By Irina Pomestchenko | www.amdlawgroup.com

The patent prosecution is a lengthy process and as a regular practice, the USPTO considers patent applications in the order they are filed. Based on the USPTO statistics, as of December 2018, there were 546,792 unexamined patent applications and the average patent pendency was 23.8 months.

If you are in the highly competitive technology sector where fast rights acquisition is critical, you may not be able to afford to wait that long to get a patent.  Fast rights acquisition can benefit your business in various ways and in some instances could be vital.

Let’s say you have a competitor who is infringing upon your product of technology. Once the patent is filed, it is pending and you can and should include “patent pending” note and all your sold or exhibited products and marketing materials. The American Inventors Protection Act (AIPA) of 1999 granted patent pending infringement protection. However, you can sue the infringing party for damages only after the patent becomes enforceable after it’s grant date. Therefore, if you have an infringer or unfriendly competitor breathing down your neck, the fast rights acquisition is critical. Granted patent rights also allow you to attract investments and leverage your licensing agreements more efficiently.

There are several approaches you can exploit to get faster to the finish line.

The first and the oldest one is the Petition to Make Special. On August 25, 2006, the USPTO implemented a revised provision for Petition to Make Special procedures and introduced the Accelerated Examination program.  All non-reissue utility (including continuing applications) and design applications filed on or thereafter this date are eligible to participate. Since then all Petitions to Make Special except ones based on applicants age, health or participation in the Patent Prosecution Highway (PPH) pilot program (discussed below) are required to comply with the requirements for Petitions to Make Special under the Accelerated Examination program. 

Petitions to Make Special based on applicants age (over 65) or illness do not have to comply with the accelerated examination program requirements and will be granted automatically upon providing proof of eligibility.

The objective of the Accelerated Examination (AE) program is to complete the examination of an application and give the applicant the final patentability decision within twelve months from the filing date. However, in certain circumstances, it may take longer and the failure to meet this goal by USPTO is neither petitionable nor appealable.

Upon satisfying all requirements of accelerated examination program, petition to make special will be granted for free if the subject matter of the application is materially contributing to one of the following: development or conservation of energy resources, enhancement of the quality of the environment or countering terrorism. In such instances, the applying party has to provide a statement which explains how exactly invention materially contributes to one of the above categories in support of the petition. The “materiality” of the contribution must be solid and obvious, not hypothetical.

On the other hand, if the invention is directed to other areas, the Petition to Make Special under Accelerated Examination program still can be filed. However, a fee has to be paid to file the petition and all requirements for accelerated examination status must be still met.

The Accelerated Examination fee ($140 regular, $70 small entity and $35 micro entity) is rather modest. However, the requirements for obtaining accelerated examination status are plentiful [MPEP 708.02(a)] and very challenging to satisfy. The restriction on the number of claims (not more than 3 independent claims, 20 total claims, and no multiple dependent claims), interview, pre-examination search document, and accelerated examination support document (AESD) are among such.  Basically, the inventive party has to conduct its own prior art search and examination. On the long run, the information provided in AESD by an applicant may be used against the applicant if the validity of the patent gets challenged by the Patent Trial and Appeal Board. Therefore, even though getting ahead of the line through the Petition to Make Special under the Accelerated Examination program could appear attractive, in practice, this approach may not be always beneficial. Based on the USPTO statistics, the number of granted petitions under that accelerated examination program was steadily declining, with only 32 petitions granted in 2015, and the AE program itself may be phased out completely in future in lieu of more popular Prioritized Examination program (a.k.a. Track I).

In the Notice in Federal Register published on 08/16/2016, USPTO states that “Since the implementation of Track I in 2011, the USPTO has received fewer than 200 Accelerated Examination requests annually. In view of the relatively low usage of the AE program, USPTO plans to publish a request for comments in the Federal Register to seek public input on whether there is a value in retaining AE program in view of more popular Track I (Prioritized Examination) program”.

Alternatively, to participating in the Accelerated Examination Program applicants for a design patent may choose to participate in the Expedited Examination program. This program is also available for international design applications designating the United States that have been published pursuant to Hague Agreement Article 10(3). [refer MPEP 1504.30 for more details]

The second and most popular option to advance your application out of turn is Prioritized Examination, also referred to as Track I.  It was introduced by the Leahy-Smith America Invents Act (AIA) and is available at the time of filing to any non-reissue utility (including continuing applications) or plant application filed on or after September 26, 2011.

A single request for prioritized examination can be also granted for Request for Continuing Examination (RCE) in a plant or utility application including an application that had entered U.S. national stage from Prior-Filed International (PCT) application. This type of Prioritized Examination is referred to as “Prioritized Examination for Requests for Continued Examination” or PE-RCE. [MPEP 708.02(b)]

Since its implementation, the Track I Prioritized Examination Program is rapidly gaining popularity. Similarly, to the AE, Track I is aiming to achieve a final deposition within a year. However,  for all Track, I application that has received the final deposition in fiscal 2019 year the average pendency from petition grant to final deposition is reported to be 6.9 months. That is fast!

Regardless of rather hefty Track One Prioritized Examination Fee ($4,000 regular, $2,000 small entity and $1,000 for micro entity) and other multiple fees, there are much fewer requirements to meet and neither examination support document nor pre-examination search required. The application must comply with claims restriction (maximum 4 independent, 30 total and 0 multiple dependent claims) and be in condition for examination (see MPEP 708.02 (a) subsection VIII.C).

A downside of this approach is the existing numerical cap of 10,000 granted prioritized examination requests annually, however, PTO may consider raising the cap in the near future due to the high demand of this service. [MPEP 708.02(b)]

Beginning in July 2006, there is a third possibility to accelerate the prosecution through the Patent Prosecution Highway (PPH) programs upon meeting certain criteria. The PPH enables an applicant who receives the positive ruling on the claims from the participating office of one country to request accelerated prosecution of the allowed claims in a pending application at the patent office of another country. This allows the applicant to obtain a patentability decision in the second office more quickly. Thus, if you have already filed an international (PCT application) or foreign application at a participating patent office and at least one of your claims was found allowable, you have a basis for participation in PPH program at the USPTO. In order to participate, you must file a request and the Petition to Make Special under the PPH program before the USPTO begins examining your application. There is no limit on the number of applications admitted to the program per year and continuations are eligible for the program (before the first action is issued). Also, there are no additional fees to participate and normal claim limit (with normal excess claim fees) applies.

