Intellectual Property & Business Law

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United States Patent and Trademark Office

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

Beyonce Formation
Beyoncé Named in $20 Million Copyright Infringement Lawsuit Over 'Formation'
The estate of the late New Orleans-based rapper Anthony Barré — better known as Messy Mya — has filed a copyright infringement lawsuit against Beyoncé for allegedly sampling Mya's vocals on her hit track "Formation." According to the lawsuit, which was filed in the U.S. District Court for the Eastern District of Louisiana, the plaintiffs own a number of "protectable copyright interests, both in the musical composition and the sound recording, to Anthony Barré's original and unique works of performance art," including "Booking the Hoes from New Wildings." Barré's estate alleges in its complaint that "Defendants' willful infringement of [Barré's work] has harmed the Estate of Anthony Barré because, among other things, Anthony Barré was not properly credited for his contributions to 'Formation' and 'Lemonade.'"

Stash Tea
Stash Tea flexes trademark muscle as pot legalization popularizes name
Starting this week, Stash Pot Shop of Seattle is now Lux Pot Shop of Seattle because of legal threats from Stash Tea Co. of Tigard prompted. While the word is used to describe a quantity of marijuana for personal use, it's also been used in the tea company's name since its founding in 1972. The shop is not alone in facing reprisal from Stash Tea, which started in Portland. Stash Tea in April sued Stash Cannabis Co. of Beaverton, accusing it of infringing on the specialty tea company's trademark. And, given the prevalence of the word Stash in similar cannabis shop's names and the growing number of states that have legalized recreational marijuana sales, Stash Tea's legal team figures to be very busy. Stash maintains that it has established substantial goodwill in the Stash mark and the mark and the registrations are valuable corporate assets and that it is within its rights to demand that marijuana dispensaries immediately cease any and all uses of Stash and any other names or marks confusingly similar to the registered Stash trademark.

The Gap
The Gap vs. The Gap Band: Retailer Takes on R&B Group in Trademark Battle
Despite experiencing less than stellar sales growth over the past several years, the Gap and its intellectual property remains almost universally recognizable. Not surprisingly, the company is serious about enforcing its trademarks, as indicated by the trademark battle it recently waged against one of the founding members of The Gap Band, an American R&B and funk band which rose to fame during the 1970s and 1980s. Turns out, Ronnie J. Wilson, one of founders of the band, filed a trademark application for the "Gap Band" in the class of goods/services that covers "clothing, namely, hats, t-shirts, and sweatshirts for sale at live music performances, live music concerts, live music shows and personal appearances." In response, the Gap has asked the Trademark Trial and Appeal Board ("TTAB") to prevent Wilson's mark from being federally registered, claiming that Wilson's "use and registration of [the Gap Band trademark] will damage [the Gap] by trading on the enormous goodwill associated with its mark and diluting its distinctiveness."

Australia
IP Australia launches trademark technology that allows businesses to conduct image-based searches
The Australian government agency for intellectual property rights has teamed up with a Queensland startup to launch a "world-first" trademark solution to make it easier for businesses and entrepreneurs to protect their logos and brands. Craig Laundy, assistant minister for industry, innovation and science, launched the Australian Trade Mark Search at Melbourne's Pause Fest on Friday. "IP Australia is focused on using world-leading technology to make intellectual property information easily accessible to all Australians," Laundy said. The search tool uses image-recognition technology to find similar logos or brands from a database of over 400,000 Australian trademark applications.

Kylie Minogue vs. Kylie Jenner
The Kylie Jenner—Kylie Minogue Trademark Dispute Was a Battle of the Old School vs. the New
No trademark dispute in recent memory has been as Kylie contentious as the one between teen reality celebrity Kylie Jenner and pop star Kylie Minogue over their shared moniker. But for now, Minogue fans have an excuse to shadily hum "Can't Get You Outta My Head" in the presence of anyone who's Team Jenner, because this round went to the Australian singer. The battle began in 2015 when Jenner first tried to register the "term" "Kylie" as a trademark. Last year, Minogue's team shot back with a notice of opposition. Game, set, match, Kylie, said one Kylie to the other. But then last month, Minogue's people withdrew the opposition — according to the BBC, this could mean that the two sides reached a settlement. Some outlets are reporting that Jenner's trademark application was indeed rejected by the U.S. Patent and Trademark Office. In any case, Kylie seems to have won this one — Minogue, that is.

