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b2ap3_thumbnail_trade-secrets-evlg.jpgTrade secrets are often difficult to protect with only so many safeguards in place for the owners of the secrets as recourse when the ingredient, process or recipe is revealed to the public or a competitor. However, the Defend Trade Secrets Act was passed in 2016.

Until this Act was passed by Congress, the state level was what governed trade secrets and any infringements upon these items. This means that action against someone that violated the contract of a trade secret could be different based on the state in which the offense occurred. This may mean that one person is fined a small fee while another is penalized more severely.

Before this Act was passed, the Uniform Trade Secrets Act was in place. While it was adopted by most states with trade secrets laws, it did not offer the same protections as needed. Another regulation was passed for increased assistance in the Uniform Trade Secrets Act. However, it was not perfected, and there were still states not incorporated into these Acts. This meant that state legislation still ruled over these matters. When certain states are not as versed in trade secrets, this means that understanding what a violation to these items is would be difficult for a judge without an experienced lawyer and, in certain instances, an expert witness.

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trademark laptop 335Last June, Walter Palmer, an American dentist and recreational big game hunter, shot and killed Cecil, a southwest African lion who had been the subject of a study by Oxford University and a major attraction for Hwange National Park in Zimbabwe. At first, Cecil’s killing drew international outrage and media attention, the hashtag #CecilTheLion spreading like wildfire on social media. Then it drew trademark applications.


At least four different applicants currently have live trademark applications pending in the United States for CECIL THE LION, covering everything from the noble, including charitable fundraising services and information and news commentary relating to wildlife conservation, to the commercial, including dolls, trading cards, and charms.


Cecil’s case wasn’t unique in 2015. In the aftermath of the January 2015 terrorist shootings at Charlie Hebdo in Paris, France, the hashtag #jesuischarlie (French for “I am Charlie”) emerged as a way for people around their world to show solidarity in light of the massacre. At its height in the immediate aftermath of the attacks, #jesuischarlie was tweeted at a rate of 6,500 times per minute and was included in 3.4 million tweets in under a 24 hour period, making it one of the most popular hashtags in history. Beyond the solidarity for victims that the hashtag expresses on its face, it also came to be understood as a means of communicating support for freedom of expression and free speech principles generally. It too prompted a trademark rush. Just six days after the shootings took place on January 7, 2015, the French Institut National de la Propriété Industrielle – France’s national intellectual property office – had received so many applications to register JE SUIS CHARLIE that it issued a formal statement indicating it would not register the phrase because the slogan’s wide usage stripped it of the distinctiveness required to function properly as a trademark. The French government was forced to issue a similar statement in the immediate wake of the November 13, 2015 terror attacks in Paris. In that instance, the French intellectual property office indicated that beginning the morning of November 14, 2015 – the day after the attacks – it had received so many applications to register PRAY FOR PARIS and JE SUIS PARIS that it was once again refusing to register the phrases at all. This time, however, the government noted that its decision not to register the phrase in either language stemmed from its conclusion that granting registration could be “contrary to public policy” in light of the phrases’ “use and their perception by the community” in light of the terror attacks.

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Recently, in a Report to Congress on trademark litigation tactics, the United States Patent and Trademark Office (“USPTO”) defined the amorphous term Trademark Bullying or Trademark Trolling as the vexatious practice of a “trademark owner that uses its trademark rights to harass and intimidate another business beyond what the law might be reasonably interpreted to allow.” Mirroring the modus operandi exhibited by patent assertion entities and copyright bullies, several creative mark owners have adopted and modified this sue-to-settle paradigm and applied it in the trademark context. In short, trademark trolls—businesses both large and small—aggressively assert rights beyond the scope of trademark protection afforded by the Lanham Act through the issuance of threatening cease-and-desist letters.


