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Category: Intellectual Property

You Have a Design: How Do You Protect It?


October 20, 2018

When attempting to protect the appearance of a product as opposed to its utility, either trademarks or design patents may be appropriate. It can be difficult to determine which type of intellectual property protection to pursue. Though they are separate protection vehicles, trademarks and design patents may well complement each other as described below:

Design Patents:

A design patent offers protection for the design for an article of manufacture, or put differently, the configuration, shape or surface ornamentation of a product or some combination thereof. This allows a manufacturer to reap the benefits of design efforts by making the production of knockoff products illegal. Assuming the protected product is of good quality, this builds good will with those who purchase the product. Unlike a utility patent, a design patent does not protect how the product functions, simply how it looks; it cannot be functional.

Trade Dress:

A registered trademark is essentially official recognition of a brand by the government. It identifies the manufacturer as the source of the products associated with the mark. Trade dress is a particular type of trademark that protects the design of a product (essentially the packaging, color, flavor, shape, configuration and other distinctive physical characteristics). Trade dress works to associate the design, and thereby the product, exclusively with its manufacturer. Like a design patent, a trademark cannot be functional.

Potential Remedies:

Infringement of a design patent can result in damages of a reasonable royalty fee and up to three times the amount found or assessed. Unlike utility patents or plant patents, design patent damages can also include the total profits of the infringing party but not less than $250. Note that, given recent Supreme Court precedent, if an article of manufacture (e.g. something made by hand or with a machine) protected by a design patent is one of many components that comprise a product, recovery may be limited to a portion of profits attributable to the protected component. Attorney’s fees may also be recoverable. Additionally, infringement may be stopped by an injunction prohibiting continued unauthorized use.

Infringement of trade dress may include court costs of the defendant, profits earned and an attorney’s fees. As with design patents, infringement may be stopped by an injunction prohibiting continued unauthorized use.

Which Vehicle to Choose:

The best vehicle to protect your product depends on a number of factors. You should consider how soon you want your protection to start, when it will end, and how the protection you choose will impact your business plan. A design patent can be obtained quickly—in a matter of months- allowing you to immediately prevent competitors from copying your design. Trade dress protection cannot be secured unless the applicant has used the mark in commerce and acquired secondary meaning (e.g. customers associate the mark exclusively with the manufacturer), which takes five years. A design patent expires 15 years after it is granted while trade dress, being a trademark, has an initial term of 10 years. But it may be renewed indefinitely for 10-year increments. Patent design protection remains even if the patent is never used. Conversely, trade dress must be used continually in commerce to be preserved. However, use of trade dress in commerce before securing a design patent may disqualify an applicant from securing a design patent for the same product or product component. As nothing prohibits simultaneous possession of both a trademark and a design patent, design patent protection and trade dress protection can be held simultaneously for the same product.

DeMarcus Levy is an attorney at Walter | Haverfield who focuses his practice on intellectual property law. He can be reached at dlevy@walterhav.com or at 216-928-2945.

U.S. Supreme Court to Resolve Issue of Copyright Registration


July 13, 2018

Sean MellinoThe U.S. Supreme Court has agreed to review a case which should clarify the longstanding question of whether a copyright owner requires a federal copyright registration in order to bring a federal suit. The Supreme Court will hear the case (Fourth Estate Public Benefit Corp. v. Wall-Street.com, LLC) and is expected to clarify the issue when it begins its next session in October.

This development may likely underscore the importance of securing a U.S. copyright registration as soon as possible, if you don’t already have one. Any delay in securing official registration status may further expose a body of work to infringement or misappropriation to the point that it’s too late to recover adequate monetary damages.

Registering a copyright (which is the exclusive legal right given to an originator or an assignee to print, perform, film or record literary, artistic or musical material) is especially advisable because the federal courts have historically been divided on the issue. That, in turn, causes continued confusion for the public as to how most effectively (and when) to protect copyrights. For example, the Tenth and Eleventh circuits take the approach that an issued copyright registration is required to bring a lawsuit. There are others, such as the Fifth and Ninth circuits, that believe merely filing an application to register a copyright with the U.S. Copyright Office is sufficient to initiate a federal suit. Then there are circuits, such as the Sixth Circuit (which includes Ohio), that have not taken a formal position on the issue. However, the lower district courts in the Sixth Circuit appear to generally take the stance that a copyright registration is needed. Lastly, the U.S. Copyright Office itself has weighed in and believes the registration approach is appropriate.

