cache valley businesses receive utah genius awards - again!

the 2015 utah genius awards were held on may 6, 2015 at the little america hotel in salt lake city.  utah genius is sponsored by bateman ip, the utah governor’s office of economic development, salt lake chamber, and others.  awards are made to individuals and companies who drive utah’s creative economy as indicated by successful patent issuance and federal trademark registration.

as in previous years, i was very happy to see logan, utah-area companiesthat I represent as a patent and trademark attorneyreceive awards.  malouf (cvb inc) placed third (3rd) and simplified business group (dba rent dynamics and summit technology) placed twelfth (12th) in the state of utah for overall trademark registration for the year 2014.  significantly, this year represents the third consecutive year that Malouf has received a utah genius award (previously placing 11th and 10th).  also, icon and cache valley residents wade fallin (venture md) and William dalebout (icon) received awards in the patent category.       

the vibrancy, economic contribution, and strategic thinking of our cache valley and logan-area businesses are evident through this consistent recognition for intellectual property achievements.  congratulations to the award winners!

click here to check out the utah genius awards, and here to see the post from 2014. 

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trademark power on third-party platforms

sales through amazon.com and similar platforms are very important for many businesses.  but, these platforms also come with their own unique, competitive environments where tricky competitors can poach a business's sales in many different ways.  for example, they can appropriate existing listings and convey counterfeit products.  they can use identical or similar brand names.  they can even supply inferior products which then become associated with their target. 

these games are unlawful as unfair competition and/or trademark infringement.  they negatively impact not just legitimate sellers and their customers, but also platforms.  specifically, infringers generate poor buyer experiences, bad debt from customer claims, and chargebacks.  they also threaten the platform's reputation and brand.  moreover, platforms face legal risk in the form of contributory trademark infringement liability if they continue to supply services to known infringers. 

yet, platforms can be frustratingly passive or slow in noticing and taking action against wrongful activity.  significantly, companies can beat unfair competition and trademark infringement on third-party online platforms with a little planning and effort. 

first, companies should be vigilant in performing their own platform monitoring to detect infringers.  second, companies should familiarize themselves with platform policies, procedures, and enforcement personnel in order to make effective complaints when problems on the platform are identified.  third, and most importantly, any complaint to a platform should point to a proper trademark registration.  registrations catalyze platform action because they provide clear and concise evidence of perfected intellectual property rights.  in contrast, where there is no trademark registration, a complainant must rely on common law rights.  these provide the platform less clarity and excuses for inaction.

when these steps are taken, a business can obtain quick and decisive platform action against alleged infringers without resorting to any legal action.  successful complaints can persuade the platform to remove the infringer's listing—or in egregious cases, entire accounts—within just hours of notice.  and that adds numbers to the business's bottom line.     

utahtrademarkattorney

thanksgiving 2.0

i love thanksgiving.  food, family, and gratitude, not to mention deep history and tradition.  but, even thanksgiving can be innovated.  so, this month’s post is dedicated to the brave men and women who work around the clock to patent the technology behind thanksgiving 2.0.

first place goes to what I have dubbed "the turkey drone" (u.s. patent number 8,741,374; granted just this year).  its actual title is “device and method to simulate cooking stuffing in a bird.”  but, don't be fooled—this sucker is basically engineered to be the drone version of a dead turkey carcass’ complicated interior tunneling.  the sky appears to be the limit here.  to touch on just some of the many highlights:  [s]tuffing cooked in accordance with . . . the invention will have the appearance of a 'log', which holds its shape . . . .”  are you kidding me?!  log stuffing?!  where have you been my whole life?  beam me up scotty!  moreover, “[t]he invention . . . provides all the benefits of cooked-in-the-bird stuffing but in less time and without the safety concerns of bacterial contamination.”  this is robot turkey insides folks:  bigger, better, faster, and sanitarier.  dig into a steaming loaf from your contamination-free, "gut-o-matic" today!                  

