Search results: "patent" (page 1 of 3)

Chicago event: Internet/IP seminar with speech by Commissioner of Patents

There is an exciting intellectual property law event coming up Chicago on the afternoon of July 27, 2006, and the registration deadline (July 21) is quickly approaching.

The Intellectual Property Law Association of Chicago (“IPLAC”) will be hosting an afternoon seminar with three panels addressing copyright, trademark and patent law. The program will end with a keynote address by Commissioner for Patents John Doll.

I will be moderating a panel discussion on copyright. The panel will consist of University of Chicago Professor Doug Lichtman, Northwestern professor Clint Francis, and Sachnoff & Weaver attorney John Hines.

Registration fee is $25 if you’re not an IPLAC member. Here is a link to a registration form. I encourage you to attend.

New legal podcast – Patently-O’s “Tipcast”

Be sure to take a listen to Dennis Crouch’s new patent law “TipCast”.

Federal Circuit overturns judgment in Eolas v. Microsoft web browser patent case

Dennis Crouch has a nice summary of yesterday’s important decision in the Eolas v. Microsoft case over on his blog at Patently-O: Patent Law Blog.

Three ways trade secrets can be more powerful than copyright

Copyrights and patents and trademarks usually come to mind when thinking about intellectual property. But trade secrets are a critically important and very useful form of intellectual property and are often overlooked. Here are three ways that trade secrets can be more powerful than copyright.

Three ways trade secrets can be more powerful than copyright

1 – Trade secrets protect ideas and facts (while copyright does not).

Something qualifies as a trade secret if it (1) has economic value because it is secret, and (2) has been the subject of efforts to keep it secret. So a trade secret can be an intangible idea – like the knowledge of how to do something. Or it can be a set of facts, like a list of customers. Copyright wouldn’t protect either of these things – ideas or facts – because copyright covers creative expression. You can’t look to copyright to stop others from using ideas you have or lists of facts you compile. But trade secrets, on the other hand, might cover you.

2 – You don’t have to register trade secrets.

Let me try to clarify one thing really quickly – you don’t have to register copyrights either to own them. But you do have to register that copyright if you need to sue anyone for infringement. With trade secrets, there’s not even any such thing as registration. You have trade secrets from possessing valuable information that you have actually kept secret. That’s it.

3 – Trade secrets can last forever.

Copyright lasts a long time, but trade secrets can last even longer. When an employee of a company creates a copyrighted work, the rights last for 95 years. But there is no expiration date for trade secrets. For as long as a company keeps its valuable trade secret information secret, it’s protected by trade secrets law.

Other ways?

There are other ways trade secrets are more powerful than copyright. Can you think of any? Leave a comment here or take to Twitter (I’m @internetcases there). 

See also: 

Question of who owns source code proceeds to trial in trade secrets case

Video: 3 trademark essentials for your business

Here are three key ideas for selecting and protecting your company’s trademark:

(1) choose a distinctive mark that is not descriptive,

(2) conduct clearance so that you will not infringe, and

(3) seek registration with the United States Patent and Trademark Office.

Six things business owners should know about trademarks

#1 – Trademark law protects your brand.

shield

Trademarks are intellectual property. The different categories of intellectual property can be confusing, and as you are identifying and evaluating the different legal issues your business faces, you should seek to understand the role that each category plays. That way you can determine where you should focus your resources to cover the company’s greatest needs. Every business has trademark needs. Trademark law gives exclusive rights to providers of goods and services to use the company’s distinctive marks in connection with the company’s goods and services. A trademark (or a service mark, collectively “marks”) identify the source of goods and services. So while the company is the one that may claim rights in the trademark, it is useful to remember that the ultimate reason for trademark protection is to keep members of the consuming public from being confused about where the goods or services come from.

#2 – Registration is not necessary, but it is a good idea.

seal

At least in the U.S., trademark rights arise from using the mark in commerce. This means a couple of different things. For one, the law will provide your company with exclusive rights to use a certain mark in connection with certain goods or services by virtue of your having used the mark in commerce in connection with those goods or services. But there are limits to this protection — you can only claim that exclusivity in the geographic area in which you’ve actually used the mark. Getting a registration with the United States Patent and Trademark Office helps you in this area. Once the USPTO awards your company a registration certificate for the mark, you are the presumed owner of the exclusive rights to that mark in connection with those goods and services anywhere in the United States, regardless of where you have actually done business. A registration carries with it other benefits as well — you can use the “circle R” designation with the mark, and your registration serves to help give notice to (i.e., warn) other companies who might consider adopting the same or similar mark.

