Category Archives: Importation of Infringing Goods

Gallery

The Defend Trade Secrets Act-Ex Parte Seizure Orders, Really?

It still is not clear to me as to whether or not, the Defend Trade Secrets Act is needed in light of the Uniform Trade Secrets Act adopted by most United States.   The expansion of the Economic Espionage Act … Continue reading

Rate this:

Gallery

Scandalous and Disparaging or First Amendment Protected Free Speech? To Trademark or Not to Trademark?

There was a new Ruling by the Federal Circuit Court of Appeals that stated that the First Amendment Protects the use of the trademark “Slant” by a music band and it is entitled to register the mark.  This in stark … Continue reading

Rate this:

Gallery

Patent Claim Construction still subject to De Novo Review, but occasionally clear error standard may apply to underlying evidentiary findings!

  In Teva Pharmaceuticals v. Sandoz, 135 S.Ct. 831 (2015), the Supreme Court stated that any factual underpinnings that a judge relies upon in interpreting the claims of a patent is subject to a clearly erroneous standard.  Thus, not all aspects of … Continue reading

Rate this:

Trademark Regulations and the Likelihood of Confusion test for trademarks of Similar Sounding Characters!

The analysis of trademark infringement and likelihood of confusion is really a question of the nature and character of the mark and the commercial impression it creates in the minds of the consumer.  First, and foremost, a trademark has to be a known word in the English language to be pronounced as a word in the English language.  Also, in order to ensure that a trademark is pronounced properly in a foreign language or under the doctrine of foreign equivalence–the mark must actually be a known word in some language before there is anything to do with pronouncing a word properly.

For example, the word STON and the word STONE although similar in appearance are not pronounced in the exact same way.  In fact, it is important for you to first, recognize what the word is as either, a slang term or an actual English or foreign dictionary with slang translations.  If there are any other similarities in appearance, the appearance must be consistent with the official English or Foreign language translations before the words can be considered similar with respect to their actual appearance.  Although there may be some chance that someone mistakenly assumes that the STON mark is the same in appearance as the STONE mark, the reality is the commercial appearance and impression of the marks in the marketplace is what controls.

Otherwise, the consumers will recognize that STON as used in the marketplace is not even a recognized word and not pronounce it in the same way as the actual English word of STONE.  Thus, you cannot utilize definitions that are consistent with the English language for something that is not an actual known word.  Moreover, to apply the doctrine of foreign equivalence the word must be an actual foreign word to be considered to be the equivalent of the English equivalent.  It will not be considered a foreign word if, it does not have the same characters as a known foreign word.  Moreover, the mark STON has no foreign equivalents, thus, there is no way for any of the definitions or translations STONE to be used to provide an equivalent meaning for STON.

For more go to:   13-1448.Opinion.7-14-2014.1

The Use of Disclaimers in the Context of Trademark Infringement Online!

The value of trademarks and trademark portfolios is in the ability to develop an online brand, increase your SEO ranking, and developing a good key word optimization site that allows you to acquire more online visitors than your competitors.  This is not the easiest thing to do, in light of, how often Google changes the webmaster policies or rules.  Moreover, the nature of organic search results is such that it does not stay constant, but is fluid–these organic searches that are performed by consumers are not going to be the same each month, quarter or year.

In addition, the use of disclaimers for trademark infringement you must be careful to ensure that your competitor is not able to diminish the effectiveness of the disclaimer by placing it in less visible area of the website.  If you are not careful the fees and expenses incurred or spent on a preliminary injunction will be wasted.  It is difficult to judge the effectiveness of a disclaimer, but the more prominent the disclaimer and the less likely it will be easily avoided by a consumer by clicking through a link or special portal the better off you will be as an online business operator.

If you take the time to develop a content rich website and develop a good SEO optimization strategy, then you want to ensure that it is adequately protected.   More importantly, if you expend the funds in acquiring a disclaimer to remedy consumer confusion, then you must make sure that at least the following is done:

1) the disclaimer is prominent in relation to the remaining content on the website;

2) the disclaimer is bolded, italicized, font and color are actually large and vibrant enough to ensure that it is easy for a consumer to find;

3) moreover, the disclaimer must be from a click through portal that requires the consumer to acknowledge that each has read and viewed the disclaimer;

4) also, the disclaimer must be such that it is only, avoidable after the issue of initial interest confusion has be resolved; and

5) the disclaimer is not subject to alteration or modification by online search robots.

