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National Flags And Your Trademark

In a world were international commerce has become the norm, often times businesses and organizations want to demonstrate their multiculturalism in their trademarks. This can be a slippery slope between what is allowed and not allowed.

The United States has been part of the Paris Convention since 1911. Over the past century, the United Sates, along with over 174 other countries have signed this treaty and agreed to refuse or invalidate trademark registrations which contain the flags or emblems of the other member countries under Article 6 of the Paris Convention.

The question comes then, how can a business or organization use a flag or national emblem in their trademark. One way to do this is to not use an entire flag, for instance, using a portion of the flag in a circular shape, or as a background.

If you plan on using a flag design in your trademark, contact Orlando's Daniel Law Offices at 866-37PATENT and make sure you are protected.

 

The “Poor Man’s Patent”

Prior to March 16, 2013, the United States was a first to invent country. This meant that even if someone filed first, if you could prove that you came up with the invention first, you would get the patent.

Then, everything changed. The United States joined most of the rest of the world under the “first to file” provisions of the America’s Invent Act of 2011. This voided the idea of the “poor man’s patent”, where inventors would mail their invention disclosure to themselves to keep it secret while being able to later prove that they came up with the idea first.

Under the old laws, if you came up with an idea first and someone else filed first, you could file an interference proceeding. These were extremely expensive running into the hundreds of thousands of dollars, thus not helping the small inventor.

The best way to protect your idea is to meet with a registered patent attorney. The registered patent attorneys at the Daniel Law Offices are proficient in helping you protect your ideas.

If you believe that you have an idea that you want protected, contact Orlando's Daniel Law Offices at 866-37PATENT.

Online Piracy by the Numbers

In a recent survey, a full 70 percent of respondents admit they see nothing wrong with online piracy, the unauthorized use or reproduction of another's created work. That's a disturbing figure, considering the financial and reputational harm that this form of theft does to the people and companies who find themselves victims.

Consider these statistics:

  • Websites that host pirated content receive more than 146 million visitors each day.
  • Piracy costs the music industry upward of $12.5 billion in economic losses each year.
  • 71,060 people lose their jobs each year because of online piracy activities.
  • Those who keep their jobs lose some $2.7 billion in workers' earnings to piracy each year.
  • 95 percent of music downloaded online is illegal.
  • The average iPod holds some $800 worth of pirated music.
  • 42 percent of software running on computers not just here in the US but worldwide was downloaded illegally.
  • More than 75 percent of the world's computers have at least one application that was downloaded illegally.

Top targets for online piracy are movies, television shows, music, games, software and e-books. And the justifications that offenders use are plentiful. Many argue that major film producers, music celebrities and best-selling authors have plenty of money and won't miss the few dollars that a single download will cost; that digital content is too expensive; that already owning the content in one format should automatically afford them the right to the same content in all formats; that creatives should simply be happy creating content for art's sake; and that "everyone's doing it."

Understand that if you are illegally downloading content, you can be held legally and financially liable. If ...

Stella McCartney, Steve Madden in Legal Battle Over Knockoff Bags

Stella McCartney and Steve Madden are two of the most famous names in fashion design. Now, they’re set to battle it out not on the runway, but in the courthouse. McCartney recently filed a law suit against Madden, alleging that the Madden’s BTotally tote bag infringes upon her company’s Falabella bag.

UK-based McCartney’s 22-page complaint, filed in New York federal court, claims that Madden’s bag, which sells for $108, mimics “every key element” of her own, which hit the market first and sells for $1195. Charges levied include trade dress infringement and design patent infringement, trade dress dilution, unfair competition and deceptive trade practices.

In the fashion world, trade dress infringement and dilution are particularly troubling intellectual property issues. Trade dress laws are designed to protect designers and makers of items that are unique, unusual or widely recognized by the public. The term “trade dress” refers to a product’s physical appearance, including its size, shape, color, design and texture. It may also refer to the way a particular product is packaged, labeled, presented or promoted to consumers, including the use of distinctive graphics, configurations and marketing strategies.

Trade dress cases typically arise when two products are similar enough to cause confusion among consumers. In court, the win usually goes to the designer or maker with the more established or recognizable product. Legal remedies include:

  • Injunctive relief: A court-issued restraining order that prohibits one party from further creating or marketing infringing items.
  • Money damages: Compensation for any financial losses that a complainant suffered because of an infringement.

If you are a fashion ...

Entrepreneurism Gets a Boost in 2015

According to the Kauffman Index, the largest index tracking entrepreneurship across city, state and national levels for the United States, new business creation is on the rise in 2015. After a five-year slump, American entrepreneurs rallied back last year, opening upward of 530,000 new businesses each month throughout 2014. It all added up to the largest year-over-year increase in new business launches in the past two decades.

While you might think that tech-savvy Millennials would lead the pack of new entrepreneurs, the latest figures show just the opposite. In fact, the rate of new business launches was lowest among entrepreneurs in 20-34 age range. Instead, it’s Baby Boomers (age 55-64) who are proving the most active. This group today represents 25.8 percent of new startups, up from 14.8 percent in 1996.

Those coming to America from abroad also are lending significantly to the rise. Some 28.5 percent of all new entrepreneurs in 2014 were immigrants, compared to just 13.3 percent in 1997. And among various racial and ethnic groups, Hispanics lead. All groups showed some increase, but Hispanics topped them with a 22.1-percent share of new startups last year compared to 10 percent in 1996.

Perhaps most encouraging is the fact that nearly 80 percent of new business owners were not previously employed. This is significant because, while 20 percent of new entrepreneurs were prompted by a job loss, the vast majority instead started businesses simply because they recognized and acted upon opportunity. It represents a major improvement over recent years’ reports, particularly the 2010 index wherein it was revealed that, during the Great Recession, opportunity entrepreneurs opened businesses at one of the lowest rates in decades.

"Entrepreneurs starting new businesses because they saw market opportunities is back to historical norms," said Arnobio Morelix, a research analyst at ...

Photo Copyrights and Social Media

Federal law holds that copyright to a photograph is owned by the photographer who snapped it. He or she alone has the right to display, copy and distribute an image and to license or transfer those rights to others.  The only other person with commercial rights associated with an image is the human subject of that image. Publicity rights allow a person to receive payment for commercial use of his or her likeness.

But if you’re not careful, you could compromise your own rights with the click of a mouse. Statistics show that in 2014, social media users uploaded a staggering 1.8 billion images to Facebook, Instagram, Flickr, Snapchat, and WhatsApp each day. And with each upload, someone’s rights were compromised or violated.

As a photographer you retain copyright to your images, even when you post them on social media sites. However, in posting them, you also grant these sites a license to use your images for commercial gain free of charge and to license them to others. In most any other case, such use would be deemed a violation of your copyright and your subject’s right of publicity.

Here’s what you agree to by joining and uploading photos and other content to the most popular social media sites:

  • Facebook: For content that is covered by intellectual property rights, like photos and videos (IP content), you specifically give us the following permission, subject to your privacy and application settings: you grant us a non-exclusive, transferable, sub-licensable, royalty-free, worldwide license to use any IP content that you post on or in connection with Facebook (IP License). This IP License ends when you delete your IP content or ...

Three Tips for Crafting an Effective and Protectable Tagline

When developing your company or product brand, a great tagline can be an essential tool. A tagline is a catchphrase or slogan designed to be memorable enough to be instantly recognizable and to bring your brand to the mind of prospective customers. But it's not as easy as you might think. Orlando's Daniel Law Offices offer these three top tips for crafting an effective and legally protectable tagline.

  • Keep it simple: Three to five words work best. Consider a few of the most enduringly recognizable taglines - Nike's "Just do it," Wendy's "Where's the beef?" and American Express' "Don't leave home without it." Anything longer will prove less memorable and, therefore, less effective.
  • Paint a picture: The best taglines help potential customers see themselves benefiting from a particular brand's service or product. How many times have you seen or heard Nike's "Just do it" and pictured yourself working out or playing a sport? Make sure your tagline is descriptive enough to let customers know just how your brand can improve their lives and to elicit a response.
  • Make sure it's protectable: In order to qualify for trademark protection, your tagline must be  inherently distinctive and creative or have developed enough secondary meaning to immediately call a product or service to mind. An example of secondary meaning is the phrase, "You're in good hands." Despite being a generic phrase used for centuries, it's now developed enough recognition to be immediately connected with insurance provider Allstate, which adopted the tagline back in 1950.

To assure your chosen tagline is eligible for trademark protection, contact

Judge Shoots Down Happy Birthday Copyright Claim

It is perhaps the most recognizable ditty in the world - and for nearly three decades, music business giant Warner/Chappell Hill has made millions each year exercising its copyright claim to "Happy Birthday to You." But the company isn't celebrating today. California's U.S. District Judge George H. King recently shot down the company's claim, along with those of other copyright claimants who have made money on the song for upward of 80 years.

Judge King's ruling held that Warner/Chappell never had the right to charge for the use of the song to which it had enforced copyright since 1988, the year it bought Birch Tree Group, the successor to Clayton F. Summy Co., which claimed the original disputed copyright. Rather, King ruled that the copyright granted Summy back in 1935 covered only rights to specific piano arrangements of the music - not to the song itself.