 
 

second place goes to "the pie shoveler" (u.s. patent number 7,102,111; "multi-purpose food-serving apparatus" or "mpfsa").  ok, this thing is drawn for pizza, but the patent also specifies that it is just as appropriate for thanksgiving pie (probably after your log stuffing, see above).  essentially, it provides critical support of the pie as it journeys into your mouth.  then it conveniently folds to get out of your eating machinery's way, as you shovel deeper into the pie environment.  think of it as a disposable rocket booster for launching the pie into your digestive space.  genius.  from the dashed lines in figure 2, you can also see that innovative "eye-on-the-pie" technology is incorporated into the patent.  and bonus feature:  this is no kidding—it multi-purposes as a sail for a tiny boat!  (see figure 36).  so have some pie, then sail your tiny thanksgiving friends on the ocean blue.  spectacular!  patented! 

pieshoveler1

honorable mention goes to "drumstick car" u.s. patent publication number 2007/0113446 ("apparatus for decorating vehicles").  unfortunately, it didn't meet patentability requirements, so it never matured into a patent.  but it burned brightly (for a while) as a patent application.  hard-core thanksgiving fans don't even blink at the idea of turning their car or truck into a giant roving tom via an oversized, attachable drumstick ("decoration"), complete with a "happy thanksgiving" tattoo. 

 
 

and just when it couldn't possibly get any better, you find out just how super versatile this technology can be.  claim 18 of the patent reads that the decoration can be "one from the group consisting of a reindeer antler, a devil horn, a longhorn cattle horn, a candy cane, a cat ear, a bunny ear, a leprechaun ear, a turkey drumstick, a beach ball, a surfboard, and mouse ears."  outstanding! 

have a happy thanksgiving!

the ins and outs of patent marking

whether you are a patent owner, or exist in an industry where competitors own patents, it is helpful to know the ins and outs of patent marking.

patent marking is the practice of notifying others that a product is patented (or patent pending) by actually inscribing it on the product.  for products with issued patents, this is properly done by inscribing, for example, "Patent 1,234,567" or "Pat. 1,234,567" (whatever the patent number is) on the actual product.  putting the patent number on the actual product is important—only in rare exceptions should the marking be done on the packaging instead of the actual product, although it can always be additionally done on packaging.  for products with patents pending (e.g., provisional patent applications), "Pat. Pending" or "Patent Pending" is written. 

one newish development in proper patent marking provides a considerable amount of flexibility to patent owners and is known as "virtual marking."  in virtual marking, "Patent" or "Pat." is written on the product, followed by an internet address where one can find both the product and the full patent number for it. 

beyond providing deterrence to would-be infringers, patent marking serves a vital function to patent owners.  specifically, under federal law, damages for infringement start upon actual or constructive notice to the infringer.  proper patent marking provides constructive notice under the law.  where patent owners fail to implement proper patent marking (i.e. constructive notice), they lose both leverage and money because the damages clock will most likely start ticking against infringers when the patent owner's attorney provides actual notice through a cease and desist letter.  this is typically after (and sometimes long after) an infringer has seen the product. 

importantly, businesses should be careful to avoid false marking—saying something is patented when it is not.  this can give rise to liability. 

so, if you are not a patent owner, but exist in an industry where competitors own patents, can you usually tell whether a product is patented simply by examining it?  unfortunately, no.  despite federal law on patent marking, many patent owners don't do it properly.  and some engage in false marking, giving the impression that something is patented even when it's not.  so, the best way to determine whether a product is patented is to have a patent attorney conduct a patent search.    

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teamwork to optimize brand development

developing a brand is an important activity for many companies.  it does not often involve rocket science, but there are important things to consider.  in particular, whether the company is a one man shop or large enough to have its own internal marketing department, brand development can often benefit from the cooperation of an interdisciplinary team.  such a team may include:  (1) a marketer, who will concept a brand, then help consumers see and understand the product associated with it; and (2) a trademark attorney who will help obtain, maintain, and enforce brand exclusivity, typically through trademark registration.    

one opportunity for synergy in such a team occurs in the early steps of selecting the brand or trademark.  initially, the trademark attorney can help assess the liability risk of adopting a particular brand before the company gets too committed to it.  also, the marketer and trademark attorney can work together to select the best type of mark.  more specifically, the marketer may want to use a descriptive mark---one that describes the product or some feature of it---because it is easier to market.  however, exclusivity for this type of mark can be difficult to obtain and enforce, and this can hamstring later initiatives.  so, the trademark attorney can help the marketer assess whether exclusivity really is important for the current and future business objectives of the brand, or whether it should defer to other goals.  there are certain situations where the descriptive nature of the mark is clearly more important than obtaining exclusivity.  on the other hand, if exclusivity is a component of the business strategy, the trademark attorney can work with the marketer to determine whether a more distinctive type of mark---like a suggestive mark, that requires a little more imagination, thought, or perception by the consumer in order to reach a conclusion as to the nature of the goods---can be used.