There are two PPH programs that are running concurrently at USPTO, Global PPH, and IP5 PPH pilot. These programs are substantially similar, differing only with regard to their respective participating offices. Therefore, an applicant doesn’t need to specify which program is being utilized. Additionally, USPTO has PPH agreements with several intellectual property offices that are not yet included in the Global PPH.

The PPH program will not yield a final deposition as quickly as Track I and Accelerated Examination programs and does not guarantee an allowance and neither to shorten the prosecution time. On average, however, PPH applications have higher allowance rates and shorter pendency periods compared to regular applications. Thus, the possibility of shorter pendency period at no additional cost to the applicant makes PPH route worthwhile.

There are other notable options available to an applicant at no additional fees during various stages of prosecution that may contribute to speeding up the process to some degree:

The First Action Interview Pilot Program was signed on May 6, 2011, and since then had been extended and currently running. It is available to all utility applications in all technology areas. Under this program, an applicant may request an interview prior to the first Office action on the merits. During the interview, an applicant will have an opportunity to reach an agreement with the Examiner on relevant prior art and proposed rejections and objections and discuss possible amendments. The effective communication with the examiner during the interview is critical and reached agreement may facilitate earlier allowance.

The After Final Consideration Pilot 2.0, (AFCP) program currently has been extended through September 30, 2019.  This program intends to facilitate communication between Examiner and applicant after Final Rejection. If you are planning to file response to a Final Rejection that you believe will place your application in the condition for allowance with limited further effort from the Examiner in terms of search and consideration, you may request to consider your response to the final Office Action under AFCP 2.0.

The Quick Path Information Disclosure Statement (QPIDS) program is part of the USPTO’s on-going efforts towards compact prosecution and pendency reduction. The QPIDS program is fully implemented on a permanent basis. QUIDS allows an applicant to submit an Information Disclosure Statement after the issue fee had been paid (but before the patent actually issues) without filing Request for Continued Examination (RCE). The RCE fee under 37 CFR 1.17(e) and the IDS fee under 37 CFR 1.17(p) are required with a QPIDS submission as well as the petition fee under 37 CFR 1.17(h) for a petition to withdraw an application from issue under 37 CFR 1.313.   However, if the Examiner determines that no item of information in the IDS necessitates reopening prosecution, the IDS and RCE fees will be automatically returned.

In summary, there are four major approaches that can be exploited to advance the prosecution at USPTO: Petition to Make Special (illness or age only), Petition to make Special under Accelerated Examination program, Prioritized Examination (Track I) and Patent Prosecution Highway.  Additionally, there are several programs that may be helpful to speed up certain stages of the prosecution process. This article represents an only general overview of the existing programs. Each program has multiple filing and eligibility requirements. The laws and application process may be complicated and right approach shall be selected on the case-by-case basis. We welcome you to contact AMD Law Group for additional information and further assistance.

 

Image courtesy: https://www.lifeoptimizer.org/page/20/?p=ftoubiuciojdp

 

 

Originally posted 2014-11-06 11:00:06.

By Diana Chan | amdlawgroup.com

China IPChina is taking strides to establish specialized courts to handle intellectual property cases. Over the next two weeks, China plans to set up its first specialized court in Beijing, and by the end of the year, intellectual property courts will be set up in Shanghai and Southern Guangzhou. China has been criticized for its lack of enforcement of intellectual property rights, but in recent years, it has made several developments to its intellectual property laws.

Foreign firms often complain about not being able to protect their brand in China. Kering SA’s Luxury division, comprising of brands like Yves Saint Laurent, Bottega Veneta, and Balenciaga, previously filed a lawsuit against Alibaba Group Holding Ltd. in the U.S., arguing that counterfeits thrive on the e-commerce platform, which is popular in China. Later the suit was withdrawn after the companies agreed to cooperate on developing IP protection.

Not only are luxury brand products being counterfeited and sold, but the amount of counterfeit pharmaceuticals has also multiplied, posing a potential danger to consumers’ health.  The creation of these courts certainly shows that China is making efforts to establish a system that enforces intellectual property rights.  Going forward, the U.S. will likely observe whether or not this specialized court is effective in enforcing rights.

With this recent development, China is showing its dedication to maintaining intellectual property rights. As foreign companies move into and exist in China, protection of intellectual property is essential to ensuring protection of the brand especially in a country that thrives on exporting goods globally.

Resources: http://www.bloomberg.com/news/2014-11-03/china-opens-intellectual-property-courts-to-improve-image.html

Originally posted 2014-08-22 11:00:50.

By Christina Severino | amdlawgroup.com

effortless-confidence-marc-jacobs-incognito-handbag_4

The process of launching a new line of products or an addition to an existing collection often involves centering a marketing campaign on the reputation or quality of the brand producing it. The status of a brand itself is oftentimes heavily relied upon during promotions if the brand already carries the prestige of a higher-tiered luxury brand. Recently, Marc Jacobs launched its campaign for the addition of the “Incognito” handbag to its line. Rather than focusing in on the brand’s name and reputation, Marc Jacobs decided to take the alternative angle of showing consumers the origin and process of crafting its handbags.

