IP LawAfter years of research and development, your company is finally about to launch a new “game changing” product. You know you need to protect this product, but where do you start? What do you name your new product, and how do you protect that name? These and other frequently asked questions often arise in new entrepreneurial ventures — whether for new businesses or new product lines for existing businesses.

Most business owners intuitively understand the value of their intellectual property. They understand that their products, brands and other ideas need to be protected, but can be confused by some of the “jargon” used in intellectual property law with words like “patent,” “trademark” and “copyright.” This post helps explain some of the key differences between patents, trademarks and copyrights.

What is a patent?

A patent is a legal right to exclude others from making, using, selling, offering for sale, or importing a patented invention for a fixed period of time. In the U.S., patents are exclusively under federal jurisdiction and are awarded by the U.S. Patent and Trademark Office in exchange for making public an enabling disclosure of the invention, and generally last for 20 years (15 years for design patents).


Continue Reading What is the difference between patents, trademarks and copyrights?

Hello My Name IsWhen launching a business or a new product, one of the most important initial considerations is the name of that business or product. The name is the first thing a potential consumer comes into contact with and what the consumer will remember. The name is the vehicle by which all marketing will travel and will be repeated over and over in advertising, on social media and websites. It is, therefore, one of the things that businesses strive to “get it right.”

Usually, this is something that is left to the creative types — those who understand market research, focus groups and creating all-around brands. However, even at the early stages, businesses should pay attention to the legal side of branding to make sure they “get it right.” If you are launching a new business or a new product, be sure take into consideration the following areas.

Will the name also be the company name?

If so, in addition to any trademark concerns, it is imperative to check that the company name is available in the state where the business will be formed. Most states do not allow two businesses to have identical names, regardless of the goods or services they offer.

Is the name distinctive?


Continue Reading Branding 101: What’s in a Name?

Product packaging is a critical part of every manufacturer’s operations (and even that of many wholesalers and retailers). A product’s packaging is often the first thing customers see: and first impressions count. That is why, for example, an entirely new discipline – packaging engineering – has grown over the last several decades and why companies like Starbucks® and Apple® work so hard to have every napkin, cup, box and bag uniformly branded.

Yet despite the obvious commercial and marketing importance of product packaging, many companies fail to protect the intellectual property rights embodied in such packaging – rights which can often be secured under patent, copyright and/or trademark law.

Product packaging is one of those often overlooked areas of intellectual property. Manufacturing clients rightly focus on protecting their products but sometimes forget that consumers usually see their packaging first. Failing to protect such packaging can be a major misstep since competitors often infringe upon both packaging as well as products.

Design Patent

A design patent protects the ornamental design (i.e., the “look and feel”) of an invention. In other words, design patents protect the way an invention (including, potentially, product packaging) looks. When most people think about patents, they think about a “utility patent” – something which protects utilitarian or functional aspects of an invention. But a “design patent” is different – it protects the appearance of an invention. That’s often perfect for packaging. In general, that means that new, useful and non-obvious packaging designs can potentially be protected.

Major companies have been using design patents to protect product packaging for over a century. For example, U.S. D48160 is a design patent issued in 1915 over what we now know as the Coca-Cola® bottle. More recent examples include everything from Chobani’s design patent covering product packaging for yogurt boxes (U.S. D828766S1) and Kraft’s design patent covering a salad dressing bottle (U.S. D659000S1) to Starbucks’ design patents for a coffee cup (U.S. D529762S1) and a coffee cup lid (U.S. D516424).

How should companies decide whether or not to consider seeking design patent rights?


Continue Reading Copyright and patent protection apply to product packaging, too

Trademark scams, as detailed in our earlier post here, are back with a vengeance. Because of the nature of these scams and the potential cost of falling for them, we felt it was time to address this topic again.

How Trademark Scams Work

Federal trademark applications and trademark registrations are public records. The United States Patent and Trademark Office maintains a searchable database of currently existing and expired trademarks. Among other information in the database is the name and address of the owner of a trademark application or registration, USPTO Serial and Registration Numbers, registration dates and even visual images of trademarks.

Scammers can obtain this information directly off the USPTO website and enter it into documents that look “official” and emanate from such “official” entities as World Trademark Register, United States Trademark Compliance Office, Patent & Trademark Bureau, United States Trademark Registration Office, and WTP Trademark Service.


Continue Reading Don’t Be the Victim of a Trademark Scam

While COVID-19 rightfully dominates news coverage and Henderson, Franklin has been providing our clients with information, updates and links to resources to help get through this, we also recognize that the mundane is sometimes just as important. Thus, in a world without Major League Baseball, the NBA, NHL, NASCAR or F1, we offer our own unique sports coverage, with an intellectual property slant.

