Proposed Patent Rule Would Allow Third Party Prior Art Submissions

by Sheldon Mak & Anderson on January 31, 2012

As we mentioned last week, the U.S. Patent and Trademark Office recently published several proposed patent rule changes in connection with the Leahy-Smith America Invents Act. One of those changes relates to third party submissions of prior art in a patent application.

Specifically, the proposed rule is needed to implement the preissuance submissions by third parties provision of the Leahy-Smith America Invents Act. Under this provision, third parties may submit, for consideration and inclusion in the record of patent applications, any patents, published patent applications, or other printed publications of potential relevance to the examination of the applications.

Below are a few additional details regarding the proposed rule:

• A preissuance submission may be made in any non-provisional utility, design, and plant application, as well as in any continuing or reissue application.
• A third-party preissuance submission must include a concise description of the asserted relevance of each document submitted and be submitted within a certain statutorily specified time period.
• The third party must submit a fee as prescribed by the Director and a statement that the submission complies with all of the statutory requirements.
• The third-party preissuance submission provision of the Leahy-Smith America Invents Act is effective on September 16, 2012, and applies to any application filed before, on, or after September 16, 2012.

The USPTO is soliciting feedback on the proposed rule changes and will accept public comments through March 5, 2012.

At Sheldon Mak & Anderson, we recognize that innovation is your competitive edge – and it needs protection. As a full-service intellectual property firm with more than two decades of experience, we provide local, regional, national, and international legal services in the following areas: patents, trademarks, copyrights, trade secrets, IP litigation, international patent and trademark prosecution, licensing, alternative dispute resolution, and green technology.

Contact our knowledgeable intellectual property attorneys today TOLL FREE at 1-855-UR IDEAS (1-855-874-3327) to find out how we can provide powerful protection for your unique ideas.

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Copyright FAQ: What If I Want to Use a Pseudonym?

by Sheldon Mak & Anderson on January 30, 2012

Sometimes, authors want their true identity to remain hidden from the public. For instance, popular author Dean Koontz has written under at least eleven pen names. Many often wonder if authors who use pen names or pseudonyms can still copyright their work.

The answer is yes. As detailed by the U.S. Copyright Office, a work is considered “pseudonymous” if the author is identified on copies of the work by a fictitious name. Nicknames and other diminutive forms of legal names are not considered fictitious.

If you write under a pseudonym but want to be identified by your legal name in the Copyright Office’s records, you should provide your legal name and your pseudonym on your application for copyright registration. Check “pseudonymous” on the application if the author is identified on copies of the work only under a fictitious name and if the work is not made for hire.

If an author’s name is given, it will become part of the Office’s online public records, which can be searched via the Internet. Therefore, if you want to completely conceal your identity, you should provide your pseudonym and leave the space that asks for the name of the author blank.

The Length of Copyright Protection

It is also important to note that the use of a pseudonym can impact the length of your copyright protection. Copyrighted works published under a pseudonym are awarded copyright protection that is the earlier of 95 years from publication of the work or 120 years from its creation. However, if the author’s identity is provided in the registration records of the Copyright Office, including in any other registrations made before that term has expired, the term then becomes the author’s life plus 70 years.

Legal Concerns to Discuss With a Copyright Attorney

It is important to note that you should never omit the name of the copyright claimant. While you can use a pseudonym for the claimant name, it is important to understand that using a fictitious name has several drawbacks. For instance, business transactions involving the copyrighted property may be more difficult, as contracting parties may raise questions about the copyright’s ownership.

At Sheldon Mak & Anderson, we recognize that innovation is your competitive edge – and it needs protection. As a full-service intellectual property firm with more than two decades of experience, we provide local, regional, national, and international legal services in the following areas: patents, trademarks, copyrights, trade secrets, IP litigation, international patent and trademark prosecution, licensing, alternative dispute resolution, and green technology.

Contact our knowledgeable intellectual property attorneys today TOLL FREE at 1-855-UR IDEAS (1-855-874-3327) to find out how we can provide powerful protection for your unique ideas. 

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Doctor, Doctor Give Me the News: Dr. Pepper Settles Trademark Lawsuit

Dr. Pepper Snapple Group Inc. is parting ways with its oldest bottler, after a trademark dispute soured the business relationship. According to a joint statement, Dr. Pepper Snapple Group has bought all of the bottler’s sales and distribution operations under the terms of a settlement agreement.

The soda company Dublin Dr. Pepper Bottling Co. was accused last summer of diluting the Dr. Pepper brand by selling bottles with the label “Dublin Dr. Pepper.” It also contended that the Texas bottling company was selling the soft drink beyond its approved territory, a 44-mile radius around the rural Texas town of Dublin.

The main issue of contention was a product known as “Dublin Dr. Pepper.” The bottler used the classic formula of Dr. Pepper sweetened with the traditional cane sugar (high fructose corn syrup is commonly used today) and sold the soda in retro glass bottles. The trademark dispute arose as the product grew in popularity and Dublin began selling it on its website.

Pursuant to the settlement, Dr. Pepper Snapple will now distribute Dublin’s version of Dr. Pepper in the bottler’s former six-county territory and some other parts of Texas, without “Dublin” on the label. Meanwhile, Dublin will continue to bottle several smaller soft-drink brands, including Triple XXX Root Beer, under distribution deals with other companies.