The stream of marketing began with an email to its subscribed customers. The email opens with an image of gold-colored Marc Jacobs stamps. Next, the mark, “Made in Italy” is shown on a piece of handbag material with a silver strip being lifted off of the mark to demonstrate the process of label stamping on its handbags.  Another image below displays the many color and pattern options available for the “Incognito.” These features of the campaign certainly remind consumers of the meticulous detail involved during the making of each of its handbags. It is also a testament to the exclusivity and individuality that the brand strives to portray. The email goes on to show the handbag in individual leather pieces and is followed by a link to a step-by-step video showing how the bag is sketched out and assembled. The video gives consumers an exclusive sneak-peak into the brand’s commitment to producing excellent products. In addition to the email launch, the company later shared similar images of the “Incognito” and expanded the campaign to include an advertisement in the New York Times.

The unique approach taken by Marc Jacobs allows the consumer to get a better sense of where and how the handbags are being made. The ability to be candid about their product does several things:

  1. It develops rapport with the consumer and reinforces trust in the brand;
  2. It gives the subscribed consumers the feeling of exclusivity and being an active member of the Marc Jacobs brand;
  3. It reinforces the reputation and integrity of the brand as being a leading member and contender in the realm of renowned designers.

If you have already established solid footing in your respective industry, use of this technique may prove to be both a creative and effective marketing tool when launching your next collection. Conversely, if you have just introduced your brand into the marketplace, it may serve as a strong endorsement of your products or services.

Image Credit: http://www.luxury-insider.com/luxury-news/2014/08/effortless-confidence-marc-jacobs-incognito-handbag

Originally posted 2014-11-17 11:00:19.

By Christina Severino | amdlawgroup.com

pandoraA 2013 decision by New York federal judge Louis Stanton has prompted digital media outlets, namely Pandora Radio, to seek advice how to proceed if their licensing rights were to be taken. Judge Stanton ruled that if major music publishers decide to withdraw performance licenses, they must withdraw fully, not just partially to avoid online digital streaming companies. This decision resulted after Sony/ATV and EMI modified their consent decrees with BMI, which would have terminated digital licensing rights. BMI is currently the largest music rights organization in the United States. BMI assured Pandora that major music publishers such as Universal Music and Sony/ATV will not be withdrawing their song catalogues and performance licenses to online music streaming companies through the end of this year. Since then, Pandora made agreements with music publishers, but they paid a premium for the direct licensing rights, compared to the rates they once paid when their deals were struck with BMI’s backing. This direct licensing would also guarantee that they would not be sued by the publishers during the contract period. Even though the publishers cancelled their initial withdrawals as a result of the new deals, this still does not provide safe harbor for Pandora once January 2015 rolls in.

As a result of this case, the Department of Justice has reported that it will begin reviewing the consent decrees of BMI and the ASCAP (The American Society of Composers, Authors and Publishers). If the DOJ decides that the process of drafting consent decrees with the BMI or the ASCAP is no longer effective, then this will potentially open the door for individually owned management companies who will likely benefit from the additional profits from direct licensing.

Resources: http://www.hollywoodreporter.com/thr-esq/bmi-advises-pandora-big-publishers-745763

Originally posted 2015-03-23 12:45:04.

caulkBy Erin Holbrook | www.amdlawgroup.com

An inventor from Minnesota is using his loss of a loved one to drive his invention for “Easy Caulk.”

Greg Amundson along with his kids and wife June started to create his invention for “Easy Caulk.” They wanted to take the mess out of traditional caulk guns and provide a product from the USA. They also wanted it to be environmentally friendly.

It is a peel and stick type of application that requires no skill or tools. Easy for anyone to do. The product is non-toxic and does not leave waste like the traditional caulk tubes half full lying in landfills.

This project was always a family affair, with his wife helping out, and daughter taking over when she was ill. Son Erik was the machine expert and built the first prototype of a device to add adhesive to the PVC. His wife June passed away in December of 2014 of lung cancer.

Greg and his kids participated in local charity events helping others that are in need as a tribute to their wife and mom June. Also 5% of all sales of “Easy Caulk” go to the American Lung Association.

I feel that there is no better feeling than to create an invention, even better if you can do it with the ones you love or in a loved ones’ memory. Doing this would give even greater drive to overcome obstacles and succeed. Also giving back is also important, whether you donate a portion of your earnings, or create a product that can help others.

If you are an inventor that gives back, let us at AMD LAW know and we can help protect your invention and brand. Contact our office for more information.

Source: http://www.kare11.com/story/news/2015/03/02/easy-caulk-amundson-non-toxic/24284985/?utm_source=feedblitz&utm_medium=FeedBlitzRss&utm_campaign=kare/home

Image credit: http://ecx.images-amazon.com/images/I/81rf%2BoPfjHL._SX450_.jpg

 

Key words: American Lung Association, inventor, donation, Easy Caulk, brand

 

Originally posted 2013-03-18 17:02:36.

By Kathleen Melhorn | amdlawgroup.com

 

 kardashian tweet1

 

10,000 dollars is an awful lot of money to get for composing a 140 character tweet. Class A Celebrity Kim Kardashian is reported to receive this amount from companies who need marketing for their products. Kim is not the only one who has been caught tweeting for cash, other stars like 50 Cent & Snoop Dogg do it as well. What are the ethics involved with tweeting for money? Is this practice considered unethical, or is it just a good idea for companies? 

The ethical issues to consider in this case are manipulation, deception, and accuracy. For starters, this fake tweeting these celebrities are doing is a form of manipulation. Not only is it manipulating, but it’s deceptive especially since the celebrities may not really be using the products. It is because of these lies that a question of accuracy formulates in this case.  The only issue in trying to find out if these tweets are lies is finding out if these celebrities are really using these products. However, if these celebrities were using these products, enjoying them, and tweeting about them on their own free will then there would not be a need for payment.

images


In an article by The Examiner, they mentioned that the head of “ad.ly”, a controlled base for celebrity endorsements on social media, says that Celebrities are encouraged to distinguish their tweets from personal tweets to the paid advertisements. After this article aired, there was one tweet from Kardashian’s twitter with “ad.ly” in it, pointing out that she was paid to tweet. However, none have really been seen since then. 

