Publications
In Episode 1 of She-Hulk: Attorney at Law (streaming on Disney), attorney Jennifer Walters must stop presenting her case and instead turns into a Hulk and saves the jurors after superhuman Titania bursts into the courtroom. Several episodes later, Ms. […]
Just over one year ago, I authored an article published in Lawyer Monthly discussing the latest technology craze, Non-Fungible Tokens or “NFTs,” which explained, in simplified terms, what NFTs are and how they work, before ending on a cautionary note: […]
No one wants to receive a cease and desist letter – knowing that you are potentially facing a lawsuit is understandably stressful. That said, there are important steps you can take to ensure that, in the event, the matter proceeds […]
They say that beauty is only skin deep, but globally the beauty industry is growing exponentially and only getting stronger with an estimated value of $511 billion in 2021, up from $480 billion in 2020. New brands are appearing in […]
Unfortunately, the economic sanctions currently imposed on Russia are not impacting just Russia. They are also impacting nationals of the western countries that levied them, such as the U.S. As a result, it can be difficult for a U.S. national […]
If you have ever watched Monday Night football, you may have noticed that during the program’s introductions, pro football players who played at and graduated from Ohio State exuberantly identify their alma mater as The Ohio State University. Well, […]
One question clients often ask is why they need a trademark registration? What is the point? Typically we hear this when someone has infringed on our client’s rights and our client is seeking to understand why having a trademark registration […]
Over the past several years, we have written extensively on patent subject matter eligibility – the so-called Alice standard, which has been evolving. In brief, the Alice standard precludes claim allowance when the claim is directed to a mental process […]
The technology used to create what we eat is big business. Thus, patents which can be obtained on the composition of new foods and on the methods to make them are also a big business. One active area of intellectual […]
The answer is simple: If you’re filing for only one mark, file for the word mark! Meaning in standard character format without regard to font, style, size, or color. Registration of a word mark is the broadest type of trademark […]
The metaverse is as real as digital gets. Think of the metaverse as a digital universe, with galaxies populated by stars and planets, all interconnected by black space. It is at least as big and as varied as the universe. […]
A significant change to European patent law is coming into effect soon and companies with European patents, pending applications, or who are considering filing in Europe should take note. Nearly a decade after the enabling EU regulations were passed, the […]
Any consumer of journalism on the internet is likely familiar with embedded social media posts, which are often used to provide examples of a trend discussed in a story or to form the basis of the story itself. Embedded posts […]
Complainants often rely on agency law to force a car manufacturer or distributor to defend a patent lawsuit in a federal court located in a district of the complainant’s choice when the car manufacturer or distributor does not have any […]
Unless one is living in a bubble, one is well aware of the online game called WORDLE. Since the beginning of the year, Josh Wardle’s online game has quickly became an internet sensation. The New York Times in fact […]
Part 2: What is a Trademark Search and Why Do I Need One?
Clients and prospective clients commonly ask, “when is the best time to file my trademark application?” Part 2 of this 3-part series explores trademark searches and the […]
During the Supreme Court’s Fall 2021 term, the Court took up the matter of Unicolors v H&M to interpret Section 411 of the Copyright Act, which was amended in 2008 to codify a judicially created defense known as “Fraud on […]
I get asked this question a lot. It is a great question. You may be surprised by the answer….
But first, let’s review some information that’s relevant to our question.
What is Licensing? Essentially, licensing is ‘renting’ your intellectual property […]
Many brands value social media influencers as an authentic and relatively inexpensive way to market their goods and services to the public. A recent lawsuit involving influencer marketing, and the precedent it may set, may give both brands and influencers […]
You have created an ornamental design and are considering intellectual property protection. What kind of protection is available? How should you protect it? This article explores the different types of available intellectual property protection, including copyright, design patent and trademark. […]
What happens if a copyright application includes incorrect information and the registrant subsequently sues an alleged infringer?
