Monday, July 31, 2006

Who controls the Internet?

Who Controls the Internet?
Illusions of a Borderless World is a new book by Jack Goldsmith and Tim Wu, published this summer by Oxford University Press. Both authors are of illustrious pedigree: Jack Goldsmith is Henry L. Shattuck Professor of Law, Harvard University, while Tim Wu is Professor of Law in the Columbia Law School.
The publisher writes:
"Will cyberanarchy rule the net? And if we do find a way to regulate our cyberlife will national borders dissolve as the Internet becomes the first global state? In this provocative new work, Jack L. Goldsmith and Tim Wu dismiss the fashionable talk of both a 'borderless' net and of a single governing 'code'. Territorial governments can and will, they contend, exercise significant control over all aspects of Internet communications. Examining policy puzzles from e-commerce to privacy, speech and pornography, intellectual property, and cybercrime, Who Controls the Internet demonstrates that individual governments rather than private or global bodies will play that dominant role in regulation. Accessible and controversial, this work is bound to stir comment".
Law Wire says: We are not convinced either that individual governments will dominate the internet, or that private or global bodies will hold the regulatory trump cards. Nor do wesubscribe to the global free-for-all position. Law Wire thinks that this book's data and constructive analysis supports an alternative theory: there is a creative tension between (i) governmental forces, (ii) the powers of private enterprise and (iii) the users, which ensures that none of these groups ever actually gains the upper hand over the others.

Interbrand/BusinessWeek 100 Top Brands [2006]

Law Wire has been taking a look at the Interbrand/BusinessWeek 100 Top Brands for 2006. The methodology for selecting the 100 Top Brands is as follows:

"Interbrand takes lots of ingredients into account when ranking the world's most valuable brands. To even qualify for the list, each brand must derive about a third of its earnings outside its home country, be recognizable outside of its base of customers, and have publicly available marketing and financial data. One or more of those criteria eliminate such heavyweights as Visa, Wal-Mart, Mars, and CNN. Interbrand doesn't rank parent companies, which explains why Procter & Gamble doesn't show up. And airlines are not ranked because it's too hard to separate their brands' impact on sales from factors such as routes and schedules.
BusinessWeek chose Interbrand's methodology because it evaluates brands much the way analysts value other assets: on the basis of how much they're likely to earn in the future. The projected profits are then discounted to a present value, taking into account the likelihood that those earnings will actually materialize.
The first step is figuring out what percentage of a company's revenues can be credited to a brand. (The brand may be almost the entire company, as with McDonald's Corp., or just a portion, as it is for Marlboro.) Based on reports from analysts at J.P. Morgan Chase, Citigroup, and Morgan Stanley, Interbrand projects five years of earnings and sales for the brand. It then deducts operating costs, taxes, and a charge for the capital employed to arrive at the intangible earnings. The company strips out intangibles such as patents and management strength to assess what portion of those earnings can be attributed to the brand.

Domain Names - Reseller's Right to Use Supplier's Mark

Domain name conflicts often arise over whether a reseller can have a legitimate interest in a URL including a supplier's trademark.
Law Wire recommends a study of the World Intellectual Property Organization's "Overview of WIPO Panel Views on Selected UDRP Questions," a reseller can be making a bona fide offering of goods and services, and thus have a legitimate interest in the domain name if the use fits certain requirements, including
the use of the site to actually sell only the supplier's goods
the site accurately disclosing the registrant’s relationship with the trademark owner,
the respondent not trying to corner the market in domain names that reflect the trademark.
Please refer to Oki Data Americas, Inc. v. ASD, Inc. D2001-0903 and (transfer denied); Experian Information Solutions, Inc. v. Credit Research, Inc. D2002-0095 (transfer ordered); DaimlerChrysler A.G. v. Donald Drummonds D2001-0160 (transfer denied with dissent); Philip Morris Incorporated v. Alex Tsypkin D2002-0946 (transfer); and Dr. Ing. h.c. F. Porsche AG v. Del Fabbro Laurent D2004-0481 (transfer denied). Cf. Motorola, Inc. v. NewGate Internet, Inc. D2000-0079 (transfer with dissenting 0pinion involving adult content).

Thursday, July 27, 2006

Dilution of Goodwill and Trademark Protection

A trademark is a distinct sign that uniquely identifies a product or service to a consumer. It also distinguishes the business and its products and services from those of competitors. At times business owners invent trademarks, which could be rooted in a language not commonly used around the world. In cases where a trademark acquires an international reputation, irrespective of the meaning the mark holds, consumers might identify any product or service using the same or a similar trademark with those of the original trademark owner. This can affect the goodwill and reputation of the original trademark owner.

