I Didn’t Respond To An Office Action and now My Patent Is Abandoned – Now What?

Friday, 27 January, 2012 08:36 Written by Mark Malek 0 Comments

By: Mark R. Malek

If you haven’t noticed, many of my posts lately have revolved around the questions that I get from various clients.  This one was a tough one. Not necessarily from the perspective of not knowing what to do, but having to hear the horror story from this client.  Unfortunately, it is a horror story that I have heard numerous times. I received a call recently from someone that was going the patent process alone.  At least he was until he received a “Notice of Abandonment” from the Patent Office.  How could this happen?  All those years of hard work down the drain?  Is there anything he can do?  Yes.

First and foremost, the patent process is not a simple one.  There are several nuances, and the process itself is very unforgiving.  There really is not much room for error.  For example, the deadlines are real deadlines.  These are not suggestions.  It is not ok to submit something one day late.  That’s not going to cut it in the patent prosecution system.  The one great thing about the patent system, however, is that you always have plenty of time to respond to any issue that may arise during the patent process.

The initial findings as to patentability of your invention are usually contained in an Office Action, which is a decision on patentability as expressed by the patent Examiner.  Many times, Office Actions include rejections of the claims that define the scope of the invention.  There are several ways to respond to an Office Action.  For example, you may chose to amend the claims, add new claims, or simply present arguments to the Examiner as to why the claims as filed define over any prior art that was cited.  No matter what you decide to do, however, you need to respond to the Office Action within three months from the date that the Office Action was mailed.  This is generally the case – sometimes it is two months, sometimes it is one month, and there are always extensions of time that can be filed (for a fee).

As you have probably guessed, if you do not timely respond to an Office Action, the application goes abandoned.  This is outlined in 711.02 of the Manual of Patent Examining Procedures (MPEP).  Is that it?  Is all lost?  Not necessarily.  If your application goes abandoned, there is a mechanism to revive the application.  You can file a petition to revive the application, which is not at all cheap.  The same section of the MPEP mentioned above also outlines the two types of petitions to revive – a petition to revive because the application was unintentionally abandoned (the expensive, and more common one) and a petition to revive because the application was unavoidably abandoned (less expensive, but nearly impossible to prove).

Upon filing the petition to revive, along with the appropriate fee, the application will generally be revived by the PTO.  For a petition to revive an application that was unavoidably abandoned, you will need to provide some kind of story as to why the application was unavoidably abandoned.  For a petition to revive an application that was unintentionally abandoned, all you pretty much need to say is “my bad” and the petition will be granted.  Personally, I have only seen one petition to revive for an unavoidable abandonment that was granted.  In that case, it turns out that the Applicant never received the Office Action because it got stuck somewhere in  patent office mail room limbo.  How could you possibly have avoided that?  I have filed plenty of petitions to revive based on unintentional abandonment (these are for clients that have come to me with an abandoned application and a check), and these are generally very smooth and simple to get granted.

Terms of Service and Your Copyrights

Thursday, 26 January, 2012 07:52 Written by Scott Nyman 3 Comments

Scott Nyman

 

Upon logging into my Gmail this morning, a mandatory step in my daily routine, I noticed an alert that Google is consolidating the privacy policies and terms of service for all of its various online offerings. Being in the business of law, I felt compelled to read through the changes to see how Google will handle managing information about a user.

For those that are unaware, a privacy policy generally comprises a statement from a company regarding the handling of a user’s personally identifying information. The privacy policy is typically accompanied by a terms of service, which sets out the rules a user must abide by to gain access to a service. The terms of service may often define the legal relationship between a user and a service provider, the ways in which the service may be used, and the procedure to follow in the event the terms are violated.

Of course, being an intellectual property attorney, I immediately look to see how the rights relating to user owned copyrights and other IP is handled. Google’s terms of service reads:

Some of our Services allow you to submit content. You retain ownership of any intellectual property rights that you hold in that content. In short, what belongs to you stays yours.

Sounds amazing, right? But, if you read on…

When you upload or otherwise submit content to our Services, you give Google (and those we work with) a worldwide license to use, host, store, reproduce, modify, create derivative works (such as those resulting from translations, adaptations or other changes we make so that your content works better with our Services), communicate, publish, publicly perform, publicly display and distribute such content. The rights you grant in this license are for the limited purpose of operating, promoting, and improving our Services, and to develop new ones. This license continues even if you stop using our Services (for example, for a business listing you have added to Google Maps).

So, if a user posts one of his or her copyrighted materials on onc of Google’s services, the user in effect grants Google a non-revocable license to use the material, essentially, how they see fit, for “operating, promoting, and improving service, and develop new services,” a pretty broad group of categories.

This peaked my interest as to how a user’s copyrighted materials are handled on other popular social sites, such as Facebook.  Again, things start out rosy:

You own all of the content and information you post on Facebook, and you can control how it is shared through your privacy and application settings.

 But the devil is in the details:

For content that is covered by intellectual property rights, like photos and videos (IP content), you specifically give us the following permission, subject to your privacy and application settings: you grant us a non-exclusive, transferable, sub-licensable, royalty-free, worldwide license to use any IP content that you post on or in connection with Facebook (IP License). This IP License ends when you delete your IP content or your account unless your content has been shared with others, and they have not deleted it.

When you delete IP content, it is deleted in a manner similar to emptying the recycle bin on a computer. However, you understand that removed content may persist in backup copies for a reasonable period of time (but will not be available to others).

To my surprise, Facebook seems to make less of a grab on your copyrighted materials than Google. Of concern, Facebook claims the right to transfer and sub-license your content. However, it appears that any and all of Facebook’s rights in your content ends upon deletion of the content from Facebook’s system by the copyright holder and those with whom the content has been shared.

As a little bonus, section 5.6 of Facebook’s terms of service states, “You will not use our copyrights or trademarks (including Facebook, the Facebook and F Logos, FB, Face, Poke, Wall and 32665), or any confusingly similar marks, without our written permission.” So, allegedly, the word “face” is now owned by Facebook. If this turns out like the Superbowl-”Big Game” situation, we may have to start referring to our faces as our “head fronts.”

Trademark Infringement: One Name, Two Restaurants, Two Blocks Away

Monday, 23 January, 2012 05:29 Written by Aaron Thalwitzer 0 Comments

You are not alone!

I’m in Orlando, Florida, this weekend, visiting my family, and an old friend has asked me a question.

Question: I’ve owned and operated a restaurant under the name [JR's] for 20 years. A month ago a restaurant opened up less than a mile away with the exact same name, [JR's] [ed. note - names have been changed to protect the innocent]. They serve barbecue, we serve Tex-Mex. Both are casual, moderately-priced, serve beer, and are generally ‘fun’ places to eat. They stole my name, right?

Answer: You are alleging trademark infringement, which, once proved, could warrant an injunction, damages, or both. You have a good claim.

First, let’s again review the Lanham Act, which creates a cause of action against any person who, in connection with goods or services, uses in commerce any word, term, name, symbol, or device, or any combination thereof, or any false designation of origin … which (A) is likely to cause confusion, or to cause mistake, or to deceive as to the… connection … of such person with another person, or as to the origin, sponsorship, or approval of his or her goods, [or] services… See 15 U.S.C. § 1125(a)(1).

The key for a plaintiff in proving infringement of its trademark is to show the likelihood of consumer confusion. See Restatement (Third) of Unfair Competition § 21 cmt. a (1995) (“The test for infringement is whether the actor’s use of a designation as a trademark … creates a likelihood of confusion ….”).

An injunction will force the new JR’s to stop using the mark “JR’s”. A party seeking a preliminary injunction must establish (1) irreparable harm and (2) either (a) a likelihood of success on the merits or (b) a sufficiently serious question going to the merits and a balance of hardships tipping decidedly in the moving party’s favor. See Jackson Dairy, Inc. v. H.P. Hood & Sons, Inc., 596 F.2d 70, 72 (2d Cir.1979) (per curiam). In a trademark infringement case, proof of a likelihood of confusion establishes both a likelihood of success on the merits and irreparable harm. See Hasbro, Inc. v. Lanard Toys, Ltd., 858 F.2d 70, 73 (2d Cir.1988).

