The USPTO's Website

Tuesday, March 17th, 2009

Found at www.uspto.gov , the United States Patent and Trademark Office’s website provides its users with a huge amount of information about the Office and about patents and trademarks.

The site includes search engines for:

• Issued patents (text entries from 1976, scanned entries before that)
• Published patent applications (from 2001)
• Trademarks – registered and applied-for

There are filing mechanisms for both patent and trademark applications; the mechanisms even work reasonably well.

I send clients to this site regularly; it is readable by those who do not possess the knowledge of an IP practitioner and those clients who actually go to the site come back with awe in their voices, telling me that they didn’t know there was that much information out there.

The home page is always a running flow of USPTO news. Two items in today’s flow are worth mentioning here.

• The National Inventors’ Hall of Fame has found a home at the USPTO’s museum. This exhibit is well worth visiting. Find the full story here.
• April 6, 2009 is Design Day at the USPTO. Starting at 9 a.m., design patent examiners, design managers, independent inventors and patent attorneys and agents will have the opportunity to exchange ideas, information, and knowledge about design patent practice. Hon. Randall R. Rader, Chief Judge of the US Court of Appeals for the Federal Circuit (which has exclusive jurisdiction over patent appeals) is the scheduled keynote speaker. Find registration information here, and find the agenda here. This event is FREE, but you have to pre-register.

Tags: US Patent & Trademark Office, Website
Posted in Patent, Trade Dress, Trademark/Service Mark | No Comments »

The Kingdom of Spain Ratifies the Singapore Treaty

Wednesday, March 4th, 2009

Singapore Treaty Ratification by the Kingdom of Spain.

Spain has agreed to join the list of nations that has signed the Singapore Treaty; the treaty will enter into force in Spain on 18 May 2009.

The list of signatories to this important treaty regarding trademarks is below, along with the current status of the treaty in that country.

Tags: Singapore Treaty
Posted in Trademark/Service Mark | No Comments »

Jury Maintains Legality of Pay-Per-Click Bids on Trademarks

Wednesday, March 4th, 2009

Huh.

It seems that a jury in the US District Court for the Western District of Texas (“WDTX”) has rejected the argument that pay-per-click (“PPC”) bidding on registered trademarks constitutes trademark infringement.

In The College Network, Inc. v. Moore Educational Publishing, Inc., WDTX Docket No. A-07-Ca-615-LY, the arguments ran like this:

• College Network, Inc., d/b/a iStudySmart, argued that Moore Educational Publishing, Inc. infringed their registered mark when they placed PPC bids on the words “college” and “network”.
   
• Moore Educational Publishing, Inc. argued that PPC bids are not “use in commerce,” so no infringement could possibly occur. They also argued that the mark COLLEGE NETWORK was invalid for genericism.

The jury bought the surprising part of Moore’s argument and held that the mark is valid but not infringed since they decided that PPC usage is not “use in commerce.”

It didn’t help College Network that they were using the same PPC strategy against Moore, of course, but still I’m not convinced that the trademark (since it was held to be valid) didn’t get infringed. Frankly, I think this case has been wrongly decided.

Let’s look at this while taking away the interfering medium of the internet. Basically, what seems to have happened here is that one company used the registered trademark of another in a way that gave the company using the mark an advantage in the marketplace to the detriment of the owner of the mark. That sounds an awful lot like “use in commerce” to me, and like the textbook definition of not only trademark infringement but willful trademark infringement.

Now let’s add the internet back in to the equation. Evidently, bidding on a competitor’s registered mark has become common practice in the search-engine marketing industry. (as an aside, that’s a problem right there; it takes control of the registered mark away from the owner of the mark, which means that the owner of the mark can’t possibly police their mark as required). It gives more companies the possibility of front-page listing in search-engine results. However, these front-page listings piggyback on the registered trademarks of others — using the registered mark of another in a way that gives the infringer an advantage in the marketplace to the detriment of the owner of the mark. That still sounds an awful lot like “use in commerce” to me, and like the textbook definition of not only trademark infringement but willful trademark infringement.

I hear a cry of “But everyone is doing it” in this defense. Well, let’s take that to an extreme. It is against federal law to engage in racketeering; if a racketeer were to cry out in federal court that “everyone is doing it,” do you think the racketeer should be able to duck a conviction? No; the federal prosecutor would be all over our racketeer to find out who “everyone” is so she could go after “everyone” for racketeering. But wait: College Network says that this defense might have some merit; let’s not convict the racketeer since “everyone is doing it.” Trademark and racketeering are two different theories that have little to do the one with the other, but, taken to extreme, this is the precedent that this defense’s win sets for us.

It will be interesting to see what happens if this case is appealed. Keep an eye peeled on the US Court of Appeals for the Fourth Circuit for further developments.

Tags: Jury Decision, Search Engine Marketing, Trademark Infringement, US District Court for the Western District of Texas
Posted in Trademark/Service Mark | No Comments »

Singapore Treaty on the Law of Trademarks to Enter into Force in 2009

Sunday, January 18th, 2009

Singapore Treaty on the Law of Trademarks to Enter into Force in 2009.

This is good news for trademark owners worldwide. The Singapore Treaty, administered by the World Intellectual Property Organization (WIPO), will open the way for the branded goods industry to register and manage trademark rights cost-effectively and efficiently. The treaty “… standardizes procedural aspects of trademark registration and licensing and enables owners of trademarks and national trademark authorities to take advantage of efficiencies in using modern communications technologies to process and manage evolving trademark rights.” The USA ratified the Singapore Treaty on 1 October 2008.

Australia ratified the treaty on 16 December 2008. Australia was the tenth country to do so; therefore, according to its terms, the Singapore Treaty will go into full effect on 16 March 2009, three months after the tenth ratification. The ratifying nations are:

Singapore
Switzerland
Bulgaria 
Romania
Denmark
Latvia
the Kyrgyz Republic
USA
Moldova
Australia

Over time, other WIPO countries will, we hope, join with these first ten under the Singapore Treaty on the Law of Trademarks to help to standardize trademark law throughout the world and make registration across international boundaries more and more seamless. More information about the Singapore Treaty can be found on the Singapore Treaty’s webpage on the WIPO site.

Tags: International Trademark, service-mark, Singapore Treaty, trademark, Trademark Law
Posted in Trademark/Service Mark | No Comments »

IP Audit a Necessity for Due Diligence

Sunday, January 11th, 2009

What IS an IP audit, anyway?

An IP audit is a systematic categorization of all of your business’s intellectual property, including but not limited to:

• Inventions (patented and unpatented)
• Copyrights (registered and unregistered)
• Trademarks (registered and unregistered)
• Trade Dress (registered and unregistered)
• Trade Secrets (obviously unregistered)

This categorization, with a simultaneous search for areas where your IP may have “holes,” is done by an intellectual property attorney in cooperation with your firm’s management team; despite the word “audit,” this is NOT an accounting function (although certainly an accountant belongs on your firm’s management team and probably on the IP audit team).

Use an IP audit as due diligence when you plan to merge, divest, buy, sell, create, license, franchise your property. Also use an IP audit when there has been a shift in the law that governs IP.

For more information about IP audits, read Nancy’s article, published in the December 2003 issue of Les Nouvelles (the flagship publication of the Licensing Executives’ Society), The Intellectual Property Audit (.pdf format) or visit our IP Audit webpage.

Tags: business-law, intellectual-property
Posted in Contracts, Copyright, Franchising, General Business Law, Licensing, Patent, Trade Dress, Trade Secret, Trademark/Service Mark, Universal IP | No Comments »