When issuing a tenuous cease-and desist letter, it is common for these audacious entities to unreasonably interpret the Lanham Act by failing to conduct a comprehensive objective evaluation of the third party’s mark in relation to their delineated goods and services. Further, unreasonable interpretations may also include falsely aggrandizing the strength of the owner’s mark, exaggerating the mark’s scope of protection, or misrepresenting the likelihood of consumer confusion in the marketplace.


Further, examining the content of traditional demand letters, the sender will often attempt to force the target to cease using his or her own mark or face imminent litigation. Alternatively, others are issued in an effort to extract license payments, rapid settlements, or seek co-existence agreements from the alleged infringer. This litigious practice evinced by bullies occasionally results in filing infringement suits against arguable violators in an attempt to financially exhaust and deter that trademark holder from rightfully utilizing their registered trademark in commerce. However, the threat of litigation is typically sufficient economic pressure to force an individual or smaller business into compliance.

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Posted by on in TRADEMARK
b2ap3_thumbnail_trademark-shutterstock_116812078.jpgAre you aware that even if you have not registered a trade mark, you may still be able to enforce rights in your trading name or brand name and prevent others from exploiting it? If not, read this article for more information.

 

Are you a business owner who uses a trading name and/ or a brand name, but has not registered the name as a trade mark? If so, you may in certain circumstances, still be able to protect your mark and prevent its exploitation by a competitor. In order to do so you will need to be able to establish rights in the tort of passing off.

In very brief terms passing off involves a three-part test:

1. A goodwill or reputation attached to the goods or services.

2. A misrepresentation by the defendant to the public leading or likely to lead the public to believe that the goods or services offered by him are the goods or services of the claimant.
3. Damage to the claimant, by reason of the erroneous belief engendered by the defendant's misrepresentation that the source of the defendant's goods or services is the same as the source of those offered by the claimant. 
 
Goodwill has been described as "the benefit and advantage of the good name, reputation, and connection of a business. It is the attractive force which brings in custom". Although goodwill may be embodied in words, names or get-up, passing off protects the goodwill of the claimant's business as a whole and not individual marks. 

The most common form of misrepresentation is where a defendant falsely represents that his goods are the goods of the claimant. The misrepresentation can either be: (i) an express statement by the defendant to this effect; or alternatively; (ii) implied from the use by the defendant of the same or similar marks in respect of his goods or services as are used by the claimant. The misrepresentation must concern the source of the goods or services and not their quality, unless the quality is such that it is attributable to a particular trader. 

The claimant must prove on the balance of probabilities that a proportion of the public would be confused or deceived as a result of the defendant's misrepresentation. This is a question of fact to be decided in all the circumstances. Factors that are typically taken into consideration in assessing whether the public are likely to be deceived include:

1. The phonetic and visual similarities between the marks.

2. The nature of the marketplace and circumstances in which the goods are sold or services supplied.

3. The nature of the goods themselves.

In certain cases, the courts may find that there has been a misrepresentation even where there is no evidence of confusion. However, where possible a claimant should provide evidence of, and establish, confusion between the goods and services since this will clearly assist any claim in passing off.

The tort of passing off protects the claimant's right to the goodwill in his business and the claimant may therefore bring an action in passing off to protect this goodwill from damage. To bring a successful action for passing off, the claimant must show that the misrepresentation by the defendant caused damage to his goodwill. 

Where the claimant and defendant operate in a common field of activity and the defendant misrepresents that his goods are those of the claimant, the damage most frequently alleged by the claimant is the diversion of sales to the defendant. The public may be induced by the defendant's misrepresentation to buy the defendant's products or use his services and not the claimant's.
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b2ap3_thumbnail_bill-feig-san-francisco-49ers-new-orleans-saints-nfl-san-francisco-49ers-helmet.jpgDid you know that you can register your name as a trademark in sports? Many athletes know this and they obtain many benefit from this. Radamel Falcao, know as the ¨Tiger¨ or ¨Tigre¨ from Colombia’s soccer team, has a company named, Business Tiger S.A.S., his company manages all the sponsoring contracts and profits that the trademark FALCAO earns. Radamel Falcao had many trademark lawsuits with people that tried to use and register his name without permission.