another opportunity for cooperation occurs after the brand has been selected and the company rolls out its various marketing campaigns.  the marketer is often required to think outside of the box and to reinvent, refresh, or vary a brand in advertising.  at the same time, the trademark attorney knows that maintaining brand exclusivity hinges on the company using the brand in a fairly consistent or uniform fashion.  so, when the marketer contemplates presenting the brand differently, the marketer and the trademark attorney can collaborate in order to identify boundaries and balance the short term goals of the current marketing initiative with the long term goals of developing brand equity.  some trademark attorneys compare this balancing act to having a personal savings account:  while you may make occasional withdrawals from the savings account to have some fun or conduct necessary activities, the overall goal is typically to grow the account over time. 

in short, close cooperation between a marketer and a trademark attorney can help a company optimize its brand development activities to achieve the broadest or most important set of business objectives. 

this post is based, in part, on an article by wipo magazine, from the world intellectual property organization (wipo) entitled " ip and business:  the synergy of trademarks and marketing", june 2006.  a copy of this article may be found here

 
logan utah trademark attorney
 

i believe that we should learn from usu

i’m making some observations on utah state university's (usu) trademark issue with san diego state university (sdsu).  in case you’ve missed it, you can catch national, state, and local news here, here, here, and here.  maybe most importantly, the actual chant thingy is here.  (turn your speakers up!) 

basically, the universities are posturing over who will control the rights to the phrase “i believe that we will win!” on merchandise like athletic apparel.  sdsu is in the clear lead with a ripened federal trademark application.  on the other hand, usu has a lesser trademark registration with the state of utah. 

in commenting, i’ll acknowledge up front that there may be more to this story than is in the papers and that i may be unfairly armchair quarterbacking.  i should also say that i’m avoiding the academic topic of whether a phrase like this should be protectable in the first place.  i’m more concerned about the fundamentals of establishing market position. 

observation #1:  don’t underestimate your competition.  assuming correct reporting, usu was “surprised” that someone else would try to protect the phrase through federal trademark application.  not good.  as a general rule, it should not come as a surprise that competitors (heck, even regular folks!) want to outpace you.  things are no different with respect to trademark rights.  don’t underestimate your competition. 

observation #2:  don’t unnecessarily limit yourself.  referring to the situation, one usu spokesperson states their strategic planning was guided by the thinking that “[w]e didn’t need the entire country, just the closest geographic base.”  another states that “we did not want to prevent others from using [the trademark].”  i totally disagree.  you should never limit (let alone announce limiting) the market potential for your product and branding.  aim high and protect accordingly.  significantly, less ambitious state (as opposed to federal) trademark registration has extremely limited effectiveness.  moreover, perfecting trademark rights through federal application and registration does not prevent you from letting others use your trademark if that is what you want.  to the contrary, federal registration and subsequent licensing enable you to protect and control other users.  here, usu seems to have disregarded its potential licensees.   

observation #3:  believe in preventative medicine first.  when it comes to trademark protection, early effort pays huge dividends.  in particular, filing for and acquiring a federal trademark registration can cost under $2,000.  in contrast, reacting to a problem and having to oppose someone else’s federal trademark application can cost tens, and in rare cases, hundreds of thousands of dollars.  here, usu may still be able to avoid a protracted and costly opposition by entering into coexistence negotiations with sdsu.  but, usu’s bargaining position is relatively weak, for the reasons set out in observation #2 above.               

i’m an aggie and a believer.  so, i’m hopeful that a miracle may actually come from usu’s faith (the herald journal’s article is titled:  “usu believes that it will win right to keep using stadium chant on merchandise.”)  in the meantime, these types of examples highlight avoidable problems that i wouldn’t wish my clients to experience. 

logan utah trademark attorney

utah joins the war against patent trolls

if trolls are bad—eating billy goats and terrorizing the kiddies—patent trolls may be even worse according to popular opinion.  a patent troll is generally defined as an entity that does not sell the product behind its patent; rather, it extracts licensing fees and/or infringement damages from the unsuspecting (boo!  we hate trolls!).  this year, congress launched an opening salvo against patent trolls with the proposed “innovation act” (h.r. 3309).  the act would require plaintiffs asserting patent infringement to be very specific and detailed in alleging and proving their claims and would make them pay for a defendant’s legal costs in the event of an adverse judgement. 

interestingly, there is a debate in the small business community as to whether the act would actually help or hurt small business.  intel, google, and microsoft and other tech biggies were among early proponents.  moreover, the national small business association (nsba) opposes the bill.  it argues that four in ten small businesses sell or license patents, whereas only one in ten are ever threatened with a lawsuit.    