Under Section 411(b) of the Copyright Act, the alleged infringer can assert a defense that a copyright owner is not entitled to the […]
In 2008, Jessica Seinfeld was sued for copyright infringement over a cookbook she wrote. The copyrighted cookbook, entitled Deceptively Delicious, showcased recipes that allow parents to sneak healthy food into foods picky children would eat, primarily by pureeing the healthy […]
All patents are directed to inventions that are useful in some way, but not all patented inventions are likely to elicit any particular emotional response from the end-user practicing the invention. However, some inventions are specifically designed to help spread […]
The Madrid Protocol is an international treaty with more than 122 member countries that permits trademark owners residing in any of the member/contracting countries to file an international application in their home country and be able to register the mark […]
The Trademark Modernization Act of 2020 (TMA) was signed into law on
December 27, 2020, and portions of it will take effect on December 27, 2021.[1] It will give
individuals, businesses, and the U.S. Trademark Office new tools to address […]
Back in the early 1960s, the individual Robert Kearns came up with the idea for an invention that all of us who drive the car routinely use. His invention was the intermittent windshield wiper system. Prior to his invention, windshield […]
Part 1: Seven Reasons Why a Trademark Important to My Business
Clients and prospective clients commonly ask, “when is the best time to file my trademark application?” This 3-part series explores and answers this question along with other commonly asked […]
Undoubtedly, October is the most exciting month for every sports fan. Both the NFL and college football are in full session while baseball playoffs are in full swing, with teams competing to make the World Series. Also in October, the […]
The National Inventors Hall of Fame Museum is physically located at the United States Patent and Trademark Office in Alexandria, Virginia. Over 500 people are enshrined in the Hall of Fame, with enshrinement determined, per the Hall of Fame’s description, […]
Design patent protection is territorial. A simplified process of protecting a design patent in multiple countries can be done via the Hague International Design System. This article explores the basics and what to expect when using the Hague International Design […]
China has always been the subject of extensive conversations among trademark lawyers, on the various challenges that are constantly encountered when attempting to protect and enforce trademark rights there. On paper, the process does not seem to be complicated, but […]
In the U.S., an applicant for patent has a duty to disclose to the U.S. Patent and Trademark Office (USPTO) all information known to the applicant as being material to the patentability of the claimed invention. When an applicant intentionally […]
Americans recently faced the twentieth anniversary of the horrifying terrorist attacks on the World Trade Center and the Pentagon. Thousands of innocent lives were lost that day and thousands more either barely escaped or were just far enough away from […]
Olivia Rodrigo’s single “Good 4 U” was a big hit this summer among Gen-Z, boasting record-breaking streaming numbers. Three months following its release, singer Hayley Williams and ex-guitarist Josh Farro of the rock band Paramore received writing credits. What happened? […]
Did you know that there is an awards program that is run by the United States Patent Office called Patents for Humanity? Former President Obama started the program in February 2012 in order to encourage the development of new technologies […]
I am often asked what interesting cases I am working on. Recently I have been involved in matters where clients have been accused of using colors that allegedly infringe on the trademark rights of others. When I describe these cases […]
Under patent law, there are court-created doctrines under which one cannot properly challenge the validity of a patent. One such doctrine is Assignor Estoppel, whereby someone who previously owned a patent, such as an inventor, and assigned it to another […]
On June 15, 2021, Jay-Z, the iconic rap artist whose real name is Shawn Carter, filed a lawsuit in a federal court in California alleging that his rights of publicity and privacy were being violated by photographer Jonathan Mannion and […]
Copyright law has not caught up with the increasing popularity of tattoos in mainstream U.S. culture. A handful of tattoo copyright infringement claims have been brought recently, most settling before a court ruling. The lack of case law and absence […]
I was reading the newspaper the other day and it was reported that Spencer Silver, a chemist who quite accidentally invented the adhesive that is now used for POST-IT notes, passed away earlier in the month. POST-IT notes, what a […]
The Kardashians have been frontrunners in celebrity branding and are certainly no strangers to the importance of protecting their famous names with the U.S. Patent and Trademark Office.
More than seven years after the launch of the brand KARDASHIAN BEAUTY […]
From the development of agriculture, if not before, people have been inventing ways to preserve, process, package, and cook food. Things we take for granted today, such as home refrigeration, freeze-drying and vacuum packaged food, continuous ovens and freezers for […]
The summer of 2019 was a busy year for the Canadian Trademark system. Canada updated its trademark laws, adopted the Nice classification system, and joined the Madrid Protocol. This meant that Canada could now be designated in an International Registration. […]
On April 5, 2021, the United States Supreme Court released its decision in a landmark copyright case, Google LLC v. Oracle America, LLC, siding with Google and providing new guidance on “fair use” for the first time in over […]
Your businesses’ intellectual property (“IP”) is a valuable asset. Similar to real property, IP is valuable. However, unlike real property, IP is intangible. After spending money in developing and securing the intellectual property, including design patents, utility patents, trademarks, and […]
General:
Q. What are the different types of intellectual property protection available?
A. A patent protects a product’s utilitarian/ functional or ornamental aspects, a trademark protects the brand or symbol that identifies a product’s source and copyright protects written and […]
You spend time, money and effort on creating a successful podcast. You should also be thinking about protecting it. After all, aren’t you working hard to create insightful or fun content; demonstrate yourself as a thought leader; share information with […]
Readers might be familiar with a product called a Diaper Genie diaper pail which forms a plastic wrap around a soiled diaper inserted into it, providing benefits of improving hygiene and the aroma around a diaper pail. It happens that […]
Did you know the New York State Brewers Association was founded nearly 50 years before the New York State Bar Association? In fairness, beer was first produced in Mesopotamia at least a thousand years before the legal profession began to […]
When acquiring a company or purchasing assets from a company, it is important to conduct extensive due diligence to ensure that the acquisition goes as smoothly as possible. Although financial disclosures and business terms are undoubtedly important aspects of an […]
The COVID-19 pandemic has changed a lot of things, but it has not changed the trademark related scams faced by U.S. trademark applicants and registrants. Unfortunately, those scams are alive and well.
