As we have previously mentioned on this blog, one of the most common reasons for refusing registration is that a “likelihood of confusion” exists between the mark and a previously registered mark or a pending application with an earlier filing date.
As such, the primary purpose of the search is to help determine whether a mark has already been registered or applied for at the USPTO that is (1) the same OR similar to your mark; and (2) used on related products or for related services.
When conducting a pre-application trademark search, the Trademark Electronic Search System (TESS) is a great place to start. It contains the records of active and inactive trademark registrations and applications. As mentioned above, in addition to studying the marks for similarity, it is also important to examine the listed goods and/or services to determine possible relatedness as well.
How Can We Help?
Since trademarks can also be obtained via state registrations and common law, a successful TESS search does not guarantee that your trademark application will be approved. In many cases, it is advisable to consult with an experienced trademark attorney before filing a trademark application. Contact us today by phone or email to schedule your free 30 minute consultation.
Source: USPTO
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) or email us at tri@usip.com to find out how we can provide powerful protection for your unique ideas.
Friday, February 10, 2012
Trademark FAQ: Why Is a Trademark Search Necessary?
Thursday, February 9, 2012
USPTO Releases Proposed Rules for Supplemental Examination
As detailed by the USPTO, the proposed supplemental examination procedures will allow a patent owner to request supplemental examination of a patent by the USPTO to consider, reconsider, or correct information believed to be relevant to the patent. As noted by Under Secretary of Commerce for Intellectual Property and Director of the USPTO David Kappos, “These provisions could assist the patent owner in addressing certain challenges to the enforceability of the patent during litigation.”
Under the new rules, a request for supplemental examination must include the following:
- An identification of the patent for which supplemental examination is requested;
- A list of each item of information and its publication date, if applicable;
- A list identifying any other prior or concurrent post patent proceedings involving the patent to be examined;
- An identification of each aspect of the patent to be examined;
- An identification of each issue raised by each item of information;
- A separate, detailed explanation for each identified issue;
- An explanation of how each item of information is relevant to each aspect of the patent to be examined and of how each item of information raises each identified issue;
- A copy of each item of information; and
- A summary of the relevant portions of any submitted document, other than the request, that is over 50 pages in length.
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) or email us at tri@usip.com to find out how we can provide powerful protection for your unique ideas.
Wednesday, February 8, 2012
California Patent FAQ: What Are the Conditions for Obtaining a Patent?
Under U.S. patent law, an invention cannot be patented if: “(a) the invention was known or used by others in this country, or patented or described in a printed publication in this or a foreign country, before the invention thereof by the applicant for patent,” or “(b) the invention was patented or described in a printed publication in this or a foreign country or in public use or on sale in this country more than one year prior to the application for patent in the United States …”
There are a few points to highlight with respect to the definition above. First, you must consider the invention’s novelty both in this country and abroad, although different standards do apply. If the invention has been described in a printed publication anywhere in the world, or if it was known or used by others in this country before you created it, the invention is not patentable.
Second, time is of the essence. If you describe the invention in a printed publication, use it publicly, or offer it for sale, you must apply for a patent within one year. If not, you forfeit your rights.
Finally, there is yet another consideration. Even if the invention involves one or more differences, it may still not be patentable if the differences would be considered obvious. As explained by the USPTO, “the subject matter sought to be patented must be sufficiently different from what has been used or described before that it may be said to be nonobvious to a person having ordinary skill in the area of technology related to the invention.” Obvious differences would include changing the size or color of the invention.
How We Can Help
Of course, this post provides only a broad overview of the conditions for obtaining a patent. Before embarking on the patent process, it is often advisable to consult with an experienced patent attorney. Contact us today to schedule your free 30 minute consultation.
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) or email us at tri@usip.com to find out how we can provide powerful protection for your unique ideas.
Tuesday, February 7, 2012
MegaUpload.com Copyright Infringement Case Prompts File-Sharing Companies to Change Policies
Prior to the arrests, U.S. authorities shut down Megaupload.com, a popular file locker service that allowed users to upload files and share them with other users. They say the site was used to facilitate millions of illegal downloads of films, music, and other copyrighted content. The copyright infringement cost copyright holders at least $500 million in lost revenue, according to the government.
In total, seven people have been indicted by grand jury, each charged with five counts of copyright infringement and conspiracy. The possible penalty is 20 years in prison.