This practice is not only unethical, but it has a larger impact than one would believe. Kardashian has 17.3 million followers so her fan base is far too large. Also, according to a study by Knowledgeatwarton.com, Celebrities social media has an incredibly large impact on their fans. Celebrities have an incredibly large impact on their fans, manipulating them into buying products they do not really use is completely unethical.

 —

Sources:

Ellie, Gillingham. “The Ethics of Celebrity Endorsement Via Social Media Sites.” The Ethics of

            Celebrity Endorsement. WordPress, 22 Mar. 2011. Web. 13 Mar. 2013.

“Merchants Bank-Knowledge@Wharton.” Merchants Bank-Knowledge@Wharton. University of

            Pennsylvania, 27 Feb. 2013. Web. 13 Mar. 2013.

Todd, Tammy. “Twitter Stunned Kim Kardashian Earns $10k a Tweet.” Examiner.com. Clarity

            Digital Group, 29 Dec. 2009. Web. 13 Mar. 2013.

Originally posted 2015-02-25 09:00:50.

Taylor-Swift-665x385Brandon McCoy | www.amdlawgroup.com

Taylor Alison Swift, world renowned country music and pop sensation, is no stranger to the world of intellectual property. In recent years she has been sued for Trademark Infringement of Her Brand Lucky 13, she has created, and obtained, copyrights in chart topping albums, and pulled her music off media streaming giant Spotify. Taylor is at it again. She has recently filed for trademark rights of her works “This Sick Beat”, “Party Like It’s 1989”, amongst others. Taylor has not been granted any of these trademarks, as of yet, by the United States Patent and Trademark Office.

A trademark can best be explained as a source identifier. For example, everyone knows a pair of Levi jeans by the red tag strategically placed on the back pocket of their jeans. Unlike copyrights, trademark rights do not require the phrases to be absolutely unique. If Taylor is successful in obtaining Trademark rights then these phrases, would however, serve as a unique identifier to her brand. Though many of her phrases are greetings or silly phrases, they can still be trademarked. This is determined by the distinctiveness scale. If a term is not generic, or merely descriptive, then it has a chance of obtaining a trademark. An example of this would be that no one will obtain the exclusive right in the word “ice” to sell ice packs. But if your trademark is arbitrary which means that there is no connection with the respective good or service, or fanciful like Xerox, meaning it is a completely made up term, then you will likely be granted a trademark.

Christopher Sprigman, a professor at NYU Law School specializing in trademark law had this to say about the matter, “The music industry isn’t dying, the music industry is changing. And different revenue sources are coming to the fore, and one of them is merchandise.” This statement was made is appreciation of Taylor’s trademark efforts, further stating that she is “ahead of the curve” when it comes to Trademarking random song lyrics.

It seems to be a new trend growing in the music industry, in conjunction with streaming it online. That trend is marking the artist’s territory. The move is not unusual. Artists such as Britney Spears and Beyoncé have attempted to trademark a popular song title “Toxic” or an alter ego “Sasha Fierce” says Richard Rochford, a partner in New York’s intellectual property litigation group Haynes and Boone. One of the main strategies behind this is likely the potential of licensing opportunities in the future. With the way the music market is moving, more towards the streaming arena, licensing could definitely be a smart strategy both for intellectual property rights, and brand protection.

For any questions, comments, or concerns please contact AMD LAW at contact@amdlawgroup.com

Image credit: http://www.inquisitr.com/1831064/taylor-swift-threatens-man-who-taught-her-guitar-and-song-writing/

Resources:

http://www.billboard.com/articles/business/6465331/taylor-swift-trademark-phrases-this-sick-beat-1989

http://time.com/money/3688483/taylor-swift-this-sick-beat-trademark/

http://www.rollingstone.com/music/news/taylor-swift-trademarks-this-sick-beat-and-other-1989-phrases-20150128

http://hub.contactmusic.com/taylor-swift/news/taylor-swift-sued-for-trademark-infringement_4205627

 

 

Originally posted 2015-06-15 14:45:39.

By Brandon McCoy and Whitney Francisco | www.amdlawgroup.com

What are 26 states, including D.C., doing that is changing the business world as we know it? How are these states capitalizing on one of the largest entrepreneurial and business booms of this decade? Everyone is familiar with the three, most prevalent, kinds of corporations in the U.S. They are the C Corporation; the S Corporation, and the Limited Liability Company also known as the LLC. But what if I told you that 26 states, including D.C. have adopted a new form of business model? A business model that promotes socially responsible investing, corporate social responsibility, and social entrepreneurship, yet still makes money?

Allow me to introduce to you the Benefit Corporation or B-Corporation. B-Corp, for short, is a new form of incorporation, which still utilizes directors, shareholders, and officers much like a traditional corporation. However, B-Corps tend to stand out amongst their counterparts. B-corps comply with the “business judgment rule”, a rule governing the decision making of executives, but also consider the societal and environmental impacts of that decision. By voluntarily making these choices a company can focus on socially beneficial practices such as employee benefits and eliminating excess waste. These choices transcend normal standards of transparency, accountability, and performance, thus promoting consumer trust, and better business practices. Important secondary effects are the creation of a higher quality of career opportunities, better communities, and employee morale surrounding the B-Corp.

B-corps still operate as a business, in that it generates profit, and provides shareholders protection from personal liability like an S or C corporation. However, B-corps enjoy the tax incentives of a non-profit organization. This allows the company to focus more on quality, and ethics, rather than quantity, or generating profit by mere means of supply and demand. In this way a B-corp is sort of a “hybrid company.”

B-Corps can be certified by a 501(c)3 non-profit called “B Lab.” According to Joanne Fritz, Nonprofit Charitable Orgs Expert, and contributor to aboutmoney.com, “The B Lab Company sets the standards for B Corporations and evaluates whether an organization is in compliance with the B corporation goals.” She further states, to become a B corporation, an organization must be certified by B Lab, receive a minimum score of 80 (out of 200) on the B Ratings System, agree to make certain legal changes to its articles of incorporation, and finally, remit an annual licensing fee to B Lab. Certification comes with substantial benefits as well, such as substantial discounts to companies like Intuit and Salesforce. Certification also includes, marketing and branding to consumers and investors, who are more likely to buy/invest if a third party is involved, and profitability by driving costs down through eco-efficiency.