The time it takes to secure a copyright registration can be more than a year from the time of filing an application. So, it is prudent for copyright owners to consider filing early and often, especially since the process is relatively inexpensive.

If you have copyright questions or concerns, please reach out to our Intellectual Property team. We’d be happy to help.

Sean Mellino is an attorney with Walter | Haverfield and concentrates on intellectual property law. He can be reached at smellino@walterhav.com or at 216-928-2925.

Do Your Homework Before Selecting a Brand or Company Name


May 16, 2018

 

Prior to introducing a brand name in the marketplace, it is important to make an informed business decision by doing your due diligence. Any lack thereof could cost time and money, and risk embarrassment.

For example, in April 2017, Starbucks® introduced a color and flavor-changing blended beverage with the name “Unicorn Frappuccino.” This colorful beverage was an instant “instagramable” success that was featured in thousands of postings. However, this widespread social media presence of the Starbucks® Unicorn Frappuccino brought some unwelcomed attention along with it in the form of an infringement lawsuit.

Montauk Juice Factory, Inc. and The End Brooklyn (plaintiffs) filed suit against Starbucks® alleging that by selling Unicorn Frappuccino beverages, Starbucks® infringed on their colorful beverage known as “Unicorn Latte.”

The plaintiffs provided evidence that in December 2016, the Unicorn Latte had begun appearing in traditional media outlets, coupled with advertising efforts and social media exposure. In an attempt to federally protect their intellectual property rights, the plaintiffs applied to register the name UNICORN LATTE with the United States Patent and Trademark Office (USPTO) in January 2017. After its filing, this pending trademark application (now, U.S. Registered mark 5,436,103) was publicly accessible on the USPTO’s database.

Nevertheless, Starbucks® launched its Unicorn Frappuccino, albeit as a limited release, in April 2017. Starbucks® commented that the Unicorn Frappuccino was inspired by “the fun, spirited and colorful unicorn-themed food and drinks that had been trending on social media.” However, this Unicorn Frappuccino, much like the plaintiffs’ Unicorn Latte, was brightly colored and prominently featured blue and pink colors with a color-powdered topping. It also had the word “unicorn” in its name. The plaintiffs and Starbucks® have since reached a settlement.

But, this scenario raises the question of whether Starbucks® conducted a sufficient amount of due diligence prior to the launch of its Unicorn Frappuccino? Perhaps, Starbucks® knew of the Unicorn Latte trademark application and decided to accept any ensuing risk that followed the launch of an allegedly similar product?

Most often, this type of cost/benefit analysis is purely a business decision. However, it is much more prudent to make an informed business decision by conducting a knock-out or clearance search before selecting a brand, product or company name.

Therefore, it is worthwhile to contact an experienced trademark attorney to assist in making these types of informed business decisions before selecting a brand, product or company name. Walter | Haverfield regularly counsels clients worldwide on these exact types of decisions.


Kevin Soucek is an attorney at Walter | Haverfield who focuses his practice on intellectual property. He can be reached at ksoucek@walterhav.com or at 216-619-7885.

Decorative Elements in Apparel Design May Qualify for Copyright Protection


March 27, 2018

 

A recent U.S. Supreme Court decision about cheerleading uniforms is likely to have a significant impact on the fashion industry, prompting more designers to apply for and enforce copyright of their work.

In Star Athletica, LLC v. Varsity Brands, Inc., the court ruled that merely decorative, and not functional, elements in a cheerleading uniform can be protected by copyright.

Varsity Brands, Inc., which designs and sells cheerleading uniforms, has more than 200 copyright registrations. Those registrations include designs of lines, chevrons and colorful shapes that the company uses on its uniforms. Varsity Brands sued Star Athletica, a competitor, for infringing on its copyrights to the five designs shown below. At issue was whether the designs on the uniforms served the useful function of identifying the uniforms as cheerleading uniforms (in which case they are not protectable). Or whether the designs are solely “graphic designs” that are capable of existing independently because “they could be incorporated onto the surface of different types of garments, or hung on the wall and framed as art.”
The Supreme Court’s decision in Star Athletica provided necessary clarification on the Copyright Act. It found that (1) the designs on the cheerleading uniform “can be identified as features having pictorial, graphic, or sculptural qualities” and (2) “if those decorations were separated from the uniforms and applied in another medium, they would qualify as two-dimensional works of art [under the Copyright Act].” The court further reasoned that “[i]maginatively removing the decorations from the uniforms and applying them in another medium also would not replicate the uniform itself.” Accordingly, the court found that the designs are eligible for copyright protection. Notably, the court did not decide whether the particular designs at issue were otherwise copyrightable (e.g., whether the designs were sufficiently original to be copyrightable).