Relief may be available under 15 U.S.C. §§ 1114 (imitation of registered mark) and 1125(a) (false designation of origin). To prevail on a claim of trademark infringement, a plaintiff must show, first, that its mark merits protection, and, second, that the defendant’s use of a similar mark is likely to cause consumer confusion. I will assume you have have validly registered your mark (if not please do so; a registered mark in continuous use for five consecutive years after registration, and still in use, becomes incontestable under 15 U.S.C. § 1065) and turn consider the pivotal question: the likelihood of confusion.

Now we apply the multi-factor test, which requires analysis of several non-exclusive factors, including: (1) the strength of the mark, (2) the degree of similarity between the two marks, (3) the competitive proximity of the products, (4) actual confusion, (5) the likelihood the plaintiff will bridge the gap, (6) the defendant’s good faith in adopting its mark, (7) the quality of the defendant’s products, and (8) the sophistication of the purchasers. This will give us a good idea of the likelihood of confusion, but the court is not limited to these factors, and all must be viewed in the context of whether the consumer will be confused as to the source of the product.

I’ll go factor by factor.

(1) Your restaurant has been around for 30 years, so I will assume you have a strong mark. (2) The marks are identical. (3) You are directly competing geographically (6) and in terms of markets and could walk from one location to the other. (7) Good faith is impossible to determine without additional facts, but it may be inferred that the new JR’s is aware of your mark. (7) I don’t know anything about the quality of Defendant’s products. (8) I’ll assume the purchasers are an average sampling of the population, since the prices are moderate and you both serve beer.

There is an additional factor. The mark, “JR’s” probably derives from someone’s proper name. If both restaurants have proprietors named “JR”, things get mucked up. “[C]ourts generally are hesitant to afford strong protection to proper names, since to do so preempts others with the same name from trading on their own reputation. ‘To prevent all use of [a man's personal name] is to take away his identity; without it he cannot make known who he is to those who may wish to deal with him; and that is so grievous an injury that courts will avoid imposing it, if they possibly can.’” Brennan’s Inc. v. Brennan’s Restaurant, L.L.C., 360 F. 3d 125 (2d. Cir. 2004). The name of a person, therefore, like other descriptive marks, is protectible only if it has acquired secondary meaning.

The ultimate answer will depend on the overall impression of the name. I believe, on these facts, that you would probably prevail on an infringement claim. However, if the new JR’s added “BBQ” to their name, you would have an uphill battle. You will have to show that consumers will be confused by the names. Given the extreme proximity of the restaurants, one can envision two people meeting at disparate JR’s if an address wasn’t specified. You may want to consider hiring a trademark attorney. There are other claims and options beyond the scope of this article.

SOPA, PIPA, and a Criminal Copyright Indictment Against Megaupload.

Saturday, 21 January, 2012 09:00 Written by Rene Dial 0 Comments

By Rene Dial

What a week in the world of intellectual property protection!

Okay I am trying to figure this one out.  Legislation is/was being pushed through with regard to SOPA and PIPA.  Read Danie Roy’s article here.  Then a couple of days after Wikipedia, Craig’s List, Google, and a bunch of other sites were down in protest to SOPA and PIPA the government shows that they do have the power to stop online piracy overseas. On Thursday the US Justice Department and FBI shut down Hong Kong based company Megaupload, seized $50 million in assets, and begun extradition proceedings in New Zealand for the company founder according to Robot6.comicbookresources.com.

Let me get this right the government has the ability to shut down a site for alleged copyright infringements, freeze assets, extradite those involved from other countries but yet we need SOPA and PIPA to allow us to basically do what was just done to Megaupload.  Not sure about you but how about we utilize the laws we already have in place instead of enacting new broader legislation.

To be honest I never heard of Megaupload before this hit the news.  I am one of those guys that believes in paying the artist so that the artist can continue to put out music or movies that I love.  A lot of the problems with the industry now is getting the product to the masses in a cheaper and more efficient way.  The music industry has done a great job but movies are a different story.  A person can go to a Redbox and rent a movie for a dollar but if they want to stream the movie from a website or cable provider the provider wants somewhere between $5 to $7 to stream the same movie and they do not have to deal with inventory or with maintenance of a box somewhere. Okay I will stop my rant and get back to Megaupload.

According to ABCnews.go.com the indictment alleges that Megaupload caused a half-billion dollars in copyright losses.  A copy of the indictment can be found at onlinewsj.com.  As this is a criminal indictment I am curious to see how this plays out and if the hearings will occupy the news stations as some other well known criminal trials have in the past.  On ABC.com the article had a quote that was placed on Megaupload before the site was taken down. “Ira P. Rothken, a lawyer for Megaupload in Novato, Calif., said “the allegations do not appear to have support in the law, and the company is going to vigorously defend against them.”"  Something tells me that they really do not have a choice but to vigorously defend themselves as they are facing criminal not civil charges.

Have a great weekend!

The Duty of Disclosure When Filing A Patent Application

Friday, 20 January, 2012 22:24 Written by Mark Malek 0 Comments

By: Mark R. Malek

When people think of most areas of law, they generally picture an adversarial process.  In other words, most areas of law involve two parties in a dispute of some sort and each party having their side of the story that they want a judge (and sometimes a jury) to proclaim as being the correct side of the story.  That is not the case in the field of patent prosecution.  Although it may sometimes feel as though the patent Applicant is on one side of the fence fighting with the patent Examiner, it truly is not an adversarial process.  Instead, it can be better described as a cooperative process wherein the patent Examiner is working with the patent Applicant in order to determine the correct level of protection to be granted from the federal government.

In order to achieve this goal, patent law requires that a patent Applicant disclose the best mode of carrying out the invention, and disclose any prior art that they know of.  Many people come to me and indicate that they do not want to disclose everything about their invention, at which point I have a very serious conversation with the Applicant wherein I indicate that they must disclose all that they know about their invention.  The issue that many of the clients have, and I understand where they are coming from, is that they want to maintain some of their invention as a trade secret.  In patent law, that just about equates to having your cake and eating it to.

During patent prosecution, there is a trade off.  Essentially, the federal government will agree to grant you a right to exclude others from making, using, selling or offering to sell you invention in exchange for you disclosing everything you know about your invention, and also working with the patent office to ensure that the patent Examiner has all the relevant information in order to make a decision as to whether or not your invention is patentable.  This includes informing the patent Examiner of any prior art that you may know of.  That is regardless of whether or not the patent Examiner would have found the prior art during the search that is conducted during prosecution.

This article very much so simplifies the process, as well as the duty to disclose prior art, but there is one thing that I want to leave you with.  That is – your attorney is your ally in this process.  Your patent attorney should walk you through the process and should instruct you to disclose any information that could be considered prior art.  The risk you run of not disclosing relevant information is, in the worst case, invalidity of your patent and, in extreme circumstances, the possibility that a court finds that you engaged in inequitable conduct before the patent office, exposing you to potential liability.  The moral of the story is that you should never think it is a good idea to keep something from your attorney regarding your invention.  I will post additional articles about the importance of your relationship with your attorney and how the attorney-client privilege should encourage you to let your attorney in on everything that you know about your invention.

SOPA and PIPA vs The Internet: The Epic Copyright Battle

Wednesday, 18 January, 2012 15:40 Written by Danie Roy 2 Comments

Danie Roy

Before we begin, I’d like to make some statements that you may remember from when I discussed embryonic stem cells: this article is largely meant to be informative, although it is very difficult to stay completely unbiased when I am informing you about the opinions of other people. I apologize in advance if my own opinion shines through too brightly, largely because this seems to be an issue that is polarizing people more than stem cells ever could. Add the previous sentence to the list of things I never thought I’d say. Then again, this is the internet.

By now, you’re probably aware that you can’t access Wikipedia or Craigslist as you normally would. You’ve gone to see teh lolcats or hang with your bronies, and you’ve been greeted with a popup begging you to take action. The Google doodle is now a black box. Even the news stations are talking about the sites going down. What’s going on? Just a preview of what could happen if SOPA and PIPA pass in their current forms.

