The word “brand” has come to be used broadly as a business buzzword, and with good reason. A brand often is comprised of a company name or a product name - but it is much more than that. It is a projection and reflection of goodwill. It is a promise, a feeling, an ethos, a lifestyle statement. It acts as a reassuring signpost for consumers in a busy marketplace, signaling a trusted source and a consistent level of quality.
Successful brands are not attention-grabbing gimmicks. A product or service name, however clever, merely is a shell, and hopefully that shell is filled with and overflows with positive consumer sentiment that results from a consistently good user experience – whether that experience is eating a taco, using a travel booking website or interacting with an accounting professional.
This blog post is an introduction to a series of posts that address legal brand protection. Legal measures cannot provide the most fundamental underpinnings for a successful brand, such as quality, consistency, authenticity and good timing in terms of meeting a market demand. Legal measures can, however, position businesses to stake out, defend and protect their brands. Legal brand protection measures include pre-filing and pre-use diligence, registration and policing, and each of these categories involves an array of nuanced considerations that this blog series will address.
Key Takeaway: Key business considerations relevant for choosing between patents and trade secrets include: (1) Need for transfer of IP rights; (2) Life cycle of the product or service; (3) Cost of IP protection; and (4) Other business considerations.
Key Takeaway: One critical question to ask when deciding whether to protect your invention using patents or trade secrets is how well the invention can be kept secret. Ease of reverse-engineering, risk of independent duplicate creation, and the ease of maintaining the invention secret in a commercial setting are factors that should be considered.
Recently the Ninth Circuit ruled that Google’s trademark for search engines has not become generic and is still enforceable as to search engines. As Bayer learned with its previously-existing trademark aspirin, when a court determines a trademark to be generic, the mark is no longer protectable. In effect, a generic (no longer a) trademark is re-appropriated by the public such that the mark is no longer a source-identifier for the related goods and services. A generic (no longer a) trademark tells the public what the good and services are rather than who makes and/or sells the goods or services. Additional examples of trademarks that courts held to be generic include cellophane, thermos, and trampoline.
The Supreme Court held in Matal v. Tam that the Lanham Act’s provision forbidding the registration of disparaging trademarks is unconstitutional in violation of the First Amendment. The Court explained that “[s]peech may not be banned on the ground that it expresses ideas that offend.”
Imagine you’re a fashion designer with a unique clothing design. As with any other business, you wish to protect your intellectual property through the standard combination of patents, trademarks, and copyrights. Sounds simple, right?
Wrong! There is no one-stop shop for protecting your intellectual property and, until recently, the law was not completely on your side. Though a single garment may be the result of a single creative process by a designer, multiple mechanisms may be needed to protect the design of that garment. One of those mechanisms—copyright law—historically has presented a significant hurdle to protecting fashion designs. The Supreme Court, however, recently clarified and expanded how copyright law can be leveraged to protect designs, often quickly and relatively inexpensively.
Below is a high-level overview of the various legal forms of protection for the fashion industry and what those legal mechanisms cover.
Last month the United States Patent and Trademark Office ("the Office") announced its cooperation in a Department of Justice investigation into a trademark scam perpetrated by two California men that defrauded about 4,446 people of $1.66 million. Trademark scams have been steadily on the rise over the past few years, which we have previously written about here. The current investigation resulted in the arrest of Artashes Darbinyan and Orbel Hakobyan, both of Glendale, CA, and their guilty pleas to charges of mail fraud and money laundering.
We have written previously about Scholz v. Goudreau, No. 13-CV-10951 (D. Mass.); the case recently went to trial on the parties’ surviving claims, and they are now immersed in post-trial briefing.
Tom Scholz and Barry Goudreau were once bandmates in BOSTON, and since Goudreau left the group in 1981, the two have occasionally litigated the trademark ramifications of his post-BOSTON career. The present dispute mostly arose from promotions tied to other musical acts and events that Goudreau was associated with.
The U.S. Commerce Department recently released a comprehensive report, entitled “Intellectual Property and the U.S. Economy: 2016 Update” (the “Report”). The Report, which was co-authored by the Economics & Statistics Administration and the United States Patent and Trademark Office, builds upon an earlier 2012 report, finding that “IP-intensive industries continue to be a major, integral and growing part of the U.S. economy.” The Report provides a wealth of quantitative information and analysis on the value of trademarks, copyrights, and patents to the U.S. economy. Key findings include:
The public comments have been considered and the Trademark Trial and Appeal Board rule changes proposed in April 2016 and summarized in this blog post have been confirmed with only minor exceptions. The new rules will be effective on January 14, 2017, and will apply to all opposition and cancellation proceedings active on that date or subsequently filed.
Maximizing the protection and value of intellectual property assets is often the cornerstone of a business's success and even survival. In this blog, Nutter's Intellectual Property attorneys provide news updates and practical tips in patent portfolio development, IP litigation, trademarks, copyrights, trade secrets and licensing.