Bcorporation.net states, “Over 1,000 businesses have already joined our community, encouraging all companies to compete not just to be the best in the world, but to be the best for the world. As a result of our collective success, individuals and communities will enjoy greater economic opportunity, society will address its most challenging environmental problems, and more people will find fulfillment by bringing their whole selves to work.”

It is clear that this new business model views businesses as the vehicle of change for the greater good of the world. So if you’ve always dreamed of starting a company that benefits the greater good, receiving substantial discounts from companies like Intuit and Salesforce, but still want an admirable financial future, a certified B-Corporation might be the perfect incorporation for you. With this style of incorporation, gone are the days where a company’s success is defined by how much money the company made. Instead, the company’s success is defined by how much it has done to benefit society in alignment with its goals.

If you would like to inquire more about the B-Corp, and it’s advantages for your business, please contact us at contact@amdlawgroup.com and we’d be happy to assist.

 

Sources:

https://www.bcorporation.net/

http://www.csrwire.com/blog/posts/496-becoming-a-b-what-is-the-difference-between-a-b-corporation-and-a-benefit-corporation

http://nonprofit.about.com/od/b/g/What-Is-A-B-Corporation.htm

 

 

 

 

 

 

 

 

 

 

 

 

Originally posted 2018-02-27 22:04:59.

By Francisco Martinez | www.amdlawgroup.com

What cybersquatting is and how to combat it is something all modern-day trademark holders need to understand, especially with the continued global expansion of the internet. Simply put, cybersquatting is when a domain name is registered for trademark, often a well-known mark, by someone other than the owner of the trademark who intends to abuse or misuse the domain name, usually for monetary gain.

It was such a rampant problem during the 1990’s that the newly created governing body known as the “Internet Corporation for the Assignment of Names and Numbers” (ICANN) adopted the Uniform Domain Name Resolution Policy (UDRP) as a way to resolve disputes involving cybersquatting without having to go through court, instead using arbitration. The great thing about the UDRP is that it is a quick process designed to resolve disputes that involve the abuse of a registered domain name.

How does the UDRP deal with cybersquatting and the remedy it provides? If the Administrative Panel, which decides a UDRP complaint, finds for the trademark holder than it would require that the domain name is canceled or transferred over to the trademark holder. The URDP provides many advantages over going to court. The UDRP provides a faster and cheaper way to resolve a dispute and it is less formal than court, allowing for a trademark holder to get down to the nitty gritty and avoid the theatrics of court.

Depending on the case it may take somewhere between 75 to 90 days to have the issue resolved. One way that helps strengthen the process is that the decision-makers are experts in such areas as international trademark law, domain name issues, electronic commerce, the Internet and dispute resolution. Instead of having judges who may not be as informed about the issue when the issue is taken to court. There is also an international scope to UDRP, the registrar or the domain name holder or the complainant can be located internationally provided there is proper service of process.

There are, however, limitations as to who can bring up a complaint. ICANN has made it clear that the UDRP Administrative Procedure is only available to resolve disputes between a third party alleging a registrar abuse relating to a domain name. Meaning that the domain-name holder is not allowed to bring up a UDRP complaint against a third party, such as a trademark holder.

With this procedure, trademark holders are better equipped to deal with cyber-squatters and to protect their brands. Owning a valid brand trademark is an important step in battling with a cyber-squatter.

 

Sources:

https://www.icann.org/resources/pages/policy-2012-02-25-en

http://www.wipo.int/edocs/mdocs/enforcement/en/wipo_ace_10/wipo_ace_10_8_ppt.pdf

http://www.wipo.int/amc/en/domains/guide/#a1

https://icannwiki.org/Cybersquatting

Originally posted 2014-09-08 11:00:04.

By Chloe Coska | amdlawgroup.com

Mickey MouseDeadmau5

The famous mouse ears logo is in the middle of a vicious battle between the giant Disney and Deadmau5. The firm has started a legal fight against DJ Deadmau5, pronounce as “Deadmouse” claiming his logo is too similar to their Mickey Mouse ears symbol. Disney has filed papers to prevent the attempt of registration of the mark consisting in a mouse head with black ears, black face, white eyes and white mouth.

According to Disney “Applicant’s Mouse Ears Mark is nearly identical in appearance, connotation, and overall commercial impression to Disney’s Mouse Ears Marks. Accordingly, applicant’s Mouse Ears Mark so resembles Disney’s prior used and registered Disney’s Mouse Ears Marks as to be likely, when used in connection with Applicant’s Products and Services, to cause confusion, or to cause mistake, or to deceive under Section 2(d) of the Lanham Act.”

Joel Zimmerman well known as DJ Deadmau5 answered to Disney accusations in a twitter post saying there was little proof of consumer confusion between the two logos. He has also pointed out that he is ready to fight it out in court. Furthermore, according to his lawyer, the trademark is already registered in 30 countries and said that if Disney wins it could be a real blow to his business.

What do you think? Do side with the mouse or the DJ?


Resources:
http://www.hollywoodreporter.com/thr-esq/defense-disneys-opposition-deadmau5-trademark-729789
http://www.dailymail.co.uk/tvshowbiz/article-2741513/Disney-legal-fight-Deadmau5-mouse-ears-logo-trademark.html

Image credits: http://i.dailymail.co.uk/i/pix/2014/09/03/article-2741513-2102157B00000578-742_306x211.jpg

 

Originally posted 2015-06-11 09:15:28.

 

By Sindy Ding-Voorhees|www.amdlawgroup.com

News about Zara is all over the press lately. Zara’s founder, Amancio Ortega, recently surpassed Warren Buffet as the world’s second-richest man; several days later, the billionaire was also accused of being one of the most racist. Now, a $40 million discrimination lawsuit claiming he favors hiring employees who are “straight, Spanish and Christian”, has been filed against him. This lawsuit absolutely adds fuel to the flames for Zara, because remotely in China, Zara’s “backyard” is “on fire”.

