Honest Policing of Trademarks Pays Off, While Bad Faith Will Make You Pay

By:  Erica Paige Fang

Most of us have used, or at least have heard of, Dropbox, Inc., the file hosting service company that has seen great success in the last few years.  In 2009, Dropbox applied for federal trademark registration for the mark DROPBOX.  At that time, Thru, Inc. had been using the mark THRU DROPBOX to describe a feature in its software, and included the TM symbol next to the mark.  However, Thru, Inc. decided to hold off on challenging the applied for mark, a decision that may haunt the company for some time. 

In 2014, five years after filing for registration with the USPTO, Dropbox, Inc. was awarded rights to the trademark “DROPBOX” and filed a motion for declaratory judgment against Thru, Inc.  In response, Thru, Inc. countersued, claiming infringement on their mark.  Through the process of discovery, Dropbox uncovered internal emails between Thru, Inc. officials discussing strategically holding off opposing Dropbox’s use of the trademark until the company launched their Initial Public Offering.  Thru, Inc. company officials went so far as to refer to the THRU DROPBOX registration as their lottery ticket.   Ultimately, in November 2016, a California federal judge held Thru, Inc. cannot challenge the registered mark DROPBOX because Thru, Inc. intentionally delayed filing the infringement lawsuit against Dropbox, Inc. in and attempt to increase leverage and the value of its claims.  Further, Thru, Inc. was not able to adequately explain why they did not join other companies, such as Officeware, in asserting trademark rights before the USPTO in a timely manner.  Officeware is a company that opposed Dropbox’s registration of DROPBOX, and so Dropbox, Inc. acquired the trademark rights from Officeware. 

The story does not end there.  Due to the bad faith by Thru, Inc. in waiting to bring claims of infringement, and referring to the unenforced trademark as a lottery ticket, the Court has awarded over $2 million in legal fees to Dropbox, Inc.  The judge states multiple times throughout the order that the “slow walk” of trademark enforcement to coincide with Dropbox’s IPO was not a coincidence, and could not believe a file sync and share company remained unaware of Dropbox until as late as 2011 as Thru, Inc. tried to claim. 

What could have been done differently?   First, when Thru, Inc. decided to use the mark THRU DROPBOX, they should have registered with the USPTO to strengthen their rights and also put examiners and others on notice of the mark’s use in commerce.  Second, Thru, Inc. should have acted in good faith, and upon notice of a potential infringement, determined a legal strategy and act on that strategy.  Being proactive about trademark enforcement and protection can save you a pretty penny!

Disclaimer: This article discusses general legal issues and developments. Such materials are for informational purposes only and may not reflect the most current law in your jurisdiction. These informational materials are not intended, and should not be taken, as legal advice on any particular set of facts or circumstances. No reader should act or refrain from acting on the basis of any information presented herein without seeking the advice of counsel in the relevant jurisdiction.  Bend Law Group, PC expressly disclaims all liability in respect of any actions taken or not taken based on any contents of this article.

California State Trademark Registration For Cannabis Could Finally Be Here!

By:  Erica Paige Fang

The current California Model State Trademark Law provides for the registration of trademarks and service marks with the California Secretary of State and requires the classification of goods and services conform to the classifications adopted by the United States Patent and Trademark Office (USPTO).  This has created a roadblock for business owners in the cannabis industry because the USPTO will not register a mark where the goods and services are related to illegal drugs, and to date, cannabis is still classified as a Schedule 1 substance by the Drug Enforcement Agency and the Food and Drug Administration. 

Section 2(a) of the Lanham Act bars registration of trademarks that consist of or comprise immoral, deceptive, or scandalous matter.  15 U.S.C. § 1052(a).  The Examiners at the USPTO have rejected as scandalous and immoral several trademark applications related to illegal drugs, citing the adverse health effects of drug use and the classification as a Schedule 1 substance.  California has refused state registration for cannabis related trademarks and service marks on the same basis.  California Assembly Bill 64 looks to change this and allow a certificate of registration that is issued on or after January 1, 2018 for marks related to medical and nonmedical cannabis goods and services that are lawfully in commerce under state law in the State of California.  The Bill proposes to add Section 14235.5 to the California Business and Professions Code, listing the following classifications that may be used for marks related to medical and nonmedical cannabis goods and services:  (1) 500 for goods that are medical cannabis, medical cannabis products, nonmedical cannabis, or nonmedical cannabis products; (2) 501 for services related to medical cannabis, medical cannabis products, nonmedical cannabis, or nonmedical cannabis products. 