#3 – Descriptive words and phrases generally cannot be trademarks.

descriptive

Trademark law does not allow a company to claim exclusive rights on words or phrases that merely describe the product or some characteristic of it. This is a common issue that companies face when deciding on a mark for adoption and registration. Descriptive terms are good in that they convey to the consuming public what the product is all about. But descriptive terms are to be avoided in that they are not distinctive. Unless a mark is distinctive, the trademark laws do not recognize it as a trademark or service mark. A mark can be “inherently distinctive” in a number of ways. It may be a made up word (e.g., Kodak), “arbitrary” in that the original meaning of the word does not correspond with the products (e.g., Apple for computers), or “suggestive” – sort of describing the product but requiring a step in imagination (e.g., Beautyrest for mattresses). Or the mark can be a design. Marks can become distinctive over time (usually after 5 years of use). This is known as “acquired distinctiveness.”

#4 – Smart business owners do trademark clearance.

clearance

Trademark clearance is the process that a company goes through before actually using or seeking to register a mark. The goal is to become reasonably sure that the use of the proposed mark will not put you at high risk of infringing someone else’s mark. Clearance also helps prevent wasting resources on a trademark application that will get rejected by the USPTO because there is already a similar mark that someone else has applied for or registered. Clearance usually has a couple steps. Many companies have their trademark counsel perform “knockout searches” to identify any obvious risks of conflict. This can be as simple as doing a web search and a search of the USPTO database for marks that look and sound the same and are for similar goods or services. Before going all out on adopting and seeking to register a mark, however, it is a good idea to have trademark counsel perform a comprehensive search and advise on the results. A number of parties offer comprehensive search services. The key question in trademark clearance is likelihood of confusion. A mark owner needs to be reasonably sure that using the proposed mark in commerce will not cause confusion among the confusing public as to the source of the goods or services offered under the mark.

#5 – Trademark fair use is a thing.

starbucks

In some circumstances a company can use another company’s trademark without much risk of infringement. Generally this falls under the heading of “fair use.” Classic fair use is when one company uses another’s mark in just a descriptive sense. For example, a laundromat may say in its advertising that it is next door to the Burger King. In that case, the use of Burger King is not an infringement. Nominative fair use is when a company uses another mark to describe some characteristic of that mark. A commercial for Toyota, for example, may use the Honda trademark for purposes of comparing the two product lines.

#6 – Use it or lose it. Protect it or lose it.

abandoned

Trademark rights come from the company’s use of the mark, and there is always a risk that those rights might be abandoned. If a company stops using a mark, a court may find that it has abandoned its rights, and another company would be free to adopt and use the mark. The USPTO requires that documents be filed every few years to ensure that marks that are listed as registered remain in use. If a company does not take appropriate steps to ensure its mark is distinctive in the marketplace, it can similarly be found to have abandoned its rights. So mark owners should do some “policing” to see that there no one else uses a confusingly similar mark on similar products. If the company discovers such use, it must be diligent in seeking to get the other company to stop, through sending a cease and desist letter or through litigation when appropriate.

Food&Beverage photo courtesy schatz under this Creative Commons license.

Coffee sign photo courtesy Aaron Gustafson under this Creative Commons license.

Evan Brown is an attorney in Chicago advising clients on matters dealing with trademarks, copyright, technology, the internet and new media.

Domain name case under ACPA failed because trademark was not distinctive

Federal appeals court holds that plaintiff failed to satisfy all elements of the Anticybersquatting Consumer Protection Act in action against competing airline

The federal Anticybersquatting Consumer Protection Act (ACPA) [15 U.S.C. 1125(d)] is a provision in U.S. law that gives trademark owners a cause of action against one who has wrongfully registered a domain name. In general, the ACPA gives rights to owners of trademarks that are either distinctive or famous at the time the defendant registered the offending domain name.

The Eleventh Circuit Court of Appeals recently affirmed the decision of a lower court that dismissed an ACPA claim, holding that the plaintiff failed to plead that its mark was distinctive at the time of the domain name registration.

Plaintiff sued its competitor, who registered the domain name tropicoceanairways.com. Defendant moved to dismiss, and the lower court granted the motion, finding that plaintiff failed to plead that its mark TROPIC OCEAN AIRWAYS was distinctive and thus protected under the ACPA. On appeal, the Eleventh Circuit affirmed the dismissal, holding that plaintiff’s complaint failed to allege that the mark was either suggestive or had acquired secondary meaning as an indicator of source for plaintiff’s services.

