Intellectual Property

The Trademark “Spectrum of Distinctiveness”

Trademarks are words, names, symbols and other branding that distinguish and identify the sources of goods or services. Not every trademark is created equal, however, and the trademark “spectrum of distinctiveness” affects the level of protection the trademark receives. Distinctive trademarks are rewarded because they help consumers understand which goods and services come from where, thereby ensuring that consumers know who they are dealing with and (at least in theory) receive consistent quality. Generic terms are not protected because, in essence, they would interfere with the public’s ability to effectively identify the source of different types of goods and services.

So what makes a trademark distinctive?

Distinctive trademarks share three qualities. First, they are different from other marks used to describe similar goods...

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Intellectual Property

The Low Down on End User License Agreements (EULAs)

If you’ve used the Internet any time recently, you’ve likely had to click “I accept” or “I agree” in order to use a particular website or software application. Typically, you are accepting and agreeing to an “end user license agreement.” As a software developer, it’s incredibly important to protect the intellectual property behind the software, as well as reduce as much liability as possible. These end user license agreements spell out the terms of the license for your use of the particular software. Today’s post highlights some of the key characteristics of end user license agreements.

What is an end user license agreement?

An end user license agreement (EULA) is an agreement between a software developer or author and an individual or...

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Intellectual Property

What are Common Law Trademark Rights?

Trademarks can be an extremely valuable asset for your business. Think about the value tied to Nike’s Swoosh or the McDonald’s “golden arches.” Protecting the value behind these trademarks is one important step towards building a wall around your company’s intellectual property. Many people don’t realize that certain trademark rights arise automatically once you begin using a trademark. Today’s post highlights these automatic rights, also known as common law trademark rights.

Common law trademark rights versus registered federal and state trademark rights

“Common law” is a term for the rights that have developed through case law versus statutes or codes. Common law trademark rights arise automatically and give the owner of a particular trademark certain rights (see below) without the need to...

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Intellectual Property

A Few Questions Buyers Should Consider to Protect Intellectual Property Rights When Purchasing a Business

When purchasing a business, buyers often overlook one important part of the purchase: formally transferring the seller’s intellectual property rights to the buyer. The most common IP rights include copyrights, trademarks, patents, and trade secrets. Today’s post highlights three simple questions buyers should ask before purchasing a business.

Can you and do you want to transfer the business’ trademarks?

In most purchases, trademarks will be easily assignable from the seller to the buyer. However, in some situations even if the trademarks are assignable, you may not want to acquire them. For example, if the business’ logo infringes on trademark rights of another business, then you wouldn’t want to transfer ownership of the logo and risk being held liable for trademark infringement once...

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Intellectual Property

Using Licensing Agreements to Protect Your IP

An important tool for monetizing your IP is a licensing agreement. When exploring entering into a licensing agreement, it is important to understand how licensing agreements work and the common terms of a licensing agreement. Today’s post highlights what licensing agreements are and some of the common terms included in every licensing agreement.

How do Licensing Agreements work?

A license gives a person or company the ability to use another person or company’s intellectual property rights for commercial purposes. The licensing agreement lays out the terms and conditions under which the licensee (the one receiving the right to use the IP) can use the IP for its benefit. The agreement also lays out the compensation the licensee agrees to pay to the...

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Intellectual Property

Lagunitas Trademark Infringement Lawsuit

On January 12, 2015, Lagunitas Brewing Company, one of the biggest craft brewers in Northern California, filed a trademark infringement lawsuit against craft beer giant Sierra Nevada in the U.S. District Court in San Francisco. The suit was over the use of Lagunitas trademark “IPA” design on its beer label.

According to the complaint, Lagunitas founder Tony Magee became aware that the label on Sierra Nevada’s new Hop Hunter IPA, scheduled to be released January 15, resembled the label on Lagunitas’s flagship IPA, which the brewery first released 20 years ago. According Magee’s affidavit, he says he reached out to Sierra Nevada CEO Ken Grossman before and after sending a cease-and-desist letter, before filing the lawsuit.  From the complaint:

The unique “IPA” lettering used in...

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Intellectual Property

Purchase and Sale of a Business: Intellectual Property Considerations

We’re continuing our series on the purchase and sale of a business with a look into intellectual property considerations when purchasing a business. Intellectual property is a large part of many companies’ value. Failing to sort out potential restrictions on the use and further development of a company’s IP may leave the buyer with a significantly less valuable company than it anticipated. Below are some of the major intellectual property considerations to have in mind when you purchase a business:

Ownership of and Right to Use the IP

The first hurdle, and perhaps the most important consideration when reviewing a target company’s intellectual property rights, is confirming that it owns, or at least has a valid license for, all of the key...

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Intellectual Property

News Roundup: FCC Ruling May Lead to Better Internet Service; Fundraising Updates; etc.

FCC Updates Broadband Definition

The FCC voted to raise the minimum thresholds needed to meet the definition of broadband. Internet service providers now must provide download speeds of at least 25Mbs and upload speeds of at least 3Mbps to call their services “broadband.” The previous standard was 4Mbps for download speed and 1Mbps for upload speed.

While this sounds pretty innocuous, the new definition may have some interesting consequences.

A little background: In 1996 Congress mandated that the FCC report on whether broadband is being deployed to all Americans in a reasonable and timely fashion, and Congress defined broadband as high-quality capability that allows users to originate and receive high-quality voice, data, graphics, and video.

The first and most obvious consequence of the...

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Intellectual Property

USPTO Reduces Trademark Application Fees

Today, we bring good news to any of our readers who are planning on filing for a federal trademark. The United States Patent and Trademark Office (“USPTO”) recently announced that it will be reducing trademark application fees and also will be adding a new type of trademark application.

Why were trademark application fees reduced and when will the new fees take effect?

As authorized by the Leahy-Smith America Invents Act, the USPTO amended its regulations to reduce certain trademark application fees in order to: (1) continue with an appropriate and sustainable funding model; (2) support strategic objectives relating to online filing, electronic file management, and workflow; and (3) improve efficiency for USPTO operations and customers. The new fees will take effect on...

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