Practical IP | Intellectual Property Attorneys

Are Titles of Creative Works Protectable?

By Danica Mathes on March 22nd, 2012 Posted in Trademarks

You cannot register a trademark for the title, or a portion of a title, of a single creative work (such as a book, a television episode, a film, a live theatre production, or a phonograph record). [Interestingly, computer software and computer games are not treated as single creative works.]

However, if the title has been used in connection with a series of creative works (e.g., a series of books, the second edition of a book with significant changes, a periodically issued magazine, a television or movie series, a series of live performances [such as by a musical artist], educational seminars, or a continuing radio program), it may constitute a mark for either entertainment services or educational services.

If you currently have a single creative work, but you plan to create a series of creative works using the same title in the near future, you may file an intent-to-use trademark application for the title and obtain a registration once you have more than one work using the title.

A portion of a title of a creative work is registrable only if (1) it creates a separate commercial impression apart from the complete title (as indicated by the size, type font, color, and any separation between the mark and the rest of the title); (2) it is used on series of works; and (3) it is promoted or recognized as a mark for the series. For example, the mark THE LITTLE ENGINE used in connection with a series of books, such as “THE LITTLE ENGINE THAT WENT TO THE FAIR” and “THE LITTLE ENGINE GOES TO SCHOOL,” would be registrable if THE LITTLE ENGINE was displayed prominently on the books and the applicant or others promoted THE LITTLE ENGINE as a book series title.

However, you cannot register a trademark with a changeable or “phantom” element, such as _____ FOR DUMMIES, where the blank line represents a word, geographic location, alpha-numeric designation, date or year, or other component that is subject to change. Such applications will be refused on the ground that the application seeks registration of more than one mark. (Note: The owners for the FOR DUMMIES series of books were able to obtain trademark registrations for the FOR DUMMIES portion of the title, but they were not able to obtain trademark registrations for _____ FOR DUMMIES.)

Article One Partners Pioneers New Type of Patent Search

By Craig J. Cox on March 6th, 2012 Posted in In the News, IP Ownership, Patents

Tech Crunch is reporting that Article One Partners recently raised seven million dollars in venture funding for its new approach to patent searching. Tapping into a community that is frustrated with what it considers to be overly broad patents and the limitations of traditional patent searching Article One Partners has become one of the world’s largest patent research communities. Article One conducts its patents searches by distributing requests for prior art research to more than one million scientists and technologists using a global, human powered search engine. Article One passes requests from individuals or corporations to find prior art relevant to a particular patent to its community of patent experts who take those requests and return the most relevant prior art. Article One’s, the idea is to leverage its 18,000-plus scientists and technologists to deliver obscure and hard-to-find patent and IP research to its clients.

The community is incentivized by monetary rewards. Researchers can earn between $5,000 and $50,000 for the return of applicable prior art. Article One also offers $100 prizes for the most valuable submissions on each project, and allows researchers to participate in its profit-sharing program by earning points based on their involvement and activity in projects on the site.

More information can be found at www.articleonepartners.com.

New Proposed Fees for Post Issuance Proceedings Announced by the Patent Office.

By Craig J. Cox on February 9th, 2012 Posted in In the News, Patents

The Patent Office has recently released its proposed fee schedule for the post issuance proceedings, which includes Ex Parte Reexamination, Inter Partes Review, and the new Post Grant Review process. Each has increased substantially over the previous fees for Ex Parte Reexamination and Inter Partes Reexamination.

The filing fees for Inter Partes Review are proposed to be $27,200 to review up to 20 claims, $34,000 to review 21 to 30 claims, $40,800 to review 31 to 40 claims, $54,400 to review 41 to 50 claims, $68,000 to review 51 to 60 claims, and an additional $27,200 for each additional group of 10 claims. The new fees represent a substantial increase over the existing fee for Inter Partes Reexamination of $2520.

Fees for Ex Parte Reexamination are proposed to be raised from the current fee of $2520 to $17,760.

The fees for the new Post Grant Review Process are proposed to be $35,800 for up to 20 claims, $44,750 to review 21 to 30 claims, $53,700 to review 31 to 40 claims, $71,600 to review 41 to 50 claims, $89,500 to review 51 to 60 claims, and an additional $35,800 for each additional group of 10 claims.

It will be interesting to see if the new fees have an effect on the filing rates for post issuance review.