SOPA and PIPA are bills in the House of Representatives and Senate, respectively, that were intended to stop online piracy from overseas sites like The Pirate Bay. Currently, nobody can touch The Pirate Bay, as evidenced by their response letters (or, as Scott called them, f/u letters). The language of the bills is entirely too broad, however, and reeks slightly of “did not do the research.” For instance, you don’t have to infringe to be taken down, you just need to be capable of infringing: that is, have a comment box, text, links, a link to someone else’s link, etc. And you may be guilty until proven innocent.

These are popping up everywhere today.

I’ll be the first to admit that most people have no idea what’s going on in Congress most of the time. I personally would rather read image file wrappers, watch paint dry, or have a root canal than watch C-SPAN. It’s boring, and in a language called “legalese.” Great for curing insomnia, though.

Before I get too far into this, I’m going to be perfectly clear: I am FOR protecting intellectual property. I’d be an out-of-work hypocrite if I wasn’t; protecting intellectual property is my job as a patent agent. However, I personally believe that SOPA and PIPA can’t protect intellectual property in their current forms.

Here’s why people are protesting and your favorite sites are dark:

  • A site does not necessarily have to infringe to be taken down. A site that could infringe, in other words, has a comment box, links, or any upload capability, can be targeted.
  • If you’ve been accused, there is no real defense: you’re assumed guilty until proven innocent, and the bill makes proving yourself innocent extremely difficult. In order to be innocent, your website must not have the functionality to infringe; which of course, all websites have. So, you’re either infringing or you’re perjuring yourself. Take your pick.
  • Takedowns are incredibly easy to initiate. The RIAA already has a history of using questionably ethical legal tactics to take out legitimate businesses. Imagine what they can do with SOPA and PIPA on their side.
  • Ever posted anything to any website? YouTube, ICanHasCheezburger?, even Facebook? Yep, you’re a potential target.
  • Ever used Gmail, Yahoo! mail, or AOL mail? Same deal.
  • Fair use will be practically considered obsolete… and ignorance will not be a defense.
  • Anyone working for the government (like our wonderful Congresspeople) is immune from the consequences of violating SOPA and PIPA.
  • The link I posted to the f/u letters? That could be a violation of SOPA/PIPA, due to The Pirate Bay’s unsavory activities.
  • Earlier versions (and possibly later versions) allowed for destabilizing the infrastructure of the internet in order to “protect” IP. That is, addresses could be removed from the universal internet lookup system, DNS, which would make site spoofing that much easier… hello viruses and stolen personal info!

To quote a godly entity, you “should pretend like it is a big deal, because it is.” Whether you’re for or against SOPA/PIPA, you really need to speak up about this issue. It affects the internet as we know it, and it affects intellectual property, too. If you’re like me, you’re for protecting intellectual property, but against seriously inhibiting the free flow of the internet.

To read more:
Tim O’Reilly’s thoughts (with some from Nancy Pelosi)

Wikipedia’s two working English pages: SOPA and PIPA

LA Times: Three congresspeople drop support, including FL Senator Marco Rubio

PCWorld’s rather factual take

THE NATIONAL MEDAL OF TECHNOLOGY AND INNOVATION

Tuesday, 17 January, 2012 17:31 Written by danieldavidson 0 Comments

By Daniel Davidson

I remember the day i won an award from the President.  Yes, it included a shuttle run and various other physical activities, and was presented to me by my PE teacher, but I still won an award from him!  Albeit, the Presidential Physical Fitness Award is not quite the award that is presented annually to the leading innovator of our country, however, it is an award from the POTUS.

All kidding aside, it has come time for nominations to be submitted for the National Medal of Technology and Innovation.  This medal is given to the individual, company, or group that has made the biggest contributions to America’s economic, environmental and social well-being through their inventions and/or innovations.

Currently, the U.S. Patent and Trademark Office is accepting nominations for the award, and information on the nomination process and a nomination form can be found here.  Some of the guidelines include:

  • No self nominations.  They will be rejected.
  • You can nominate an individual, a group (up to 4 people), a company, or a division of a company.
  • Governmental agencies and laboratories are eligible.
  • Finalists are subject to FBI background checks (I would only be worried if the Florida Bar was conducting the background check).

Now that you are up to speed on how to go about nominating someone, or “something,” here are some notable winners:

  • 1985 – AT&T Bell Laboratories – For contribution over decades to modern communication systems.
  • 1985 – Apple Computer, Inc. – For their development and introduction of the personal computer which has sparked the birth of a new industry extending the power of the computer to individual users.

Here is to the next recipient of the National Medal of Technology and Innovation.  Cheers!

Asset Protection and Intellectual Property: A No-Lose Situation, Ideally

Monday, 16 January, 2012 04:31 Written by Aaron Thalwitzer 0 Comments

So, you want to make money from your intellectual property? First, read this article by Mark Malek here. Now that you’re primed like a lawnmower, I’m sure you’d agree that making money is more likely to happen if you’re not losing money, no? Stay with me. If you get sued, the best you can usually hope for is breaking even, and, usually, legal fees and the time you waste will result in a net loss, even if you win. If you lose, and judgment is entered against you, or you decide it is in your best interests to settle, cash is still flowing the wrong way. One of the considerations in deciding upon a settlement amount is the potential net loss. If you have no assets, you have less to lose. If you have assets (intellectual property among them, and possibly the most valuable), you have much to lose, and the other party(ies) knows this. Therefore, each and every one of you should educate yourselves on protection your assets, especially if  they are valuable.

The area in and around Melbourne, Florida and Brevard County, Florida, where I practice law, are densely packed with technology and media companies, for whom intellectual property is often the substance of their business. Many of these companies know that patents, trademarks, copyrights, and trade secrets are their primary income source, without which they could not thrive or even survive. The most obvious, common, and often cheapest way to protect your IP is to properly transfer it to a separate limited liability company (LLC). For example, your company could create a business structured as follows. The founder of a company create a holding company structured as corporation. The corporation then two LLCs, one which owns and holds the IP, and one which has contact with the public.

Or, you could do without the holding company and just have the operating company lease the IP from the IP holding LLC See a lawyer for this. There are no ifs ands or buts; it is not hard to mess up the formalities which make possible the asset protection in the first place. There might even be tax advantages to such an arrangement, see a lawyer or accountant on that.

Of course, NastyCo sues your holding company, you lose big, and the holding company decides to file bankruptcy. With the asset protection structure we set up, it will probably be much more difficult for creditors (i.e. the people you owe money to) to reach your IP. As long as everything is done correctly, the LLC’s assets are reachable only by charging order — meaning the creditor gets any distributions otherwise allocated to members, but doesn’t actually control the assets. Even better, if the LLC allocates profits without distributing them , the creditor must pay taxes on those profits, even though he/she can’t touch them! Fun stuff.

There are other advantages to separating your IP assets from your operating company. You may retain more control over the assets if your company loses control to a private equity firm who lent you money. Again, more leverage. The corporate veil is tough, and expensive, to pierce, but, for experienced attorneys, relatively easy and inexpensive to create. In Florida, you can check out sunbiz.org for the basics of creating LLCs and other business entities, but to realize the full benefit of these entities, contact an attorney.

Read more ...

Dr. Pepper, Dublin, Texas, and a Trademark

Saturday, 14 January, 2012 09:05 Written by Rene Dial 0 Comments

By: Rene Dial

While I was perusing the web I ran across an article with regard to Dr. Pepper suing its oldest distributor over the Dr. Pepper trademark.  Yes, that is exactly what I was thinking… Why are they suing their own bottling company over the trademark if they are selling the corporation’s product and if there is an issue, why not pull their contract to bottle Dr. Pepper.  Okay yes, it took me a few minutes to realize they were talking about Dublin, Texas not Dublin Ireland as well.

It seems that the bottler was adding the Dublin name to the Dr. Pepper mark resulting in, you guessed it, Dublin Dr. Pepper which is causing dilution of the Dr. Pepper mark.  Using the mark in this manner would make Dublin the trademark and Dr. Pepper the generic name for the drink which as a trademark owner you do not want.  If the mark is used in this manner there is the potential for the mark to go the way of aspirin and become the name for the type of product instead of the source of the product.

According to the article I read on WSJ.com Dublin makes their Dr. Pepper from cane sugar unlike most other bottlers that use high fructose corn syrup.  Funny as I always thought that the different manufacturers all had to use the same formula to make the product.  The bottling company has agreed to stop bottling and distributing Dr. Pepper as part of the settlement.