These issues can fall within the ambit of passing off of goods and sometimes under the doctrine of dilution. Passing off is a common law tort which is used to enforce unregistered trademark rights. It essentially occurs when the reputation of a player in the market is misappropriated by another, which in turn affects the reputation and goodwill of the first. Dilution refers to the unauthorized use of the same mark on unrelated brands and wares, resulting in the whittling away of the distinctiveness of the trademark. While the hypothesis behind the doctrine of dilution is essentially the same all over the world, different nations have adopted different approaches to it.

In Aktiebolaget Volvo v AK Bhuva (2006 (32) PTC 682(Del)) the Delhi High Court considered these issues. The plaintiff is the registered owner of the mark VOLVO and manufactures heavy commercial vehicles, construction equipment, drive systems for marine and industrial applications and cars. AK Bhuva manufactures motors and pumps, domestic flourmills and submersible pumps. The defendant, prior to the adoption of the plaintiff's mark, used KRISHNA BRAND as its mark to establish itself. It had also filed an application for the registration of the mark VOLVO which, on opposition by the plaintiff, was withdrawn. However, an investigation conducted by the plaintiff revealed the usage of the mark VOLVO by the defendant on its products. Hence the plaintiff filed for trademark infringement.

The mark VOLVO was proved by the plaintiff to be an innovative word - although Latin in origin, it has all the trappings of an invented trademark. Moreover, the plaintiff could also substantiate long and continuous usage of the trademark with the help of documents revealing extensive geographical spread involving several countries with large volumes of sales across the globe. The court observed that the adoption of the mark by the defendant was unauthorized and showed an ulterior motive to ride on the reputation of the plaintiff's mark by attempting to pass off its goods as those of the plaintiff. Therefore, the court concluded that the adoption of the mark not only violated Section 29 of the Trademarks Act (infringement of trademarks), but also amounted to passing off and dilution.

The court also referred to the observations on the doctrine of dilution made by the court in Caterpillar Inc v Mehtab Ahmed (2002 (25) PTC 438). In this case the plaintiff was a manufacturer of heavy machinery, footwear and clothing under the marks CAT and CATERPILLAR. The defendant, a footwear manufacturer, marketed its goods under a mark very much similar to that of the plaintiff. The court held that the defendant's sole objective was to deceive the industry and the public either by clearly misrepresenting that its goods were licensed by the plaintiff or by passing off these goods as those of the plaintiff. Since the goods were identical, this had the effect of diluting the identification value of the plaintiff's mark. The court also reiterated that when dilution is accompanied by confusion as to the source, affiliation or connection of the goods, it will affect the goodwill, reputation and trade name established by the plaintiff.

Based on a similar argument, the court in the instant case granted a permanent injunction in favour of the plaintiff and issued a damages order against the defendant. In the light of these decisions, it is clear that, in addition to the threat of passing off or the occurrence of infringement, dilution is another threat that established brands and trademarks must combat.

OHIM Publishes Draft Opposition and Examination Guidelines

The EU's Office for Harmonization of the Internal Market is revising its Examination and Opposition Guidelines in response to recent changes in the Community Trademark and designs CTM Regulation brought by Council Regulation (EC) N° 422/2004 and Commission Regulations (EC) N° 1041/2005 and N° 1042/2005 available at are welcome no later than 30 September 2006 and should be sent by e-mail to
The process of formal adoption of revisions of the guidelines will be finalised in 2007. In the meantime amendments to practice that are reflected in the documents will be applied by examiners.Changes have been made in a number of parts of the Draft Opposition Guidelines.
The remaining sections of the Opposition Guidelines are not being changed.The Draft Examination Guidelines are available at Examination24_7_2006.pdf

Copyright [forever minus a day!]

