Tag: United States

How to Avoid Having Your Patent Interpreted as a Covered Business Method (CBM) Patent

Suppose that you have an invention disclosure that uses computers and the Internet to carry out transactions that could include financial transactions? When you draft your patent application, is there anything that you can do to avoid having your patent application and resulting issued patent from being interpreted as a covered business method patent?  The … Continue Reading

USPTO Adopts New Regulations for Trademark Specimens of Use

Unlike the practice in many countries, in most cases the U.S. requires a trademark owner to place the mark into actual use in commerce and provide specific types of proof of use before the registration certificate will issue.  Similar requirements apply to the mandatory declaration of use to maintain or renew a U.S. registration.  Effective … Continue Reading

Maybe Axanar Could Klingon To Its Fair Use Defense In A Parallel Copyright Universe

On January 3, 2017, in Paramount Pictures Corp. v. Axanar Productions, Inc. et al., a United States District Court held that Axanar could not rely on a fair use defense during the upcoming trial over whether Axanar infringed Paramount’s copyright in the popular Star Trek television and motion picture franchise.  Axanar has an existing twenty-one … Continue Reading

PLEADING PATENT INFRINGEMENT IN THE UNITED STATES?

How do you plead patent infringement in the United States?  Can you survive a motion to dismiss if the defendant challenges the sufficiency of your complaint?  What should you do? Let’s say your client has a United States patent that is believed to be infringed by another party.  You do not rely on the client … Continue Reading

CALIFORNIA MEN PLEAD GUILTY TO $1.66 MILLION TRADEMARK SCAM

As often as we warn our clients about unscrupulous companies that prey on trademark owners using notices and invoices that appear to come from government agencies, these worldwide scams continue to reap large quantities of fraudulent proceeds.  The U.S. Patent and Trademark Office (“USPTO”) works in a variety of ways to alert the public to … Continue Reading

New Copyright Office Regulations Require Websites to Re-Register for DMCA Safe Harbor Protection

BOTTOM LINE Website operators and other online service providers must re-register their DMCA designated agents using the Copyright Office’s new online filing system by December 31, 2017 to avoid losing DMCA safe harbor protection. The Copyright Office recently implemented new regulations governing how websites and other online service providers must register a designated agent for … Continue Reading

Supreme Court Reverses Apple v. Samsung Design Patent Damages Award

On December 6, the Supreme Court reversed Apple’s $399 million patent infringement verdict against Samsung.  The decision – the first from the Supreme Court to interpret design patent damages since 1886 – arguably raises more questions than it answers. In a series of widely-publicized cases around the globe, Apple and Samsung have been battling over … Continue Reading

TTAB ADAMANTLY REFUSES TO CHANGE MARIJUANA TRADEMARK POSITION

When we last left the Trademark Trial and Appeal Board (“TTAB,” an administrative arm of the U.S. Patent and Trademark Office), they had issued a precedential opinion that registrations could not be issued for marks that covered the sale and use of marijuana products or paraphernalia primarily intended or designed for use in ingesting or … Continue Reading

IS YOUR TRADEMARK MERELY DESCRIPTIVE?

In the United States, a trademark can be refused registration on the Principal Register because the trademark is deemed merely descriptive.  If the trademark is not allowed for registration on the Principal Register, it may be eligible for registration on the Supplemental Register.  So, how do you determine if your mark is descriptive and which … Continue Reading

Second Circuit Narrows ‘Red Flag Knowledge’ Exception to DMCA’s Safe Harbor Protections for ISPs

In a long-standing case brought against the video platform Vimeo by several music publishers, the U.S. Court of Appeals for the Second Circuit recently set the bar high for copyright owners to succeed in their infringement claims against service providers based on allegations of “red flag knowledge.” The Second Circuit, shedding some light on what is … Continue Reading

“…if you listen very hard…”: Stairway To Heaven Verdict May Have Unblurred Lines In Music Infringement Cases

Among the last few lines of Led Zeppelin’s rock ballad Stairway to Heaven are the lyrics “And if you listen very hard/The tune will come to you at last./When all are one and one is all…”  Spirit guitarist Randy Wolfe brought suit against Led Zeppelin for copyright infringement, apparently thinking that one did not even … Continue Reading

Can a 3-D Work of Artistic Craftsmanship be Protected by a Copyright?

Suppose that you create a unique three-dimensional display. You find out that your competitor has copied your three-dimensional display. Can you claim that the design of the display is a three-dimensional work of artistic craftsmanship to apply for a copyright registration to enforce against your competitor? The answer may be YES! Under 17 U.S.C. § … Continue Reading

Can the First Amendment Trump the Right of Publicity?

Many states recognize a “right of publicity,” which prohibits the commercial use of an individual’s name, likeness, or identity without consent. When aspects of a well-known person’s identity are incorporated into an expressive work, however, what emerges is a tension between the individual’s right of publicity and the artist’s freedom of expression as protected by … Continue Reading

Strategies and Tactics to Battle Online Cyber-Defamation

With the ever-expanding role of social media and the Internet, negative reviews can spread virtually unchecked. Although some negative reviews are limited to statements of opinion that, generally, are legally protected, companies and individuals increasingly are subject to attacks that include false statements constituting online defamation. The legal avenues for addressing defamatory comments and obtaining … Continue Reading

WITHOUT PATENT PROTECTION, CAN YOU PROTECT THE DESIGN OF A PRODUCT IN THE UNITED STATES?

Suppose that you have a unique design for your product but no patent protection in the United States?  Can you protect your product design to prevent a competitor from producing the same or similar design?  Is there anything you can do? Let’s say you created a unique design for a product such as a smart … Continue Reading

U.S. Federal Circuit Appeals Court sets standards for determining bona fide intent to use mark in commerce

A recent decision of the United States Court of Appeals for the Federal Circuit (M.Z. Berger & Co, Inc., v. Swatch AG [2015] Fed. Cir.) has clarified the standards applicable to determining whether an applicant relying on an “intent-to-use” basis had the required “bona fide intention” to use the mark in commerce when the application … Continue Reading
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