The Federal Trade Commission and U.S. Department of Justice have received formal written comments from Google, Blackberry, Earthberry, Earthlink and Red Hat concerning “patent assertion entities”. These companies are asking the government to investigate patent privateering. Their position appears to be that PAE “poses numerous perils to competition, consumers and innovation”. Curious to some may be Blackberry’s involvement on this side of the equation because it owns Rockstar. Rockstar Consortium is a large global PAE, made up of Apple, Microsoft, RIM, Ericsson and Sony. The raging war between “acquiring” the inventions of others in order to establish intellectual property rights rather than being the primary inventor, entrenches various factors. On one hand, a PAE can target specific areas of industry in which it wants to market without the investment of hiring the R&D necessary to create from the beginning; on the other hand, the purchase price can be in the millions of dollars in any event. There is the possibility of being more focused and less happen stance in order to enter and own a large share of a particular market. There is also the possibility of purchasing at a fraction of the cost (though that fraction could actually be billions depending on the size of the investiture) of the initial R&D that went into the development of the technology that is captured by the patents involved in the transfer. So, ultimately, the question becomes if you and your business want to expand your patent portfolio, how is it best for your business goals to go about it? Buy or develop?
The Federal Trade Commission and U.S. Department of Justice have received formal written comments from Google, Blackberry, Earthberry, Earthlink and Red Hat concerning “patent assertion entities”. These companies are asking the government to investigate patent privateering. Their position appears to be that PAE “poses numerous perils to competition, consumers and innovation”. Curious to some may … Continue reading »View full post
When you have been practicing trademark law for more than 20 years, you pick up a few tricks along the way. Below is a list of tools that are available to all—but frequently seem to be underutilized, misunderstood, or both! Letter of Protest. These are a great tool to call particular facts to the attention … Continue reading »View full post
Corporations and individual patent owners alike are more interested than ever in seeking to generate revenue from their patent holdings. That revenue can come in the form of a one-time lump sum payment, a running royalty stream, some combination of both or even some other creative financial structure. Companies both large and small may be … Continue reading »View full post
We are pleased to report that the Livestrong Foundation has withdrawn its trademark opposition against our client Kidstrong Enterprises. As we previously reported in this space, the Foundation filed an opposition against Kidstrong, alleging that Kidstrong’s application to register the trademark PROSTRONG, which covers dietary beverages, violated its rights in the mark LIVESTRONG. Kidstrong responded … Continue reading »View full post
Is That A Trademark I Hear? TTAB Addresses Issues Raised By Sound Trademarks In Recent Case: In Re Powermat Inc.
While not common, sound trademarks have been registered in the United States on the Principal Register for over fifty years. The United States Patent and Trademark Office (USPTO) website provides examples of sound trademark registrations at : http://www.uspto.gov/trademarks/soundmarks/index.jsp . However, as the TTAB points out in the recent case In Re Powermat, (a copy which … Continue reading »View full post
Attorney’s fee awards are relatively rare in trademark cases, but when litigants make meritless arguments, attorney’s fees aren’t far behind. Proving, once again, that it doesn’t pay to make meritless arguments, the Middle District of Florida recently awarded Defendant X/Open Company Limited over $400,000 in attorney’s fees and costs as a result of the meritless … Continue reading »View full post
Effective internal IP policies encourage the development of new and valuable IP assets, ensure that your company is identifying potentially protectable IP it is creating already, assist with determining what IP to protect, and how, on a rational basis, and reduce litigation risks at all stages of development.View full post
The International Trademark Association (INTA) has appointed Janice Housey, a partner at Symbus Law Group, to its Panel of Neutrals. INTA created the Panel as a part of its alternative dispute resolution program (ADR) to resolve trademark and unfair competition disputes without litigation. INTA maintains high standards for its neutrals. To meet these standards, neutrals … Continue reading »View full post
Symbus has recently received significant press coverage for its defense of Kidstrong Enterprises in a trademark case filed by the Lance Armstrong Foundation. This is an important case because Kidstrong’s defense is based, in part, on allegations of “trademark bullying”—a trademark owner’s unreasonable interpretation of the scope of its rights for the purpose of intimidating … Continue reading »View full post
Need A Trademark Or Patent Lawyer To Manage End Of The Year Projects? Consider In-House Secondment Attorney Services
Now that summer is drawing to a close in-house counsel must gear up to address those end of the year rush projects. I worked as in-house counsel for over eighteen years and without fail the fourth quarter always proved to be our busiest. After a summer break our in-house clients worked feverishly to accomplish those … Continue reading »View full post
When you have been practicing trademark law for more than 20 years, you pick up a few tricks along the way. Below is a list of tools that are available to all—but frequently seem to be underutilized, misunderstood, or both!