Zara, a Spanish clothing, and accessories retailer brand, gained massive success in China among young fashion-forward Chinese shoppers for its edgy, European style. It entered China in 2006 and now operates 146 stores there. Fuzhou, the provincial capital of Fujian, a southeastern Chinese Province, is one of the popular locations and has quite a few Zara stores.

Soon after Zara’s establishment in China, it secured a series of trademark registrations for the Latin letter word “Zara” in the class of apparel and accessories but failed to apply for any Chinese equivalent. In 2011, Mr. Zhou, the owner of a hair salon in Fuzhou, submitted a trademark application to SAIC (State Administration for Industry and Commerce of the People’s Republic of China) to register “飒拉” (Pinyin: Sa La), a transcription of the word “Zara” in Chinese characters in Class 44, which is used for hygienic and beauty care for human beings. While such application was still pending, Mr. Zhou received a cease and desist letter issued by a lawyer from Zara China, demanding him to withdraw the application in the face of a potential cause of action for trademark infringement. Despite the pressure from Zara, in the last month Mr. Zhou’s application was surprisingly approved by SAIC, and he, therefore, successfully registered “Zara” and its Chinese equivalent as a trademark in Class 44. (A screenshot from the system of SAIC is as below.)

Theoretically, based on the first-to-file principle in China, due to the fact that Zara has not registered its Latin letters and the Chinese equivalent brand in Class 44, it seems totally reasonable for a third party to “exploit” an advantage and fill in this gap. Most people will not classify Mr. Zhou as a trademark hijacker because Zara, the clothing brand that everyone knows, simply does not do any business in the industry of hair and beauty salon. However, if we think carefully about the intention behind this registration, the popularity of Zara among Chinese customers, and the notorious local protection from SAIC and other related institutes, is this really fair to Zara? Especially after Zara’s parent company, industria de diseno textil,s.a(inditex, s.a.), diligently registered over a hundred of word trademarks and styled forms trademarks for “Zara”, “Zara Kids”, “Zara Home”, etc. in different territories?

We still remember the last trademark battle between an individual third party and a multinational brand and the big guy’s resulting great failure. New Balance was recently ordered to pay RMB 98 million in damages for an alleged trademark hijack when a Chinese local shoemaker registered New Balance’s Chinese trademark first and then sued New Balance for trademark infringement. New Balance paid a sky-high price for failing to adequately protect its Chinese brands. After reading the whole decision, it actually seems that the high price is a kind of punishment for New Balance for the fact that New Balance knew of the pre-existence of the Xin Bai Lun (新百伦) mark (which was successfully registered by the trademark hijacker with ‘Xin’ meaning ‘new’, and ‘bai lun’ being a transcription of the English word ‘balance’), and nevertheless kept on operating under that name. Regardless, the owner of “Xin Bai Lun” said the infringement has made most people believe that the “Xin Bai Lun” mark belongs to New Balance, adding that many of his customers have asked him whether his products were part of the New Balance brand. This is a ridiculous and counter-intuitive outcome. It is a bad, sad and ironic example of “reverse confusion” where the party infringing upon another’s mark actually enjoys much higher visibility and awareness in the market than the actual mark holder.

There are lessons to be learned from the New Balance case. Since Zara now is aware of the existence of another “Zara” and “飒拉” in Class 44 under the trademark law in China, it needs to focus on proving any potential malicious intention of the third party registrar to free-ride Zara’s goodwill for its own business, even though the third party is out of the scope of Zara’s operating business in apparel and accessories. Zara, as the owner of a famous trademark, still can within 5 years request the Trademark Review and Adjudication Board to declare the registered trademark invalid. Any mark registered in bad faith, once the malicious intention is verified, is subject to voidability at the request of a famous trademark’s owner, without such 5-year time limitation.

Now pressures are on foreign brands that have already or are about to launch a business in China. The reality shows that, even though they believe they are being considerate in diligently protecting their IP rights by filing adequate registrations to cover every class possible, there is just no 100% perfect way to keep the Chinese trademark hijackers from making trademark troubles for them. On one hand, it is not creative or meaningful at all to register a highly similar mark (such as with the same spelling, but different font from Zara) in an area that the original brand doesn’t cover. It is unlikely that a “Zara” hair salon, an “H&M” grocery store, or a “Forever 21” bakery will easily convince those brands’ loyal customers to actually go there and expect they come from the same source of goods or services. On the other hand, it is very important for foreign brands to have a Chinese equivalent brand name, get it registered before introducing and marketing it in China, and keep using it cohesively to reinforce the strength of the Chinese name. To gain these initiatives in China from the beginning can be a successful strategy for avoiding the awkward possibility of a “reverse confusion”, or paying a heavy price in order to remedy some expensive “surprises”.

 

Image credit:

Fashion Industry By Stefania Saviolo, “Zara in China, the ‘zaratization’ of the Chinese apparel market”.

 

Refere

  1. http://www.wantchinatimes.com/news-subclass-cnt.aspx?id=20150430000009&cid=1102
  2. http://www.hoganlovells.com/new-balance-ordered-to-pay-rmb-98m-in-damages-to-alleged-hijacker-06-03-2015/
  3. http://sbj.saic.gov.cn/

 

Originally posted 2018-02-16 10:00:04.

By Tikwiza Nkowane|www.amdlawgroup.com

A federally protected trademark can be retained indefinitely if maintained in accordance with the laws.  After going through the effort of obtaining federal protection of a Trademark, why would you want to forgo those rights by not maintaining it?  Failing to comply with the required maintenance documents can lead to cancellation of the mark being protected under federal law, thus losing the protected rights afforded under statute provided at the federal level.

As the registration is canceled the only option is to file a brand-new application and begin the entire registration process again from the beginning.  Submitting a new application does not guarantee that the mark will be reregistered, and protection granted.

