Permitting another to use your established trademark, copyrights, patents, trade secrets or general business methods in return for licensing revenues can be an effective way to collaborate on a new business venture.  However, an effective licensing strategy needs to make sure that the Licensee is not misusing your trademark, copyrights, patents, trade secrets or general business methods.  At the same time, the Licensee should be provided sufficient know how, support and freedom to account for the challenges of expanding into a new markets, business channels, and/or product features. 

One of the keys to developing and implementing an effective licensing strategy is drafting, negotiating and enforcing good licensing agreements.  Drafting, negotiating and enforcing a good licensing agreement can be a challenging endeavor.  Working with a good business attorney that can understand your business, and how the licensing strategy fits into your overall business objectives can be crucial to successfully growing your business.  

If you have any concerns or questions relating to your licensing practices or how you can grow your business by developing and implementing a good licensing strategy, then please feel free to contact us.   

These domains contain all the same characters and give off the same commercial impression as “Coke” and “Coca-Cola.”  This is an indication that the domains were acquired to either divert traffic and customers, or to try and sell the domains to the owner of the mark.  See  Mastercard International Corporation Inc., 629 F. Supp.2d 824, 831-32, (N.D. Ill. 2009); Nike Inc., 318 F. Supp.2d 688, 691-2, (N.D. Ill. 2004) and 15 USC 1125 (D) (B) (1).

Moreover, registering multiple sets of domains that are derivatives of another’s trademarks is a venture fraught with significant risk.  Registering multiple domains that violate another’s trademarks is indicative of bad faith, and can result in liability under the Anti-Cyber Squatting provision of the Lanham Act. See Mastercard International Corporation Inc., 629 F. Supp.2d 824, 831-2, (N.D. Ill. 2009); Nike Inc., 318 F. Supp.2d 688, 691-2, (N.D. Ill. 2004) and 15 USC 1125 (D) (B) (i) (VIII). 

If you have any concerns or questions regarding whether or not someone has infringed your trademark rights, is a Cyber Squatter, or whether or not you will infringe the trademark rights of another by acquiring and registering an internet domain; then please feel free to contact me.

Also see: TransUnion Case and MasterCard Case.

An advantage of an asset purchase is that it allows the buyer to be selective in terms of the assets that it wants to acquire from the target company.  Also, the buyer is generally not liable for the seller’s liabilities, unless the asset purchase agreement has such language.  Some disadvantages of an asset purchase are that the bill of sale must be comprehensive enough to ensure that no key assets are overlooked and third party consents will likely be required.  

Some advantages of a stock purchase are that the business identity, licenses, permits can be preserved, and continuity of the business may be maintained.   However, the buyer may be liable for unknown or contingent liabilities, and may be forced to contend with the seller’s minority shareholders. 

 Also, there are variety of employment and intellectual property law considerations that go into structuring a proper purchase or sale of a business. Such as the following:

 a) negotiating key employee agreements and non-competition restrictions;

 b) contending with collective bargaining agreements;

 c) resolving anticipated or outstanding claims by employees;

 d) acquiring the desired intellectual property (business name or marks, copyrights, patents or trade secrets);

 e) restricting the other party from using the intellectual property (business name or marks, copyrights, patents or trade secrets); and    

 f) recording assignments or transfers of intellectual property (business name or marks, copyrights, patents or trade secrets). 

Properly, structuring a purchase or sale of a business can often mean the success or failure of the venture.  If you have any concerns or questions regarding the purchase or sale of a business, then please feel free to contact us.

However, unless a proper assignment or transfer is recorded with the USPTO, a derivative version of a mark owned by a prior company will be the basis of section 2(d) rejection.  Fortunately, the Federal Circuit has stated that if the applicant and the prior company are related companies that qualify as a single source of a good or service, then there is no likelihood of confusing the consumer.  In re Wella A.G., 787 F.2d 1549 (Fed. Cir. 1986). 

An examiners section 2(d) rejection may be overcome by filing an affidavit from the appropriate owner(s) asserting that the prior company and the applicant are related and share unity of control over their trademarks.  Unless there is contradictory evidence, the Examiner will usually accept the affidavit and withdraw the USPTO’s objection to registration of your mark under section 2(d).

Understanding how to properly apply for intellectual property (trademark) rights in the face of a merger, acquisition, sale or reorganization is often crucial to the continued growth of a business enterprise.

However, if the patent was obtained by knowing and willful fraud or the lawsuit is a sham for interfering with competitors’ business relationships, then the patent may be invalid and subject the Plaintiff to an antitrust violation.  Walker Process Equipment, Inc. v. Food Machinery & Chemical Corp., 382 U.S. 172, 177 (1975);  In re Independent Service Organizations Antitrust Litigation, 203 F.3d 1322, 1326 (Fed. Cir. 2000); and Hazelquist v. Guchi Moochie Tackle Co., 2004 U.S. Dist. Lexis 13991 (W.D. Wash. May 12, 2004). 

