DIY intellectual property: Really, how hard can it be?

Well, it’s kinda like removing your own appendix

By Kurt Leyendecker

We often receive inquiries at our firm from people wondering whether they can prepare and file either a trademark application or patent application themselves without an attorney. Of course, for purely selfish reasons as an attorney, I am not thrilled about losing potential revenue, but there isn’t any legal reason or rule that prevents a person from filing their own intellectual property paperwork. I say go for it — what is the worst that can happen?

As an aside, please forgive me if my column seems a bit disjointed and my prose a bit forced. You see, I am in a lot of pain right now. I noticed my abdomen was rather sore and tender a couple of weeks ago. After a little Internet searching, I came to the conclusion that my appendix was inflamed. With my deductible and copays, I figured an appendectomy was going to cost me several thousand out of pocket. Seriously, why is surgery so expensive? I mean all the doc has to do is cut a small hole, reach in and cut the appendix off, and sew everything back together. “How hard can it be?” I thought.

Read more at ColoradoBiz Magazine.

By |November 18th, 2015|BLOGGING|Comments Off on DIY intellectual property: Really, how hard can it be?

The sweet spot: When to file for your patent

Things have changed recently

By Kurt Leyendecker

Over the years, I have written a significant amount concerning patent strategy and patent procedure aimed at entrepreneurial companies and individuals, and most of the information was available on my firm’s website.  The firm recently unveiled a new modern and streamlined website.   Much of the old content was removed with the intention of updating it and making it available as PDF white papers on our new site.  What struck me most during the updating process is how dramatically my advice has changed in light of the changes to patent law, most of which went into effect a little over two years ago as part of the America Invents Act (AIA).  Some of the procedural considerations are worth noting here.

Prior to March of 2013, the person first to invent a new invention was first in line to receive patent protection, even if another person who invented a substantially similar invention filed for patent protection first. Accordingly, I advised many of my clients to keep copious notes and fully develop the invention before filing a patent application, reducing the chance that the client would have to file a second or third application at significant additional expense because of changes made during development. Under the current first to file rules, however, whomever files first on an invention is the inventor who will receive a patent even over another later-filing inventor who came up with the idea first.  Now, I recommend an inventor get an application on file as soon as reasonably possible, even if significant and potentially substantial changes may occur during subsequent development. The failure to file quickly could be the difference between receiving a patent or not.

Read more at ColoradoBiz Magazine.

By |October 18th, 2015|BLOGGING|Comments Off on The sweet spot: When to file for your patent

Pay attention to the dancing baby

What businesses need to know before sending takedown notices

By Peter Lemire

A few weeks ago, the 9th U.S. Circuit Court of Appeals issued a decision in what has come to be known as the “Dancing Baby Case” that every business needs to know about before sending Digital Millennium Copyright Act (DMCA) takedown notices to Web hosts and other companies that host third-party content such as Facebook, YouTube, Amazon and eBay.

Although the biggest users of the DMCA are media companies and content producers, pretty much any business could find itself dealing with DMCA issues. A frequent issue in our office is competitors’ unauthorized utilization of product photographs, product videos, or logos that are protected by copyright. The DMCA has been a powerful tool for businesses to fight copyright infringement, but it is somewhat of a double-edged sword that can land companies in a host of trouble that they never expected.  While it is important to police one’s intellectual property, the dancing baby case is a good example of how knee-jerk reactions and overly aggressive enforcement can land a company in a whole host of legal trouble that it never anticipated.

Read more at ColoradoBiz Magazine.

By |September 18th, 2015|BLOGGING|Comments Off on Pay attention to the dancing baby

The rise and fall of the labradoodle

June 22, 2015

How a trademark would have made all the difference

Peter Lemire

Leyendecker & Lemire speaks to trademark issues often – with clients and within this column. In the world of intellectual property, this might seem strange. After all, patents are usually the ones in the spotlight, soaking up all of the adoration and discussion in intellectual circles. Even some intellectual property attorneys will give short shrift to trademarks and almost treat them as an afterthought – an add-on to the patent, if you will.