Source: The Wall Street Journal

At Sheldon Mak & Anderson, we recognize that innovation is your competitive edge – and it needs protection. As a full-service intellectual property firm with more than two decades of experience, we provide local, regional, national, and international legal services in the following areas: patents, trademarks, copyrights, trade secrets, IP litigation, international patent and trademark prosecution, licensing, alternative dispute resolution, and green technology.

Contact our knowledgeable intellectual property attorneys today TOLL FREE at 1-855-UR IDEAS (1-855-874-3327) to find out how we can provide powerful protection for your unique ideas.

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California Trade Secret Lawsuit: Who Owns a Twitter Account?

As the use of social media continues to grow, many companies may be wondering who owns an employee’s social media account, particularly when it is used for business purposes. A trade secret lawsuit currently pending in California will likely shed light on the issue.

The Facts of the Case

Phone Dog Media filed the lawsuit against its former website writer Noah Kravitz after he left the company in October 2010. The dispute centers on his Twitter name “Phonedog_Noah” (tied to his personal email) and its 17,000 followers, which he took with him when he left.

Phone Dog contends that it is the rightful owner of the Twitter account, characterizing it as a proprietary customer list. The company is seeking damages of $340,000, which amounts to $2.50 a month for every follower for the eight months Kravitz used the Twitter handle.

Meanwhile, Kravitz contends that the company told him that he could keep the “Phonedog_Noah” account in exchange for tweeting for the company “from time to time.” He further claims that Phone Dog filed the trade secret lawsuit in retaliation for his claim to 15 percent of the site’s gross advertising revenue because of his position as a vested partner, the New York Times reports.

The Legal Ramification of the Case

Because social media ownership is such a novel issue, the court’s decision promises to have broad legal ramifications. In addition to shedding light on how ownership should be determined, it may also dictate how the value of Facebook friends and Twitter followers should be calculated.

We will, of course, keep you updated.

At Sheldon Mak & Anderson, we recognize that innovation is your competitive edge – and it needs protection. As a full-service intellectual property firm with more than two decades of experience, we provide local, regional, national, and international legal services in the following areas: patents, trademarks, copyrights, trade secrets, IP litigation, international patent and trademark prosecution, licensing, alternative dispute resolution, and green technology.

Contact our knowledgeable intellectual property attorneys today TOLL FREE at 1-855-UR IDEAS (1-855-874-3327) to find out how we can provide powerful protection for your unique ideas.

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Proposed Patent Rule Would Change Administrative Requirements for Inventor Oaths

As we mentioned yesterday, the U.S. Patent and Trademark Office recently published several proposed patent rule changes in connection with the Leahy-Smith America Invents Act. This is post is the first of several that will discuss the changes outlined by the USPTO.

In the first proposed rulemaking, the USPTO seeks to revise and clarify the rules of practice relating to the inventor’s oath or declaration, including reissue oaths or declarations, assignments containing oath or declaration statements from inventors, and oaths or declarations signed by parties other than the inventors.
These changes are good news for inventors and assignees because the existing oath requirements for patent applications were often inconsistent and overly burdensome.

Significant changes include the following:

• A person to whom the inventor has assigned or is under an obligation to assign the invention may make an application for patent.
• A person who otherwise shows sufficient proprietary interest in the matter may make an application for patent on behalf of, and as agent for, the inventor on proof of the pertinent facts and a showing that such action is appropriate to preserve the rights of the parties.
• If an inventor or legal representative thereof refuses to execute the oath or declaration, or cannot be found or reached after diligent effort, the assignee, or a party who otherwise shows sufficient proprietary interest in the matter may execute the oath or declaration.
• When carrying over a power of attorney from a parent case to a continuing case, a copy of the power of attorney from the prior application must be filed in the continuing application (even where a change in power did not occur in the prior application).
• A payment by credit card in patent cases may only be submitted with an original handwritten signature personally signed in permanent dark ink or its equivalent.

Please stay tuned for additional information about the other proposed rule changes next week.

At Sheldon Mak & Anderson, we recognize that innovation is your competitive edge – and it needs protection. As a full-service intellectual property firm with more than two decades of experience, we provide local, regional, national, and international legal services in the following areas: patents, trademarks, copyrights, trade secrets, IP litigation, international patent and trademark prosecution, licensing, alternative dispute resolution, and green technology.

Contact our knowledgeable intellectual property attorneys today TOLL FREE at 1-855-UR IDEAS (1-855-874-3327) to find out how we can provide powerful protection for your unique ideas.

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USPTO Releases Four Proposed Rule Changes Under America Invents Act

The U.S. Patent and Trademark Office has begun rolling out a series of proposed rule changes as part of the Leahy-Smith America Invents Act. Earlier this month, the USPTO published four notices of proposed rulemaking in the Federal Register.

The proposed patent rule changes address the following:

• Inventor’s oath and declaration
• Third party submission of prior art in a patent application
• Citation of prior art in a patent file
• The statute of limitations for Office of Disciplinary Proceedings

We will address each of the proposed changes on this blog the coming weeks, beginning with a discussion of the inventor’s oath tomorrow.

What’s Next?

The USPTO is soliciting feedback on the proposed rule changes and will accept public comments through March 5, 2012.

