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Intellectual Property Presented by: William R. Robinson, Esq. Bruce S. Londa, Esq. Jeanne M. Intellectual Property Presented by: William R. Robinson, Esq. Bruce S. Londa, Esq. Jeanne M. Hamburg, Esq. Bar Association of Lehigh County October 4, 2011

Patents and Trade Secrets Presented by: William R. Robinson, Esq. Norris, Mc. Laughlin & Patents and Trade Secrets Presented by: William R. Robinson, Esq. Norris, Mc. Laughlin & Marcus, P. A. October 4, 2011

What Do We Do In the IP Department? • Generally • Specialization within the What Do We Do In the IP Department? • Generally • Specialization within the specialty • Interaction with Tax, Corporate, Litigation, Banking, Bankruptcy and other practice groups • Obtain and maintain IP rights before the PTO • Counseling • Opinions • Transactions • Litigation 3

Obtaining and Maintaining IP Rights Before the PTO • The processes before the administrative Obtaining and Maintaining IP Rights Before the PTO • The processes before the administrative agency • Title (Liens, UCC, etc. ) • Maintenance, renewals, etc. 4

Counseling • Whether or not to pursue IP rights • Where to pursue IP Counseling • Whether or not to pursue IP rights • Where to pursue IP rights • Exploitation strategies – getting the most out of your IP • Client Manuals • Client Audits 5

Opinions • Patentability, trademark availability, etc. • Right to manufacture and sell a product Opinions • Patentability, trademark availability, etc. • Right to manufacture and sell a product • Non-infringement and Invalidity 6

Transactions • Licenses • Joint Ventures • Due Diligence in merger, acquisition and divestiture Transactions • Licenses • Joint Ventures • Due Diligence in merger, acquisition and divestiture transactions; financing and funding transactions • IP aspects of purchase and sale agreements and merger agreements • Secrecy Agreements • Consulting Agreements 7

Litigation • • • Infringement Trade secret misappropriation Unfair Competition Breach of contract Administrative Litigation • • • Infringement Trade secret misappropriation Unfair Competition Breach of contract Administrative – International Trade Commission – Boards of Appeal, Interferences, etc. in the PTO 8

What is a Patent? • It confers a right to exclude others. • It What is a Patent? • It confers a right to exclude others. • It does not confer a right to make, use or sell your invention. 9

Is It Always a Good Idea to Apply for a Patent if You Make Is It Always a Good Idea to Apply for a Patent if You Make an Invention? • Trade secrets can be more valuable than patents, if you can keep them secret. • When you apply for a patent, you need to tell the world the best way you know how to practice your invention. 10

What Is Patentable? Three types of patents: • Utility – 20 years from filing What Is Patentable? Three types of patents: • Utility – 20 years from filing • Plant – 20 years from filing • Design – 14 years from grant – Three dimensional trademarks 11

What Is the Term of a Patent? • Extensions for regulatory delay • Extensions What Is the Term of a Patent? • Extensions for regulatory delay • Extensions for administrative delay 12

Can a Patent Be Renewed? • Improvement patents – The Xerox story 13 Can a Patent Be Renewed? • Improvement patents – The Xerox story 13

What Does it Cost to Get a Patent? Patents are expensive to obtain but What Does it Cost to Get a Patent? Patents are expensive to obtain but the cost of enforcement is many, many times more. • Client intake issues arise with respect to patents. – Do not necessarily arise with respect to Trademarks and Copyrights. 14

Statutory Bars to Patentability • United States • International 15 Statutory Bars to Patentability • United States • International 15

Patent Enforcement Strategies • Cease and Desist Letters • Offers to License • Cross-Licensing Patent Enforcement Strategies • Cease and Desist Letters • Offers to License • Cross-Licensing 16

Remedies for Infringement • Damages – Lost profits – No less than a reasonable Remedies for Infringement • Damages – Lost profits – No less than a reasonable royalty – Punitive up to three times damage award – Can exceed total sales • Injunction – Preliminary – Permanent 17