- Letter of Protest. These are a great tool to call particular facts to the attention of an Examining Attorney which might not be obvious from the record. We successfully used this tool one time to call the Examining Attorney’s attention to the fact that “agave syrup” is indeed very similar to tequila since tequila is made from the agave (cactus) plant. Unless the Examining Attorney is a tequila aficionado this fact would likely have escaped her consideration and she would not issue a refusal to register an identical mark filed for agave syrup despite our client’s earlier registrations for the mark for tequila. Letters of Protest have specific requirements and require a fee. See TMEP sect. 1715 et seq. Generally, the goal is to provide evidence to support your position and a brief statement explaining why the evidence should be considered. If the Commissioner of the Trademark Office agrees, the Letter of Protest will be granted and the material provided to the Examiner. Note: A Letter of Protest is not a substitute for an opposition, nor does the fact that a Letter of Protest is “granted” equate to a refusal to register being issued.
- Going up the Chain. It has happened to all of us: we just do not believe that the assigned Examining Attorney understands the nuances of our brilliant legal arguments. In such instances, it is sometimes useful to get the Senior Attorney or Managing Attorney for the Examining Attorney’s Law Office involved. The Senior and Managing Attorneys for each Law Office are listed at: http://www.uspto.gov/trademarks/Other_TM_Contact_Info.jsp
- Consistency Initiative. In the olden days, co-pending applications (i.e., trademarks filed by the same applicant for similar marks and/or goods/services) were assigned to the same Examining Attorney. No more! Your applications all filed on the same day for complex goods and services can be assigned to different Examining Attorneys and the results can be very different Office Actions regarding identifications of goods/services, disclaimer issues, or even citations to earlier applications/registrations. The PTO now allows an Applicant (or its counsel) to raise concerns about inconsistent practices between recent registrations through pending applications. See http://www.uspto.gov/trademarks/notices/consistency_permanent.jsp
- Getting identifications added to the Acceptable Goods and Services Manual. The Trademark Office is constantly reviewing and updating the Acceptable Goods and Services Manual (searchable at http://tess2.uspto.gov/netahtml/tidm.html ). How can you get the Trademark Office to consider your proposed identification? The process is relatively straight-forward. You simply send your suggestion by email to email@example.com. There is one important catch: you cannot have a pending Office Action regarding the suggested language. Also, if your proposed suggestion violates the PTO’s general requirements for clarity and specificity, it will likely be rejected. Also, if the proposed suggestion could include goods or services in multiple classes, it will also be rejected. Despite the limitations, this really is a potentially great tool for those applicants who have very specific identifications that they wish to use over and over and do not want to deal with repeated office actions regarding the same identification.
I am sure every practitioner has their own favorite tools and suggestions. What’s yours?
Corporations and individual patent owners alike are more interested than ever in seeking to generate revenue from their patent holdings. That revenue can come in the form of a one-time lump sum payment, a running royalty stream, some combination of both or even some other creative financial structure. Companies both large and small may be willing to license or sell patents in their portfolio that are non-core to their business. Alternatively, a strategic decision may be made to license or sell a patent even if it does cover a core aspect of the ongoing business. In this latter case, the sale or license may be conditioned on a grant-back of license rights and/or other rights such as rights to improvements so as to minimize the impact to the company’s IP position in the context of such a sale or license. In the case of individual patent holders, the sale or license of patent assets may be more of a financial decision with less concern for the operational impact of such a transaction.
There exist a great many professionals that offer patent marketing services with the goal of generating revenue based on patent assets whether the ultimate transaction is a license or sale or some form of hybrid arrangement. These professionals come from a many diverse backgrounds such as patent attorneys, licensing professionals, marketers, business development professionals and technologists. Often, these service providers will comprise a team of individuals with the collective skill sets which are desirable in achieving the best result.
