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...

Read More

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...

Read More

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...

Read More

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...

Read More

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...

Read More

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...

Read More

Intellectual Property

How to Transfer Ownership of Trademarks

There are a variety of reasons why you may want to transfer ownership of your federally registered trademark (or acquire ownership of a trademark). For example, trademarks may need to be assigned during a business acquisition or as part of a reorganization. Today’s post discusses how to transfer ownership of trademarks and why you should ensure you transfer your trademarks correctly.

Documenting the Trademark Transfer with a Transfer (Assignment) Agreement

Transferring your trademark includes two major steps: documenting the transfer between the parties and then documenting the transfer with the U.S. Patent and Trademark Office (USPTO). Before you can document your transfer with the USPTO, you’ll need to put together a trademark transfer (or assignment) agreement. This document will lay out the terms...

Read More

Intellectual Property

Brewery Law 101: Protecting Your Beer Trademarks

Today we continue our Brewery Law 101 series and discuss the importance of protecting your brewery or distillery trademarks.

You’ve probably been told countless times that you need to “register your trademark.” Perhaps you haven’t been told why you should federally register your beer trademarks, brewery trademarks, and distillery’s trademarks. Today’s post highlights the major benefits attached to federally registering your trademark with the United States Patent and Trademark Office (“USPTO”).

Common Law Trademark Rights

Trademark rights exist the minute you use a trademark “in commerce”—basically the first time you put your brewery’s name, logo, slogan, etc. in front of the public. These automatic trademark rights are considered common law rights, which means that the trademark rights are developed through use and are not governed...

Read More

Intellectual Property

Von Trapp’s Trademark Dispute

What do beer, bocce and Bavarian singers have in common? Apparently a trademark dispute as of last month.

The famous Capitol Hill bar and restaurant Von Trapp’s was recently persuaded to change its name at the request of a member of the Trapp family of “Sound of Music” fame. The new name for the 10,000-square-foot space in Capitol Hill is Rhein Haus, as homage to the longest river running through Bavaria. Everything else about the vast beer and bocce hall will stay the same.

The owners, Deming Maclise and James Weimann, said in a press release they had “vetted the original name and got the federal trademark before opening in early 2013.” There appeared to be no issues with the name at first....

Read More

146 N Canal Street, Suite 350   |   team@invigorlaw.com