Category Archives for Intellectual Property
Steps After Filing a Federal Trademark Registration Application
After you file an application for a federal trademark registration, you need to wait for the USPTO to begin processing. The entire process usually takes 9-12 months but can take longer if complications or “office actions” arise. This article explains the steps that an application for a federal trademark follows. USPTO Reviews Application After the […]
Continue readingU.S. Trademark International Class List
U.S. Trademark International Classes This is a list of classes selected when applying for a trademark registration in the United States: International Classes Goods 001 Chemicals 002 Paints 003 Cosmetics and Cleaning Preparations 004 Lubricants and Fuels 005 Pharmaceuticals 006 Metal Goods 007 Machinery 008 Hand Tools 009 Electrical and Scientific Apparatus 010 Medical Apparatus […]
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Royalties: How they Work
Introduction If your business works in the entertainment industry, the oil and gas industry, or certain other industries, you may become a party to a contract involving royalties. This article highlights what they are and how they work. When a person creates a book, song, play, or painting, the creator generally owns the intellectual property […]
Continue readingKeeping Trade Secrets Confidential: Non-Disclosure Agreements
To show that particular information is a trade secret, a firm . . . must demonstrate that it is valuable, not known to others who might profit by its use, and has been handled by means reasonably designed to maintain secrecy. – U.S. Court of Appeals for the Seventh Circuit, IDX Systems Corp. v. Epic […]
Continue readingPatents Versus Trade Secrets
Let’s say you or your company has come up with a blockbuster innovation and you’re planning to market it. But you want legal protection so your invention won’t be stolen. There are two primary ways to protect your potential moneymaker: A trade secret or a patent. Sometimes the choice is clear, but the decision often requires […]
Continue readingCan You Trademark a Road Sign?
We are surrounded by road signs. They are on our way to work. They are next to our front yards. They are everywhere. So are company logos. They are on TV. They are on our products. They are also everywhere. But what happens when the line blurs between the two and company logos mimic road […]
Continue readingZerorez v. U.S. Olympic Committee – Memo in Opposition to Motion to Dismiss
UNITED STATES DISTRICT COURT FOR THE DISTRICT OF MINNESOTA HSK LLC (d/b/a ZEROREZ) v. UNITED STATES OLYMPICS COMMITTEE Civil File No. 16-civ-02641 (WMW-KMM) PLAINTIFF’S MEMORANDUM OF LAW IN OPPOSITION TO DEFENDANT’S MOTION TO DISMISS Plaintiff HSK LLC (“Zerorez”) submits this memorandum of law in opposition to Defendant United States Olympics Committee’s (“USOC”) motion to dismiss. […]
Continue readingCan You File Trademark Cases in State Court? Yes.
Trademark infringement lawsuits are usually brought in federal court, but the law does not prohibit such cases from being adjudicated in state court. Federal courts have original jurisdiction in trademark cases. 28 U.S. Code § 1338(b). However, federal courts do not have exclusive jurisdiction in federal courts. This was recently explained by a state district court […]
Continue readingCopyright and Your Website
No matter what type of business you’re in, you probably have a website. And you probably want to regularly put interesting content on your website in order to keep it fresh and appealing. Perhaps you develop your own copyrightable articles or images — or hire someone else to do it. No matter how your website […]
Continue readingDo You Need Patent, Trademark or Copyright Protection?
Your business has unique products or services. What type of intellectual property protection do you need to make sure that your competitive advantage is not exploited by others? It is important to understand whether you should file for a patent, a trademark, a copyright — or all three. While patents, trademarks and copyrights are all […]
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Zerorez v. U.S. Olympic Committee – Lawsuit
UNITED STATES DISTRICT COURT DISTRICT OF MINNESOTA HSK LLC, d.b.a. ZEROREZ, Plaintiff, vs. United States Olympic Committee, Defendant. Court File No.0:16-cv-02641 HSK LLC v. United States Olympic Committee COMPLAINT Plaintiff HSK LLC, for its Complaint against Defendant United States Olympic Committee, states and alleges as […]
Continue readingUSOC Email to Minnesota Business Owner
From: Karissa Johnson Sent: Wednesday, July 20, 2016 6:20 AM To: [Name Redacted] <[email protected]> Subject: Trademark rules Hello, I am hoping to understand better the rules related to social media use of the term Olympics and related terms. I understand my business cannot have any Olympic-themed events or anything. But what I’m confused about is whether we can discuss […]
Continue readingZerorez v. U.S. Olympic Committee –
A Social Media Free Speech Case
On August 4, 2016, JUX filed a lawsuit against the U.S. Olympic Committee (USOC) in U.S. District Court on behalf of Zerorez of Minnesota over the right to talk about the Olympics on social media. Case: HSK LLC, d.b.a. ZEROREZ v. United States Olympic Committee Court file number: 0:16-cv-02641 HSK LLC v. United States Olympic Committee […]
Continue readingCopyrights: Online Content Best Practices
Copyright protects original works of authorship, including literary works (which includes computer programs), dramatic, musical (including lyrics), artistic (including pictorial, graphic, and sculptural works), motion pictures and other audiovisual works, sound recordings, architectural works, compilations, collective works, and derivative works. A copyright gives its owner the exclusive right to reproduce the work, sell or distribute the work, make derivatives based upon it, […]
Continue readingUse-in-Commerce vs. Intent-to-Us: Federal Trademark Registration Application Help
When filing a federal trademark registration application, you must indicate whether the mark is already used in commerce (“use in commerce”) or you intend to use the mark in commerce in the future (“intent to use”). What is “use-in-commerce” in a trademark registration application? A “use-in-commerce” basis occurs when the trademark is being used in […]