regardless, the innovation act is now stalled in the senate.  so, the states have entered the fray.  over half have proposed or passed their own bills aimed at trolls.  significantly, in april, utah’s governor signed into law h.b. 117, entitled “patent infringement amendments.”  this law affects both patent holders and their targets.   

the law prohibits “bad faith” demand letters that assert patent infringement.  it states that any written communication (e-mail, etc.) to another asserting patent infringement must contain certain kinds of information and must omit other kinds information.  furthermore, a patent owner who asserts patent infringement against a target, but who does not comply, could find itself in the "troll" category.  this may result in actual and punitive damages and responsibility for the target’s legal defense costs.  in certain circumstances, a court may actually require a patent owner asserting infringement to first post a bond in the amount of the target’s prospective legal defense fees.  finally, there is also a provision that allows the state's attorney general to investigate and initiate enforcement actions against “bad faith” demands.

so, patent holders asserting infringement, beware!  if you are not careful, you may find yourself among the trolls (boo!).  on the other hand, if you are a target threatened by a vague claim of patent infringement, take heart; you have a new tool to fight the trolls!

illustration by john burgoyne, inc.com, 2013.

illustration by john burgoyne, inc.com, 2013.

where the rubber meets the road: nike patents, market value, and you

on first blush, if you run a small business, it may be hard to relate to a company like nike.  few companies are that big.  but, nike didn't appear magically overnight either.  it grew from the mid-1970s.  along the way it adopted successful strategies that can provide lessons.  one strategy was recently revealed by macquarie group limited.

macquarie is a global investment banking and financial services firm ($7 billion annual revenue).  it dissected nike’s company value and upgraded nike stock from “neutral” to “outperform.”  the main factor?  patents.  to quote macquarie:

"for companies with large patent portfolios, their return on equity (roe)* or profit over equity value improve substantially going forward despite short-term research spending impact. . . . these companies also tend to outperform on a stock return basis." 

[*roe measures a companies’s efficiency at generating profits from every unit of shareholders’ equity – it basically tells shareholders how effectively their money is being spent.]  

c'mon, we say...large patent portfolios for shoes?!  shoe technology is not silicon valley-type, bleeding edge, rocket science stuff that is worth patents, is it?  nike rejects that attitude and just does it.  specifically, it has been doubling down on its patent strategy for over 15 years.  in fact, the total number of patents granted to nike has risen an average of 14% every year since the turn of the century.  get this–in 2013 alone, nike was granted a mind-blowing 540 patents by the united states patent and trademark office (uspto).  540.  about 270 or 50% of these were just for shoes.  (based on current uspto allowance rates, nike may have had to file up to 1100 u.s. patent applications per year to get to that number.)

the result?  against the backdrop of this patent strategy, nike has achieved a five-year average roe of 21%.  that is a high number.  it indicates execution on capital.  investors and analysts like macquarie love it.

large patent portfolios may be out of reach for smaller companies.  but, from this nike case study, it is difficult to ignore the direct relevance of patents to company value.  perhaps more importantly, if you are a challenger brand and have a nike-like competitor in your industry cranking out patents, you will have to play the patent game to find a toe hold in the market.

adapted from "Nike was awarded 540 patents in 2013", marketwatch, april 17, 2014

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cache valley businesses in utah genius awards

the 2014 utah genius awards were held on wednesday, april 2 at the little america hotel in salt lake city.  utah genius is sponsored by bateman ip, utah governor’s office of economic development, utah science and technology research initiative (ustar), ksl, and others.  awards are made to individuals and companies who drive utah’s creative economy as indicated by successful patent issuance and federal trademark registration.

i was very happy to see two logan, utah-area companies—which i represent as a patent and trademark attorney—receive awards.  malouf fine linens (cvb inc) placed tenth (10th) and camp chef placed fourth (4th) in overall federal trademark registration for the year 2013.  additionally, cache valley resident wade fallin (imds founder and current venturemd ceo) received an award in the patent category.

these awards demonstrate that cache valley’s businesses are on par with the most successful utah companies when it comes to product innovation and strategic branding.  congratulations to the award winners! 

click here for the utah genius awards link.

the utah genius awards are given to individuals and companies who drive utah's creative economy

the utah genius awards are given to individuals and companies who drive utah's creative economy

considering the design patent

the question I get asked most often is “can I patent this?”  i usually respond with “why do you want to patent it?”  it makes a big difference.  business objectives drive patent strategies, and there are a lot of strategies to choose from.  one involves the design patent.