It remains to be seen how the new test will be applied in courts. But, in the meantime, the decision provides motivation to seek copyright protection for design elements included in useful articles (such as clothing, lighting fixtures, furniture, etc.).

Maria Cedroni is an attorney with Walter | Haverfield and concentrates on intellectual property law. She can be reached at mcedroni@walterhav.com or at 216-619-7846.

Manufacturers Thrive by Leveraging Intellectual Property


March 14, 2018

 

“Not only do patents provide legal protection against competitive activity, but they also can help generate interest and investment in a company and serve to recognize inventors for their creativity,” writes Walter | Haverfield partner Peter Hochberg in an article for Advanced Manufacturing. Hochberg explains how patents pay off over the long-term and boost a company’s reputation.

Trademarks and Service Marks – Can they be registered if functional?


March 13, 2018

 

There are many nuances and specific factors that the U.S. Patent and Trademark Office (USPTO) considers when deciding if a trademark (which indicates the source of the goods or services) is a candidate for registration. Before you invest the time and money into your application, read the following:

Trademark applications can be refused for registration on various grounds, establishing that the mark does not function as a trademark. These grounds include trade names, functionality, ornamentation, informational matter, descriptiveness, color marks and goods in trade, amongst others.

Trade Name:

A trade name is often the name of a business or a company. The term, trade name means any name used by a person to identify his/her business or location. Whether a mark serves solely as a trade name rather than a trademark requires consideration of the way the mark is used, which is established upon review of the specimen (such as a label) submitted with the application by the USPTO.

Trade Dress:

Trade dress means the appearance or design of a product or its packaging. Trade dress can include features such as the size, shape, color or combinations of color, texture and graphics. Additionally, in some instances, trade dress can even include color, flavor, sound and odor. When a trademark application is filed, the examining attorney at the USPTO separately considers two substantive issues, namely (1) functionality and (2) distinctiveness.

Any trade dress which is functional cannot serve as a trademark. That is, if the trade dress is essential to the use or purpose of the article, or if it affects the cost or quality of the article, it is considered to be functional and is non-registerable. For example, the color yellow to denote a specific source of lawn equipment may function as trade dress and therefore be registerable. On the other hand, the color yellow for traffic signals or signage is essential to the functionality of the goods (e.g. alerts traffic to yield) and therefore will most likely not be registerable.

Functional trademarks cannot be registered due to the distinction between patent law and trademark law. Utilitarian products can be protected through utility patents that have a designated life, rather than through trademark registrations which could be unlimited in their life. Upon expiration of a utility patent, the invention enters the public domain.

andnbsp; The examining attorney at the USPTO must review not only the content of the application but must also conduct independent research to determine if the mark is functional. The applicant then has the opportunity to rebut the examiner’s findings.

To determine whether a trademark is functional, the following factors are examined:

andnbsp;andnbsp;andnbsp; (1) The existence of a utility patent on the product

andnbsp;andnbsp;andnbsp; (2) Advertising showing utilitarian advantages of the trademark if it is a design

andnbsp;andnbsp;andnbsp; (3) Facts relating to alternative designs

andnbsp;andnbsp;andnbsp; (4) Facts indicating whether the design results from a relatively simple or inexpensive method of manufacture

While utility patents for the product are strong evidence that a trademark is functional, design patents indicate that the trademark is not functional. Aesthetic functionality relates not only to product performance, but rather to competitive advantages. For example, a black outboard motor was not registrable because it could be coordinated with a variety of boat colors.

Peter Hochberg is a partner in the Intellectual Property group at Walter | Haverfield. Peter can be reached at dphochberg@walterhav.com or at 216-928-2903.

