Barbara's IP News and Other Musings
Barbara's IP News and Other Musings
WHY IS IT TAKING SO LONG TO HEAR BACK FROM THE TRADEMARK OFFICE?
You may be frustrated as to the slowness in hearing back from the Trademark Office after you have submitted your application for trademark registration. Previously, my experience had been that it took 3 to 4 months initially to hear from the assigned examiner....
What Works as “Proof of Use in Commerce” for Trademark Registration with the USPTO?
Frequently my clients are puzzled as to what kind of specimen to submit to the USPTO when trying to prove their “ bona fide use of a mark in the ordinary course of trade, and not made merely to reserve a right in a mark.” 15 USC §1127. A big question to resolve...
Is there a “Proof of Use in Commerce” Test for Purposes of Proving Trademark Infringement?
The Federal Circuit in Versatop Support Systems v. Georgia Expo (2018), examined another aspect of the “proof of use in commerce” requirement in federal trademark law under the Lanham Act. Unlike the conclusion it reached in the Simy Corp case that I...
Supreme Court Clarifies When Copyright Registration Occurs. What Now?
The Effective Date of copyright registration is important to know because without it (17 USC §411(a) of the Copyright Act), a court does not have jurisdiction to hear a copyright infringement case. In Fourth Estate Public Benefit Corp. v Wall-Street.Com,...
Attorney’s Fees in Copyright Infringement Cases: A Double-Edged Sword
One of the benefits of registering your copyright in a work with the US Copyright Office is the opportunity to seek recovery of your attorney’s fees if you subsequently pursue an infringement action and are the “prevailing party.” Without registration prior to the...
Consider Insurance to Help Protect Your Intellectual Property
In the course of advising business clients, I have urged those with intellectual property (“IP”) rights to take precautions to avoid being engulfed in costly infringement disputes. The first line of defense to such threats is to use best practices with the handling of...
Statutory Damages Claimed for Copyright Infringement of Songs
When advising artists, authors and song writers about ways to protect their interests in their creative works, I encourage them to file for copyright registration. But even if you follow all of the rules and register your copyright, you may still come up short...
Tips for Tenants Negotiating a Commercial Lease
While this article is mainly addressed to those who are planning to open an office or retail establishment at a new location, it also offers useful information to those who are about to exercise some option provided for in their lease, such as the option to renew or...
Did You Know: Open Source Software (“OSS”) Is a Major Player in Software Development & Use
The open source software (“OSS”) revolution affects most software applications. A 2015 survey found that 78% of the companies questioned ran their operations on OSS. [1] / Its expanded inclusion has resulted in great savings in time and money in the creation of...
Redskins Eye Supreme Court to Overturn Trademark Disparagement Restriction
To update my earlier blog [Blog] concerning whether Section 2 (a) of the Lanham Act, 1946, which restricts federal registration of trademarks found to be scandalous or disparaging, will withstand challenges to its constitutionality, the Redskins...
Led Zeppelin To Defend “Stairway To Heaven”
Led Zeppelin, Robert Plant and Jimmy Page remain defendants in a copyright infringement case brought on behalf of the estate of guitarist Randy California. If the case moves forward, the trial is set for May 10, 2016. The California estate alleges that...
Disparagement Issue Is Front & Center For USPTO Trademark Registrations
Section 2 (a) of the Lanham Act, 1946, 15 U.S.C. Sec. 2 (a), which restricts the registration of trademarks found by the USPTO to be scandalous or disparaging, was determined to be unconstitutional on the basis of the First Amendment by the Court of Appeals for...