According to a USPTO press release, the office will publish additional AIA-related proposed rules in the Federal Register for public comment in the coming weeks.  The soon-to-come proposed rule publications cover supplemental examination, post-grant review, inter partes review, transitional program for covered business methods, and derivation proceedings.

At Sheldon Mak & Anderson, we recognize that innovation is your competitive edge – and it needs protection. As a full-service intellectual property firm with more than two decades of experience, we provide local, regional, national, and international legal services in the following areas: patents, trademarks, copyrights, trade secrets, IP litigation, international patent and trademark prosecution, licensing, alternative dispute resolution, and green technology.

Contact our knowledgeable intellectual property attorneys today TOLL FREE at 1-855-UR IDEAS (1-855-874-3327) to find out how we can provide powerful protection for your unique ideas.

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California Copyright Law: Is SOPA Really Dead?

The national day of protest against the Stop Online Piracy Act (and its counterpart the PROTECT IP Act) certainly caught the attention of the American public. Now, it appears that Congress was listening as well.

On January 18, dozens of websites went dark or ran protest messages against SOPA, including popular sites Wikipedia and Google. As we have discussed on this blog, critics of the bill argue it goes too far to prevent online piracy and would unduly burden legitimate businesses.

Shortly after the protest, Sen. Harry Reid (D-NV) stated that he is putting PIPA on hold. While SOPA’s primary sponsor, Rep. Lamar Smith (R-TX), initially indicated he would proceed with marking up the bill, he ultimately decided to pull the measure from consideration “until there is wider agreement on a solution.”

Even before the protest, critics of SOPA got a boost when the Obama Administration voiced concerns about the legislation. The White House released a statement indicating that while it supported efforts to address online piracy by foreign websites, “[it] will not support legislation that reduces freedom of expression, increases cybersecurity risk, or undermines the dynamic, innovative global Internet."

At this point, it looks like these bills may be dead, at least in their current form. We will, of course, keep you updated as new developments arise.

At Sheldon Mak & Anderson, we recognize that innovation is your competitive edge – and it needs protection. As a full-service intellectual property firm with more than two decades of experience, we provide local, regional, national, and international legal services in the following areas: patents, trademarks, copyrights, trade secrets, IP litigation, international patent and trademark prosecution, licensing, alternative dispute resolution, and green technology.

Contact our knowledgeable intellectual property attorneys today TOLL FREE at 1-855-UR IDEAS (1-855-874-3327) to find out how we can provide powerful protection for your unique ideas.

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California Trademark FAQ: Is Your Product Eligible for a Trademark?

As we have noted on this blog, owning a Federal trademark registration provides several advantages, including the ability to file a trademark lawsuit to protect the mark. In order to obtain that protection, applicants must be able to show current use of the mark in commerce, or their intent to use their mark in commerce in the future.

What Is Meant By “Commerce?”

The term “commerce” refers to all commerce that the U.S. Congress may lawfully regulate, including interstate commerce or commerce between the U.S. and another country. As detailed by the USPTO, “use in commerce” must be a bona fide use of the mark in the ordinary course of trade, and not use simply made to reserve rights in the mark.

Acceptable use includes the following:

• For goods: the mark must appear on the goods, the container for the goods, or displays associated with the goods, and the goods must be sold or transported in commerce.
• For services: the mark must be used or displayed in the sale or advertising of the services, and the services must be rendered in commerce.

What If I am Already Using the Mark?

If you have already started using the mark in commerce, you may file a “use” based application. It must include a sworn statement that the mark is in use in commerce, including the date of first use of the mark anywhere and the date of first use of the mark in commerce. The application should also include a specimen showing use of the mark in commerce

How We Can Help

Of course, there are many other factors that must be considered before formally filing a trademark application. Therefore, it is often advisable to consult with an experienced trademark attorney.

At Sheldon Mak & Anderson, we recognize that innovation is your competitive edge – and it needs protection. As a full-service intellectual property firm with more than two decades of experience, we provide local, regional, national, and international legal services in the following areas: patents, trademarks, copyrights, trade secrets, IP litigation, international patent and trademark prosecution, licensing, alternative dispute resolution, and green technology.

Contact our knowledgeable intellectual property attorneys today TOLL FREE at 1-855-UR IDEAS (1-855-874-3327) to find out how we can provide powerful protection for your unique ideas.

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Are Emoticons Really at the Center of a Patent Dispute?

We have previously discussed the ongoing patent dispute between Apple and Samsung Electronics. The lawsuits span the globe and cover a number of cell phone and tablet technologies.

The subject of the latest dispute made us smile—and by that we mean : ). Yes, you guessed it. The smartphone rivals are reportedly now locked in a patent dispute over emoticons.

As reported by the Los Angeles Times, Samsung owns a patent on smartphone use of emoticons. In fact, a patent for an “emoticon input method for mobile terminals” was granted in Europe way back in 2000.

In the latest lawsuit, Samsung is challenging the way in which iPhones enter emoticons on the handset’s screen. As detailed by the LA Times, Samsung specifically alleges that the iPhone’s Japanese emoticon keyboard infringes on its patent. When users activate the Japanese keyboard, they also activate an emoticon menu and, with one touch, can add multiple complex emoticons.

While the subject of the latest patent lawsuit is amusing, it will likely have serious consequences in this growing patent war. Many expect Apple to file at least one retaliatory suit in the near future.