What Does the Case Mean for Other File-Sharing Sites?
As we have previously discussed on this blog, websites that offer file-sharing do take certain risks. To avoid allegations of copyright infringement, they must have procedures in place to address potential cases of online piracy. This includes promptly responding to takedown requests issued under the Digital Millennium Copyright Act (DMCA).
In the wake of the Megaupload charges, several other companies that offer file-sharing have taken additional legal precautions. Rival companies FileSonic and Uploaded.to have significantly altered their services to avoid the risk of facing similar allegations of copyright infringement.
According to Ars Technica, FileSonic has halted all of its file-sharing activities. It now tells users “our services can only be used to upload and retrieve files that you have uploaded personally.” Meanwhile, Uploaded.to has blocked its site to U.S. users, although it is still available to users elsewhere in the world.
We will continue to follow this case and any related legal developments.
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) or email us at tri@usip.com to find out how we can provide powerful protection for your unique ideas.
Monday, February 6, 2012
NFL Trademark Forces Super Bowl Advertisers Tip Toe Around the Name of the Big Game
“When we become aware of a potential violation, we will be very aggressive, and sending a cease-and-desist letter would be the first step,” NFL spokesman Brian McCarthy told the Chicago Tribune.
Licensing the trademark is big business for the NFL. Sponsors like Pepsi, Verizon, Motorola, and Castrol pay more than $100 million annually to be affiliated with the league. While there is no specific sponsorship of the Super Bowl, NFL sponsors have the right to use the game’s name and logo in their own marketing efforts, according to McCarthy.
To avoid any allegations of trademark infringement, other advertisers refer to the Super Bowl simply as the “Big Game” or the “Super Showdown.” In fact, the “The Big Game” has become so synonymous with the Super Bowl that the NFL tried to trademark that phrase in 2006.
Businesses that don’t steer clear of the trademark may receive one of the 80 to 100 cease-and-desist letters the NFL sends each year to businesses promoting some Super Bowl special.
“They’re trying to draft off the goodwill that we’ve built up over the past 46 years with the Super Bowl,” McCarthy said. “Part of the reason we’ve been able to build up the Super Bowl is by protecting our intellectual property. We’re very protective of where and to whom we extend our rights. We need to protect the NFL shield. We need to protect the Super Bowl mark for our brand.”
How Can We Help Your Business?
The NFL is an excellent example of the benefits of zealously defending your trademark. If you would like to do the same for your valuable trademarks, contact us today by phone or email to schedule your free 30-minute consultation.
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) or email us at tri@usip.com to find out how we can provide powerful protection for your unique ideas.
Friday, February 3, 2012
Is The Patent Fast Track Working?
The USPTO update reveals some interesting information about how the program is working so far. Here are a few highlights:
- To date, 1,694 Track I petitions have been submitted to the USPTO.
- On average it is taking 40.8 days to move Track I cases from receipt of petition to completion of pre-examination processing (which includes deciding on the petition). The longest it has taken is 95 days.
- Overall, 1,218 of the 1,231 requests of the prioritized examination (that have been decided) were granted. This represents a 98.9% approval rate.
- On average, the USPTO is getting the first action out in Track I cases just 30.7 days after approval of the petition – for a total elapsed period to first action of 66.4 days after filing of the request-petition.
- The USPTO notes 23 allowances have already been mailed on Track I applications, the fastest of which was mailed just 37 days after the application was filed.
Therefore, according to the USPTO, the only changes Track I patent applicants should expect is faster results.
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.
Thursday, February 2, 2012
NFL Player Loses Race to Trademark Office
If you follow the NFL, you are likely familiar with the opening of the telecast where the players of each team state their names and the universities they attended. During the Nov. 6 game, Suggs introduced himself as “Sizzle” and a graduate of “Ball So Hard University.”
According to the Hollywood Reporter, shortly after the game, an entrepreneur named Brian Bussells applied for a trademark on “Ball So Hard University,” with the intention of using the mark on T-shirts and other apparel. He beat Suggs to the U.S. Patent and Trademark Office by 10 days.
Now, the two men and their respective business enterprises are fighting over who should have the rights to the “Ball So Hard University” mark. Suggs’ lawyer sent a cease-and-desist letter to Bussells, claiming that the use of the mark is false and misleading, creates confusion, and also violates Suggs’ rights of publicity.
