Category Archives for "Patent and Trademark Law"

Distinguishing Between a Business Name and a Trademark

When starting a business, it is important to take the proper steps to acquire a valid business name and secure valuable trademarks in order to maintain the brand identity of your business and secure your property rights.

In its initial stages, a business must register its name with the Secretary of State. The name is required be distinct from any other business name within the state. Once the name is registered, other businesses in that state may not use that same name to denominate their businesses. In contrast, a trademark is a form of property that is used to identify the origin of a particular good or service. Because of the value associated with a trademark, the application for registration and subsequent enforcement options are more detailed and exacting. Accordingly, the rights incurred through trademark registration are enforced by both the federal government and state authorities.

The major distinction between a business name and trademark is inherent in the characterization of a trademark as a property claim. As such, the owner of a trademark has exclusive rights to that mark and can exclude others from using the same mark or a substantially similar mark that may likely cause confusion.

The exclusivity of a business name, however, is limited to the state in which the business resides. State regulations vary considerably regarding how different a business name must be from existing names within the state. But in all cases, the business name is not required to be distinct from business names in other states. Thus, in contrast to trademark registration rights, a corporation may legally conduct business in another state where the same business name already exists.

Connors & Associates provides experienced legal advice in the areas of patent, trademark and copyright law. John Connors and his team of associates have the expertise to counsel clients about protecting their intellectual property including pursuing, filing and enforcing trademark rights. Contact Connors & Associates at (949) 833-3622 or visit them online to learn more about our services or to schedule a consultation.

The Laches Doctrine in Copyright Law

The laches doctrine is a legal defense that allows the defendant to claim that the plaintiff’s assertion is barred on account of an unreasonable delay in bringing the claim. The defense is based on the notion that such a delay may result in evidence being misplaced or unavailable, or circumstances changing in such a way that it would be inequitable to allow plaintiff to pursue his claim.

Is the laches doctrine applicable to infringement actions in copyright matters? In a pivotal case, the Supreme Court ruled that the laches defense was not applicable to copyright infringement claims. Specifically, the defendant in Petrella v. Metro-Goldwyn-Mayer, Inc. argued that the copyright infringement action brought by the family of a Hollywood screenplay author was barred because the plaintiff waited seven years after acquiring the copyrights to inform MGM that it was infringing on its claim, and waited nine years before initiating legal action.

The Court determined that the laches defense does not exist for copyright claims because there is a clear Congressional directive on the matter. This statute precludes the assertion of infringement claims where the infringement occurred more than three years prior to the action. In the Petrella case, the Court held that the copyright statute did not bar the case because the infringement activities by the defendant were ongoing during this period. As a rule, the three year statute of limitations set forth by Congress for copyright infringement, wherein each infringing act initiates a new limitations period, is the only enforceable limitation for infringement claims. Thus, the defense of laches does not supplant the statute.

Connors & Associates provides experienced legal advice in the areas of patent, trademark and copyright law. John Connors and his team of associates have the expertise to counsel clients about their rights and obligations in all intellectual property matters. Contact Connors & Associates at (949) 833-3622 or visit them online to learn more about their services or to schedule a consultation.

The Exhaustion Doctrine and Opt-Out Agreements

The exhaustion doctrine was designed to prevent patent owners from receiving royalty payments from multiple sources for the same invention. Thus, once the patent holder obtains a licensing royalty from the original licensee, he is barred from collecting royalties from every manufacturer in the subsequent supply chain who incorporates the patented device into its products. The patent is considered “exhausted” by the initial licensed sale of the invention by the patent holder. Although the exhaustion doctrine is not a statutory requirement, the Supreme Court has historically upheld its validity.

In order to maximize revenues from sales of the patented device, patent holders have attempted to draft licensing agreements that bar the application of the exhaustion doctrine. In general, when such agreements are formulated as post-sale limitations applicable to purchasers down the supply chain, they are found to be ineffective to prevent exhaustion. This provision has traditionally been drafted as a requirement that the purchaser of the invention, who has been granted a license to manufacture and sell the patented device, sell only to parties that would use the invention in connection with plaintiff’s other patents. For example, in one case, the licensing agreement for a film projector contained a post-sale provision that that projector could be used only to exhibit films that were claimed by a patent belonging to the plaintiff.

The general rule preventing post-sale limitations and upholding the exhaustion doctrine is grounded in important public policy goals. First, the courts want to avoid overcompensating a patent holder for a license in excess of its market value. Second, they want to maintain the free transferability of property, such that downstream purchasers are legally entitled to use the patented invention in any manner they choose without restrictions from preceding owners of the invention.