Up until this point cannabis businesses have been at a disadvantage because they cannot protect their brand.  This downfall has lead to trouble securing investors and growing the businesses.  The other recreational states, Washington and Oregon, have passed similar legislation to offer trademark protection to cannabis businesses in their respective states.  If AB-64 passes, cannabis businesses will want to have acceptable specimen of use ready and a way to date it back to the first use in commerce in order to make registration as smooth as possible. 

AB-64 also looks to restrict the advertising of medical and non-medical cannabis and cannabis products.  Proposition 64 that was passed in November 2016 included some advertising restrictions, prohibiting the placement of billboards advertising cannabis that are located on an interstate highway or state highway that crosses the boarder of any other state.  AB-64 would expand this restriction to prohibit advertising on all interstate and state highways.  So while AB-64 may allow the State to grant trademark protection, where companies use that mark to advertise will have to comply with the state’s restrictions. 

Disclaimer: This article discusses general legal issues and developments. Such materials are for informational purposes only and may not reflect the most current law in your jurisdiction. These informational materials are not intended, and should not be taken, as legal advice on any particular set of facts or circumstances. No reader should act or refrain from acting on the basis of any information presented herein without seeking the advice of counsel in the relevant jurisdiction.  Bend Law Group, PC expressly disclaims all liability in respect of any actions taken or not taken based on any contents of this article.

 

Brewing Likelihood of Confusion: A Look At Coexistence Agreements

By: Erica Paige Fang

When two trademark owners have developed rights to identical or similar marks, they might enter into a coexistence agreement in order to resolve a potential trademark dispute.  The agreement must clearly state in detail the rights of the respective parties and how confusion in the marketplace will be avoided.  Typically, the goods and services are unrelated, are sold in different geographic areas, or utilize different trade channels. 

A consent agreement is a type of coexistence agreement that may be entered into the record of a trademark prosecution in order to obtain registration.  The consent agreement usually limits the rights of the party seeking consent, but will not thoroughly address long-term coexistence.   A consent agreement is a declaration that there will be no confusion.  Courts will consider this evidence there is no likelihood of confusion because the parties entering into the agreement are those who would most greatly be affected by potential consumer confusion.  It is important to know a court can reject a coexistence agreement if it fails to provide sufficient detail regarding avoidance of confusion and if they believe consumer confusion is unavoidable.

In re Bay State Brewing Company, Inc. (TTAB 2016) the Board determined the consent agreement was not sufficient to avoid confusion and affirmed the 2(d) refusal on likelihood of confusion.  As discussed above, a consent agreement usually carries great weight in the likelihood of confusion analysis.  The consent agreement relates to the market interface between the parties, and is number 10 of the du Pont factors. Here, Bay State Brewing Company (“Applicant”) filed to register TIME TRAVELER BLONDE (BLONDE disclaimed) as a standard word mark for beer, but was refused based on prior registered standard word mark TIME TRAVELER for beer, ale and lager.   The consent agreement limited the applicant to the geographic area of New York State and the New England area, whereas there were no geographic limitations on the Registrant.  The board found the restriction on use only limiting one party effectively allows for simultaneous use by both parties in the same regions, here New York State and the New England area.   Ultimately, the Board determined the restrictions set forth in the parties’ consent agreement would not eliminate confusion in the marketplace.  Further, the Board held the mark TIME TRAVELER for beer, ale and lager is an arbitrary mark entitled to a broad scope of protection. 