I do not have a copy of the complaint or settlement so I am not sure as to how long Dublin has been using the name with the trademark to sell Dublin Dr. Pepper and related paraphernalia or else I would go a little more in detail about the case.  The coffee mugs and other related items were supposedly being sold over the internet and I can only assume that Dublin Bottling not Dr. Pepper Snapple Group was receiving the proceeds.

With the historic value of being the oldest bottler, the surrounding town’s tourism, why not come to some other agreement.  I wonder if Dr. Pepper will force the town to take down their signs?

Have a great weekend.

What Is Antecedent Basis And Why Should I Care?

Thursday, 12 January, 2012 17:03 Written by Scott Nyman 0 Comments

 

In my last article, I began an almost endless discussion about the claims of a patent application. As a recap, the claims are the real meat of a patent. The examiner will review the claims to determine what about your invention (if anything) is new, and to what scope your invention is patentable. In fact, the vast majority of the prosecution stage of applying for a patent is based around defending the claims against an examiner’s rejections and objections. To clarify, rejections are made over the subject matter of the claims. Conversely, objections are typically made over noncompliance with a required format for the claim.

One of the most well known objections among inventors and patent practitioners involves indefiniteness of a claim, or wherein the claim contains words or phrases whose meaning is unclear. More specifically, a claim may be objected to for lacking antecedent basis. But, what exactly is antecedent basis?

Typically, when drafting claims, an inventor (or the patent attorney representing the inventor) will initially disclose an element of the invention using the article, “a” or “an.” Every subsequent reference to that disclosed element will likely be preceded by “the” or “said.” The Manual of Patent Examining Procedure (MPEP) includes the following on antecedent basis at 2173.05(e):

The lack of clarity could arise where a claim refers to “said lever” or “the lever,” where the claim contains no earlier recitation or limitation of a lever and where it would be unclear as to what element the limitation was making reference. Similarly, if two different levers are recited earlier in the claim, the recitation of “said lever” in the same or subsequent claim would be unclear where it is uncertain which of the two levers was intended. A claim which refers to “said aluminum lever,” but recites only “a lever” earlier in the claim, is indefinite because it is uncertain as to the lever to which reference is made. Obviously, however, the failure to provide explicit antecedent basis for terms does not always render a claim indefinite. If the scope of a claim would be reasonably ascertainable by those skilled in the art, then the claim is not indefinite.

Claims are often very complex, and certainly not easy to read. Plus, with a large number of elements being recited, it is not impossible to mistakenly use refer to “the thing” before first calling it “a thing.” So, what is a person to do if he or she makes an mistake that results in the lack of antecedent basis? The MPEP continues on, stating:

Antecedent problems in the claims are typically drafting oversights that are easily corrected once they are brought to the attention of applicant. The examiner’s task of making sure the claim language complies with the requirements of the statute should be carried out in a positive and constructive way, so that minor problems can be identified and easily corrected, and so that the major effort is expended on more substantive issues. However, even though indefiniteness in claim language is of semantic origin, it is not rendered unobjectionable simply because it could have been corrected.

In practice, patent examiners will often point out issues with antecedent basis to be corrected by the inventor. Besides, the examiner will typically cite and rely on some form of prior art in a rejection as a basis for an invention not being patentable.

TROY LANDRY SUES OVER TRADEMARKED SAYINGS

Tuesday, 10 January, 2012 18:07 Written by danieldavidson 1 Comment

By Daniel Davidson

Entertainment must be hard to come by these days, or the broadcast companies have realized that it is as easy as following around an alligator trapper to keep viewers entertained.  I have to admit, I am a huge fan of the show ‘Swamp People’ which airs on The History Channel.

‘Swamp People’, a show centered on various families in the Louisiana Bayou, depicts the everyday lives of an alligator trapper and the obstacles they encounter.  Some obstacles include extreme weather, poachers, gun misfires, and of course, “Tree Shakas”.

For one trapper, he has encountered a new kind of obstacle, trademark infringers.  Troy Landry, one of the more popular personalities of the show, filed a lawsuit in the U.S. District Court for the Western District of Louisiana claiming that Halpern Import Company, National Cap and Sportswear, Inc., and Ripple Junction Design Co. have infringed upon his trademark rights.  Among the trademarks which Landry claims have been infringed are, “Choot Em”, “Tree Shaka,” “Tree Breaka,” and “Mudda Fricka.”

In the Complaint filed by Troy Landry Productions, LLC, they claim that they are owners of “unregistered and federally registered trademarks,” which include the marks listed above.  Upon examination of the U.S. Patent and Trademark Office’s TESS (Trademark Electronic Search System) for trademarks filed by Landry, I did not come across any trademark registrations for any of his marks, including the applications filed for “Troy Landry” and “Got Gator.”  Although Troy doesn’t have any federal registrations for the trademark sayings, Troy does enjoy common law trademark rights in them.

The companies listed for infringement allegedly offer for sale t-shirts, caps, sweat shirts, etc. containing the “Choot Em,” “Tree Shaka,” “Tree Breaka,” and “Mudda Fricka” trademarks.

Troy Landry Productions, LLC is praying that the Court order the named Defendants be enjoined from using the trademarks, that they deliver all the merchandise, signs, displays, advertisements, packaging, and other materials, which bear the trademarks, to Landry for destruction, an accounting of all profits from the sale of the merchandise, to pay punitive damages, attorney’s fees and costs, and anything else Court deems to be proper.

I have a feeling that Mr. Landry is going to have to wage a few fights to protect his valuable trademark rights.  In protecting those rights, he will be preserving the goodwill which comes with trademarks and his fame.  In turn, Troy will be making his trademarks that much more valuable.

Should I Trademark My Business?

Monday, 09 January, 2012 05:22 Written by Aaron Thalwitzer 0 Comments

Probably, yes! But before elaborating, some fundamentals are in order.

What’s a trademark?

Most anything that identifies and distinguishes the source of goods of one party from those of others. Service provides get “service” marks, but I’m going to call them both trademarks.

Do I have to register my trademark?

No. Using the mark in commerce can establish rights, but registering your mark provides many important benefits, including:

Owning a federal trademark registration on the Principal Register provides several advantages, including:

  • Public notice of your claim of ownership of the mark;
  • A legal presumption of your ownership of the mark and your exclusive right to use the mark nationwide on or in connection with the goods/services listed in the registration;
  • The ability to bring an action concerning the mark in federal court;
  • The use of the U.S. registration as a basis to obtain registration in foreign countries;
  • The ability to record the U.S. registration with the U.S. Customs and Border Protection (CBP) Service to prevent importation of infringing foreign goods;
  • The right to use the federal registration symbol ® and
  • Listing in the United States Patent and Trademark Office’s online databases.

I think I have a trademark, but I haven’t registered it. Can I use the federal registration symbol “®”? 

No. You may use “TM” (trademark) or “SM” (service mark), but you only get the ® after the USPTO actually registers a mark.

Back to the real question: should I trademark my business name?

Let’s use a hypothetical. Fred’s company, FredCo, sells designer fire extinguishers. FredCo, which is currently selling only in the USA, but is considering international expansion, has been selling its product for about a year, has a website, a logo, and its motto is “Extinguish With Style”. So, why bother? After all, things are going fine, and what’s the harm in waiting?

I’ll try keep this simple.

First, FredCo may not be as unique as Fred thinks it is. Fred may be infringing on someone else, thereby wasting his time and money on a brand that could be taken away by the original FredCo! Fred may even be liable for damages for failing to conduct a trademark search before adopting his mark. There goes FredCo.

Second, FredCo may be unique, and hugely successful! What’s the easiest way to make money? Copy someone else! FredCo’s success could be it’s downfall if other, lower-quality companies dilute or tarnish FredCo’s trademark.

Third, since FredCo has international ambitions, registering FredCo’s trademarks gives it an opportunity to receive advantageous trademark treatment with other members of the Paris Convention. Trademark piracy can be avoided by early, strategic registration. Why pirate a registered trademark when others are unregistered? They’re like carjackers — they’ll keep trying doors until they find the one that’s unlocked. Easy pickins!

