Intellectual Property FAQs

(1)  I am being sued or have received a cease and desist letter. What do I do?

It is important to discuss matters with experienced IP counsel. An experienced IP attorney can find out exactly what IP rights the other side truly holds and can come with up with strategies for your specific situation. In addition, you will want to speak with your insurance carrier to see the range of coverage, which will affect the strategies you will likely pursue. 

 

Trademarks FAQs

(1)  How do I know if a mark is already taken?

Although not a requirement, an applicant may choose to conduct either a preliminary scan or a full U.S. availability search for conflicting marks prior to applying with the USPTO.


(2)  Is a trademark search necessary?

A trademark search is recommended to identify potential prior users, so you will not have to incur the time and expense associated with changing a name you have invested time and money in at a later date and to avoid potential liability from a claim of trademark infringement if your mark is the same as or confusingly similar to another mark.

In addition to having a proper search conducted, it is also wise to obtain a trademark search opinion from a competent trademark attorney. Such an opinion can be used as a defense in a trademark infringement suit, which can potentially shield the subsequent user of a registered mark from liability for "willful infringement" as opposed to "innocent infringement." A finding of willful infringement may result in treble damages (that is three times the awarded amount of actual damages) and an award of attorney fees and costs.


(3)  Do I have to begin using a trademark before I can apply for federal registration?

No. 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).  The applicant will have to lawfully use the mark in commerce and submit an allegation of use to the Trademark Office before the Trademark Office will register the mark; and (3) 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.


(4)  I live outside the United States; can I file for federal registration

Yes. Applicants not living in the United States must designate in writing the name and address of a domestic representative – i.e., a person residing in the United States "upon whom notices of process may be served for proceedings affecting the mark." This person will receive all communications from the USPTO unless the applicant is represented by an attorney in the United States.


(5)  I went online to buy the domain for my name and it was already taken. How can somebody else own my personal name? Do I have any recourse if my name is well known

Someone else can legally own the domain name for your personal name or your company's name. You may have recourse if your name is well known, especially in California which has expanded rights for likenesses and names of well-known persons. You also may be able to get the domain name transferred to you by negotiating with the domain owner through your attorney.


(6)  What are trademark licensing agreements?

Trademark licensing agreements are one of the most common IP transactions in the fashion industry. Often a licensor (owner of a trademark) will contract with a licensee (another company) to manufacture and market products using the licensor’s trademark. This benefits a licensor by increasing profits and expanding its brand into new markets, while giving the licensee a pre-existing customer base.

There are many important terms to a licensing agreement, including products covered, exclusivity, specific trademarks, duration and geographic region, compensation, marketing and sales requirements, and quality control. It is important to speak with an experienced IP attorney to find out how to protect your assets.


(7)  Someone is selling fake versions of my product. They claim they are within their rights because they have made minor changes to the brand name and look of the product. Do I have a case?

In this scenario, you may raise one or more claims including a claim of trademark infringement. A basis of trademark law is that a mark is used to identify the source of the goods and if someone is using a trademark similar to yours, such that a consumer would be confused as to the source of the goods, you have a cause of action. This can apply to a brand name or a logo or design. For instance, someone selling "Rollex" watches will most likely be considered by the courts to be infringing.  If your trademark is deemed to be "famous" you may have a case for dilution of your trademark regardless of whether there is any likelihood for confusion.


(8)  Someone is infringing my trademark. Is there any danger if I ignore them?

There are several reasons to immediately seek legal counsel regarding infringers. If you wait too long to sue, you may lose your right to sue because your delay will be seen as a contributing factor in increasing the amount of harm. Courts may also find that you abandoned your trademark by not enforcing its use. Delay can also harm your brand by allowing an inferior product damage the reputation of your trademark and to compete with your sales.


(9)  Will my U.S. trademark registration protect me in other countries?

No. Trademark protection is region specific. For each country you wish to enforce your trademark, you will need to apply for a trademark under their laws.


(10)  Is it illegal for others to import items into the U.S. with my trademark without my consent?