An owner of a trademark should, therefore, maintain their registered trademark after the grant of registration, in order to be afforded the rights and protection that the statute provides at the federal level.

What are the requirements to maintain a trademark?

Trademark rights can last forever, but in order to maintain a trademark and keep it “live”, the law requires maintenance of a federally protected trademark.

Maintenance of a federally protected trademark requires submitting relevant documents at relevant periods, and a document of confirmation of actual lawful use of the trademark in commerce.  This is a very important factor in maintaining a trademark.

To maintain a trademark, the owner of the mark is required to continue using the mark in commerce, and file maintenance documents between:

In addition, the filing of a “Declaration of Use”, which attests to the continued use or excusable nonuse of the mark or on or in connection with the good and/or services in the registration is required.

The filing of a “Declaration of Use” is extremely important and must be filed between:

There have been cases that have resulted in trademarks being completely canceled following fraud in the declaration of use.

The case of Medinol Ltd. V. Neuro Vasx Inc., 67 U.S.P.Q.2d 1205 (TTAB 2003), involved a trademark registration covering two types of medical devices in one class of goods.  Neuro Vasx Inc. was issued a registration for the mark NEUROVASX, and after 2 years, Medinol Ltd initiated cancellation proceedings claiming that Nero Vasx failed to use its registered mark on one of the two goods covered under the registration.  In Nero Vasx’s response to this action, they sought to delete one of the goods in question from its registration and dismiss the cancellation as moot.  Medinol objected to this and argued fraud in that Neuro Vasx procured a registration that taints its entire registration.  The court held that Neuro Vasx untimely deleted the goods on which the mark had not been used.  The entire registration could, therefore, be held invalid, and the Federal Circuit found that “a trademark is obtained fraudulently under the Lanham Act only if the applicant or registrant knowingly makes a false, material representation with the intent to deceive the PTO.”

This shows the importance of being able to demonstrate continuous use of the mark registered in commerce.  If you obtained federal protection of your trademark, why lose it because you have failed to maintain it or use it in commerce?

In another case, In re Bose Corp., Fed. Cir., No. 2008-148, Bose, the famous audio equipment company, filed a Section 8 affidavit in their 2001 renewal.  They stated that the WAVE mark remained in use in commerce on various goods, including audio tape recorders and players.  However, Bose had, in fact, stopped manufacturing and selling audio tape recorders and players sometime between 1996 and 1997.  It was Bose’s general counsel who signed the renewal and testified that they believed the WAVE mark was still used in commerce in the form of Bose continued to repair items and ship them in interstate commerce.  It was held that the use as testified by the general counsel was not in use in commerce and that the general counsel’s belief, on the contrary, was not reasonable.  The registration was therefore canceled on the basis of fraud.

What examples are there of good maintenance?

Actively maintaining a trademark is key to success. Marvel and DC Comics are an excellent example of this.

Marvel and DC Comics jointly registered the trademark ‘superheroes” in 1980.  They actively maintain the trademark by initiating legal proceedings against others who try to use the word ‘superhero’ in their title or on related products.  In addition, they continue to produce shows, other materials, and comics which use the term on a very regular basis.

Imagine the very unlikely scenario that Marvel and DC, accidentally miss the deadlines to file the necessary documents to maintain their trademark.  Their federally protected mark will be canceled and or deemed abandoned.  Just because they are both very well-known brand, as seen above with Bose, they must also comply with the law in maintaining their trademark.  Any individual can now apply to be the owner of the mark “superheroes”.  Of course, as Marvel and DC have held the mark for a number of decades, the likelihood of getting it back after applying for re-registering may be much easier for them due to their active process in maintaining the trademark through lawsuits and constant commercial use of the mark since 1980.

Why put yourself through the process of reapplying for a mark that you originally received and got granted? Maintaining a trademark is part of protecting your brand.  Consider the benefits it gives you and ensures that you are compliant with the relevant time limits to submit documents.  There is nothing worse when you lose the protection you worked so hard for, to see it being canceled and possibly end up with someone else owning the mark. Protect and maintain your brand now!

Originally posted 2018-11-05 11:25:05.

By Danielle Sule | Edited by Alana Ballantyne

The Music Modernization Act (MMA) has been signed into law. It was unanimously supported in both the house and the Senate and signed into law on October 11, 2018. This act is the biggest change to music legislation in over 40 years!

The MMA attempts to modernize Section 115 of the US Copyright Act What exactly does the bill do? It brings together three main parts of the legislation. The Music Modernization Act, the Compensating Legacy Artists for their Songs, Services, & Important Contributions to Society Act (aka CLASSICS), and the Allocation for music Producers (AMP) Act.

So what do they hope to do? Well, the MMA is set to streamline the process to get music-licensing. Music licensing is the authorized use of copyrighted music. It ensures that the rightful copyright owners of music are compensated for agreed upon use of their work. A purchaser of a music license may be limited to the use of the work without a separate agreement.  The presence of a music license makes it easier for artists or rights holders, to get paid whenever their songs are streamed online. The CLASSICS Act closes the so-called “pre-1972” loophole, enabling artists and songwriters to receive royalties even if the songs were recorded before 1972. Lastly, with the AMP Act, we see producers mentioned in copyright for the first time ever. The AMP act sets out improvements to royalty payouts to both producers and sound engineers.

This all sounds great, but also pricey. Having to create and maintain a database to track and ensure proper payment cannot be cheap. Well, digital streaming services will be covering this cost. How else are digital services taking a pay cut? They no longer will receive the unclaimed royalties that digital service provider uses to hold. The act will take all those royalties that are unclaimed and will provide a legal process to ensure the music professionals receive them. The new bill is not expected to impact consumer’s monthly streaming bill. While streaming services expect to see a major impact on themselves, consumers should not. Supporters of the bill view the new legislation as a great change for both consumers and artists.

Has Copyright Law finally caught up to the digital era? It seems like it at least trying to catch up in music copyright. Now we’ll just have to sit back and see the long process ahead to implement the new bill.