Continue readingUniform Trade Secrets Act in Minnesota
Under common law, the key issue in a trade secret case was whether there was intent to keep information secret. This changed when Minnesota became the first state to adopt the Uniform Trade Secrets Act in 1980, after the Uniform Law Commission approved the Act in 1979. Trade Secrets The Uniform Trade Secrets Act (the […]
Continue readingPatents: The Six Most Frequently Asked Questions
Innovation, invention, and the process of translating ideas into products and services has been, and remains, a major factor in Minnesota’s economic growth. Indeed, in today’s world that process has even greater importance in light of national productivity and international competitiveness. The below frequently asked questions are an introduction for inventors and entrepreneurs on how […]
Continue readingHow to Trademark a Series of Books, Movies, or Other Artistic Works
Series Trademark Registration How do you trademark the title of a book series, movie series, or other artistic works? This is a question authors and artists often ask. Fortunately, the United States Trademark Office allows you to trademark a series of books, movies, or related titles of other artistic works. The United States Trademark Office […]
Continue readingBusiness Names and Trademarks
Difference Between a Business Name and a Trademark I often get asked by clients who are starting businesses, “why do I need to trademark my business name? I already look through the Minnesota Secretary of State’s website and no one in the state has my business name.” However, merely clearing a name with the Secretary […]
Continue readingTrademark Licensing
Trademark Licensing Checklist A trademark license involves an agreement between two parties where one part who owns a trademark allows a second party to “license” the trademark’s use. The party that owns the trademark is the “licensor” and the party that is using the trademark is the “licensee.” The trademark license agreement will discuss, generally, […]
Continue readingDefending Trademarks
What Types of Trademarks Are the Easiest to Defend? Types of trademarks fall into one of five categories based on their distinctiveness. The categories are also known as the “Abercrombie Classification” from the seminal case Abercrombie & Fitch Co. v. Hunting World, 537 F.2d 4 (2nd Cir. 1976). The more distinctive a mark, the easier […]
Continue readingTrademark Registration: Use These Examples (Specimens) to Show Use
What Examples (a.k.a. “Specimens”) Do I Need to Show Trademark Use? Trademark registration requires you to show the actual use of your trademark within the context of your offerings to the public. These examples are called specimens. Specimens show how you actually use your mark with your goods or services. Specimens are not the mark alone—they show your mark […]
Continue readingCommonly Asked Trademark Questions
Below is a list of commonly asked trademark and copyright questions and their answers: Does Obtaining a Corporation or LLC Name with the Minnesota Secretary of State Mean I also Have a Trademark for that Name? No. In order to obtain any type of common law trademark protection (federal protection requires filing for a trademark), you […]
Continue readingCopyrights: Frequently Asked Questions
What is a Copyright? A copyright grants the creator of an original work in a fixed tangible medium of expression exclusive rights to the work’s distribution, generally for a limited time. What Kind of Works Does a Copyright Protect? The original works protected include: literary works musical works, including any accompanying words dramatic works, including […]
Continue readingTrademark: Secondary Meaning, Distinctiveness & Confusingly Similar
U.S. Supreme Court Articulates Secondary Meaning, Distinctiveness & Confusingly Similar In December 2014, the Supreme Court of the United States heard oral arguments in two trademark cases. It has been almost ten years since the Court has issued any substantive decision involving trademark law. One of the two cases was B&B Hardware v. Hargis. (The […]
Continue readingAre Similar-Sounding Songs Copyright Infringement?
The “Blurred Lines” Copyright Lawsuit Heads to Trial In a rare move these days, the trial between Robin Thicke, Pharrell Williams, Clifford Harris Jr. (better known as rapper “T.I.”) and Marvin Gaye’s family has begun. Marvin Gaye’s children, Nona, Frankie and Marvin III allege in the copyright infringement case that the song “Blurred Lines” directly […]
Continue readingBreweries and Trademark Law
With the explosion of new breweries in Minnesota and elsewhere around the country, we are seeing overlap in the names given to breweries and their beers. This has resulted in trademark disputes as breweries attempt to build and protect their brands. While breweries gain some common law trademark rights by using their brewery and beer […]
Continue readingTrademark: Tacking, Legal Equivalent & Confusingly Similar
U.S. Supreme Court Rules on Tacking, Legal Equivalent & Confusingly Similar In December 2014, the Supreme Court of the United States heard oral arguments in two trademark cases. It has been almost ten years since the Court has issued any substantive decision involving trademark law. One of the two cases was Hana Financial v. Hana Bank. (The […]
Continue readingTrademarks for Cannabis, Hemp & CBD
The following provides guidance to business owners who want to obtain a registered trademark for hemp, cannabis, CBD, or related products or services. 2019 Legal Update: The following is the guide used by the USPTO examining attorneys when processing trademark applications for cannabis and cannabis-related goods and services. This guidance is useful for attorneys and […]
Continue readingMusic Copyright Disputes: Sam Smith Forced to Give Song Writing Credits to Tom Petty
At the Grammys a few weeks ago, Sam Smith was the big winner. He took home the top awards winning Best New Artist, Best Record, and Best Song. The Best Record and Best Song awards were for his insanely popular song, “Stay With Me.” It is Smith’s most successful song to date. It topped the […]
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