At Sheldon Mak & Anderson, we recognize that innovation is your competitive edge – and it needs protection. As a full-service intellectual property firm with more than two decades of experience, we provide local, regional, national, and international legal services in the following areas: patents, trademarks, copyrights, trade secrets, IP litigation, international patent and trademark prosecution, licensing, alternative dispute resolution, and green technology.

Contact our knowledgeable intellectual property attorneys today TOLL FREE at 1-855-UR IDEAS (1-855-874-3327) to find out how we can provide powerful protection for your unique ideas.

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California Patent FAQ: When Should You File a Design Patent?

In general, a “design patent” protects the way an article looks, as opposed to a “utility patent” that protects the way an article is used and works. In some cases, an invention possesses both functional and ornamental characteristics, and both design and utility patents may be obtained.

What Is a “Design?”

As detailed by the U.S. Patent and Trademark Office, a “design” is defined as the visual ornamental characteristics embodied in, or applied to, an article of manufacture. Since a design is manifested in appearance, the subject matter of a design patent application may refer to the configuration or shape of an article, to the surface ornamentation applied to an article, or to the combination of configuration and surface ornamentation.

What Can Be Patented?

As with a utility patent, a design patent must be approved by the USPTO. It is important to note that the following cannot be the subject of a design patent:

• A design for an article of manufacture that is dictated primarily by the function of the article.
• A design for an article of manufacture that is hidden in its end use and whose ornamental appearance is of no commercial concern prior to reaching its end use.
• A design for an article of manufacture that is not “original.” For instance, a design that simulates a well known, or naturally occurring object or person is not original as required by the statute.
• Subject matter that could be considered offensive to any race, religion, sex, ethnic group, or nationality is not proper subject matter for a design patent.

What Rights Does a Design Patent Afford?

A design patent has a term of 14 years from the date it is granted. Like a utility patent, it allows the owner to pursue legal action against infringers. With respect to design patents, courts will use the “ordinary observer” test. The test examines both the similarities and differences between the two products to determine if there is sufficient overall similarity that would mislead the ordinary observer into thinking they are the same product.

How We Can Help

Of course, this post provides only a broad overview of design patents. Before embarking on the patent process, it is often advisable to consult with an experienced patent attorney.

At Sheldon Mak & Anderson, we recognize that innovation is your competitive edge – and it needs protection. As a full-service intellectual property firm with more than two decades of experience, we provide local, regional, national, and international legal services in the following areas: patents, trademarks, copyrights, trade secrets, IP litigation, international patent and trademark prosecution, licensing, alternative dispute resolution, and green technology.

Contact our knowledgeable intellectual property attorneys today TOLL FREE at 1-855-UR IDEAS (1-855-874-3327) to find out how we can provide powerful protection for your unique ideas.

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Coca Cola Unveils New Vault—How Do You Protect Your Trade Secrets?

As you may have heard, one of the country’s most closely guarded trade secrets has changed locations. Coca-Cola has created a high security vault in Atlanta to house its “secret formula” for the popular soft drink.

Until this week, the only official written copy was allegedly kept under lock and key in a bank vault. According to the myth surrounding the trade secret, only two people at any given time are allowed to be privy to secret recipe. The same two people are prohibited from taking the same plane in the event it crashes, and the trade secrets are taken to the grave.

Of course, not all businesses can afford to go to such great lengths to protect their trade secrets. However, you should take reasonable steps to protect your confidential information.

Below are a few practices that all businesses can employ:

• Have all employees, independent contractors, and temporary personnel execute confidentiality agreements. These agreements should define the term trade secrets, limit how employees can utilize trade secrets, and outline the legal repercussions if they breach the agreement.
• Train employees, independent contractors, and temporary personnel about how to manage confidential information.
• Clearly designate any information that the company considers confidential. This can be as easy as stamping “confidential and proprietary” on it.
• Limit access to confidential information to a “need to know” basis. Use security measures such as locked file cabinets or password protection to prevent others from accessing it.
• Require vendors, suppliers, and potential customers to sign non-disclosure agreements if they will encounter confidential and proprietary information.
• Advise employees, independent contractors, and temporary personnel that any confidential information that they create on behalf of the company is the property of the company.
• Take steps to ensure that all confidential information is returned or destroyed when employees, independent contractors, and temporary personnel terminate their relationship with the company.

Of course, these are only a few general tips. To ensure that your company’s trade secrets are thoroughly protected, it is a good idea to consult with an experienced intellectual property attorney.

At Sheldon Mak & Anderson, we recognize that innovation is your competitive edge – and it needs protection. As a full-service intellectual property firm with more than two decades of experience, we provide local, regional, national, and international legal services in the following areas: patents, trademarks, copyrights, trade secrets, IP litigation, international patent and trademark prosecution, licensing, alternative dispute resolution, and green technology.

Contact our knowledgeable intellectual property attorneys today TOLL FREE at 1-855-UR IDEAS (1-855-874-3327) to find out how we can provide powerful protection for your unique ideas.

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Copyright Offices Proposes New Protection for Pre-1972 Recordings

The U.S. Copyright Office recently recommended that sound recordings made before February 15, 1972 be brought under federal copyright law. Under the current copyright regime, recordings made before that date are protected under state law.