In re Four Seasons Hotels, Ltd., 987 F2.d (Fed. Cir. 1993), the Federal Circuit found no likelihood of confusion between FOUR SEASONS BILTMORE and THE BILTMORE LOS ANGELES, stating the parties’ coexistence agreement passed the scrutiny because the marks were sufficiently different, the services were not identical and the marks had coexisted in the marketplace for years without confusion.  The Board evaluating Bay State Brewing Company distinguished from this case because the goods, beer, were the identical, and the marks were virtually identical minus the disclaimed and descriptive term for beer, BLONDE. 

Parties should weigh future conflicts when considering a coexistence agreement.  Some important considerations include:  1) term of the agreement; 2) rights to license or assign the mark; and 3) potential expansion, particularly into new geographic areas or into new goods and services.  Further, a party should consider whether their mark is arbitrary, or fanciful in relating to the goods or services, allowing for a broader scope of protection.   Allowing other coexistence could dilute the mark and weaken the strength of protection.  However, in the right circumstances, a clear coexistence agreement detailing how the parties will avoid likelihood of confusion in the marketplace can help avoid any brewing of confusion, as was the case for the parties in the Four Seasons Hotel.  

Disclaimer: This article discusses general legal issues and developments. Such materials are for informational purposes only and may not reflect the most current law in your jurisdiction. These informational materials are not intended, and should not be taken, as legal advice on any particular set of facts or circumstances. No reader should act or refrain from acting on the basis of any information presented herein without seeking the advice of counsel in the relevant jurisdiction.  Bend Law Group, PC expressly disclaims all liability in respect of any actions taken or not taken based on any contents of this article.

Sound and Scent: Putting Trademark Examiners Senses to the Test

By:  Erica Paige Fang

As consumers, we recognize certain sounds associated with products from television or radio advertisements.  Some of these sounds are so distinguishing it is all that is needed to draw the name of the brand to your tongue.  Many of us probably do not realize we are hearing a registered trademark each time we hear the AFLAC duck, NBC chimes, the Pillsbury Dough Boy, or the MGM Entertainment lion roar.   

The United States Patent and Trademark Office (USPTO) will register a sound, or even a scent, when the sound creates an exclusive association between the product or services and the source of the product or services.  However, if the sound resembles or imitates commonplace sounds or those which listeners have been exposed under different circumstances, the applicant will be required to prove the sound has come to be exclusively associated with the applicant for the products or services for which the applicant is seeking registration.  For a distinct or unique sound, such as American Family Life Insurance’s AFLAC “quack,” proving the exclusive association would not be necessary because it does not resemble a commonplace duck quack.  The USPTO accepts sound files to show examiners the sound the applicant is seeking protection for. 

Registering a scent proves to be more difficult because an applicant must show that the fragrance serves no practical or functional purpose other than to help identify the source of the products or services.  This rules out any perfume or air freshener brands.  The electronic retail company Verizon was successful in obtaining a registered trademark for a scent they pump into their retail stores, which distinguish their store from other electronic retailers in October 2014 (Reg. 4618936).  Another scent trademark registration was issued in June 2015 for bubblegum scented jelly sandals (Reg. 4745535).  In 1995, the company Manhattan Oil filed trademarks for scented engine lubricants and obtained registrations for 3 fragrances (Reg. 2568512, 2596156, 24636044), making them the oldest scent trademarks that are live today.  In order to obtain a scent trademark registration, an applicant must be able to show the examiner how the scent will identify the source of the goods to consumers.  For the bubblegum sandal company, applicant sent in a sample sandal.  For larger items, like an entire scented retail store, that could pose a challenge. 

As entrepreneurs and business owners continue to create ways to stand out amongst the competitors, it is likely we will see more creative brand associations, such as sound and scent, and potential for registration with the USPTO to protect brand strength. 

Disclaimer: This article discusses general legal issues and developments. Such materials are for informational purposes only and may not reflect the most current law in your jurisdiction. These informational materials are not intended, and should not be taken, as legal advice on any particular set of facts or circumstances. No reader should act or refrain from acting on the basis of any information presented herein without seeking the advice of counsel in the relevant jurisdiction.  Bend Law Group, PC expressly disclaims all liability in respect of any actions taken or not taken based on any contents of this article.

