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USPTO Proposes Reduction in Trademark Fees

We have good news for current and future clients! The United States Patent and Trademark Office (USPTO) has released proposed reductions for the fees it charges to file trademark applications and renewals. As we have discussed in previous blog entries, there are numerous advantages to filing for federal registration of your trademark. Some of these include: public notice of your claim of ownership of the mark; a legal presumption of your ownership of the mark and your exclusive right to use the mark nationwide; and the ability to bring an action concerning the mark in federal court.

The USPTO issued a notice of proposed rulemaking on May 9, 2014. In that notice, the USPTO proposed reducing its trademark fees from $325 to $275 for most applications. There are two conditions that must be met. First, the applicant must use the USPTO’s Trademark Electronic Application System (TEAS). Second, the applicant must agree to receive all correspondence by e-mail, and use TEAS to file Office Action Responses and all other documents through TEAS as well. This option would be known as a TEAS Reduced Fee application.

The fee for a TEAS Plus application is also proposed to be reduced from $275 to $225 if both of the above conditions are met. A TEAS Plus application is one in which an applicant selects its description of goods/services from the USPTO’s Acceptable Identification of Goods and Services Manual, rather than entering free-form text.

Lastly, the USPTO’s notice proposed reducing the fee from $400 to $300 per class for renewal of an existing registration.

We hope this motivates our readers to file trademark applications for their company names, product or service names, and logos. Remember, you must have a federal registration to sue another party in federal court for trademark infringement. Please contactDavid Lilenfeld at David@lilenfeldpc.com or Sonia Lakhany at Sonia@lilenfeldpc.com if you would like more information on registering a trademark.

David M. Lilenfeld

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Happy Birthday, Batman: 75 Years of the Batman Trademarks

With the recent announcement of Ben Affleck being cast as Superman in the upcoming sequel to “Man of Steel”, we thought it would be the perfect time to recognize Batman and celebrate his 75th birthday this year. This widely known comic character has become an important part of our pop culture history and, for the first time on the big screen, will appear next to Superman, who will be played again by Henry Cavill. The much-anticipated film is scheduled for release in May 2016.

In the meantime, from a trademark perspective, the graphic below shows an interesting and fun evolution of the Batman logos over the last 75 years. Happy Birthday, Batman!

(Of course, being intellectual property lawyers, we must say thank you to Happy Birthday Roboto for the graphic).

batman logo

David M. Lilenfeld

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Corporate Names versus Trademarks

Even savvy attorneys get confused between a corporate name and a trademark. We thought we would lend a helping hand and clarify the differences.

Let’s start with corporate names. A corporate name is the name of the actual business entity – the name that gets registered with the Secretary of State at the time of incorporation. This is the company’s “official” name. Incorporating with a Secretary of State gives the company the right to use its name for official purposes, such as banking, on legal documents, and as a tax payer.

A trademark, on the other hand, is a particular word, phrase, symbol, design, or a combination thereof (such as a logo) that is the name shown to the public – the public-facing name the company uses in the stream of commerce to identify its goods or services. Trademark registrations are applied for through the United States Patent and Trademark Office (for federal registration), state offices (for state registration), or internationally.

An easy illustration of the difference between corporate names and trademarks is TJ Maxx. TJ Maxx is a trademark for retail department store services, but that is not its corporate name. The corporate name is TJX Operating Companies, Inc., which most of us do not recognize.

A common misconception – among both business owners and lawyers – is that when a Secretary of State allows a company to incorporate with a particular name, the company thereby has permission to use that corporate name as a trademark. The truth is that when incorporation is allowed with a certain name, this does not necessarily mean use of that corporate name does not infringe someone else’s trademark.

Following the example above, let’s say you or your client wanted to incorporate the name TJ Maximum, Inc. A secretary of state is likely to allow that. However, if you or your client began using that name in connection with retail clothing, the owner of the TJ Maxx trademark would likely have a strong trademark infringement claim.  The fact that a Secretary of State allowed incorporation with the name TJ Maximum, Inc. is not a defense to trademark infringement.

The bottom line is that corporate names and trademarks are two different things and shouldn’t be confused.  If you have any questions, please contact David Lilenfeld at David@lilenfeldpc.com or Sonia Lakhany at Sonia@lilenfeldpc.com.

David Lilenfeld

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Recent Eleventh Circuit decision mirrors State of Washington case on IP addresses

In a recent blog post (see here), I discussed a recent case in the State of Washington where the judge ruled that an IP address connected with infringing activity does not prove that an account holder is guilty of copyright infringement.  The judge further ruled that evidence consisting only of an IP address is insufficient to plead a claim of copyright infringement.