Intellectual Property protects legally everything on the world’s market; it protects creams, suitcases, shoes, scientific ideas, and much more elements and objects. There is a legal document named The Nice Classification (NCL), that is an international classification of goods and services applied for the registration of marks, it discriminates 45 different classes.

It is really important for sports celebrities that practice football, baseball, soccer, tennis, golf, basketball and other sports, to protect their image and name so that they can have benefits in the sport and marketing field using its name as a trademark. Some examples are the soccer players like Messi, Cristiano Ronaldo, Beckham and James Rodriguez, these players uses their image to promote lotions, clothes, sport items and even underwear, things that are not always related to soccer but that for being a recognize person they can sell much more than what they get paid to play soccer.

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b2ap3_thumbnail_likelihood-confusion.pngWe know that a trademark identifies & distinguishes goods or services. Initiating a trademark is to prevent consumer confusion. Filing/Using a trademark confusingly similar to an existing one is a very common factor for rejection for registration by the USPTO and therefore seeks immediate office action. Various factors/elements embody this issue and in order to overcome it for successfully registering your mark, the marks must be compared in their entireties with another thorough examination of the marks with regard to all of these elements. To find a basis for rejection under “LIKELIHOOD OF CONFUSION”, the marks in question need not be exactly identical or their goods and services need not have to be the same. If either the marks are even slightly similar or the goods/services are related, grounds for rejection are aptly clear.

Conclusions are drawn on the basis of a primary comparison of the appearance, pronunciation, meaning, and commercial impression of the respective marks followed by an examination of the relatedness of the goods or services of the marks to determine whether they are similar or commercially related or travel in the same trade channels. Likelihood of confusion between marks decreases if their goods/services are not related to each other or the marks dont look similar. A complete search of Office records is conducted to determine whether the applicant's mark resembles any registered mark(s) as to be likely to cause confusion or mistake, when used on or in connection with the goods or services identified in the application. Pending applications are also looked into for comparisons.

Once a rejection is issued, an office action is called for to dispute the examiner’s findings and one needs to show that a consumer will not be confused with your rejected/cited trademark either on the basis of the uniqueness of the mark (thus showing zero or least similarity between the marks in question) or that there is no confusing connection/relation between the goods /services of both the trademarks. Evidence has to be presented with supporting case law to prove the same. One can also add supporting documents from the yellow page advertising, state trademark databases, and other traditional trademark search tools. Testimony of an expert may also be used. Dissimilarity of the marks /goods/services has to be highlighted and the marks have to be shown to be inherently distinctive. It is important to state that if the cited registration has a broad identification of goods or services; an applicant still does not avoid “likelihood of confusion” merely by more narrowly identifying its related goods. It is presumed that the registration encompasses all goods or services of the type described, that they move in all normal channels of trade, and that they are available to all classes of purchasers. One must not negate the fact that there are also circumstances suggesting care in purchasing that minimize the likelihood of confusion. Only sophisticated purchasers exercising great care would purchase the relevant goods and there would be no likelihood of confusion merely because of the similarity between the marks either in what they look like or if they sell similar goods. Therefore, the respective relevant consumers are highly sophisticated and would exercise heightened caution & care before purchasing the services/goods of cited registration. Last but not the least, under current law, a consent agreement can recite the bare consent to the applicant’s registration of its mark to overcome a § 2(d) refusal. Overcoming a rejection relies on proof that the marks are not likely to meet the statutorily established test of likelihood of confusion as the basis for the rejection of the cited mark.

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Holding that a reasonable jury could find that online retailer created a likelihood of consumer confusion through the format of its product search returns, the U.S. Court of Appeals for the Ninth Circuit reversed the district court’s grant of summary judgment in a trademark infringement action filed by a watch company that did not authorize distribution via the online retailor. Multi Time Machine, Inc. v. Amazon.com, Inc. Case No. 13-55575 (9th Cir., July 6, 2015) (Bea, J.) (Silverman, J., dissenting).