Connors & Associates provides experienced legal advice in the areas of patent, trademark and copyright law. John Connors and his team of associates have the expertise to counsel clients about protecting their intellectual property including pursuing, filing and enforcing patent rights. Contact Connors & Associates at (949) 833-3622 or visit them online to learn more about our services or to schedule a consultation.

The Status of the Best Mode Requirement Under Patent Law

Traditionally, an application for a U.S. patent required the filer to provide a description of the best method of practice for the invention. Under the “best mode” requirement, patent filers must reveal the optimal method known to them for operating the invention in exchange for the benefits of obtaining legal protection for that invention. Subsequent patent reform legislation in 2011 established that patents could not be declared invalid for failure to make this disclosure, but patent filers are still statutorily obligated to adhere to the basic legal requirement to articulate the best mode of operation in their applications.

By preserving the best mode requirement while eliminating the consequences for noncompliance, filers may wonder to what extent they must make this disclosure on patent applications. Inventors may be motivated to exclude pertinent, valuable information that their competitors could view once the application is published at a future date. Moreover, the fate of the best mode requirement continues to be tenuous as it has long been the subject of legal criticism and was fiercely debated in Congress prior to the passage of the America Invents Act (AIA) in 2011.

Several justifications have been offered for eliminating the best mode defense. Some have argued that domestic and international patent law are now more closely aligned. Previously, the best mode requirement burdened applicants who file U.S. applications that claim priority to previously filed foreign applications because the best mode defense required these applicants to include a disclosure in the prior foreign application. Second, the best mode defense entails high litigation costs given the nature of the inquiry. Last, the utility of the requirement is questionable since applicants are not obligated to update or correct the best mode description after the application has been filed.

Connors & Associates provides experienced legal advice in the areas of patent, trademark and copyright law. John Connors and his team of associates have the expertise to counsel clients through the entire patent process. Contact Connors & Associates at (949) 833-3622 or visit them online to learn more about their services or to schedule a consultation.

Guidelines for Utility Requirement for Patent Eligibility

One of the primary requirements for patent eligibility under Section 101 of the statute is that the invention be useful. While most inventions are not contested for a lack of utility, the doctrine is designed to ensure that only inventions with identifiable benefits are eligible for patent protection. This criteria therefore precludes the patentability of hypothetical or implausible designs.

The guidelines for evaluating the utility of a particular innovation described in an application have been established by the United States Patent and Trademark Office (USPTO). These criteria are that the invention be (i) credible, (ii) specific and (iii) substantial as defined in the Utility Guidelines Training Materials provided by the USPTO.

Credibility. In order to fulfill the credibility requirement, the invention must currently be able to perform the functions that are asserted in its claims. Thus, an individual skilled in the art to which the invention relates would agree that the available facts and reasoning support the utility of the invention.

Specificity. The use must be specifically tailored to the subject matter in the application. The claimed utility cannot be applicable to a large category of inventions.

Substantiality. The utility must have a “real world” application. A claimed utility that requires conducting further research to identify a class of uses for the invention would not meet the substantiality requirement.

A patent examiner’s rejection of an application for a lack of utility generally necessitates a prima facie showing that the invention lacks a credible, specific and substantial utility based on written evidence.

Connors & Associates provides experienced legal advice in the areas of patent, trademark and copyright law. John Connors and his team of associates have the expertise to counsel clients through the entire patent process and the protection of their rights in the patent. Contact Connors & Associates at (949) 833-3622 or visit them online to learn more about their services or to schedule a consultation.

Duration of Royalties When Licensing an Invention

Once an inventor has received a patent from the United States Patent and Trademark Office, the patent holder can manufacture the product or license the patent to another company. The first option is time consuming and generally does not lead to profits in the short term. In contrast, licensing the patent generates quicker income and provides increased visibility in the market.

The licensing terms, including the description of the royalties received by the original inventor, are generally specified in the licensing agreement. One of the issues in a licensing relationship concerns the duration of royalty payments. The 1964 Supreme Court decision in Brulotte v. Thys Co. definitively addressed this matter by barring the payment of royalties beyond the expiration of the term of the patent. According to the Court, a contract that requires the payment of royalties after the patent expiration date is invalid.

