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

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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Business Startup

iVLG News Roundup Week 28: Trademarks; Management; Taxation; Online Privacy; etc.

Trademarks

Hershey’s Granted Trademark for Bar Configuration The US Patent and Trademark Office’s (USPTO) Trademark Trial and Appeal Board granted Hershey’s trademark application for the design and shape of its chocolate bar. The Examining Attorney for the USPTO had refused registration on two grounds: (1) Hershey’s proposed mark was a functional configuration of the goods; and (2) it was a non distinctive configuration that had not acquired distinctiveness as required under Trademark Act Section 2(f), 15 U.S.C. § 1052(f). The Trademark Trial and Appeal Board overruled the examining attorney, finding that the configuration was not functional, and that it was sufficiently distinctive.

Hershey’s Trademark Application Hershey’s description of its mark: “The mark is a configuration of a candy bar that consists of twelve (12) equally-sized recessed rectangular...

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Business Startup

Due Diligence: Questions to Ask Before Purchasing a Business’ Intellectual Property

An often overlooked part of purchasing a business is the transfer of intellectual property rights. Included in these rights is copyrights, trademarks, patents, and other non-disclosure rights. Today’s post details three basic questions you should ask before you purchase a business.

Can the business’ logo be transferred as part of the purchase? There are situations where even if the logo is transferable, you may not want to transfer it. If the logo infringes on the intellectual property rights of another business, you shouldn’t transfer ownership (since you would be liable for the infringement once you own the logo).

Furthermore, the logo may not be transferable if it is being used by the seller under a license agreement that does not allow for...

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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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Intellectual Property

Social Media Legal Issues: (Post Number 5): Copyright, Trademark, and other Intellectual Property (IP) issues

Intellectual property (“IP”) issues, particularly issues surrounding copyright law, are issues every business is likely to encounter when engaging with customers via social media. Copying and pasting a picture, song, video, document, or webpage onto your business’ profile to share via social media is easy. And many social media users are doing it.

Nevertheless, sharing “original works of authorship fixed in any tangible medium” (i.e. original content) created by others, unless you have explicit permission to do so, is usually in violation of the copyright laws meant to protect, and by extension promote, the creation of original content.

And intentionally or inadvertently associating your business, your products, or your service with the trademarks of another can open you to liability for infringement.

To...

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