Fraudulent Trademark Communications
In September 2020, the Trademark […]
Last June, I brought to you a summary of what I called the “finale” to Tiger King: Murder, Mayhem, and Madness saga, which centered on a long-running case involving copyright and trademark infringement claims levied by Carole Baskin’s Big Cat […]
There are many issues relating to the COVID-19 pandemic and the vaccination process that began in early January. At the forefront of the news are questions of how to streamline distribution and deciding who is eligible and who is not. […]
Taylor Swift’s new album, entitled “evermore,” has been heavily promoted and has received widespread acclaim since its release in December 2020. Along with that promotion came substantial media coverage of a lawsuit filed by a theme park in the State […]
Note–this article contains spoilers.
Thirty-four years after the premiere of the original Karate Kid movie in 1984, the wildly popular series Cobra Kai recently completed its third season on Netflix. Starring several of the same actors from the original movie, […]
In August 2020, an ambitious computer programmer publicly tweeted Elon Musk for permission to use his name and the SpaceX logos in a video game about colonizing Mars. The programmer planned on reposting the tweet every day for a year […]
1. My business hired and paid a freelancer/small company to record a video/take a photo/create an image/create a logo/create content for the business’ website. Does my business own the copyright to this content?
A: A freelancer/small company engaged by a […]
Covid-19 has dramatically changed the way retailers and fashion brands conduct their business in the United States and many countries of the world. Due to stay home and locked down orders, online retail outlets have seen close to a 200% […]
Just before Christmas, Congress passed the Consolidated Appropriations Act of 2021, which included a second round of Coronavirus relief as well as several important changes to federal copyright and trademark law. In a pair of articles, our team addresses these […]
Just before Christmas, Congress passed the Consolidated Appropriations Act 2021, which included a second round of Coronavirus relief as well as several important changes to federal copyright and trademark law. In a pair of articles, our team addresses these legislative […]
In the movie Forrest Gump, Forrest, while on a cross-country run, creates the ubiquitous yellow and black smiley face by rubbing his muddy face on a yellow t-shirt. As he hands the muddy t-shirt back to the person who […]
When someone files a patent application with the U.S. Patent and Trademark Office, they have an obligation to disclose relevant or analogous prior art. So when it comes to an examiner or a court determining whether claims should be allowed […]
Can twenty-first century technology solve the problems of our current voting system? Can twenty-first century technology ensure that mail-in voting is trusted by everyone? A new patent filing says YES.
For almost all Americans, it has been a strained and […]
If someone does not have rights to a patent, they cannot sue for infringement of that patent. Of course, patents can be assigned (or transferred) from one person or entity to another. Under 35 U.S.C. 261, “Applications for patent, patents, […]
While many eyes are focused on the Supreme Court and the appointment process of Amy Coney Barrett, the Court of eight began its Fall session this month, taking oral argument on several cases, including one important and complex copyright case: […]
Last week, sadly, Eddie Van Halen passed away after a long battle with cancer. Eddie along with his brother founded the band that bears their last name, Van Halen in 1972. Over the years, the band produced hits that include […]
The United States Copyright Office implemented a new rule last month permitting group registrations of “short online literary works,” aimed at benefiting authors of online content including online newspapers, poems and posts to blogs or social media websites and platforms. […]
When I was a child, one of my favorite activities was sauntering around Tower Records or the music section of my local Borders or Barnes N’ Noble – rarely with any intention of buying anything in the moment, more than […]
A trademark registration provides protection for the goods and/or services provided in connection with the mark. An early question your trademark attorney will ask is “What are the goods and services you intend to protect?”
In an earnest attempt to […]
Almost everyone is familiar with Sherlock Holmes, the world’s most famous fictional detective and master of deductive logic. Less well-known is the detective’s much younger, but equally brilliant sister, Enola Holmes. In the original Sherlock Holmes stories, Sherlock’s only sibling […]
For a variety of reasons, it is important to properly list the inventors to a patent application. However, there can be a question as to when someone should be considered “an inventor.”
