On July 1, a new law took effect in the Commonwealth of Virginia that provides trademark owners an additional enforcement tool for trademark infringement actions.  Under the Virginia Trademark Counterfeiting Act, the state’s trademark law is expanded so that marks registered with the USPTO — rather than simply marks registered with the state — are covered by the law.  Thus, owners filing suit in Virginia for infringement of a federally registered trademark can seek remedies under both the federal Lanham Act and the Virginia state act.

The new law also increases the criminal penalties for trademark infringement in Virginia.  The first act of infringement is considered to be a class 1 misdemeanor, with a penalty of up to 12 months in jail and/or a fine of $2,500 (i.e., doubling the sentencing period, and increasing the fine by 150%, compared to the previous law).  If an infringer possesses 100 or more copies of a same infringing merchandise, the penalty may be increased to five years in jail, or in the alternative one year in jail and a $2,500 fine.

For the full text of the changes to Virginia’s trademark law, click here.

On May 8, 2008, the U.S. House of Representatives passed H.R. 4279, known as the Prioritizing Resources and Organization for Intellectual Property Act  — “PRO IP” for short.  The bill would revise various enforcement-related revisions to U.S. copyright and trademark laws.  Key sections of the bill include:

• a revision to the Copyright Act protecting the validity of copyright registrations that have a harmless error — specifically, the revision will excuse any inaccuracy in a copyright certificate of registration so long as the inaccuracy was not knowingly put into the application and correction of the inaccuracy would not result in refusal of registration;
• sections increasing statutory damages in counterfeiting actions and allowing treble damages in trademark infringement actions involving counterfeit goods if the violation was intentional;
• an expansion of Section 602 of the Copyright Act (which prohibits importation of infringing copies) to also cover exportation;
• a section increasing the government’s authority to sieze property used in connection with copyright infringement; and
• the creation of an IP Enforcement Division in the U.S. Department of Justice, the appointment of an IP adviser to the President, and the appointment of IP enforcement officers in foreign countries.

A companion bill is expected to be introduced into the U.S. Senate soon. 

On March 14, the USPTO published a final rule amending its regulations for trademark registration.  Under the new rule, each application to register a mark that includes anything other than standard characters must include a description of the mark.

The USPTO already requires this for “TEAS Plus” applications, which are applications that are entitled to reduced fees due to, among other things, the applicant’s acceptance of standard descriptions of goods and services.  Under the new rule, all applications containing non-standard character marks must comply with the written description requirement.  

According to the notice, the USPTO plans to issue an examination guide with guidelines relating to written descriptions in the near future.

New England Patriots fans may be wondering about that this week:

Maybe the New York Post will have better luck with its application to register 18-1.  On the other hand, there is also USPTO application number 77/387,275:

Special thanks to Erin-Michael Gill of OQO for the tip!

When forming a new company, one of the first things many corporate formation specialists will do is determine whether the name is available with the corporate registrar of the intended state of incorporation.   However, business specialists don’t always consider the potential trademark issues associated with corporate name selection.  “Clearance” of a company name by a Department of State (or similar entity) only determines that there are no other corporations, partnerships, LLCs, unincorporated associations, businesses using fictitious names, etc.  in the relevant state with exactly the same name. Note that: 1) there may be companies with the same or a similar name that are incorporated in other states but do business in the state in which the new company will operate, and 2) there may be businesses operating in the new company’s market whose trademark or service mark is similar to the new company’s name.  If you are concerned that any of these other entities might object to use of the new company name, a trademark search should be performed before selecting a name for a new corporate entity.

A common question that I receive relating to patents and trademarks is “how long will my application take?”  The U.S. Patent and Trademark Office just released new statistics that can help answer that question.

According the the USPTO’s 2007 Performance and Accountability Report, the average time between the filing date and issuance of the first office action for patents is 25.3 months, while the average total pendency (i.e., time from the filing date to either patent issuance or abandonment) is 31.9 months.  For trademarks, the average time from filing to first office action is 2.9 months, and the average total pendency is 15.1 months.