Patents, I Would Like You To Meet Cannabis

By: Erica Paige Fang    

As we enter 2017, twenty-eight states have legalized the sale and use of medicinal cannabis, and eight states, including California, have legalized the sale and consumption of recreational cannabis.  The cannabis industry is booming with innovation.  Typically in a booming industry, individuals and companies turn to the patent system to protect inventions and obtain a legal monopoly for the protection period.  However, there are several road bumps cannabis innovators seeking patent protection will encounter. 

The United States Patent and Trademark Office (USPTO) will grant patent protection for inventions that are novel and non-obvious.  There are three types of patents an inventor can obtain:  design, plant, and utility.  The length of protection for a design patent is 14 years, while plant and utility patents hold protection for 20 years.   The USPTO is a federal office and therefore may not grant protection to innovations involving cannabis because the subject matter violates the Controlled Substance Act.  Unlike federal trademark protection, the patent statutes do not facially prohibit the patenting of cannabis plants, and therefore, it is possible the USPTO could issue plant patents for cannabis strains.

Another hurdle cannabis innovators must overcome is the invention disclosure requirement.  The disclosure must be sufficient so that another person skilled in the art can replicate the invention.  To date, there are patent applications claiming patentable cannabis strains, however, it is unlikely the applications’ disclosures will be sufficient to issue a patent.   In the agricultural industry, the scientific data receives heightened scrutiny to ensure the disclosure is thorough and enabling.  The cannabis industry has not developed or utilized equipment to collect and quantify the scientific data required to be issued a patent and overcome the disclosure requirement.  As the industry matures and develops better technology, or as big agriculture moves into the industry utilizing the scientific instruments already in place, it is likely we will see an influx of cannabis patents.    

If a patent is issued for a cannabis strain, or other cannabis related technology, there is still great risk in enforcing such a patent, as it would attract the attention of federal law enforcement.  While the industry continues to make giant leaps forward, there is still significant risk involved and obstacles to overcome to obtain intellectual property protection.  If there is a federal rescheduling of cannabis, patent attorneys theorize patent infringement claims involving cannabis will come forward.  

Innovators in the cannabis industry should keep in mind that a public disclosure of an invention would void any potential patent protection in the future.  Sharing, selling or otherwise distributing any part of the unique strain will be considered a public disclosure, including seeds, clones, and flowers.  

Disclaimer: This article discusses general legal issues and developments. Such materials are for informational purposes only and may not reflect the most current law in your jurisdiction. These informational materials are not intended, and should not be taken, as legal advice on any particular set of facts or circumstances. No reader should act or refrain from acting on the basis of any information presented herein without seeking the advice of counsel in the relevant jurisdiction.  Bend Law Group, PC expressly disclaims all liability in respect of any actions taken or not taken based on any contents of this article.

Overlooked Provisions of Prop. 64 and Geographic Cannabis Branding

As of today, Alaska, Colorado, Oregon and Washington are the only states that have legalized nonmedical cannabis use, possession, and growing. A national movement to legalize is burgeoning. On November 8, 2016, California voters will decide whether or not to join those states, when they vote on Proposition 64: the “Adult Use of Marijuana Act.”

If Prop. 64 is passed, adults 21 years of age and over would be able to legally use, possess, and grow marijuana for nonmedical purposes, with some restrictions; the state would regulate nonmedical marijuana businesses; growing and selling marijuana would be taxed; and tax revenues would be directed to state youth education programs, environmental programs, and law enforcement.

If Prop. 64 is not passed, the current law would remain in effect. Nonmedical use, possession, and growing marijuana would remain illegal to everyone throughout the state. Licensed medical marijuana practices would remain legal.

In addition to the main changes Prop. 64 would affect, the Act also incorporates the following policies: 

·     Sale might still be banned in certain areas. Individual cities and counties may adopt local bans. The purpose is to allow communities to locally regulate.

·     If a business sells tobacco or alcohol products, it is not eligible to sell nonmedical cannabis.