In the recent case of Kimble v. Marvel, the plaintiff challenged this holding and asked the Supreme Court to reconsider the conclusive prohibition against such royalty payments. In the case, the plaintiff, inventors of a Spider Man toy, licensed the patent to Marvel Enterprises with the agreement providing for a 3% royalty and no expiration date. When the patent expired in 2010 and Marvel ceased making payments, the plaintiff filed suit for breach of contract. The district court and the Ninth Circuit Court of Appeals upheld the Supreme Court’s ruling in Brulotte v. Thys Co. The Supreme Court declined to overrule Brulotte in its decision on June 22, 2015.

The Supreme Court rejected a case by case approach for evaluating royalty payments after patent expiration. In deciding to affirm the 1964 ruling, the Court demonstrated its reluctance to overrule an act of the legislature, which Brulotte interpreted in reaching its decision. This result establishes the Court’s tendency to view the patent statutes as a body of law that should be reformed, amended and repealed only by Congress itself, not by the Court.

John Connors is an intellectual property attorney with decades of experience in registering patents and enforcing patent rights. Connors & Associates provides expert legal and business advice through an international network of attorneys specializing in all types of intellectual property law. Contact us at (949) 833-3622 or visit Connors & Associates online to learn more about our services or to schedule a consultation.

Trademark Dilution Claims and How they Differ from Infringement

Trademark dilution occurs when another entity uses a trademark in such a way as to cause a protected mark’s distinctiveness to be diminished in a non-related market. Unlike a trademark infringement action, dilution does not result in confusion among consumers as to the origin of the product since the unauthorized use does not compete with or have a substantial connection to the products or services of the trademark owner. Rather, trademark dilution laws attempt to safeguard robust trademarks from losing their strong correlation with a single product or service in the public eye.

A trademark owner can bring a claim for dilution under either federal or state law. The Federal Trademark Dilution Act of 1996 requires that the mark be “famous” as determined by several factors including: the level of distinctiveness, the extent of use, the degree of advertising and the geographic boundaries of the market. Brand names that fit this category include Kodak or Exxon. The federal law was revised in 2006 when Congress enacted the Trademark Dilution Revision Act, which sought to eliminate confusion under prior federal law by providing that the owner of a famous trademark does not need to establish actual or likely confusion or injury when pursuing an injunction to prohibit dilution of its mark based on the theories of blurring and tarnishment (discussed below). In contrast, state law does not require a trademark to be famous, but rather supports a dilution claim if the mark has a distinguishing quality and the two marks are considerably similar.

In order to bring an action for trademark dilution, a trademark owner must demonstrate “blurring” or “tarnishment” of the protected mark. Blurring results when the mark is diluted through an association with unrelated goods. This would occur, for example, if a manufacturer were to sell Exxon brand sports equipment. Tarnishment arises when a connection is created between the protected trademark and an inferior or inappropriate product, thereby tainting the reputation of the protected mark. In a recent case, ToysRUs asserted a trademark dilution claim for tarnishment against adultsrus.com, a website displaying pornography.

The experienced team of attorneys at Connors & Associates provides its clients with knowledgeable and up-to-date legal advice in all areas of intellectual property law. Contact John Connors and his associates at (949) 833-3622 or visit Connors & Associates online to learn more about our services or to schedule a consultation.

Debunking Popular Myths About Patents

For inventors and prospective patent holders, the process of applying for and securing a patent can be hindered by some common misconceptions. Becoming familiar with popular myths relating to the extent of patent protection and the means and processes for the enforcement of rights can be beneficial in proceeding with the process of securing a patent.

Patent protection extends to accompanying illustrations. Supplemental diagrams and illustrations that are included in a patent application to elaborate on the claims set forth therein do not receive patent protection. The claims outlined in the application should be clearly and precisely defined since patent protection covers only the language in the claims segment.

Alternatively, diagrams and drawings submitted with patent applications may be eligible for copyright protection and accompanying designs may qualify for a design patent. For example, Coco-Cola was granted a design patent for the unique shape of its bottle.

Patent rights are self-enforcing. Once a patent is issued, enforcement of the rights conferred by the patent is the responsibility of the patent holder. The granter of patents, the United States Patent and Trademark Office (USPTO), does not prosecute patent infringers in the event of a violation. The patent holder must actively identify and purse potential infringers at his own risk and expense.

Products that have not entered the market are patentable. According to the USPTO, an invention cannot be patented if it was described in any prior printed publication, even if it was never sold or made available to the public. Thus, an invention that is merely different or previously delineated in print is not sufficient for patent protection.