How to Register a Trademark

By Danica Mathes on February 8th, 2012 Posted in IP Ownership, PRACTICAL-IP Tips, Trademarks

1 – SELECT YOUR MARK

Choosing a name for your product or service may not be as easy as it seems. Click here for more information about how to select a strong mark.

2 – CONDUCT A SEARCH

Once you have a mark selected, a preliminary trademark search should be conducted to determine whether there are identical or similar marks already registered. In case the preliminary search uncovers an existing registration that could preclude registration of your mark, you may want to have a back-up mark (or two) selected just in case.

Depending on the results of the preliminary search (which usually only covers marks filed or registered with the U.S. Patent and Trademark Office), you may want to have a more comprehensive search performed to review all federal and state trademark records, common law sources, domain name registrations, web results, and business names to be as certain as possible that your mark is available for your use and registration throughout the United States.

3 – FILE AN APPLICATION

Description of Goods/Services – When specifying the goods and/or services to be filed in connection with your trademark application, use clear, concise terms, i.e., common commercial names and language that the general public easily understands. Once the application is filed, you can clarify or limit the goods/services; however, you may not expand or broaden the identification of goods/services. If based on use in commerce, you must already be using the mark in commerce on or in connection with all the goods and/or services listed. If based on intent to use, you must have a bona fide intention to use the mark in commerce on or in connection with all the listed goods and/or services.

Actual Use - If you are currently using your mark on goods or services in interstate commerce. For goods, “interstate commerce” involves sending the goods across state (or country) lines with the mark displayed on the goods or the packaging for the goods. With services, “interstate commerce” involves using or displaying the mark in connection with selling, advertising or offering a service to those in another state (or country) or rendering a service which affects interstate commerce (e.g. restaurants, gas stations, hotels, etc.).

In order to file an application based on you, you must submit the dates of first use (the date you first used the mark anywhere and the date you first used the mark in commerce) and a specimen showing use of the mark in connection with the goods or services. Specimens for goods include labels, tags, packaging, or containers for the goods, a display associated with the goods, or a photograph of the goods that shows use of the mark on the goods. For services, specimens may be website screenshots, magazine advertisements, brochures, a sign, a business card or stationery, or a photograph showing the mark as used in rendering or advertising the services.

Intent-to-Use – If you have not yet used the mark, but plan to do so in the near future, you may file an application based on intent to use. Although an Intent-to-Use application will go through the same review process as an Actual Use application, a registration will not issue until a specimen showing actual use has been filed with the USPTO.

4 – GET EXAMINED

After an application is filed, it will be assigned to an Examining Attorney at the USPTO. If the Examining Attorney determines that the mark is suitable for registration, the application will be approved for publication.

If the Examining Attorney determines that the application is not suitable for registration, the Examining Attorney will issue an Office Action detailing the reasons the application was initially refused. In order to maintain the application, an applicant must submit a Response to the Office Action within six months. If the Response is acceptable to the Examining Attorney, the application will be approved for publication.

5 – GET PUBLISHED

Once an application is approved for publication, the applicant will receive a Notice of Publication indicating when the mark will be published in the Trademark Official Gazette. Third parties will have thirty (30) days from the date of publication to oppose registration of the mark.

6 – GET ALLOWED

If an Intent-To-Use application is published and is not opposed, the USPTO will issue a Notice of Allowance for the application. Within six (6) months after the application is Allowed, you must file (1) a Statement of Use or (2) a Request for an Extension of Time to File a Statement of Use. A Statement of Use consists of the dates of first use and a specimen showing use of the mark in connection with the goods or services. You may file up to five (5) six-month Extensions, providing up to 36 months of protection from the date the application is Allowed before use is required. If no Statement of Use or Extension Request is filed by the deadline, the application will be abandoned.

7 – GET REGISTERED

If an Actual Use application is published and is not opposed, or a Statement of Use is filed for an Allowed application, then the USPTO will issue a Registration Certificate for the mark.

8 – MAINTAIN YOUR REGISTRATION

Declaration of Use and Incontestability – Between the fifth and sixth years after the date of registration, a Declaration of Use or a Declaration of Use and Incontestability must be filed with the USPTO to prove that the mark is still in use. Specimens of use must be submitted with these Declarations. Specimens must match mark as shown on registration certificate.

Declaration of Use and Renewal – Prior to each ten (10) year anniversary of the date of registration, a Declaration or Use and Renewal Application must be filed with current specimens. Specimens must match mark as shown on registration certificate.