·     Nonmedical cannabis sellers can deliver—literally. Delivery services will not be prevented on public roads.

·     An area's natural water supply determines whether or not, and how many, new marijuana plants can be grown. Each plant is required to have a unique identifier (like a bar code) in order for the government to “track-and-trace” marijuana production. If a “watershed” does not have sufficient water for new cultivation, “no new plant identifiers will be issued, as to that watershed.”

·     Non-medical sellers might not be able to sell “edibles.” One provision prohibits products “easily confused with commercially sold candy or foods that do not contain marijuana.”

·     Promo items are not allowed. Licensed sellers cannot give away marijuana and marijuana-related merchandise as a promotional activity.

·     Big growers are prohibited until 2023. Prop. 64 will not license growers with more than one acre of outdoor grow space or 22,000 square feet of indoor canopy until January 1, 2023, in an effort to prevent anticompetitive industry monopolization.

·     Advertising is severely restricted. The anti-legalization community urges that Prop. 64 would allow cannabis advertising aimed at children. Prop. 64 requires that advertising “in broadcast, cable, radio, print and digital communications shall only be displayed where at least 71.6% of the audience is reasonably expected to be 21 years of age or older, as determined by reliable, up-to-date audience composition data.” This rule seems to mimic a self-imposed guideline used by the alcoholic beverage industry (e.g., alcohol websites’ pop-ups requiring users to confirm they are over 21 years old). To comply with Prop. 64, cannabis businesses will be required to advertise according to, and spend substantial sums on, reliable audience demographic data reports, like Nielsen Ratings. And in some social media advertising venues—like Instagram—this determination might not even be ascertainable; Instagram requires only a minimum age of 13 (rather than asking a person to impute his or her exact age) to create an account, and any user could potentially find the ad.

Geographical Cannabis Branding Under Prop 64

Some regions in California have become well known as producing particularly high quality cannabis products (so far only available as medical cannabis), like Humboldt and Mendocino Counties. People claim that the “cannabis terroir,” or the character cannabis takes on from the soil it grows in, is responsible for making these regions’ cannabis so special.

Prop. 64 contains provisions ensuring that growers outside those areas don’t try to cash in on their (famous) names through clever branding. Similar to wine labeling laws, Prop. 64 requires that only cannabis grown in a specific region can use the name of that region on labels, packaging, and marketing materials. Cannabis or cannabis products grown outside of a particular region cannot contain “any statement, design, device, or representation which tends to create the impression that the marijuana originated in [that] particular place or region.” However, interestingly enough, Prop. 64 does not require the “cannabis terroir” to be maintained to be considered a part of a particular region; cannabis is not required to be grown outdoors or in any specific (regional) soil to qualify as cannabis from some region.

For prospective non-medical marijuana growers, trademarking your cannabis products should be a top priority—being the first to register on your trademark with the State of California ensures that other junior users won’t be able to infringe your name. And given Prop. 64’s geographic labeling requirements, you might be interested in cashing in on a mark bearing your special region’s name.

Luckily, California trademark law mimics Prop. 64’s geographic labeling standards. In California, a mark is not a registerable trademark for particular goods or services if it is “primarily geographically descriptive” or “deceptively misdescriptive” of them. A “primarily geographically descriptive” mark (1) conveys to a meaningful segment of its consumers, primarily or immediately, a geographical connotation; and (2) those consumers are likely to think the goods or services in fact come from that place. A mark is “geographically deceptively misdescriptive” if the misdescribed geographical origin would be a material factor to consumers in making their purchasing decision. Currently, non-medical marijuana products are not trademarkable, but if Prop. 64 passes, it will be open range for (accurate) location branding that will give a regional grower’s products the luster and fame they deserve.

If you are in the cannabis industry and are looking to prepare for the effects of Proposition 64, we are happy to help you navigate the new waters.  Please give us a call at (650) 271-9395 or email us at info@blgtrademarks.com.