Under 35 U.S.C. § 116(a), “When an invention […]
Where an examiner at the U.S. Patent and Trademark Office requires a disclaimer of a rock band’s name because it is primarily geographically descriptive of the origin of the applicant’s goods and/or services under Section 2(e)(2) of the Lanham Act, […]
Patent claims are written with an opening statement, which is referred to as the preamble. The preamble typically describes the type of claim (e.g., method, system, apparatus, or composition) and describes the nature of the invention. It is followed by […]
A group of publishers, made up of Hatchette, HarperCollins, John Wiley & Sons and Penguin Random House, have sued the Internet Archive for infringement in its “Open Library”of the copyrights of over 127 books by C.S. Lewis, J.D. Salinger, Lemony […]
The country trio Lady A, formerly (and far better) known as Lady Antebellum, recently filed a trademark lawsuit in federal court against blues singer Anita White, who goes by the name Lady A. The trio is seeking […]
On May 25, 2020, George Floyd was killed when a Minneapolis police officer kneeled on his neck for 8 minutes, while Floyd was lying face down with his hands cuffed behind him. His last words “I can’t breathe” became the […]
On May 4, 2020, the Supreme Court held arguments in the matter of the United States Patent and Trademark Office vs. Booking.com.[1] No, you’re not experiencing déjà vu – our summary of oral arguments was published in the […]
Post “Megxit”, the decision of Meghan Markle and Prince Harry to step down as working royals, the Queen and senior officials ruled that the Duke and Duchess of Sussex are no longer authorized to use the term “royal’ as part […]
What do a TV star, a Brooklyn rapper, a New York City subway busker and some college basketball players have in common? They got moves! And not just any moves – enviable dance moves that are now appearing in video […]
By Fiona R. Peng of Jiaquan IP Law, Guest Author
When designing a trademark, many people may want to include the specific country name or city name as a major part of the trademark, so as to indicate clearly the […]
U.S. trademark practice is unique in many ways, with many esoteric requirements and practices that are not present in most other countries. The most common example is the stringent bona fide use in commerce requirements for maintenance of a trademark […]
While Space Force, the American comedy series created by Steve Carell and Greg Daniels that launched ten episodes on May 29, 2020 may be in a race to put American boots on the moon again, Netflix Studios is in […]
In case you missed it, Tiger King: Murder, Mayhem, and Madness debuted on Netflix this Spring and caused quite a stir. The docu-series explores the life of the now infamous “Joe Exotic,” a real life Oklahoma showman and fanatic who […]
Last week, Twitter, after receiving a complaint for copyright infringement, decided to pull a Trump campaign video that included a tribute to George Floyd from a pair of tweets posted by the President. The video, which included pictures of Floyd, […]
For many companies and individuals, and especially with the coronavirus pandemic continuing to cause economic damage in the United States and throughout the world, it may well be cost-prohibitive for you to immediately file a full-blown formal patent application on […]
Unless you’re an intellectual property attorney, trademarks are probably the furthest thing from your mind right now. More pressing concerns, like re-opening your business and finding essential items such as toilet paper, are likely at the forefront of your mind. […]
A recent, unanimous Supreme Court decision has apparently made it easier for a trademark owner to recover an infringer’s profits in a trademark infringement action. The decision could have a wide-ranging impact, putting far more emphasis on an alleged infringer’s […]
New Tampa Bay Buccaneers quarterback Tom Brady has brought a gift to those in the trademark world that enjoy terrible word-play. He very recently filed federal trademark applications with the U.S. Patent & Trademark Office in an attempt to claim […]
The coronavirus pandemic has thrown normal life into complete disarray. Day to day living has brought significant adjustments in how people live, work, eat, learn, and shop. Business has come to a standstill… or so it seems. Even in the […]
By Shuxian Zhen of Jiaquan IP Law, Guest Author
In the past, foreign enterprises were mainly focused on making use of China’s resources such as abundant labor force and vast market when they made investments in China. But now, more […]
UPDATED May 15, 2020
The current pandemic of the coronavirus (COVID-19) has affected all industries throughout the world, including the world of intellectual property. The prosecution of intellectual property, including patents and trademarks, is deadline intensive. However, in view of […]
On February 9, Hollywood’s biggest stars walked the red carpet outside of the Dolby Theater at Hollywood and Highland, and Parasite took home the Oscar for Best Picture. And while the fun in the night is in stargazing, looking at […]
Meghan Markle has been one of the most talked-about names in the tabloids and social media upon her engagement to Prince Harry. In the aftermath of Megxit, the dubbed term for Meghan Markle and Prince Harry’s decision to step back […]
Early this year, VICE published an article about the MTA sending a take-down notice under the Digital Millennium Copyright Act over an NYC subway map designed by Jake Berman, a private citizen, and an amateur mapmaker, being sold by him […]
The U.S. Trademark Office has recently increased scrutiny on specimens and on claims of use in commerce. This is likely in response to a proliferation of fraudulent use claims and of “fake” specimens that some unscrupulous applicants create strictly to […]
In 2018, two UK professors and a scientist from Missouri filed patent applications in the US, Europe, and the UK for a new interlocking food container design that is easier for robotic systems to grab, and a warning light with […]
It’s Thanksgiving and making turkey is a must for most. Personally I don’t like to eat turkey, but do enjoy the holiday gatherings with friends and family. I don’t envy those who have to make the turkey. This year, I […]
As another trick-or-treating season comes and goes, it is worth looking at the changing trends in copyright law that touch on Halloween costumes. For decades, it was accepted law that costumes are not copyrightable under the United States Copyright Act. […]
The doctrine of equivalents is a legal rule in patent law whereby a party can be liable for infringement even though the party does not literally or precisely infringe every limitation of a patent claim. In 1948, Judge Learned Hand […]
In a recent article that appeared on The Wall Street Journal entitled “The Elements of Sneakers” the author starts with an interesting question: “What’s the last pair of shoes you bought? Let me guess: sneakers.”
The article goes on to […]
Liquid crystal display (LCD) panels are the most widespread type of display panels in use today. They are found in a plethora of electronic devices including wristwatches, smartphones, handheld gaming consoles, laptop computers, televisions, gasoline pumps, etc.
A liquid crystal […]
Over the past decade, social media has become one of the main platforms for businesses and individuals to spread brand awareness and to promote their products. The rise of the use of social media by businesses and individuals has resulted […]
When it comes to choosing a trademark, there are opposing forces at play. Your marketing person wants an easy to remember trademark that quickly conveys the selling points of the product or services. On the other hand, your trademark attorney […]
As revelers in Times Square celebrated the end of 2018 and greeted 2019, works including Cecile B. DeMille’s The 10 Commandments (his original, silent version, not the version with Charlton Heston, which was a remake); Agatha Christie’s Murder on the […]
To promote the accuracy and integrity of the trademark register, the USPTO started a pilot program in November of 2017 which randomly examined 500 post registration declarations of use filed in conjunction with either sixth year declarations of use (Section […]
Recently the U.S. Patent and Trademark Office rejected a patent application for a cannabis strain because the same type of cannabis was mentioned in an online blog. The fact that cannabis having a THC content greater than 0.3% is still […]
On June 24, 2019, the Supreme Court decided Iancu v. Bruneti. In the 6-3 affirmance, the Court struck down the Trademark Act’s prohibition on the registration of “immoral” or “scandalous” trademarks, Section 2(a) of the Trademark Act, 15 U.S.C. […]
Criteria regarding business method patents continue to evolve. In two recent cases, the U.S. Court of Appeals for the Federal Circuit described what is meant by “an inventive concept,” and when software-based invention claims recite a “technical solution to a […]
Quarterback Tom Brady of the New England Patriots is usually attacking in the air. Now he is on the legal attack. His business entity, TEB Capital Management , which owns all of the trademarks that Tom has used and registered, […]
“Trust the Process,” the catchphrase that was associated with the Philadelphia 76ers basketball team has been taken to another level by Joel Embiid, a Cameroonian player on the 76ers. On May 14, 2019, the USPTO granted Embiid a trademark registration […]
China has arguably become an important market for many foreign brands since it joined the WTO in 2001. China has adopted the first-to-file principle [1] which makes trademark registration a big deal. However, the differences of trademark practice and culture […]
According to a new U.S. patent application filing that was recently published, the behemoth technology company Samsung is apparently working on a smartphone design that features a display which wraps around the phone from the front to the back and […]
While design, development, testing and/or improvement of a product or system falls squarely within the job function of many employees, far too often companies miss out on the opportunity to protect potentially valuable intellectual property because employees are not focused […]
Amazon is one of the most popular shopping websites, selling everything from books to electronics. As a result, it is no wonder that most companies want to sell their goods on Amazon. In order to sell on Amazon, you must […]
The Trademark Trial and Appeal Board, or TTAB for short, is the administrative body that adjudicates trademark matters at the U.S. Trademark Office. Among other things, its authority includes deciding opposition proceedings brought by third parties against a mark that […]
On March 4, 2019, the Supreme Court in Fourth Estate Public Benefit Corp. v. Wall-Street.com, LLC, 586 U.S. __ (2019) resolved a hotly debated circuit split as to whether a copyright owner can file an infringement lawsuit without a […]
Individual inventors, startups, and other types of businesses that invest in the development of new technologies oftentimes conceive a new and valuable invention. Patent protection immediately comes to mind, but the type of patent application to file depends on a […]
When adopting a new name for a product or service, it is difficult to understate the importance of conducting a clearance search to determine whether the name of the product or service is available for use and registration. A comprehensive […]
Sometimes, patents are granted for inventions which at first may not seem innovative or novel. Instead of protecting a traditional apparatus or a method, protection can be provided for just the layout of a space. Three examples follow. The real […]
Many of us have grown up playing the famous board game known as MONOPOLY where we learned to acquire real estate, collect rent, build houses and hotels while forcing other players or opponents into bankruptcy or go to jail! It […]
This Sunday, Super Bowl mania invades Atlanta, Georgia. Many local and national businesses have been gearing up for weeks with marketing campaigns focusing on perhaps the most popular sporting event of the year.
But while the event brings numerous business […]
Significant changes are coming to the Canadian Intellectual Property Office (CIPO). The changes were passed into law in June 2014. The new law is not yet in force, but will be in force on June 17, 2019.
Changes to […]
Intellectual property gives its owner certain exclusive rights and can be a significant part of a company’s assets. IP can be sold, licensed to third parties, enforced in court against an infringer, and even used as collateral to secure a […]
In a recent legal proceeding that took place in the EU Intellectual Property Office (EUIPO), McDonald’s lost its European trademark rights to the well- known BIG MAC name. An unexpected decision by the European Union ruled in favor of a […]
The world of trademarks is quite fascinating. Individuals and companies invest large amounts of money and resources in the creation of brands that are fanciful and arbitrary. At times and despite their efforts or, perhaps, due to their efforts, these […]
Sometimes, patents are granted for inventions which may not seem innovative or novel.
Did you know that you might be in a hotel room that is protected by patent? U.S. Patent No. 9,194,143 is owned by Six Continents Hotels, Inc., […]
Halloween is a favorite and growing holiday. The National Retail Federation estimates that Halloween spending in the U.S. for the 2018 Halloween season will reach $9 billion. Helping to drive this market are the inventors, designers, and businesses who for […]
Over the past few years, we have written on the evolving rulings relative to patentability of business methods, beginning with the Alice case at the U.S. Supreme Court. Since then, several court cases have led to improved understanding of what […]
Promoting environmentally-friendly innovation has become an important feature for national and international environmental policy in the 21st century. ‘Green’ innovation is envisioned by most governments as an essential way to address environmental issues and promote sustainable development and growth. […]
I rounded the corner and saw my destination ahead. As I parked my car and walked towards my destination, the sounds of barking dogs and the shuffling of feet became louder. The garage door slowly opened. Dead leaves were scattered […]
Design patents are used to protect the ornamental appearance of an innovation, such as an innovative shoe. Historically, in order to file for a design patent for a three dimensional object, figures ordinarily must be included showing the object from […]
Who doesn’t love the music of the Beatles? From 1962-1970, the Fab Four wrote and performed over 200 original songs, many of which were huge chart topping hits. From standards like Yesterday, In My Life, Hey Jude and […]
Trademark protection is territorial. Rights of a U.S. federally registered trademark extend only throughout the U.S. and not across the border to our neighbor to the north. There are a few good reasons why a brand owner would want or […]
We chocoholics in the U.S. surely recognize the three-dimensional shape of a chocolate-covered wafer bar confection having the form of two or four trapezoidal fingers as a “Kit Kat®” chocolate bar, even if it seems that the shape is not […]
Whenever it is possible, we like to get out of the office and go see our clients at their place of business. Doing this helps us learn about their business, see what new products and ventures they are working on, […]
On May 18 of this year, the U.S. Patent and Trademark Office issued a federal trademark registration for Hasbro’s trademark application in connection with PLAY-DOH’s “sweet, slightly musky, vanilla fragrance, with slight overtones of cherry, combined with the smell of […]
In 1984, Congress enacted the Drug Price Competition And Restoration Act of 1984 (known as the Hatch-Waxman Act) in order to eliminate two discrepancies regarding the term of a United States patent. These discrepancies were the result of the approval […]
It is important that the actual inventor or joint inventors of claimed subject matter be named on a patent regardless of whether the patent lists an assignee as the applicant. Failure to correctly list the actual inventor(s) can result in […]
As a tax lawyer, I often hear about how confusing people find the tax laws to be. If you’re reading this, you’re likely to be deeply involved in some industry other than tax, and you wish you could have the […]
“We’ve updated our Privacy policy.” You’ve probably heard this phrase hundreds of times, whether it be from a service you subscribe to or whenever you first visit a website. Nowadays, you may be seeing updates to privacy policies more frequently. […]
I read the e-mail twice. A longstanding client was asking whether they could show on their website a video they found on YouTube. They explained that they thought that could use the video since it was their understanding that things […]
Clients facing problems with online counterfeiting often ask us what they can do to stop the sale of the low-cost counterfeits. One thing we frequently recommend is that trademark or copyright rights, as appropriate, be recorded with U.S. Customs and […]
We have reported on developments regarding Alice v. CLS Bank and later cases in the past as these cases can be used toward business method patent applications. As background, in Alice, the Supreme Court held that mere abstract ideas, […]
This Article Was Originally Published on IPWatchdog on February 1, 2018.