unlike utility patents, which protect specific processes or components and their functions, design patents protect the design or appearance of a product.  design patents are not as prevalent as utility patents, but are becoming more popular because they offer certain advantages when compared to utility patents. 

first, the patent process costs much less for design patents than for utility patents.  patent attorney and uspto filing fees are quite a bit smaller.  also, once issued (and unlike utility patents) design patents don’t require ongoing and periodic maintenance fees.  second, applications have a higher chance of becoming patents with the design versus utility category.  third, uspto examination is much quicker for design patent applications than for utility patent applications.

design patent applications also offer a few intangible benefits.  they allow you to market your product as “patent pending”, providing a level of transactional support for investors, partners, and customers, as well as signaled deterrence against competitors.  they also meet the requirements of patent law’s new “first-to-file” rule, which effectively grants rights in a product to the first person to file for them.      

as with any strategy, these advantages are offset by certain limitations.  while a design patent is effective for preventing copycats, the protection it offers becomes less as a copier adds differences to his design relative to utility patents.  for design patents, infringement occurs when two designs are substantially similar in overall appearance to an ordinary observer. 

so, design patents can be ideal for relatively simple, manufactured products where the applicant wants to: (1) portray the product as “patent pending”; (2) come quickly into the market with narrowly defined protections that would prevent copycats; and (3) keep costs down.

for design patents, the parameters of protection are defined by figures like this from the uspto design manual.  careful drafting which incorporates some features while omitting others is critical to get the most protection possible.

for design patents, the parameters of protection are defined by figures like this from the uspto design manual.  careful drafting which incorporates some features while omitting others is critical to get the most protection possible.

the top ten reasons why you should care about trademarks

trademarks make it easy for consumers to find you.  they help you distinguish your products from those of competitors and identify you as the source.  they indicate a consistent level of quality for your products and services.

trademarks help prevent marketplace confusion.  they protect the consuming public by preventing confusion as to the source of goods or services. 

trademarks are among the most economically efficient communication tools.  they reduce the costs of decision-making by allowing consumers to rapidly select the desired product from among competitive offerings. 

trademarks are your most enduring assets.  they are one of the few assets that can provide you with a long-term competitive advantage.  they appreciate over time, and are leverageable, allowing you to expand into new product lines.

trademarks support stronger sales volumes, stronger margins, and can provide price maintenance legally. 

trademarks can make hiring easier.  people prefer working for well-known and well-regarded brands and their companies. 

trademarks can be a bargain.  combined government and attorney fees can be $1,000 and under, and only periodic renewal fees due every 5 to 6 years thereafter.  as property assets, they can be appraised, bought and sold, collateralized to secure loans, and licensed.       

trademarks are a very flexible and creative form of intellectual property protection.  they can be visual, auditory, olfactory, taste, or tactile.

trademarks open the way for businesses to most effectively utilize the internet.  they are often the “top of mind” address for an internet user and can drive traffic.   

trademarks are one of the most effective weapons against unfair competition.  properly protected marks can be wielded as a sword or a shield against competitors.    

adapted from the international trademark association (www.inta.org)

logan utah trademark attorney
 
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introducing project cip

Several years ago I considered coming to Logan from a large, Salt Lake City firm.  Being a younger attorney at the time, and unfamiliar with legal practice in Cache Valley, I sought advice from established Salt Lake-area attorneys.  Many of these advised that practicing in Cache Valley would be considerably career limiting.  My gut said otherwise, and I'm glad that it did.

Since that time, I have been introduced to Cache Valley's diverse community of successful entrepreners and innovators, which are second to none.  I'm continually amazed at what individuals and businesses do here and I'm proud to not only know many of them personally, but to also work alongside them to acheive their business objectives. 

In that spirit, I'm proud to annouce project cip---Cache Valley's new intellectual property legal practice.  project cip assists individuals and businesses with practical intellectual property strategies to create real market value by using tools like trademarks and patents.  invent.  brand.  protect.  project cip.

The accelerators


I’m a fan of the Wall Street Journal-based blog “The Accelerators.”  It is written by various, guest startup founders and executives.  Guests discuss the strategies and challenges involved in creating new businesses and they speak from experience earned in the trenches.  Recently, the topic of intellectual property was discussed.  Here are a few of my favorite exerpts:

    A 21st-century businessperson is a knight too.  His or her top asset, however, is not combat prowess but rather ideas, and what protects those ideas---the armor---is the trademark and patent.  A medieval knight who got cocky would likely be killed.  You get the modern parallel. . . . Making it a priority for your company can be the difference between championing your brand and changing your brand.  Both are labor-intensive; only one is fun.  Michael Chasen, CEO SocialRadar, co-founder Blackboard Inc.