As a result, the legal protection of pre-1972 sound recordings varies by state, and the scope of protection is often unclear. Many argue the current system has also hampered efforts to preserve historical sound recordings and make them accessible to the public.

“We believe that bringing pre-1972 sound recordings into the federal copyright system serves the interests of consistency and certainty, and will assist libraries and archives in carrying out their missions while also offering additional rights and protection for sound recording right holders,” Register of Copyrights Maria A. Pallante stated.

Below are a few highlights from the office’s report on Federal Copyright Protection for Pre-1972 Sound Recordings:

• Federalization would best serve the interest of libraries, archives, and others in preserving old sound recordings and in increasing the availability to the public of old sound recordings.
• The principal objection offered by certain right holders – that federalizing protection for pre-1972 sound recordings would cast a cloud over existing ownership of rights in those recordings – can be addressed by expressly providing that the ownership of copyright in the sound recording shall vest in the person who owned the rights under state law just prior to the enactment of the federal statute.
• The term of protection for sound recordings fixed prior to February 15, 1972 should be 95 years from publication or, if the work had not been published prior to the effective date of legislation federalizing protection, 120 years from fixation.
• In no case would protection continue past February 15, 2067, and
in cases where the foregoing terms would expire before 2067, a right holder may obtain extended protection for any pre-1972 sound recording by making that recording available to the public at a reasonable price and, during a transition period of several years, notifying the Copyright Office of its intention to secure extended protection extended protection.

The full report is available here.

At Sheldon Mak & Anderson, we recognize that innovation is your competitive edge – and it needs protection. As a full-service intellectual property firm with more than two decades of experience, we provide local, regional, national, and international legal services in the following areas: patents, trademarks, copyrights, trade secrets, IP litigation, international patent and trademark prosecution, licensing, alternative dispute resolution, and green technology.

Contact our knowledgeable intellectual property attorneys today TOLL FREE at 1-855-UR IDEAS (1-855-874-3327) to find out how we can provide powerful protection for your unique ideas.

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Online Video-Sharing Site Not Liable for Copyright Infringement

California’s Ninth Circuit recently ruled that Veoh, an online video-sharing site, is not liable for any copyright infringing content posted by its users.

Specifically, the Court found that the company’s efforts to combat infringement warrant protection under the “safe harbor” provision of the Digital Millennium Copyright Act (DMCA).

The Facts of the Case

Universal Music Group (UMG) filed a lawsuit against Veoh for secondary copyright infringement of songs to which UMG holds the copyright. It alleged that Veoh had not done enough to prevent users from uploading infringing music videos. It also sought to hold Veoh’s three top investors liable for the infringement.

Prior to the suit, Veoh had attempted to eliminate infringing material from its site by applying an “Audible Magic filter” to all new uploads. The court’s decision notes that Veoh removed some “60,000 videos, including some incorporating UMG’s works,” using the filter. In addition, it “implemented a policy for terminating users who repeatedly upload infringing material, and has terminated thousands of user accounts,” according to the ruling.

In light of those actions, U.S. District Judge A. Howard Matz, of California’s Central District, dismissed the investor defendants and granted Veoh summary judgment on all of UMG’s claims. He found that Veoh was not liable under the “safe harbor” provision of DMCA because the videos were stored on the site by users. The judge further noted that Veoh had also made a good-faith effort to monitor the user content.

The Court’s Decision

The Ninth Circuit agreed. In doing so, it rejected UMG’s argument that Veoh had not done enough to prevent users from posting infringing content.

“Although Congress was aware that the services provided by companies like Veoh are capable of being misused to facilitate copyright infringement, it was loath to permit the specter of liability to chill innovation that could also serve substantial socially beneficial functions,” Judge Raymond Fisher noted in the opinion.

“The evidence demonstrates that Veoh promptly removed infringing material when it became aware of specific instances of infringement,” he added. “Although the parties agree, in retrospect, that at times there was infringing material available on Veoh’s services, the DMCA recognizes that service providers who are not able to locate and remove infringing materials they do not specifically know of should not suffer the loss of safe harbor protection.”

Source: Courthousenews.com

At Sheldon Mak & Anderson, we recognize that innovation is your competitive edge – and it needs protection. As a full-service intellectual property firm with more than two decades of experience, we provide local, regional, national, and international legal services in the following areas: patents, trademarks, copyrights, trade secrets, IP litigation, international patent and trademark prosecution, licensing, alternative dispute resolution, and green technology.

Contact our knowledgeable intellectual property attorneys today TOLL FREE at 1-855-UR IDEAS (1-855-874-3327) to find out how we can provide powerful protection for your unique ideas.

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Transformers at Center of Trademark Infringement Lawsuit

The latest Transformer battle doesn’t involve Autobots and Decepticons. Instead, it involves two powerful companies and one famous trademark.

Hasbro, the maker of the popular toys, has filed a trademark infringement lawsuit against Asus, after the consumer electronics company used the “transformer” name in its line of Android-based tablets. Asus unveiled the Eee Pad Transformer and the Transformer Prime earlier this year.

According to court documents filed in California, Hasbro contacted Asus about the Eee Pad Transformer prior to filing the lawsuit and requested that the company not use the name. However, “Asus refused to comply,” according to the complaint.