So now you know why the copyright term is so long ...Clarke and another v Artprints UK and another is a Chancery Division decision of Mr Justice Lindsay, handed down last Friday but not yet available from BAILII.
This note is taken from the LexisNexis Butterworth subscription service, which supplies so much useful information.
Artprints was involved in the reproduction and distribution of art works, the second defendant being its majority shareholder. Artprints started commercially reproducing works of the artist Francis Bacon under what it said were the terms of a copyright licence. Clarke and others sued Artprints for copyright infringement, claiming that Artprints' licence was invalid because it was they who owned the copyright. On 31 July 2001 interim injunctive relief was ordered and the court gave further directions concerning the conduct of the proceedings, with particular reference to disclosure timetables. For the next five years the case crawled slowly along. After both parties agreed to vacate the first trial date in December 2002, Clarke and his colleagues complained that the second defendant failed to comply with the disclosure requirements. It took till June 2003 for the parties to sort this issue out. Further delay occurred when one of the claimants died in March 2003 and the parties agreed not to seek a re-listing of the main action, pending the outcome of probate proceedings. Clarke wrote to the defendants in April 2004, saying that probate had been granted and again asking the second defendant to comply with the disclosure order. In 9 May 2005 the defendants said that the proceedings had taken far too much time thus far and that they would be taking all steps to bring the proceedings to their conclusion - but then did nothing.
In these proceedings the defendants sought to have the 2001 injunction discharged. They submitted that Clarke and his friends had caused inexcusable and unexplainable delay to the proceedings and that they were happy just to sit back and enjoy the interim injunction.
According to the defendants, once an interim injunction was granted it was for the party benefiting from that injunction to enable the case to progress as expeditiously as possible. Since Clarke and Co. hadn't done that, the injunction should be discharged. Clarke and his colleagues disagreed: the delays were mainly caused by the defendants and the second defendant's refusal to comply with the disclosure order prevent the action being taken further. Also, some delays came from circumstances outside the parties' control, while other periods of inaction had actually been agreed.
Lindsay J dismissed the application. It was clear that the proceedings could have been brought to a final hearing earlier but, while Clarke and his colleagues had undoubtedly benefited from the terms of the injunction for five years, they had purposely delayed proceedings in order that they would continue them. It was clear that a large proportion of the delay was caused by the second defendant’s refusal to comply with the disclosure order, notwithstanding repeated requests for compliance, and that the other periods of delay had all been agreed between the parties and were not the claimants' fault. Accordingly there were no grounds upon which the order should be discharged.
There's litigation which is caused by the commission of an alleged wrong, which can't be helped. There's litigation which is caused by earlier litigation, which is highly annoying but sometimes necessary. Then there's litigation which is caused by litigants themselves, which is a by-product of dispute resolution that should be stamped out if possible by the use of firm case management with realistic time tables and dire threats as to what happens to those who, without good cause, fail to observe them.

Tuesday, July 25, 2006

Copyright - General Information [United States]

Basic information about copyright protection is available from the U.S. Copyright Office in its "Copyright Basics circular" at Other circulars from the U.S. Copyright Office are listed at noted in these brochures, copyright is secured automatically when the work is "created," or fixed in a copy for the first time. However, there are some additional advantages associated with using the proper notice copyright discussed at For example, proper copyright notice informs the public that the work is protected by copyright and identifies the copyright owner. Furthermore, in the event that a work is infringed, if the work carries a proper notice, the court will not give any weight to a defendant's interposition of an innocent infringement defense-that is, that he or she did not realize that the work was protected. An innocent infringement defense may result in a reduction in damages that the copyright owner would otherwise receive.Several additional advantages are also available for copyright owners who take the further step of registering their works as discussed at, including
If registration is made within 3 months after publication of the work or prior to an infringement of the work, statutory damages and attorney's fees will be available to the copyright owner in court actions. Otherwise, only an award of actual damages and profits is available to the copyright owner. These latter type damages can be difficult to prove.
Registration allows the owner of the copyright to record the registration with the U. S. Customs Service for protection against the importation of infringing copies. For additional information, go to the U.S. Customs and Border Protection website at