The risk of an antitrust violation and counterclaim is not limited to sham patent litigation.   Plaintiffs attempting to utilize trademark infringement suits to maintain a monopoly (price control) or restrict competition face a similar risk of an antitrust violation.  In Marketing Displays, Inc. v. TrafFix Devices, Inc., 200 F.3d 929, (6th Cir. 1999), the court permitted an antitrust counterclaim against a plaintiff asserting trade dress infringement after the expiration of patent. 

If the litigation is objectively baseless in the sense that no reasonable litigant could expect success on the merits, then it may be the basis for a antitrust violation.  Professional Real Estate Investments, Inc. , v. Columbia Pictures Industries, Inc. , 508 U.S. 49, 60 (1993).  However, this does not mean that a product’s different qualities cannot be protected simultaneously, or successively by more than one statutory means for protection of intellectual property.  Kohler Co. v. Moen, Inc. , 12 F.2d 632, 638-39, (7th Cir. 1993). 

Understanding the nuances of the scope of intellectual property protection that can be obtained for a product is crucial to your ability to protect your market and your investments.

It used to be that based on Kokkonen you could simply enter a dismissal order with prejudice that allowed the court to retain jurisdiction to enforce the settlement agreement.  However, based on the 7th Circuit’s recent rulings in Lynch, Shapo, and Blue Cross entering such an order will deprive the court of jurisdiction to enforce the settlement agreement. 

In which case, your client may be standing outside the courtroom trying to find a way back in by filing a new lawsuit for a breach of contract.  The other common alternative is to enter a dismissal order without prejudice to allow the court to retain jurisdiction to enforce the settlement agreement. 

Unfortunately, entering such an order may deprive your client of the res judicata effect of a dismissal order that is with prejudice.  In this scenario, your client will be back in the courtroom defending against claims that it believed were resolved, and may have helped fund its opponent’s lawsuit. 

Understanding how the drafting of settlement agreements has changed in light of the US Supreme Court’s decision in Kokkonen and the Seventh Circuit’s decisions in Lynch, Shapo, and Blue Cross is crucial to properly representing your client’s interests. 

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1) an application under section 1 or section 44 must be in English to receive a filing date;

2) if more than one good or item is specified within a particular class of goods or services in section 1 (a) application, then only 1 date of use is required (as long as the corresponding good or item is provided); and

3) the filing of an amendment to allege use does not extend the deadline to respond to an Office Action, an appeal to the Trademark Trial and Appeals Board (“TTAB”) or a Petition to the Director.    

These and other Amendments will have both a substantive and procedural impact on the registration of a trade or service mark.  For the exact language and additional amendments, please see attached: Amendments to Trademark Practice with USPTO

If you have any additional questions or concerns, then please feel free to contact me.

1) the requirement in section 1(a) and 1(b) for the applicant to state the mode or manner in which the mark is to be used or in connection with goods is eliminated;

2) an application based on foreign trademark no longer has to be accompanied by a certificate or certified copy of the foreign registration at the time of filing is eliminated;

3) to revive an application under 12 (b) the applicant must now demonstrate an unintentional delay in filing a untimely response to an Office Action instead of showing an unavoidable delay; and

4) a section 8 affidavit of continued use or excusable nonuse must be filed in the 9^th year of mark’s registration and every ten years thereafter.   Section 9 no longer requires a declaration of continued use or excusable nonuse in a renewal application. Thus, every tenth year, the owner of a registration must file both a §8 affidavit and a §9 renewal application. However, a section §8 affidavit must still be filed between the fifth and sixth year after the date of registration.

For additional changes see:  tlt_summ

However, this raises concerns about shutting down an entire on-line auction site due to a few bad actors or anonymous sellers.  In Tiffany v. E-bay, the court dealt with this scenario and found that E-bay was not liable to Tiffany on its claims of direct trademark infringement, contributory trademark infringement, dilution, unfair competition or false advertising. 

The Court focused on E-bay’s extensive policies for investigating, reporting and removal of infringing or counterfeit goods from its sites.  The Court also went to on to find that the sale of actual Tiffany goods was protected under the nominative fair use defense.  Thus, on-line auctions sites were protected assuming they met their affirmative duty to police the sale of infringing and counterfeit goods. 

This ruling will provide for an increase in the number of on-line auction sites and allow for numerous resell opportunities.  Whether you are the trademark owner, a consumer or an on-line auctioneer, understanding trademark law and how it impacts your business practices or purchasing behavior is crucial to avoiding liability for trademark infringement. 

If you have any concerns or questions regarding these matters, then please feel free to contact us.

Some examples of the requirements of the new rules are illustrated below:

1) All international applications filed under section 1 or 44 of the Trademark Act must be written in English;

2) Domestic Partnerships filing for trademark rights must have the name and citizenship of all general partners;

3) Domestic Joint Ventures filing for trademark rights must have the name and citizenship of all active members of the Joint Venture;

4) If the mark includes a foreign word, then the application must have a English translation for the foreign word; and

5) The application no longer requires a verified statement that the applicant has “adopted and is using the mark shown in the drawing.”  Instead a statement that “the mark is in use in commerce” will be sufficient.

There are several other amendments that may be found here:  http-wwwagstateilus-pressroom-2009_03-20090305

Should you have any concerns or questions regarding the amendments or filing for trademark or servicemark rights in the U.S., feel free to contact us.