Suggestive marks are considered distinctive because they require “a leap of the imagination to get from the mark to the product.” (The court provided the example of a penguin used as a mark for refrigerators.) In this case, the court found the term “tropic ocean airways” was not suggestive, as it merely “inform[ed] consumers about the service [plaintiff provided]: flying planes across the ocean to tropical locations.”

The court rejected plaintiff’s argument that a pending application at the United States Patent and Trademark Office to register the mark proved that it was suggestive. While a certificate of registration may establish a rebuttable presumption that a mark is distinctive, the court held plaintiff was not entitled to such a presumption here, where the application remained pending. Moreover, the court observed in a footnote that the presumption of distinctiveness will generally only go back to the date the application was filed. In this case, the trademark application was not filed until about a year after the domain name was registered.

As for the argument the mark had acquired secondary meaning, the court found plaintiff’s allegations to be insufficient. The complaint instead made conclusory allegations about secondary meaning that were insufficient to survive a motion to dismiss. The court held that plaintiff failed to allege the nature and extent of its advertising and promotion, and, more importantly, did not allege any facts about the extent to which the public identified the mark with plaintiff’s services.

Tropic Ocean Airways, Inc. v. Floyd, — Fed.Appx. —, 2014 WL 7373625 (11th Cir., Dec. 30, 2014)

Evan Brown is an attorney in Chicago helping clients with domain name, trademark, and other matters involving technology and intellectual property.

What should we do when trademarks offend?

Trademarks are symbols that convey meaning, and ostensibly that meaning is ontologically linked to the purveyor of the goods or services with which the trademark is connected. But those symbols can relate to different ontologies as well, be they freighted with racism/prejudice, religious offense, or plain old poor taste. Take for example the ongoing Redskins dispute, Muslims protesting a sacred symbol on perfume, and the weird attempt by a Malaysian company to get an Australian trademark for MH17.

The law and social advocacy step in to critique these brand owners’ selection of marks. For example, the USPTO found the Redskins marks to so disparage Native Americans that the football team should not enjoy the protections of a federal trademark registration. Ticked-off Sufis protested their holy symbol being used in a concupiscent manner. And we all sort of scratch our heads at why a company would think it should capitalize commercially on the tragedy of an airliner downed in a war zone.

But do the law and social advocacy really have any role to play here? Of course. So perhaps the more critical question is whether those roles should be primary ones. Trademarks exist to regulate commerce. More specifically, trademark law seeks primarily to ensure that a purchaser’s decision making process will be unmessed-with by others seeking to muddy that purchaser’s picture of who is providing the goods or services. If trademarks can have multiple meanings, which of course they sometimes will, shouldn’t we just let the marketplace sort that out? At the same time that trademark law is guiding a purchaser’s decision in an environment hopefully free of confusion, why not just let the sensibilities of the purchasing majority decide what products – some branded with offensive symbols while others not – be sustained?

Evan Brown is an attorney in Chicago advising clients on matters dealing with trademarks, copyright, technology, the internet and new media.

Company sued by university can continue emailing that it will not hire students

University of Illinois v. Micron Technology, Inc., No. 11-2288 (C.D.Ill, Order dated April 11, 2013)

The University of Illinois sued Micron for patent infringement. Micron sent an email to several professors that read in part:

Because Micron remains a defendant in a patent infringement lawsuit that [the University] filed against Micron in Federal court in Illinois on December 5, 2011, effective immediately, Micron will no longer recruit [University] students for open positions at any of Micron’s world-wide facilities.

The University asked the court for a preliminary injunction barring future harassing communications from Micron to any University employee. The court denied the motion, holding that:

  • the term “harassing” was vague and therefore the requested injunction would violate Rule 65(d)’s requirement that the injunction describe in reasonable detail the acts to be restrained
  • the prior restraint of speech would likely violate Micron’s First Amendment rights
  • the sought after preliminary injunction did not pertain to the injury alleged in the complaint

Though the court sided in favor of Micron on the question of whether to enter an injunction, it questioned the company’s motives. It found Micron’s decision to be “without tact,” and was “very concerned” that Micron was trying to interfere with the litigation. But there was not sufficient evidence for the court to draw such a conclusion.

Six interesting technology law issues raised in the Facebook IPO

Patent trolls, open source, do not track, SOPA, PIPA and much, much more: Facebook’s IPO filing has a real zoo of issues.