The lawsuit was brought by a group of independent filmmakers, each of whom had paid thousands of dollars to use the song in their productions. For decades, Warner/Chappel Hill has collected royalties from producers of films, television shows, stage productions as well as greeting card makers and restaurants where employees sang "Happy Birthday to You" to patrons - a move that prompted many restaurateurs to write birthday songs of their own instead. Judge King's ruling effectively releases the song to public domain, though Warner/Chappell Hill could ask to appeal the decision.

The battle's roots go back to 1893, when Mildred Hill wrote a song for sister Patty Hill's kindergarten students:

"Good morning to you / Good morning to you / Good morning, dear children / ...

Costco on the Hook for Counterfeit Tiffany Diamond Rings

Clearing the way for what is expected to be a highly contentious legal case, a federal judge this week found wholesale giant Costco liable for passing off counterfeit Tiffany diamond rings. US District Judge Laura Taylor Swain ruled that the Issaquah, Washington-based company knowingly infringed upon trademarks held by the famed New York-based jeweler, Tiffany & Co., by selling bogus diamond engagement rings using the Tiffany name.

Attorneys for Costco argued that the term "Tiffany" is a generic one that denotes a particular type of ring setting. But the US District Court in Manhattan didn't buy that claim and has ordered Costco back to court in October to face a jury trial that will determine damages.

"Despite Costco's arguments to the contrary, the court finds that, based on the record evidence, no rational finder of fact could conclude that Costco acted in good faith in adopting the Tiffany mark," Swain wrote in her ruling.

While Tiffany is a world-renowned jewelry brand and millions of dollars potentially are at stake in this case, it's important to note that the same trademark laws that protect major companies also protect product designers and makers of all sizes. If you believe that your trademarked brand is being infringed upon, or of you're looking to secure trademark protection for your products and brand, call Daniel Law Offices at 866-377-2836 today.

Do You Know the Four Types of Intellectual Property Protection?

Protecting your intellectual property can make the difference in your brand or business's success or ultimate failure. In fact, statistics show that intellectual property theft costs American companies nearly $300 billion per year. But newer entrepreneurs often are unclear about just which type of protection best applies to their products, services or works.

The World Intellectual Property Organization, one of 17 specialized agencies of the United Nations created in 1967 to encourage creative activity globally, defines intellectual property as "creations of the mind — inventions, literary and artistic works, symbols, names, images, and designs used in commerce."

Each of these "creations of the mind" falls into one of four primary categories:

  1. Patents: Patents cover tangible inventions and grant inventors the legal right to exclude any other person or company from manufacturing or marketing those inventions. Patent protection can be registered both in the US and internationally and can last for up to 20 years.
  2. Trademarks: Trademarks cover names, phrases, symbols or devices used to brand your company and to distinguish its goods and services from those of your company's competitors. A registered trademark affords owners the exclusive right to use the particular trademark or service mark in connection with the goods and services listed in filings with the state or federal government.
  3. Copyrights: Copyrights protect written or artistic expressions in more tangible mediums than trademarked material. Examples are song lyrics, books, and television and movie scripts. While law holds that you own copyright of a work the moment you create it, failing to officially register copyright protection of that work means that you forfeit your right to sue for copyright infringement should another party begin using your work or something ...

American Businesses in a Trademark Race to Cuba

After more than half a century, the American flag once again flies over the United States Embassy in Cuba. The renewal of diplomatic relations between the two countries, announced in December, has literally thousands of businesses in a race to establish trademark protection in the "Pearl of the Antilles."

While American tourism in Cuba is still a no-go, approved travel to Cuba includes humanitarian projects, religious and educational activities, professional research and participation in athletic or public performances. Plus, the new US regulations were developed with the primary intention to allow American exporters to sell their goods directly to the Cuban private sector, rather than to government-controlled entities. In the interest of improving Cuba's infrastructure and boosting its economy, experts expect a significant increase in demand for American-made and distributed goods shipped into Cuba.

That expected demand has prompted a flurry of activity by business owners looking to protect their brands in Cuba. This is done via the Office of Foreign Asset Control, a division of the US Department of the Treasury. Since 1995, this office has worked to establish, maintain and protect or register intellectual property rights of American businesses and individuals in Cuba. But because mistakes or deliberate activities deemed OFAC violations can lead to costly penalties and even criminal charges, many US banks have refused to process Cuba-bound payments over the past decades, including those to Cuba-based trademark counsel. However, as efforts toward a relaxation of the US trade embargo against Cuba continue, many banks also are relaxing their policies on financial transactions between the two countries, making it easier for businesses to prepare for renewed trade opportunities.

There's a lot at stake for American companies and brands hoping to do business with Cuba, ...

Five Reasons Counterfeiting Isn't A Victimless Crime

That pair of Jimmy Choo knockoffs you picked up at a bargain price from a sidewalk vendor or that website that looked an awful lot like the famed shoemaker\'s despite a few typos may make your gams look great. But, they could cost you in the end. Counterfeiting, the act of manufacturing or distributing goods under someone else\'s name and without their permission, is both a state and federal crime for good reason.

While getting a great price on a lookalike product may seem a victimless crime, it is anything but. Here are five of the top reasons why:

  • Risk of injury: Because counterfeit goods typically are made with cheaper, lesser quality components, finished products can prove dangerous, putting a buyer\'s health and safety at risk.
  • Risk of fraud: Websites operated by counterfeiters are notorious for using malware to steal and share personal and financial information including credit card numbers, addresses, phone numbers and social security numbers, placing consumers at risk for identity theft and financial ruin.
  • Costs to communities: Because counterfeiters often don\'t pay taxes, they pose a big-picture risk to municipalities by taking monies from schools, hospitals, parks, infrastructure and social programs.
  • Support of other illegal activities: Counterfeiters often are involved in other serious crimes. In fact, law enforcement agencies have linked profits from sales of various counterfeit products to child labor, drug trafficking, organized crime and terrorism.
  • Damage to legitimate businesses: Legitimate companies spend significant time, money and human resources to develop, market and distribute high-quality products to consumers. Counterfeiters undermine those efforts, leaving reputable companies with lost sales, diminished profits and damaged reputations. The cost gets passed onto ...

When Domain Names and Trademarks Collide

You\'ve developed a product or service with great potential, secured the pertinent trademark and are ready to play the marketing game. You know that among your primary marketing and branding assets will be the right domain name. So what do you do when you log onto a domain registration site only to find that the name you want is already taken. 

Depending upon the situation, you may be out of luck to a certain degree. That\'s because domain names are not trademarks. Rather, domain names and URL addresses are much like telephone numbers in that legally, they\'re simply unique strings of characters that correspond to particular web content. Among the issues you may face in securing a domain name are:

  • Cybersquatters: Unfortunately, there is a huge business in buying up and essentially hoarding domain names, waiting until someone with a product or service of the same name comes along with a little desperation and a lot of cash. The cost of registering domain names is low, while the potential payoff can be significant. If your budget allows and you\'re insistent upon a particular already-registered domain name, you may be forced to pay up.
  • Fair use: Understand that even if you\'re the clear winner in potential trademark dispute, there may be some instances wherein another company can use your name via fair use laws. Japanese automaker Toyota learned this when a federal court found that a used car seller did not violate unfair competition laws by using the domains www.buy-a-lexus.com or www.buyorleasealexus.com.
  • Same name, different product or service: Delta Airlines and Delta the faucet manufacturer operate under the ...

Top Five Mistakes of First-Time Inventors and How to Avoid Them

Your great idea for a new invention is just that - an idea only. Until you move on it, you take the risk of someone else coming up with the same idea or one that's amazingly similar. It happens to would-be inventors all the time.

To help assure that your invention goes from those scribblings of inspiration on a notepad or napkin to success in the marketplace, you'll need to move quickly and confidently. But most importantly, you'll need to make the right moves, and that begins with enlisting the help of an experienced attorney specializing in invention and patent law. Often, first-time inventors attempt to go it alone, only to hit trouble. And more often than not, that trouble involves one of five common mistakes:

  1. Failing to search the market for identical inventions: Failing to thoroughly research the market to assure that another inventor hasn't already produced an identical product can cost you dearly - financially and potentially legally if you continue with an invention that's deemed to infringe upon an existing patent holder's.
  2. Failing to gauge your target buyer's market: Once you've confirmed that your idea truly is unique, the next question you'll need to answer - and truthfully so - is whether people will actually want to buy your invention. A key is to make sure your target market is large enough to warrant mass production of your invention, or that it serves a specialty market that will mean higher, more targeted demand and less competition.
  3. Slacking on the business side of things: A great idea is only as good as the business plan backing it up. ...

Seven Essentials of a Trademark Licensing Agreement

Once you secure trademark protection of a product, you\'ve got two choices - market the product yourself or license it to another party, sit back and let them do the work for you and share the financial benefits. In a well drafted and managed licensing agreement, both parties reap benefits. As the licensor, you\'ll be able to reach more markets of potential buyers with minimal capital, time and energy investment on your part while enjoying royalty payments. Licensees are afforded the opportunity to market a product in specified territories without having to spend the time and cost to develop the product, service or brand. 