Tom Brady Leaves Boston, Files Trademarks Applications

After 20 storied years with the New England Patriots, Tom Brady turned his back on the franchise, his fans and six Lombardi Trophies to sign with the Tampa Bay Buccaneers. This is undoubtedly a bitter pill for New England fans to swallow, who will now have to get used to mediocre football. (Patriot fans, please see Chicago Bears for guidance).

On the other hand, with his place in the Hall of Fame secure, Brady was looking for new challenges. Specifically, it appears, the challenge of brand extension. Almost as soon as the ink dried on his new contract with Tampa Bay, Brady’s management, TEB Capital Management, Inc., filed applications to register the trademarks TOMPA BAY and TAMPA BRADY with the United States Patent and Trademark Office. The trademark applications identify the goods the mark will appear on, specifically all the clothing, hats and footwear that Tampa Bay fans are rushing out (at least online!) to buy. Time will tell whether Brady can repeat his on-field success with Tampa Bay, but it is certain that his off-field brand strengthening moves will allow him to throw from a deep pocket.

Nature Boy Down for the Count
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COVID-19 has disrupted businesses and has wrought havoc with timelines and deadlines. Likely, it will continue to do so. Many government agencies, such as the IRS as we reported here, are reacting to COVID-19 by extending deadlines. For those with intellectual property-related deadlines in the near term, the United States Patent and Trademark Office (“USPTO”) has recently made some policy changes in response to COVID-19.

Remote Appearances

While work goes on inside the USPTO, the building is closed to the public and any in-person business.  All previously scheduled meetings or hearings before the Trademark Trial and Appeal Board (“TTAB”) or Patent Trial and Appeal Board (“PTAB”) are to take place by video or teleconference.

Deadlines

With regard to deadlines to respond to USPTO actions, inquiries or other deadlines, those are set by statute and rule and the failure to timely respond to a deadline results in an abandonment of the underlying trademark or patent application or registration.


Continue Reading COVID-19 Impact on USPTO Deadlines

Under the Lanham Act, (15 U.S.C. 1051, et seq.), a trademark owner can bring suit against any entity that infringes its trademark.

Among the recoverable damages are disgorgement of the infringer’s profits from the sale of infringing goods, 15 U.S.C. 1117(a). However, where the infringement constitutes counterfeiting, those damages can be trebled or the trademark owner can elect to recover statutory damages, amounting to potentially $2 million per mark infringed, 15 U.S.C. 1117(b), 1117(c).

The Sale of Counterfeit Goods


Continue Reading Holding Landlords Liable for Trademark Infringement by Tenant

Trademark filings are public records. The United States Patent and Trademark Office database contains names and addresses of owners of trademark applications and registrations. A disturbing trend that has reached epidemic proportion is the use of that data by third parties trying to scam trademark owners. If you own a trademark registration and receive any

Trademark protection is available to any individual or entity who uses a trademark in the United States. Since 2015, an average of 400,000 trademark applications have been filed with the United States Patent and Trademark Office (USPTO) each year. According to USPTO data, about 25% of those are filed by non-United States entities and individuals. Effective August 3, 2019 a new Rule will go into effect at the USPTO that changes how those parties must interact with the USPTO.

Who does this impact?

The Rule applies to non-United States parties, including all businesses that have a principal place of businesses (i.e. headquarters) outside the United States, as well as all individuals with non-US permanent addresses. Foreign nationals with residence in the United States or businesses with significant enough contact and business in United States are not impacted.


Continue Reading New Trademark Rules Aimed at Foreign Trademark Owners

In 1991, artist and designer Erik Brunetti launched a clothing line. In 2017, Brunetti filed an application with the United States Patent and Trademark Office (USPTO) to register the trademark representing this brand—FUCT (“Friends U Can’t Trust”). The USPTO refused registration of the mark because the Federal statute governing trademarks—the Lanham Act—prohibited registration of any trademark that

consists of or compromises immoral or scandalous matter.”

Too Scandalous to Trademark?

Reviewing the FUCT application, the USPTO applied its general test of for those marks that might be considered as comprised of immoral or scandalous matter. That is, whether a substantial composite of the general public would find a trademark shocking to the sense of truth, decency or propriety or whether the mark would give offense to conscious or moral feelings. Against this, the USPTO concluded the FUCT mark was totally vulgar, highly offensive and had “decidedly negative sexual connotations.” Therefore, the Lanham Act prohibited registration and Brunetti’s application was refused.

First Amendment Lawsuit


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