Fourth, if FredCo’s domain name isn’t precisely registered with the USPTO, they’re risking that someone else may have (rightly or wrongly) registered it. If so, the trademark holder may ask Internic (the entity that oversees most domain name registration in the US) to stop FredCo from using it’s domain name pending judicial determination of the FredCo’s rights.

There are numerous other reasons to trademark your business. Remember, trademarking is like voting: its best done early and often.

“Work for Hire,” Copyright and IP Lawsuits

Saturday, 07 January, 2012 09:00 Written by Rene Dial 0 Comments

By Rene Dial

It never ceases to amaze me how often we hear of lawsuits over comic book characters once the studio decides to turn it into a movie. Most recently the creator of Ghost Rider lost in court to Marvel Entertainment in a copyright lawsuit that was filed in 2007.

Not long ago I wrote an article dealing with the same subject with regard to the Avengers and the X-Men.  The family of Jack Kirby filed suit to terminate copyright grants to Marvel.  The ending in both cases was that the characters were created as works for hire belonging to the employer.  Since this subject keeps popping up I think we should have a better understanding of what a work for hire is.

A “work for hire” defined under Section 101 of the Copyright Law is

  1. a work prepared by an employee within the scope of his or her employment

or

  1.  a work specially ordered or commissioned for use as a contribution to a

collective work, as a part of a motion picture or other audiovisual work, as

a translation, as a supplementary work, as a compilation, as an instructional

text, as a test, as answer material for a test, or as an atlas, if the parties

expressly agree in a written instrument signed by them that the work shall

be considered a work made for hire. For the purpose of the foregoing sentence,

a “supplementary work” is a work prepared for a publication as a secondary

adjunct to a work by another author for the purpose of introducing,

concluding, illustrating, explaining, revising, commenting upon, or assisting

in the use of the other work, such as forewords, afterwords, pictorial illustrations,

maps, charts, tables, editorial notes, musical arrangements, answer

material for tests, bibliographies, appendixes, and indexes; and an “instructional

text” is a literary, pictorial, or graphic work prepared for publication

and intended to be used in systematic instructional activities.

What it boils down to is unless you have an agreement stating otherwise and someone requests and pays you for creating a work of art such as a comic book character there is a pretty good chance that the person that hired and paid you owns your creation.  I feel for artists that create these awesome characters.  Out of the hundreds if not thousands of characters they create one sticks and becomes famous and the creator gets their agreed upon paycheck while the studio makes millions if not billions of dollars.  The good is that the artist gets paid to do what they love and create while the employer foots the bill.  Bad news is they do not own their creations and have no control over the future of their creation or profits.  These artists need to take a lesson from photographers because you hire them to take pictures and somehow they still charge you for the copyright to the pictures you paid them to take!

Have  a great weekend!

 

Patent Claims – What the heck?

Friday, 06 January, 2012 18:11 Written by Scott Nyman 0 Comments

Considering you made it to TacticalIP.com, it is possible that you have come in some contact with a patent in your life. If not, go ahead and browse through one. It’s sure to make your head spin.

Patents are generally made up of various sections, all of which typically being required to properly disclose an invention. These sections usually include a background, summary, drawings, detailed description, claims, and abstract. In the majority of patents, the language used throughout these sections is highly technical and written in what may seem like a cryptic language. This is especially true in the claims of a patent, which are required to be written in a series of rambling sentences.

Patent claims come in two varieties, independent and dependent. Independent claims stand alone. This breed of claims independently states every aspect or element of the invention without reference to any other claims. Conversely, dependent claims are included after an independent claim to disclose aspects or elements that may be added to those disclosed in the independent claim. Dependent claims typically add limitations to the independent claim, limiting the breadth of the invention to be included in a resulting patent. These limitations will narrow the scope of the invention, which is typically undesired. However, it is often necessary to narrow the invention with enough sufficiency as include novel and non-obvious features. These topics have been discussed in past articles here on Tactical IP, and will no doubt be covered in great detail again in the future.

If all goes well, hoping an applicant (and by applicant, I mean his or her patent attorney) didn’t draft the independent claims too narrowly, little to no claims that depend on an independent claim will need to be used in a resulting patent. However, if an applicant finds his or her independent claim being allowed without some form of rejection from an examiner, the applicant is left to wonder if the invention could have been claimed more broadly.

In an attempt to find balance between broadly and narrowly disclosing an invention, applicants will often include a number of independent claims in a patent application. Additionally, each independent claim will likely be followed by a string of dependent claims, each narrowing the scope of the claim on which it depends by a little bit. This strategy allows the applicant to experiment with different levels of breadth, while still allowing the claims to be narrowed through prosecution (the stage when an applicant must convince an examiner that the invention is new). As a result, a large number of patent applications will have what may appear to most people as a number of substantially similar independent claims, but with slight nuances. However, these nuances are crucial to the potential patentability of an invention and very carefully drafted. This is all part of the strategy to claim the invention from as many angles as possible.

If this all seems like a lot to digest, it’s because it is. And this is just scratching the surface of claims, which are just a part of the patent application, which is just a step in the process. I’ve been studying and practicing my entire life just to understand what the paragraphs I have written above mean. It is impractical to expect anyone to understand every little detail about a patent without dedicating your life to that knowledge. But, that’s the beauty of our forum at TacticalIP.com, which allows the professionals here at Zies Widerman and Malek to share the knowledge we have acquired with the public.

In follow-up articles, I will dig deeper into the anatomy of a patent. Stay tuned, I’m just getting started.

You Can’t Patent Godly Powers

Thursday, 05 January, 2012 23:59 Written by Danie Roy 1 Comment

Danie Roy

I know I’ve had fun with some pretty unusual patent applications before, but this particular application was just begging for an article all its own.  This application came to my attention via Intellogist’s Twitter feed, and may or may not have inspired an afternoon of awe and wonderment. We didn’t even bash our heads against the desks, because we were so taken by this work of art.

Behold, U.S. Patent Application Number 11/161,345 to Christopher Anthony Roller, aka “godly entity.” Really, the published application in Google Patents does NOT do it justice, so I’m going to walk you through the image file wrapper of this thing. Before you start cringing in fear and/or agony, this is the most interesting file wrapper in the world. That’s not saying much, because file wrappers are generally slightly more boring than watching paint dry, but, I will tell you that Mark and I reviewed this thing, and we were GREATLY entertained. I will skip through the forms unless there’s something particularly hilarious, though.

First, the specification.  It is, and I am quoting it in its entirety here:

Christopher Anthony Roller wants exclusive right to the ethical use and financial gain in the use of godly powers on planet earth.

It’s not an enabling specification, so we have a strike against the application. But read on to the claims:

[Claim 1] Godly powers are being used on planet Earth.
[Claim 2] Many magicians are using godly powers to power their “illusions”. One is David Copperfield – US District Court case 05-446 document #18 proves this true.
[Claim 3] Technology (Electronic and Medical for example) is being assisted by godly powers throughout the planet.
[Claim 4] Christopher Anthony Roller is a godly entity. Godly powers on planet Earth are powered via Chris Roller. Chris has had a web site publishing his godliness since October 2002, but did not realize the surrogate deception (use of his powers) until 2004.
[Claim 5] There yet has been no accreditation nor financial gain to Chris Roller from the use of godly powers on planet Earth.

I know Claims 1 and 3 are going to divide people up depending on their views, but Claim 2 really raises more questions than it answers. If you look up this particular case, you will realize that the godly entity filed MANY cases against David Copperfield and other magicians for using his godly powers. This led to the godly entity accusing people (including a judge) of molesting his spiritual children, as claimed on his website, but I digress. As for Claims 4 and 5… the godly entity DOES have a website called www.mytrumanshow.com. He has SEVERAL websites, but I’m here to talk about the patent application. Now we’re up to the abstract, which is the first REAL glimpse of the wild ride we’re in for.

Christopher Anthony Roller is a godly entity. “Granters” had been given my powers (acquired my powers) (via God probably). These “granters” have been receiving financial gain from godly powers. These “granters” may be using their powers without morals. Chris Roller wants exclusive right to the ethical use and financial gain in the use of godly powers on planet Earth. The design of godly-products have no constraints, just like any other invention, but the ethnic consideration of it’s use will likely be based on a majority vote of a group, similar to law creation. The commission I require could range from 0-100% of product price, depending on the product’s value and use.