It is very difficult to determine a strict value for a particular patent or a portfolio given the many variables that go into the determination. In the end and in the context of a non-litigious business transaction, the patent or portfolio is only worth what a willing buyer will pay for the relevant patent assets. That being said, there are some key indicators that are important in assessing potential value of a patent portfolio. For example, one key factor is the scope of potential infringement (current, present and expected future) in the market. Another important factor is the inherent strength of the patent or set of patents. This includes, for example, the breadth and clarity of the claims as well as the extent and clarity of the disclosure in the patent. Patent strength is also dependent upon the prior art (of record and not of record) as that prior art applies to the issued claim set. An often overlooked factor in assessing potential value of a patent portfolio is the condition of the patent sale and purchase market at the time of the marketing. If there are many buyers at the specific time, then the portfolio is likely to fetch a higher price than if buyers are not relatively active, particularly if they are not currently active in the technology area represented by the portfolio.
There are many other factors that impact the ultimate expected sale price or license revenue which can be generated from a patent portfolio. If you or your company are interested in potentially unlocking the value of patent assets, then the best course of action is to locate a reputable patent monetization expert and ask for an assessment of your portfolio. In almost all cases, this can be done without charge and the expert should be able to provide a general idea of expected value and potential for a sale or successful licensing program. Some of these experts will market portfolios at no cost to the owner in return for a success based portion of the proceeds generated through the marketing of the assets.
Attorney’s fee awards are relatively rare in trademark cases, but when litigants make meritless arguments, attorney’s fees aren’t far behind. Proving, once again, that it doesn’t pay to make meritless arguments, the Middle District of Florida recently awarded Defendant X/Open Company Limited over $400,000 in attorney’s fees and costs as a result of the meritless arguments of Plaintiff Wayne R. Gray.
The parties’ dispute started in 2001, when X/Open filed an opposition in the Trademark Trial and Appeal Board challenging Gray’s application to register the INUX trademark on the basis of its famous UNIX trademark, both covering operating systems. During the opposition, Gray persistently alleged that X/Open never owned the UNIX trademark. In motion after motion, Gray argued that The SCO Group, Inc. was the lawful owner of the UNIX mark, despite clear evidence to the contrary, including SCO’s acknowledgement that X/Open owned the mark. The opposition eventually stalled over the confidentiality of certain documents and, in 2007, Gray filed a lawsuit against X/Open and codefendants SCO and Novell, Inc. in the Middle District of Florida. Amplifying on his theory that X/Open did not own the UNIX trademark, Gray alleged that the Defendants “conspired,” over a period of at least 15 years, to hide the true owner of the mark and enforce the mark against Gray and others. Gray also alleged that the goal of this vast conspiracy was to deprive Gray of his rights and “control certain software markets.” According to Gray, the Defendants’ actions violated the federal RICO statute, the Florida RICO statute, and various other laws, and caused him more than $100 million in damages.
After several heated discovery disputes, X/Open and Novell moved for summary judgment, arguing that the documentary evidence clearly established X/Open’s ownership of the UNIX mark and that Gray’s conspiracy theory was pure speculation. The Court had no trouble finding, based on the record, that X/Open owned the UNIX mark and that Gray’s claims were based on “mere suspicions and unsupported theories.” As a result, the Court granted summary judgment to Defendants on all counts of Gray’s complaint in 2009. Wayne R. Gray v. Novell, Inc., X/Open Company Limited, and The SCO Group, Inc., 2009 WL 425958 (M.D. Fla. Feb. 20, 2009).
Following summary judgment for the Defendants, Gray filed an appeal with the 11th Circuit, which affirmed the District Court’s judgment. Echoing the District Court’s summary judgment decision, the 11th Circuit found that Gray’s claims “lacked a substantial factual basis.” At about the same time, X/Open filed a motion seeking to establish its entitlement to attorney’s fees with the District Court, which was granted. The issue of X/Open’s right to attorney’s fees having been decided, X/Open submitted arguments concerning the amount of its attorney’s fees and costs in 2010, and was recently awarded approximately $410,000, plus interest. Wayne R. Gray v. Novell, Inc., X/Open Company Limited, and The SCO Group, Inc., Case No. 8:06-CV-1950-T-33TGW (M.D. Fla. Sept. 6, 2012).
Litigants should be expected to zealously advance their positions, but Gray v. X/Open shows they should refrain from making meritless arguments. When they do, the party forced to defend itself against such arguments can recover its attorney’s fees and, as this case illustrates, those fees can be substantial.
For more information about attorney’s fees in trademark cases, contact Evan Raynes, one of the principal attorneys for this case, at firstname.lastname@example.org.
For most companies, IP policy is initially handled on an ad-hoc basis. The company is not developing that many new products or brands, and the future development of the company is too uncertain to warrant the investment of time and money involved in establishing official policies related to intellectual property. So the founders handle IP issues individually as they arise.
But as a business grows, formal rules and procedures for handling the internal development of intellectual property become more and more important. At some point, management has to stop bringing in the IP attorneys only when there is a specific need, and start looking at high-level IP issues proactively.
IP policies should scale with the size of your business, starting out simple and increasing in breadth and detail as IP matters proliferate and responsibility becomes more diffuse. Here is a short list of six major components of internal corporate IP programs, with brief descriptions and recommendations for the timing of their implementation:
1) IP-related Provisions In Employment Agreements
It is critical that you ensure all employment agreements include language protecting your business’s intellectual property rights and limiting the potential for litigation. This is an issue you should handle before hiring your first employee.
Common IP-related clauses in employment agreements include the automatic assignment of employee patent rights to your company, mandatory disclosure of all existing patent rights and other intellectual property, and non-disclosure and non-compete agreements, particularly as they interface with your company’s trade secrets.
2) IP-related Provisions In Vendor Contracts and Other Agreements
IP always comes into play when relying on a third party to assist with any aspect of product development, marketing or branding, and the like. Every contract should be reviewed with an eye towards preserving IP rights and reducing the risk of litigation.
Copyrights must be explicitly addressed in any agreement with an independent contractor regarding creative works, and may warrant a separate work-for-hire agreement. The automatic assignment of any patent rights developed by a vendor during the course of your project is also critical. Non-disclosure provisions and other clauses to protect and handle trade secrets should also be included.
3) Employee Handbook/Policies
Any of your employees may encounter situations where they have to decide how to handle intellectual property. They need clear rules directing them to the proper actions to avoid exposing your company to litigation or a loss of intellectual property rights. Potential issues include the proper handling of third-party trademarks and copyrighted matter in marketing materials, use of open-source and third party code in company software, and guidelines regarding disclosure of potentially patentable subject matter.
4) Invention Disclosure Program & Inventor Incentives
Once your business is undertaking enough research and development activity, it becomes difficult for upper management to keep track of all the areas in which individual employees are conducting research, and even more difficult to keep track of the daily progress of such investigation. At that point, a formal invention disclosure program becomes a necessity.
You want decisions about whether to patent an idea or keep it a trade secret, and whether and when to allow publication, to be handled by upper-level personnel according to your company’s patenting strategy. And to ensure that decision-making personnel always know about the latest ideas and developments, a formal disclosure program coupled with inventor incentives for disclosure and successful patenting activity should be maintained.
5) Patenting Strategy
As your business grows, you will need a principled basis for determining whether to patent new developments or keep them as trade secrets, whether and where to file internationally, whether to file provisional patent applications, and the like. These decisions should be made at a high level and should be guided by the company’s business strategy, priorities, and competitors.
Developing a formal strategy to be implemented throughout your organization ensures that valuable intellectual property is not discarded and that resources are not wasted on filings that do not support the revenue-generating portions of the business.
6) Branding and Marketing Procedures
When your company has dedicated marketing personnel and develops new brands on a regular basis, trademark law principles should be integrated into the process for developing new brands. Your marketing department should be developing protecatable trademarks for your new logos and product names and should be clearing them of conflicts at an early stage to limit litigation risks and support branding campaigns. Marketing personnel should be educated on the proper and consistent usage of your trademarks to maintain strong trademark rights.
Effective internal IP policies encourage the development of new and valuable IP assets, ensure that your company is identifying potentially protectable IP it is creating already, assist with determining what IP to protect, and how, on a rational basis, and reduce litigation risks at all stages of development. Implementing these high-level intellectual property policies will pay substantial dividends over the life of your business.
The International Trademark Association (INTA) has appointed Janice Housey, a partner at Symbus Law Group, to its Panel of Neutrals. INTA created the Panel as a part of its alternative dispute resolution program (ADR) to resolve trademark and unfair competition disputes without litigation.
INTA maintains high standards for its neutrals. To meet these standards, neutrals must have substantive legal knowledge coupled with training in mediation, be held in high regard in the legal community, and make a commitment to continue to gain relevant knowledge through experience and training during their tenure on the Panel.
Ms. Housey was chosen among a large number of qualified applicants, cited by INTA as an attorney whose experience and proven abilities will permit her to make a significant contribution to ADR in the field of trademarks.
The INTA Panel of Neutrals is the world’s only panel of mediators who are skilled in both trademark and unfair competition law and trained in mediating disputes. According to INTA, the success rate for mediation as a tool for resolving trademark disputes is about 70%.