Motives for Patent Enforcement • Shelf space at Home Depot • Sell your environmentally Motives for Patent Enforcement • Shelf space at Home Depot • Sell your environmentally impacted business to your customer/defendant • Delay competitor’s product introduction • Stop the sale of a small competitor to a larger competitor • Sue a competitor who spurns your offer to buy his business (a trademark case) – Use suit to gain retail shelf space 18

Trademark Clearance and Registration Presented by: Bruce S. Londa, Esq. Norris, Mc. Laughlin & Trademark Clearance and Registration Presented by: Bruce S. Londa, Esq. Norris, Mc. Laughlin & Marcus, P. A. Allentown, PA October 4, 2011

What Is a Trademark? • Anything that serves as an “indication of source” • What Is a Trademark? • Anything that serves as an “indication of source” • Most commonly – a word: Exxon, Mountain Dew, Starbucks, Intel – a logo: 20

What Is a Trademark? • But, can be anything that suggests to a consumer What Is a Trademark? • But, can be anything that suggests to a consumer that the product or service comes from a particular company: – Slogan: “You’re in good hands” – Color – Sound – Shape of packaging / product configuration 21

Color Marks 22 Color Marks 22

Packaging / Configuration Marks 23 Packaging / Configuration Marks 23

Packaging / Configuration Marks 24 Packaging / Configuration Marks 24

Sound Marks 25 Sound Marks 25

Why Protect Trademarks? • Consumer’s perspective: – Reputation for quality – Recognition of product Why Protect Trademarks? • Consumer’s perspective: – Reputation for quality – Recognition of product – distinguish from competitors • Trademark owner’s perspective: – Provide a competitive advantage – Valuable corporate asset 26

How Are Trademark Rights Created? • ‘Use in commerce’ – in the U. S. How Are Trademark Rights Created? • ‘Use in commerce’ – in the U. S. , trademark rights can be created by simply using the mark in association with goods or services, such that the public considers the mark to be associated with a single provider • ‘Registration’ – evidence of the validity of trademark rights – Registration will not grant unless actual use in commerce has commenced – Registration is recommended, but not required 27

Selecting a Trademark Arbitrary/fanciful – • Acrobat® software, Exxon® fuels, Sprite® soft drink Suggestive Selecting a Trademark Arbitrary/fanciful – • Acrobat® software, Exxon® fuels, Sprite® soft drink Suggestive – gives a hint of what the product is, but is not merely descriptive – • Ty-D-Bowl® cleaner, Rollerblades® in-line skates Descriptive with “acquired distinctiveness” Cape Cod® chips, Pure Premium® juice • Can NOT be generic or merely descriptive – Ultra, Advanced, Smart, Super, New York Style 28

Selecting a Trademark • Must not be confusingly similar to existing trademarks used on Selecting a Trademark • Must not be confusingly similar to existing trademarks used on related goods – Are the marks related • Visual appearance, sound-alike – Are the goods related • Trade channels, marketing channels, compare likely purchaser group • Other factors – sophistication of purchasing group, selling price, impulse vs. careful purchaser • Likelihood of confusion – would consumers believe that the two products come from the same source 29

Analysis • KIOTIS skin care products • COYOTE skin care products • BELLE DE Analysis • KIOTIS skin care products • COYOTE skin care products • BELLE DE NUIT cosmetics • NIGHT OF BEAUTY cosmetics • ALTITUDE brandy • HIGH ALTITUDE beer 30

Analysis • INFINITO cable television broadcasting in Spanish-language • INFINITY radio broadcasting • NECTA Analysis • INFINITO cable television broadcasting in Spanish-language • INFINITY radio broadcasting • NECTA • NEKTA beverage dispensing machines fruit juices 31