The godly entity appears to permit racism, unless he made a typo. But, you get the basic idea of what the godly entity is trying to patent here: something that falls under a 102(b) bar for public use. Even with the applicant admission, I’m surprised the Examiner never picked up on this.  In any case, you may have noticed there were five independent claims, which led to a Notice to File Missing Parts. The godly entity’s response:

Hello Sir/Miss,

Enclosed is a CD with the latest ABX called GodlyPowers.doc of my patent.
I was in a hurry to grab the patent, and submitted the ECF a little premature.
I have made recent revisions – Preliminary Amendment.
This is a very complicated patent as you can imagine.
I may revise the claims further in the future – probably based on your input.
A future claim might state – Chris Roller has created one of the weirdest patents on the planet. :)
This latest GodlyPowers.doc has 2 independent claims (1 and 2) – the rest are dependent on 1 and 2.
Thus I have included $415 for fees to continue this patent. I have also included a separate check for $180 for what I feel may be a “multi dependent claims” fee. Shred it if you don’t need it.
If you conclude that I am wrong about fees, send me a notice and I will send another check for any further fees.

Thanks,
Chris Roller

Yes, the smiley WAS included in the letter. At this point, some of you may be shouting “TROOOOOOLL!” but hold judgment a while longer. Yes, he did say shred the check. And, yes, he DID say “multi dependent claims.” Any patent practitioner who has seen an independent inventor try to draft multiple dependent claims before knows EXACTLY where this is going. The amendment:

[Claim 1] Godly powers are being used on planet Earth.
For example, technology (i.e. Electronic and Medical) is being assisted by godly powers throughout the planet.
Godly powers could be used prior, during, and after godly product/procedure. For example;
Before – in the making of a device, like a micro-processor chip.
During – in the operation of a device, like an inkjet printer cartridge.
Afterwards – like gradual scar removal from breast implant surgery.
A magician might perform magic before, during, and after, for an given trick (“illusion”).
[Claim 2] There is a plan governing our existence and actions – God’s plan.
[Claim 3] Christopher Anthony Roller is the godly entity powering Earth with godly powers as stated in Claim 1.
[Claim 4] From Claim 2, God’s plan (or Game of Life) puts restrictions on what can currently be done with godly powers, or even if/when.
[Claim 5] From Claims 2 and 4, there are restrictions on what magic (godly powers) can  be in Chris Roller’s presence – what Chris Roller can actually witness, which can differ from what everyone else can witness (in Claim 4).
Also, the magic needs to have a plausible explanation for its end product, like magicians calling their magic “illusions” or “tricks”
[Claim 6] From Claim 1, godly powers can be transferred once a grantor – a grantee.
A grantee can be a grantor only if granted the right, and only a subset of the rights a grantor possesses.
[Claim 7] From Claim 1 and 6, some grantees may be using their powers without morals.
[Claim 8] Claim 1 is proved via David Copperfield, who has been using godly powers for his financial gain (MN Federal case 05-446 JRT/FLN) and hiding knowledge of godly powers as stated in Claim 7.
[Claim 9] From Claim 1, there are many phenomenons associated with godly powers – most of them discussed on www.mytrumanshow.com.
[Claim 10] From Claims 5 and 9, anything Chris Roller finds out is fact (information from all senses except psychic/imagination – i.e. global information via television from eyes and ears) becomes a state of reality on planet Earth.
[Claim 11] In association with Claims 7 and 9, will-power can be cast on another to control people’s fate.
[Claim 12] From Claims 2, 5, and 9, reality can be reconstructed. Chris sometimes calls this re-ravel.
Magic completely countered/reversed is called unravel.
[Claim 13] From Claim 12, information via psychic/imagination (not real yet) (non-eyes/ears) can be reversed/re-raveled/unraveled.
[Claim 14] From Claim 12, 5, and 10, unravel/re-ravel can only be done before Chris Roller gets the “real” news, and almost entirely governed by God’s plan as stated in Claim 2.
[Claim 15] Immoral activity from Claim 7 can be covered up with reality restructuring mentioned in Claim12.

If you thought “bad patent language, good fantasy book,” please join me at the nerd table. This is, once again, better spec than claims… but it’s still barred under 101 and 102; never mind that we can’t make or use godly powers as claimed by the godly entity. The abstract, however, offers a slightly better argument for patentability:

Christopher Anthony Roller is a godly entity, powering Earth with godly powers for years. People have been granted Chris’ powers (grantees) somehow (by God?). One example is the mob. These grantees can then grant powers to others – called grantors. One grantee is David Copperfield, who has been using godly powers for his financial gain (MN Federal case 05-446 JRT/FLN). Chris Roller realized he was a godly entity in early 1999. He has had a global web site (www.mytrumanshow.com) publishing his godliness since October 2002, but did not realize the surrogate deception (use of his powers) until 2004, and on 29 July 2005 (filing of this patent), Chris Roller has yet had no accreditation nor financial gain from the use of godly powers on planet Earth. The design of godly products have no constraints, just like any other invention:

  • Design is via the imagination, with claims, references, abstract, description, images, etc., just like any other patent, trademark, or copyright.
  • There are some restrictions on the godly-feasibility of the product – having a prototype. You see, God’s plan (or Game of Life) puts restrictions on what  can currently be done, but that shouldn’t stop a patent from being created, but simply when/if it can/will be used.
  • The ethnic consideration of its use will likely be based on a majority vote of a group, similar to law creation.
  • The commission I require would range from 0-100% of product price, depending on the product’s value and use.

Of course, there was some confusion with the CD and another Notice to File Missing Parts because of it, but that was not particularly interesting. The explicit admission of public use, though, still stands in that abstract.

The first Office Action came in, and, of course, the multiple dependent claims were objected to, everything was rejected under 112 for failing to distinctly point out and claim the invention, and lack of enablement. The examiner did make a 102(b) rejection though – for a magic game. Not quite the 102(b) I had in mind, but still a decent rejection. This did, however, lead to an Examiner interview (and how I wish I could have listened to it), in which the Examiner and the Examiner’s Supervisor both told the applicant to seek help from a registered attorney or agent, because the application was so very very far from formal.

As we run further down the rabbit hole… I mean, image file wrapper, we see a complaint filed with the PCT legal administration. Apparently, Mr. Roller attempted to file a PCT application, the application did not get processed, but the check he sent was cashed. The refund demand letter was actually fairly professional. The demand letter sent to the PTO was not quite as professional… because of it’s size, you can look at it here. Go ahead. Click it. You know it’s worth it.

Despite the godly entity’s urging for the USPTO to “pretend like it is a big deal, because it is” and insinuations that the mob and the USPTO were connected, a patent remained unissued. Mr. Roller sent in another revised specification (found here), in which he offered more insight into godly powers:

Existent in nature, it may not even be apparent that it’s godly powers; you’ll discover a use, usually through new technology, like follicular transplants, then profit from it. Existent in nature may be nasty scar removal; follicular hair transplant healing; savant extra-ordinary ability; deep fat frying at 375 degrees; hypnotism and power of suggestion.  Some things are naturally getting better with time, like motor power ratio better than unity (power out > power in)

Let’s see, we’ve got… laws of nature, alternate realities, hair transplants, psychics, deep fat dinner, hypnotism, and perpetual motion. The only remotely statutory subject matter in that mess is hair transplants, and I’m pretty sure that’s not the crux of godly powers. On a side note, Mr. Roller did sue Bosley for botched hair transplants. The godly entity’s site is a veritable cornucopia of unusual lawsuits.

In the Claims, 1-15 were cancelled, and 16-19 were added:

16. (NEW) Godly Powers is a method (process) comprising
a) the use of supernatural powers which defy laws of physics.
17. (NEW) Use of said godly powers of claim 16 results in a real end-result.
18. (NEW) Said godly powers of claim 16 are manipulated via the mind via thoughts.
19. (NEW) Said godly powers of claim 16 may be inherent in a natural process.

Claim 16 can’t be patented because defying the laws of physics means it shouldn’t work, which means the subject matter falls under a 101 rejection.  17 and 18 will fall because 16 falls, and 19 is barred because natural processes are not patentable subject matter. State Street and Bilski cannot help here.

