Paradies® IP reports:
Chris Paradies, CEO
- Registered Patent Attorney, USPTO
- FL Bar Certified Intellectual Property
- Admitted MDFL, SDFL, D.Colorado
- Licensed: Florida, New York
Chris graduated from West Point, earned a Ph.D. from Rensselaer Polytechnic Institute, and received his law degree, summa cum laude. He has advised hundreds of businesses about IP and branding for more than 15 years. He is passionate about helping business owners, especially small business owners, and volunteers as a mentor at TEC Garage, as a co.Starters facilitator and as the chair of the board of directors for the Tampa Bay Innovation Center.
What happens to a person that sells knock-offs of branded goods in the U.S.? It's not good. It could mean felony jail time or steep fines for criminal counterfeiting of goods.
Knock-offs that copy trademarks or trade dress are called counterfeit goods under the Lanham Act, the federal law that governs trade dress, trademarks and service marks. Counterfeiting is an act of making, distributing or selling lookalike goods or services bearing fake trademarks or service marks.
In a civil suit a brand owner can recover actual damages or statutory damages of not less than $1,000 or more than $200,000 per counterfeit mark per type of goods or services sold, offered for sale, or distributed, as the court considers just. Worse still, the willful counterfeiter may be liable for up to $2,000,000. That will put you out of business.
Now, Canada and Mexico are going to join the U.S. in providing statutory damages for counterfeit goods as part of the USMCA trade agreement.
To find out more, enroll in my IP master-class at https://IPmasterclass.com .
Genericide? Even google has to comply or face cancellation of their mark...
An appellate court upheld the lower district court in Arizona, recently, agreeing that google has done enough to avoid cancellation of its google trademark that has been estimated at being worth as much as $44.3 Billion. According to an article in Forbes online magazine,
Google has become the generic term for search, which is the ultimate in branding power.
Now just hold on there! This is just ridiculously wrong, wrong, wrong… from a trademark law perspective.
After successfully defending against a trademark cancellation proceeding, even Google agrees. According to a cancellation action filed by David Elliott, google had become a “…a generic term universally used to describe the act of internet searching.” But google dodged a bullet aimed straight at the heart of its famous and valuable trademark. According to the appellate court, the primary and determinative factor that determines whether a mark has become generic is whether consumers primarily think of the mark as the product rather than as the source of the product. This is called “genericide” and its happened to some popular trademarks; escalator, zipper, and dumpster were trademarks once. It almost happened to band-aid brand adhesive strips and Xerox brand copies and photocopiers. The appellate court held in Googles favor, this time, but Google isn't waiting for its mark to become genericized.
Even Google must comply with rules for trademark use. It published its own rules for use of its trademark. Here are some of the do’s:
- Distinguish the trademark from the surrounding text in some way. Capitalize the first letter, capitalize or italicize the entire mark, place the mark in quotes, use a different type style or font for the mark than for the generic name.
- Use the trademark only as an adjective, never as a noun or verb, and never in the plural or possessive form.
- Use the generic term for the product following the trademark, for example: GOOGLE search engine, Google search, GOOGLE web search.
- Maintain a minimum spacing of 25 pixels between each side of the logo and other graphic or textual elements on your web page.
IF Google has to adopt these rules, shouldn’t you?
Breaking News! Patent Venue
A recent S.Ct. case provides yet another reason for you to incorporate your small business in your home state. Many patent lawsuits are brought by a larger competitor against a small business. Many other suits are brought by patent enforcement entities, which are also referred to as "patent trolls." Being on your home turf can be an advantage when defending a patent infringement lawsuit against a larger, out-of-state competitor or patent troll. It can save you and your attorneys travel costs and time away from your company. It can deny plaintiff the opportunity to forum shop. It can offer you a local jury that understands your local accent and empathizes with a small, local company fighting a bad faith lawsuit brought by a much larger, heartless foreign corporation or patent troll.
This recent decision overturns the trial and appellate courts, which decided to let this lawsuit go forward in Delaware. However, Title 28 U. S. C. §1400(b), the patent venue statute, provides: “Any civil action for patent infringement may be brought in the judicial district where the defendant resides, or where the defendant has committed acts of infringement and has a regular and established place of business.” The S.Ct. defined "resides" for any U.S. corporation in a 1957 holding as only the State of incorporation. The lower courts wrongly decided that the 1957 S.Ct. decision was preempted by more recent changes in a general venue statute. The S.Ct. disagreed. It upheld the earlier decision and found that the legislation in question left the patent venue statute unchanged.