Yes, it is illegal. Customs will protect trademarks registered in the United States. To obtain protection, a trademark owner must register their trademark with the Customs and Border Protection. Customs may also protect against importation of validly trademarked goods if they were not meant for sale in the United States.

The exception to this is that it is legal for individual users to bring products with your trademark into the United States for their own personal use.


(11)  My company never formally trademarked our name, but we’ve been using it for 50 years and everybody knows us by it. Now somebody else trademarked it and is using our reputation to build his business. Do we have any recourse or are we out of luck?

You have acquired rights in the geographic area that your trademark has been used in. For instance, if you've operated David’s Designs in the Los Angeles area, you may be able to prevent someone else from opening a David’s Designs in Hollywood, but not a David’s Designs in New York City. It would be a good idea to file a federal trademark showing the date of your first use. One possibility may be an agreement between the two parties where you cannot expand your business outside of the geographic area that you are in and they agree not to infringe within that area.

 

Copyrights FAQs

(1)  Why should I register my copyright?

There are three (3) key reasons why you should get a copyright registration:

  1. to establish a public record;
  2. to be able to file an infringement lawsuit in federal court; and
  3. to simplify enforcing your copyright and obtaining higher damages.

 

Patents FAQs

(1)  I have a patent on something, and I know somebody else is selling it – what now?

If you find that your patent is being infringed upon, we recommend that you contact a reputable intellectual property attorney immediately. The attorney will typically send out a cease and desist letter asking the infringer to stop selling the product or face legal consequences. He may also need to compare your patent to the infringing device to determine if it does in fact infringe.


(2)  What if the infringer is in a foreign country – what laws apply

Even if the infringer is in a foreign country, the laws of the United States apply if the item is being sold in the United States, such as if it is sold to U.S. customers over the Internet. U.S. sales create "minimum contacts" which allow the United States to exercise jurisdiction over the foreign infringer. If the item which infringes is only being sold in the foreign country, then the laws of that country would apply. A U.S. patent will only protect your rights in the United States. Alternatively, to protect your foreign rights, you could file a Patent Cooperation Treaty ("PCT") application, followed by a "national phase" in designated foreign countries.


(3)  My company is expanding and selling our product internationally. Does my U.S. patent protect our rights abroad?

No. You have one year from the time you filed the U.S. utility application to file a PCT application which would generally cover the foreign countries that are members of the World Intellectual Property Organization ("WIPO"). You then have between 20-30 months, depending on the country, to decide if you want to further protect your rights in certain countries by filing individual applications in those countries.  This timeline may be shorter for applications devoted to ornamental features.


(4)  Should I first get a patent search?

Yes. This is almost always advisable before preparing a utility patent.  How broadly you can claim your invention largely depends how much room there is in the field of the invention in light of all of the prior art that proceeded your invention.  I therefore advise my clients to first have me commission a patent availability search. 

Additionally, a patent availability search will give you a wealth of information of how others have attempted to solve the problem that you solved with your invention.  It will also allow me to form a preliminary opinion as to whether you might encounter any allegation of patent infringement if you were to market or sell your new product or system.


(5)  Should I first get a patent clearance search?

You should almost always obtain a patent clearance search before placing a product (or process or method) on the market.  A patent clearance search will attempt to identify any active patents whose patent claims might prohibit your product, process, or method. 

Indeed, clearing your product before a market launch is arguably more important to pursuing your own patent rights. A patent clearance search and report form an important part of your due diligence.  If, God forbid, you are accused of infringement in the future, being able to point to a clearance search and opinion of counsel would be priceless – and any evidence that you did not seek such an opinion could in fact be used against you to suggest that actions were willful.


(6)  What is the difference between a utility patent and a design patent?

A utility patent protects the idea or function of an invention.  In contrast, a design patent protects the overall ornamental appearance of an innovative design of a product.  The utility patent is, generally speaking, what most people think of as a patent, and a design patent instead affords its owner rights that can often fill an important gap in and around his or her trade dress rights and copyrights in a commercial product. 


(7)  Should I apply for a design patent?