Clearing a New Mark • Searching – – Pending trademark applications and granted registrations Clearing a New Mark • Searching – – Pending trademark applications and granted registrations are searchable in the United States Patent and Trademark Office (http: //www. uspto. gov) – ‘Knock-Out’ search – PTO website best used for finding direct hits • Recommend to follow up with outside search (Thomson Compumark®), which will find phonetically similar marks 32

Clearing a New Mark • Searching – ‘Common law’ marks- third party rights may Clearing a New Mark • Searching – ‘Common law’ marks- third party rights may also exist in non-registered marks Sources: Google™ search, Lexis®/Nexis®, industry publications, Thomson Compumark® 33

Clearing a New Mark • ‘In Use’ investigation – registered marks may be invalid; Clearing a New Mark • ‘In Use’ investigation – registered marks may be invalid; confirm current use through Internet or outside investigator • Opinion – experienced trademark counsel can give guidance as to descriptiveness and confusion issues 34

Proper Trademark Usage • Why? – improper use can lead to loss of exclusive Proper Trademark Usage • Why? – improper use can lead to loss of exclusive rights; mark becomes generic, and everyone can use it • Lost - aspirin, cellophane, escalator, thermos, linoleum • Saved – Xerox® copiers, Band-Aid® bandages, Rollerblade® in-line skates 35

Proper Trademark Usage How? • DO – Use as an adjective modifying a generic Proper Trademark Usage How? • DO – Use as an adjective modifying a generic noun: Xerox® copiers – Set apart from other text: • Initial capital • All caps • Bold, or different font Xerox® copiers XEROX® copiers Xerox® copiers 36

Proper Trademark Usage How? • DO NOT – Use as a noun or verb Proper Trademark Usage How? • DO NOT – Use as a noun or verb • “Give me a xerox” • “I am xeroxing that now” – Use in the plural • Incorrect - Three xeroxes • Correct - Three Xerox copies 37

® – When to Use • ® indicates that a trademark is registered in ® – When to Use • ® indicates that a trademark is registered in the USPTO It must not be used unless the mark is registered • It is suggested to use ® where appropriate (gives notice to the public), though it is not required 38

TM, SM © - When to Use ™ – May be used for unregistered TM, SM © - When to Use ™ – May be used for unregistered marks – Has no legal effect SM May be used for unregistered ‘service marks’ in place of TM, but there is not really a legal distinction © relates to copyright, not trademark rights 39

Loss of Rights • Genericide • Abandonment – Usually 3 -5 years of non-use Loss of Rights • Genericide • Abandonment – Usually 3 -5 years of non-use may be grounds for cancellation – Discontinue use with no intention to resume use • “Naked licensing” – authorized use by a licensee does not go to benefit of trademark owner if not “controlled and monitored”; can 40 lead to abandonment

Registration – United States • If registration is optional, why do it? • Procedural Registration – United States • If registration is optional, why do it? • Procedural advantages – Presumption of validity; do not need to prove protectable right in court • This is a major cost incentive – Constructive notice nationally – Incontestable after 5 years; others can not attack the registration 41

Registration - Basics • • • Form of mark (word, design, colors) Description of Registration - Basics • • • Form of mark (word, design, colors) Description of goods and services Classification Fees Basis – Actual use in commerce – Intent to use (must follow up with actual use) – Foreign registration basis (only available to foreign entities); no use required for registration 42

Prior Conflicting Marks File Application Substantive Descriptiveness or Functionality Examination Classification Approval and Publication Prior Conflicting Marks File Application Substantive Descriptiveness or Functionality Examination Classification Approval and Publication Opposition Period Formal Third parties may oppose based on prior rights or other objections Goods and Services Description Basis (specimens of use) 43

Opposition Period Basis – actual use or foreign registration Registration Basis – intent to Opposition Period Basis – actual use or foreign registration Registration Basis – intent to use Notice of Allowance Statement of Use (within 3 years) 6 th Year Affidavit of Use Renewal and Affidavit of Use – every 10 years after registration 44

