SmashBurger and the War on Naming Rights

How can you be proactive when founding a new company or branding a new product to avoid trademark infringement disputes

By Kurt Leyendecker

Recently, the management at Colorado’s own SmashBurger decided to name its new burger the Triple Double, ostensibly because the burger has three slices of cheese and two beef patties. It could also be a play on the rare achievement of a basketball player accumulating a double digit score in three statistical categories. In rolling out this massive sandwich, SmashBurger initiated a significant marketing campaign.

At some point, the powers that be at California’s In-N-Out Burger became aware of the Triple Double and were not pleased. They believed the Triple Double name is too close and confusingly similar to one or both of the company’s registered trademarks, Double Double and Triple Triple, both also names for burgers. A lawsuit was filed and delivered to SmashBurger.

Read more at ColoradoBiz Magazine.

By | October 25th, 2017|BLOGGING|Comments Off on SmashBurger and the War on Naming Rights

Copyright Infringement and the Snow Globe Cupcake Wars

It is important to identify potential intellectual property protection early on

By Peter Lemire

One thing is for certain in the intellectual property world – no one likes the feeling that someone has stolen something. For business owners, not every similarity or perceived “theft” of an idea or concept is actionable under the law. This is especially true if technology is involved, since the law usually lags behind the latest technological advances. Businesses often are caught unaware in this IP no-man’s land without an effective strategy for dealing with other competitors entering the market place.

A recent story that has made headlines illustrates this unenviable position business owners can find themselves in.

Our story starts with a Pinterest-worthy confectionary creation called the snow globe cupcake. For those unfamiliar with the quirky treat, a snow globe is a cupcake that does in fact look like a snow globe.

Read more at ColoradoBiz Magazine.

By | September 6th, 2017|BLOGGING|Comments Off on Copyright Infringement and the Snow Globe Cupcake Wars

I Love You, says Gene Simmons

What, aside from words and logos, can be trademarked?

By Kurt Leyendecker

Gene Simmons (of the rock band, “Kiss,” fame) recently filed a trademark application for the registration of a variation of the “devil horns” hand gesture, and it has caused some uproar in the music community among fans and fellow metal musicians. Can Gene Simmons trademark a hand gesture that is essentially identical to the “I Love You” gesture in American Sign Language (ASL) and prevent others from using it?

We may never know the answer.

The Kiss bassist, apparently buckling to negative press, abandoned the application 11 days after filing it. Nevertheless, this instance begs the question: What, aside from words and logos, can be trademarked, and what are the bounds of protection of these non-traditional marks?

Read more at ColoradoBiz Magazine.

By | July 18th, 2017|BLOGGING|Comments Off on I Love You, says Gene Simmons

Do your shopping: Not all patents are equal

Employ smart shopping tactics to the patent acquisition process

By Kurt Leyendecker

Every three to 10 years, the average consumer embarks on the process of buying a shiny new (or new-used) car. There are many decisions to be made as to the type of vehicle, amenities desired or considered essential; and the buyer’s budget. Considering price alone, there are few who would suggest there is no difference between a new Mercedes Benz S600 and used Yugo GV. And yet, when it comes to hiring legal counsel to write and file a patent application, many don’t see the difference in hiring one attorney over another, shy of price.

In March 2017, the World Intellectual Property Organization (WIPO) reported that 2016 represented a record-breaking year for patent application. Moreover, the U.S. retains its No. 1 ranking for number of patents filed. That means more people and entities are creating more intellectual property that is potentially patentable than ever before.

Yet, patent seekers often don’t dedicate the amount of time spent while car shopping to secure the best financial investment, as they do when it comes to patent acquisition.

Read more at ColoradoBiz Magazine.

By | June 19th, 2017|BLOGGING|Comments Off on Do your shopping: Not all patents are equal

The Tale of the Cheerleader and the Protectable 2-D Artwork

Why a cheerleader’s uniform had the power to change the law of the land

By Peter Lemire

Anyone who works in the fashion or the arts is likely aware of the difficulty of protecting your designs, with the constant battle with knock-offs and copycat products. While brand names and distinctive elements can be protected under trademark law, smaller designers and brands often find themselves without recourse if their ideas are replicated.

While clothing designs could possibly be safeguarded under a patent, such protection would be exceedingly expensive and would often take longer to procure than the average lifespan of the garment in question. Additionally, courts have long held that the look and feel of a particular product design is not copyrightable under federal law, given that copyright protection does not extend to the functional or useful aspects of an article.

