Intellectual Property & Franchising Law

Confused about IP Symbols - TMSM?!?!

June 6, 2012, 11:55 AM

Are you confused about when you can use , what is SM, and do you need a registration for ? Heres a quick break down of the various symbols denoting claims of ownership for intellectual property. The symbol may only be used in connection with a trademark or service mark that has been registered with the United States Patent and Trademark Office. The symbols TM and SM, denoting trademark (for goods) and service mark (for services), respectively, may be used if you are claiming rights in the name, logo or slogan, but have not registered that name, logo or slogan with the United States Patent and Trademark Office. The symbol may be used in connection with written materials, such as a website, manuscript, articles, lyrics or architectural plans, in which you are claiming copyright ownership. Registration with the United States Copyright Office, although available, is not required to use the symbol. --Nicole J. Harrell

Technical Glitch Affects Schedule for New Generic Top-Level Domains

May 22, 2012, 11:57 AM

As explained in prior posts, the Internet Corporation for Assigned Names and Numbers (ICANN) is making available new generic top-level domains which include different types of words in different languages. In April, the TLD Application System (TAS) had to be taken offline because of a technical glitch which may have permitted some users to be able to review file names and user names of other users. After learning of this issue, ICANN provided notice to all users of TAS, even if they were not affected by the problem. ICANN is hoping to reopen TAS by May 22, 2012. Once it is reopened, users will have eight days to review their applications and complete any remaining activities, meaning ICAAN hopes to close the application window for new generic top-level domains by May 30, 2012.

Talisman or Touchstone? Fourth Circuit Polishes Internet Trademark Law

May 14, 2012, 3:58 PM

Does the newness of internet technology excuse a company from using a competitors trademark as a keyword for a sponsored ad link to lure customers to its internet pages? Apparently not. In Rosetta Stone Ltd v. Google Inc., (4th Cir., No. 10-2007, 4/9/12), the Fourth Circuit Court of Appeals overturned the special internet trademark rules imposed by a District Court and clarified that the likelihood of confusion analysis within the internet context should follow traditional trademark standards.

Keyword Advertising and Trademark Rights: Recent Developments

May 4, 2012, 3:06 PM

The question of whether the owner of a trademark can prevent its use as a "keyword" by Google and other Internet search engines has been in play ever since the search engine providers found effective ways to turn "sponsored links" and "sponsored ads" into major revenue streams.

Trademark Selection: Go Figure

April 19, 2012, 3:44 PM

In advising clients about whether a prospective mark is available i.e., whether it can but used without infringing anothers rights trademark lawyers seldom give unqualified advice. One mark infringes another if it is likely to cause confusion or mistake as to origin or source among an appreciable segment of consumers exercising ordinary care for purchases of the type. Judging whether a likelihood of confusion exists is a subjective judgment that calls on the trademark lawyer to read the minds of consumers as they may encounter the marks in the future. People differ, of course, so the task also calls for reading minds having very different perspectives. In addition, since the prospective mark is not yet in use, by definition the judgment is speculative and made with incomplete information about how consumers might encounter the marks.

Software Warranties

April 13, 2012, 3:26 PM

Software providers are generally loathe to provide warranties, but at a minimum, a software provider should warrant that the software will perform in accordance with specifications agreed upon by the parties and the documentation that provided to you, be free from errors and defects that materially affect the performance of the software, and will not infringe the rights of any third parties. The term of the warranty with respect to performance should take into account the length of the installation period before the software is used in a live setting or not commence until you are using the software in a live setting. Otherwise, you run the risk of having the warranty period expire before the software is operational or shortly thereafter. --Nicole J. Harrell

Update on Applications for New Generic Top-Level Domains

April 9, 2012, 3:26 PM

As explained in a prior blog post, the Internet Corporation for Assigned Names and Numbers (ICANN) is making available new generic top-level domains which include different types of words in different languages. ICANN will continue to accept applications through April 12, 2012. ICANN recently announced that its target date to release the list of applications for new generic top-level domains is April 30, 2012. To the extent that ICANN receives an overwhelming number of applications, this target release date may be postponed.

Prometheus Undone

March 23, 2012, 2:49 PM

What constitutes patentable subject matter has been a question of keen interest to the courts in recent years. The most recent chapter came on March 20, 2012 with the Supreme Courts unanimous decision in Mayo Collaborative Services v. Prometheus Laboratories, Inc.

Even the Iconic Cannot Always Claim Dilution

March 12, 2012, 2:11 PM

In previous posts, we have explained that violating the dilution provisions of the Federal Trademark laws is difficult and only available to the uber-famous. As living proof of this point, the Federal Circuit recently denied such protection to the iconic Coach brand. Without a doubt, Coach is one of the most famous American high fashion, handbag manufacturers, ubiquitously present in nearly all high fashion magazines and annually selling billions of dollars of Coach branded products. Yet, even with this type of fame, the company could not avail itself of the anti-dilution provisions of the Trademark Dilution Revision Act of 2006 ("TDRA"), 15 U.S.C. 1125(c), to block the registration of the mark coach by Triumph Learning who made and marketed test preparation materials under that name.