Although there is no such thing as an "international copyright" that will automatically protect an author's writings throughout the world, most countries offer protection to foreign works under certain conditions that have been greatly simplified by certain international copyright treaties and conventions. Further general information about copyright notice is available at while general information copyright registration is available at With regard to copyright notice, the Copyright Office has issued regulations concerning the form and position of the copyright notice in the Volume 37 of the Code of Federal Regulations at Section 201.20. Here are some of the highlights that may be of interest to many emploees and employes.Form of Copyright Notice for Visually Perceptible CopiesThe form of the copyright notice used for "visually perceptible" copies - that is, those that can be seen or read, either directly (such as books) or with the aid of a machine (such as films)-is different from the form used for phonorecords of sound recordings (such as compact disks or cassettes). The notice for visually perceptible copies such as engineering drawings, marketing literature, packaging, inserts, etc., should contain all the following three elements:The symbol © (the letter C in a circle), or the word "Copyright," or the abbreviation "Copr.";The year of first publication of the work. In the case of compilations or derivative works incorporating previously published material, the year date of first publication of the compilation or derivative work is sufficient. The year date may be omitted where a pictorial, graphic, or sculptural work, with accompanying textual matter, if any, is reproduced in or on greeting cards, postcards, stationery, jewelry, dolls, toys, or any useful article; and The name of the owner of copyright in the work, or an abbreviation by which the name can be recognized, or a generally known alternative designation of the owner:
Example: © 2006 Owner Name
The copyright notice has never been required on unpublished works. However, because the dividing line between a preliminary distribution and actual publication is sometimes difficult to determine, the copyright owner may wish to place a copyright notice on copies or phonorecords that leave his or her control to indicate that rights are claimed. An appropriate notice for an unpublished work might be:
Example: Unpublished Work © 2006 Owner Name
For confidential or proprietary materials, a confidentiality notice may also be provided, such as
Example: Confidential Unpublished Work © 2006 Owner Name
Position of NoticeThe copyright notice should be affixed to copies in such a way as to "give reasonable notice of the claim of copyright." The three elements of the notice should ordinarily appear together on the copies. For works published in book form, such as marketing brochures, the notice should appear on either
Title page,
Page immediately following the title page,
Either side of the front or back cover, or
First or last page of the main body of the work
For single-leaf works, such as many engineering drawings, the notice may appear on the front or back. In fact, most large organizations include the copyright notice with a confidentiality warning in the title block of their internal drawings.
Registration of an original work is a fairly simple and inexpensive procedure which we can handle for our clients.
To register a work, the owner or their representative must send the following three elements in the same envelope or package to the Library of Congress, Copyright Office in Washington DC:
A properly completed application form from,
A nonrefundable filing fee of $30 for each application, and
At least one nonreturnable deposit of the work being registered.
Useful Articles Not Protectable by Copyright
As discussed at designs for useful articles, such as vehicular bodies, wearing apparel, household appliances, and the like are not protected by copyright. However, the design of a useful article is subject to copyright protection to the degree that its pictorial, graphic, or sculptural features can be identified as existing independently of the utilitarian object in which they are embodied.
Keep in mind the line between uncopyrightable works of industrial design and copyrightable works of applied art is not always clear. A two-dimensional painting, drawing, or other graphic work is still identifiable when it is printed on or applied to useful articles such as textile fabrics, wallpaper, containers, and the like. On the other hand, although the shape of an industrial product may be aesthetically satisfying and valuable, the copyright law does not afford it protection. The designs of some useful objects may be entitled to protection under design patent law if the design is new and unobvious.
Fair Use
One of the rights accorded to the owner of copyright is the right to reproduce or to authorize others to reproduce the work in copies or phonorecords. However, this right is subject to certain limitations found in sections 107 through 118 of the copyright act (title 17, U.S. Code). One of the more important limitations is the doctrine of "fair use." This doctrine has been codified in section 107 of the copyright law which contains a list of the various purposes for which the reproduction of a particular work may be considered "fair," such as criticism, comment, news reporting, teaching, scholarship, and research.
Section 107 also sets out four factors to be considered in determining whether or not a particular use is fair:
the purpose and character of the use, including whether such use is of commercial nature or is for nonprofit educational purposes;
the nature of the copyrighted work;
amount and substantiality of the portion used in relation to the copyrighted work as a whole; and
the effect of the use upon the potential market for or value of the copyrighted work.
The distinction between "fair use" and infringement may be unclear and not easily defined. There is no specific number of words, lines, or notes that may safely be taken without permission. Acknowledging the source of the copyrighted material does not substitute for obtaining permission.
Works Made for Hire
Although the general rule is that the person who creates a work is the author and owner of that work, there is an exception to that principle: the copyright law defines a category of works called “works made for hire.” If a work is “made for hire,” the employer, and not the employee, is considered the author. The employer may be a firm, an organization, or an individual.
If a work is created by an employee, generally the work would be considered a work made for hire. However, if a work is created by an independent contractor (that is, someone who is not an employee under the general common law of agency), then the work is a specially ordered or commissioned work. Such a work can be a work made for hire only if both of the following conditions are met: (1) it comes within one of the nine categories of works listed in part 2 of the definition and (2) there is a written agreement between the parties specifying that the work is a work made for hire.
It is therefore important to have written work for hire agreements from all contractors performing creative work for your organization.

