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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 www.kickstarter.com 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

My take on Tesla

What’s really behind Musk’s blog post?

Kurt Leyendecker

Tesla Motors and its CEO Elon Musk made news in the patent and intellectual property world a few months ago with a company blog post entitled “All Our Patent Are Belong To You” (the error in the title is Musk’s, not mine). The post was most simply an indictment of the patent system.

The blog post waxes poetic about how the global threat from the internal combustion engine was far greater than any exclusionary benefit the electricity-powered Tesla might derive from its patents. Of patents he wrote, “Too often these days, they serve merely to stifle progress, entrench the positions of giant corporations and enrich those in the legal profession, rather than the actual inventors.” Boldly, he declared, “Tesla will not initiate patent lawsuits against anyone who, in good faith, wants to use our technology.”

Read more at ColoradoBiz Magazine

By |September 22nd, 2014|PATENTS|0 Comments

A forgotten right the government can’t take away

If you have followed the news lately, you’ve probably have heard about the United States Patent and Trademark Office’s (USPTO) board decision to cancel the Washington Redskin’s federal trademark registrations covering their name and graphical logo. The USPTO had determined that the term, “Redskin” and the graphical logo associated with the NFL team, violated trademark laws’ prohibition against scandalous or immoral subject matter at the time the mark was registered.

It should be noted that this isn’t the first time the USPTO has come to such a conclusion with respect to the football team. The courts reversed the previous determination on a procedural issue regarding whether or not the individual that brought the cancellation action had standing to sue. It was interesting to see some of the initial commentary regarding the decision and the lack of knowledge about trademark law and the nature of trademark rights.

Read more at ColoradoBiz Magazine

The K-cup story

Many years ago, John Sylvan had an idea: provide a hermetically-sealed, compact cartridge containing a filter and enough ground coffee to brew a single serving in a specially designed brewer. After the freshly brewed coffee was delivered, the remaining carcass would simply be discarded without fuss or muss. Sylvan’s brilliant idea came to him in the mid-80s. He did not begin working on the idea in earnest until the 90s. John and the company he formed had the forethought to apply for patents on his innovation.

Keurig, named after the Danish word for excellence, toiled through the 90s funded almost exclusively by investors perfecting the cartridge, which came to be known as …

Read more at ColoradoBiz magazine…

Hazy times for Colorado’s marijuana businesses

Many businesses are dealing with the impacts of Colorado’s foray into recreational marijuana. Often, this uncertainty is focused on how the new laws and regulations will be implemented. While compliance with the Colorado regulatory framework is often the first priority of companies associated with the marijuana industry, another important legal issue is lurking below the surface, and unfortunately how it is resolved remains to be seen. The issue concerns an area of intellectual property law that all businesses have – trademarks.

Read more at ColoradoBiz Magazine …

Internet marketing and trademark trouble: Somebody else might be using your biz name

In the not so distant past, marketing and advertising a business was a particularly challenging and daunting task. Local businesses relied heavily on Yellow Pages advertising, radio and television. They had to decide how large a listing, under what categories to be listed, and/or how comprehensive a broadcast campaign they could afford.

The cost could be substantial and no matter how large the listing, the amount of information conveyed was relatively small. Depending on the product and services, the businesses might also have to print brochures to be handed out or mailed to prospective consumers. If a mistake were made, the businesses would have to wait an entire year to make corrections.

Read More at ColoradoBiz Magazine

By |March 20th, 2014|TRADEMARKS|0 Comments