NOTE: INTERNATIONAL MARKS – Trademarks registered with the USPTO are protected in the United States only. However, if you are using or plan to use the mark in other countries, it is highly advisable to register your marks in those countries as well. As the owner of a trademark application pending before the USPTO, or of a registration issued by the USPTO, you may be able to seek protection in any of the countries that have joined the Madrid Protocol by filing a single application, which can be must less expensive than filing in each country individually. Certain other countries also recognize a United States registration as a basis for filing an application to register a mark in those countries under international treaties. Furthermore, a U.S. trademark applicant may be entitled to file corresponding foreign trademark applications based upon its U.S. application. Any such application must be filed within six (6) months of the U.S. filing date in order to claim priority from such earlier date. Foreign applications filed after this date take the actual date on which they are filed.

Public Domain Works Can Be Granted Copyright Protection Retroactively

By Craig J. Cox on January 31st, 2012 Posted in Copyrights, In the News, IP Ownership

In the recent Supreme Court case Golan v. Holder, No. 10-545 issued January 18, 2012, the Court found that Congress can grant copyright protection to material that was previously in the public domain. The case stems from a provision on the Uruguay Round Agreements Act that gave works enjoying copyright protection abroad the same full term of protection available to U. S. works even if those works were previously considered to be in the public domain in the United States.

The petitions argued that Congress lacked authority under the Copyright Clause of the Constitution to enact the law, and also argued that First Amendment prohibited the restoration of copyright protection to a public work. The Court found no barrier to the extension of copyright protection to authors whose writings, for whatever reason, are in the public domain either in the Constitution or in Court precedent. The Court also found the First Amendment argument to be unpersuasive. The court, citing precedent, recognized that some restriction on expression is the inherent and intended effect of every grant of copyright and that such restriction was not inconsistent with the First Amendment.

While it might seem unfair to change the copyright rules where people had been relying on the public domain status of materials, the Supreme Court has made it clear that Congress has seemingly complete authority to set and change copyright law at its discretion.

Protect IP Act (PIPA) and Stop Online Piracy Act (SOPA) Update

By Danica Mathes on January 20th, 2012 Posted in Copyrights, In the News, Websites, Domain Names & Apps

The Internet is indeed a powerful thing. After well-publicized protests of the Protect IP Act (PIPA) and Stop Online Piracy Act (SOPA) — two bills under Congressional review – both the House and the Senate have decided to table and reconsider the proposed legislation. The Senate has postponed a vote that was schedule for next week regarding the Protect IP Act (PIPA), and the House has put its version of the bill, the Stop Online Piracy Act (SOPA), on hold to attempt to address the issues raised by the protesters.

ICANN Is Now Accepting Applications for New gTLDs (Generic Top Level Domain names)

By Jeffrey S. Lowenstein on January 19th, 2012 Posted in In the News, Trademarks, Websites, Domain Names & Apps

The much anticipated application period for new gTLDs is finally here. Once the new gTLDs are approved, expect to see .dallas, .cowboys, or .mavs join .com, .net and .gov. Under ICANN’s (the Internet Corporation for Assigned Names and Numbers) plan, anyone that has sufficient funds and meets other specific criteria will be able to submit an application for a gTLD to call its own. Consistent with the other current internet crack downs, however, the plan has met great resistance from the Feds. Both the FTC and Commerce Department have asked ICANN to tap the breaks on issuing new gTLDs until the impact and potential abuses the new gTLD system will create have been studied. The FTC forwarded a letter to ICANN last month raising consumer protection issues, including its concerns that the proliferation of new gTLDs will magnify the challenges in hunting down internet fraudsters and the ease with which cyber pirates will be able to create consumer confusion. The FTC recommends some tight controls, including starting with a pilot program. The Commerce Department’s letter focused its concerns on the burden to trademark holders in policing their marks and their perceived need to defensively obtain a limitless number of domain names to protect their marks. Coca-Cola, Ford and more than 160 other major corporations have formed the Coalition for Responsible Internet Domain Oversight (“CRIDO”) to fight ICANN’s new program.

Websites Shut Down to Protest the Protect IP Act (PIPA) and Stop Online Piracy Act (SOPA)

By Danica Mathes on January 18th, 2012 Posted in Copyrights, In the News, Websites, Domain Names & Apps

Many internet sites (such as Wikipedia) went black today to protest two bills before Congress known as the Protect IP Act (PIPA) in the Senate and the Stop Online Piracy Act (SOPA) in the House.