Trademarks - General Information [United States]

Basic Facts About Trademarks" is available from the U.S. Patent and Trademark Office at with answers to "Trademark Frequently Asked Questions" at The following is a general discussion of Trademark Law and the Federal trademark registration process. This discussion is not exhaustive. For example, there are special circumstances and exceptions to general rules that are not discussed below. It is also subject to change in the laws, fees, and estimated costs.
What is a Trademark?
A TRADEMARK is either a word, phrase, symbol or design, or combination of words, phrases, symbols or designs, which identifies and distinguishes the source of the goods or services of one party from those of others. A service mark is the same as a trademark except that it identifies and distinguishes the source of a service rather than a product. The terms "trademark" and "mark" are used to refer to both trademarks and service marks, whether they are word marks or other types of marks. Normally, a mark for goods appears on the product or on its packaging, while a service mark appears in advertising for the services.A trademark is different from a copyright or a patent. A copyright protects an original artistic or literary work; a patent protects an invention.Establishing Trademark RightsTrademark rights arise from either (1) actual use of the mark in connection with the offering or sale of goods or services in commerce, or (2) the filing of a proper application to register a mark in the U.S. Patent and Trademark Office (U.S. PTO, or PTO) stating that the applicant has a bona fide intention to use the mark in commerce regulated by the U.S. Congress. (See below, under "Types of Applications," for a discussion of what is meant by the terms commerce and use in commerce.) Federal registration is not required to establish rights in a mark, nor is it required to begin use of a mark. However, federal registration can secure benefits beyond the rights acquired by merely using a mark. For example, the owner of a federal registration is presumed to be the owner of the mark for the goods and services specified in the registration, and to be entitled to use the mark nationwide.There are two related but distinct types of rights in a mark: the right to register and the right to use. Generally, the first party who either uses a mark in commerce or files an application in the PTO has the ultimate right to register that mark. The PTO's authority is limited to determining the right to register. The right to use a mark can be more complicated to determine. This is particularly true when two parties have begun use of the same or similar marks without knowledge of one another and neither has a federal registration. Only a court can render a decision about the right to use, such as issuing an injunction or awarding damages for infringement. It should be noted that a federal registration can provide significant advantages to a party involved in a court proceeding. The PTO cannot provide advice concerning rights in a mark. Only a private attorney can provide such advice.Unlike copyrights or patents, trademark rights can last indefinitely if the owner continues to use the mark to identify its goods or services. The term of a federal trademark registration is 10 years, with 10-year renewal terms. However, between the fifth and sixth year after the date of initial registration, the registrant must file an affidavit setting forth certain information to keep the registration alive. If no affidavit is filed, the registration is canceled.Use of the "TM," "SM" and "®" SymbolsAnyone who claims rights in a mark may use the TM (trademark) or SM (service mark) designation with the mark to alert the public to the claim. It is not necessary to have a registration, or even a pending application, to use these designations. The claim may or may not be valid. The registration symbol, ®, may only be used when the mark is formally registered in the U.S. PTO as discussed in more detail below. It is improper to use this latter symbol at any point before the registration issues.Searches for Conflicting MarksAn applicant is not required to conduct a search for conflicting marks prior to applying with the U.S. PTO. It is generally advisable, however, to conduct a clearance search for conflicting marks not only prior to applying for registration with the U.S. PTO, but before adopting a mark in commerce. Such a search can not only provide a basis for predicting the potential for successfully obtaining a registration, but also predicting the potential for infringement of the trademark rights of another.Typically two different levels of searching may be conducted. On one level, a search of registrations issued by the U.S. PTO and applications pending before the U.S. PTO along with state registrations (since each state provides a parallel registration procedure for obtaining a registration for that particular state) may be conducted at a cost of approximately $500.00. Such a search has drawbacks in that it does not include a search of common law trademark uses where the party using the mark has not sought registration. The U.S. Trademark Laws provide superior rights to the first party to adopt and use a mark and not the first party to seek or obtain registration. Thus, common law rights are also important.A second level of searching includes not only the databases of the U.S. Patent and Trademark Office and each state trademark office, but also an attempt to search various directories which might reveal common law uses of marks by third parties. Ordinarily such a search is conducted through a third party service provider that maintains a proprietary common law trademark database. This level of searching typically costs about $1,000.00 to $1,200.00. We can discuss with you which level of searching may be more appropriate for your situation.Benefits of Federal Trademark RegistrationAlthough trademark registration is not required in the U.S. it does provide several advantages, including
constructive notice to the public of the registrant's claim of ownership of the mark;
a legal presumption of the registrant's ownership of the mark and the registrant's exclusive right to use the mark nationwide on or in connection with the goods and/or services listed in the registration;
the ability to bring an action concerning the mark in federal court;
the use of the U.S registration as a basis to obtain registration in foreign countries; and
the ability to file the U.S. registration with the U.S. Customs Service to prevent importation of infringing foreign goods.
Types and Basis of Applications for Federal Registration
An applicant may apply for federal registration in three principal ways. (1) An applicant who has already commenced using a mark in commerce may file based on that use (a "use" application). (2) An applicant who has not yet used the mark may apply based on a bona fide intention to use the mark in commerce (an "intent-to-use" application). For the purpose of obtaining federal registration, commerce means all commerce which may lawfully be regulated by the U.S. Congress, for example, interstate commerce or commerce between the U.S. and another country. The use in commerce must be a bona fide use in the ordinary course of trade, and not made merely to reserve a right in a mark. Use of a mark in promotion or advertising before the product or service is actually provided under the mark on a normal commercial scale does not qualify as use in commerce. Use of a mark in purely local commerce within a state does not qualify as "use in commerce." If an applicant files based on a bona fide intention to use in commerce, the applicant will have to use the mark in commerce and submit an allegation of use to the PTO before the PTO will register the mark. (3) Additionally, under certain international agreements, an applicant from outside the United States may file in the United States based on an application or registration in another country.