In addition to the product names, Hasbro also contends that advertisements for the Transformer Prime feature imagery that “closely resembles imagery used in Transformers movies and video games, in particular evoking the Transformers home planet of Cybertron.”

Hasbro is seeking damages for trademark infringement, unfair competition, and trademark dilution. It has also asked the court to stop Asus from using the Transformer name in its current or future products.

Source: PCmag.com

At Sheldon Mak & Anderson, we recognize that innovation is your competitive edge – and it needs protection. As a full-service intellectual property firm with more than two decades of experience, we provide local, regional, national, and international legal services in the following areas: patents, trademarks, copyrights, trade secrets, IP litigation, international patent and trademark prosecution, licensing, alternative dispute resolution, and green technology.

Contact our knowledgeable intellectual property attorneys today TOLL FREE at 1-855-UR IDEAS (1-855-874-3327) to find out how we can provide powerful protection for your unique ideas.

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China Leads the World in Patent Filing

China was the world’s top patent filer for 2011, according to a new Thompson Reuters report. The significant uptick is attributed to the country’s desire to transform from a “made in China” to a “designed in China” market.

China is well on its way to meeting that goal, at least when it comes to filing patents. Published patent applications in China increased by 16.7 percent between 2006 and 2010, according the report. Thomson Reuters projects that China will publish 493,000 patent applications annually by 2015.

Despite the patent boom in China, the country still faces intellectual property challenges, particularly with respect to the quality of its patents. As the report notes, the government provides lucrative incentives for Chinese companies to file patent applications, regardless of whether a patent was eventually granted.
The new research also revealed the following:

• Trademark Applications Surge: Since 2000, the number of trademarks registered in China has increased by more than 450 percent, far outpacing other nations, despite widespread counterfeiting and infringement.
• Growing Influence in Scientific Literature: Over the last five years, there has been an 80 percent increase in Chinese scientific literature annual output, making China second in the world in published scientific papers. The United States, which currently has the highest overall output, grew by five percent.
• Slow to Expand Globally: Chinese organizations are not protecting their inventions by filing patents globally at the same level as other innovation-minded countries. Currently, only 5.6 percent of China’s inventions are protected with global patent filings abroad, far less than the United States (48.8 percent) and Japan (38.7 percent).
• China’s Corporate Innovation Lags: According to the Thomson Reuters Top 100 Global Innovators analysis, the most innovative companies in the world are based in the United States (40 percent), Europe (29 percent) and Japan (27 percent).
• Global Brands Capitalize on Chinese Consumerism: In an economic environment that is expected to reach $4.3 trillion USD in retail spending by 2015, leading multinational companies have been among the top 20 trademark filers in China from 1976 through 2011.

At Sheldon Mak & Anderson, we recognize that innovation is your competitive edge – and it needs protection. As a full-service intellectual property firm with more than two decades of experience, we provide local, regional, national, and international legal services in the following areas: patents, trademarks, copyrights, trade secrets, IP litigation, international patent and trademark prosecution, licensing, alternative dispute resolution, and green technology.

Contact our knowledgeable intellectual property attorneys today TOLL FREE at 1-855-UR IDEAS (1-855-874-3327) to find out how we can provide powerful protection for your unique ideas.

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USPTO Expanding Fast Track Program to Requests for Continued Examination

The U.S. Patent and Trademark Office has announced that it has expanded the Track I program for expedited patent examination to include Requests for Continued Examination (RCEs).

The change is effective immediately, and applies to RCEs filed before, on, or after December 19, 2011.
As detailed in the Federal Register Notice, an RCE application may be awarded prioritized examination status if the following conditions are met:

• The RCE is filed in an original (non-reissue) utility or plant nonprovisional application filed under 35 USC § 111(a) or entered into the national stage under 35 USC § 371.
• The Request for Prioritized Examination is filed via EFS-Web (except in a plant application) before a post-RCE Office Action is issued. The Request for Prioritized Examination may be filed concurrently with or subsequently to the filing of the RCE.
• The application must contain or be amended to contain no more than 4 independent claims and no more than 30 total claims at the time the Request for Prioritized Examination is filed, and the application must not contain any multiple dependent claims.
• The Request for Prioritized Examination must be accompanied by the prioritized examination fee set forth in 37 CFR § 1.17(c) (currently $4800/$2400), the processing fee set forth in 37 CFR § 1.17(i) (currently $130), and if not previously paid, the publication fee set forth in 37 CFR § 1.18(d).
• Only one Request for Prioritized Examination of an RCE can be filed in a given application.

For more information about the Fast Track program, please see our previous post available here.

At Sheldon Mak & Anderson, we recognize that innovation is your competitive edge – and it needs protection. As a full-service intellectual property firm with more than two decades of experience, we provide local, regional, national, and international legal services in the following areas: patents, trademarks, copyrights, trade secrets, IP litigation, international patent and trademark prosecution, licensing, alternative dispute resolution, and green technology.

Contact our knowledgeable intellectual property attorneys today TOLL FREE at 1-855-UR IDEAS (1-855-874-3327) to find out how we can provide powerful protection for your unique ideas.

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Trademark FAQ: What Is Dilution?

As we mentioned last week, trademark owners can protect their intellectual property by bringing a trademark infringement action. This post highlights another valuable legal tool—an action for trademark dilution.

