Intellectual Property

That headline just caused more than a few eyes to glaze over. I get it, but this post is to point out that just because we had fancy new terms and abbreviations, that doesn’t change a lot of fundamentals. Recently, the Spice DAO discovered that copyright law still applies – even to them.

First things first. A DAO is a decentralized autonomous organization.  It has no central governing body. Generally, decisions are made collectively aimed towards a common goal. 
Continue Reading DAO NFT Doh!

Last week I talked about how clients say they don’t know the difference between trademarks and copyrights.  Then I didn’t explain what it was.  I am here to solve that issue.

A trademark is something that customers use to help with things like:

  • “Hey, I bought that thingy before, and I liked it.  I want it buy it again!”  OR
  • “Hey, I bought a thingy from those people, and I liked it. I want to buy more stuff from

Continue Reading So What Is The Difference?

At the first meeting with a potential client, they often (somewhat shamefacedly) say, “I’m not really sure if I need a trademark or copyright or something else. I guess that I don’t know the difference.”  They say it like of course, they should know the difference. Why wouldn’t they know? I mean everyone but them knows, right?  But, of course, we know that is all a bunch of hooey.  This stuff is not on everyone’s “Things I Know” list. 
Continue Reading The Information Desk Is Two Way

Welcome back to the world of Secured Transactions and IP! A quick refresher from last week (link last week’s post?): lenders engage in “secured transactions” with a borrower who has put up collateral against that loan which has become enforceable. The lender can possess and sell that collateral if the borrower defaults should that lender have the highest priority on the collateral. The question we left off with last week was how to properly establish that highest priority, primarily
Continue Reading How to Protect a Trademark as Collateral on a Loan (Part 2)

Working for a firm that does a high volume of work with intellectual property allows for deeper dives into IP-related issues. One example involves situations where a lender has loaned money to a person with collateral for that loan being an item of intellectual property, such as an interest in a trademark. Whoa! Can a trademark (think something like a logo) be used as collateral against a loan? According to the Uniform Commercial Code, the set of laws which
Continue Reading How to Protect a Trademark as Collateral on a Loan (Part 1)

Logos can be an effective tool. Like word marks, logos can be used to help consumers draw a connection between goods/services and the source of those goods/services. With especially prominent logos, that connection can even be drawn without words (think of a particular swoosh for shoes or golden arches for burgers). With that potential in mind, clients will often come to us with requests to register logo marks. When those requests come in, we typically ask at least two
Continue Reading When to Hold On, and When to Logo

We often have clients asking about using weak versus strong marks.  This usually comes up because they want to use a descriptive mark and are asking why they shouldn’t.  There are legal arguments to be made, but I find the most useful framing is about how the client wants to spend their money.  And this is what I tell them:

You will spend money to make your brand stick in the minds of your target audience.  You have
Continue Reading The Tug of War of Mark Strength

This week, the United States Patent and Trademark Office (USPTO) announced the release of a new Patent Public Search tool that provides more convenient, remote, and robust full-text searching of all U.S. patents and published patent applications.

According to the USPTO, this free, cloud-based platform combines the capabilities of four existing search tools scheduled to be retired in September 2022:

  • Public-Examiner’s Automated Search Tool (PubEAST)
  • Public-Web-based Examiner’s Search Tool (PubWEST)
  • Patent Full-Text and Image Database (PatFT)
  • Patent Application

Continue Reading USPTO Launches New, Free Patent Public Search Tool 

After last week’s post featured Lola celebrating Thanksgiving in style, it seems only fitting for this post to cover the next phase of the holiday season. That’s right, we’re talking Black Friday and Cyber Monday! Given the commercial success associated with these two days each year, you may wonder whether “Black Friday” or “Cyber Monday” can be registered trademarks. The short answer is that they can be, but there are clear limits, and it is not in the way
Continue Reading ‘Tis the Season to Be Descriptive

We previously warned you about some USPTO scams. Well, someone looked at those scammers and said, “What a great idea! I’ll do that for new companies who just formed!” In other words, jerks multiplied like bunnies on Viagra. And so I’d like to introduce you to the newest scam: The Certificate of Service Scam.  It looks official.  It has a local address.  It is completely BS.

First, they are correct.  You can get a Certificate of Status from
Continue Reading Scam Alert. Again.

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Of all the TV attorneys out there, Jackie Chiles is my favorite. Close second, of course, is Denny Crane, but Jackie certainly takes the top prize. Jokes aside, the title of today’s post is “Your Face, is My Case,” because we’re talking about likeness and image rights, sometimes collectively referred to as “personality rights.”

From Wikipedia: “Personality rights, is the right of an individual to control the commercial use of one’s identity, such as name, image, likeness,
Continue Reading Your Face, is My Case: Personality Rights

As I advise clients on trademark issues, it is relatively common for clients to ask if there is an “international trademark”. I then break the unfortunate news that there is no such thing as an “international trademark”. Instead, registered trademark protections only extend to the national borders where the mark is registered. This means that if a client with a U.S. trademark wants registered trademark protection in Canada and Mexico, the client needs to apply for trademark protection in
Continue Reading Just Following (Madrid) Protocol

The provisional patent application is one of the more unique, and often misunderstood, features of the U.S. patent system. While applicants may be enticed to file provisional patent applications as a potentially cost-effective way to secure an early filing date, they must be drafted with extreme care to fully enjoy that benefit. Provisional applications do fill a role in a comprehensive patent strategy, but the form and content of the application itself should be tailored to meet defined objectives
Continue Reading The Promise and Potential Pitfalls of Provisional Patent Applications

Beijing High People’s Court rejects Volkswagen’s Trademark Application Despite Coexistence Agreement

In August, 2021 the Beijing High People’s Court maintained a decision made by the Chinese National Intellectual Property Administration (CNIPA) rejecting an application by Volkswagen (VW) for the trademark TAYRON, an expression associated with a line of VW’s compact SUVs. The decision was upheld on the grounds of (1) similarity of goods and (2) similarity of marks with respect to the existing trademark TYRON, owned by Tyron Runflat
Continue Reading Recent Developments in Chinese Intellectual Property

Talkin’ about trade secrets! While other forms of protection such as patents, copyrights, and trademarks require upfront costs and disclosure of some sort, trade secrets do not. In this article we will examine a few of the benefits that trade secret protection offers.

Benefit One – Trade Secrets Protect Information That Other Forms of IP Protection Do Not

Example: The (secret) recipe for KFC Fried Chicken

Arguably, the secret recipe is the most valuable piece of information KCF has…but
Continue Reading Please Keep My (Trade) Secret

Many of our readers are likely familiar with Eminem’s hit single “Lose Yourself.” I imagine significantly fewer are familiar with “Mom’s Spaghetti,” the underrated and amusing parody to “Lose Yourself.” In recent weeks, “Mom’s Spaghetti” made national headlines for a different reason.  A “Mom’s Spaghetti” restaurant took its “chance to blow” by opening in downtown Detroit, Eminem appeared on the restaurant’s opening day to make his “arms heavy” serving customers, local marching band performed a rendition of “Lose
Continue Reading “Would You Capture It or Just Let It Slip?” (Eminem-Lose Yourself)