A United States registration provides protection only in the United States and its territories. If the owner of a mark wishes to protect a mark in other countries, the owner must seek protection in each country separately under the relevant laws.
Purely local use within a state may qualify for registration of the mark with the trademark office of the state in which use is made. Each state has its own trademark office that operates separately from the U.S. PTO.
Who May File an Application?
The application must be filed in the name of the owner of the mark; usually an individual, corporation or partnership. The owner of a mark controls the nature and quality of the goods or services identified by the mark.
Laws & Rules Governing Federal Registration
The federal registration of trademarks is governed by the Trademark Act of 1946, as amended, 15 U.S.C. §1051 et seq.
Other Types of Applications
In addition to trademarks and service marks, the Trademark Act provides for federal registration of other types of marks, such as certification marks, collective trademarks and service marks, and collective membership marks. These types of marks are relatively rare.
Filing Date
The U.S. PTO is responsible for the federal registration of trademarks. When an application is received, the PTO reviews it to determine whether it meets the minimum requirements for receiving a filing date. If the application meets the filing requirements, the U.S. PTO assigns it a serial number and sends the applicant a receipt about two months after filing. If the minimum requirements are not met, the entire mailing, including the filing fee, is returned to the applicant.
Application Filing Requirements
To receive a filing date, the applicant must provide all of the following:
A written application form;
A drawing of the mark on a separate piece of paper;
The required filing fee;
If the application is filed based upon prior use of the mark in commerce, three specimens for each class of goods or services. The specimens must show actual use of the mark with the goods or services. The specimens may be identical or they may be examples of three different uses showing the same mark; and
An identification of the goods and/or services to be marketed in connection with the mark.
Identification of the Goods and/or Services
A mark can only be registered for specific goods and services. The goods and services listed will establish the scope of the applicant's rights in the relevant mark. The goods and services specified in the application must be the applicant's actual "goods in trade" or the actual services the applicant renders for the benefit of others. Use language that would be readily understandable to the general public. For example, if the applicant uses or intends to use the mark to identify "candy," "word processors," "baseballs and baseball bats," "travel magazines," "dry cleaning services" or "restaurant services" the identification should clearly and concisely list each such item. If the applicant uses indefinite terms, such as "accessories," "components," "devices," "equipment," "food," "materials," "parts," "systems," "products," or the like, then those words must be followed by the word "namely" and the goods or services listed by their common commercial name(s).
The applicant must be very careful when identifying the goods and services. Because the filing of an application establishes certain presumptions of rights as of the filing date, the application may not be amended later to add any products or services not within the scope of the identification. For example, the identification of "clothing" could be amended to "shirts and jackets," which narrows the scope, but could not be amended to "retail clothing store services," which would change the scope. Similarly, "physical therapy services" could not be changed to "medical services" because this would broaden the scope of the identification. Also, if the identification includes a trade channel limitation, deleting that limitation would broaden the scope of the identification.
The identification of goods and services must not describe the mode of use of the mark, such as on labels, stationery, menus, signs, containers or in advertising. This information is, instead, discussed in the "method-of-use clause," of the trademark application. For example, in the identification of goods and services, the term "advertising" usually is intended to identify a service rendered by advertising agencies. Moreover, "labels," "menus," "signs" and "containers" are specific goods. If the applicant identifies these goods or services by mistake, the applicant may not amend the identification to the actual goods or services of the applicant. Thus, if the identification indicates "menus," it could not be amended to "restaurant services." Similarly, if the goods are identified as "containers or labels for jam," the identification could not be amended to "jam."
NOTE: If the identification does not identify any recognizable goods or services, the application will be denied a filing date and returned to the applicant. For example, if the applicant specifies the mark itself or wording such as "company name," "corporate name," or "company logo," and nothing else, the application will be denied a filing date and returned to the applicant. If the applicant identifies the goods and services too broadly as, for example, "advertising and business," "miscellaneous," "miscellaneous goods and services," or just "products," or "services," the application will also be denied a filing date and returned to the applicant.
About six months after filing, an examining attorney at the PTO reviews the application and determines whether the mark may be registered. In reviewing the application, the examining attorney (at the PTO) conducts a search of issued U.S. trademark registrations and pending applications for a conflicting mark. The application fee, which covers processing and search costs, will not be refunded even if a conflict is found and the mark cannot be registered.
To determine whether there is a conflict between two marks, the PTO determines whether there would be likelihood of confusion, that is, whether relevant consumers would be likely to associate the goods or services of one party with those of the other party as a result of the use of the marks at issue by both parties. The principal factors to be considered in reaching this decision are the similarity of the marks (comparing their sound, meaning and appearance) and the commercial relationship between the goods and services identified by the marks. To find a conflict, the marks need not be identical, and the goods and services do not have to be the same.If the examining attorney initially refuses to allow the mark to be registered, the examining attorney will issue a letter listing any grounds for refusal and any corrections required in the application. The examining attorney may also contact the applicant by telephone if only minor corrections are required. The applicant must respond to any objections within six months of the mailing date of the letter, or the application will be abandoned. If the applicant's response does not overcome all objections, the examining attorney will issue a final refusal. The applicant may then appeal to the Trademark Trial and Appeal Board, an administrative tribunal within the PTO.