 

Disclaimer: This article discusses general legal issues and developments. Such materials are for informational purposes only and may not reflect the most current law in your jurisdiction. These informational materials are not intended, and should not be taken, as legal advice on any particular set of facts or circumstances. No reader should act or refrain from acting on the basis of any information presented herein without seeking the advice of counsel in the relevant jurisdiction.  Bend Law Group, PC expressly disclaims all liability in respect of any actions taken or not taken based on any contents of this article. 

To Patent or Copyright: The Coding Question

So you code algorithms used in your business and you want to protect them. Your mind goes straight to patenting—since that’s where all the value is, right? You could be wrong.

The Patent Act §101 authorizes utility patents for “any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof.” But the U.S. courts have additionally carved away at the definition of patent-eligibility; “naturally occurring” things, and “laws of nature, natural phenomena, and abstract ideas” may not in themselves be the subject of a patent. While coded algorithms meet the “man-made” patentability requirement, they run the risk of falling into the “Laws of Nature” or “abstract idea” categories—strictly proscribed from patent protection in the infamous 2014 U.S. Supreme Court case, Alice Corp. v. CLS Bank International.

In Alice, the Court explained that mathematical algorithms themselves are akin to a mathematical formula, or law of nature, and therefore cannot be patented. And further, that since computer programs consist of mathematical algorithms, they may not be eligible for patent protection in and of themselves. The court held that the patent claims for the computer system in Alice were not patentable subject matter, because the computer system “merely implemented an abstract idea.” In the aftermath of Alice, it seems patenting software is nearly impossible. Alice, and its resulting U.S. Patent and Trademark (USPTO) Examiner Guidelines for patentable subject matter, provided a patent eligibility hurdle so extreme, that few software inventors continued to apply for patents.

Still bent on a utility patent? There is one other way: the “business method” patent. A 1998 case established that business methods were patentable subject matter. However, since that time, patents granted based on “business method” eligibility have developed a bad rep—since there is no way to research the internal business processes of other businesses, it is basically impossible to say that one business method is “novel,” and thus patentable subject matter. As a result, the America Invents Act (AIA) requires a “transitional post-grant review” for all business method patents. The AIA states that a “covered business method patent” is “a patent that claims a method or corresponding apparatus for performing data processing or other operations used in the practice, administration, or management of a financial product or service, except that the term does not include patents for technological inventions.” Technological inventions are not defined. All in all, applying for a patent under the “business method” theory seems almost as promising as avoiding the “abstract idea” disqualification. Both are dismal at best. However, there could be a light at the end of the tunnel—the copyright tunnel.

Copyright law provides protection for “original works of authorship fixed in any tangible medium of expression, now known or later developed, from which they can be perceived, reproduced, or otherwise communicated either directly or with the aid of a machine or device.” And “works of authorship” include literary, musical, dramatic, choreographic, pictoral, graphic, sculptural, audiovisual, sound, and architectural works. Computer programs are considered “literary works” that are protectable subject matter. Their authors are entitled to copyright protection in both their literal expression (source code or object code), as well as in nonliteral expression, like the program’s structure or organization.

But how do you copyright the structure of a computer program? The Second Circuit adopted a test in the Altai case (also known as the “abstraction-filtration-comparison” test) that breaks down the computer program into different elements and removes those that are non-copyrightable (ideas; functions; external components; and those taken from the public domain) to determine which remaining structural components can be copyrighted. While this test might seem to obliterate hope of copyrighting software one component at a time, not all is lost. The same court more recently took a step back when it clarified that a programmer’s original selection and arrangement of uncopyrightable elements may still be copyrighted despite the Altai test, because components may be viewed as copyrightable in the aggregate.

However, in California and other states within the Ninth Circuit, when a programmer relies on selection and arrangement expression as the basis for his or her computer program structure copyright, the courts deem the copyright a “thin copyright”—or not very strong copyright. When a “thin copyright” holder then attempts to sue for copyright infringement, these courts will only find infringement liability if the infringer’s program is “virtually identical” to the copyright holder’s, rather than the usual, “substantially similar” standard.

For programmers, the best bet seems to be copyright. The 1976 Act expressly protects computer programs, which it defines as “a set of statements or instructions to be used directly or indirectly in a computer in order to bring about a certain result.” In order to protect the fruits of coding labor, software should be copyrighted with the US Copyright Office as soon as possible, and strategically licensed for others’ use.