So, if you own a startup or small business that doesn't have any operations located outside of your home state, you can avail yourself of home turf advantage in a patent lawsuit. Even if the patentee files a lawsuit in a different state, the court will have to transfer the litigation to a federal court located in your home state, unless the patentee can show that you have a "regular and established place of business" in some other state where patent infringement is occurring.
Online Hosts Do This Now!!
Do you allow anyone to post anything to your website? Then, you need to take action now! Why? The law has changed. Under the Digital Millennium Copyright Act (DMCA), hosts of third party content are able to take advantage of a safe harbor only if the host registers and provides a take down policy for alleged infringing works posted to its website.
Specifically, you must comply with the prerequisites to qualify for the safe harbor under section 512 of the DMCA. You must register, designate and maintain a DMCA agent to receive and act on notices from copyright owners and their agents.
To register your agent, you must comply with the new electronic registration requirements no later than December 31, 2017. Why wait? Take action now before you forget.
You can register here: Register Now.
- Identify your designated DMCA Agent for receipt of notifications from third parties claiming copyright infringement;
- Include a physical address, phone and email where notifications may be sent;
- Establish a system for taking down or removing alleged infringing content; and
- Respond within a reasonable time by taking down or removing alleged infringing content.
Make sure that you keep this contact information up to date.
Take Down Policy
If You believe that any Website contains anything that infringed upon a copyright owned by You, then You, or your agent, may submit a notice pursuant to the Digital Millennium Copyright Act by providing our below identified agent all the following information in writing (“Notification Requirements”):
- identification of the copyrighted work or works claimed to have been infringed; identification of the material claimed to be infringing that copyrighted work;
- identification of the location of that material using URLs or similar information sufficient to permit us to locate that material on our Website or services;
- a statement that you have a good faith belief that use of that material in the manner complained of is not authorized by the copyright owner, its agent, or the law;
- information permitting us to contact you, such as your address, telephone number and email address;
- a statement that the information in the notification is accurate, and under penalty of perjury, that you are the owner, or are authorized to act on behalf of the owner of the copyright that is allegedly infringed; and
- your physical or electronic signature.
You acknowledge that failing to comply with all of the Notification Requirements invalidates your notice and releases us from taking any action until we receive all of the Notification Requirements in a single notification.
Our Designated DMCA Agent
Agent Name: _________________
Company Name: _______________________
Address: ___________________, ___________, _____-____
Breaking News: Laches Defense Defeated!
The Court of Appeals for the Federal Circuit (the appellate case for all patent matters) got yet another decision overturned by the Supreme Court of the United States! The 6-year statute of limitations for damages in patent law means that the equitable doctrine of laches does not apply to damages in a patent case filed within the 6-year statute of limitations. Period. (A patentee might not get an injunction due to laches, but it can get damages going back 6 years.) So, a patentee seeking damages can now wait up to 6 years, until damages accrue, in order to make it worth the expense of the lawsuit, without worrying about laches preventing a claim for damages. This is good news for patentees with limited resources. You might recall that this is where I thought the highest court in the land would come down on this issue. You can access a fullcopy of the opinion, below.
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Trademark Registrations Are Worthless?
I often tell clients of Paradies® law that a trademark starts out its life with no value and only becomes valuable as good will accrues with use the mark in commerce. This usually starts a conversation about what I mean by this, and a good discussion of just what a trademark is and does follows. Good will is a foreign concept to most clients, and many don't know that good will is an important intangible that can add value to a balance sheet. Learning that the value associated with a trademark can increase (or decrease) as customers identify your company as the source of a certain quality of goods or services is an important step in understanding trademarks as IP. How valuable? The google brand has been valued at more than $150 billion. Learn more HERE...
Software Inventors Rejoice!
A recent decision by the Court of Appeals for the Federal Circuit provides another ray of hope for the patentability of software inventions. Arrangements of conventional software elements, if non-conventionally arranged in a new, inventive concept, can be patented. See the details here.
How to register photos in a single application
An application for copyright registration of a photograph may include a group of photographs under the Copyright Act. A recent appellate case confirms that the 11th Circuit determines damages based on an assessment of "independent economic value." How can this affect damages for copyright infringement? For one thing, how a copyright is registered becomes one factor in determining damages. See Yellow Pages Photos, Inc. v. Ziplocal, LP et al. for the decision in an appeal from the Middle District of Florida. Be careful grouping too many photos in a single registration. There are restrictions in the Copyright Act that must be followed. Also, statutory damages might be limited if a court finds that your photos are a compilation or collective work, based in part on your copyright registration, if you cannot show that each photograph has independent economic value. Contact Paradies Law at if you have questions about copyright registration.