Are Trade Secrets Becoming More Attractive? Part 2

March 6, 2012, 2:05 PM

Recent articles and scholarly studies point to a significant increase in trade secret litigation. Most notably, two studies by attorneys at the law firm OMelveny & Meyers, published in the Gonzaga Law Review in 2009 and 2010, analyzed trends in trade secret litigation in federal and state courts. The studies found that the frequency of trade secret litigation has been growing exponentially in federal courts and more modestly in state courts, but in both venues at rates greater than those for litigation generally. According to a February 1, 2012 Business Week article, four of the ten largest intellectual property verdicts in 2011 were trade secret cases. These included a $2.3 billion verdict (subsequently reduced to slightly under $1 billion) in an action brought by St. Jude Medical, Inc. against an ex-employee and a Chinese company he founded. Admittedly, the verdict may be more of a message than a remedy: since the defendants are overseas, the judgment may not be collectable.

Early Public Disclosure of Patentable Inventions Under the America Invents Act

February 29, 2012, 10:16 AM

Changes to U.S. patent laws enacted at the end of last year will eventually change our system from one that awards patent rights in an invention to the first inventor(s) in cases where the same invention is created by more than one inventor or group of joint inventors acting independently of each other, to one in which those rights will be awarded to the first legitimate inventor or group of joint inventors to file an application to patent the invention with the U.S. Patent and Trademark Office.

Do You Have an Implied Copyright License?

February 24, 2012, 2:09 PM

A recent opinion issued by the federal court in Norfolk explores the issue of whether a company has an implied license to use otherwise copyright protected work allegedly written by one of the companys clients. In a Report and Recommendation issued on February 13, 2012 in Innovative Legal Marketing, LLC v. Market Masters-Legal, Civil Action No. 2:10cv580 (E.D. Va.), Judge Stillman ruled that the defendant, Market Masters-Legal, had an implied nonexclusive license to use an email script allegedly written by a client.

New Business Opportunity Rule

February 21, 2012, 2:42 PM

The Federal Trade Commission has recently issued the final Business Opportunity Rule which will be effective March 1, 2012. The Business Opportunity Rule applies to commercial arrangements where a seller solicits a buyer to enter into a new business, the buyer makes a required payment to the seller, and the seller (either expressly or implicitly) makes claims that it will provide locations, outlets, accounts or customers or buy back the goods or services that the buyer makes. Business opportunities include work-at-home opportunities and many vending opportunities.

Accepting Applications

January 31, 2012, 9:20 AM

After seven long years of planning, the Internet Corporation for Assigned Names and Numbers (ICANN) is making available new generic top-level domains which include different types of words in different languages. This means that there may be new generic top-level domains besides the twenty-two generic top-level domains already available such as .com, .org, and .net.

Federal Circuit Continues to Support Patent Injunctions

January 27, 2012, 9:52 AM

In a series of cases handed down recently, the Federal Circuit continued its post-eBay efforts to bolster the injunctive remedy provided to patent owners. Although many questioned whether injunctive relief would be readily available to patent holders both before and after trial in the wake of the more stringent test for injunctive relief handed down by the Supreme Court decision in eBay, Inc. v. MercExchange, LLC, 547 U.S. 388, 391 (2006), the Federal Circuit continues to affirm injunctive relief and to defer to the findings of the trial courts on irreparable harm, balance of hardship, and on the scope of the injunctions granted.

Is Trade Secret Protection Becoming More Attractive?

January 24, 2012, 12:35 PM

One of the many changes in patent law brought by the recently-enacted America Invents Act might make trade secret protection more attractive than patent protection, at least in some circumstances.

New Look for USPTO Website

January 11, 2012, 4:27 PM

If you regularly use the website maintained by the United States Patent and Trademark Office ("USPTO"), be aware that its home page has changed. In late December 2011, the USPTO rolled out a new home page for its website at The USPTO had received feedback indicating that its home page was too text heavy so the USPTOs redesign is aimed at making the website more accessible to its users. For those who miss the old home page, it still is accessible via the USPTOs website until the end of February 2012. The USPTO also has created an email so that users can send comments on its new home page. This is the first of several improvements that the USPTO plans to make to its website in 2012. --Kristan B. Burch


January 3, 2012, 2:52 PM

VetFran is a voluntary program sponsored by the International Franchise Association and is designed to help U.S. military veterans transition into civilian life. Currently, more than 325 franchise systems participate in VetFran and voluntarily offer financial incentives to veterans seeking to become franchisees. Those incentives vary by the participating franchise system, but can include reduced initial franchise fees and special financing. To learn more about VetFran, the participating franchise systems and the incentives offered to veterans, please visit --Nicole J. Harrell

Terminations of Copyright Transfer

December 15, 2011, 11:32 AM

The obscure termination of transfer provision of the 1976 Copyright Act popped up twice in the news recently. The provision allows a copyright owner who assigned his copyright interest to another to undo the transfer after a number of years and recover ownership of the copyright. How the termination right operates depends on when the copyright interest arose, but the language governing copyrighted works created after January 1, 1978 is as follows: