Intellectual Property

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…

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…

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…

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…

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…

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…

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…

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…

It’s All About the Frap Coffee giant Starbucks takes protecting its trademark Frappuccino seriously. Starbucks owns the trademark “FRAPPUCCINO” in the United States. For those who are not familiar with a Starbucks Frappuccino, it is a line of frozen coffee beverages that is blended with ice and other sweet ingredients and usually topped with whipped…

I suspect that most of you are very familiar with Disney and its signature spokesperson, Mickey Mouse. There are probably fewer of you that are familiar with Deadmau5 (pronounced “dead mouse,” real name Joel Zimmerman). Deadmau5 is a music producer, performer and DJ. He often wears a mouse head while performing. Deadmau5 has used this…

Outside the trademark arena, the idea of unfair competition exists in common law and statutes to compensate businesses that have suffered an injury through deceptive or wrongful business practices. In a trademark situation an injured party can bring an unfair competition claim under § 43(a) of the Lanham Act. Section 43(a) provides that: Any person…

Unincorporated Association Trademark Example: Southern California Darts Association On August 11, 2014, the Court of Appeals for the Ninth Circuit, in which the states of Arizona, California, Nevada, Oregon, Idaho Washington and Montana are subject, held that unincorporated associations have the legal capacity and right to own trademarks and to sue infringers to enforce them….

In trademark law, “likelihood of confusion” is the primary legal standard for trademark infringement. A recent decision from the 9th Circuit Court of Appeals nicely articulates the black letter law behind the “likelihood of confusion” standard: To show trademark infringement, a plaintiff must establish ownership of a trademark and a likelihood of consumer confusion. AMF,…

After a plaintiff has been able to prove copyright infringement a defendant can allege a number of defenses, including fair use. A defense of fair use is not alleging that an infringement did not occur, but rather that the infringement is excusable. The defense of fair use allows courts some flexibility to assess matters on…

Paris Convention The Paris Convention applies to patents, trademarks, industrial designs, utility models, service marks, trade names, geographical indications, the repression of unfair competition and was signed in Paris, France on March 20, 1883. In essence, it ensures that each member nation tax citizens of the other member nations against unfair competition. The Paris Convention…

There can be instances where one can use the trademark of another and that use will be classified as “fair use.” Usually, marks have two meanings, a trademark meaning and an independent or surname descriptive meaning. It is important to note that under trademark law only the trademark meaning is given protection. In other words…

Scandalous or Immoral Every once in a while the U. S. Patent and Trademark Office is faced with an application that could potentially be deemed “scandalous or immoral.” Denial of marks that are scandalous comes from Section 2(a) of the Lanham Act which states, No trademark by which the goods of applicant may be distinguished…

The notion of fair use is something that every person or party with a trademark or copyright should be aware of. While having a trademark and a copyright exists to provide protection so the person who owns that trademark or copyright can protect it, there are instances where a third party may use the trademark…

A person obtains a trademark by being the first to use it in commerce on a good or service. It must be something that may be validly trademarked. Descriptive marks and generic marks generally may not be trademarked. Obtaining a trademark gives a person exclusive use of that mark. A trademark need not be registered,…