To assure that your trademark licensing agreement is rock-solid, Daniel Law Offices shares these seven essentials of an effective contract:

  1. Put it in writing: Verbal agreements won\'t hold water in court should a dispute arise.
  2. Identify all parties: List the names and addresses of all involved parties including licensors, licensees and attorneys.
  3. Define all grants: Specify exactly what rights are being granted, in what geographical territories and for how long a period of time. Also be sure to specify whether the license is exclusive or non-exclusive, transferable or non-transferable, etc. The more detailed the terms, the less likely you\'ll face a dispute between parties later.
  4. Define the trademark itself: Specify exactly which goods and services your trademark covers, plus whether and where your trademark is registered or pending registration. If your American-trademarked product will be marketed internationally, you\'ll want to consider applying for protection in each applicable country.
  5. Payment consideration: Details of how much and in what way a ...

Indirect Infringement Explained

Everyone knows that making, selling or using a patent-, trademark- or copyright-protected invention without the owner's permission is a direct infringement and is punishable by law. But something known as "indirect infringement" also is a potentially damaging legal issue.

Indirect infringement happens when a person is involved in conduct that ultimately leads to direct infringement. There are two types:

  • Contributory infringement: The doctrine of contributory infringement has roots in the 19th century and was initially developed to prevent the infringement of machines. It occurs when an unauthorized seller offers something less than the whole protected invention or product. An example is a seller using someone else's logo on their own products; posting access codes and serial numbers that allow others unlawful access to authorized copies of software; and making or selling a part that works only in a patented invention.
  • Induced infringement: This type of indirect infringement occurs when someone does not actively make, use or sell an infringing product, but hires, convinces or otherwise induces someone else to do so. Essentially, it's aiding and abetting of infringement activities.

If you believe that your copyright, trademark or patent is being infringed upon, whether directly or indirectly, you'll want to enlist the help of an experienced attorney. Daniel Law Offices can be reached at 866-37PATENT. Call to schedule a consultation in Orlando or Tampa.

 

Tory Burch Secures $41 Million Judgement in Trademark Row over Counterfeit Jewelry

A New York federal judge on Friday issued a $41 million final judgment and permanent injunction in a trademark infringement suit brought by Tory Burch, LLC. Defendant Youngran Kim and her company, Lin & J International, Inc., must pay $38.9 million in damages and $2.3 million in attorney's fees for selling counterfeit goods featuring a cross logo deemed confusingly similar to the Tory Burch TT logo.

This isn't the first time that the famed fashion designer's company has sued over counterfeit goods and trademark infringements. In 2011, the company was awarded a staggering $164 million in a suit filed against creators of fake domain names claiming to sell bogus Tory Burch clothing, shoes, handbags and accessories. The court also ordered that 232 domain names used to sell the fakes be permanently disabled and turned over to the fashion label.

While Tory Burch is an internationally recognized name, the same trademark laws that protect the designer and her company also protect designers and design firms of all sizes. Counterfeiting is a federal and state crime, involving the unauthorized manufacturing or distribution of goods under someone else's name.  Counterfeit goods typically are made from lower quality components, which means that the victim not only loses money in sales, but also may suffer damage to their reputation, leading to further financial loss.

Counterfeiting is estimated to result in annual losses of over $20 billion to American companies. If you are a designer who believes that your products are being copied and sold without your permission, contact an experienced trademark attorney. Daniel Law Offices, with locations in Orlando and Tampa, can help. Reach us at 866-37PATENT.

Innovative New Product Helps Avoid Kids Being Left in Hot Cars

While it seems incredulous to many, busy schedules, stressful lifestyles or simple distractions often are to blame for parents and caregivers forgetting that their infant or toddler are in the back seat, sleeping or quietly playing. The result can be devastating. On average, 38 children die each year from heat-related deaths after being left or trapped inside hot cars. Those who survive face potential long-term effects including kidney problems, blood clots and lung malfunction.

To help curb the problem, Richard Zachar and George Bloukos, two former stockbrokers living in Florida, have created the Bee Alert system, designed to help remind parents that they have little passengers depending on them. Bee-Alert is a light-activated audio alert that’s easily installed in the well of the driver's door. When the door is opened, a verbal command instantly reminds the driver to check the back seat before locking up and walking away.

The Bee-Alert is affordable and available online. It's also highly recommended for pet owners, as thousands of dogs die in hot cars each year nationwide. And, the Bee-Alert can be programmed for alerts in several foreign languages.

Daniel Law Offices is proud to have been a part of bringing the Bee-Alert to market. The Orlando-based firm handled the inventors' patent application and successfully secured protection under US Patent 8,847,747.

Do you have an idea for an invention designed to address an important child or pet safety issue? We can help. Contact Daniel Law Offices at 866-37PATENT and speak with an experienced patent and trademark attorney today. 

Supreme Court Upholds 50-Year-Old Ban on Patent Royalties in Marvel Case

In a highly watched case, the United States Supreme Court this week sided with Marvel Enterprises, Inc. in a legal battle over patent royalties on a now defunct Spider-Man toy patent. Their decision upholds to a 50-year-old rule barring royalty agreements that continue after a patent expires.

The case centered on rights to a toy Spider-Man glove that shoots foam from the wearer's palm, creating a "spider-like web for amusement purposes." Patent protection for the toy was granted to Stephen Kimble in 1990 and, after an initial court fight, Kimble and Marvel reached a licensing agreement that allowed Marvel to market the toy for royalty payments to Kimble. However, the licensing and royalty contract did not specify an end date, so when the patent expired, Marvel continued to sell the toy, but stopped sending royalties to Kimble.

Attorneys for Marvel argued precedent based on a 1964 case referred to as Brulotte, which held that royalty payments cannot exceed the life of a patent. Supreme Court Justices agreed. With a quick look at the US Patent and Trademark Office's website, you'll see that patent protection does, indeed, eventually run out. Utility and plant patents generally last for 20 years from the date the patent is granted, subject to maintenance fees and may be extended for a limited number of reasons. A design patent is generally granted protection for 14 years measured from the date the design patent is granted.

"Patents endow their holders with certain superpowers, but only for a limited time," wrote Justice Elena Kagan for the majority. "In crafting the patent laws, Congress struck a balance between fostering innovation and ensuring public access to discoveries … And when the patent expires, the patentee's prerogatives expire too, and ...

Three Ways Small Businesses Can Protect Themselves from Patent Trolls

One may think that patent trolls target only big businesses with deep pockets. Not so. Small and medium-sized businesses increasingly are finding themselves on the receiving end of patent infringement lawsuit filings.

Patent trolls are individuals or businesses that secure patents on inventions with no intention of producing or using them. Rather, they wait until another entity attempts to put a similar invention into commercial practice, then strike with costly patent infringement lawsuits. Also known as non-practicing entities, patent trolls often target smaller businesses with settlement offers just under what litigation likely would cost, knowing that their victims are more likely to pay up rather than take a chance on a court fight.

If you're the owner or manager of small or medium-sized business with an idea for a new invention, here are three ways to protect your company and your patent:

  1. Do your homework first: Many inventors simply assume that their ideas are truly unique. Unfortunately, that's often not the case. Before attempting to put any new product or service on the market, it's critical that you conduct a thorough search to assure that someone else hasn't already patented the same idea or one that's dangerously similar. Otherwise, your investment in the invention and its marketing may be all for naught.
  2. Insure: The boost in patent infringement lawsuits over the past decade has prompted multiple insurance companies to offer intellectual property insurance policies to businesses. It's a wise financial move if you plan to develop and offer new innovations.
  3. Consult an attorney: Your best bet in securing and defending a valid patent is to consult with an attorney from the ...

Don't be Duped by These Seven Copyright Myths

Copyright can be a confusing legal subject. Essentially, securing copyright protection gives a creator or assignee the exclusive legal right to print, publish, perform, film, or record literary, artistic or musical material, and to authorize others to do the same. But there is persisting confusion about just what copyright law does and does not cover. Daniel Law offers this quick checklist of common copyright misconceptions.

  1. Copyright protects ideas: Not so. Copyright protection applies only to tangible expressions of an idea, including documents, written or recorded music, completed artwork, written screenplays and produced programs, for example.
  2. Copyright protects names and titles: On the contrary, names, titles, logos and slogans fall under trademark law rather than copyright law.
  3. If it's on the Internet, it's public domain: Just because it's posted on the internet and publicly accessible doesn't make it fair game for use by anyone. Public domain comes into play only once a copyright expires, typically many years after the author's death.
  4.  If it lacks a copyright notice, it's fair game: Use of copyright notices in the United States once was required but that hasn't been the case since the Berne Convention Implementation Act of 1989. That said, placing the optional copyright notice on your work certainly won't hurt and may help avoid infringement.
  5. I can legally use someone else's work if I change it: Only the owner of copyright in a work has the right to create or authorize creation of an adaptation of the copyrighted work. If you don't have express permission, you may face copyright infringement allegations.
  6. I'm ...

Celebrity Images on Art vs. Merchandise - Guess Which One will Land you in Legal Trouble

Are you a retailer considering selling artwork or merchandise emblazoned with a celebrity's image? Depending upon just what you're selling, you may be courting legal trouble, say copyright attorneys with Florida's Daniel Law Offices.

There are two primary determining factors in whether use of a celebrity image on or in a product is allowable: 

  1. Whether that image is deemed a unique artistic representation
  2. Whether that image violates a person's right of publicity

Also known as personality rights, the right of publicity essentially is an individual's right to control the commercial use of his or her name, image, likeness or other unequivocal aspects of his or her identity, such as voice or gestures. In some ways, personality rights are similar to trademark rights, except that personality rights lack federal protection. Instead, they are governed by state law, and state laws vary in their interpretations and reaches.