Disclaimer: This article discusses general legal issues and developments. Such materials are for informational purposes only and may not reflect the most current law in your jurisdiction. These informational materials are not intended, and should not be taken, as legal advice on any particular set of facts or circumstances. No reader should act or refrain from acting on the basis of any information presented herein without seeking the advice of counsel in the relevant jurisdiction.  Bend Law Group, PC expressly disclaims all liability in respect of any actions taken or not taken based on any contents of this article.   

Architectural Design and Copyright Law

By: Matthew Cox

The construction industry is governed by many different bodies of law.  Arguably, contract law lays the unifying foundation for the industry.  But other bodies of law still play vital roles in shaping the ever-changing legal landscape.  Intellectual property, and specifically copyright law, is vital to the industry. 

Just who owns architectural or engineering design documents associated with a construction project?  Does the owner who contracted with the design professional  for design services own the documents?  Or, does the designer, by way of work product created by intellectual means, retain ownership of the plans and specifications? 

Design documents are subject to copyright laws in the United States; they fall under the category of “technical drawings,” which includes architectural plans.  Whether or not unique aspects of the design were protected after construction was completed remained a looming question until 1990. Finally, litigation resulting from this issue persuaded legislators to clarify the code. 

The straw that broke the camel’s back was a case brought in 1988 by an architect against a homebuilder who allegedly copied the architect’s design after it had already been used to build the home for which the design was initially drawn up.  The homebuilder used the design and constructed an identical home elsewhere. The court found for the builder . . . and found no violation of the copyright.  

In response, Congress amended the copyright laws to more clearly define architectural work as the design of a building as embodied in any tangible medium of expression, including a building, architectural plans, or drawings.  This tightening of the rule brings in arrangement and composition of elements, but still excludes individual features.   Under this rule, the design professional, by law, owns both the design documents, as well as the unique design elements of the structure—but not the individual elements. 
    
Parties are still free to contract how they see fit, so most agreements contain provisions for the owner to retain a limited license for the plans and specifications while the design professional retains ownership of the  documents.  The copyright can also be transferred.  Issues arise when the design professional has concerns about use of the design in unanticipated ways by the project owner.  In this situation, an indemnity agreement holding the design professional harmless and charging the project owner with providing a defense upon suit is an adequate risk management option.  The general rule of thumb has become: the professional designer retains ownership of design documents unless the parties agree otherwise by contract.  
 

Disclaimer: This article discusses general legal issues and developments. Such materials are for informational purposes only and may not reflect the most current law in your jurisdiction. These informational materials are not intended, and should not be taken, as legal advice on any particular set of facts or circumstances. No reader should act or refrain from acting on the basis of any information presented herein without seeking the advice of counsel in the relevant jurisdiction.  Bend Law Group, PC expressly disclaims all liability in respect of any actions taken or not taken based on any contents of this article.   

Thinking Like an Examining Attorney

When you apply to register a trademark with the United States Patent and Trademark Office (USPTO), an examining attorney is assigned to your application and decides whether or not to allow the registration.  He/she will consider if the registration should be barred because of a host of trademark law issues, the most basic being if another mark is registered that looks or sounds similar and/or is involved with a similar stream of commerce.

That is why it is important to think like an examining officer.  Instead of using and applying for a mark that cannot be registered, it is best to be proactive when deciding what mark to use when starting a business and when going through the registration process.  Before filing a trademark application, you should perform as rigorous a search for conflicting marks as the USPTO examining attorney.  Consulting with a trained attorney during this search process, and working with an attorney to analyze the viability of the mark based on trademark law can often end trademark disputes before they arise and ensure a seamless registration rather than applying to register a mark that will only cause headaches later on.  

Once a mark is chosen, you must file an application with the USPTO.  The application contains many questions about the business, including making a determination of what class(es) to register in and an appropriate description of the goods or services that the mark is associated with.