However, there’s good reason we spend so much time talking about trademarks: They are universal. Most businesses have them, and oftentimes they account for the vast majority of business value represented by a company’s intangible assets. Trademarks are eternal, whereas patents and copyrights have a fixed term that will eventually expire. At the end of the day, once your technology is not necessarily the newest thing, your trademark is what will differentiate your company. Additionally, trademarks can be used to great effect and commercial gain in situations where other forms of intellectual property are not available.

I recently came across an article in Psychology Today that shows not only the power of branding, but also the risks that are associated with not adequately protecting and policing your mark. The seemingly unlikely focus of this analysis is, well, a dog; specifically, a pseudo-breed that everyone knows – the labradoodle. The focus of the article is actually on the regret of Wally Conron, the creator of the labradoodle, in introducing these dogs to the world.

Labradoodles, despite what a lot of people think, are not actually a breed of dog. They are a crossbreed, or what is more commonly referred to as a mutt. So if the labradoodle is really just a mutt, then how has it earned such high stature in society, where people are willing to shell out thousands of dollars for one? One word: branding.

Read more in COBiz Magazine.

By |June 23rd, 2015|BLOGGING|Comments Off on The rise and fall of the labradoodle

It’s all in a name (or not)

Where would Amazon be if it had been called “An Online Bookstore”?

By Kurt Leyendecker

Driving into the office recently, I heard a commercial for a local small business broadcast over the radio.  A well-known local radio personality and pitchman explained the business was changing its name to one that better reflected the fact that the business offered its services for a flat fee.  I had heard this commercial probably a couple of dozen times over the previous months.  Clearly, this business was spending a lot of money on its radio campaign.

Presumably, the business sought to associate itself with the descriptive content in its new name so that potential clients and customers looking for this particular attribute would more easily find it.  I yelled at the radio, “No, bad idea!” No one heard me. Descriptive names and trademarks might boost exposure and even revenues in the short term, but in the long term, the business risks anonymity as others adopt similar names or, more likely, use a similar phrase to describe their similar services.

An example is in order, and I will use my firm as the example, rather than identify the shortsighted business.  “Leyendecker & Lemire” has been my Firm’s name since inception.  Our name, which also serves as our trademark, does not reveal anything about the services we provide.  Let’s say I convince my business partner, Pete, that we should change the name to “Colorado Flat Fee Patent and Trademark Legal Services.” To promote our new name and the fact that we provide flat fee legal services, we embark on an extensive and expensive marketing campaign.

Read more in ColoradoBiz Magazine.

By |June 2nd, 2015|BLOGGING|Comments Off on It’s all in a name (or not)

SupCo trademark game-changer

Take care around trials and appeals

By Peter Lemire

A recent decision by the Supreme Court will have attorneys and business paying more attention to what are known as “adversary proceedings” before the United States Patent and Trademark Trial and Appeals Board (TTAB).

Adversary proceedings are basically mini administrative trials that are conducted when one party believes that it will be harmed by the USPTO allowing the registration of a trademark to a third party. There are two forms of adversary proceedings: oppositions and cancellations. An opposition is when a third party objects to the registration of a mark prior to the granting of the registration.

A cancellation action is identical to an opposition, but it occurs after a registration has already been issued and the third party is seeking to cancel the registration. While these proceedings have for the most part been taken seriously, the Supreme Court decision in B&B Hardware, Inc. v. Hargis Industries, Inc. has exponentially raised the stakes due to the fact that the court ruled that a TTAB decision regarding whether there exists a likelihood of confusion between two trademarks can in some cases have a preclusive effect (meaning that the TTAB decision would be binding in the later infringement action) in a subsequent trademark infringement litigation.

Read more at ColoradoBiz Magazine.

By |April 7th, 2015|INTELLECTUAL PROPERTY, PATENTS, TRADEMARKS|Comments Off on SupCo trademark game-changer

Trademarks + marketing = power

Take Ford, for example

By Kurt Leyendecker

Anyone who has watched even a small amount of television over the past year or so is probably familiar with the Ford commercials featuring Mike Rowe of Dirty Jobs fame pitching cars with engines that utilize EcoBoost® technology.

