Patent Topics

Design Patents

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Can design patents be used to protect the appearance of computer-generated graphics at selected moments in time? How about the dynamic icons on your cellular phone or characters and features in a video game? The answer is yes, but several of the biggest companies were waiting for the Patent Office’s decision in this regard which finally came in a case David Leason handled, as explained in “Design Patent Protection for Animated Computer-Generated Icons,” originally published in the Journal of the Patent and Trademark Office Society, Vol. 91, No. 10/11/12, Oct./Nov./Dec., 2009.

“Prosecution Laches” Defense

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Years after filing a patent application, a competitor enters the market.  What are the limits on a patent owner amending a pending application to include claims that cover the competitor’s product?  How can a patent owner leverage its pending continuation patent applications?  Learn more about this defense and topic by reading “Prosecution Laches: A New Depth Charge Against Submarine Patents,” originally published in BNA’s Patent, Trademark & Copyright Journal, Vol. 67, No. 1662, March 12, 2004.

Fraud

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The pendulum is swinging away from the applicability of fraud as a favored basis to challenge a third party claim that it is currently using a mark in U.S. commerce. Fraud concerns reached their height in Medinol Ltd. v. Neuro Vasx, Inc., 67 U.S.P.Q.2d 1205 (T.T.A.B. 2003). The article “In re Bose Corporation - The Federal Circuit Overturns the Standard for Fraud in Trademark Cancellation and Opposition Proceedings,” published in the Westchester County Bar Association Newsletter, Nov. 2009, identifies a shift in the pendulum back to a more relaxed standard.
 

Incontestability

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“Incontestability” sounds like a powerful tool in the arsenal of the trademark owner. But is it really as strong a weapon as it seems and are there risks associated with claiming its benefits? “Incontestability: Does Anybody Really Understand It?” originally published in the INTA Bulletin, August 1, 2009, Vol. 64, No. 14, explores the pros and cons of claiming incontestable status for a trademark registration under U.S. trademark law.

The Business of Trademarks and Copyrights
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What is a trademark and copyright owner to do in a down economy? It's time for brand owners to hunker down and be conservative. Yet, with the right strategy in place, IP owners can not only whether the crisis, but can use this opportunity to address their existing concerns. Learn how in "Trademarks and Copyrights as Growth Opportunities Even in a Recessionary Economy," published in Intellectual Property Today, Volume 16, No. 5, May, 2009.

Pharmaceutical Names

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What constitutes sufficient “use in commerce” of a drug name to qualify it for trademark protection in the U.S.?  Is it permissible to file a Declaration of Excusable Nonuse when maintaining a registration?   Is there any risk of abandoning the mark in doing so?  Examine the issues in “A Prescription for Proving Use of Trademarks for Drug Names in the U.S.,” originally published in BNA’s Patent, Trademark & Copyright Journal, Vol. 77, No. 1898, Jan. 9, 2009

Maintenance and Renewal

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Thinking about using a corporate renewal service to renew your trademarks in the U.S.?  Better think twice.  The U.S. Patent and Trademark Office has strict examination procedures that a corporate renewal service may overlook.  The prudent approach is to rely upon local trademark counsel in the U.S. to guide the registrant or its foreign counsel through the hazards of American trademark practice.  Understand the risks and benefits by reading “The Benefits of Local Expertise,” originally published in Trademark World, Nov. 2008, Issue 212.

Trademark Naming

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Good company monikers suggest rather than describe and great ones have the flexibility to survive unforeseen changes or expansion.  Explore the classic marketing dilemma between the desire to choose a descriptive product or company name and the difficulty in protecting such descriptive terms in “What’s in a Name? Everything,” originally published on Entrepreneur.com on September 12, 2008.

Federal Dilution

The Trademark Dilution Revision Act of 2006 changed the standard for proving dilution from actual dilution to a mere likelihood.  What Congress granted to trademark owners with one hand, it took away with the other.  The Act eliminated protection for marks famous in niche markets by requiring recognition by the “general consuming public.”  Examine the Act’s attempts to balance competing interests in “Commentary, Trademark Dilution Revision Act of 2006,” originally published in the Trademark Insider, Third Quarter 2006.

Gray Goods

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The expansion of the Internet in speeding the flow of goods into the United States makes it important for U.S. trademark owners to consider possible steps to stem the tide of gray market goods from unauthorized dealers.  U.S. trademark owners should take advantage of the growing body of case law establishing that physical and material differences between the genuine goods and the unauthorized goods constitute actionable trademark infringement.  Review a number of such gray goods cases in “Preventing the Unauthorized Importation of Altered Gray Market Goods: Practical Suggestions for U.S. Trademark Owners,” originally published in Intellectual Property & Technology Law Journal, Vol. 16, No. 6, June 2004.

Lever-Rule Protection with Customs

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The U.S. Customs Service amended its regulations governing gray market goods in 1999.  The amended rule, known as the “affiliate exception,” permits the importation of gray market goods that are different from the domestic goods if labeled in accordance with a prescribed standard.  Read about the history behind the rule in “U.S. Customs Service Enacts Final Rule on Affiliate Exception to Gray Market Goods Imports,” originally published in Bright Ideas, a publication of the Intellectual Property Law Section of the New York State Bar Association, Vol. 8, No. 3, Fall 1999.

Copyright Topics

Copyright Law and the Internet

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Each year there are ever more cases dealing with copyright and Internet law issues.  While many of those cases deal with novel issues such as whether copyright protection extends to the unfettered display of the design of “windows” on the Internet, others address issues well settled in the offline world such as the scope of copyright protection afforded to the compilation of facts.  Survey these and other cases from 2004 in “A Review of 2004 Case Law: Is the Internet Changing Copyright Law of is Copyright Law Changing the Internet?” originally published in Andrews Litigation Reporter, Vol. 22, Issue 15, Dec. 28, 2004.

Statutory Damages

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Statutory damages are the hammer in copyright law, providing substantial monetary relief to the aggrieved copyright owner without any proof in lost profits or other damages.  In order to qualify for statutory damages, though, the copyright owner must timely register his or her work.  Investigate the relationship between statutory damages and registration in “Statutory Damages: A Plaintiff’s Point of View,” originally published in Law Works, Vol. 3, No. 7, July 1996. 

Copyright Law and the Internet
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2008 saw a veritable explosion of copyright cases where the internet played an important role. This article, titled Reviewing U.S. Copyright Law and the Internet in 2008, first published in Computer Law Review International (CRI), Issue 1, 15 February 2009, discusses cases dealing with a wide variety of issues from takedown notices under the Digital Millennium Copyright Act, to the first sale doctrine in copyright law, to distribution rights under the Copyright Act, to the fair use defense.