Why does copyright litigation cost so much?
Litigation costs more in the U.S. than in most other countries. Cost of litigation in Florida is less than some other big states, but cost of a copyright litigation can easily exceed $200,000. This is one reason why it is so important to register your copyright. The Copyright Act provides for statutory damages and attorneys fees, if application for registration is made within 3 months of publication. Contact Paradies Law at if you have questions about copyright registration.
One cause of escalating costs in litigation is an increasing lack of truthfulness in our society and courts. I'm familiar with cases where evidence is fabricated and testimony given under oath bears no relationship to the truth. Unfortunately, perjured testimony and false evidence are difficult and expensive to disprove. To prove falsity always requires meticulous discovery and circumstantial evidence. Sometimes, a copyright case can hinge on forensics like in an episode of CSI:Miami. In other cases, a good private investigator can make all the difference like in an episode of Perry Mason. All of this adds costs to a copyright litigation.
A recent case provides a glaring example...
According to a recent case, laches cannot be invoked as an affirmative defense to a lawsuit claiming damages that is brought within a statute of limitations set by federal law. The federal statute for copyright gives you three years to file your case for past damages. In patent law, you can claim up to six years of past damages. Trademarks are covered by federal and state laws and the statute of limitations may vary. Read more... Contact Paradies Law at if you have questions.
A recent decision confirmed that royalties should never be paid beyond the term of a patent. You should review every patent license to determine if any have royalties that extend past the term of the patent. Read more... If you need help determining the patent term, then contact Paradies Law at (727) 201-2585.
Can You Copyright a Floor Design?
YES! So says the 11th Circuit, a regional federal appellate court that includes Florida, where I practice. In fact, floor designs are protectable under patent, trademark and copyright law. Read more.
How to Be an Entrepreneur
- Be honest with yourself, your investors, employees & customers.
- Know your business better than anyone.
- Know your customers best.
- Read more.
Claim Interpretation Revisted
Will Teva v. Sandoz Make It More Diffcult to Reverse Trial Court Claim Interpretation? In a recent decision, the Supreme Court of the United States corrected a mistake made by the Court of Appeals for the Federal Circuit in reviewing claim interpretations that can have far reaching consequences for patent infringement litigants. Read more.
Here is one of my favorite quotations from a district court judge's opinion? "How Hollywood’s flattering and artful use of literary allusion is a point of litigation, not celebration, is beyond this court’s comprehension." This sentence sums up the court's opinion that use of a particular quotation lifted from a novel was de minimus use. Read more.
The Supreme Court of the United States decided that discovery and isolation of genes is not sufficient to make naturally occurring genes patentable. Association for Molecular Pathology v. Myriad Genetics, Inc., 569 U.S. ____ (2013). However, DNA may be patentable if it is changed in a way that makes it new, useful and nonobvious, potentially saving issued patents claiming synthetic DNA sequences including, without limitation, sequences of complementary DNA (cDNA). What will be the impact of this historic decision? Will the decision extend to patents in the chemical arts? Read more.
The SEC has released its final rule for public solicitation under the 506 safe harbor of Reg D. This new rule paves the way for companies to raise unlimited capital from accredited investors without the constraints formerly imposed against public solicitation. Read more.
Let's be real. Crowdfunding campaigns are hard and usually are not the best way to raise money for a technology startup. However, I am getting more and more questions about crowdfunding through websites like Kickstarter. My advice is to consider this as merely one tool among a wide variety of tools that could be used to raise funds for a new startup. Read more.
9-11-01 Ten Years Later
On 9-11-01, I was walking to my office at One Broadway, when the first plane hit the N. tower. I had returned to New York from Santorini, Greece, the day before. My vacation was interrupted due to pressing matters that could not wait. I first noticed other pedestrians looking up. My eyes followed the direction of their stares, and I first saw the hole that had opened up in the side of the North tower. Flames licked the sky, leaping from the gaping wound. At that point, we didn't know it was an intentional act of terrorism. Read more.
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Claim Drafting Tip #8
When drafting claims, link one element to another.
