In this series, we are looking at how to create strong design patents and to use them to protect your business. In the first three articles, we looked at The Power of the Broken Line to protect the shape of your product, The Power of Color to protect your graphical images, and The Power of Portfolio to build a wall of protection around your product. In this article we are looking at the “The Power of Policing Trademarks and Design Patents”.
“Policing” means actively searching for people copying your product and enforcing both your trademarks and design patents against them. Patents and trademarks don’t stop copying. If you are successful, you will be copied. They do allow you, however, to shut down counterfeiters fast. We’ve expanded the scope of our discussion to include trademarks since trademarks are your first line of defense to stop “on-line” counterfeiting. The on-line shopping sites like Amazon, eBay and Aliexpress respect them and will remove knock off listings. Design patents come into play when the counterfeiting gets serious and you need to stop bulk importers of knockoffs.
Our case study of how a small growing company can use trademarks in combination with design patents to effectively stop knockoffs will be Olloclip®, a very popular 3-in-1 iPhone camera lens attachment.
WASHINGTON — The United States Patent and Trademark Office (USPTO) is seeking nominations to fill upcoming vacancies for the Trademark Public Advisory Committee (TPAC). Nominations must be postmarked or electronically transmitted on or before September 30, 2013. Submission details can be found in the Federal Registration Notice posted yesterday.
Currently, there are up to three vacancies on the TPAC that need to be filled. Each committee has nine voting members who are appointed by, and serve at the pleasure of, the Secretary of Commerce. Each member serves a three-year term.
Martin Schwimmer, lead attorney for Leason Ellis and author of the Trademark Blog.
Leason Ellis LLP, an intellectual property law firm, is suing Patent & Trademark Agency LLC and Armens Organesjans in the United States Federal District Court for the Southern District of New York. Patent & Trademark Agency LLC, is a New York business entity, and Organesjans, an individual who resides in Latvia, is the principal owner. The case, 7:13-cv-02880, has been assigned to the Honorable Vincent Briccetti.
The firm is back at it again in 2013 taking on another alleged trademark scam operation after successfully prevailing in a similar claim just over 1 year ago against USA Trademark Enterprises. See Trademark Scammers Out of Business Thanks to Leason Ellis. In that case, 7:12-cv-0620 (SDNY), alleged that the defendants had engaged in false advertising and unfair competition by marketing a so-called “catalog” of trademark registrations. The case settled for $10,000, which the firm donated to the United States Patent and Trademark Office (USPTO). Thus, the defendants would do well to stand up and take notice. It seems that Leason Ellis is living by the the words that mark the youth of my generation — “We’re not gonna take it, no, we ain’t gonna take it, we’re not going to take it any more!”
The multi-count Federal Complaint alleges that the defendants market their promotional materials to cause consumers to wrongly believe that it is an official governmental entity. The complaint asserts claims of federal unfair competition under 15 USC 1125(a), federal false advertising under 15 USC 1125(a) and New York statutory law, unfair competition under New York common law, deceptive acts and practices under New York statutory law, and tortious interference with prospective economic relations. The complaint also specifically alleges that the defendants are engaged in the unauthorized practice of law.
It’s not often that plans for a big 20th anniversary concert tour are marred by so much controversy, but that seems to be the case for the rock band, Stone Temple Pilots (STP). STP has filed a lawsuit against its former lead singer, Scott Weiland, claiming in part that they kicked him out back in February of 2013, yet Weiland (who now performs solo) continues to use the band’s name for his own performances, which allegedly violates the band’s partnership agreement.
Well, apparently, Weiland didn’t get the memo that he had been kicked out because in a letter to his fans that he posted on Facebook a few weeks ago, he stated, “First of all, they don’t have the legal rights to call themselves STP because I’m still a member of the band.” He also noted that when he does his solo tours, he uses his own name.
Trademarks are an important protection for any business, but nowhere in Canada is this as vital as in Québec, where failure to have a registered trade-mark may lead to notices and fines for business owners. These are precipitated, but not imposed, by the Office de la langue française (translated to: Office of the French Language), or OQLF, a public organization mandated to uphold the quality of the French language, and to ensure it become the “normal and everyday language of work, instruction, communication, commerce and business” in the province of Québec. Since the 2012 provincial election that saw a return to power for Québec’s leading sovereigntist party, the Parti Québecois, the OQLF has been implicated in a few high profile cases that have muddied the waters for businesses operating in Québec.
Most famously, in November 2012, major retailers such as Walmart, Gap and Best Buy, decided to take the organization to court after receiving notices and potential fines. Many major retailers have already made francization efforts: notably KFC to PFK (“Poulet frit Kentucky”) and Starbucks, who added “Cafe” before their brand name. The OQLF is looking for the other big retailers to follow suit, adding a French descriptive such as les magasins (“stores”) to their signs. Louise Marchand, former head of the OQLF, made the bold statement, “Displaying the name of the company in French is a show of respect for the law.”
Anybody who has any involvement with Intellectual Property (“IP”) knows full well that protecting IP means a multi-step process. Obviously, step one is the conception of the invention, idea, trademark, trade name, or other innovation where protection might be necessary. Step two is the decision about what to do with the “new” idea, etc. in terms of the need to try for exclusivity on it –or not. Many “new” things do not need IP protection – and other “new” things may not qualify for it. If the “new” idea fits into the area where protection is desirable and it qualifies, then the next step is to seek legal protection. Of course, such protection will have a cost – whether or not the protection is sought by the inventor/conceptualizer himself/herself or itself (in the case of an organization) or assistance of counsel is required.
So, let’s assume the inventor/conceptualizer takes legal steps to protect the innovation – for the case of this discussion – a trademark. Such protection involves both common law claims and filing of a registration application at the United States Patent and Trademark Office (USPTO). Legal protection has a cost – not only in money, but also in time and other resources such as market research and prior art and trademark searches.
But, it doesn’t end there. If you must defend your property – that means litigation. The costs of litigation may outweigh the value of your trademark.
Mehmet Oz, M.D. is taking the fight to the scam operators who have been duping the public using his good and extremely popular name. Indeed, the two-time Emmy Award-winning, nationally syndicated daytime series The Dr. Oz Show is launching an aggressive campaign to stop illegal use of the Dr. Oz name, image and show. This campaign dubbed “IT’S NOT ME,” began Monday, May 6, 2013.
As you may be aware, over the past several years the Internet has become overrun with advertisements featuring one or another product allegedly endorsed by Dr. Oz. On Monday Dr. Oz told viewers that he endorses none of these and he is going to fight to take back his name.
“Today I am taking back my name and protecting my viewers from people I consider dangerous, who try to mislead you into buying products I don’t endorse,” Dr. Oz told the audience. “Anything you see on this show is part of a conversation I am having with you about your health. We are always transparent about our trusted, official partnerships and a full list of these partners is available on our website.”
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