Nestle KitKat
Nestlé loses EU Kit Kat trademark
Nestlé risks seeing competitors imitate its Kit Kat brand after the European Union's second highest court annulled a 2006 ruling that granted the FMCG giant a trademark for the four-fingered shape of the chocolate bar. The EU General Court concluded that the EU Intellectual Property Office (EUIPO) "erred in law" by not determining whether Kit Kat's shape had acquired distinctiveness in every EU member state, the Financial Times reported. It said that when Nestlé applied for a trademark in 2002, it did not prove that Kit Kat had already gained distinctive character through use in all member states, which numbered 15 countries at that time. It was not enough for Nestlé "to show that a significant proportion of the relevant public throughout the EU, merging all the member states and regions, perceives a mark as an indication of the commercial origin of the goods designated by the mark," the court said.

PayPal vs. Paytm
PayPal Accuses Paytm of Trademark Infringement in India
On November 18, 2016, Paypal Inc. filed an objection at the Indian Trademark Office accusing Paytm, an Indian mobile wallet company, of trademark infringement. The objection comes at the heels of the recent windfall made by the latter on account of a cash-strapped nation moving rapidly towards a cashless normal. For six years, Paytm had been steadily becoming a household name in middle-class India — until it really hit the jackpot on November 8, 2016 when the Indian Prime Minister Narendra Modi announced demonetization of currency notes of Rs. 500 and Rs. 1000 — invalidating overnight 80% of the country's cash in circulation. The drastic move was taken to tackle the vast amounts of unaccounted "black" money in the Indian economy that was being used for bribery, corruption, tax evasion and for funding separatists and terrorists — and has since invoked strong emotions, both in favor and against, from the media, politicos and citizens across the country.

Star Trek Axanar
'Star Trek' Copyright Settlement Allows Fan Film to Proceed
In a victory for fan films, Paramount and CBS have reached a settlement in 2015 copyright infringement lawsuit they filed against Axanar Productions, which has produced two fan films based upon the studios' popular Star Trek series of films and television programs. Whilst the studios have been tolerant of previous fan films, they became concerned about infringement due to the high quality of the Axanar productions. In the settlement, both sides acknowledge that the productions crossed acceptable boundaries of copyright law but has allowed the films to remain on YouTube and another two films to be produced so long as the producers do not profit from the productions or realize any ad revenue on YouTube.

Paul McCartney
Paul McCartney Sues Sony to Regain Rights to Beatles Songs
Paul McCartney has filed suit in New York against Sony/ATV and is looking to get a declaratory judgment that states he will soon regain his copyright ownership share to a treasured catalog of songs created as a member of The Beatles. In what could become one of the most important legal battles in the music industry this decade, the iconic songwriter is looking to leverage the termination provisions of the Copyright Act. In 1976, Congress increased the period that works are under copyright protection, and, in recognition of authors who had signed over their rights to publishers and studios without much bargaining power, allowed such authors 35 years hence to reclaim rights in the latter stages of a copyright term. Artists such as Bob Dylan, Tom Petty and Prince have used the mere threat of termination to negotiate new deals and better compensation arrangements.

Run DMC
Run-D.M.C. Sue Amazon, Walmart for $50 Million Over Trademark
Darryl "D.M.C." McDaniels, a founder of Run-D.M.C. and owner of the Run-D.M.C. brand, has filed a lawsuit against Amazon, Walmart, Jet.com and some of the aforementioned retailers' business partners for at least $50 million. According to Reuters, the suit accuses the retail giants of alleged trademark infringement. The suit alleges that the retailers' distribution and sale of merchandise that's branded with the Run-D.M.C. name without permission misleads consumers into thinking the products have been officially endorsed by the group and accuses the defendants of "trading on the goodwill" of the group's name. Products in question include glasses, hats, T-shirts, wallets and more that use the group's name in their title or description or bear the group's logo. In the suit, McDaniels asserts that the Run-D.M.C. brand is "extremely valuable" and cites licensing agreements that exemplify its value, such as its deal with Adidas.

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