Several high-profile cases illustrate the differences in legal interpretations by state. In a famous 1990s Ohio case (ETW Corp v. Jireh Publishing, Inc.), representatives of golf professional Tiger Woods sued sports artist Rick Rush and his company, Jireh Publishing. At the time, Woods still was a relative newcomer to pro golf, but was generating massive publicity. Banking on Woods' growing fame, Rush created a series of 250 serigraphs and 5,000 smaller lithographs of a painting titled "The Masters of Augusta" featuring Woods in the foreground with several other golf greats in the shadows. Woods' representatives claimed sales of the painting violated Woods' trademark and right of publicity. Ultimately, though, a federal appeals court disagreed, ruling that Rush's prints merited First Amendment protection because they were neither sports merchandise nor ...

Understanding Fair Use in Copyright Law

Copyright law allows owners exclusive right to the use of their creative works. But in certain instances covered under fair use copyright law, others may be allowed to legally use portions of your works.

In the United States, fair use doctrine permits limited unlicensed use of copyrighted material without acquiring permission from the rights holders for certain purposes. These include commentary, criticism, news reporting, research, teaching, library archiving, scholarship and search engines. Determining fair use involves consideration of these four basic factors:

  1. The purpose and character of the use, including whether such use is of a commercial nature or is for nonprofit educational purposes: This factor looks at whether the use of the copyrighted work fulfills the stated intention of copyright law, which is to stimulate creativity that enriches the general public via knowledge or the arts. Justified fair use demonstrates that public enrichment and cannot be for the sole purpose of personal profit.
  2. The nature of the copyrighted work: The nature of the copyrighted work comes into play primarily when it's deemed as belonging in the public domain. That's why facts and ideas cannot be copyrighted - only the particular, tangible expression of those facts and ideas. However, social usefulness of freely available information can be levied against a copyright claim. For instance, Time magazine purchased and copyrighted the Zapruder family footage of President John. F. Kennedy's assassination. But when the media giant attempted to block reproduction of stills from the film in a history book, Six Seconds in Dallas, written by former journalist Josiah Thompson, , the copyright was not upheld in part because judges concluded that "There is a public interest in having the fullest information available on ...

Lawsuit Alleges Etsy Hid Counterfeiting Problems From Investors

Launched in2005, Etsy, the wildly successful peer-to-peer (P2P) e-commerce website, boasts upward of 54 million registered members including 1.4 million active sellers with 19.8 million active buyers and last year racked up gross merchandise sales of $1.93 billion. So, it seemed a great deal for prospective investors when the company filed for its initial public offering (IPO) in March and went public in April. Now, investors are calling foul.

In a proposed class action filed earlier this month, Brooklyn-based Etsy is accused of misleading investors by failing to disclose in its IPO documents that as many as 2 million items listed for sale on the site were counterfeit or potentially infringing trademarks and copyrights. According to one analyst, upward of five percent of the site's 40 million listings may be counterfeit or infringing against multiple well-known brands.

After its IPO, Etsy's value rapidly climbed to more than $3 billion. But news of the potentially bogus merchandise and expectations that multiple legitimate brands will crack down on violations has driven Etsy's share price down, putting the company's listing fees and commissions at significant risk.

Investors acquired Etsy securities "in ignorance of the adverse facts concerning Etsy’s business and financial condition which were concealed by defendants," shareholders said in the complaint filed in Brooklyn federal court. The complaint names the company, Chief Executive Officer Chad Dickerson and Chief Financial Officer Kristina Salen as defendants.

The complaint further alleges that Etsy executives were motivated to make false statements or omissions "in order to personally benefit from the sale of Etsy securities from their personal portfolios."

Among the brands that Etsy merchandise may infringe against are Louis Vuitton, Chanel, Michael Kors, Disney and ...

Iron Man's Biggest Battle Just Might be Copyright Law

Never mind the nefarious Ultron - Iron Man's biggest nemesis at the moment just might show up in the form of copyright law. Even as the latest in the Avengers film franchise, Avengers: Age of Ultron, powers up the box office to the tune of more than $217.6 million in its first week in theaters, makers Marvel and Disney are being hit with a copyright infringement case.

At issue is character Iron Man's beefed up, tech-heavy suit, which has come a long way from its 1963 genesis. Comics giant Stan Lee's original Iron Man was clad in spandex and minimal armor. But in the Iron Man and Avengers films that debuted in 2008, the super hero suit donned by character Tony Stark (Robert Downey, Jr.) is decidedly more technologically advanced.

Brothers and comic book artists Ben and Ray Lai, founders of Horizon Comics and one-time Marvel artists who filed the legal complaint, say the dramatic transformation comes by way of Marvel's swiping the design of suits featured in their own independently created, apocalyptic-themed comic series, Radix.

According to court documents, shortly after the Radix was released, the Lai brothers submitted their work to Marvel and subsequently were hired by the company in 2002 to work on Marvel's X-Men and Thor, as well as Hasbro's G.I. Joe characters. At the time, the brothers were fresh off a case against the Massachusetts Institute of Technology, over the school's use of an illustration substantially similar to a Radix image in an application for a $50 million nanotechnology research grant from the US Army. The grant was to cover costs of development of a new generation of ...

Patent Litigation on the Rise Again

After a short-lived dip in 2014, legal cases over patent infringement allegations again are on the rise, according to an analysis by Unified Patents, an advocacy organization aimed at deterring frivolous patent litigation. Research identifies 1,443 patent litigation filings in the first quarter of this year. At this rate, calendar year 2015 could see upward of 5,772 filings - a 15-percent increase over 2014.

Such patents have fluctuated in recent years, with a record high of 6,000 filings reported in 2013, followed by a dip to 5,002 last year. Among the reasons is the US Supreme Court case Alice v CLS Corp., centered on a years-long debate over whether an abstract idea is patentable. The court held that a computer program created simply to apply an abstract idea and add nothing else lacks the necessary originality for a patent.

Many legal experts expected that the court's decision would curb the number of patent claims, and for a short period, it appeared they were right. But the first-quarter 2015 surge shows a decidedly different trend going forward.

Another factor in the rise could be the US Patent and Trademark Office's launch of the Patent Trial and Appeal Board, an administrative law panel established by the 2012 America Invents Act. The board allows defendants to ask for a pre-litigation review of a patent's eligibility. If the PTAB deems a patent invalid, a claim is terminated. The board's activity doubled in 2014, meaning that many of the cases reviewed never make it to litigation.

If you believe that your patent is being infringed upon or that you are being wrongfully accused of infringement, contact Daniel Law Offices at 1-866-37PATENT. 

Is Your DIY Project a Patent Infringement?

Books, magazines and the internet all are chock full of articles, videos and pictorials outlining an endless array of do-it-yourself projects. Giving yourself a sleek, layered haircut, restoring your mom's midcentury modern settee or building and installing your own rooftop solar panels all are now within your reach, thanks to the ever-growing DIY craze. Unfortunately, a few such projects may actually infringe up on someone else's patent.

One hard-learned example comes by way of PetaPixel.com, a leading photography blog. A recent blog post outlined for readers a DIY hack for creating a homemade version of a popular - and pricey - piece of photo gear. Shortly thereafter, the company received a cease-and-desist letter from attorneys representing the patent holder for that particular piece of gear.

"Under 35 U.S.C. 271(a), whoever makes any patented invention infringes upon the patent," the letter read.  That means that while a reverse-engineering copycat may save you money, it may also prove an infringement, even if it's for your own personal use. You don't have to sell the item to infringe upon a patent.

The letter further reads: "And, under 35 U.S.C. 271(b) 'whoever actively induces infringement of a patent shall be liable as an infringer.'"

In PetaPixel's case the company "induced" the infringement of the patent by sharing the DIY tutorial online, potentially encouraging thousands of readers to create patent-infringing copycat products themselves.

If you believe that someone is infringing upon your patent by creating or sharing DIY hacks, contact Daniel Law Offices in Orlando and Tampa at 866-37PATENT.  

Google Aims to Buy Patents in Troll-Busting Move

The issue of patent trolls buying up patents and using them not to actually manufacture helpful new inventions, but to make a quick buck in court is an increasingly bothersome one, as evidenced by the introduction of proposed legislation such as the Innovation Reform Act of 2015. Now, Google, arguably the nation's most prominent internet technology behemoth with 70 offices in more than 40 countries, wants to join the fight against patent trolls.

The California-based multinational tech company recently unveiled its Patent Purchase Promotion, a new marketplace wherein patent holders can tell Google about any patents that they're willing to sell and at what price. The marketplace will be open from May 8-22 and submitters will be notified as to whether Google is interested in buying their patents by June 26. Payouts will begin shortly thereafter - most by late August 

"Unfortunately, the usual patent marketplace can sometimes be challenging, especially for smaller participants who sometimes end up working with patent trolls," wrote Allen Lo, Google's deputy general counsel for patents, in a blog post announcing the program. "Then bad things happen, like lawsuits, lots of wasted effort, and generally bad karma. Rarely does this provide any meaningful benefit to the original patent owner."