 

Sources

The Music Modernization Act has been Signed into law https://www.theverge.com/2018/10/11/17963804/music-modernization-act-mma-copyright-law-bill-labels-congress

The Music Modernization Act: What Is It & Why Does It Matter?

https://www.billboard.com/articles/business/8216857/music-modernization-act-what-is-it-why-does-it-matter-jordan-bromley

Music Modernization Act Passes in Senate With Unanimous Support https://www.billboard.com/articles/business/8475876/music-modernization-act-passes-senate-unanimous-support

MUSIC MODERNIZATION ACT

https://www.grammy.com/advocacy/learn/music-modernization-act

Money for Something: Music Licensing in the 21st Century

https://fas.org/sgp/crs/misc/R43984.pdf

 

Originally posted 2018-02-07 10:00:42.

By Gabrielle Sherwood|www.amdlawgroup.com

How to #Registeryourhashtag

A hashtag is any word or words that have the pound (or hash) symbol in front of them. They are used to get certain words to trend on the Internet via Twitter, Instagram, Facebook and other social media platforms. Anything can be a hashtag. For example, #mybrand, #awesome, #dolls, #trademark, and #fashion. You may be familiar with the recent controversy of Kris Jenner wanting to federally register the hashtag “#proudmama”- reportedly for advertising purposes. Hashtags are important and useful as they trigger discussions via twitter and other social media platforms.

A user can register their hashtag using the Twubs website and track the use that their hashtag receives from the Internet and other social media networks. Registering your hashtag will give you protection against others trying to register the same hashtag on Twubs. Twubs allows users to search Twitter for hashtags, join and create chats with other Twitter users regarding specific hashtags, and create their own original hashtags. When searching on Twubs, a user can search a specific hashtag and be instantly connected with conversations from other people around the globe.

While websites such as Twubs and Hashtag.org are good resources for registering hashtags, one can now actually federally register a hashtag as a trademark. To be federally registered, a hashtag has to be registered with the United States Patent and Trademark Office. Registering a hashtag with the United States Patent and Trademark Office gives the owner several advantages. These advantages include notice to the public of the registrant’s claim of ownership of the hashtag, a legal presumption of ownership nationwide, and the exclusive right to use the mark in connection with the registrant’s goods or services. Therefore, a user can federally protect his/her hashtag under trademark law and prevent subsequent users from infringing on his/her rights.

The federal registration process is as follows: First, the user will have to search different sources for the same or similar hashtags that they are trying to register with the United States Patent and Trademark Office. Users can search the United States Patent and Trademark Office, the Internet and Twubs for similar hashtags. The user will have to pick an original hashtag that is not easily confused with other trademarks. The user can then fill out an application and pay the appropriate fees to get their hashtag examined, and possibly protected. Registering your hashtag will differentiate your product from competitors, and allow consumers to recognize your product without confusion.

People can now register hashtags as trademarks. Utilizing hashtags as trademarks will connect conversations around the globe involving a creator’s product. Also, it will allow other competitors to be aware of the creator’s work. Twubs states, “Hashtags are a great way to organize your followers and get the word out about your brand. With Twubs, they are even better because we give you a great place to send your audience.” With that being said, registering your hashtag will help consumers more easily find you and your brand-which might be a smart business choice.

 

Originally posted 2014-10-10 11:00:14.

By Christina Severineo | amdlawgroup.com

Marilyn_Monroe,_The_Prince_and_the_Showgirl,_1The advent of holographic depictions of deceased celebrities has been trending, with artists such as Michael Jackson being projected and performing on stage with other performers. The hologram of Michael Jackson during the 2014 Billboard Music Awards was truly a bittersweet experience for audience members. Nonetheless, the growth in use of avatars, holographs, and CGI in live performances has given rise to several legal issues, including who has patent rights to project these deceased celebrities? In the case of Marilyn Monroe, yet another lawsuit has been filed against her estate by Virtual Marilyn, LLC. Marilyn’s statutory heirs have been stubborn for years as evidenced by a string of lawsuits regarding her image and brand since her death in 1962.

Virtual Marilyn’s complaint asserts that it holds copyright registrations including “audiovisual work and character artwork depicting a computer-generated virtual actress adopting the persona of Marilyn Monroe.” This threat of legal recourse hasn’t been the first regarding the use of a CGI Marilyn. Roughly two years ago, threats of a virtual Marilyn being taken on tour to perform with living stars resulted in her heirs sending a string of cease and desist notifications to companies proposing the idea. However, the current complaint asserts that Virtual Marilyn, LLC has its own branding rights to the CGI version of Marilyn, and that “fractured ownership” of her image is appropriate since disclaimers warning consumers would defray any likelihood of confusion.

Marilyn’s estate asserts that “Use of Marilyn Monroe’s identity and persona without the Monroe Estate’s prior authorization constitutes unfair competition and false designation of origin,” and, “its adversary (Virtual Marilyn, LLC) couldn’t use or license, ‘marks, names, logos, designs, avatars, or the like.’” Any claim of publicity rights will likely be unavailable because a previous decision by the 9th Circuit Court of Appeals in California ruled that no one could claim she was living in California when she died. That court decision determined Marilyn was actually domiciled in New York, therefore New York laws on publicity rights would apply. Generally speaking, New York law on publicity rights tends to be stricter than California’s. More specifically, New York prohibits any post-mortem publicity rights.

Virtual Marilyn, LLC is seeking declaratory relief in order to retain its right to continue using its computer generated Marilyn, while avoiding any more threats of litigation by the estate.

 —
Image Credit:
“Marilyn Monroe, The Prince and the Showgirl, 1” by Milton H. Greene – Promotional photograph for the 1957 film The Prince and the Showgirl. Licensed under Public domain via Wikimedia Commons – http://commons.wikimedia.org/wiki/File:Marilyn_Monroe,_The_Prince_and_the_Showgirl,_1.jpg#mediaviewer/File:Marilyn_Monroe,_The_Prince_and_the_Showgirl,_1.jpg

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