Intellectual Property & Franchising Law

Update on Trademark Bullying Study

June 7, 2011, 8:17 AM

In a post last year, I alerted readers to the United States Patent and Trademark Offices (PTO) solicitation of comments for a study on the problem of trademark bullying, that is, the use of unduly aggressive tactics in trademark disputes by large and well-financed trademark owners. In late April, the PTO issued its findings to Congress and posted the study on its website. To read the entire report, click here.

Inequitable Conduct Equalized

June 2, 2011, 9:58 AM

In almost every patent infringement case, defendants reflexively sling back a counterclaim charge that the patentees patent is unenforceable because the patentee or his or her lawyer deceived the United States Patent and Trademark Office by failing to disclose material information. Some courts have referred to this practice as a scourge or plague and the United States Court of Appeals for the Federal Circuit (the Federal Circuit) (the appellate court charged with ruling on patent law disputes) has steadily heightened the requirements for making such claims by, for example, requiring a detailed factual pleading to support such claims. On May 25, 2011, the Federal Circuit, in the en banc decision of Therasense, Inc. v. Becton, Dickinson & Co., Nos. 20081511, 20081512, 20081513, 20081514, 20081595, 2011 WL 2028255 (Fed. Cir. May 25, 2011), totally rewrote the two pronged standard that governs this defense. In doing so, the Court implemented a totally new standard for the first prong of materiality and clarified the seemingly contradictory precedent surrounding the second prong of intent to deceive. In short, it just got a whole lot harder to defend against a claim of patent infringement through a charge of inequitable conduct.

Protecting your IP and Brand in the Growing Online World

May 31, 2011, 10:22 AM

A Web Server Survey conducted by NetCraft found that the Internet had 273 million sites in January 2011. According to the same survey, the number of Internet users is nearly two billion, representing almost 30% of the worlds population. A search of your companys or products name on the Internet could reveal hundreds of hits on various directories, listings, blogs and pages. Those hits may or may not be directly related to your company or your brand. If you are monitoring your company and your brand, you should be proactive, monitor the Internet regularly and act promptly when you discover misuse, misrepresentation, defamation or infringement. --Nicole J. Harrell

SBA Franchise Registry A Valuable Resource for Franchisees, Franchisors and Lenders

May 25, 2011, 2:02 PM

The United States Small Business Administration (SBA), in conjunction with FRANdata, offers the Franchise Registry online lending portal. Franchise systems can pre-qualify for inclusion in the Franchise Registry, which facilitates and streamlines SBA lenders making loans to potential franchisees of those pre-qualified systems. The Franchise Registry has recently announced an expansion of its online lending portal to provide lenders with additional credit risk information tools to better assess the risk of lending to a franchisee within a particular franchise system. In addition, the SBA provides information on loan failure rates within specific franchise systems, which information can prove invaluable to prospective franchisees considering signing a franchise agreement with a particular franchise system. Thus, the Franchise Registryand related information compiled by the SBA, e.g., can be a valuable source of information to franchisees, franchisors and lenders. --Stephen E. Story

New TBMP Finally Is Available

May 17, 2011, 10:41 AM

While the process has not been quick, the Trademark Trial and Appeal Board released this month (May 2011) the Third Edition of the Trademark Trial and Appeal Board Manual of Procedure (TBMP). The TBMP applies to trademark opposition, cancellation, and concurrent use proceedings pending before the Trademark Trial and Appeal Board. The Third Edition of the TBMP incorporates all case law, statutory changes, and changes to the procedural rules as of November 15, 2010. This means that instead of having to look in multiple places to determine the procedure for motions practice or expert disclosures, for example, the Third Edition incorporates all of the changes and updates to the TBMP in one place. Prior to this May 2011 release, the TBMP was last updated in 2004. Click here to access a copy of the Third Edition of the TBMP. --Kristan B. Burch

Tax Strategy Patents Under the Patent Reform Act of 2011

May 10, 2011, 2:17 PM

In addition to its more generalized attempts to improve U.S. patent law, the Bill to enact the Patent Reform Act of 2011 recently passed by the Senate includes a specific section intended to prevent patenting of tax strategies:

i4i Revisited

April 28, 2011, 10:36 AM

An earlier post explained the recent ruling by the United States Court of Appeals for the Federal Circuit (the appeals court that hears patent appeals) in the case of i4i Limited Partnership and Infrastructures for Information Inc., v. Microsoft Corporation, 598 F.3d 831 ( Fed. Cir. 2010), where the Federal Circuit affirmed a bedrock principle of patent law: Any potential infringer who challenges the validity of a patentin essence, arguing that that the patent should not have been granted for a variety of reasons, including that the claimed invention was already disclosed or was obvious in light of other patents, publications or the like (collectively, called Prior Art)must prove the invalidity claim or defense under a very demanding by clear and convincing evidence burden of proof, even when the Prior Art was not considered in granting the patent. In perhaps one of the most important patent cases of the past decade, the Supreme Court heard argument Monday, April 18, 2011 on the i4i case and its decision could have implications that would drastically change United States patent law and have a profound effect on how corporations protect and profit from their future inventions.

