Intellectual Property & Business Law

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Your intellectual property is a crucial asset for your business. Whether it is your branding, your content, your ideas or your trade secrets, your intellectual property needs proper handling and protection. We have many years of experience with building and protecting trademarks, registering copyrights and handling contracts, litigation and other intellectual property matters, and forming corporations and limited liability companies. This website will introduce you to our services and acquaint you with our approach.

Trademark registration and maintenance is only one area in which we have significant experience. We also appear on behalf of our clients before the United States Patent and Trademark Office's Trademark Trial and Appeal Board (otherwise known as the "TTAB"), in responding to refusals to register and in defending and prosecuting trademark opposition and cancellation actions. We prosecute and defend trademarks and copyrights in federal courts and assist our clients by drafting a wide range of agreements, including non-disclosure non-use agreements, co-existence agreements, rights of first refusal and matching offer, and licensing agreements. In addition, we assist clients in strategizing for branding, brand building and brand protection across the spectrum, including through use of our automated trademark portfolio management system. We have appeared in federal courts in Vermont, New York, California, Florida and Washington, D.C., and have extensive experience with Paris Convention filings, International Trademarks, Madrid Protocol, WIPO matters, domain disputes, domain name sales and purchases, and Internet issues and disputes.

We serve a wide range of clients, many of them in software and emerging technologies, but also in electronics, fashion, clothing and accessories, food, pharmaceuticals and nutriceuticals, exercise modalities, boxing and mixed martial arts, music and fine art.

We also partner frequently with other law firms, particularly foreign practices who need assistance registering and maintaining their intellectual property in the United States.

Intellectual Property Practice Areas

Trademark

We can file your trademarks both domestically and internationally. We have filed and prosecuted (that means brought to registration) many thousands of trademarks throughout the world. This section explains what you will need to provide us with in order to file your trademark and some of the basics of trademark registration.

Copyright

The Internet has made copyright a "hot button" issue, rife with misunderstanding. This section explains why you need to register your copyrights (even if the law doesn't require it), and will introduce you to some of the issues surrounding copyright infringement and defenses such as "fair use."

Internet Law & Domain Name Issues

We have successfully litigated to protect our clients' Internet domain names, used trademark for cyberpiracy prevention, issued and responded to so-called DMCA takedown notices, participated in ICANN arbitration proceedings, and dealt with cybersquatting. On many occasions, we have helped our clients negotiate the sale and transfer of domain names, sometimes for considerable sums of money. In this section, we will introduce you to some of the basic concepts and procedures of protection in this area.

Licensing & Contracts

Written agreements are essential to protecting your intellectual property, whether trademarks, copyrighted content, potential inventions or trade secrets. This section discusses the kinds of contracts we prepare for our clients, from LLC operating agreements to non-disclosure and confidentiality issues to work for hire agreements and trademark and content licenses. We have served some of our clients from early start-up through acquisition or public offering, and we know how important it is to protect your intellectual property in writing at every stage.

IP Issues in Employment Law

"Non-competition" agreements have become more common over the last ten years even while courts give them mixed reviews. In addition, the presence of the Internet in the workplace has created new problems for employers in terms of protecting both their intellectual property and public image. This is a rapidly evolving area that needs to be addressed in employee handbooks and policies, as well as in employment contracts, even ones that are "at will." This section provides an introduction to these issues from the standpoint of both employers and employees.

IP Law News Roundup

United States Capitol
Music Community Registers Approval for Copyright Bill
H.R. 1695, "The Register of Copyrights Selection and Accountability Act," is expected to encounter no significant opposition in the Republican-controlled Senate, where it will be voted on before going to the president's desk. The bill passed the House of Representatives 378-48. "Copyright is a Republican issue," said entertainment attorney Dina LaPolt (Britney Spears, Steven Tyler), who has lobbied energetically for the bill. "They see it as private property rights." Democrats tend to view it as "information wants to be free," the so-called Silicon Valley approach that has pitted techs against creatives in a heated legislative battle. Following several bills that had languished, H.R. 1695 is the first step in what the songwriters hope will be a decisive march toward copyright reform under the Trump administration. Revisiting the compulsory license rules that force artists to sell their songs for fees set by the government is also on the radar. The bill calls for removing copyright oversight from the Library of Congress and vesting it in an independent agency, run by a presidential appointee with a 10-year term limit and confirmed by the Senate. Such a move would put copyright on par with patents and trademarks, which have their own agency, the Patent and Trademark Office. It would also give copyright a more authoritative voice in guiding its future.