This is a common concern in most trademark infringement matters or opinions in recent cases.  Often times, lawyers do their clients a disservice by winning the preliminary judgment hearing and failing to take the time to craft an appropriate disclaimer or include the appropriate language in the Judge’s Order.  See the following:  International Kennel Club, Inc. v. Mighty Star, Inc and Std. Process, Inc. v. Banks, 554 F. Supp Std. Process, Inc. v. Banks

Gallery

New E-Book for Entrepreneurs: A Guide for Entrepreneurs and Business Owners!

We recommend a new book that has been published relating to a Beginner’s Series of Guides for Entrepreneurs relating to acquisition of angel, capital, funds, seed or VC funding for undertaking new efforts to try out and test out the … Continue reading

Rate this:

Patents, first to file, first to invent, and derivation proceedings!

The America Invents Act or the AIA changed our patent filing system from a First to Invent to a First to File system.  However, it also introduced derivation proceedings into the United States Patent and Trademark Office (USPTO) or Patent Office process. This may still allow many First to Invent Applicants to establish superior patent rights by demostrating that that First to File Applicant derived his, her or its invention from the Second Applicant.

This concept is similar and analogous to a copyright holder’s right to derivative works.  However, it is unclear what the scope of these patent derivation proceedings will be.  In addition, will an applicant be able to create a presumption of derivation by showing reasonable access to his or her invention and substantial similarity?  How will this impact the policy of permitting improvement patents that are not anticipated and nonobvious?

Can all improvements to a patented invention be challenged in derivation proceedings? What impact will this have on granting pioneering inventions greater protection? Will Courts still allow a broader or greater scope of protection in interpreting the claims of a pioneering patent? Will the Patent Office also in effect give broader or greater rights to a pioneering inventor in derivation proceedings?

We will just have to wait and see how the Patent Office and Courts interpret the changes brought about by the AIA.  If you have any concerns or questions, then please contact us at http://www.vrplaw.com

Copyright Litigation and Defending Against Copyright Infringement Claims!

So, you have been sued for copyright infringement, because you downloaded content from a website, blog, google scholar, or another source for your creative Work Product.  Whether, you are talking about written articles, e-books, blog posts, videos, photographs, website architecture and content (Collectively “Works”), many of the issues from a copyright infringement perspective are the same.  Many individuals make the mistake of thinking that because something is published on the internet that it is part of the Public Domain, and can be used by anyone.  Quite simply, this is incorrect.  Just because a Work is available or publicly accessible does not mean that it is not subject to a valid Copyright. You must still review it to determine if, the Work is copyrighted and if, you are using it in violation of the owner or author’s Copyrights.

First, you should look for a Copyright notice.  Second, you should check the U.S. Copyright Office’s records.  Third, you should determine how much of the Copyrighted Work you are actually using in creating your own Work.  If the amount that you have appropriated is covered by the Copyright Registration, then you may very well still be liable for Copyright Infringement.   If the material is covered by a Copyright you should review your own Work to see if, it is substantially similar to the original Work covered by the Copyright Registration.  If your Work is substantially similar or uses the heart of the original Work, then you should check to see if, your Work qualifies for a defense or exception from infringement.

To determine if, your Work qualifies for an exception or defenses from infringement you need to compare your Work to the Original Work and see if, there is an applicable Fair Use, Parody, Innocent Infringer, or DMCA Safe Harbor defense.  If not, then you may be liable for Copyright Infringement, which can be substantial and ongoing source of liability.  Damages in a Copyright Infringement case can include statutory fees, attorneys’ fees, lost profits and/or reasonable royalties for the life of the Copyright or the author’s life plus seventy years.  So, before you go to a website and copy a Work and expose yourself to a Copyright Infringement, Inducing Infringement, Contributory Infringement, Vicarious Infringement, or a Digital Millennium Copyright Infringement claim, consider investigating whether the Work is Copyrighted.

If you have any concerns or questions about enforcing your copyrights or defending against copyright infringement claims, then please feel free to contact our Copyright Attorneys or see our website at: http://www.vrplawgroup.com