Patent Marking: Do It, But Know When to Stop

April 26, 2011, 3:40 PM

Most patent holders know that, under Section 287(a) of the Patent Act, they should mark their patented devices. Failure to mark in accordance with the statute may deprive a patent holder of the right to recover damages in infringement litigation. Because of a recent flood of false patent marking cases, patentees should also know it is important to stop marking patented inventions when the patents expire.

What is Cloud Computing?

April 16, 2011, 8:43 AM

Your company may have lots of software and hardware to keep itself running and to maintain client records, invoices, accounting records, documents and e-mails. You may even have a temperature controlled room with large servers. And most likely, you struggle with when to make expensive upgrades. Cloud computing to the rescue. Typically, cloud computing providers deliver business applications online and they are accessed from a web browser while the software and data is stored on servers. As an on demand service, proponents for cloud computing says that it is a way to increase capacity or add capabilities without investing in new infrastructure, training new personnel or licensing new software. One of the greatest concerns, however, is the loss of control of the data since it is created outside the firewalls of the workplace. If you are considering cloud computing, understand the rewards and the risks by spending some time analyzing what your company may gain and what risks you may incur. --Nicole J. Harrell

Be Careful with Your AdWords!

April 1, 2011, 2:26 PM

Google offers a service called AdWords which permits advertisers to pay to place advertisements that appear when certain internet searches are run. Companies bid on and purchase AdWords such that their advertisements appear when those words are used in searches. The problem arises when a company chooses to purchase AdWords which contain trademarks of their competitors.

Revisiting Whether You Really Need More Domain Names - II

March 28, 2011, 3:06 PM

Earlier posts cautioning against falling for unsolicited invitations to purchase foreign domain names assumed that a U.S. company that has obtained necessary rights to the .com, .net and .org variations of its chosen domain name has put itself where it should be in the Internet domain name marketplace.

Job Security or Take a Whac Out of Crime

March 17, 2011, 9:17 AM

Sometimes life imitates art; at least, if you consider the iconic Whac-a Mole game art. Like life, in the game, moles pop out of five holes and players whac them with a soft mallet to force them back into the hole. A recent sad tale involving the game points out a few practical lessons for protecting intellectual property from employees and independent contractors bent on whacking your company.

Software Licensing Compliance and the Business Software Alliance

February 28, 2011, 1:21 PM

Businesses should periodically audit their software license compliance, to be sure they have valid software licenses for all software programs used by the business. Failure to properly license computer software can result in costly copyright violations. The Business Software Alliance, a consortium including, among others, Microsoft Corp., Apple Computer, Inc. and Adobe Systems Incorporated, attempts to enforce the legal obligations of companies to license its members software programs, and, upon discovering violations (often by anonymous complaints), has the ability to seek significant fines under United States copyright laws. This firm has experience negotiating favorable resolutions of software audits requested by the Business Software Alliance. However, it is a far better practice for a business organization to self-police its software usage, and periodically ensure, through its in-house information technology department, or its outsourced information technology consultants, that all of the software being used by the organization has been appropriately and lawfully licensed. --Stephen E. Story

Pitfalls of IP Assignments Not Your Standard Forms

February 21, 2011, 10:45 AM

On February 28, 2011, the U.S. Supreme Court will hear argument in a dispute between Stanford University and the pharmaceutical giant Roche about the effects of an inadvertently-granted patent assignment. It is only the latest of several recent cases involving the validity, scope and effect of patent assignments. A common thread among them is that all arose from the inartful drafting and/or inattention to the details of assignment documents. In other words, they involve disputes that might have been avoided if those involved sweated the details. Here are three very current examples:

Can I Patent My Idea?

February 14, 2011, 3:22 PM

In a prior post I included a link to a recent U.S. Supreme Court decision confirming the patentability of certain business methods and processes.

Get on Board the Patent Prosecution Highway

February 7, 2011, 2:39 PM

On January 28, 2008, the USPTO-CIPO Patent Prosecution Highway (PPH) pilot project was launched between the United States Patent & Trademark Office (USPTO) and the Canadian Intellectual Property Office (CIPO). The pilot program with the CIPO was set to expire on January 28, 2011, but due to its success, the pilot status has been removed, with the requirements and procedures remaining the same. For more information, visit

Vestis Verum Non Reddit (Apparently, Clothes Do Not Make the Man)

January 27, 2011, 11:10 AM

Should Chippendales be granted a trademark in their trademark Cuffs and Collar outfit? The United States Court of Appeals for the Federal Circuit recently addressed the issue in In re Chippendales, USA, Inc. No. 2009-1370, 2010 US App. LEXIS 20421 (Fed. Cir. October 1, 2010).

Tis the Season for Gift Returns and Business Method Patents

January 21, 2011, 2:47 PM

Recent media reporting on a new patent issued to Amazon for a System and Method for Converting Gifts has focused on changing attitudes towards gift giving and acceptance inherent in the subject matter of this patent.