Eminem New Zealand National Party
Eminem Sues New Zealand Political Party Over 'Lose Yourself' Copyright
The Detroit-based music publishers for Eminem are suing New Zealand's conservative National Party, alleging the soundtrack for a 2014 election campaign ad copied the rapper's acclaimed 2002 song. Titled "Eminem Esque," the track has the familiar urgent, pulsing beat of the original. The party has previously said it purchased the track through an Australian-based supplier and doesn't believe it has infringed anyone's copyright. In 2014, when the case was filed, lawmaker Steven Joyce said he thought the use of the song was "pretty legal," and that Eminem's team "are just having a crack and a bit of an eye for the main chance because it's an election campaign." Garry Williams, the lawyer for Eminem's music publishers Eight Mile Style, told the High Court in Wellington that the National Party had wanted a song that was edgy and modern but showed the party was dependable. He said the music fared better with focus groups than a classical piece. He quoted from National Party emails, including one in which the song is described as an Eminem "sound-alike" and another in which an agent for the party wrote "I guess the question we're asking, if everyone thinks it's Eminem, and it's listed as Eminem Esque, how can we be confident that Eminem doesn't say we're ripping him off?"

McDonalds Supermacs
An Irish restaurant chain is upset that McDonald's owns so many 'Mc' trademarks
If you have the poor fortune of owning an Irish fast food chain whose name contains Mc or Mac but doesn't end in Donald's, doing business in Europe can be very, very hard. That's the claim made by a restaurant chain from Ireland, pitting itself against the international burger conglomerate in a peculiar spat. In a submission filed to the European Union's Intellectual Property Office, the restaurant Supermac's, a multimillion-dollar chain owned by a man named Pat McDonagh, has asked the office to cancel McDonald's "Big Mac" trademark in Europe, alleging that the company is participating in "trademark bullying." Supermac's had previously tried to expand to other locations in Europe, but its trademark registration application was rejected after McDonald's voiced its objections. The company's more than 200 trademarks in the European Union could be particularly tough on business owners in Ireland and Scotland. The prefix Mac or Mc, when added to a surname, means "son of." Twelve of the 100 most common surnames in both Ireland and Scotland begin with Mc or a Mac, and presumably, there are plenty of businesses that draw inspiration from their owners' names. "McDonald's has literally registered the McWorld. It is trying to make sure that every word in the English language belongs to them if there is prefix Mc or Mac put in front of it," McDonagh told the Irish Times.

Apple Pear Technologies
Apple Goes After Pear in Trademark Dispute
Pear Technology, which produces digital mapping software and services, applied for the pear logo in 2014 and was almost immediately challenged by Apple, which claimed it was confusingly similar to its own apple-with-a-bite-out-of-it silhouette logo. The Cupertino intellectual property lawyers claimed that despite one being a picture of a pear and one being a picture of an apple they were, legally, the same. How? Here are the words that make this leap of logic possible: "abstract stylization" and "sleek, rounded silhouettes of the fruits." Even though the Pear Technologies trademark application had the word "Pear Technologies" written underneath as part of the mark, this mere detail was not enough to prevent consumers from being confused as to the difference between a pear and an apple, it seems. The name Pear Technologies "must be assessed against the background of the fact that the word, where understood, merely reinforces the same concept as the one attributed to the sign's figurative element, thus creating a semantic unit." according to the decision of the European Union Intellectual Property Office (EUIPO) which ruled for Apple and against Pear Technologies.

Play Doh
Toy giant Hasbro is trying to trademark the smell of Play-Doh
How much is a smell worth? A lot, it seems, to multinational toy company Hasbro. Last month, the group submitted an application to trademark the distinctive scent of Play-Doh in the US. The application to the US's Patent and Trademark Office (USPTO), covers all toy modelling compounds. It describes Play-Doh's particular smell as "a unique scent formed through the combination of a sweet, slightly musky, vanilla-like fragrance, with slight overtones of cherry, and the natural smell of a salted, wheat-based dough." A container of Play-Doh was sent to the USPTO as part of the application process. Lee Curtis, a partner and chartered trademark attorney at law firm HGF, said: "Hasbro's trade mark application shows that the use of smells in branding, and companies desire to protect them is increasing." While it is rare for smells to be successfully trademarked in the US, it is not unheard of. According to Mr Curtis, the first was a flowery scent used on yarn, registered in 1990.

