December 2023

Patrick B. Monahan

Intellectual property rights are important but often overlooked business assets. Every operating business will generate some type of intellectual property, and legal protection is available through options including copyright, trademark, patent, and trade secret. Knowing what these rights might be […]

November 2023

As we approach Thanksgiving, on behalf of everyone at Gottlieb, Rackman & Reisman, we want to say thank you to all our clients and associates around the world.  We are grateful for the opportunity to serve you in all your […]

September 2023

For some, “Taco Tuesday” is a day of the week to look forward to. The company Taco John’s Seasonings Limited Partnership (“Taco John’s”) started using “Taco Tuesday” in 1979 and, since December of 1989, has exclusively owned the Federal trademark […]

September 2023

Patrick B. Monahan

Recent advances in the capability and ease of use of artificial intelligence to create images, text, and even music, have left many asking what the technology will replace in the future and who owns these creations. According to the Copyright […]

August 2023

By Mitchell Feller with assistance from Jessica Li

VIP Products sells pet toys.  Among its products is a line of novelty squeak chew toys that resemble popular bottled and canned drinks but modified with pet-related puns.  Some examples of these […]

August 2023

Jeffrey M. Kaden

Unless you are living in a bubble, you undoubtedly have heard the term BARBENHEIMER, which refers to consecutively watching the movies BARBIE and OPPENHEIMER. Both movies were released on the same day in late July and both are proving to […]

July 2023

With U.S. trademark examination timelines nearing one year, filing for trademark protection without searching means that the trademark application is being filed ‘blind.’ Not searching before filing means that in a worst-case scenario, it may take a year or longer […]

June 2023

Maria A. Savio

On May 18, 2023, the Supreme Court released its opinion in the much-anticipated suit by the Andy Warhol Foundation for the Visual Arts, Inc. (“AWF”), against photographer Lynn Goldsmith (“Goldsmith”).  The fact pattern in the case was quite simple – […]

May 2023

Teresa Segalman

With recent advancements in artificial intelligence, AI voice cloning is on the rise. It has become all too easy to impersonate a celebrity using an audio sample for the AI to learn the voice. Once that’s done, the AI-generated voice […]

March 2023

Mitchell S. Feller

Since the first U.S. patent was issued in 1790, the U.S. Patent Office has issued patents on paper with a formal seal.  However, the need for an official paper copy of a patent has diminished over time.  The officially issued […]

March 2023

Nearly four years after first filing applications to register 100% THAT BITCH as a trademark for use in connection with clothing, Lizzo has won approval from the Trademark Trial and Appeal Board (TTAB) for her applications to proceed to publication.  […]

October 2024

Mitchell S. Feller

A significant change to European patent law is coming this summer.  On June 1, 2023, nearly a decade after the enabling European Union (EU) regulations were passed, the European Unified Patent Court and Unitary Patent System will come into effect.  […]

January 2023

The application to register a trademark requires the identification of the owner of such mark. In most instances, a seemingly simple, but often complex, question arises – who should be the owner of the trademark? An individual, such as the […]

December 2022

Teresa Segalman

Mariah Carey is an international pop superstar and Grammy Award winner whose Christmas hit, “All I Want for Christmas is You,” tops the Billboard charts every year, including taking the no. 1 spot on the U.S. Billboard Hot 100 for […]

December 2022

Patrick B. Monahan

So someone is infringing your trademark and you want to sue them, but the infringer is located outside the United States. You have a lawyer draft a complaint, but to initiate the suit, the complaint will need to be served. […]

November 2022

Jason R. Wachter

Adidas and Ye, formerly known as Kanye West, had a longstanding, while acrimonious at times, successful partnership that dated back to 2013 with Ye acting as a creative director of the Adidas Yeezy product line that is estimated to have […]

November 2022

Visitors to Medieval Times castles in New Jersey and California may be getting more than the tournament and royal feast they are expecting—they’ll be walking right into a trademark infringement dispute between Medieval Times and Medieval Times Performers United (“United”), […]

November 2022

Jeffrey M. Kaden

At one end of the arena stands the famous Swiss chocolate maker Lindt; they make and sell a chocolate bunny wrapped in gold foil with a red ribbon and bell around its neck. They have been doing so since 1952. […]

November 2022

Obtaining heat from a car in the winter has never been an instantaneous process when a car is cold. This is because a car with an internal combustion engine uses heat from the engine to warm up the cabin. When […]

October 2024

Gloria Tsui-Yip

U.S. businesses are familiar with Amazon, but not many know about Alibaba, which is an e-commerce marketplace platform based in China.  Businesses love that Amazon provides a vast retail marketplace for its products, but at the same time, dread violation […]

September 2022

Mitchell S. Feller

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. […]

September 2022

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: […]

September 2022

Teresa Segalman

Now you can trademark things you wouldn’t say to your grandmother.