I had stated that Lilenfeld PC would be keeping an eye on this issue for precedent in the Eleventh Circuit and it arose just a couple of weeks ago in Florida. Malibu Media, a pornography distributor that filed more than 1,000 suits in 2013 alone, asked the judge to issue a subpoena against a suspected pirate known only by an IP address. The user, “174.61.81.171,” was accused of sharing Malibu Media content without the company’s permission. In response to the judge inquiring how Malibu Media obtained the evidence against 174.61.81.171, the company explained that its software was able to determine that the downloader was in at a residential address and not using a WiFi hotspot. This meant that the infringer had to be guilty of downloading the content. However, the judge’s perspective was that even if the company could prove that a specific internet connection was used, it would not be definitive as to who was sitting at the keyboard. Dismissing the case, the judge wrote, “There is nothing that links the IP address location to the identity of the person actually downloading and viewing Plaintiff’s videos, and establishing whether that person lives in this district.”

While this case does not necessarily mean all IP address cases will be ruled similarly, it is certainly the latest in a trend shifting toward more stringent requirements in piracy cases. Regardless, even if their suits are ultimately dismissed, companies like Malibu Media are intimidating people into paying thousands of dollars, even if they’re innocent of copying or uploading movies illegally. A digital rights group called Electronic Frontier Foundation explained that these lawsuits often list embarrassing titles, which then become public record. Copies of the court filings are sent to the subscriber along with a demand for money, to which most people’s response is to pay, rather than be elect to pay named in a public lawsuit as a habitual user of hardcore porn.

David M. Lilenfeld

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Example of possible trademark infringement at a local Atlanta grocery store

As consumers with busy lives, we often hastily do our grocery shopping and don’t think much of products we don’t use or purchase. As a trademark attorney, I am consistently interested in blatant examples of trademark infringement I come across and thought to share one on today’s blog post.

The photo below was taken recently at a local grocery store here in Atlanta. It looks rather similar to a popular brand we all know (second picture), doesn’t it? The familiar bee was even on the side of the box. Just goes to show that the standard for trademark infringement (which is likelihood of confusion) can be as simple as a consumer shopping for cereal and doing a double-take when reaching for a box before realizing it’s the wrong product.

 

photo (26)

cheerios

David Lilenfeld

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The “Good Times, Bad Times” of Works Made-for-Hire

Have you ever hired anyone to create something for you or your business? If so, read on. Under United States law in the majority of instances, the person who created a work is its author for purposes of copyright protection. However, one exception is when an independent contractor is specially ordered or commissioned to produce a work under a properly drafted written agreement. This specific circumstance constitutes a work made-for-hire, where the person or entity who hired the independent contractor (not the independent contractor herself) is then the owner of the work.

Of course, determining whether a work is one made for hire can be tricky. The first step is to establish whether the person who prepared the work is an employee or an independent contractor. If it was an independent contractor, then under Section 101 of the Copyright Act, the work must have been specially ordered or commissioned for use and there must have been an express written agreement between the parties that the work was made-for-hire. Such an agreement is typically called a “work-for-hire” agreement.

An example of the complications with works made-for-hire is the recent suicide of Mick Jagger’s girlfriend, L’Wren Scott, which resurfaced Jagger’s longstanding feud with artist Ruby Mazur. In the 1970’s, Jagger paid Mazur $10,000 for Mazur to create the original “mouth and tongue” artwork for the Rolling Stones’s “Tumbling Dice” album. Since then, the image has become an iconic piece and one of the most recognizable logos in pop culture. Perhaps taking things too far, Mazur said (referencing Scott’s suicide), “I feel for [L’wren]…Had I not been as strong, with great friends, I might have hung myself too.”

Mazur stated he asked Jagger repeatedly to give him trademark rights in order to reap fair earnings for his work, but Jagger refused. Indeed, Mazur tried to sue Jagger for trademark infringement in the 1990’s, but too much time had elapsed. Mazur now claims that the experience drove him to depression and suicidal thoughts.

While this was an unfortunate outcome for Mazur, Jagger structured the deal correctly, having an express written agreement with Mazur to create the image and paying Mazur for his work. Mazur was an independent contractor and the transaction was a work made-for-hire squarely within the Copyright Act’s definition.

David Lilenfeld

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7 Reasons to Conduct a Proper Trademark Search

As trademark attorneys, we are often asked what the rationale behind the search process is and why we stress its importance prior to filing an application for registration. We thought it might be helpful to provide a short list of seven reasons why you should take the time to conduct a proper trademark search:

  1. The United States trademark laws are based upon the “first to use has priority” system. As such, if someone already is using a particular trademark, they have superior rights to it.
  2. You don’t want to knowingly (this includes the “should have known” standard) infringe on someone’s trademark. This can result in possibly having to pay damages such as: (1) disgorgement of profits; (2) damages caused by the infringement, which can be trebled; (3) costs of bringing the lawsuit; (4) attorney’s fees; and (5) destruction of inventory.
  3. A trademark owner can use your failure to search as a willful attempt to “blind yourself” to readily available information.
  4. You don’t want to waste time, money, or resources in developing your product, the packaging, and advertising only to have to change the name or logo later after being accused of infringement.
  5. Searching prior to applying for registration may help you identify potential obstacles to registration, such as those encountered by a similar trademark. You can even see how the applicant responded to the Office Actions under the TSDR tab on the USPTO website.
  6. Similarly, you can see which types of trademarks tend to be accepted or rejected by the USPTO and design your trademarks accordingly, thereby optimizing your chances of approval.