Bentley Motors
Bentley Loses Trademark Battle Against Same-Named Clothing Company
A trademark opposition proceeding filed by the British luxury automaker ("Bentley Motors") in 2015 against Manchester-based Bentley clothing company ("Bentley Clothing") has come to a close, with the more famous of the two parties taking a hit. On the heels of Bentley Clothing filing to register the "Bentley" mark with the United Kingdom Intellectual Property Office ("UK IPO") in June 2015, in two classes (25, which applies to clothing and accessories, and 35, which covers "retail and wholesale services connected with the sale of vehicles and parts and accessories therefor; retail and wholesale services connected with the sale of perfumes and cosmetics, optical apparatus, glasses, sunglasses, and accessories"), Bentley Motors filed to oppose the mark. According to Bentley Motors' trademark opposition, which was filed in September 2015, the goods asserted within Bentley Clothing's trademark application were "confusingly similar" to an array of goods in which it maintained trademark rights at the time. Unpersuaded by Bentley Motors' argument that it maintains rights in the "Bentley" trademark in connection with garments, UK IPO trademark hearing officer George W. Salthouse held that the company did not produce sufficient evidence to support its asserts.

Christian Louboutin
Louboutin Loses Latest Fight to Register Red Sole Trademark in Switzerland
Christian Louboutin lost a recent quest to obtain federal trademark protection for its red soles in Switzerland. According to local Swiss media outlets, the country's highest court turned down the Paris-based footwear brand's final appeal for protection, holding that its red soles are merely aesthetic and as a result, are not worthy of trademark protection. The Federal Supreme Court in Lausanne affirmed the Federal Administrative Court's April 2016 decision, which classified the brand's famed red sole as a "decorative element," as opposed to an identifier of source — the latter of which is the purpose of trademark law. Louboutin appealed the lower court's decision, but as of last week, the Supreme Court ruled against Louboutin, as well. The court held that while Louboutin does maintain trademark protections in other countries, including the United States, China, Russia and Australia, that does not mean it is entitled to the same level of protection in Switzerland.

Cox Communications
ISP to Pay $8.4 Million for Copyright Infringement
In what's bound to be viewed a scary decision for internet service providers (ISPs), Cox Communications, a cable and internet company in Virginia, has been ordered to pay $8.4 million in legal fees to BMG Rights Management for copyright infringement. This is in addition to a $25 million penalty levied against Cox in November 2014, Media Post reports. The record company sued Cox for copyright infringement because the ISP's customers were sharing pirated content, something BMG believes Cox could have taken steps to prevent. Despite Cox's arguments that it should be shielded from such lawsuits under federal copyright law, the judge disagreed, ruling instead that Cox was liable. This was the first case in which an ISP was held liable for the pirating activities of its subscribers (although not the only one). Cox appealed, saying many of the warning notices it received from BMG on behalf of its clients weren't reliable; BMG argued in return that Cox took no action to disconnect repeat offenders found to be sharing illegally pirated content. On Tuesday, US District Judge Liam O'Grady not only reaffirmed the original verdict, he ordered that Cox pay BMG's legal fees. He stated that without such a large penalty, the cost incurred in such a legal battle might "deter other potential plaintiffs from seeking to enforce their rights."

Monsanto
Monsanto loses patent and trademark dispute in India
Agriculture company Monsanto has lost a patent and trademark dispute against Indian agribusiness Nuziveedu Seeds. On Tuesday, March 28, the High Court of Delhi ordered the US company to continue a licensing agreement that had been terminated. In 2004, a joint venture between Monsanto and agricultural business Mahyco —called Mahyco Monsanto Biotech —entered into a ten-year agreement providing Nuziveedu with 50 grams of cotton seeds. Further licensing deals followed, expiring in 2015. The dispute arose in 2015 when Monsanto sued Nuziveedu for patent and trademark infringement.It claimed that the Indian company had continued to use Monsanto's technology after the joint venture had ended the licensing deal.

BrewDog
BrewDog backs down over Lone Wolf pub trademark dispute
BrewDog, the self-described "punk" beer company, has backed down in a row over the name of a family-run pub, blaming "trigger-happy" lawyers for the legal action. The brother-and-sister team behind the Wolf pub in Birmingham were forced to drop their original plan to name the establishment the Lone Wolf, after receiving a legal warning from BrewDog, which has launched a spirit bearing the same name. But BrewDog founder James Watt announced a change of heart on Monday after the Guardian's report sparked a backlash that saw the firm, a vocal critic of large, faceless brewing firms, accused of acting like "just another multinational corporate machine".

IP News Roundup Archive

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Gordon E. R. Troy, PC | 5203 Shelburne Road | PO Box 1180 | Shelburne, VT 05482 | USA | Tel: +1 802 881 0640 | Fax: +1 646 588 1962 | Email: info@webtm.comHomeServicesTrademark RegistrationTerms of UsePrivacy PolicyDisclaimerSite MapContact ••• Design: J. P. Carlisle.