Patents confer an exclusive right to make, use and sell the invention. A patent provides its owner only with the right to exclude others from making, using and selling the precise invention covered in the patent’s claims. Others may be able to use the patented invention or preclude you from using your invention if the prior patent is more expansive in the invention it covers.

John Connors is an intellectual property attorney with decades of experience in registering patents and enforcing patent rights. Connors & Associates provides expert legal and business advice through an international network of attorneys specializing in all types of intellectual property law. Contact us at (949) 833-3622 or visit Connors & Associates online to learn more about our services or to schedule a consultation.

Can a Trademark Extend Beyond Words, Symbols or Phrases?

Trademarks typically consist of the words, symbols or phrases that distinguish a particular manufacturer’s product. In some cases, protection under trademark law can be extended to other features of a product including its shape and color, or the way in which the product is configured or displayed. These characteristics may be eligible for trademark protection if consumers are able to make a clear connection between that feature and the source of the product.

Trademarks that are conferred to products based on “trade dress” must be distinctive or have acquired “secondary meaning.” The court in Duraco Products Inc. v. Joy Plastic Enterprises Ltd. defined distinctiveness for the purpose of a trademark as “unusual” and “memorable,” and required the trade dress to function “primarily as a designator of origin of the product.” Alternatively, secondary meaning can be obtained when the public recognizes the mark as belonging to that particular manufacturer rather than just representing the underlying item.

However, the features of trade dress are ineligible for trademark protection if they are functional in nature. The Supreme Court held in Qualitex Co. v. Jacobson Products Co. that a product element is considered functional only if “it is essential to the use or purpose of the article or if it affects the cost or quality of the article.” The plaintiff in that case used a green-gold color for the pads that it manufactured for dry cleaning firms to use in their presses. The defendant sold pads with a similar color in its dry cleaning business. The plaintiff subsequently registered the color of the pads with the United States Patent and Trademark Office and filed an action for trademark infringement. The Court found that the color of the pads served no practical purpose and was purely symbolic. It identified the product but was not a necessary component of the functionality of the item.

The experienced team of attorneys at Connors & Associates can provide you with knowledgeable and up-to-date legal advice in all areas of intellectual property law. Contact John Connors and his associates at (949) 833-3622 or visit Connors & Associates online to learn more about our services or to schedule a consultation.

What Constitutes a Distinctive Mark in Trademark Law?

The predominant feature of a valid trademark is its distinctiveness. A trademark serves as an identifier of the origin of the goods and services of the manufacturer. The proper use of trademarks promotes the prevailing public policy that drives trademark law — that consumers should be able to easily identify the source of the product through its distinctive mark.

The courts have determined that there are four categories under which trademarks fall, each of which provides owners with distinct levels of protection.

Generic trademark. A generic mark is not afforded any protection under trademark law because it is too commonplace and universal to allow any one entity to declare ownership of it. Manufacturers who use a generic term cannot claim exclusive rights to utilize that term in connection with that product. For example, a manufacturer that sells televisions could not acquire a trademark for “television” brand televisions.

Descriptive trademark. A descriptive trademark describes the underlying product rather than suggesting a feature of that product. The law requires such products to attain “secondary meaning” in order to become protected trademarks since descriptive marks are not implicitly distinctive. A manufacturer or producer can acquire secondary meaning when the public distinguishes the mark as belonging to that particular manufacturer or producer rather than just representing the underlying item.

Suggestive trademark. A suggestive trademark, in contrast to a descriptive trademark, suggests a feature of the underlying product and requires the consumer to make an association between that mark and the item to which it refers. As the courts have stated, the consumer must use its “imagination, thought and perception” to determine the nature of the good. Well known examples of suggestive trademarks are the financial services institution, Citibank, and the automobile brand, Jaguar. These marks are well protected by trademark law.

Arbitrary or fanciful mark. Like suggestive trademarks, arbitrary or fanciful marks are highly unique, and are therefore accorded a considerable degree of trademark protection. An arbitrary mark has a familiar meaning but that meaning is totally unconnected with the goods or services it intends to denote. A popular example of an arbitrary trademark is Apple, the computer and media institution. A fanciful mark has no inherent meaning at all; it is invented by its creator. These types of marks include Exxon and Kodak. The high level of protection extended to these marks is reflective of their distinctiveness and the great likelihood of associating that mark with the source of the product.

Connors & Associates provides expert legal advice through an international network of attorneys specializing in all types of intellectual property law. Contact us at (949) 833-3622 or visit Connors & Associates online to learn more about our services or to schedule a consultation.

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