 

Four Patent Challenges for the Sole Inventor and Tips to Succeed


January 29, 2018

 

Patent applications worldwide have been on a steady rise in recent years, up by nearly eight percent in 2015, according to the World Intellectual Property Organization (WIPO). And here in the U.S., the number of applications grew by nearly two percent that same year. A majority of them come from large companies as independent inventors face a variety of challenges. However, if these challenges can be managed properly, the potential monetary return for independent inventors is worth the investment in time and money.

Before filing a patent, consider the following:

Cradle to grave patent costs:

The costs for filing a patent application, which include government filing fees and fees paid to a registered patent practitioner to prepare and file the application, can run into the thousands of dollars. All utility patents then undergo prosecution where the merits of a patent are often argued before the U.S. Patent and Trademark Office (USPTO). It’s basically a vetting process, which can also cost thousands of dollars. Then, after the patent is granted, it may be challenged before the USPTO or a federal court. The costs of litigation are so prohibitive that oftentimes cases are settled at no small expense. Plus, maintenance fees are due to the USPTO every few years after a patent is granted. Failure to pay them may result in a loss of patent protection. Early involvement by a registered patent practitioner can help you anticipate and/or mitigate some of these costs.

Disclosure to potential competitors:

Many inventors have a desire to sell an invention to a company that manufactures similar products. However, sole inventors may not always have patent (or patent pending) protection before presenting their idea to a manufacturer, and that leaves them vulnerable. The manufacturer may express disinterest, but subsequently file a patent based upon or related to the inventor’s idea. In such cases, the inventor’s remedies are limited. To avoid the problem in the first place, an inventor should present a non-disclosure agreement to the manufacturer as a pre-condition to presenting his/her idea. However, any recovery is often less than what an owner could receive from selling or licensing the rights to the patent or application. Plus, contesting inventorship before the USPTO or a federal court could prove costly, and the outcome of such a contest is uncertain. The more advisable course of action is to avoid a dispute in the first place by filing a patent application prior to any such meeting. Inventors should also consult with a patent attorney before any disclosure of the invention.

Novelty:

Filing a patent application without first determining if the invention is already on the market may be a waste of time and money. Therefore, it’s often advisable for a potential applicant to conduct a prior art search to gain a better sense of an invention’s patentability. A prior art search involves a review of the invention by a registered patent practitioner, an extensive review of prior art, and an honest assessment or estimation of whether the applicant’s invention is in fact new (novel). Depending on the circumstances and nature of the innovation, less exhaustive evaluations may also be performed.

Statutory Bar:

When a patent applicant discloses his/her invention by using, selling, advertising and/or writing about it in publications, it’s often considered known to the general public. Under the American Invents Act, these activities may bar an owner from seeking patent protection if more than a year has passed since the owner used or disclosed his/her invention.

The above points are provided as a landscape of the patent procurement system and not intended to dissuade inventors from protecting their intellectual property rights. Rather, because of the value of the monopoly they offer, patents are worth pursuing for those who have invented truly novel (and non-obvious) concepts and can afford to secure, maintain and enforce such protection. Knowing the landscape and potential pitfalls (including costs) can be invaluable in the patent procurement process. To determine if patent protection is right for you, consult the patent professionals at Walter | Haverfield.

DeMarcus Levy is an attorney at Walter | Haverfield who focuses his practice on intellectual property law. He can be reached at dlevy@walterhav.com or at 216-928-2945.

 

Five Ways to Safeguard Your IP


January 12, 2018

Kevin SoucekJamie Pingor

A company’s intellectual property is a vital asset that should be protected. Walter | Haverfield Attorneys Kevin Soucek and Jamie Pingor list five ways that businesses can safeguard their IP in an e-article published by the Council of Smaller Enterprises (COSE), a division of the Greater Cleveland Partnership.

Is this the end of the bar against registrability for scandalous and immoral trademarks?


January 5, 2018

 

On December 15, 2017, the U.S. Court of Appeals for the Federal Circuit (CAFC) struck down the portion of the Lanham Act (aka the Trademark Act) which prevented immoral or scandalous trademarks from being registered with the United States Patent and Trademark Office (USPTO). The CAFC’s decision involved the term FUCT (In re Brunetti) which pertained to various types of apparel, including clothing for children and infants. However, the move did not come as a tremendous surprise. About seven months prior, the U.S. Supreme Court struck down the portion of the Lanham Act in a case (Matal v. Tam) which involved the mark, “The Slants.” The Slants decision, which was made on the basis of violating the First Amendment, received widespread attention for its seemingly groundbreaking nature. However, it was generally expected that the rationale of the Supreme Court in Matal v. Tam would be adopted by the CAFC and other lower courts in later decisions – which is precisely what has now occurred in this recent decision by the CAFC.