While search reports for a comprehensive search do cost a few hundred dollars, it is much better to spend a small amount of money up front than to potentially spend a lot of money later in litigation. See #2! Please contact David Lilenfeld or Sonia Lakhany for more information on trademark searching or clearance.

David M. Lilenfeld

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Recent ruling in State of Washington makes identifying copyright infringers more challenging

Often in copyright infringement cases, particularly those that deal with piracy, copyright owners seek to not only determine an Internet Protocol (IP) address, a numerical value that identifies a computer, behind the infringing activity, but also the actual, individual person behind the computer. The source for the identifying information is usually the Internet Service Provider (ISP), such as Comcast, AT&T, or RCN. Attorneys for copyright owners in these cases often serve subpoenas on the ISP to obtain the account holder’s name, address, and other contact information. Once the ISP responds to the subpoena, the copyright owners names those account holders personally in suits for infringement.

However, a recent copyright infringement case in the United Stated District Court for the Western District of Washington at Seattle may change that practice. This case addressed a claim of copyright infringement by the makers of the movie Elf-Man against hundreds of users pirating the firm using BitTorrent. The movie studio alleged that the IP address assigned to each alleged infringer shared a single pirated version of the film, stating that the defendants either downloaded the pirated film themselves or permitted, facilitated, or promoted the use of their Internet connections by others to download the film.

Ruling on a motion to dismiss by one of the defendants, the judge ruled that IP address evidence does not prove that an account holder is guilty of copyright infringement. The judge added that evidence consisting only of an IP address is insufficient to plead a claim of copyright infringement. Further, the judge stated, “[The movie studio] has actually alleged no more than that the named defendants purchased Internet access and failed to ensure that others did not use that access to download copyrighted material…While it is possible that the subscriber is the one who participated in the BitTorrent swarm, it is also possible that a family member, guest, or freeloader engaged in the infringing conduct.”

This decision has important implications for identifying future infringers, particularly for firms such as Lilenfeld PC, which focus only on intellectual property. It is something we will be keeping our eyes on for precedent in our home jurisdiction. If you have any questions about a potential copyright infringement claim, please contact David Lilenfeld or Sonia Lakhany.

David Lilenfeld

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Event at Emory Law School

On February 26, 2014, Lilenfeld PC Attorney Sonia Lakhany spoke on a panel of small- and medium-sized firm lawyers at Emory Law School. The event, hosted by the Emory Center for Professional Development & Career Strategy, discussed various options for a job search outside of the on-campus interviewing process.

Sonia shared her job search as a 1L that turned into a 2L summer position, as well as her post-graduate experiences working in litigation. The other panelists were Randy New (Kitchens New Cleghorn, LLC), Melissa Perignat (Holt Ney Zatcoff & Wasserman, LLP), and Taylor Statfeld (Emory ‘14L). Other topics discussed by the group included items to highlight on a resume, how to take the initiative, and strategies to secure a job offer as an intern.

It was a pleasure for Sonia to meet Emory students and provide advice from the perspective of a recent alum. She looks forward to future events at the law school.

David M. Lilenfeld

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Because we think it is important, we are re-posting an email from the State Bar of Georgia. Please get involved – it will only take a few minutes:

From the President: Voice Your Opposition to SB 209
Dear Bar Member,
The State Bar of Georgia urges you to contact your state House representative to voice your opposition to SB 209.
SB 209 provides immunity from UPL lawsuits for entities such as LegalZoom that provide online legal self-help products, so long as the website “conspicuously” disclaims that its products do not substitute for the advice of an attorney.
The Bar opposes this bill for three reasons:
(1) These websites warrant that their forms meet the specific legal requirements of the consumer’s state law. Whether or not they do is a legal interpretation best left to be determined by the finder of fact.
(2) Many of these websites offer “hands on attention from attorneys,” yet the consumer doesn’t know which states these attorneys are licensed from the face of website itself.
(3) The bill does not define what constitutes a “conspicuous” disclaimer and most disclaimers on these websites are in tiny print and difficult to find.
The State Bar of Georgia’s paramount principal is ensuring easy access to justice for all people, but SB 209 does not do so. In fact, it protects entities that may be impermissibly practicing law in this state and putting our citizens at risk of harm. Please contact your state House representative and urge them to vote NO on SB 209 on Thursday, March 6.
To find your representative, please click here. If you have any questions, please visit the State Bar’s legislative program page. If you have any questions related to the Bar’s legislative agenda, please contact Thomas Worthy, the State Bar of Georgia’s Director of Governmental Affairs, at thomasw@gabar.org.
Sincerely,
Charles L. Ruffin
President, State Bar of Georgia
cruffin@bakerdonelson.com
David M. Lilenfeld
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