The Protect IP Act establishes a system for taking down websites that the Department of Justice (“DoJ”) determines to be “dedicated to infringing activities.” The DoJ or the copyright owner would be able to commence a legal action against the alleged infringer and the DoJ would be allowed to demand that search engines, social networking sites and domain name services block access to the targeted site. In some cases, action could be taken to block sites without first allowing the alleged infringer to defend themselves in court.

The Stop Online Piracy Act bill would establish a system for taking down websites that the DoJ determines to be dedicated to copyright infringement. The DoJ or the copyright owner would be able to commence a legal action against any site they deem to have “only limited purpose or use other than infringement,” and the DoJ would be allowed to demand that search engines, social networking sites and domain name services block access to the targeted site. It would also make unauthorized web streaming of copyrighted content a felony with a possible penalty up to five years in prison. This bill combines two separate Senate bills — S.968 and S.978 — into one big House bill.

Although the Digital Millennium Copyright Act (DMCA), enacted in 1998, sets out online copyright infringement enforcement measures, it doesn’t provide a mechanism to effectively handle overseas infringement. SOPA/PIPA are attempting to remedy this issue by targeting overseas sites that post pirated (aka, stolen) content on the web.

Under the DMCA, copyright owners who believe their works are being infringed can send a “takedown notice” to the Internet Service Provider (ISP) hosting the content, the ISPs are provided a safe harbor for content uploaded by their users so long as they remove infringing content within a reasonable time, and the party who uploaded the allegedly infringing content is notified and has an opportunity to respond and demonstrate that the content does not infringe.

However, under SOPA/PIPA, once a “payment or advertising network operator” receives a notice from a party claiming that an “Internet site is dedicated to theft of U.S. property,” the network operator is required to cut off services to the target site within five days. Additionally, these network operators could be liable for content that their users upload. Even though filing false notifications is a crime, the process would put the burden of proof — and the legal cost of fighting a false allegation — on the accused.

While most agree that protecting content is a noble goal, many in the industry believe these bills, with their broad language, would censor the web and impose harmful regulations on American business. What are your thoughts on SOPA/PIPA? Do you think temporarily disabling these websites was an effective way to protest these bills?

Beware Unsolicited Trademark Services and Fee Requests

By Danica Mathes on January 5th, 2012 Posted in PRACTICAL-IP Tips, Trademarks

When a United States or foreign trademark application is filed, trademark owners are likely to receive unsolicited communications from U.S. and foreign companies requesting fees for trademark-related services, such as trademark monitoring and document filing. Although these documents and invoices often look “official” and contain customer-specific information (such as the trademark serial or registration number and owner name), companies who offer these services are not affiliated or associated with the United States Patent and Trademark Office (“USPTO”) or any other federal agency.

Unless the communication comes directly from (1) the USPTO, (2) a foreign trademark agency equivalent, or (3) your trademark attorney, these notices and invoices are likely unsolicited third party advertisements for services that you may not need or that may not provide you with adequate protection for your trademarks. The USPTO and the International Bureau have issued warnings related to these unsolicited requests for payment of fees. You may file a complaint about such solicitations with the Federal Trade Commission.

If you are interested in implementing a trademark monitoring service for your trademarks or filing marks in one or more foreign countries, you should contact your trademark attorney to discuss your options in more detail.

Internet Antipiracy Bill, SOPA, Debated by House Judiciary Committee

By Craig J. Cox on December 16th, 2011 Posted in Copyrights, In the News, Websites, Domain Names & Apps

The House Judiciary Committee is currently debating a new Internet antipiracy law titled the Stop Online Piracy Act (SOPA). The Senate has already passed its version of the bill titled the Protect Intellectual Property Act (PIPA). SOPA would allow copyright holders and the Justice Department to take down websites that “engage in, enable, or facilitate” copyright infringement. The Digital Millennium Copyright Act (DMCA) already allows copyright holders to get the hosting company to take down infringing material from a website. SOPA, however, goes even further and allow copyright holders and/or the Justice Department to take down entire domains and to confiscate URLs of sites accused of hosting material that infringes a copyright. Additionally, advertisers and payment companies could be barred from doing business with the offending sites, and search engines could be ordered to stop listing the accused sites.

Copyright owners, which include the music and film industries among others, say SOPA is needed to curb Internet piracy of copyrighted material. Opponents of the proposed law, which include all the hosting and search companies, including Google, as well as tech companies and even prominent law professors, have been very vocal in their opposition, and claim that SOPA, and its counterpart PIPA, will infringe Internet user’s free speech rights and fundamentally break the Internet.