Symbus is committed to helping its clients seek cost-effective solutions to its intellectual property issues and believes that meditation and other ADR solutions should often be considered for many types of intellectual property disputes. Ms. Housey’s appointment recognizes the Symbus commitment to being innovators in the practice of intellectual propert y.
Need A Trademark Or Patent Lawyer To Manage End Of The Year Projects? Consider In-House Secondment Attorney Services
Now that summer is drawing to a close in-house counsel must gear up to address those end of the year rush projects. I worked as in-house counsel for over eighteen years and without fail the fourth quarter always proved to be our busiest. After a summer break our in-house clients worked feverishly to accomplish those end of the year objectives and Management pushed to complete any deals that may have been in process so that the Company could improve the end of the year bottom line. Everyone in the legal department felt the onslaught including the Intellectual Property Department.
If you are experiencing pressure to complete a deal or resolve a matter that involves a complex patent issue, litigation, multi-country trademark license, a worldwide filing project, or similar task, perhaps you should consider retaining an in-house secondment Trademark or Patent Attorney. Such an attorney can provide on location assistance with these types long term projects and needs that would be costly and complicated to “farm out” to outside counsel. With an on location secondment attorney you can provide direction on the spot, the attorney can interact with in-house clients as needed and can access necessary files and data easily. Also, depending upon the firm you choose to work with you may find that you can negotiate for an hourly rate or flat fee arrangement that permits you to do this well within your budget.
Not familiar with secondment services? U.S. attorneys are often unaware of the concept of secondment attorneys although they are widely used in the U.K. and Europe. The term secondment derives from the days when the British army officers were given temporary assignments outside their regular regiment. The practice benefited the new regiment that received an additional set of hands and a fresh perspective from an experienced officer. In the legal world, this practice means that an experienced attorney from a law firm that offers “secondment” services can be placed in-house on a temporary basis. The attorney can then assist with complex projects and provide client support “in the trenches” and often do so with minimal supervision and training on the part of the hiring manager. When the project is completed the “secondment” attorney returns to her law firm work with a greater understanding of the company’s business and legal needs and can now work more effectively and efficiently with the company on a traditional basis.
Companies requiring special coverage for any of the following situations often use secondment services:
- Long term projects, such as negotiating intellectual property licenses, managing global trademark recordal assignments, filing name changes, or conducting foreign license recordals
- Global search and filing of a new brand
- A legal department that wants to bring their intellectual property portfolio in-house but does not need full-time Patent or Trademark Counsel
- Assistance with setting up in-house intellectual property operations
- Switching to a new trademark or patent management database
- Resolving foreign conflicts for trademarks or patents that are no longer of top tier importance
- In-house litigation support
- An attorney on maternity or sick leave
How does hiring a secondment attorney differ from hiring a temporary attorney from an agency or borrowing an associate from a law firm? For projects requiring specialized skills and knowledge, such as for intellectual property matters, temporary attorneys from agencies rarely come with the necessary experience to “hit the ground running”. The hiring manager must often train and closely supervise the attorney. Once the project ends, even if the attorney has been of great assistance, the nature of temporary work is that the temporary attorney is unlikely to be available the next time the hiring manager needs an attorney since such attorneys are often on other projects or have taken permanent positions. For these reasons, the time spent training and supervising the temporary attorney usually does not provide a long-term benefit. Likewise, borrowing an associate from a law firm can be an inadequate solution since traditional law firms often insist on billing the attorney at an hourly rate and often will only provide an associate with one or two years of experience. The hiring manager is left to provide training and supervision. To make matters worse, particularly for specialized intellectual property work, even the less experienced associates at traditional firms are often billed at hundreds of dollars an hour. For these reasons, hiring a secondment attorney is often the preferred solution for addressing temporary in-house legal assistance needs.
If you are interested in getting some much needed help for those end of the year rush projects, Symbus Law Group can provide secondment services to companies seeking trademark or patent attorneys to work on a temporary (long term or short term) basis in their offices or ours. Secondment services can be on a 1-5 days/week basis for anywhere from 1 week to 6 months. Call me and we can discuss a cost-effective strategy for addressing your needs, either on an hourly basis or at a flat rate. Symbus intellectual property attorneys are available to work at in-house locations in the greater Philadelphia, Washington, D.C., Northern Virginia, areas. For more information, contact me, Teresa Anzalone, at 610-420-7731, or by email at email@example.com.