While the move may seem a magnanimous one, many believe it may simply be a chance to do a little market research, mining hopeful patent holders about just what patents are out there and what holders believe they're worth. After all, the company is tight-lipped about how much it will reveal about the results of the marketplace or its intentions for the patents it acquires.

If you hold a patent that you're interested in selling, understand that Google's promotion ...

Top Trademark Mistakes - And How to Avoid Them

Above all else in your company, product line or service line, the most valuable business asset may be your trademark. It\'s your brand identifier - the element that sets your offerings apart from others. Unfortunately, many new entrepreneurs fail to fully understand all the ins and outs of filing, securing and protecting trademarks.

Daniel Law Offices offer tips for avoiding the most common trademark mistakes:

  1. Avoid generic words: Creating a new type of tissue paper and simply calling it \"Tissue\" won\'t work. Your trademarked name must be distinctive to hold up in court. Also, don\'t stop with your company, product or service\'s trademarked name. Make sure to trademark related slogans and taglines, too, as they can prove just as valuable. After all, that\'s why you immediately think of Nike when you hear the words, \"just do it.\"
  2. Mind the ownership line: Triple check to assure just who is listed as the owner of your trademark. Depending upon how the paperwork is completed, your trademark could be listed under your name or your corporation\'s name. This will prove critical should you eventually opt to sell or transfer your trademark, as it will be the determining factor in who gets the proceeds.
  3. Pay for a professional search: The most exhaustive internet or USPTO database search may not be enough to assure that your intended trademark is free and clear. Ponying up the money for a professional trademark search performed by a specialized attorney can help assure that you won\'t be sent back to the drawing board after costly filings and potential trademark infringement lawsuits.
  4. Go for full coverage: the US government recognizes 34 classes of goods and 11 ...

Fox Television Sues for Infringement of Empire Name

The overwhelming success of Fox Television\'s newest show, Empire, has prompted a legal battle over alleged trademark infringement.

It all started when Empire Distribution, a San Francisco record label and music distribution company, sent cease-and-desist letters to Fox Television, claiming rights to Empire, Empire Recordings and Empire Distribution and alleging that the hit show\'s name infringes upon those rights. Now, Fox Television has hit back, filing a complaint for declaratory relief.

The show is a family drama centered on the fictional Empire Entertainment, a powerful hip hop recording company, and stars Terrence Howard and Taraji P. Henson. Since its January debut, each episode of Empire has drawn more viewers than the last, a feat no other show in the past 23 years has accomplished. So, Fox Television is eager to \"protect its intellectual property rights in and to\" the breakout series, court documents show. In a life-imitates-art twist, Empire Distribution has released dozens of hip hop, rap, R&B, rock, gospel, Latin and pop albums, including several that have charted on Billboard.

Empire distribution is asking the court to require that Fox Television and show producers meet one of several solutions including paying the company $8 million; paying $5 million and including artists that the label represents as regular guest stars on the television series; or stop using the word, \"Empire.\"

Fox Television is balking at those demands, pointing out that Empire Distribution, though founded in 2010, never registered for federal registration of the Empire trademark and asking the court to declare that the network\'s use of the word \"Empire\" does not in any way infringe upon any of Empire Distribution\'s right and requesting court costs.

The legal battle illustrates the importance of filing for federal ...

Joke Theft is No Laughing Matter

Late funny man Milton Berle was so notorious for lifting jokes from fellow comedians that he was dubbed the "thief of bad gag" in the industry. But he's far from the only culprit. Conan O'Brien, Chris Rock, Carlos Mencia, George Lopez and D.L. Hughley - all have been accused of hijacking jokes from their competitors. Such accusations against working comedians, whether famous or obscure, typically are true to some degree.

While plagiarism of any sort is no laughing matter, many standup comedians argue that it's simply part of the job. Patton Oswald conceded such in a blog post he penned titled A Closed Letter to Myself about Thievery, Heckling and Rape Jokes - a post that garnered lots of media coverage and sparked much debate.

"Well, I stole a joke," Patton candidly admitted. "Not consciously. I heard something I found hilarious, mis-remembered it as an inspiration of my own, and then said it onstage. And got big laughs."

Unfortunately, there's not much that can be done about standup joke stealing - at least not in the courts. Copyright law defends the expression of an idea in a fixed form, but not the idea itself. So, if another comedian tells your joke using different words, it's likely not something you'll be able to defend. Instead, the industry applies its own consequence on offending comedians, including hits to their professional and personal reputations and blacklisting from performance venues.

But if you're aiming for a career in comedy, don't let the news hold you back. It is possible to build a comedy career and have your material protected. When written in books or film and television scripts, comedic ...

Research Shows Patent Trolling on the Rise

New research released by Patent Freedom, an on-line community of companies that access and share information about non-practicing entities, shows that patent trolls are as busy as ever.

Patent trolls are companies or individuals that secure patents on a range of inventions with no intention of ever actually producing or using these inventions. Instead, they wait until another entity attempts to put a similar invention into commercial practice, then hit them with costly patent infringement lawsuits in order to make quick cash and keep other companies' productivity at a standstill.

Consider these statistics:

  • The number of lawsuits filed by patent trolls increased 40 percent between 2007 and 2011.
  • Patent trolls filed a total of 3, 134 suits in 2013, which represents more than half of all patent lawsuits.
  • Companies identified as patent trolls sued 11 percent more companies in 2013 than 2012, and filed 18 percent more lawsuits altogether.
  • Shell companies accounted for 63 percent of all patent cases filed in 2014.
  • There were 36 percent more cases filed this January than in the same month last year.
  • Another 499 patent litigation cases were filed last month, marking the third straight month-on-month increase in patent lawsuit filing.

Meanwhile, legislators continue to debate how best to tackle the issue. If you believe you're being unfairly targeted by a patent troll, you need solid representation. Contact Daniel Law Offices in Orlando at 407-841-8375 or Tampa at 1-866-37PATENT.

Do You Know What Your Trademark is Worth?

In defending your trademark or preparing to sell, transfer or license it, you'll need to know just how much it's worth. That may prove tougher than it sounds.

The value of a trademark generally is based on the trademark's earning power and on the goodwill associated with it, an intangible factor such as brand recognition. To that end, there are three primary valuation approaches used:

  • Income approach: Assigns a value to a trademark based on past and expected future profits associated with the mark.
  • Market approach: Assigns a value based on comparisons of transactions (such as royalty rates) involving similar assets.
  • Cost approach: Assigns a value based on the cost of creating a trademark and the cost of replacing the existing trademark with a trademark with the same market power.

But in the case of a new trademark for a company or brand that has yet to amass an income, other factors come into play. In this case, a study of the industry in which the trademark will be used or the products marketed; market surveys that detail probable sale prices and expected profits; and opinions of industry experts all may influence a valuation.

Your best bet for determining the true value of your trademark is to contact an experienced trademark attorney. Call Orlando's Daniel Law Offices at 866-37PATENTS.

US Copyright Office Releases Extensive Report on Music Copyright Issues

Kanye West's storming the stage to protest singer-songwriter, producer and multi-instrumentalist Beck's Album of the Year during the recent  Grammy Awards broadcast on CBS wasn't the only eyebrow-raising moment of the show. Another - one that far more legitimately affects music industry professionals - came when Recording Academy chief Neil Portnow urged Congress to ensure that "new technology [pays] artists fairly."

Portnow's comments parallel much of the content of a 250-page music-licensing report released just three days before the broadcast by the US Copyright Office. The comprehensive study titled Copyright and the Music Marketplace provides an exhaustive review of what many believe is an aging and outdated system and offers recommendations that Congress ultimately will consider enacting as law.

Among the top recommendations included:

  • "More equal footing" for master and musical work rates: Currently, record labels currently earn up to 12 times more digital performance royalties than publishers. US copyright officials aim to make changes that will allow for more parity in payment for each. Music labels are expected to fight this one, as publishers gains will be labels' losses.
  • Bundled rights: This recommendation calls for the creation of music rights organizations akin to performing rights agencies like ASCAP and BMI. Music publishers would license their mechanical and performance rights to these organizations, and in turn, digital download and streaming services would receive blanket bundled licenses.  Advocates say this alone would significantly simplify music licensing.
  • Extending of public performance rights in sound recordings to terrestrial radio: This means that for the first time, record labels and performers receive royalties for AM/FM airplay. Currently, only songwriters are paid radio royalties.
  • Federalized ...

Patent Troll Legislation Reintroduced

Led by House Judiciary Committee Chairman Bob Goodlatte (R-Va.), a bipartisan group of 20 lawmakers recently introduced the Innovation Reform Act of 2015, aimed at cracking down on patent trolls, individuals and companies that sit on or misuse patents as a business strategy. Specifically, patent trolls, also known as patent licensing firms or non-practicing entities, obtain patents with no intention of ever legitimately using them. Instead, they wait for others to file patents on similar inventions, then threaten those new inventors with bogus patent infringement lawsuits.

As it's currently written, the bill would require lawsuit plaintiffs to more clearly specify which patents are at issue and what products they allegedly infringe. It also would allow a court to require the loser in a patent case to pay the winner's costs if the case was not reasonably justified. Supporters of the bill say such abusive use of patents costs American businesses, consumers and innovators billions of dollars a year.