Section 2(a) of the Lanham Act prohibits the registration of any trademark that “[co]nsists of or comprises immoral, deceptive, or scandalous matter”.[1]And so, for decades, U.S. […]

August 2022

Patrick B. Monahan

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 […]

August 2022

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 […]

October 2024

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 […]

August 2022

The province of Quebec has always taken its commitment to the French language seriously. Where in France, they have nonchalantly adopted English words like ‘email,’ Quebec has committed itself to inventing French language equivalents (courriel[1]).

A famous example […]

July 2022

Jeffrey M. Kaden

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, […]

July 2022

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 […]

June 2022

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 […]

June 2022

A recent episode of Jeopardy![1] featured a clue that stumped me and all three contestants on stage, but which yielded a brilliant nugget of intellectual property trivia, which piqued my curiosity to learn more. If your thirst for knowledge […]

May 2022

Jason R. Wachter

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 […]

May 2022

Teresa Segalman

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 […]

May 2022

Maria A. Savio

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.  […]

April 2022

Mitchell S. Feller

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 […]

April 2022

Patrick B. Monahan

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 […]

April 2022

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 […]

April 2022

Jeffrey M. Kaden

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 […]

March 2022

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 […]

March 2022

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 […]

February 2022

Stephanie Pottick

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 […]

February 2022

Patrick B. Monahan

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 […]

February 2022

Gloria Tsui-Yip

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. […]

January 2022

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 […]

January 2022

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 […]

January 2022

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 […]

December 2021

Diana Muller

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 […]

December 2021

Teresa Segalman

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 […]

December 2021

Jeffrey M. Kaden

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 […]

November 2021

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 […]

November 2021

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 […]

October 2021

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, […]

October 2021

Gloria Tsui-Yip

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 […]

October 2021

Diana Muller

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 […]

September 2021

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 […]

September 2021

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 […]

August 2021

Teresa Segalman

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? […]

August 2021

Jeffrey M. Kaden

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 […]

August 2021
There has been a lot of buzz among trademark attorneys about a recent uptick in failure to function (FTF) refusals issued by the U.S. Patent and Trademark Office (USPTO). What is an FTF refusal, and why is this type of refusal drawing so much ire?
August 2021

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 […]

July 2021

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 […]

July 2021

Maria A. Savio

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 […]

June 2021

Teresa Segalman

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 […]

June 2021

Jeffrey M. Kaden

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 […]

June 2021

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 […]

May 2021

Mitchell S. Feller

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 […]

May 2021

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. […]

May 2021

Jamie Lee Curtis is set to star in Halloween Kills, an upcoming sequel in the Halloween movie franchise. Halloween ­Kills is scheduled to be released later this year[1], and is the twelfth film in the franchise. […]

May 2021

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 […]

May 2021

Gloria Tsui-Yip

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 […]

October 2024

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 […]

April 2021

Stephanie Pottick

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 […]

April 2021

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 […]

April 2021

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 […]

March 2021

David D. Rodrigues

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 […]

March 2021

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 […]

March 2021

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 […]

March 2021

Jeffrey M. Kaden

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. […]

February 2021

Maria A. Savio

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 […]

February 2021

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, […]

February 2021

Mitchell S. Feller

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 […]

February 2021

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 […]

January 2021

Diana Muller

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% […]

January 2021

Gloria Tsui-Yip

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 […]

January 2021

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 […]

December 2020

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 […]

December 2020

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 […]

October 2024

Jeffrey M. Kaden

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 […]

November 2020

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, […]

October 2020

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: […]

October 2020

Jason R. Wachter

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 […]

October 2020

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. […]

September 2020

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 […]

September 2020

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 […]

July 2020

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 […]

August 2020

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 […]

August 2020

Teresa Segalman

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, […]

July 2020

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 […]

July 2020

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 […]

July 2020

Jeffrey M. Kaden

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 […]

July 2020

Teresa Segalman

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 […]

July 2020

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 […]

June 2020

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 […]

June 2020

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 […]

June 2020

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 […]

June 2020

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 […]

June 2020

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 […]

June 2020

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 […]

June 2020

Jeffrey M. Kaden

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, […]

May 2020

That was the question ostensibly to be decided by the Supreme Court when it heard arguments in Allen v. Cooper last fall, and, in a unanimous decision released on March 23, 2020,[1] from behind closed doors, the answer was, […]