The Court of Appeals for the Federal Circuit has overturned attempts to reject claims as being anticipated over a single reference (under section 102 of Title 35 U.S.C.), when the reference includes all of the elements but fails to show them “arranged as claimed.” By failing to arrange the claim elements within the claim, the claim becomes susceptible to rejection for anticipation.
Some background is necessary to understand the importance of drafting the claims to survive challenge by the patent office. The patent office adopts a “broadest reasonable interpretation” of the claims, and there has been a tendency for the examiners to push this “BRI” standard to make it easier to reject the claims. An overly broad interpretation under the BRI standard makes its difficult to overcome a rejection without further limiting the claims.
Now, limiting the claims is usually necessay, but you don't want to overdue it. You see, a legal concept called the doctrine of equivalence prevents injustice by allowing claims to cover not only their literal meaning, but equivalents of the literal meaning, also. However, "prosecution history estoppel" limits the scope of equivalence available to the claim elements under the Doctrine of Equivalents. In patent litigation, the "Doctrine of Equivalents" gives the plaintiff a small advantage, by creating uncertainty for defendants.
Further limiting the claims to address a rejection based on an overly broad BRI gives rise to a presumption of no scope of equivalence (under prosecution history estoppel), which makes it easier for potential defendants to design around issued claims. The drafter of claims should consider the importance of the Doctrine of Equivalents and the effect of prosecution history estoppel on the scope of equivalence, when drafting claims.
By properly linking the claim elements, the claim drafter makes it more difficult for the patent office to overly broadly interpret the claims under the broadest reasonable interpretation standard. In order to reject the claims as anticipated by a cited reference (under section 102 of Title 35 U.S.C.), the examiner must show not only that the elements are disclosed in the reference, but also the reference must disclose the very same arrangement of the elements as recited in the claims.
The alternative to an anticipation rejection for the examiner is to reject the claims as obvious over one or more cited references under Section 103 of Title 35 U.S.C. However, obviousness can be successfully overcome by arguments or declarations, characterizing the level of ordinary skill in the art, lack of any motivation to combine teachings, or other secondary considerations of nonobviousness, such as failures, unexpected advantages, surprising results, synergy, commercial success and the like, which tend to show that the invention is nonobvious in the particular art.
A new arrangement of known components that achieves unexpected advantages over the prior art, and is not merely one of a finite number of possible arrangements obvious to a person having ordinary skill in the art, is likely patentable.
Let's consider a simple example. A claim to a four-legged chair may comprise a seat, four legs and a backrest. This list of claim elements is incomplete, if the seat, four legs and backrest are not defined and joined to each other in some way. For example, the seat may be defined as having a surface for accommodating a user’s buttocks, and the legs may have a first end coupled to the seat and an opposite end, such that the four legs extend from the seat, and when the opposite ends of the legs are in contact with the ground, the legs support the seat above the ground. The backrest may be coupled to the seat or the legs, the backrest extending operatively in relation to the surface for accommodating a user’s buttocks such that, when a user’s buttocks is seated on the surface of the seat, a portion of the user’s back is capable of resting against the backrest. To make clear that the human is not a part of the claim, the user’s buttocks and the portion of the user’s back should be introduced in the preamble of the claim. For example, the claim may recite the following independent claim:
1. A chair for accommodating a buttocks of a person, a user of the chair, and for supporting a portion of the user’s back, comprising:
a seat having a surface for accommodating the user’s buttocks;
four legs, each of the four legs having a first end coupled to the seat in spaced relation to the other of the four legs and an opposite end, such that the four legs extend from the seat, and when the opposite ends of the four legs are supported on the ground, the four legs support the seat above the ground; and
a backrest coupled to the seat or the legs, the backrest extending operatively in relation to the surface for accommodating the user’s buttocks such that, when a user’s buttocks is seated on the surface of the seat, the portion of the user’s back is capable of resting against the backrest.
This example functionally arranges the claim elements, without unnecessarily limiting the structure of the invention. Nevertheless, the arrangement of the elements introduces functional limitations on the elements and an arrangement of the elements that might prevent an overly broad interpretation of the elements from being rejected as anticipated by a single reference cited by the examiner.
It is important to capture the nature of the invention in the broadest claims, without unduly limiting the scope of the invention, while preventing an overly broad interpretation of the claim during prosecution of the application before the patent office. Careful attention to the way that one element is linked with the others goes a long way in achieving these objectives and might allow a claim to issue that would otherwise require a limiting amendment, giving rise to a presumption of no scope of equivalence for a claim element.
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