    [F]or most ideas and most founders, your first priority should be making your idea a reality, not filing a patent. . . . do the minimum that you can, like filing provisional patents. . . .  Jyoti Bansal, founder/CEO of AppDynamics

    If you decide that patents make sense for your business, you want to file as soon as possible. . . . the first step in IP protection for any business is registering your company and product name with the USPTO. . . . The bottom line is that startups should work with and experienced IP attorney to develop and implement an IP protection strategy as soon as they have the conviction to build a business and have sufficient proof of demand.  If you wait too long, your costs will rise and your ability to protect your IP will diminish.  Matt Gorniak, co-foundor G2 Crowd

    Whether or not it is wise to invest time and money to apply for a patent, trademark or copyright on your startup’s core intellectual property (IP) assets depends on the nature of the IP itself, your industry and its competitive dynamics and the contribution IP is expected to make towards your startup’s ultimate success. . . . It is critical to have a realistic picture of the true costs of obtaining IP protection in terms of time, money, team distraction and public disclosure.  Only an experienced IP attorney in your field can truly assess these costs.  Lili Balfour, founder/CEO Atelier Advisors

    [A] lack of patents could be a deal breaker at three critical moments:  when you’re raising capital, when you are securing . . . partners and when you’re being acquired. . . . [P]ursue a provisional patent . . . Our patent lawyer helped the company determine the best way to take our complete solution and parse it into . . . applications that would be most strategic to the business.  Lynn LeBlanc, founder/CEO of HotLink

    The money you pay your intellectual property (IP) lawyer should be judiciously spent.  However, the potential costs associated with an IP mishap can be catastrophicJohn Greathouse, Rincon Venture Partners

    Being sued for infringement [by a competitor] is an unfortunate rite of passage for many companies. . . . it usually means that you are consistently and decisively winning customers away from them, they have no ready business response, and they have exhausted any other means of competing with you directly in the marketplace.  Matt Krna, principal SoftBank Capital

Yahoo's rebranding and trademark registration strategy

Market and company dynamics are fluid.  So, businesses often need to tweak logos or rebrand product lines.  This is happening right now at Yahoo.  Yahoo has made the rebranding a marketing event in and of itself by showcasing a different Yahoo logo each day for thirty days until it finally unveils a new logo in September.  This approach is generating media buzz and ensuring that consumer consciousness is keyed in on the change.  Click here to check it out. 

Rebranding and trademark protection overlap.  Typically, a logo tweak or rebrand will also involve one or more new trademark applications to protect the new trademark.  This is so because an existing trademark logo registration only covers the particular design that is the subject of that trademark registration.  Unveiling a new, unprotected design that is loosely based on an old trademark is, rather graphically, called “mutilation” of the old trademark.  The new logo will require a new trademark application and registration to achieve protection. 

One caveat to this need may exist when the logo is mainly comprised of literal elements (such as letters or words) and when those elements are locked up extensively through prior trademark registrations.  Yahoo seems to fall in this camp, as, in the United States alone, it owns over twenty trademark registrations for the word “Yahoo” with an exclamation point at the end.  With that much “alphabet real estate”, Yahoo probably doesn’t need a duplicative logo registration.  Case in point, when I search the United States Patent & Trademark and international intellectual property databases, I can’t find an application for Yahoo’s new, yet to be publicly disclosed, logo.  But, for any number of reasons, Yahoo may yet get one or more trademark applications on file before the public unveiling as part of its rebranding and trademark registration strategy. 
 
If you are considering rebranding, you should talk to a trademark attorney to find a protection strategy that best addresses the risks in your industry and best meets your objectives.

 

Trademark Attorneys Pull Their Weight

From the Law Journal section of the Wall Street Journal, Monday, April 15, 2013:

Trademark applicants represented by attorneys are 50% more likely to earn a stamp of approval from the U.S. Patent and Trademark Office than those who go it alone, according to a new academic study.  The paper's authors crunched 25 years' worth of data released by the U.S. Patent and Trademark Office last year to gauge the importance of having legal counsel.  The study, which is expected to appear later this year in the Stanford Technology Law Review, found that on average, 42% of trademark applications filed by attorney-less applicants ultimately were registered.  Those who retained an attorney had a success rate of 60%.

Is your business ready for “first-to-file” on March 16?