A common ground for refusal is likelihood of confusion between the applicant's mark and a registered mark. Marks which are merely descriptive in relation to the applicant's goods or services, or a feature of the goods or services, may also be refused. Marks consisting of geographic terms or surnames may also be refused. Merely descriptive marks and primarily merely geographic terms may be registerable upon a showing that they have acquired distinctiveness in connection with the applicant's goods and/or services. Marks may be refused for other reasons as well. And often the examining attorney will request that the applicant revise the identification of the goods and/or services listed in the application on which the applicant claims to be using his mark or intends to use his mark in the future.
Publication for Opposition
If there are no objections, or if the applicant overcomes all grounds for refusal, the examining attorney will approve the mark for publication in the Official Gazette, a weekly publication of the PTO. The PTO will send a NOTICE OF PUBLICATION to the applicant indicating the date of publication. In the case of two or more applications for similar marks, the PTO will publish the application with the earliest effective filing date first. Any party who believes it may be damaged by the registration of the mark has 30 days from the date of publication to file an opposition to registration. An opposition is similar to a formal proceeding in the federal courts, but is held before the Trademark Trial and Appeal Board. If no opposition is filed, the application enters the next stage of the registration process.
Issuance of Certificate of Registration or Notice of Allowance
If the application was based upon the actual use of the mark in commerce prior to approval for publication, the PTO will register the mark and issue a registration certificate about 12 weeks after the date the mark was published, if no opposition is timely filed.
If, instead, the mark was published based upon the applicant's statement of having a bona fide intention to use the mark in commerce, the PTO will issue a NOTICE OF ALLOWANCE about 12 weeks after the date the mark was published, again provided no opposition was filed. The applicant then has six months from the date of the NOTICE OF ALLOWANCE to either (1) use the mark in commerce and submit a STATEMENT OF USE, or (2) request a six-month EXTENSION OF TIME TO FILE A STATEMENT OF USE (see forms and instructions in this booklet). The applicant may request additional extensions of time only as noted in the instructions on the back of the extension form. If the STATEMENT OF USE is filed and approved, the PTO will then issue the registration certificate.
The costs for preparing and filing an application to register a trademark with the U.S. Patent and Trademark Office (U.S. PTO) typically run no more than $1,000.00, including our fees, docketing fees, the U.S. PTO application filing fee of $335.00 for one class of goods or services listed in the application, and incidental expenses such as photocopying, postage, and the like. If more than one class of goods or services are included in the application an additional filing fee of $335.00 per additional class will be required. In addition to the application filing fee, applicants filing based on a bona fide intention to use a mark in commerce must submit a governmental fee of $100.00 for each class of goods or services in the application when filing any of the following:
Additional fees and costs are incurred during the trademark registration process. For example, after the application has been filed there ordinarily will be fees and expenses incurred in reporting actions taken by the U.S. Patent and Trademark Office on the application, as well as responding to any action taken by the U.S. PTO (such as the issuance of a letter presenting grounds for refusal which allows a six month period for a response). Additionally, there will be fees and expenses incurred in preparing and filing an Amendment to Allege Use, a Statement of Use, or a Request for Extension of Time to file a Statement of Use in addition to the government filing fees mentioned above.
If the applicant has already used the mark in commerce and files based on this use in commerce, then the applicant must submit three specimens per class showing use of the mark in commerce with the application. If, instead, the application is based on a bona fide intention to use mark in commerce, the applicant must submit three specimens per class at the time the applicant files either an AMENDMENT TO ALLEGE USE or a STATEMENT OF USE.
The specimens must be actual samples of how the mark is being used in commerce. The specimens may be identical or they may be examples of three different uses showing the same mark.
If the mark is used on goods, examples of acceptable specimens are tags or labels which are attached to the goods, containers for the goods, displays associated with the goods, or photographs of the goods showing use of the mark on the goods themselves. If it is impractical to send an actual specimen because of its size, photographs or other acceptable reproductions that show the mark on the goods, or packaging for the goods, must be furnished. Invoices, announcements, order forms, bills of lading, leaflets, brochures, catalogs, publicity releases, letterhead, and business cards generally are not acceptable specimens for goods.If the mark is used for services, examples of acceptable specimens are signs, brochures about the services, advertisements for the services, business cards or stationery showing the mark in connection with the services, or photographs which show the mark either as it is used in the rendering or advertising of the services. In the case of a service mark, the specimens must either show the mark and include some clear reference to the type of services rendered under the mark in some form of advertising, or show the mark as it is used in the rendering of the service, for example on a store front or the side of a delivery or service truck.
Additional Requirements For Intent-To-Use Applications
An applicant who files its application based on having a bona fide intention to use a mark in commerce must make use of the mark in commerce before the mark can register. After use in commerce begins, the applicant must submit:
three specimens evidencing use as discussed above;
a fee of $100.00 per class of goods or services in the application; and
either (1) an AMENDMENT TO ALLEGE USE if the application has not yet been approved for publication, or (2) a STATEMENT OF USE if the mark has been published and the PTO has issued a NOTICE OF ALLOWANCE.
Information Needed
One additional point is of note that relates to the ability to claim priority based on a prior filed U.S. application. The U.S. has entered into treaties with most foreign countries (including the Community Trademark Office) that provide that an application filed outside of the U.S. within six (6) months of a corresponding U.S. Patent and Trademark Office, can be considered as if it had been filed on the same date as the U.S. application. This ability to claim priority on a U.S. application allows for the possibility that a U.S. application may be filed first and subsequently consideration may be given to the filing of any foreign applications. Where there is an interest in filing foreign applications, we recommend that the foreign applications be filed within six months of the date of the U.S. application filing date in order to make a claim of priority on the U.S. application filing date.