Courts have also said that generally the design of clothing cannot be separated from its functional and utilitarian purpose of covering the human body. While patterns (the print or decorative design of the fabric used to make the clothes) or graphical images that appear on apparel may be copyrightable, the overall look of the garment is not. Bills are introduced in Congress on an annual basis to extend copyright protection to clothing design, however such efforts have been unsuccessful to date.

Read more at ColoradoBiz Magazine.

By | April 18th, 2017|BLOGGING|Comments Off on The Tale of the Cheerleader and the Protectable 2-D Artwork

When students prove the experts wrong

Cool discoveries and inventions can result from science fair projects

By Kurt Leyendecker

Invention often results from someone doing what the conventional wisdom of those “in the know” understand as being impossible or improbable. Just as knowledge and experience can provide the insight for advancement, it can also hinder advancement, causing avenues of study and experimentation to be overlooked or avoided. Sometimes, genius is demonstrated by those that are just too stupid to realize the folly of examining ideas and questions overlooked by the intellectuals in a particular field or endeavor.

On Feb. 17-18, the Denver Metro Regional Science and Engineering Fair will be held on the University of Colorado Denver campus. For two days, aspiring scientists and engineers from grades 6-12 will present their research and findings in a slew of scientific categories. Those that do well at the regional fair will be invited to the state fair, and those that excel at state will be invited to the national fair.

Interesting discoveries and inventions can result from science fair projects.  Middle and high school students often don’t have the depth of knowledge and experience to realize their hypothesis and suppositions are unlikely to be borne out and will likely result in failure. Sometimes, perhaps more often than one might think, the students prove the experts wrong.

Read more at ColoradoBiz Magazine.

By | February 17th, 2017|BLOGGING|Comments Off on When students prove the experts wrong

Websites, beware: Using third-party content can be illegal

The Digital Millennium Copyright Act offers a safe harbor for service providers

By Peter Lemire

These days most websites and other online service providers accept and host some sort of third-party content. The hosting and display of user-generated content can potentially subject the website or service provider to liability for its users’ online copyright infringement.

Seeing that this potential liability may stifle the development of interactive environments and the restriction of user-generated content by service providers, Congress enacted a safe harbor for service providers with the Digital Millennium Copyright Act (DMCA). The safe harbor limits a service provider’s liability if it is in compliance with the act and follows a certain protocol, which has become to be known as Notice and Takedown.

Read more at ColoradoBiz Magazine.

By | January 9th, 2017|BLOGGING|Comments Off on Websites, beware: Using third-party content can be illegal

Should you patent or not?

When it comes to software, it’s as clear as mud

By Kurt Leyendecker

One of the most common questions I get when meeting with new clients is whether their invention is patentable.

To be patentable, an invention must satisfy three basic criteria: it must be the proper subject matter; it must be new; and it must not be obvious. For most of the last 20 years or so, the first criteria was an easy call.

If the invention was a useful process, a machine, an article of manufacture or a composition, it was patentable subject matter. If the invention as described and claimed in a patent application was also found to be new (novel) and not an obvious derivation from that which was already known, then a patent would issue.

Read more at ColoradoBiz Magazine.

By | November 28th, 2016|BLOGGING|Comments Off on Should you patent or not?

A closer look at taco trucks and baskets of deplorables

Politics takes issues around phrases and sound bites to a new level

By Peter Lemire

In our internet and meme-driven world, there always seem to be issues surrounding the ownership and protection of sound bites/short phrases/and or slogans. Election years take these issues to a whole different level.

Political speech makes a nice illustration of the sometimes rocky road to protecting short phrases and slogans. While one would think the law in this area would be pretty cut and dry, it can actually have a profound impact on businesses and their ability to protect their products, in this case apparel, and the slogans/sound bites/catch phrases used in conjunction with them.

Read more at ColoradoBiz Magazine.

By | September 22nd, 2016|BLOGGING|Comments Off on A closer look at taco trucks and baskets of deplorables

To patent or not to patent: That is the question

A patent could offer protection from poachers, but is it worth it?

By Kurt Leyendecker

Prospective clients routinely ask whether getting a patent makes sense given that she would not likely be able to afford the cost of the lawsuit necessary to enforce the patent and stop an infringer. The truth is that patent infringement litigation is expensive; attorneys’ fees alone usually exceed $1 million in a case taken through trial. Moreover, even if the patent holder prevails, there is no guarantee he will be able to recover attorney fees. In fact, under the American Rule, attorney fees awards are the exception rather than the rule. The good news is that the award of attorney fees in patent cases have become more common in recent years; nevertheless, it is still somewhat foolish for a litigant to assume she will be able to recover fees. So why bother filing for a patent on an innovation?

Read more at ColoradoBiz Magazine.

By | August 1st, 2016|BLOGGING|Comments Off on To patent or not to patent: That is the question