Design patents are growing in prominence and effect across many fields of commercial goods.  A design patent, wisely drafted, can be a very effective way to protect an inventor’s innovation – not just the ornamental design itself.  That is, carefully drafted, a design patent can be very difficult for a competitor to design around, possibly leaving the competitor with no real way to put a competing product on the market.

 

Trade Secrets FAQs

(1)  Can multiple people have trade secret rights to the same information?

Yes, two (or more) individuals or entities can claim rights to the same trade secret on the same technology if both independently developed that technology and both keep it a secret, as long as the technology is not "generally known.”

 

(2)  What is the difference between trade secret protection and patent protection?

Both trde secrets and patents are forms of IP that can be used to protect innovation.  Although the overall subject matter that can be protected by trade secrets is broader than that which can be protected by patents. Trade secret protection is available for both technical information and information that does not relate to technical innovations. Non-technical information for which trade secret protection can exist includes: business and marketing plans and customer lists. Patent protection is generally available for technical innovations, including a new and useful process, machine, manufacture or composition of matter. Software and software-implemented business methods have the potential of being protected by both patents and trade secrets.

Another significant difference is that patent protection requires the protected information become available to the public (through the publication of the patent application and/or patent), However, because patents and patent applications are made public, a third party is barred from duplicating and using the invention until the term of the patent is expired.   Additionally, unlike trade secrets, patents can be enforced against someone who independently develops or "reverse engineers" an invention.

A trade secret has its own advantages. One significant advantage is that the term of protection for a trade secret has the potential to last forever - as long as the invention is kept a secret - whereas patents are only protected for a limited number of years (20 years from filing). Also, trade secrets can be less expensive to protect and to enforce.

In sum, the choice between patent protection and trade secret protection requires careful consideration of several factors. In particular, it is important to consider the nature of the subject matter being protected. Questions relevant to this decision include: Can it be independently developed? Can it be reverse engineered? Can it be maintained as a secret?  How long will the subject matter have market value? Does the market value support investment in patent protection/enforcement?


(3)  How long does trade secret protection last?

Contrary to other types of IP, trade secrets are protected by non-disclosure; the information must be kept confidential.  Thus, an advantage of trade secrets is that they can be protected for an unlimited amount of time.  However, trade secrets also have their disadvantages over other forms of IP protection. Unlike patents and copyrights, which grant a monopoly for a fixed period of time, there is no guaranteed monopoly for trade secrets.


(4)  Can I sell or license my trade secrets?

Yes. As long as all parties maintain the secrecy of the invention, trade secrets can be sold or licensed. You may wish to consult an IP lawyer for guidance in writing the agreements in licensing or selling any trade secrets.

 

(5)  How do I protect my trade secrets?

No special registration of government filing is necessary to create trade secrets.  The critical requirement for trade secret protection lies in maintaining the secret.  Under the Uniform Trade Secret Act (UTSA), information must meet the following three basic criteria to qualify as a trade secret:  1.) the information must not be generally known or readily ascertainable through proper means; 2.) the information must have “independent economical value due to its secrecy”; and 3.) the trade secret holder must use “reasonable measures under the circumstances” to protect the secrecy of the information.

“Reasonable measures” may include:

  1. Have employees, contractors and third parties sign non-disclosure, confidentiality and/or non-compete agreements.
  2. Stamp secret documents “confidential” or “trade secret”.
  3. Enforce physical security. Put up "No Trespassing" signs and put locks on doors and file cabinets.
  4. Use employee and visitor identification badges to control access to your business.
  5. Establish rules requiring people to sign sensitive documents in and out.
  6. Set up passwords. Use them to access computers, copiers, fax machines and other machines that could be used to copy or transmit secrets.
  7. When employees leave, take measures to ensure that secrets don't leave with them.
  8. Collect sensitive materials from the offices of terminated employees before allowing them to return to their desks. And before they go, remind them of the nondisclosure documents they signed and the stiff financial penalties if they are breached.
  9. As you may find it necessary to take additional steps in specific areas, or with respect to specific kinds of information to limit access to a “need to know” basis, you may wish to consult a lawyer in your area for guidance into the types of measures and agreements outlined above.