Intellectual Property

Starbucks Fails to Prove Trademark Dilution Against Black Bear Micro Roastery

Starbucks recently sued Black Bear Micro Roastery, a New Hampshire coffee bean roasting company, for its “Mister Charbucks” and “Charbucks Blend” coffee beans. The District Court held (and the appeals court affirmed) that Starbucks failed to prove that Black Bear’s use of its “Charbucks” marks are likely to dilute Starbucks’ trademarks, and denied injunctive relief—i.e. stopping Black Bear from continuing to market and sell its bean under the “Charbucks” name. This case is particularly interesting because (a) I really like coffee, and (b) it is a true David versus Goliath situation, the small New Hampshire coffee company prevailed over the behemoth company that is Starbucks. And like David, Black Bear won this battle.

A Quick Summary We all know what Starbucks is...

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Intellectual Property

The Famous Jameis Trademark Debacle

We’ve discussed the intersection of sports and the law a number of times on this blog and today our topic revolves around Jameis “Famous Jameis” Winston of the #2 ranked college football team in the country, the Florida State Seminoles.

On October 24, Mukul Mehra, a grad student at the University of Alabama (#1 team in the country – a coincidence? I think not) applied with the USPTO to register the trademark “Famous Jameis.” The trademark was registered under International Classification 25, and specifies the use of “Athletic pants; Athletic shirts; Body shirts; Clothing for athletic use, namely, padded pants; Clothing for athletic use, namely, padded shirts; Golf shirts; Gym pants; Hats; Hooded sweat shirts; Shirts; Shirts and short-sleeved shirts; Sport shirts; Sports caps and hats;...

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Intellectual Property

Protecting Your IP: Asserting and Defending Your Trademark Rights

So your trademark application has been approved and your trademark has been officially registered and published in the Official Gazette. Now what? We continue our blog series on protecting your IP by exploring how to assert your trademark rights and ensure that you take advantage of your federally registered trademark.

Defending Your Trademark Rights One important thing to note is that it is the responsibility of the trademark owner to protect its trademarks and assert its rights. You are required to monitor the use and potential infringement of your trademark. If you don’t, then others can use your mark and capitalize on your company’s reputation that is attached to your trademark. If you find that another company is using your trademark, you...

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Intellectual Property

Protecting Your IP: Common Mistakes When Registering Your Trademark

designLast week we talked about the importance of registering your trademark at the federal level. Today, we continue our series on protecting your intellectual property by discussing some of the common mistakes that you want to avoid when registering your trademark.

Failing to Search for Conflicting Marks The number one pitfall for most individuals when registering their trademark is failing to properly search for conflicting trademarks, i.e. marks that are already in use in commerce, registered at the state and federal level, or both. Prior to filing an application with the USPTO, you must first find out whether your mark is being used by and owned by someone else. Some simple steps you can take are searching the USPTO’s database, doing a...

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Intellectual Property

Protecting Your IP: The Importance of Federally Registering Your Trademarks

Of course you want to protect your company’s intellectual property, since for most businesses it is some of the most valuable assets they hold. You’ve probably been told countless times that you need to “register your trademark.” Perhaps you haven’t been told WHY you should register your trademark. We’ve put together a short series of blog posts on why you should register your trademark, the common pitfalls during the registration process, and asserting your trademark rights, including opposing a trademark claim. Today’s post highlights the major benefits attached to federally registering your trademark with the USPTO.

Common Law Trademark Rights: No Registration Necessary Trademark rights exist the minute you use a trademark “in commerce”—basically the first time you put your business’ name, logo,...

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Intellectual Property

Trademarks: Should You Register at the State or Federal Level?

Businesses often are faced with the choice of whether to register a trademark or service mark with a state or the United States Patent and Trademark Office (USPTO). It is well known that state registrations tend to be less expensive and often take less time to apply for and receive confirmation that the mark has been registered. However, there are key benefits to registering your trademark with the USPTO. Today’s post highlights those key benefits of federally registered trademarks and service marks, and provides helpful resources for registering your trademark at the state and federal level.

The Lanham Act First, let’s start with the basics. Under the Lanham Act, a person who obtains a federal registration that predates another person’s use of...

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Intellectual Property

A Call to Reform Copyright Laws

I recently came across an article that made a call for a reform to the laws that govern copyrights, namely a return to the copyright laws in effect prior to 1978. I found the article especially interesting because it isn’t often that you come across people advocating for restoring laws from pre-1978. We’re a society of forward-looking individuals (or at least that’s what many of us claim) that rarely look to our past for the “best” answers. But this article makes a few strong points in advocating for restoring the prior copyright laws.

The author notes that creativity is central to the prosperity and progress of our society. She notes that copyrights give artists, authors, and other creators a financial incentive...

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Intellectual Property

Apple Rewarded Handsomely As Jury Finds Samsung Guilty of Infringement

It took less than three days of deliberation, approximately 22 hours, 109 pages of jury instructions, and a verdict form with nearly 700 individual questions for the jury to find Samsung guilty of infringing a number of Apple’s patents. As a result, Apple was awarded $1.05 billion in damages—nearly half of the $2.5 billion Apple requested—which is one of the largest intellectual property awards ever. Furthermore, there is speculation that Apple’s victory will provide the mobile (and computer) giant ample ammunition to launch similar attacks on its remaining mobile-phone rivals.

The jury found that Samsung infringed six out of the seven patents at issue, and that Apple didn’t violate any of Samsung’s five patents at issue in the case.

This outcome will...

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Intellectual Property

Apple-Samsung Trial Goes to Jury; See Each Side’s Proposed Verdict Form

The highly-publicized patent battle between Apple and Samsung will be handed over to the nine person jury this week. This case involves a complicated  battle over intellectual property, including several patents held by both Samsung and Apple.  So, what is required of the jurors?

One of the Wall Street Journal blogs, Digits, published an article with the proposed verdict forms from both Apple and Samsung. You can see Apple’s verdict form here, and Samsung’s verdict form here.

The forms include dozens of questions, with the basic goal of asking jurors to answer “yes” or “no” whether each device infringes a patent. These questions give way to fill-in-the-blank questions that ask for specific dollar amounts that Samsung is entitled to as a result...

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Intellectual Property

Trademark Protection: Background and Basics of the Lanham Act

The Lanham Act is the primary federal trademark statute of law in the U.S. The Act prohibits trademark infringement, trademark dilution, and false advertising (among other things). It’s name is derived from its creator, Representative Fritz G. Lanham of Texas, and the Act was passed into law by President Truman on July 5, 1946. The purpose of the Lanham Act is to protect trademarks so as to avoid consumer confusion and help consumers identify the source of particular goods or services.

How to Prevail on a Lanham Act Trademark Claim To prevail, the plaintiff must prove: (1) that it has a protectable ownership interest in the mark; and (2) that the defendant’s use of the mark is likely to cause consumer confusion....

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