Multi Time Machines (MTM) manufactures high-end military-style watches under the trademarks MTM, MTM MILITARY OPS and MTM SPECIAL OPS. MTM does not sell its watches to Amazon.com for resale, and MTM does not authorize its distributors to sell the MTM watches through Amazon. MTM sued Amazon for trademark infringement and sought injunctive relief to bar Amazon from using its trademarks in a particular manner when customers search for MTM’s products on Amazon. After the district court granted summary judgement to Amazon, MTM appealed.

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Posted by on in TRADEMARK

b2ap3_thumbnail_purchases-trademark-sm.jpgObtaining trademark protection for eye catching phrases is in news!  Following a few guidelines for   registering your trademark can protect your trademark from any infringements. First and foremost,   your trademark can’t be a “generic” term, i.e. the common name of the product you’re trying to sell. An example    being  “sugar” for which  a trademark cannot be issued  for exclusive use to sell sugar packets. Secondly,   your trademark can’t be a descriptive   trademark like “sugary” to use on boxes of sugar cookies. But if your trademark is “arbitrary” (meaning it has no connection with the goods or services it’s being connected to) or “fanciful” (meaning it has no inherent meaning at all, like Apple for a laptop) you’re in the clear. Similarly, Taylor Swift’s lyrics are equally arbitrary when placed on products like Christmas stockings.

Taylor Swift is seeking trademarks for "party like it's 1989" with many other phrases from her current album, including "this sick beat" and "nice to meet you; where you been." On approval by the USPTO, only she can use those phrases on a product range, including clothing and accessories with exclusive rights, thus limiting their commercial use. Others who have acted similarly include the Seattle Seahawks who have filed trademark applications for "Boom" and the number 12, Washington Redskins quarterback  sought trademarks for multiple phrases, including "work hard stay humble" and "light you up," to name a few. One of the reasons attributing to this is   digital disruption causing   a random phrase to go viral in no time and be exploited and preventing the artist from monetizing their music because of streaming capabilities.  As a consequence, one looks for new streams of revenue, including branded merchandise. Free speech is replaced with a growing and timeless need to protect one’s intellectual property. The question still arises as to how can trademark rights of phrases in a song be approved?

 These phrases are penned and popularized by the trademark applicant herself.  By now, everyone associates Swift as the source of the THIS SICK BEAT phrase and other phrases she has filed trademarks for, and merchandise bearing these phrases would be assumed to be associated with her brand and lyrics. In order to have control on her trademarks once registered, Swift must continue to put out products branded with these phrases.

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Posted by on in TRADEMARK

trademark-san-jose-law.jpgRegistering one’s trademark is a giant step towards protecting one’s business. The entire process involves not only a thorough research and crosscheck but a careful analysis of the entire trademark database.  Overlooking the basics at the time of registration lead to a failure at registering their trademarks and later infringements!

Registration of a trademark   ”McSweet”   for pickled vegetables was rejected with an opposition from McDonalds for   likely confusion by purchasers with the McDonald’s marks that began with “Mc” and as to whether this product came from McDonald’s. The mark’s distinctiveness and consumer recognition were strongly considered and it was concluded that the McSweet mark would likely dilute the distinctiveness of that group of marks. McDonald’s proved that there was an association made by consumers between “McSweet” and the famous family of McDonald’s “Mc” marks with surveys. 