While it might seem like an obscure topic, the issue of sovereign immunity comes up with some regularity in intellectual property disputes. When it applies, its effect may be […]
Arguably the best actress of her generation, Meryl Streep has appeared in over 50 movies and shows over the past 45 years. Perhaps best known for her versatility and accent adaptation, Streep has for the first time at age 68 […]
For any business, small or large, be it a start-up or one that is established, it is important to make sure that you are not infringing on the patent rights of another when launching a new product. While there may […]
In patent applications, it is critically important to use well-defined terminology. Patent applications are comprised of words and pictures which both describe the invention and state the proposed scope of protection. Both the words and the pictures should be crystal […]
A recent front page article in a prestigious newspaper commenting on the sale of the Weinstein Company at a low price was quite revealing of the problems that major figures in the entertainment world could face as a result of […]
The Unites States Supreme Court is getting more and more involved in patent related matters. In this year’s decision of TC Heartland LLC v. Kraft Foods Group Brand LLC, No. 16-341, May 22, 2017 (U.S.) , the Supreme Court significantly […]
We live in a world dictated by pressure and anxiety. Relaxation, fitness and comfort have become the norm for consumers to deal with stress and improve their health.
Companies in apparel, fitness and wellness are competing to deliver the best […]
Originally appeared in The Connector in September 2017
In part because renewable energy is a growing industry, it is ripe for inventiveness and patentability. New inventions seem to spawn daily in areas such as solar, wind, geothermal, bio-energy, and energy […]
One of the fundamental aspects of the Internet today is the ability to share information with others quickly and easily. Today there are hundreds of applications and websites dedicated to the ability of sharing information, but even in the Internet’s […]
When considering intellectual property protection in foreign countries, U.S. registrants tend to choose a variety of countries that immediately come to mind, such as Canada, Mexico, the EU, and China. However, other countries which may be subject to global conflict, […]
We have written in the past about the importance of a robust and comprehensive written description. That importance became evident in Rivera v. ITC and Solofill, a recent Federal Circuit case regarding a granted patent for a coffee brewing […]
I was watching my son’s little league game when a client sat down next to me in the bleachers to ask about that most resilient of intellectual property canards: the “Ten Percent Rule.”
“If I am inspired by a work,” […]
Originally published in The Connector magazine in July 2017.
If you are a member of the fashion industry, protecting your intellectual property can be the difference between success and failure. It is vitally important to understand the different types of […]
It is established law that ordinarily a patent holder’s patent rights to a product end, or exhaust, upon sale of the patented product to another party. For example, if a patent holder holds a patent for a jewelry item, once […]
This article was originally published in IPWatchdog blog.
An Inter Partes Review (IPR) is an important tool for companies that face frequent patent infringement challenges. An IPR is essentially a mini-litigation focusing solely on patent validity conducted before a panel […]
“Technology,” as the old saw goes, “moves faster than the law.” To but it briefly, when the universe of what is possible expands daily, the gatekeepers of what is permissible—derived from intricate legislation and the accretion of factually analogous case […]
There are many reasons why it is important for companies to get opinions from counsel addressing patents of particular concern to the companies’ products. Some reasons include helping identify design changes to avoid potential infringement issues, to provide comfort to […]
As more patents are challenged in view of Alice v. CLS Bank, which was directed to the patentability of algorithm-based inventions (among others), the courts provide additional clarity as to what is and is not patent eligible subject matter […]
On May 22, 2017, the U.S. Supreme court issued an anxiously awaited decision addressing where patent patents lawsuits can be filed. The unanimous decision, TC Heartland LLC v. Kraft Foods Group Brands LLC, significantly narrows the options available for […]
When I tell people that I represent clients in the restaurant industry, they often give me puzzled looks and ask me why restaurants would need any kind of intellectual property protection. The truth is that restaurants face the same kinds […]
This article was originally published in The Connector magazine.
With the proliferation of the internet and more media outlets, the opportunity for scams and misinformation grows. Certainly, as scams and misinformation proliferate, entrepreneurs are finding more and more ways to […]
Over the past several years, the U.S. Supreme court has been particularly active in addressing issues related to patent law. This year will be no different. Following on the heels of its Samsung v. Apple decision in late 2016 changing […]
A design patent protects the ornamental presentation of an article or product. This can include the product’s configuration, shape, and/or surface ornamentation. Design patents are limited to the appearance of the product and do not cover structural or functional features […]
To register a trademark with the U.S. Patent and Trademark Office (“USPTO”), a trademark owner must use the mark in “interstate commerce.” As evidence that the mark is in use, the applicant must submit a sample of the mark–called a […]
The claims of a patent define the scope of protection. But one issue that can be bothersome is how definite the claim language has to be.