Bussells is currently selling merchandise at BallSoHardU.com. Meanwhile, Suggs’ company Team Sizzle Worldwide is offering licensed “Ball So Hard” merchandise on its website.
Unlike many who face Suggs on the football field, Bussells doesn’t appear to be backing down. Therefore, the trademark dispute will likely come down to how and when each party used the catchphrase in commerce.
For more information about the requirements for using a trademark in commerce, please check out previous blog post 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.
Wednesday, February 1, 2012
The Supreme Court issued an important copyright decision earlier this month, ruling that Congress acted constitutionally when it restored copyright protection to foreign works that had once been in the public domain. As we discussed in an earlier post, the 1994 law was part of an effort to implement the Berne Convention, a treaty that gives U.S. works reciprocal protection overseas.The law was challenged by orchestra conductors, teachers, and film archivists who argue that they relied on the free availability of such works. Specifically, they argued that the law exceeded Congress’s power to grant copyrights and for infringing their own First Amendment free speech rights.
In a 6-2 decision, the Supreme Court disagreed on both arguments. With respect to the power of Congress to alter the copyright status of the works, Justice Ruth Bader Ginsburg said Congress was acting “comfortably” within its powers when it restored copyright protection to foreign works under the Berne convention.
The Court also rejected the notion that the law violated the First Amendment’s guarantee of free expression.
“Nothing in the historical record, congressional practice, or our own jurisprudence warrants exceptional First Amendment solicitude for copyrighted works that were once in the public domain,” Ginsburg wrote.
Justices Stephen G. Breyer and Samuel A. Alito Jr. dissented. In his dissent, Breyer argued that the majority overlooked the fact that copyright law should not only protect artists, but also foster new works and promote knowledge sharing.
“Does the clause empower Congress to enact a statute that withdraws works from the public domain, brings about higher prices and costs, and in doing so seriously restricts dissemination, particularly to those who need it for scholarly, educational, or cultural purposes — all without providing any additional incentive for the production of new material?” Breyer wrote.
“I believe the answer is no.”
What do you think?
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.
Tuesday, 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.
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.
Monday, 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.
Friday, January 27, 2012
Doctor, Doctor Give Me the News: Dr. Pepper Settles Trademark Lawsuit
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.
Thursday, January 26, 2012
California Trade Secret Lawsuit: Who Owns a Twitter Account?
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.
Wednesday, January 25, 2012
Proposed Patent Rule Would Change Administrative Requirements for Inventor Oaths
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.
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.
Tuesday, January 24, 2012
USPTO Releases Four Proposed Rule Changes Under America Invents Act
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
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.
Monday, January 23, 2012
California Copyright Law: Is SOPA Really Dead?
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.
Friday, January 20, 2012
California Trademark FAQ: Is Your Product Eligible for a Trademark?
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.
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.
Thursday, January 19, 2012
Are Emoticons Really at the Center of a Patent Dispute?
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.
Wednesday, January 18, 2012
California Patent FAQ: When Should You File a Design Patent?
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.
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.
Tuesday, January 17, 2012
Coca Cola Unveils New Vault—How Do You Protect Your Trade Secrets?
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.
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.
Monday, January 16, 2012
Copyright Offices Proposes New Protection for Pre-1972 Recordings
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.
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.
Friday, January 13, 2012
Online Video-Sharing Site Not Liable for Copyright Infringement
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.
Thursday, January 12, 2012
Transformers at Center of Trademark Infringement Lawsuit
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.
Wednesday, January 11, 2012
China Leads the World in Patent Filing
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.
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.
Tuesday, January 10, 2012
USPTO Expanding Fast Track Program to Requests for Continued Examination
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.
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.
Monday, January 9, 2012
Trademark FAQ: What Is 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.
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.
Friday, January 6, 2012
Patent FAQ: Why Is a Patent Search So Important?
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.
- 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.
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.
Thursday, January 5, 2012
Trademark FAQ: What Constitutes Trademark Infringement?
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
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.
Wednesday, January 4, 2012
Trademark “Situation” Hits Abercrombie & Fitch
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.
Tuesday, January 3, 2012
Patent Hot Topic: Google Awarded Patent for a Self-Driving Car
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.