An earlier version of the same bill easily passed the House in December 2013, but ultimately was pulled from the Senate Judiciary Committee calendar in May of 2014 by then-chairman Patrick Leahy, who said a more targeted bill was necessary. Among those joining Goodlatte on the bill are Communications Subcommittee ranking member Anna Eshoo (D-Calif.), Peter DeFazio (D-Ore.), Darrell Issa (R-Calif.), Jerrold Nadler (D-N.Y.) and Lamar Smith (R-Tex.).

If you believe that you're being unfairly targeted by a patent troll or simply need help filing for patent protection for your invention, call 866-37PATENT and schedule a consultation with an experienced patent attorney today.

 

Four Reasons NOT to File Your Own Trademark, Patent or Copyright Registration

Inventors, creators and entrepreneurs aren't just talkers. They're doers - and that get-it-done propensity often leads them to take charge in all facets of a project. A top example is online registrations of trademarks, patents and copyrights. After all, websites promoting DIY registration make the process seem amazing simple and straightforward. Unfortunately, it takes just one mistake or omission to get your application rejected.

Here are four great reasons to skip the DIY route and let a pro handle our trademark, patent or copyright registration application:

  • It's more complicated than it seems: Trademark, patent and copyright registration forms are full of legalese - terms and phrases that are easy for attorneys, but few others, to understand. Often, a person's interpretation of a word of phrase turns out to be quite different from its actual meaning. And believe us when we say that every word is important. Understanding exactly what you're reading and responding correctly can mean the difference in your application being approved quickly or being rejected.
  • Common mistakes can be costly: Application reviewers and trademark, patent and copyright attorneys regularly see clients' applications rejected for the same handful of mistakes. Among them are failing to conduct a proper and thorough trademark, patent or copyright search; choosing the wrong classifications of goods and services on trademark applications; erroneously claiming use in commerce of a trademark or copyright in federal registration despite the mark not having been used across state lines; and submitting drawings or specimens that fail to meet established standards. Each of these common mistakes can cost you hundreds or even thousands of dollars in wasted filing fees and time.
  • The financial risk is high:

Three Ways Provisional and Non-Provisional Patent Applications Differ

In securing patents for new inventions, America is a first-to-file rather than first-to-invent country. This means that no matter who actually invented that great new gadget, legal favor goes to whomever was first to successfully file a patent application. So, if you're working on an invention, it's critical that you begin efforts to secure patent protection as soon as possible, even if your invention is still in the early design stages. The best way to land protection early on is by filing a provisional patent application.

In 1995, the United States Patent and Trademark Office (USPTO) began offering inventors the option of filing a provisional application for a patent. This allowed innovators to secure some level of protection while working toward the requirements for a full non-provisional patent for their inventions. Among the benefits of a provisional patent are:

  • Reduced initial costs: Filing a provisional patent application initially will save you time and money, as it's less expensive and less time consuming than filing a non-provisional application. That's because a provisional application does not require a specific format and lacks the complex claims section included in non-provisional applications.
  • Temporarily stopping the clock: Filing a provisional patent application establishes an official US patent application filing date, which affords you some level of protection while you continue to develop your invention and assess its commercial potential before committing to the higher financial and time costs of filing a non-provisional patent application. 
  • Getting a head start: With a provisional patent application, you're better able to begin commercial promotion of your invention without the threat of having it stolen and marketed by a competitor.

When filing a provisional patent application, however, ...

What Constitutes a Trade Secret?

A top mistake of new entrepreneurs is being unclear on just what constitutes a trade secret. That\'s precisely why many unknowingly fail to protect their valuable intellectual property. A trade secret can be virtually any information used in the course of your business that lends a competitive advantage and is not generally known within your industry or trade.

Trade secrets can include proprietary formulas, processes, methods or techniques; research and development information; product or service pricing policies; product designs; facility blueprints; computer programs; client, vendor and materials lists and more. But there are three general criteria that must be met in order to claim something as a bona fide trade secret:

  • Information must not be common knowledge.
  • Information must have demonstrable value that lends your company a competitive edge.
  • Information must be protected and maintained as confidential by you and your company.

Properly claiming and protecting your company\'s trade secrets affords you the sole right to use and disclose them via contractual or confidential business relationships. Trade secrets are governed by individual state law rather than federal law, so you\'ll find some variations from state to state. In any case, trade secret rights generally are considered property rights that can be assigned, licensed, transferred or disposed of by contract.

If you need help setting up your new business and protecting or defending your trade secrets, contact a business incorporation and intellectual property attorney with Orlando\'s Daniel Law Offices at 866-37PATENT.

Common Law Trademark Explained

In many countries, one must formally register a trademark or service mark in order to establish ownership rights that cannot legally be infringed upon. That's not the case here in the United States. Here, under common law trademark rights, you essentially establish your rights to a trademark or service mark the moment you create and begin using them. But if you believe that means formal trademark registration is unnecessary for your business's success, think again.

US trademark law is governed primarily by the Lanham Act. Enacted in 1946 and named for then-Texas State Representative Fritz G. Lanham, a staunch proponent of strong trademark protection, the act prohibits trademark infringement, trademark dilution and false advertising, among other dubious activities. Under the Lanham act, common law trademark rights are acquired automatically when a business begins using a name or logo in commerce, and those rights are enforceable in state courts.

But on federal level, things are a little different. Both marks registered and unregistered with the US Patent and Trademark Office are granted some degree of federal protection under the Lanham Act. However, marks that are registered on the USPTO's Principal Register are afforded a much higher degree of protection than are unregistered marks, including the ability to enforce your trademark rights in federal court.

Benefits of federal trademark registration include:

  • Public notice of your claim of ownership of the mark;
  • A legal presumption of your ownership of the mark and your exclusive right to use the mark nationwide on or in connection with the goods or services listed in the registration;
  • The ability to bring an action concerning the mark in federal court;
  • The use of ...

FTC to Target Patent Trolls

The US Federal Trade Commission is fully entrenched in an ongoing study of patent licensing firms, aka patent assertion entities (PAEs) aka patent trolls. In the meantime, however, agency officials are free to focus enforcement powers on patent trolls any time they're deemed to be unfairly threatening patent infringement lawsuits.

"Further reforms to the patent litigation system are clearly warranted to make it more difficult for PAEs and others that seek to profit by bringing, and threatening to bring, frivolous patent infringement lawsuits," FTC Commissioner Julie Brill said during a recent forum on the issue of patent trolls.

Large technology firms and digital rights groups are lobbying Congress to pass troll-busting patent reform legislation, citing multiple studies that show PAEs account for more than half of all patent infringement lawsuits filed in the US over the past decade. But others are calling for a hold-out, arguing that PAEs are not causing serious issues and suggesting that recent patent reform legislation may deliver an unwarranted and unfair hit to intellectual property rights.

Proposal of the Innovation Act of 2013, which passed in the US House of Representatives but stalled in the Senate, and the FTC's continuing study were prompted by cases like the one the FTC filed against and ultimately settled with MPHJ Technology Investments. Between September 2012 and June 2013, the company sent more than 9,000 patent licensing demand letters to some 4,800 small businesses nationwide, lobbing bogus legal threats. The letters accused businesses of patent infringement for use of computer scanning equipment and threatened lawsuits against businesses that failed to pay the company licensing fees.

The FTC shot back, charging MPHJ with violating a federal unfair business practices statute and making deceptive representations in asserting patent rights. Several ...

What Can & Can't be Protected by Patent

Patent protection is an often misunderstood subject, particularly when it comes to what can and cannot be covered. Here at Daniel Law Offices, we often get requests for help patenting items or ideas that simply do not meet the requirements of patent protection. Here are a few basic guidelines on what is and is not covered.

You CAN be granted patent protection for:

  • New processes or methods
  • Machines
  • Any manufactured article, such as a tool
  • Ornamental design of a manufactured article
  • Any new composition of matter, such as a new medication
  • Improvements on any of the above
  • Any new and asexually reproduced variety of plant

You CANNOT be granted patent protection for:

  • Laws of nature
  • Physical phenomena such as rain
  • Abstract ideas
  • Any invention that's considered not useful, such as perpetual motion machines
  • Any invention that's deemed offensive to public morality
  • Literary, dramatic, musical and artistic works (These can however be protected by copyright)

Patent law also mandates your invention be novel, non-obvious, adequately described and/or illustrated in patent filings and claimed by the inventor in clear and definite terms. While these basic requirements sound simple enough, they can prove far more complicated than one might imagine. That's why hiring an experienced patent attorney to help complete and file your patent application is your best bet for success.

If you believe you have a patentable invention, contact Orlando's Daniel Law Firm (with additional offices in Tampa and Jacksonville) at 866-37PATENT. 

Think Posting that Facebook Copyright Declaration Protects You? Think Again

If you've spent even a few minutes perusing your Facebook newsfeed anytime in the past few years, you've likely encountered a post similar to this one (misspellings and grammatical errors let intact):

In response to the Facebook guidelines and under articles L.111,112 and 113 of the code of intellectual property, I declare that my rights are attached to all my personal data, drawings, paintings, photos, texts, etc... published on my profile. For commercial use of the foregoing my written consent is required at all times. Those reading this text can copy it and paste it on their Facebook wall. This will allow them to place themselves under the protection of copyright. By the release, I tell Facebook that it is strictly forbidden to disclose, copy, distribute, broadcast, or to take any other action against me on the basis on this progile and/or its contents. The actions mentioned above apply equally to employees, students, agents and/or other staff under the direction of Facebook. The contents of my profile includes private information. The violation of my privacy is punished by the law (UCC 1 1-308 - 308 1 – 103 and the Rome Statute)." "Facebook is now an open capital entity. All members are invited to post a notice of this kind, or if you prefer, you can copy and paste this version. If you have not published this stateament at least once, you will tactitly allow the use of elements such as your photos as well as the information contained in your profile.