On March 16, 2013, the biggest change in patent law in decades will take effect.  On that day, patent law officially changes from “first-to-invent”---where first inventors are entitled to patent an innovation, to “first-to-file”---where the first to get to the patent office obtains the patent, regardless of whether he or she was the first to invent it.

Small and mid-size businesses will face unique challenges in this new landscape, particularly when competing in industries with larger companies who have bigger intellectual property budgets, and more experience pursuing, obtaining, and enforcing patents. Importantly, several strategies can address or even pre-empt these challenges.

First and foremost, file a provisional patent application for your innovation. Provisional applications are “baby” patent applications. They are inexpensive compared to full-blown patent applications and establish a first filing before the USPTO, allowing you to win the race against competition for good. These applications are placeholders, allowing you one year to market test and determine whether strategic objectives and revenues justify the costs of full-blown patent pursuit.
  
Second, consider “noisy market entry.” Under this strategy, as early as possible, you date and announce innovation in detail through publications, journals, websites, etc.  Although not failsafe, this strategy may block a competitor from getting a patent (due to “prior art”) or allow you to continue use (under “the prior commercial use” defense) even if the competitor obtains a patent. The downside is that full and early public disclosure may alert everyone to your activity before you have had a chance to secure market share. If going public is not a viable option, you should at least make sure to keep internal, detailed and dated records of innovation, as doing so may allow you, in certain and limited circumstances, to continue using the innovation under the prior commercial use defense.

Third, monitor your competition’s patent applications closely. Given the new incentives to rush to the patent office, it will be very important to keep a close eye on what your competition is doing. If another’s application on your innovation can be discovered early enough, there are cost-effective mechanisms to attack it.

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Using a competitor's marks in Google AdWords

For e-commerce, online visibility is critical.  Many online businesses seek it by using Google’s AdWords (or similar programs) to promote their products in internet searches.  Through AdWords, a business can select key terms and pay for sponsored advertising in search results for those terms on a “per-click” basis.  But, what if one of them “happens” to be the trademark of a competitor?  Is it legal to bid for a competitor’s mark as an AdWord, or does that constitute trademark infringement?

The simple answer is:  this is a new, evolving, and unsettled area of law.  So, the activity does entail risk.  But, recent court decisions are ruling that it may be lawful.

As background, it is helpful to understand trademark infringement at a basic level.  Trademark infringement is one’s unlawful use of another’s mark that confuses consumers into looking at, or buying, one’s products.  Such conduct is broadly prohibited by state and federal law.  In order for infringement to occur, there must be a likelihood of consumer confusion.  Likelihood of confusion, in turn, is determined by an analysis of eight or more other factors.  You see that infringement can be a many-layered onion, and I won’t cause tears by going into the details.

But, in 2011, the Ninth Circuit Federal Court of Appeals opened the door on the AdWords issue by reversing a trial court’s entry of a preliminary injunction against Company A for trademark infringement.  (Network Automation v. Advanced Systems Concepts).  Company A was using the trademarks of Company B—an obvious competitor—in Company A’s AdWords.  Although the ruling did not conclusively decide the issue—particularly because it was made in a preliminary injunction context—it did nod towards the practice.  Companies A and B settled after the decision.  I must assume that it was in a manner favorable to Company A.    

Then, in late October 2012, a federal court in the Eastern District of Pennsylvania went further.  (CollegeSource, Inc. v. AcademyOne, Inc.).  It basically found that in an era of increasingly sophisticated Internet advertising, trademark infringement claims fail when they are based on assertions of consumer confusion from the use of another’s trademarks in AdWords.  The court found that confusion is avoided when AdWords advertising doesn’t actually display the competitor’s mark in the result, and when it is set off from the organic search results in a separate, differently colored “sponsored” section.     

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Thanksgiving


I depart from intellectual property on this month’s post to wish you all happy thanksgiving, and to offer a heartfelt “thank you” for your friendship, acquaintance, and business. I don’t recognize my opportunities and blessings enough.  I’m hoping to improve, particularly following a recent experience. 

This month, through the generosity of another, I was gifted travel for a humanitarian mission to a Q’eqchi’ indian village in the rural mountains of Alta Verapaz, Guatemala.  Against the back-drop of a recent, lengthy, and high casualty civil war, as well as rampant land and property dispossession, these families recently banded together to get a loan for a home and land on which to farm.  Annual income ranges from between $200 and $1,000 per household.  This is very little even by third world standards.  For many reasons, even this simple life will be an uphill battle for these people.  Luckily, it is on the radar of some humanitarian organizations, which are imparting sustainable community knowledge and helping out with water supply, a school, and medical care.  Despite challenging circumstances, these folks are extraordinary examples to me of persistence, optimism, doing much with little, sharing notwithstanding scarcity, and finding happiness in the small but important things in life. 