The securities laws require that companies going public identify risk factors that could adversely affect the company’s stock. Facebook’s S-1 filing, which it sent to the SEC today, identified almost 40 such factors. A number of these risks are examples of technology law issues that almost any internet company would face, particularly companies whose product is the users.

(1) Advertising regulation. In providing detail about the nature of this risk, Facebook mentions “adverse legal developments relating to advertising, including legislative and regulatory developments” and “the impact of new technologies that could block or obscure the display of our ads and other commercial content.” Facebook is likely concerned about the various technological and legal restrictions on online behavioral advertising, whether in the form of mandatory opportunities for users to opt-out of data collection or or the more aggressive “do not track” idea. The value of the advertising is of course tied to its effectiveness, and any technological, regulatory or legislative measures to enhance user privacy is a risk to Facebook’s revenue.

(2) Data security. No one knows exactly how much information Facebook has about its users. Not only does it have all the content uploaded by its 845 million users, it has the information that could be gleaned from the staggering 100 billion friendships among those users. [More stats] A data breach puts Facebook at risk of a PR backlash, regulatory investigations from the FTC, and civil liability to its users for negligence and other causes of action. But Facebook would not be left without remedy, having in its arsenal civil actions under the Computer Fraud and Abuse Act and the Stored Communications Act (among other laws) against the perpetrators. It is also likely the federal government would step in to enforce the criminal provisions of these acts as well.

(3) Changing laws. The section of the S-1 discussing this risk factor provides a laundry list of the various issues that online businesses face. Among them: user privacy, rights of publicity, data protection, intellectual property, electronic contracts, competition, protection of minors, consumer protection, taxation, and online payment services. Facebook is understandably concerned that changes to any of these areas of the law, anywhere in the world, could make doing business more expensive or, even worse, make parts of the service unlawful. Though not mentioned by name here, SOPA, PIPA, and do-not-track legislation are clearly in Facebook’s mind when it notes that “there have been a number of recent legislative proposals in the United States . . . that would impose new obligations in areas such as privacy and liability for copyright infringement by third parties.”

(4) Intellectual property protection. The company begins its discussion of this risk with a few obvious observations, namely, how the company may be adversely affected if it is unable to secure trademark, copyright or patent registration for its various intellectual property assets. Later in the disclosure, though, Facebook says some really interesting things about open source:

As a result of our open source contributions and the use of open source in our products, we may license or be required to license innovations that turn out to be material to our business and may also be exposed to increased litigation risk. If the protection of our proprietary rights is inadequate to prevent unauthorized use or appropriation by third parties, the value of our brand and other intangible assets may be diminished and competitors may be able to more effectively mimic our service and methods of operations.

(5) Patent troll lawsuits. Facebook notes that internet and technology companies “frequently enter into litigation based on allegations of infringement, misappropriation, or other violations of intellectual property or other rights.” But it goes on to give special attention to those “non-practicing entities” (read: patent trolls) “that own patents and other intellectual property rights,” which “often attempt to aggressively assert their rights in order to extract value from technology companies.” Facebook believes that as its profile continues to rise, especially in the glory of its IPO, it will increasingly become the target of patent trolls. For now it does not seem worried: “[W]e do not believe that the final outcome of intellectual property claims that we currently face will have a material adverse effect on our business.” Instead, those endeavors are a suck on resources: “[D]efending patent and other intellectual property claims is costly and can impose a significant burden on management and employees….” And there is also the risk that these lawsuits might turn out badly, and Facebook would have to pay judgments, get licenses, or develop workarounds.

(6) Tort liability for user-generated content. Facebook acknowledges that it faces, and will face, claims relating to information that is published or made available on the site by its users, including claims concerning defamation, intellectual property rights, rights of publicity and privacy, and personal injury torts. Though it does not specifically mention the robust immunity from liability over third party content provided by 47 U.S.C. 230, Facebook indicates a certain confidence in the protections afforded by U.S. law from tort liability. It is the international scene that gives Facebook concern here: “This risk is enhanced in certain jurisdictions outside the United States where our protection from liability for third-party actions may be unclear and where we may be less protected under local laws than we are in the United States.”

You have to hand it to the teams of professionals who have put together Facebook’s IPO filing. I suppose the billions of dollars at stake can serve as a motivation for thoroughness. In any event, the well-articulated discussion of these risks in the S-1 is an interesting read, and can serve to guide the many lesser-valued companies out there.

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