May 2020

On May 4, 2020, the Supreme Court held arguments in the matter of the United States Patent and Trademark Office vs. Booking.com.[1] The occasion marked the first time in history that live audio of a Supreme Court oral […]

May 2020

Jeffrey M. Kaden

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 […]

May 2020

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.  […]

April 2020

Jeffrey M. Kaden

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 […]

October 2024

Jeffrey M. Kaden

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 […]

April 2020

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 […]

October 2024

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 […]

May 2020

David D. Rodrigues

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 […]

February 2020

On December 20, 2018, the long-anticipated Farm Bill was enacted, legalizing hemp, and by extension CBD originating from hemp. As of the date of this article, marijuana is currently legal for recreational use in 11 states and Washington D.C.[1] […]

February 2020

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 […]

January 2020

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 […]

January 2020

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 […]

January 2020

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 […]

December 2019

Mitchell S. Feller

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 […]

November 2020

Gloria Tsui-Yip

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 […]

October 2019

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.  […]

October 2019

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 […]

October 2019

Diana Muller

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 […]

October 2019

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 […]

September 2019

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 […]

August 2019

Gloria Tsui-Yip

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 […]

July 2019

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 […]

July 2019

Maria A. Savio

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 […]

July 2019

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 […]

June 2019

David D. Rodrigues

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. […]

June 2019

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 […]

June 2019

Jeffrey M. Kaden

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, […]

May 2019

“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 […]

May 2019

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 […]

May 2019

Jeffrey M. Kaden

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 […]

May 2019

Jason R. Wachter

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 […]

April 2019

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 […]

April 2019

Maria A. Savio

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 […]

March 2019

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 […]

March 2019

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 […]

February 2019

David D. Rodrigues

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 […]

February 2019

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 […]

February 2019

Diana Muller

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 […]

January 2019

Jeffrey M. Kaden

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 […]

January 2019

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 […]

January 2019

Mitchell S. Feller

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 […]

January 2019

Jeffrey M. Kaden

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 […]

November 2018

Diana Muller

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 […]

November 2018

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., […]

October 2018

Mitchell S. Feller

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 […]

October 2018

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 […]

October 2018

Jeffrey M. Kaden

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. […]

September 2018

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 […]

September 2018

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 […]

August 2018

Jeffrey M. Kaden

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 […]

August 2018

Gloria Tsui-Yip

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 […]

August 2018

Maria A. Savio

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 […]

July 2018

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, […]

June 2018

Jeffrey M. Kaden

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 […]

May 2018

Jeffrey M. Kaden

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 […]

May 2018

Jason R. Wachter

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 […]

May 2018

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 […]

May 2018
Blockchain is a comparatively new Internet-based and cloud-based protocol and architecture, and it is receiving a lot of recent notoriety. Probably the best known use of Blockchain today is with cryptocurrencies (“virtual currencies”), such as bitcoin, which are digital assets using cryptography to secure and validate transactions. This article is focused on the major and significant impacts Blockchain technology has on the world of patents. It also addresses patent-related opportunities associated with Blockchain technology and cites recent patent examples.
April 2018

David D. Rodrigues

“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. […]

April 2018

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 […]

March 2018

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 […]

March 2018

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, […]

February 2018

Mitchell S. Feller

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 […]

February 2018

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 […]

February 2018

Jeffrey M. Kaden

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 […]

January 2018

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 […]

January 2018

Diana Muller

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 […]

November 2017

Jeffrey M. Kaden

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 […]

November 2017

Diana Muller

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 […]

October 2017

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 […]

September 2017

David D. Rodrigues

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 […]

August 2017

David D. Rodrigues

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, […]

July 2017

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 […]

July 2017

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,” […]

July 2017

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 […]

June 2017

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 […]

June 2017

Mitchell S. Feller

Originally published in Law360.

The computer game industry is a significant and growing market. The 2016 global market exceeded $100 billion and projections show this amount growing significantly in the future.[1] Game companies in this market come in […]

April 2017

Mitchell S. Feller

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 […]

April 2017

“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 […]

April 2017

Mitchell S. Feller

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 […]

March 2017

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 […]

March 2017

Mitchell S. Feller

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 […]

March 2017

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 […]

March 2017

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 […]

March 2017

Mitchell S. Feller

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 […]

February 2017

Jeffrey M. Kaden

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 […]

February 2017

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 […]

January 2017

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 […]

January 2017

Diana Muller

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 […]

January 2017

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 […]