Do you work with start-up companies and need a basic understanding of the various intellectual property issues that can arise?
I will be co-presenting in this online seminar that will help you:
- understand the trademark and copyright problems your client may encounter with branding;
- learn how to protect your client’s branding once established;
- familiarize your practice with patents, including what they protect, timing, and strategies to prevent inadvertent loss of patent rights before filing the application;
- understand trade secrets and the importance of non-disclosure and confidentiality agreements;
- recognize intellectual property issues relating to technology, including open source code and the cloud;
- establish a proactive approach toward intellectual property ownership between cofounders, employees, and vendors; understand business names, domain names, promotional issues, and website content concerns.
The program qualifies for 1.5 hours MCLE credit.
I would like to personally invite you to attend the upcoming Law Ed program titled, “Identifying Intellectual Property Issues in Start-Ups,” which I will be co-presenting via live webcast on Tuesday, May 27th.
Presented by the ISBA Business Advice and Financial Planning Section
Co-Sponsored by the ISBA Intellectual Property Section
September 19, 2013
A presentation on what goes into creating original designs and how these differ from copycats.
WHERE: Decoration & Design Building, J. Robert Scott Showroom, Suite 220
WHEN: Wednesday, October 2,2013 !2 p.m.
WHAT: From film to fashion, creative industries are taking steps to protect and promote original work. Designers and manufacturers need to know what steps they can take to protect their designs, their businesses, and their profits. The discussion will address issues related to how to protect original design (copyright & design patent) and the manufacturers (trademark, unfair competition).
INTERIORS Magazine Editorial Director Michael Wollaeger
J. Robert Scott Founder Sally Sirkin Lewis
Designer Laura Kirar [Web Site]
Intellectual Property lawyer David Adler
Showroom reception to follow.
Download the full Fall Decoration & Design Building Market Brochure Here.
On October 2, 2013, I will be attending the Decoration & Design Building Fall Market where I am giving a presentatIon on protecting original furniture & textile designs. Those in attendance share a belief that style and design matter.
As designers and purveyors of good taste, you may spend months developing a concept, selecting materials, agonizing over the exact curve of the arm of a chair. Manufacturers may refine the design, invest in tooling to build it, promote it, and get it to market. Merchandise buyers may spend months reading, researching, attending events such as this to obtain and fill your showrooms and catalogue with ineffable elements of style. This is original, authentic design. Authentic designs—pieces produced by designers or their authorized manufacturers—are investments.
Therein lies the problem for today’s furniture designers and retailers. It takes intellectual and financial capital to conceive, create and produce good design. Yet, today’s consumer driven, price-focused economy is making it more and more difficult for a designer to protect and profit from the investment of this intellectual capital.
This presentation will focus on why certain designs are protectable, how to protect them, and how to defend against knock-offs.
April 16, 2012
Fourth Circuit Court of Appeals Reverses Summary Judgment for Google in Rosetta Stone’s AdWordsLawsuit
For Trademark lawyers and brand owners, Google’s AdWords program has engendered no small amount of debate. Many companies have tried, unsuccessfully, to hold Google liable for keyword advertising triggered when a brand-owner’s competitor buys keyword advertisements under the AdWords program by purchasing the brand-owner’s trademarks as keywords. Rosetta Stone’s lawsuit is no different.
However, what is different this time is that Google will have to defend at trial its program of selling companies’ well-known trademarks to the highest bidder. In the widely watched ruling, the Court reinstated most of Rosetta Stone’s claims relating to infringement and dilution.
On the claim of direct trademark infringement, the Court found that there was evidence in the record to create a question of fact as to whether “a reasonable trier of fact could find that Google intended to cause confusion in that it acted with the knowledge that confusion was very likely to result.” Google’s own internal studies suggested that it was likely confusion would result from the use of third-party trademarks.
On the claim of contributory infringement, the appeals court stated that the district court had improperly shifted the burden from Google to Rosetta Stone on the issue of whether Google allowed known infringers and counterfeiters to bid on Rosetta Stone’s trademarks as keywords
On the claim of trademark dilution, the appellate court reversed the district courts approval of Google’s “fair use” defense finding that the district court had not addressed Google’s good faith, and wrongly placed the burden of proof on Rosetta Stone, when the it was Google that was the party asserting fair use as a defense.
Lastly, the appeals court addressed the functionality doctrine which is the use of a product design considered necessary by the nature of the product itself. Such aspects of the product design are not protectable and others are free to use it. The court of appeals stated “[t]he functionality doctrine simply does not apply in these circumstances,” since Rosetta Stone’s trademarks were not a “functional” feature of its software.
You can read the opinion here.
March 26, 2012
It seems that every few months my clients get a raft of notices from very “official” sounding business, like “United States Trademark Protection Agency” seeking payment for services that appear to be necessary to maintain a trademark application or registration. As technology improves speed and efficiency, more of these opportunists are appearing.
U.S. Trademark Applications & Registrations are Public Records.
Filing an application for U.S. trademark registration makes certain information publicly available in the U.S. Trademark Office records. Several companies have been scraping these records and generating “official looking” notices and even invoices to unsuspecting companies. These notices appear strikingly similar to governmental agency communications and direct you to pay fees for registration, monitoring (keeping an eye out for applications similar to yours) and for filing with domestic or international lists, directories, etc.
MANY OF THESE ARE SCAMS.
Despite claims otherwise, the United States Trademark Protection Agency (USTPA) is NOT a governmental agency and the U.S. Trademark Office (USPTO) web site even showed a warning that the USTPA is NOT affiliated with the USPTO.
Some companies charge fees to be listed in their worldwide trademark registration directories. These are not official filings, their usefulness is limited and they have no legal effect.
Other companies hire non-legal administrators to do trademark filings without proper supervision or training. These companies can prove very costly due to filing problems. I hope you are not confused by such mailings. Often, if you are represented by counsel, the U.S. Patent & Trademark Office will not send mailings directly to you, they will be sent to your attorney of record. While some of these companies offer legitimate services, you should seek advice from legal counsel before utilizing them. Some examples of these companies include the following:
- Globus Edition S.L. in Spain
- Trademark Renewal Service in Washington, D.C.
- Company of Economic Publications Ltd. in Austria
- Edition The Marks KFT in Hungary
- United States Trademark Protection Agency located in Seattle, Washington
- Institute of Commerce for Industry, Trade, and Commerce located in Switzerland
- CPI (Company for Publications and Information Anstalt) in Liechtenstein (a phantom company which says it works with
- The Publication of Brand Names of the International Economy – another phantom company)
- IDM International Data Medium AnsbH in Liechtenstein
- S.A.R.L. – Societe pour Publications et Information located in Austria
- TMI Trademark Info Corporation located in Pearland, Texas
- ZDR – Datenregister GmbH in Germany
Many of these organizations send notices that look like invoices. I suggest that you not make payments without first consulting your attorney.