Trademark dilution occurs when a third party’s use of your trademark impairs the mark’s distinctiveness. Unlike infringement, it does not matter whether or not the mark is used on a competing product or in a way that is likely to cause customer confusion.

Under federal law, a dilution claim can be brought only if the mark is “famous.” In determining whether a mark is famous, the courts will evaluate the following factors:

• The degree of inherent or acquired distinctiveness;
• The duration and extent of use;
• The amount of advertising and publicity;
• The geographic extent of the market;
• The channels of trade;
• The degree of recognition in trading areas;
• Any use of similar marks by third parties; and
• Whether the mark is registered.

In addition, most states have laws against trademark dilution, which do not require a mark to be famous.

How We Can Help

Of course, this post provides only a broad overview of trademark dilution. If you believe your trademark is being diluted, it is advisable to consult with an experienced intellectual property attorney.

At Sheldon Mak & Anderson, we recognize that innovation is your competitive edge – and it needs protection. As a full-service intellectual property firm with more than two decades of experience, we provide local, regional, national, and international legal services in the following areas: patents, trademarks, copyrights, trade secrets, IP litigation, international patent and trademark prosecution, licensing, alternative dispute resolution, and green technology.

Contact our knowledgeable intellectual property attorneys today TOLL FREE at 1-855-UR IDEAS (1-855-874-3327) to find out how we can provide powerful protection for your unique ideas.

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Patent FAQ: Why Is a Patent Search So Important?

A patent search is often the first step in pursuing a patent, and its importance should not be overlooked. In order to patent an invention, it must be truly novel. The best way evaluate the originality of your idea is to conduct a thorough patent search.

In addition to determining if someone else already has a patent for your idea, a patent search also aids the patent process in several other ways. For example:

• The results of a patent search can help you refine your design.
• The results of a patent search can help ensure that your product does not infringe on other products.
• The results of a patent search are integral to completing the patent application process.
• The results of a patent search can provide an early indication of the likelihood of your patent being granted.

Thanks to technology, it is now possible to conduct a basic patent search on the Internet. You can search the texts or claims of patents for free on the U.S. Patent & Trademark Office (USPTO) website. The USPTO’s system allows you to:

• Search U.S. patents dating back to 1976
• Search U.S. patent applications dating back to March 2001,
• Perform bibliographic searches (to find out the name, title of invention, or patent number) of patents dating back to 1790.

How We Can Help

Of course, this post provides only a broad overview of patent searches. Before embarking on the patent process, it is often advisable to consult with an experienced patent attorney.

At Sheldon Mak & Anderson, we recognize that innovation is your competitive edge – and it needs protection. As a full-service intellectual property firm with more than two decades of experience, we provide local, regional, national, and international legal services in the following areas: patents, trademarks, copyrights, trade secrets, IP litigation, international patent and trademark prosecution, licensing, alternative dispute resolution, and green technology.

Contact our knowledgeable intellectual property attorneys today TOLL FREE at 1-855-UR IDEAS (1-855-874-3327) to find out how we can provide powerful protection for your unique ideas.

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Trademark FAQ: What Constitutes Trademark Infringement?

One of the greatest advantages to owning the rights to a particular trademark is that you can file a lawsuit for trademark infringement. All trademark infringement lawsuits ask one central question—Is it probable, under all of the circumstances, that consumers of the relevant goods will be confused?

More specifically, the use of a trademark in connection with the sale of a good amounts to infringement if it is likely to cause consumer confusion as to the source of those goods or as to the sponsorship or approval of such goods.

In deciding whether consumers are likely to be confused, the courts will typically examine a number of factors, including:

• The strength of the mark
• The proximity of the goods
• The similarity of the marks
• Evidence of actual confusion
• The similarity of marketing channels used
• The degree of caution exercised by the typical purchaser
• The defendant’s intent

Of course, the weight of each of these factors will vary according to the circumstances of the case. In most cases, the primary consideration is the perception of the consumer.

How We Can Help

Of course, this post provides only a broad overview of trademark infringement. If believe your trademark has been infringed, it is advisable to consult with an experienced intellectual property attorney.

At Sheldon Mak & Anderson, we recognize that innovation is your competitive edge – and it needs protection. As a full-service intellectual property firm with more than two decades of experience, we provide local, regional, national, and international legal services in the following areas: patents, trademarks, copyrights, trade secrets, IP litigation, international patent and trademark prosecution, licensing, alternative dispute resolution, and green technology.

Contact our knowledgeable intellectual property attorneys today TOLL FREE at 1-855-UR IDEAS (1-855-874-3327) to find out how we can provide powerful protection for your unique ideas.

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Trademark “Situation” Hits Abercrombie & Fitch

Jersey Shore’s Mike “The Situation” Sorrentino is suing Abercrombie & Fitch for trademark infringement, false and deceptive advertising, and right of publicity violations after Abercrombie & Fitch sold t-shirts featuring the reality star’s notorious catch phrases. Earlier this month, the popular clothing star fired back, asking the court to dismiss the lawsuit.

Sorrentino’s Allegations

The legal feud began after A&F released a press release that stated that Sorrentino was contrary to the “aspirational nature of the [Abercrombie] brand.” The company further stated that it would pay the reality star a substantial amount of money to stop wearing the brand, an offer Sorrentino disputes.