First, the statutory language requires definiteness in claims. “The specification shall conclude with one […]
Since the American Tobacco Company put baseball players on promotional cards in 1920, third parties have been appropriating the names and likenesses of professional athletes for profit. Fortunately for these professional athletes, there are several avenues in the United States […]
When an Examiner examines a patent application, the Examiner is supposed to apply a “broadest reasonable interpretation” standard. In D’agostino v. Mastercard Int’l Inc. (Fed Cir., December 22, 2016), the Federal Circuit placed limits on how broadly an Examiner may […]
The Kardashian name is one of the most recognized household names. Fueled by the brand savvy iconic sisters Kim, Khloe and Kourtney, the Kardashian name has become a mega brand for marketing everything from reality television shows, advertising services to […]
The Kardashian name is one of the most recognized household names. Fueled by the brand savvy iconic sisters Kim, Khloe and Kourtney, the Kardashian name has become a mega brand for marketing everything from reality television shows, advertising services to […]
On December 6, 2016, the U.S. Supreme Court issued a long awaited decision in Samsung Electronics v. Apple addressing the scope of damages available when a U.S. design patent is infringed. Reversing a damage award to Apple of $399 million, […]
This fall, the U.S. Supreme Court agreed to consider whether a specific provision of the Trademark Act which bars the registration of disparaging trademarks violates the First Amendment right to free speech. In the case Lee vs. Tam, the […]
Fans are very possessive of the objects of their enthusiasm, and the internet serves to simultaneously enhance their enjoyment of—and their claim over—their favorite worlds and characters. By way of example, many viewers “live tweet” television shows, and participate in […]
Is it possible to obtain trademark rights from promotional products? Is it possible to protect the category of promotional products bearing a trademark if the products are unrelated to the core business of the trademark owner, and are given away […]
Originally published in Thomson Reuters’s Westlaw Journal on September 9, 2016.
Companies doing business abroad should reassess their data policies in light of the newly-enacted EU-U.S. Privacy Shield and the potential outcome of the UK’s decision to leave the EU. […]
If you are considering releasing your proprietary software under an open source license or if you plan on incorporating source code which is governed by an open source license into your proprietary software, you need to fully understand the terms […]
The U.S. Copyright Act of 1976, in general, protects original works of authorship fixed in any tangible medium of expression from which they can be perceived, reproduced, or otherwise communicated, either directly or with the aid of a machine or […]
Jacob Feldstein, a student intern at GRR, contributed to this article.
Let’s say you have a great idea for a software-based computer program, like a computer game, an image editor tool, or any other program one could operate on a […]
In filing for patent protection for an invention, almost all countries require that the subject matter that is claimed in a patent application must not be known or otherwise be part of the prior art. The prior art includes different […]
Companies are often created because the founders have a concept they think will take hold. Sometimes, the founders believe the concept is novel, can be protected, and can result in considerable value. For an emerging business, this Intellectual Property (IP) […]
A version of this article was originally published in Trademarks + Brands Blog, August 11, 2016.
Few indulgences could be less complicated than enjoying the sweet crunch of a cookie. Unburdened by the fussy pretensions of designer cakes and faddish, […]
Jacob Feldstein, a student intern at GR&R, contributed to this article.
The opening guitar riff to Led Zeppelin’s “Stairway to Heaven” (1971) is well known, but how did it get to be newsworthy recently? The band Spirit claimed that the […]
Hashtags are everywhere. They can be seen on storefronts, in advertisements, on packaging and, of course, on social media. Given their prevalence, it is hardly surprising the hashtags, like domain names before them, have found their way to the U.S. […]
In the on-going evolution of patentability following Alice (see New Guidance for Examiners Relative to Whether a Claim is Limited to an Abstract Idea, Alice Update–Patentability of Software-Related Inventions–Enfish v. Microsoft), The Court of Appeals for the […]
As new social media concepts and associated mobile apps continue to be developed at a rapid pace, inventors, investors and/or companies that own the rights to such social media technology should consider filing for patent protection.
For a product, the […]
Utility patents are often used to protect the functionality of a product. Design patents are used to protect a product’s ornamental appearance and cannot be used to protect functional elements. But what happens when a functional element is part of […]
On June 13, 2016, the U.S. Supreme Court issued its decision in Halo Electronics, Inc. v. Pulse Electronics, Inc. This decision makes it easier for courts to award enhanced damages for patent infringement in cases where the infringement is egregious […]