EcoBoost engines are those that offer power comparable with that of their larger counterparts but do so at about a 20 percent improvement in fuel efficiency. The two most prominent examples of EcoBoost technology are the 4-cylinder engine in the new Ford Mustang that produces over 300 hp and the V6 engine in the F-150 that produces 365 hp as well as oodles of torque for hauling and towing. Both engines offer significant improvements in rated MPG over larger available engines not incorporating the technology.

The EcoBoost engines have been tremendously successful for Ford and are now being rolled out in more sizes and being made available for more cars in the manufacturer’s lineup. Ford’s skillful marketing and education campaign has been able to convince even skeptical truck buyers that the old adage “there is no replacement for displacement” may no longer be true. Ford has even been able to charge more for smaller displacement EcoBoost engines than its larger counterparts, thus turning a legacy of more than 50 years of automotive sales tradition on its head.

Read more at ColoradoBiz Magazine.

By |February 20th, 2015|BLOGGING, TRADEMARKS|Comments Off on Trademarks + marketing = power

Kick-starting the new year

Crowdfunding might be just what your business needs

By Peter Lemire

When meeting with clients, we often explain to them that securing intellectual property rights of inventions or products is an important step of the process, but it is just the start and sometimes is the easiest part of bringing a product to market or starting a new business venture. Millions of great ideas are conceived every day; however, just because something is a great idea does not guarantee success.

Business owners face major obstacles, including the practical realities of bringing the product to market and generating sufficient consumer awareness to sustain the business. Previously, this could be a monumental task that dooms many business ventures. However, the advent of crowdfunding sources may make the process of exposing a product to the market and making that initial purchase of inventory easier.

Crowdfunding websites such as have existed for a few years, but I never seriously considered participating in a Kickstarter project. In the early days many of the projects revolved around funding the arts – projects included independent films, musicians seeking to fund albums, and projects to launch or revive TV shows. In exchange, benefactors generally would receive tickets to the premier, copies of the film or CD or other associated swag.

Read more at ColoradoBiz Magazine.

By |January 16th, 2015|BLOGGING, INTELLECTUAL PROPERTY|Comments Off on Kick-starting the new year

Trademarks on wheels

Caveat emptor

By Kurt Leyendecker

For as long as I can remember, I have loved bicycles. In 1981, two high school buddies and I biked around Lake Ontario. The next year, two of us cycled across New England. On both these trips I rode a Motobecane, which was the premier French bicycle brand back in late 70’s and early 80’s.

My obsession with bicycles and a desire to make them stronger and lighter inspired me to get a degree in materials engineering, which I applied to building satellite components as an engineer with a major aerospace company. In the early 90’s, before becoming a lawyer, I started a company that made mountain bike components of my design. Sadly, I don’t ride as much anymore, preferring now to simply strap on a pair of running shoes. Nevertheless, I still enjoy bicycles and maintain a small stable in my garage.

A little while back, I got the desire to obtain a track bike – or “fixie,” as they are commonly known. They have been all the rage the past five years or so, as some people have eschewed multi-speed bicycles for the inherent simplicity of the fixie.

Read more at ColoradoBiz Magazine.

By |December 10th, 2014|BLOGGING, TRADEMARKS|Comments Off on Trademarks on wheels

Maximize your business’ value

The law once said that to file an application for a United States federal trademark registration, an individual or a business had to actually be using the mark in interstate commerce. That individual or business must have actually sold the goods or services to someone in another state, or their sale of the goods or services had to have had an effect on interstate commerce. There was no way to “reserve” a name prior to actual usage.

In 1989, however, the Trademark Act was amended to allow for an “intent to use” application (ITU) to be filed with the United States Patent and Trademark Office (USPTO). While actual use in interstate commerce is required to issue a registration, the ITU application allows an individual or business with the bona fide, good faith intent to use a certain mark to file an application in advance with the USPTO.

Read more at ColoradoBiz Magazine …

By |October 31st, 2014|PATENTS|0 Comments