Despite its stated desire to distance itself from Sorrentino and his on-screen antics, the lawsuit contends that A&F initiated an advertising campaign using Sorrentino’s name, image, and likeness. Specifically, Sorrentino alleges that A&F marketed and distributed t-shirts containing an obvious reference to Sorrentino and his trademarks on its website and in its stores, including t-shirts that containing phrases such as “The Fitchuation” and “GTL…You Know The Deal.”

Sorrentino asserts that these products infringe his registered trademarks for “The Situation” and “GTL” and are likely to cause confusion among consumers who will likely believe that Sorrentino endorses A&F.

Abercrombie & Fitch’s Arguments for Dismissal

A&F argues that the lawsuit should be dismissed because its advertising campaign constitutes parody and, as such, is protected as part of free speech. It further argues that Sorrentino does not own the trademarks at issue.

With respect to the trademarks, A&F claims that the Situation has only filed an application for the “GTL” and “Situation” trademarks. In addition, it contends that the application for “Gym Tan Laundry” has actually been suspended because MTV already owns “Gym Tanning Laundry,” and the US Patent & Trademark Office has deemed they are too similar.

Source: NYMag.com

At Sheldon Mak & Anderson, we recognize that innovation is your competitive edge – and it needs protection. As a full-service intellectual property firm with more than two decades of experience, we provide local, regional, national, and international legal services in the following areas: patents, trademarks, copyrights, trade secrets, IP litigation, international patent and trademark prosecution, licensing, alternative dispute resolution, and green technology.

Contact our knowledgeable intellectual property attorneys today TOLL FREE at 1-855-UR IDEAS (1-855-874-3327) to find out how we can provide powerful protection for your unique ideas.

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Patent Hot Topic: Google Awarded Patent for a Self-Driving Car

Creating a lot of buzz, Google has been awarded a U.S. patent for a self-driving car. The intellectual property rights afforded by the patent relate to a method to switch a vehicle from a human-controlled mode into the state where the vehicle is able to drive itself.

Google applied for the patent—Transitioning a Mixed-mode Vehicle to Autonomous Mode—in May, but it was not publicly available until earlier this month. The patent application explains how the car would know when to take control, where it is located, and which direction to drive in.

More specifically, the patent application describes two sets of sensors. The first identifies a “landing strip” when the vehicle stops. According to Google, Google the landing strip could be a mark on the ground, a sign on a wall, or lines or arrows showing where the vehicle should be parked. The first sensor then activates the second set of sensors, which receives data informing the vehicle where it is positioned and where it should go.

“The landing strip allows a human driving the vehicle to know acceptable parking places for the vehicle,” the patent filing states.

“Additionally, the landing strip may indicate to the vehicle that it is parked in a region where it may transition into autonomous mode.”

Although the technology described in Google’s patent application may sound like something from a science fiction movie, the company has been actively testing self-driving cars right here in California. The vehicles combine artificial intelligence with the Google’s Street View maps as well as video cameras and a range of sensors.

A fleet of Toyota Prius and Audi TT models equipped with the new technology have already driven 160,000 miles with limited human input and more than 1,000 miles without driver involvement.

Source: BBC

At Sheldon Mak & Anderson, we recognize that innovation is your competitive edge – and it needs protection. As a full-service intellectual property firm with more than two decades of experience, we provide local, regional, national, and international legal services in the following areas: patents, trademarks, copyrights, trade secrets, IP litigation, international patent and trademark prosecution, licensing, alternative dispute resolution, and green technology.

Contact our knowledgeable intellectual property attorneys today TOLL FREE at 1-855-UR IDEAS (1-855-874-3327) to find out how we can provide powerful protection for your unique ideas.

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Copyright FAQ: Can a Copyright Be Protected Internationally?

In general, intellectual property rights are territorial in nature, meaning that the protection afforded under U.S. laws does not expand beyond the boundaries of our country. Copyrights are no exception.

For a work to be protected outside of the country of origin, the home country must have a bilateral agreement with the country where the work is used. There are several international copyright treaties, the most important of which is the Berne Convention.

Under the Berne Convention, all member countries must afford copyright protection to authors who are nationals of any member country. This protection must last for at least the life of the author plus 50 years, and must be automatic without the need for the author to take any legal steps to preserve the copyright. The Berne Convention is signed by more 100 countries, offering copyright protection in most industrialized nations.

In addition, the GATT (General Agreement on Tariffs and Trade) treaty contains a number of provisions that address copyright protection in signatory countries. In combination, the Berne Copyright Convention and the GATT treaty allow U.S. authors to enforce their copyrights around the world, and also allow international authors to enforce their copyrights in the U.S.

Source: Standford.edu

How We Can Help

Of course, this post provides only a broad overview of international copyright protection. If you are seeking to copyright a work, it is advisable to consult with an experienced intellectual property attorney.

At Sheldon Mak & Anderson, we recognize that innovation is your competitive edge – and it needs protection. As a full-service intellectual property firm with more than two decades of experience, we provide local, regional, national, and international legal services in the following areas: patents, trademarks, copyrights, trade secrets, IP litigation, international patent and trademark prosecution, licensing, alternative dispute resolution, and green technology.

Contact our knowledgeable intellectual property attorneys today TOLL FREE at 1-855-UR IDEAS (1-855-874-3327) to find out how we can provide powerful protection for your unique ideas.

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