMOTE AND PROFIT FROM YOUR INTELLECTUAL PROPERTIES - PART I
Many people and small business owners only think of their intellectual property in terms of copyrights, trademarks, and patents. However, intellectual property also includes customer information, software code, databases, business models, brands, ho...
 
17-Aug-2007
ALL SMALL BUSINESSES HAVE INTELLECTUAL PROPERTY WORTH PROTECTING
Most small business owners spend a great deal of time figuring out how to increase the net worth of their businesses. When intellectual property is protected it becomes an asset of the business, gives the business a competitive advantage, and increa...
 
27-Jul-2007
THE FEDERAL ANTI-DILUTION STATUTE
The federal anti-dilution statute only applies to famous marks. In determining what constitutes a famous mark, the Court has established an eight factor test. The eight factors to be considered are: (1) the degree of inherent or acquired distinc...
 
03-Jul-2007
STATE ANTI-DILUTION STATUTES
As discussed last week, anti-dilution statutes began on the state level. Many states have amended their anti-dilution statutes to conform to the federal anti-dilution statute. Tennessee for example, in 2000 amended their anti-dilution statute to re...
 
15-Jun-2007
THE TRADEMARK DILUTION THEORY
The trademark dilution theory is premised on the idea that ANY use of a similar trademark dilutes the original distinctive, well-known trademark already in use. The trademark dilution theory found its way into practical application through state and...
 
08-Jun-2007
LIKELIHOOD OF CONFUSION VS. ANTI-DILUTION STATUTES
The likelihood of confusion test prevents the registration of two confusingly similar marks within the same or similar class of goods or services. However, where the likelihood of confusion test ends, the dilution theory begins. In 1996, the Federa...
 
25-May-2007
Is My Mark Being Infringed?
According to the Lanham Act, one of the criteria for determining trademark infringement is whether a mark "is likely to cause confusion, or to cause mistake, or to deceive". This criteria is also considered in the examination of a federal trademark ...
 
11-May-2007
PERSONAL NAMES AND TRADEMARKS
Personal names and surnames may be used as trademarks; however, there is no "sacred" right to use your personal name as a trademark. The Lanham Act generally prevents federal trademark registration of a mark that is "primarily merely a surname". Th...
 
20-Apr-2007
IS MY FEDERAL TRADEMARK REGISTRATION PROTECTED INTERNATIONALLY?
Every country has its own trademark statutes and procedures. Generally, someone in Japan can own and use a trademark in Japan and someone else in the United States can obtain a U.S. trademark registration for the same mark without committing tradema...
 
13-Apr-2007
THERE'S NO SUBSTITUE FOR A FEDERAL TRADEMARK REGISTRATION
A state trademark registration provides trademark protection; however, the amount of protection provided is minimal. As you know from prior Tips of the Week, in order to be eligible for a federal trademark registration, you must participate in comme...
 
28-Mar-2007
WHAT IS SECONDARY MEANING? WHY AND WHEN IS IT REQUIRED?
As discussed in prior IP Tips of the Week, a trademark must be distinctive in order to acquire trademark protection. However, some marks that are initially non-distinctive may acquire distinctiveness through obtaining secondary meaning. Some of the...
 
16-Mar-2007
IS MY BUSINESS SLOGAN A TRADEMARK?
A slogan is capable of trademark registration so long as it is used in such a way as to identify and distinguish the seller’s good and services from those of others. When picking out a slogan, however, it is important to keep the slogan short. The ...
 
01-Mar-2007
TRADEMARKS AND DOMAIN NAMES
Owning a trademark includes owning the rights the use the domain name bearing the same name as the trademark. There are currently two main avenues to resolve disputes among domain name owners and trademark owners. The first solution is ICANN which ...
 
26-Jan-2007
WHAT IS A STRONG TRADEMARK?
The strength of a mark is measured by its distinctiveness. In fact, the Second Circuit Court of Appeals has stated that “distinctiveness” and “strength” are synonyms. The strength of a mark measures the degree of that distinctiveness for the purpos...
 
05-Jan-2007
RIGHT TO PUBLICITY
The right to publicity is the inherent right of every person to control the commercial use of his or her identity. The right is considered property therefore it is properly categorized as intellectual property. The right to publicity is derived f...
 
28-Dec-2006
WHAT IS TRADE DRESS?
Trade dress focuses on the total image of one’s product or packaging. It is not just a single word or phrase that denotes your product; it is the overall appearance or look of the packaging. The Eleventh Circuit Court has defined trade dress as i...
 
22-Dec-2006
SECTION 8 & 15 AFFIDAVITS
Once you receive your trademark Registration Certificate, there are two Affidavits that must be filed between the fifth and sixth year from the date of registration. The Section 8 Affidavit is proof that the mark is still being used in commerce. Yo...
 