The new abstract, found here, is similar to previous iterations of the abstract except now, Mr. Roller added a spectacular sentence:

Chris Roller is addressing godly powers so a new stage of reality can exist, one with which to create new-use patents from godly powers on planet Earth.

At this point, if I were the Examiner, I’d probably be threatening to quit or begging for a transfer. I wouldn’t have even made it to the applicant’s argument… in which the godly entity included a document from one of the David Copperfield cases. If you’re going to submit arguments for patentability, submitting an unflattering document that has little to nothing to do with the application in question isn’t going to help. In any case, the Examiner issued a final rejection, noting that the abstract was too long, the specification contained new matter and was non-enabling and indefinite.  The subject matter was non-statutory, and the Examiner does note Applicant admission for natural process. The Examiner reissued the 102(b) rejection and probably prayed (or not, we are dealing with a godly entity after all) that he wouldn’t hear from the applicant again. Fortunately for us, the godly entity answered the prayer with one final thought: “Please issue this thing” because “Just the idea is worth a Nobel prize.”

Tl;dr – ALWAYS contact an attorney or agent before you file. You will save time and money if you’re trying to patent something that just can’t be patented… and you application will be in better shape than going alone.

A DIGITAL DOWNLOAD IS A LICENSE, C’MON MAN!

Wednesday, 04 January, 2012 08:43 Written by danieldavidson 0 Comments

By Daniel Davidson

It is starting to seem like the music moguls have disregarded the opinions of the court when it comes to paying royalties to the music artists.  I have reported on this on more than one occasion, beginning with the late Rick James.  The precedent handed down by a Federal Court decided the difference between a royalty payment for a CD sale and a digital download was that a digital download is a license and the artist is entitled to a 50% cut of the sale.  In the case of Rick James – whose legacy is carried on through his family – the musician belonged to an era that didn’t have the convenience of iTunes.  The ruling by a Federal Judge made the decision retroactive for older musicians.

In a new lawsuit filed by the estate of Bruce Gary, the lead singer of the group the Knack, famous for songs like My Sharona and Good Girls Don’t, claims that the label, Capitol Records, has disregarded the decisions by the courts that a digital download is a license.  Instead they were paying lesser royalties to the Knack members.  Included in digital downloads are mastertones and ringtones. 

Bruce Gary, who passed in 2006, is carried on by his sister whom is the executor of his estate.

It is no secret that the music labels’ pockets have been hit hard with the introduction of digital downloads.  Mostly due to the introduction of P2P software such as Napster and Kazaa.  Now, with these decisions calling digital downloads licenses instead of sales, the music labels will need to ante up and give the artists what is legally theirs.  I would predict that once the industry begins paying the actual royalties necessary, a hike in digital download prices will follow.  Cheers.

The Three Most Common Ways to Make Money From Your Invention

Monday, 02 January, 2012 22:49 Written by Mark Malek 1 Comment

By: Mark R. Malek

One of the things that I have encountered over the years is an inventor that comes up with an incredible invention, but that does not know what to do with the invention in order to make money with it.  During my consultations, I generally break down the very complicated business side of inventing to the three most common ways that I believe the inventor can make profit from an invention.  Of course, this article assumes that the invention is patentable, will eventually be granted a patent, and does not infringe on someone else’s patent (many assumptions, but I will discuss those in a future post.)

The first way that I know how to make money on your invention is to manufacture it and sell it yourself.  Why do you need a patent to do that?  To tell you the truth, you don’t.  There is no requirement for you to patent your invention in order to sell it. If, however, you start selling your invention, or otherwise disclose it, and one year passes, you can kiss any hope of getting a patent goodbye.  Suppose that obtaining a patent is not that important to you.  That’s fine, but I guarantee that it becomes important to you once your invention starts getting knocked off and there is no reasonable remedy to stop the knock offs.  Also, one thing that I have notices about trying to launch your own product, i.e., trying to manufacture the product and get the product into a distribution chain, is that the patent is usually the cheap part.  Depending on the invention, just getting manufacturing set up can be extraordinarily expensive.

The second and third ways that I suggest profiting from an  invention does require a patent, or some other protectable right.  Way number two to make profit from an invention is to license a patent covering the invention.  This is usually the case when an inventor can come to terms with an entity or person that desires to make, use or sell an invention that is covered by the inventor’s patent.  In such a case, the two parties can enter into a licensing agreement.  A licensing agreement is an agreement that allows the inventor to maintain ownership of the patent, and grant rights to another to use the patent for some sort of compensation (or other consideration) and for a fixed amount of time.  Licensing agreements are not something that are scratched on the back of a Denny’s napkin in crayon.  They are very complicated, and require a great amount of detail.  If you find yourself in a position where you are shaking hands in a bar and thinking that you have just saved money on your licensing negotiation by not using an attorney, chances are you will be using an attorney in the not to distant future – in a much more expensive lawsuit.

The third way to profit from an invention is an outright sale of your rights to the invention.  This, almost always, involves the sale of a patent.  I have had many conversations with inventors that want to skip the patent process and just go right to the big company (say Johnson & Johnson, for example) and sell their invention for millions.  Really?  What would Johnson & Johnson be purchasing?  The inventor’s thoughts?  It doesn’t really work that way.  An invention inside of one’s head does not result in a protectable right.  Johnson & Johnson does not have any reason to pay for the invention because there is no protectable right in that invention until a patent is granted on it.  Put another way, there are no lawsuits for idea infringement, but there can be a lawsuits for patent infringement.  The above simplistic outline does not discuss other legal remedies, such as theft of trade secret, for example, but that is not really applicable to this situation.

There are several other ways, some more complicated, to profit from an invention.  I will continue to write on this topic, as well as provide some additional details of the above in future posts.  This is just a short intro to satisfy some of the common questions that inventors sometimes have.

Can I use a comic book trademark in my business?

Monday, 02 January, 2012 05:44 Written by Aaron Thalwitzer 0 Comments

I’ve been noticing something a lot lately.

Maybe it’s because I’m a fan of superhero stuff and/or because I practice intellectual property law. Maybe due to all the superhero movies, and the fact that people not only don’t mind being associated with comics, they would LOVE some of that comics mojo to rub off on their business.

Sometimes, a company taking an item from an existing comic and using it to market their business. For example, a new mom and pop pizza chain near my house recently distributed a promotional flyer using Superman, Batman, Spider-Man, and some other superheroes all enjoying their pizza. You can bet they didn’t have a license for those trademarks. That’s a one-off that realistically caused little if harm and probably won’t be noticed. But I’ve also noticed other companies utilizing what familiar comic book-related names. For example, there’s Wayne Enterprises, which has nothing to do with Bruce Wayne. Then there’s Stark Industries, which doesn’t make flying robotic armored suits (although they do manufacture “seismic gun compressed air supply systems”). There are lots of LexCorps out there. I’m not saying they infringe (most of them probably don’t). But when does this cross the line and become infringement under the Lanham Act?

This has been litigated before. For example, in a highly publicized 2004 case, DC Comics sued Kryptonite Corp. (KC), a bike locks and accessories manufacturer alleging, among other things, trademark infringement and dilution. KC countered that DC’s trademark registration should be cancelled. DC and KC had licensing agreements over the word “Kryptonite“, but KC was prohibited from using the word “super” and other things associated with the Superman universe, in marketing its products.

For the trademark infringement claims, the plaintiff must demonstrate (1) that it has a valid mark that is entitled to protection under the Act and (2) that there exits a likelihood of confusion that consumers will be misled or confused as to the source of the goods in question.

1. Ownership of a valid mark

KC argued that DC Comics’ use of Kryptonite does not qualify for protection under the Lanham Act because DC Comics has not used Kryptonite as a brand name or trademarkto indicate the source of its goods. KC argued that DC Comics does not own the trademark in Kryptonite because DC Comicshas never used the mark in commerce the only evidence of use is as a story element. KC argues that Kryptonite is simply a fictitious substance that appears in the Superman story for narrative—not source identifying purposes. According to KC, Kryptonite is one small part of the overall content of a comic book story used in the story to describe a fictitious substance and enhance the story -not to identify or designate the source of a real product or service. KC contends that the word “Kryptonite” (except as a name for KC’s locks and other products) has no commercial meaning identifying the source of goods or services.