Despite the fact that those spelling and grammatical errors should have been an obvious clue, this declaration has been shared tens of thousands of times on Facebook, reemerging with each notice from the social media giant that it's ...

Don't Let a Monkey Steal Your Copyright

Well,  here's a copyright issue you don't see every day. In 2011, British wildlife photographer David Slater visited the jungles of Indonesia, where he encountered a friendly female macaque monkey. Perhaps against his better judgment, Slater handed the monkey his camera - a history-making move that resulted in the first known selfie taken by a monkey.

The image of the simian sporting a toothy grin quickly went viral. Among those posting the image online was Wikimedia Commons,  an online media file repository that makes available public domain and freely-licensed educational media content, including, sound and video clips, to everyone. That's when Slater filed a complaint, demanding that the photo be taken down. 

Wikimedia Commons challenged back - and won. Why? Simply stated, because monkeys can't hold copyright, and neither can cameras. Though Slater owned the camera that captured the image, he didn't snap the picture himself. And because the being who did snap the image isn't human, the images immediately is deemed to be in the public domain.

According to the recently released draft of the Compendium of U.S. Copyright Office Practices, Third Edition, "The U.S. Copyright Office will register an original work of authorship, provided that the work was created by a human being… The Office will not register works produced by nature, animals, or plants. Likewise, the Office cannot register a work purportedly created by divine or supernatural beings, although the Office may register a work where the application or the deposit copy(ies) state that the work was inspired by a divine spirit."

Topping the list of non-copyrightable examples is, not surprisingly, a photograph taken by ...

Surge of Re-Releases of Classic Music More About Copyright than Nostalgia

If you're of hippie generation, you've no doubt noticed a surge in re-releases of the music you grooved to back in the day. After all, savvy marketers understand the pull of nostalgia when it comes to influencing consumers' buying decisions. But this particular sonic trip down memory lane is far less about nostalgia than it does with copyright law.

The real reason we're seeing a surge in 1960s re-releases is that the European Union in 2012 extended copyright on music recordings from 50 to 70 years. But the extension applies only to material originally released within the past 50 years. Today, music that hit the airwaves in the mid 1960 is on that cusp of copyright eligibility. So, labels are releasing limited quantities of their holdings from that era in an effort to extend their copyright protection, but assure the works remain rare. Some are limiting new releases to digital downloads.

Among the recent rereleases is a limited-edition collection of 1962 outtakes by Bob Dylan, released last year and aptly titled, The Copyright Extension Collection, Vol. 1. A second set of previously unreleased 1963 recordings soon followed. Next is the upcoming release of a nine-LP set of Dylan recordings from 1964. Sony is making available just 1,000 copies of the set, which reportedly will feature live concert recordings, television show performances and recording session outtakes.

Other recent releases include two from the Beach Boys - Keep an Eye on Summer: The Beach Boys Sessions 1964 and The Beach Boys Live in Sacramento 1964; and The Beatles Bootleg Recordings 1963, which turned up practically unannounced on iTunes.

If you own copyrighted recordings from the 1960s era, make sure your protections remain in place by

Trademark Abandonment - What it is and How it Can Cost You

While most everyone is familiar with the issue of trademark infringement, there's another issue that can cost you your trademark rights. It's called trademark abandonment and it happens when a mark connected with a particular good or service is no longer being used in commerce and there is sufficient evidence that the trademark owner intends to discontinue that use.

Under the Lanham Act, a federally registered mark that isn\'t used for a continuous period of at least three years is presumed abandoned and can be awarded to another party here in the United States. But lack of use also can cost you your international trademark protection. Though the length of time of non-use that can constitute trademark abandonment varies from country to country, it typically ranges from three years (Canada, Australia, Japan, South Korea, China Russia and many Latin American countries) to five years in European countries including Ireland and Norway.

But it doesn't take total non-use to warrant abandonment. Here in the United States, trademark rights holders must file a Section 8 Declaration of Use/Excusable Nonuse form on a date that falls between the fifth and sixth anniversaries of a trademark registration, then again between the ninth and 10th anniversaries and every 10 years thereafter to hold onto their trademark rights. This form requires a declaration of use in connection with all the goods and services listed in the registration, and deletion of any that you are no longer using.  

Failure to complete Section 8 forms correctly and in a timely manner can render your trademark abandoned. Plus, if it's deemed that your trademark use in connection with certain goods or services has ceased for a long enough period of time, ...

US Senate Set to Tackle Patent Trolls in 2015

Legislation to thwart the relentless efforts of patent trolls will be among the first issues taken up by the Senate in 2015, says the chamber's No. 2 Republican. Senate Minority Whip John Cornyn (R-TX) told members of the media recently that lawmakers plan to pass a bill designed to block patent trolls from filing vague and often completely meritless patent infringement lawsuits against other companies and individuals.

Formally known as non-practicing entities, patent trolls secure patents on a range of inventions with no intention of ever actually producing or using these inventions. Instead, a patent troll or NPE will wait until another entity attempts to put a similar invention into commercial practice, then hit them with costly patent infringement lawsuits in order to make quick cash and keep other companies' productivity at a standstill.

More importantly, this chronic misuse of patents as a business strategy significantly restricts innovation as a whole, and Americans of both major political parties are fighting back, though the concerted effort has taken a hit or two. Cornyn and Senator Charles Schumer (D-NY), were key players in negotiations on the patent troll issue throughout 2014. The two collaborated on a proposed bill that would mandate more thorough disclosure of patent infringement claim details by plaintiffs. The bill was garnering interest from attorneys on both sides of the issue, but the related legislative process came to a halt when Majority Leader Harry Reid (D-NV)announced that the bill would not advance to the full chamber.

Cornyn and others expect things to go differently in 2015.

“This is an area where the White House agrees with Democrats and Republicans," Cornyn told reporters off the Senate floor. "We're going to get it done."

If you believe ...

What Constitutes Trademark Infringement?

Trademark infringement is "the use by another of the same or a similar mark that violates the prior trademark rights of another in the jurisdiction where such use occurs." That definition comes by way of the International Trademark Association, a not-for-profit organization comprised of trademark owners and legal advisors worldwide. But definitions can vary from jurisdiction to jurisdiction, and even a slight variation can make a big difference in the courtroom.

Still, deciding cases of alleged trademark infringement always involves review of eight key elements, no matter where a court is located. These common-thread factors used to measure the likelihood of confusion between two trademarks have been courtroom standards since 1979, when the Ninth Court of Appeals announced its landmark decision in the case of AMF, Inc v. Sleekcraft Boats. In its decision, the court declared the following specific elements as key indicators of trademark infringement:

  1. Strength of the mark
  2. Proximity of the goods
  3. Similarity of the marks
  4. Evidence of actual confusion
  5. Marketing channels used
  6. Type of goods and the degree of care likely to be exercised by the purchaser
  7. Defendant's intent in selecting the mark
  8. Likelihood of expansion of the product lines

Essentially, these factors all help to determine whether a mark in question is too similar to another and is associated with the same or closely associated goods and services; and to determine the likelihood of confusion with a prior mark. Still, trademark infringement cases are rarely cut-and-dry decisions. If you suspect that another company or individual is violating your rights, you'll want an experienced and deeply knowledgeable trademark attorney on your side. Daniel Law Offices, with locations in Orlando ...

What your Copyright Will and Won't Protect

From the moment you create a work in a fixed, tangible form of expression, you already own the copyright to that work. But copyright protection doesn't apply to all that you might think. Daniel Law Offices wants to make sure you understand just what is and isn't protected under copyright law.

  • Names, logos and slogans: Copyright won’t protect the name, logo or slogan of your company, brand, product, literary work, musical band, etc. You'll need to file for trademark protection instead.
  • Domain names: Protection of your website domain name falls not under copyright law, but under the jurisdiction of the Internet Corporation for Assigned Names and Numbers, Known as ICANN, it's a nonprofit organization that handles the assignation of domain names and management of the domain name system.
  • Photographs and paintings: Copyright will protect your original photograph or painting of an event, scene, person, animal, etc. However, it won't protect the subject of your work. A photographer who snaps a very similar photo or an artist who paints a nearly identical scene owns copyright of his original image, no matter how close it is to yours.
  • Recipes: Copyright won't protect a list of ingredients. However, it will protect your literary expression of those recipes, including written instructions for individual recipes and collections of recipes, such as a cookbook available in print or online.
  • Unrecorded Performances: Dance choreography and unrecorded vocal performances, including speeches, lectures and concerts are not protected under copyright law, though audio or video recordings of those performances are.
  • Your big idea: This is a major point of confusion ...

More Patent Licensing Could Boost America's Economy by Billions, Study Shows

Among the benefits of securing a patent for your invention is the ability to license the appropriate use of your patent to third parties. Not only can this help individual inventors and their companies to thrive financially, it also could help significantly boost America's economy, according to a new study by Economists, Inc.