Protection in Foreign Countries • Trademark rights do not extend beyond borders – a Protection in Foreign Countries • Trademark rights do not extend beyond borders – a mark should be protected in each country in which you do business • Common law v. registration – In the U. S. , Canada, UK, Australia, etc. , rights may be enforced without a registration, if the owner can establish rights based on actual use – In other countries, it is very difficult to enforce rights unless they are registered 45

International Protection • European Union – CTM – single registration covering all 27 member International Protection • European Union – CTM – single registration covering all 27 member states • Madrid Protocol – “International Registration” – simultaneous registration and renewal in up to 70 countries with a single application; protection is in the form of a ‘bundle’ of national registrations 46

Resources • Mc. Carthy on Trademarks • USPTO website http: //www. uspto. gov – Resources • Mc. Carthy on Trademarks • USPTO website http: //www. uspto. gov – Trademark Manual of Examining Procedure (TMEP) – Classification – Manual of Goods and Services – Searching – Status • INTA – International Trademark Association 47 website http: //www. inta. org

Common Copyright and Trademark Issues Presented by: Jeanne M. Hamburg, Esq. Norris, Mc. Laughlin Common Copyright and Trademark Issues Presented by: Jeanne M. Hamburg, Esq. Norris, Mc. Laughlin & Marcus, P. A. Allentown, PA October 4, 2011

Overview • Common Situations Your Clients Will Encounter That Involve Copyright Issues • Trademark Overview • Common Situations Your Clients Will Encounter That Involve Copyright Issues • Trademark Issues Your Clients Are Likely to Encounter In Advertising and Promoting their Goods on the Web 49

Common Situations in Which Copyright Issues Arise • Client wishes to secure registration • Common Situations in Which Copyright Issues Arise • Client wishes to secure registration • Client wishes to secure copyright ownership e. g. of a website it develops • Client wishes to enforce its copyrights on the web • Software Audits • Mergers/acquisitions 50

What is Copyrightable? © • Section 102(a) of Copyright Act • Copyright protection subsists What is Copyrightable? © • Section 102(a) of Copyright Act • Copyright protection subsists in – Original works of authorship – Fixed in any tangible medium of expression • Copyright protection subsists from the moment of creation, as soon as the work is “fixed” in tangible form from which it can be “perceived, reproduced, or otherwise communicated” either directly or with the aid of a machine. • Examples: textual works including books, ads, source code of software, audiovisual works such as films, webcasts, VA works, e. g. paintings, sculpture, jewelry, fabric design 51

Copyright: A Bundle of Rights Author’s Right to Do or License Others to: • Copyright: A Bundle of Rights Author’s Right to Do or License Others to: • Copy • Distribute • Display • Perform or • Make Derivative Works based on an author’s fixed expression (a “Work”) (Derivative works = alteration of work) 52

Copyright: A Bundle of Rights Divisible: Can give away one right or part of Copyright: A Bundle of Rights Divisible: Can give away one right or part of one, for example: • Copy & distribute in printed form • Copy & distribute in digital form • Display only in digital form 53

Copyright Registration • Registration not required for copyright to subsist • Now may be Copyright Registration • Registration not required for copyright to subsist • Now may be done electronically, 2 -3 mos vs up to one year for reg • Registration is a pre-condition to lawsuit and limits damages if copyright is registered after an infringement takes place – statutory damages if work is registered: up to 150, 000 PER willful infringement 54

Copyright: Ownership and Term • Rights typically vest in the creator • Exception is Copyright: Ownership and Term • Rights typically vest in the creator • Exception is “work for hire” (employer owns) • Term of copyright: life plus 70 years • For works made for hire: 120 years • After copyright expires, work said to be in “public domain” and anyone can exploit 55