The statistics show improvement in the area of trademarks, but longer waits for patent applications.  For trademarks, the USPTO reduced both time to first action and overall pendency in each of the last four years.  In fact, the USPTO reduced the average time to first action for trademarks by more than half — from an average of 6.6 months in 2004 to only 2.9 months in 2007.   However, patent application pendency increased in each of the last four years, and the average time to first action increased from 20.2 months in 2004 to 25.3 months in 2007.

Although not mentioned in the USPTO’s 2007 Report, the statistics vary based on the type of application.  For example, the time involved in a patent application largely depends on the technology, with applications in the areas of computer networks, cryptography and e-commerce averaging 36 months or more to first action according to recent reports. 

A USPTO press release relating to the 2007 Report describes other significant statistics, including the fact that patents were granted on only 51% of patent applications examined in 2007 (compared with a 72% allowance rate in the year 2000).

As both a Pittsburgh Steelers fan and an IP attorney, I especially enjoyed the recent reports of a new consumer survey, the 2007 Turnkey Team Brand Index, that compares the relative strengths of various professional sports brands in their home markets.    Read the rest of this entry »

When performing due diligence, it often suprises me how often a company claims to have no intellectual property or other intangible assets.  However, even a company with no patents, registered trademarks or registered copyrights will have a significant amount of its value tied to intangible assets such as customer and supplier relationships, reputation, and other elements generally associated with goodwill.  In my last post, I wrote about preventive actions that a company can take to help manage adverse events that can damage a company’s goodwill.  In this post, I’ll discuss actions that a company can take after an adverse event — and hopefully after it took preventive actions — in order to guard against long-term harm to its brand. Read the rest of this entry »

Last week I had the opportunity to attend the annual meeting of the Intangible Asset Finance Society.  The meeting provided a forum for panelists and attendees to share ideas about how a company can best protect its intangible assets.  Intangible assets include not only legal assets (patents, trademarks, copyrights, trade secrets) but also other intangible competitive advantages (such as know-how, customer goodwill, and supplier/distributor/collaborative relationships).  Various sources have estimated that intangible assets make up between 65 and 80% of the market value of most S&P 500 companies. 

One of the most interesting discussions related to actions that companies can take to protect the security of valuable brands.  Although registration and enforcement of a trademark is important for brand security, managing the goodwill associated with a brand can be even more important.  Goodwill can have many elements:  reputation, consumer loyalty, perceived ethical standards, and collaborative relationships all factor into the overall perception of a company’s goodwill. 

Goodwill can erode quickly when an adverse event occurs.  We’ve all seen examples of recent challenges to corporate goodwill:  lead paint on toys, harmful bacteria on produce, external tampering with pharmaceutical packaging, potentially illegal activity by employees, accidental disclosure of customers’ personal information.  How well a company recovers its goodwill in such a situation depends in large part on the company’s preparation for such an event.

The panel discussed many actions that a company can take in order to protect its brand security.  Recommendations included: Read the rest of this entry »

The recent news about the availaibility of “Wikiscanner,” a website that allows users to see who edits various Wikipedia entries, serves as a reminder that Internet monitoring to protect a company’s business can include a wide array of activities.  Many companies have marketing staff to monitor and edit Wikipedia entries for descriptions of a company’s products - as well as entries for the company itself. 

The news also serves as a reminder that Internet monitoring should be a part of the IP protection strategy for any company that derives value from its brands, copyrightable works or technology.  Online policing is a multi-faceted activity.  Depending on the nature of the IP to be protected, monitoring activities can be directed to: 

• chat rooms, message boards and blogs for discussions relevant to a company’s technology or brands;
• auction and resale sites for counterfeit goods and trademark infringement;
• audio, video, text and file sharing sites;
• phishing and other activities where an emailer or website poses as another company.

Several service providers offer software that automates at least some the monitoring activities, although it’s always best to include humans in the review, especially those who are familiar with the company’s IP so that they can recognize potentially problematic activity.  In addition, companies should be careful about how and when to initiate enforcement activities against online piracy, as in many cases a “cease and desist” letter can trigger adverse publicity or even a lawsuit.  Because of this, online monitoring should be a coordinated effort between a company’s legal counsel and marketing team.