Sunday, July 23, 2006

The Cost of Patent Management

The authors conclude that managing acquisition and maintenance costs of patents "has to be done without unduly increasing risks or lowering the quality of patent grants or monitoring the granted patents to manage costs during the life of a patent. . . . Patents assets are just one part of an overall IP management process aimed at leveraging and profiting from IP assets."They also provide numerous links to other materials on these topics, including
“Cost of patenting” at
Report of the study entitled, “Study on the Cost of Patenting” carried out by the Roland Berger Market Research for the EPO at
“Seven Ways to Control the Cost and Quality of Your Patent Docket” at
“Strategies to Defer Costs of Patenting—Use Provisional, 'PCT' Applications” by R. Lewis Gable and Mark Montague at
“Culling Your Patent Portfolio” on pages 16 to 18 at
“Practical IP Issues in Developing a Business Plan” at
“Integrating the intellectual property value chain” by Bill Barrett & Dave Crawford at

Moral Rights - a primer

In "Moral Rights" from PLI’s Treatise "All About Rights for Visual Artists," Ralph E. Lerner and and Judith Bresler discuss the
Right of Disclosure (Droit de Divulgation)
Right to Withdraw from Publication or to Make Modifications (Droit de Retrait ou de Repentir)
Right of Authorship (Droit à la Paternité) and
Right of Integrity (Droit au Respect de l’Oeuvre)
The authors trace the beginnings of these "Droit Moral" to the philosophy of individualism that accompanied the French Revolution:
However, the central debate over the nature of artists’ rights occurred inGermany near the close of the nineteenth century: an intellectual work hadeither a dualist Doppelrecht—that is, an incorporeal property giving rise topersonal rights of either a patrimonial or a moral nature—or a monist nature,whereby both the personal and the patrimonial rights were inseparable parts of asingle Persönlichkeitsrecht. The debate over those two views was resolved in thefirst half of the twentieth century. The dualist view prevailed in France while the monist view predominated in Germany.
Moral Rights were included in included in Article 6bis of the Berne Convention for the Protection of Literary and Artistic Works in 1928 which states:
Independently of the author's economic rights, and even after the transfer ofthe said rights, the author shall have the right to claim authorship of the workand to object to any distortion, mutilation or other modification of, or otherderogatory action in relation to, the said work, which would be prejudicial tohis honor or reputation. While the United States became a signatory to that convention in 1988, it still does not completely recognize moral rights as part of copyright law.

[The] Patent Matrix

Law Wire brings the attention of readers to Michael Kaminski's Spring 2005 paper on "Measuring the Patenting Success of Companies: Metrics and Measurement for Patent Departments" where he "describes 27 possible metrics and measurements that a company can choose from to describe its patent activities:"

Number of Patents Issued
Number of Patent Applications Filed
Number of Invention Disclosures Received
Comparing the Number of Patents Obtained to the Number of Patents Issued to Your Competitors
Illustrating How the Patents or Applications Cover Products or Technology
Protection of Market Exclusivity
Patent Use Indicators
Ratio of Sales to Patents
Market Impact of Patented Innovations
Added Product Value From a Patented Feature
Volume of Sales That Is Patent Protected
Effects of Expiring Patents on Company Performance
Money Saved by Abandoning Patent Protection for Products Removed from a Product Line or No Longer Being Developed for Introduction
Money Savings From Abandoning Low-Quality Patents
Amount of Revenue Generated Through Licensing
Non-Monetary Value From Licenses
"Technology Cycle Time" of Cited Patents
"Technology Strength" Measurement
Calculating Value Using Patent Citations
Value of a Patent or Groups of Patents Calculated Through a Discounted Cash Flow Analysis
Value of Intangible Assets
Rate of Return on Intangible Assets"
It is useful to remember the five fundamental roles of patents in facilitating business success," writes Mr. Kaminski. "Such roles should be reflected in whatever metrics and measurements are used," including:
Patents Protect Core Technologies From Competitor
Patents Attract Investment
Patents Prevent Competitors From Inventing Around Critical Inventions
Patents Can Create a Tool to Improve the Firm's Negotiating Strategy
Patents Can Be Used as Offensive Weapons in Market Competition