Researchers believe that the perceived costs and risks associated with enforcing and licensing patents dissuades many inventors from making full commercial use of their patents, as well as the knowledge and technology that their inventions embody. The result is an estimated $1 trillion annual waste to the American economy - a figure that represents a five percent reduction in potential GDP (Gross Domestic Product, defined as "The monetary value of all the finished goods and services produced within a country's borders in a specific time period").

The study "provides an illustrative calculation suggesting that modestly increasing the number of patents under license, using conservative assumptions of the impact on the economy of increased innovation, could generate social benefits ranging between $100 and $200 billion per year," researchers wrote. "This estimated range easily could be surpassed if the US can achieve enhanced licensing of existing patents, and if any market solutions also enable the dissemination of more knowledge that could increase the numbers of patented innovations themselves."

Licensing your patent essentially is an agreement to allow someone else to commercially use or develop your invention for a specified period of time. The licensee assumes all business costs and risks including manufacturing, marketing and distribution of your invention and protecting it from potential patent infringement. Meanwhile, you collect regular royalty checks.

Sounds great, right? It is - so long as your licensing contract is all that it should ...

Common Mistakes Inventors Make When Filing their Own Patent Applications

A quick online search will turn up dozens of articles offering do-it-yourself tips encouraging new inventors to file their own patent applications. They claim it's easy and that you'll save hundreds of dollars. Howeverr,  filing a patent application is far more involved than most realize. It calls for very specific documentation and wording that's often unfamiliar to even veteran inventors.

Patent attorneys with Daniel Law Offices in Orlando and Tampa want to make sure you're aware of the most common mistakes made by inventors going the DIY patent route…

  1. Misunderstanding what is actually patentable: There are certain requirements as to what constitutes a patentable invention, including whether the invention legitimately serves a stated purpose and offers a solution to a specific problem or set of problems, and is an actual invented product or process- not simply an idea. This must be fully and coherently explained in your patent application and may need to be accompanied by drawings that detail features of prototypes, processes, etc.
  2. Failing to recognize potential secondary uses: Many first-time inventors are so focused on their invention's initial use that they fail to recognize and request patent protection for other potential uses. This could cost them patent or trademark use of their own inventions for newly identified uses down the road. To assure you benefit from the full potential of your work, your patent application must be broad in scope.
  3. Limiting geographic reach: Filing for international patent protection means a second application process and additional fees. So, many cash-strapped first-time inventors skip it. Trouble is, various countries have limited timelines during which a patent can be filed after making a sale or an offer to sell an invention. By the time ...

What First Time Inventors Need to Know about Patent Drawings

Patent drawings can make or break a patent application. Even when technical descriptions and measurements might be enough under the law, nothing makes things clearer than a picture. For that reason, make sure you aren't just providing drawings that meet the minimum requirements but that your drawings themselves show the value of the idea. Below are some of the most important things to consider.

Technical Requirements

The first and easiest hurdle to clear is meeting the technical requirements for submitting drawings. These include whether to submit them in paper or digital format, size, and file/paper type. They vary widely by office, so be sure to check and double check before submitting.

Utility vs. Design Patent

When preparing your patent drawings, remember the purpose they're meant to achieve. Utility patents need to show what problem your idea solves and why it's useful. For a design patent, you need to make sure your design is clear and that the drawings effectively show why your design is different than others.

Choosing a Good Draftsperson

You may know your invention best, but if you are not an experienced draftsperson, get professional help. Patent drafting requires skills that go beyond basic art and into the technical aspects of both the patent process and the science behind the invention. There are no licenses or degrees for patent drafting, so you'll need to choose based on their experience and professional references. 

Computer or Hand-Drawn?

In general, computer drawings may be more cost-effective because the drafter won't have to start from scratch for each drawing. With today’s technology, computer generated drawings by an experienced ...

Retired Rule Delivers a Hit to Patent Trolls

For nearly eight decades, patent trolls have been using a long outdated, but still in effect federal rule to issue blanket patent infringement claims. But that tactic has now been rendered null and void with the stroke of a pen by the Judicial Conference of the United States.

The conference was created in 1922 with the principal objective of framing policy guidelines for administration of judicial courts nationwide. Last week, it quietly retired Rule 84 of the Federal Rules of Civil Procedure, which heretofore had made available to smaller patent protection applicants a set of standard forms designed to streamline the patent process. Over the decades since the rule's initial implementation in 1938, those forms had largely fallen out of use, with the exception of one.

Form 18 was a patent troll favorite, allowing these non-practicing entities (companies that rake in money by filing patent infringement lawsuits rather than actually using the patents they own to make products) to file complaints against victims without having to explain why they believed their patents had been infringed upon. Until now, most courts including the Court of Appeals for the Federal Circuit, the second highest court of appeal for patent disputes, used the bare-bones standards under Form 18 as the basis for determining whether a complaint could survive a motion to dismiss. Because the form required little more than the plaintiff's and defendant's names and the patent's issue date, defendants' motions to dismiss rarely were granted.

With these early case victories, plaintiff NPEs then were able to legally browbeat victims into submission, regardless of weak patent infringement claims. For lesser funded defendants, the financial costs associated with losing a case were potentially devastating, so most simply paid up.

With Rule 84 and its nefarious Form 18 ...

Why a Trademark Clearance Search is Critical

So you've come up with a brilliantly clever name for your new business or product - so clever, in fact, that you're sure no one else has it. After all, it didn't even come up in your Google search. So, in a blaze of confidence, you make a mad dash to the USPTO website to file your trademark registration application with nary a thought to recommendations that you first have a professional trademark clearance search conducted.

Not so fast!

Many an entrepreneur or first-time inventor has rushed headlong into building and branding a business or developing a product using a particular name, only to find out many months and many dollars later that their chosen moniker has already been taken. The fact is, without conducting a thorough trademark clearance search early on, you run a heightened risk of infringing on someone else’s trademark protection rights. If another business owner, product developer or inventor can prove either first use in commerce or federal incontestable status, you may find yourself at a substantial time and financial loss.

First, you may be liable for legal fees, penalties and damages associated with a trademark infringement case filed against you. And should you lose that case, you'll have to start all over to choose a new business or product name and rebrand it. That means the thousands of dollars you've already spent on marketing materials, brochures, product labels, business cards, advertising campaigns, etc. were all for naught.

To assure the name or mark you want is available and protectable, call upon an experienced trademark application attorney to complete a comprehensive trademark clearance search. Orlando's Daniel Law Offices can help walk you through the entire trademark process, from completing a ...

How the Internet Affects Common Law Trademark

While it's always been a best practice to register trademarks to fully protect the associated rights, trademark claims have largely been enforceable under the common law as long as the person claiming rights was the first to use the mark commercially in a given area. In theory, this principle extends to trademarks used in Internet businesses, but as with any area involving new technology and old laws, the underlying laws need slightly new interpretations.

How Common Law Trademarks Are Determined

Common law trademark rights arise simply out of use. A business using a unique identity, brand, or identifying marks automatically receives trademark protections that bar anyone else from using those marks whether or not that person later tries to file for federal trademark protection.

The key restriction on common law trademarks is geography-- they only extend to the area in which the business is operating or can reasonably be expected to expand. If a business holds a trademark locally, someone else could use that trademark in another area, and if that second person registers it, they would gain rights to the trademark outside the geographic territory of the original business.

What the Internet Changes

While Internet businesses have the same common law rights as bricks-and-mortar businesses, how to establish geography hasn't been addressed by the courts. If an Internet business targets a specific geographic area, the scope of its rights would probably be clear. However, many Internet businesses are set up so that anyone throughout the globe can patronize them. With no precedent on the issue, it's difficult to predict how far trademark protections would go. However, a ruling that rights apply across the Internet but not offline, or a ruling factoring where the business ...

Why Protecting Trade Secrets Is Critical To Saving the Nation's Economy - Congress Weighs in

Entrepreneurs, inventors and business leaders all understand just how important protecting their companies' trade secrets is to their commercial success. Fortunately, some of our nation's leaders share that sentiment. In fact, they understand that protection of trade secrets is not only critical to individual business' success, but essential to saving our nation's economy as well.

Congressmen Hakeem Jeffries (D-NY), Howard Coble (R-NC), John Conyers Jr. (D-MI), Steve Chabot (R-OH), Jerrold Nadler (D-NY), and George Holding (R-NC), Members of the House Judiciary Committee recently penned an article published on BusinessInsider.com. The article spelled out both the benefits of trade secret protection and the ongoing threat to everyone when those secrets are compromised.

"Trade secrets include many different types of confidential business information critical to the success of both large and small companies in the United States," the Congressmen wrote. "The devastating reality is that theft of trade secrets costs the American economy billions of dollars per year. Although criminal laws exist to combat such theft, the FBI [Federal Bureau of Investigation] said in a recent Congressional hearing that protecting the nation's economy from this threat is not something the FBI can accomplish on its own."

The Congressmen cited an Executive Office report released in February 2013 that indicates the pace of economic espionage and trade secret theft against US corporations by both domestic and foreign perpetrators is accelerating. Examples noted in the report include thefts of trade secrets from Ford Motor Co. totaling $50 million, one from DuPont valued at $400 million and yet another from Goldman Sachs valued at $500 million. The true total value of such thefts from companies nationwide is incalculable.

Among the primary problems with today's trade secret theft protection laws is the fact that they're ...

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