After an application is filed, an examining attorney will analyze the application. The examining attorney relies on the Trademark Manual of Examining Procedure (TMEP) for guidance and decides whether or not to allow the registration.  If the examiner rejects an application for any reason, the examining attorney will issue an office action letter laying out his/her objections. 

Responding to office actions requires a deep understanding of trademark law and USPTO process. Typically applicants hire experienced attorneys to handle office action responses.

If the examining officer decides that either the trademark should be registered straight out of the gate or the objections in an office action are remedied, the mark is published under a federal publication called the Official Gazette for a period of time.  This publication provides notice to others that the mark is to be registered, and it gives them an opportunity to oppose the registration.  If there are no oppositions, the USPTO will register the mark, and mail you a certificate of registration.  At this point, you will officially own a federally registered trademark, and all the benefits that come along with it.

Need some help thinking like an examining attorney?  Contact Bend Law Group, PC for all your trademark needs at 650-271-9395.

Disclaimer: This article discusses general legal issues and developments. Such materials are for informational purposes only and may not reflect the most current law in your jurisdiction. These informational materials are not intended, and should not be taken, as legal advice on any particular set of facts or circumstances. No reader should act or refrain from acting on the basis of any information presented herein without seeking the advice of counsel in the relevant jurisdiction.  Bend Law Group, PC expressly disclaims all liability in respect of any actions taken or not taken based on any contents of this article.    

 

Efficiently Enforcing Your Trademarks: The Importance of Monitoring Services

Obtaining a trademark registration with the United States Patent and Trademark Office is an important step for any business.  It carries the presumption that the owner of the registration owns the mark in all 50 states, and is a way of establishing legitimacy in the marketplace. 

While ownership of a trademark registration allows you to prevent others from using a confusingly similar mark, you have a duty to actively enforce your trademark.  Failing to do so can actually erode your trademark rights.  Allowing others to use the same mark is evidence that your trademark is not a strong one.

The USPTO does some work for owners of federal registrations in preventing confusingly similar marks from passing their examination process, but the fact is that the examiners who review trademark applications are people and the determining if a mark infringes upon another is a multi-factor balancing test.  Two reasonable people can come to different conclusions when reviewing the same trademark application.

This is why the USPTO provides an alternative avenue of protecting your rights.  As those who have gone through the registration process may know, the last step in the process after the examiner approves an application is called an Opposition Period.  During this 30-day window, third parties can formally oppose an application, and argue that it should not mature into registration because doing so would infringe upon their trademark rights.  A trademark owner can keep track of applications that are in the Opposition Period because they are published weekly on the Official Gazette, an USPTO publication that can be hundreds of pages long.  However, searching through the Official Gazette each week will make any normal person’s eyes glaze over.

This is where monitoring services come in.

Various companies provide software services to monitor the Official Gazette for confusingly similar trademarks that are progressing towards registration.  Signing up with these services allows trademark owners to be notified when such an application exists.  At this point, the owner can work with an attorney to form a strategy for opposing the application.

At the end of the day, you as a trademark owner are responsible for policing your trademark rights, and not doing so erodes those rights.  Monitoring the Official Gazette for potentially infringing trademarks is extremely tedious, which makes monitoring services very attractive.  Stopping potential infringers in their tracks during the application process is an efficient way to stop infringement before it occurs, reduce the risk of expensive litigation down the road and ensure that your trademark rights are protected.

If you are interested in monitoring services, having an attorney monitor on your behalf, or would like legal aid with opposition proceedings or trademark disputes, we can be of aid.  Please call (650) 271-9395 or email us at info@blgtrademarks.com for further assistance.

Written By: Vivek Vaidya

Disclaimer: This article discusses general legal issues and developments. Such materials are for informational purposes only and may not reflect the most current law in your jurisdiction. These informational materials are not intended, and should not be taken, as legal advice on any particular set of facts or circumstances. No reader should act or refrain from acting on the basis of any information presented herein without seeking the advice of counsel in the relevant jurisdiction.  Bend Law Group, PC expressly disclaims all liability in respect of any actions taken or not taken based on any contents of this article.