DC Comics,countered that it has made significant use of Kryptonite as a trademark on products other than comic products and motion picture products. For example, DC Comics argues it has used Kryptonite with merchandise such as toys, apparel, books, calendars, games, greeting cards, novelty items, and video games. In addition, DC Comics argues that it owns two trademark registrations for the use of Kryptonite on t-shirts which are incontestable.

This was not a close call. The Court held that DC Comics owned a trademark in Kryptonite. The law holds that:

where the product sold by plaintiff is ‘entertainment’ in one form or another, then not only the advertising of the product but also an ingredient of the product itself can amount to a trademark protectable under § 43(a) because the ingredient can come to symbolize the plaintiff or its product in the public mind.

DC Comics, Inc. v. Filmation Associates, 486 F.Supp. 1273, 1277 (S.D.N.Y.1980).

Protectable “ingredients” include the names and nicknames of entertainment characters (“bionic” man and woman), as well as their physical appearances and costumes, but not their physical abilities or personality traits.

For example, in an earlier case, DC Comics, Inc. v. Powers, which is directly on point, an infringer attempted to publish a magazine under name “The Daily Planet”—the same name as the fictitious newspaper that employs Superman’s alter ego, Clark Kent. Apparently, the Court did not find that DC Comics had used “The Daily Planet” on a product in the traditional trademark sense. Still, the Court found that, because over time there had grown such a close association between the “The Daily Planet” and Superman, that DC Comics Owned protectable rights in “The Daily Planet.”

The same goes for Kryptonite. The Court held, “Kryptonite is an ingredient of an entertainment property (Superman) and is a protectable symbol under the Lanham Act. Kryptonite is closely associated with Superman resulting from DC Comics’ 60 years of use of Kryptonite with Superman . . . For example, several recurring characters created by DC Comics are based entirely around Kryptonite: the Kryptonite Kid, the Kryptonite Man, and Metallo (a villain powered by Kryptonite).” The Court found that DC Comics had, for many decades, used Kryptonite to sell all manner of schlock, thereby strengthening its claim on the trademark.

Therefore, because Kryptonite, is so intimately associated Superman, it serves to identify DC Comics’ products. Kryptonite, its green glowing appearance, and other related indicia thus represent trademarks of DC Comics.

2. Likelihood of Confusion

KC argue there is not a likelihood of confusion as to the origin of the goods. The question is whether, as a result of KC’s mark being in the marketplace, numerous ordinary purchasers are likely to be misled or confused as to the source of the product in question. Factors to consider in determining whether a likelihood of confusion exists:
  1. the strength of DC Comics’ mark;
  2. the similarity of the DC Comics’ mark;
  3. the competitive proximity of the products;
  4. the likelihood that the DC Comics will “bridge the gap” by entering KC’s market;
  5. actual confusion between the products;
  6. good faith on KC’s part;
  7. the quality of KC’s product; and
  8. sophistication of buyers.

 

The Court held that there were triable issues. In cases with this many intent-based factors, summary judgment is generally unlikely, and trial (or, more realistically, settlement via a licensing agreement) more likely. Be careful using comic trademarks. The best advice is to talk to a lawyer first. You don’t want to build up a brand, and then have to change everything midstream — or, worse, get involved in costly litigation with a deep pockets plaintiff.

2011 Year in Review for Zies Widerman & Malek

Sunday, 01 January, 2012 09:03 Written by Mark Malek 1 Comment

By: Mark R. Malek

2011 was a great year for us at Zies Widerman & Malek, both from a business perspective and a community/family perspective.  I’ll keep the business side short.  The biggest thing that happened for us is moving into our new space in Melbourne, Florida.  The firm outgrew the old office (four offices) and the new space (seventeen offices) more suits our expansion needs.  The intellectual property team of Mark Malek, Philip Zies, Scott Nyman, Mark Warzecha, Gene Quinn (founder of IPWatchdog) and Danielle Roy filed a record number of patent, trademark and copyright applications on behalf of our clients.  Several articles were posted to TacticalIP.  The assumption must be that the articles are well written and contained great information because traffic to TacticalIP has skyrocketed (12,553 visits from September 1 – December 30).  Aaron Thalwitzer, Daniel Davidson and Rene Dial have been instrumental in the success of TacticalIP, and they are thanked.

From a community perspective, the firm was extremely active in supporting many wonderful causes throughout the year.  Without a doubt, the most fun we had as a firm was when we participated in Brevard County’s Corporate Dodgeball Challenge as the Lethal Litigators.  Unfortunately, we did not bring home the win, but with some additional training, we will take down many of the other teams, including our arch-dodgeball-nemesis, Craig Technologies, in 2012.  The firm also supported many charities.  Please take a look at our community page for more information on some of the groups that the firm continues to support.  We encourage all of you join us in supporting these great causes, either through volunteer efforts or financial donations.  Of note this past year, the firm sponsored and attended events for The Scott Center for Autism Treatment, Junior Achievement of the Space Coast, March of Dimes, Brevard Symphony Orchestra, Epilepsy Association, and the Space Coast Early Intervention Center.

On the personal/family side, the firm, and many individuals within the firm, enjoyed much prosperity.  We all loved attending Rene Dial’s wedding in early October, and Mark Warzecha’s wedding just a couple of weeks after that.  We wish both of you all the best as you endeavor on the great adventure!  We were also glad to hold our first annual Zies Widerman and Malek family picnic.  It was a bit hot, but a great time for all of us to get together with our families.  We also enjoyed a wonderful holiday party at Silvestro’s in Cocoa Beach this year.  The firm welcomed Danielle Roy as a Registered Patent Agent, and congratulate Mark Warzecha (already an attorney registered in New York and Indiana) on passing the Florida Bar.

The above is just a little bit of the success that the firm experienced over the past year, and we look forward to 2012!  Thanks to all that made this happen.

 

 

 

Louis Vuitton Files Trademark Suit Over the Hangover II.

Saturday, 31 December, 2011 09:52 Written by Rene Dial 0 Comments

By Rene Dial

I have heard a lot of on the edge lawsuits before but I believe this one has jumped over the edge and landed on its head.  According to the Guardian.co.uk, Louis Vuitton filed a federal trademark suit against Warner Bros over the line in the Hangover II “careful, that is a Louis Vuitton.”  To be honest I saw the movie, my brother and brother in law saw the movie and at no point in time have I heard them or any of my friends use that tag line.  To give a little background, our group of friends, quote movie tag lines a lot.  So much that it can become quite annoying at times.  The main comment and the funniest and most disturbing parts of the movie is trying to figure out what the monkey is playing with towards the beginning.  I will spare you and not go into details.

I was able to locate a copy of the complaint at paidcontent.org.

One of the first allegations that jumps out is Louis Vuitton’s claim that they did not approve Warner Bros’ use of any products bearing the LVM marks or any products bearing knock-off monograms.  It is a scary thought to think that every time someone wears a pair of jeans, shoes, socks, or virtually every item used in life then used in a movie the company can be sued because the item was not approved prior to the movie.

Louis Vuitton can make an argument that Warner Bros’ directly used the name of the bag in the movie.  If the entire movie was about a Louis Vuitton bag and it was the notoriety of the bag that drew crowds to the theater to see the movie and Warner Bros’ profited by their use of the mark we would have a different situation.  This is not the case here.  The mention of the bag is no more than a parody.  Are they making fun of the bag that it is so delicate and expensive or are they making fun of the character by showcasing his eccentric character.

Louis Vuitton’s fight is with Diophy not Warner Bros’. If anything Louis Vuitton should have paid to have their bag featured as a tag line in the movie or have Warner Bros’ buy a LV bag to compensate them for the lost profits of the one bag.  That kind of advertising is expensive.  Look at all of the advertising that they are getting by filing this lawsuit albeit bad advertising but still advertisement.  Makes you wonder if hiring an attorney, filing a complaint for around $400.00, and making a fuss gets you hundred of thousands of dollars in advertising?

Have a safe and happy New Year and let’s make 2012 the best year ever.

Be safe tonight!!

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FRIDAY, JANUARY 27, 2012

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