Web Site Development • Hiring of third party (independent contractor) to develop site (or Web Site Development • Hiring of third party (independent contractor) to develop site (or any creative content) • Who will own content created and the html code used to create it? – Must be a grant or developer will own by default – Is web site developer using third party (non-employee) to create content? Must be assignment to site owner or developer. – Is developer using third party content? Representations and warranties. 56

Theft of Copyrighted Content on the Web • DMCA effective weapon for the those Theft of Copyrighted Content on the Web • DMCA effective weapon for the those whose copyrights are infringed on the web • Makes the host of content, who receives notice of the infringement from the copyright owner or its counsel, liable if it does not take down the content • Fantastic remedy when infringer’s identity is not known or infringer is uncooperative 57

ISPs Frequently Contacted Under DMCA • Apple (i. Tunes, TETRIS infringements) • Google – ISPs Frequently Contacted Under DMCA • Apple (i. Tunes, TETRIS infringements) • Google – Gadgets – Android • Amazon 58

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Copyrights in Mergers and Acquisitions • Defining IP and scheduling it • Understanding whether Copyrights in Mergers and Acquisitions • Defining IP and scheduling it • Understanding whether copyright licenses and other copyright agreements are assignable (stock vs. asset transactions) • Carefully worded representations and warranties 63

Copyright and Software Audits • • Audit demands Raises revenue for software provider Licensed Copyright and Software Audits • • Audit demands Raises revenue for software provider Licensed seats lower than actual seats Preemptively – Police client’s use of software to ensure client is in compliance with license – Be aware that if your client is multinational the damages available will vary for domestic vs. extraterritorial infringement – Courts are reluctant to award significant damages in 64 excess of lost profits/royalties

Trademark enforcement on the web • Cybersquatting – when a domain name uses your Trademark enforcement on the web • Cybersquatting – when a domain name uses your client’s trademark • Purchase of trademarks as key words from search engines 65

Cybersquatting • Trademark, or confusingly similar mark, is used in a web site address Cybersquatting • Trademark, or confusingly similar mark, is used in a web site address (e. g. maztercard. com, tetrisforfree. com) • Prohibited by federal law: anticybersquatting protection act (ACPA), part of the federal trademark statute (Lanham Act) • Vehicles for domain name recovery: – Federal court litigation – Uniform Domain Name Dispute Resolution Proceeding 66

UDRP Proceedings • Arbitration proceeding • Not necessary to own registered mark. Must show UDRP Proceedings • Arbitration proceeding • Not necessary to own registered mark. Must show the domain name is identical or confusingly similar to a mark in which the complainant has rights, the respondent has no legitimate right to the domain name and the respondent registered the domain name in bad faith. – eg Tetrisforfree. com, maztercard. com • ICANN (Internet Corporation for Assigned Names and Numbers) sets rules and policy as adopted by the arbitral forum authorized by ICANN • Most popular forums are WIPO in Switzerland NAF in Minneapolis • Complaint, Reply, and Surreply, then a single member or three member panel will decide. All filed electronically. 67

New top level domain names • Last month was launch of registration for. brand New top level domain names • Last month was launch of registration for. brand (e. g. , . cocacola) or. generic (e. g, . banking) domain names • Owners of US registered trademarks may file blocking applications for several hundred dollars up to October 28 (sunrise) and thereafter. Otherwise registrations of. xxx domain names cost around 250, 000 dollars 68

Key Word Purchases • Search engines such as Google sell third party trademarks as Key Word Purchases • Search engines such as Google sell third party trademarks as “key words” which will display the purchaser’s web site on a search by the user for the key word/trademark 69

Key Word Purchases 70 Key Word Purchases 70

Key Word Purchases • US courts split on whether this is unlawful – Is Key Word Purchases • US courts split on whether this is unlawful – Is there likelihood of confusion, trading off on goodwill earned by the trademark owner or is this just like a virtual marketplace where different branded goods are displayed on virtual “store shelves” next to each other? • Issue may be treated differently abroad and in US 71