15-Dec-2006
TRADEMARK REGISTRATION CERTIFICATE
Once the Opposition Period is completed and no oppositions have been filed to your trademark application, you are finally ready to receive your trademark registration certificate. This entire process generally takes about 12 months to complete barrin...
 
08-Dec-2006
STATEMENT OF USE AND EXTENSION OF TIME FOR INTENT TO USE TRADEMARK APPLICATIONS
Every intent-to-use application must file a Statement of Use within six months of the date that the Notice of Allowance is issued proving that the mark is actually being used in commerce. If within six months, the mark has not been used in commerce,...
 
30-Nov-2006
THE TRADEMARK PROCESS – PART V REGISTRATION
If no opposition is filed against the trademark application during the opposition period, then a Registration Certificate is issued for the use-based application. If you have filed an intent-to-use application, then a Notice of Allowance is issued wh...
 
10-Nov-2006
THE TRADEMARK PROCESS – PART IV - THE OPPOSITION PERIOD
Once an application has been approved by the Examining Attorney, it is then published in the USPTO Official Gazette for public opposition. This allows others who believe they may be harmed by the proposed registration to file an opposition proceeding...
 
27-Oct-2006
THE TRADEMARK APPLICATION PROCESS - THE EXAMINATION - PART III
Once the trademark application is filed, it is assigned to an Examining Attorney with the United States Patent and Trademark Office. The Examining Attorney reviews the application for a variety of legal issues and/or defects. The Examining Attorney...
 
20-Oct-2006
THE TRADEMARK PROCESS – PART II
Once your mark has been through the preliminary screening process, then you are ready to move forward with your trademark application. If it is a use-based application, you must provide your attorney with a specimen showing the mark affixed to the go...
 
12-Oct-2006
DESCRIPTIVE TRADEMARKS
Common law has determined that marks must be distinctive so that they serve the purpose of distinguishing the producer of goods or provider of services from others. Marks that describe the goods are inherently non-distinctive because they do not dis...
 
05-Oct-2006
THE TRADEMARK PROCESS - PART I – SEARCHING FOR SIMILAR TRADEMARKS
Before filing a trademark application, a preliminary search should be conducted in order to be certain that another mark has not been filed or registration obtained that is likely to be confused with your mark. There are two searches that should be...
 
22-Sep-2006
INTENT-TO-USE TRADEMARK APPLICATIONS
You may file an intent-to-use federal trademark application when you have not yet used the mark on goods shipped in commerce or in connection with services that span across the state line. This is a relatively new innovation in the United States trad...
 
15-Sep-2006
USE-BASED TRADEMARK APPLICATION
You may file a use-based federal trademark application when you have already adopted and are using the mark on goods shipped in commerce or in connection with services that span across the state line. If you are filing a use-based application, you m...
 
08-Sep-2006
THE PURPOSE OF A TRADEMARK
The main purpose of a trademark is to promote the goodwill of an individual or company by recognition of the quality of the product or service through a trademark. A good mark distinguishes the level of quality of products or services. In doing so, c...
 
01-Sep-2006
DATE OF FIRST USE - SERVICEMARK
The date of first use for a servicemark is determined by the date the mark is used or displayed in the sale or advertising of services AND the services are rendered in commerce. For a servicemark, you must sell or advertise your services and then ac...
 
25-Aug-2006
DATE OF FIRST USE - TRADEMARK
The date of first use is an extremely important factor in a use-based trademark application. The date of first use is determined by the date that goods are first shipped in commerce with the mark affixed to the goods. This date, in an opposition or...
 
18-Aug-2006
THE #1 RULE IN TRADEMARK LAW
When two individuals or businesses discover that they are both using a confusingly similar mark, there must be a way to determine who has senior rights to continue using the mark. Under common law, the individual or business that is the first to shi...
 
14-Jul-2006
THREE LEVELS OF TRADEMARK PROTECTION
There are three levels of protection available for your existing or desired trademark. All individuals or businesses that have adopted and are using a mark are automatically protected by common law against anyone else that may subsequently begin usi...
 
23-Jun-2006
What is a Trademark?
According to federal law, a trademark is “any word, name, symbol or device or any combination thereof adopted and used by a manufacturer or merchant to identify his goods and distinguish them from those manufactured or sold by others.” A service...
 
19-Jan-2006
GENERIC TERM VS. TRADEMARK?
A word or phrase that is deemed generic can never serve as a trademark. The function of a trademark is to identify and distinguish the goods or services of one seller from those sold by all others. A generic term is one that is used as the name of ...
 
25-Jul-2005
BENEFITS OF BEING A COPYRIGHT OWNER
Copyright protection is available for original works of authorship including literary, dramatic, musical, artistic, and certain other intellectual works regardless of whether they are published or unpublished. The owner of a copyright is afforde...