As noted, the issue in the Brunetti case was that the USPTO denied trademark registration to the mark FUCT. Its reasoning was that the term was considered to be scandalous and immoral in its nature, and therefore could not be protected as a federally registered trademark. The decision was appealed to the CAFC. The CAFC then essentially adopted the reasoning of the Supreme Court from its own earlier decision concerning The Slants and disparaging trademarks. In short, the CAFC determined that the restriction on registering trademarks for being “immoral or scandalous” is unconstitutional.

What does this now mean for trademark owners moving forward? Assuming that the CAFC decision in Brunetti is not appealed to the Supreme Court, it potentially opens the door for any number of terms that previously might have been considered immoral or scandalous to be registered as trademarks with the USPTO. That does not mean that all such marks will be registered since other aspects of trademark law still apply, such as the refusal to register marks that are merely descriptive or confusingly similar to a third party’s prior-registered mark. Perhaps too, the relevant portion of the Trademark Act might be rewritten in a manner that is deemed to be constitutional. Yet another possibility is that the USPTO might start taking a closer look as to whether these types of marks truly function as a trademark. And if not, then it could refuse registration for being merely informational matter. Of course, if this decision is appealed, then it would effectively continue to place any such marks on hold until the issue is finally resolved by the U.S. Supreme Court.

In the near future, we do anticipate an increase in new USPTO filings for trademarks that are potentially immoral or scandalous, as well as trademarks that are disparaging in nature. If you, as the reader, are the owner of such a trademark or have an intent to use such a mark as a trademark, then it would be prudent to file an application to register with the USPTO as soon as possible. That’s to avoid an owner of a potentially conflicting mark from filing first and obtaining an earlier filing date.

Sean Mellino is an attorney with Walter | Haverfield and concentrates on intellectual property law. He can be reached at smellino@walterhav.com or at 216-928-2925.

 

Five Ways to Protect Your Intellectual Property


December 19, 2017

 

The intellectual property you create is a vital asset. However, creating and maintaining a durable intellectual property portfolio can be costly. Many sophisticated entrepreneurs or business leaders forgo prioritizing protection of such intellectual property because it is often perceived as just another inessential expenditure, rather than a shrewd, strategic investment. Some overlook protecting their intellectual property because they are unsure about the ultimate profitability of their “protectable” ideas. Others are regrettably unmindful of the fact that some may attempt to copy or steal their intellectual property.

Whereas the age-old adage “the best defense is a strong offense” unequivocally applies to the field of intellectual property, it is critical to understand that intellectual property can be employed in both defensive and offensive situations. Therefore, investing a small sum to build up your intellectual property defense now will pay off in the long run, if you ever have to defend it. Plus, this investment will make your intellectual property more valuable.

Below are some examples of how to initiate protection of your intellectual property assets:

  • Educate yourself on the basics of copyrights, trademarks, trade secrets and patents.
  • Identify all of your registered and unregistered copyrights and trademarks, as well as any possible trade secrets.
  • Identify all of your patentable technology including products as well as business processes. With today’s first-to-file system, the sooner you file a patent application, the better – as such an application holds your place in line.
  • Ensure that any written contract or agreement (including employment and manufacturing agreements) thoroughly and explicitly protects (and defines ownership of) your intellectual property.
  • Contact Walter | Haverfield to learn about what means of protection may be available to protect your brand(s), product(s), know-how, original work(s), etc.

Properly protecting intellectual property is a valuable process; it is wise to undertake proactive measures to safeguard your intellectual property now to avoid costly defense later.

Kevin Soucek is an attorney at Walter | Haverfield who focuses his practice on intellectual property. He can be reached at ksoucek@walterhav.com or 216-619-7885.

 

Design Patents and Graphical User Interfaces


December 1, 2017

 

Design patents on graphical user interfaces (GUIs) are the fastest growing area in design patent applications at the U.S. Patent and Trademark Office. Peter Hochberg explains why these are so important in an article which appeared in the November issue of the Cleveland Metropolitan Bar Journal.

 

Patent and trademark registrations are on the rise; are your business assets protected?


November 9, 2017