In this season, may we all find thanks, giving, and joy in our blessings and hardships.  We have much to be grateful for.                          

A distinction with a difference: copyright vs. copyright value


We’ve all seen copyright notices like this:  “© 2012 John Doe”.  Copyright law is great in that you aren’t even required to register your work (e.g., book, song, software, design, painting) with the U.S. Copyright Office in order to have protection under the law.  But, when a work is unlawfully copied, the value of that protection often hinges on whether registration took place beforehand. 

Here are a couple of examples to illustrate the point:

Example 1:  John Doe is a designer and makes Design A.  He doesn’t register Design A with the Copyright Office, but he gives the usual notice that he owns the copyright by placing “© 2012 John Doe” on the design.  Then, Acme Bad Company steals Design A and turns a huge profit on it. 

Q:  What is John legally entitled to? 

A:  He is entitled to Acme’s profits plus any losses he incurred as a result of the copying.  He will have to get the work registered first with the Copyright Office before he initiates legal action though. 

Not bad.  But…

Example 2:  John registers Design A with the Copyright Office shortly after completing it.  (He did this either himself for < $100, or he had an attorney help him for < ~$500.)  Acme Bad Company steals Design A and turns a huge profit. 

Q:  What is John legally entitled to? 

A:  Because he registered his work prior to infringement, the value of John’s copyright claim has increased significantly.  He is still entitled to Acme’s profits plus any losses he incurred.  But, significantly, he may elect to instead pursue statutory damages, which are often more valuable.  Statutory damages are between $500 and $20,000 for each work infringed, and up to $150,000 per each work if it can be shown that Acme infringed willfully.  Importantly, the law also authorizes the court to award John the cost of his attorneys’ fees for addressing Acme’s unlawful conduct.

Much better.     
   
So, does it make sense to register your work?  As usual, the answer will depend on a case-by-case basis.  It is very common to see copyrights go unregistered.  But, I typically see regret when registration---with its minimal expense---is delayed or foregone, a work is then copied, and the copyright owner learns the above. 

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Valuing ip and the humble twinkie

Companies often grapple with the question of how to effectively value their investment into perfecting intellectual property rights like trademarks.  Justifiably so; the question is often complex and case-specific.  Any cost-benefit analysis must take into account the company’s broader business and strategic objectives, likely outcomes of applications, etc.  I often assist companies in such analysis.  So, I’m always on the lookout for real life examples of IP valuation because they can be informative and fun. 

We turn to the Twinkie.  Fair disclosure:  on a recent trip, I found a shop with Twinkies wrapped in bacon, and dipped in chocolate.  For some reason, my primitive brain was tempted, but sharper faculties allowed me to abstain.  Been thinking about the Twinkie since.       
Hostess Brands, Inc., filed for Chapter 11 bankruptcy this year.  They are trying to work out kinks to reemerge. In the mean time, the topic of what names like “Twinkie” and “Ding Dong” are worth is a hot one (See “Why Bankruptcy Isn’t a Brand Killer”, CNNMoney).  Private equity firms regularly show up at intellectual property auctions following company bankruptcies to bid on the right to use defunct names.  (The theory is that the value of these names has increased as a result of today’s global and internet economy, coupled with inexpensive, outsourced manufacture.)  As merely one example, the “Polaroid” name was bought in 2009 for $88 million. 

The punchline is that intellectual property assets (trademarks merely being one example) have value---sometimes serious value---independent of hard assets, as has been proven by bankruptcy or liquidation events, and countless other transactions.           
So, where the cream meets the sponge cake, how is intellectual property actually valued?  Several methods may be used, and many are very similar to valuation of real-property assets:

1. Cost approach: Based on the economic principle of substitution. There are several cost approach valuation methods, the most common being the historical cost, replacement cost, and replication cost.
2. Market approach: Based on the economic principle of competition and equilibrium. Provides an indication of the value by comparing the price at which similar property has exchanged between willing buyers and sellers.

3. Income approach: This approach estimates the fair value of intellectual property by discounting the future economic benefits of ownership at an appropriate discount rate.
4. Direct approach: Based on the current value of shares of intellectual property in an Intellectual Property (IP) Share Market.

Yum.
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