In another trademark registration, when St. Helena Hospital applied to register the trademark “TAKETEN” for use with its 10-day in-patient health improvement program, it was refused on the basis of likelihood of confusion with earlier registrations for the mark “TAKE 10!”  St. Helena’s application detailed its services as “health care services, namely, evaluating weight and lifestyle health and implementing weight and lifestyle health improvement plans in a hospital-based residential program” in class 44 whereas the cited “TAKE 10!” registrations are for “printed manuals, posters, stickers, activity cards and educational worksheets dealing with physical activity and physical fitness” in class 16.  On appeal   the Board also supported the conclusion of likelihood of confusion and affirmed the examiner’s refusal to register St. Helena’s TAKETEN mark. On further appeal,   the court allowed the registration to go through on the basis of the dissimilarities in the respective services and goods and the high degree of consumer care that would be exercised by any consumer selecting and participating in a 10-day hospital-based health care program.  

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b2ap3_thumbnail_colour-myculor.jpgFeeling blue or are you seeing red because you are turning green with jealousy at the neighbor’s new car? Colors are not only used to describe the emotions we feel, but they are imperative in our world. Universally red means ‘stop’ and green means ‘go’ and traffic lights across the world send this message. It should come as no surprise that colors hold a great importance and are increasingly used as trademarks (color marks) in the marketplace.

The color depletion doctrine- the theory that there are a limited number of colors in the color palette has been used to bar protection of colors. The purpose was to protect against ownership of various colors, that when monopolized, would hinder competition. In 1949, the US court refused to protect the red and white colors of the Campbell Soup’s labels stating that it would mean monopolization of the color red. As discussed in our previous issue, colors like smells are not the most simple when it comes to trademarks.

Historically, it has been a complex procedure to protect colors through trademark registration as a color was not considered to be distinguishing enough but this was rectified in 1994 when an international agreement managed by the World Trade Organization which set out minimum standards for a number of intellectual property regulation was brought into effect. This agreement is commonly known as the TRIPS agreement (Trade Related Aspects of Intellectual Property Rights) is the most comprehensive international agreement on intellectual property. In recent years every country has delivered its own view and understanding of this international agreement and considered applications for registration of color trademarks on an individual basis.

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Posted by on in TRADEMARK

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A trademark is a word, phrase, logo or other symbol, used to identify a product, the source of a product and the manufacturer or merchant. A trademark is usually used to distinguish one product and its manufacturer from another.

Before registering your trademark, it is important to run a trademark search to determine whether another business or entity is already using the same name. You do not want to come up with a business name, run ads, create brochures and specific items and later on be forced to change the name.

Common Types of Trademarks

There are many types of trademarks, such as:

  • Service Mark - Rather than promoting a product, the service mark promote a particular type of service
  • Trade Dress - A product is sometimes known for its special packaging, or trade dress
  • Collective Mark - A collective mark is a symbol, word, or phrase used to identify a group, organization or association, and the products, services or members of the group
  • Certification Mark - A certification mark is a symbol or name used to guarantee the quality of another's service or product

What Is a Trademark Search?

Before you decide to use a particular trademark or name, you should conduct a trademark search to determine whether a similar trademark already exists. If you use a trademark that is similar to, or the same as, another person's registered trademark, you can be held liable for damages and the registered owner's attorney fees. Generally, a court will presume that the unregistered trademark owner knew about the registered trademark, even if you did not.

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What is Intellectual Property?

Intellectual property is the area of law that deals with protecting the rights of those who create original works. It covers everything from original plays and novels to inventions and company identification marks. The purpose of intellectual property laws are to encourage new technologies, artistic expressions and inventions while promoting economic growth. When individuals know that their creative work will be protected and that they can benefit from their labor, they are more likely to continue to produce things that create jobs, develop new technology, make processes more efficient, and create beauty in the world around us.

There are three main mechanisms for protecting intellectual property in the United States: copyrights, patents and trademarks.

Copyrights

Copyrights protect the expressive arts. They give owners exclusive rights to reproduce their work, publicly display or perform their work, and create derivative works. Additionally, owners are given economic rights to financially benefit from their work and prohibit others from doing so without their permission. It is important to realize that copyrights do not protect ideas, only how they're expressed.

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