Intellectual Property Blog 2018-08-17T16:06:15+00:00

Intellectual Property Blog

SOUTHEAST ASIA IP UPDATE: Malaysia Joins Madrid System

By Stephen D. Wilson | October 30, 2019 On September 27, 2019, Malaysia joined an intellectual property (IP) treaty that will benefit U.S. brand owners who wish to protect trademark rights in Southeast Asia. Madrid System The Madrid System for the International Registration of Marks (Madrid System) is a trademark treaty that covers over 120 countries, representing more than 80% of world trade.  The Madrid System is governed by the Madrid Agreement and the Protocol relating to that Agreement (Madrid Protocol).  The Madrid Union is made up of Contracting Parties to the Madrid Agreement and the Madrid Protocol. Malaysia On [...]

By | October 30th, 2019|Categories: Intellectual Property|0 Comments

Branding Considerations: Trademarks and the Spectrum of Distinctiveness

When choosing a brand name or slogan, an often-overlooked consideration is the strength of potential trademark protection.  Whether a fresh-faced entrepreneur starting a new business or a seasoned marketing expert, anyone who creates a brand must contemplate the degree of protection afforded to that mark. To obtain protection under U.S. trademark laws, marks must be “distinctive” with respect to the goods or services for which they issue.  Protectable and enforceable marks are either inherently distinctive or have acquired distinctiveness through secondary meaning.  Below is the “spectrum of distinctiveness,” or levels of strength under U.S. trademark law, from strongest to weakest [...]

By | August 1st, 2019|Categories: Blog, Intellectual Property|0 Comments

INTERNATIONAL TRADEMARK UPDATE: New Madrid Union Members

The U.S. is a party to a number of intellectual property (IP) treaties.  These treaties help IP owners in the U.S. protect rights internationally, and help foreign IP owners to protect rights in the U.S. Madrid System One of these treaties is the Madrid System for the International Registration of Marks (Madrid System).  The Madrid System facilitates international trademark protection in numerous countries by providing a system for a trademark owner to obtain an international registration that has effect in each of the designated Contracting Parties who are members of the Madrid Union.  The Madrid System is governed by the [...]

By | July 31st, 2019|Categories: Intellectual Property|0 Comments

COPYRIGHT LAW UPDATE: New CASE Act Bills Introduced in Congress To Create Copyright Small Claims Tribunal

On May 1, 2019, two U.S. copyright bills referred to as the “Copyright Alternative in Small-Claims Enforcement Act of 2019” or “CASE Act of 2019” were introduced in the U.S. House of Representatives (H.R. 2426) and the Senate (S. 1273). The CASE Act bills propose to create a voluntary small claims system to adjudicate copyright infringement claims, as an alternative to federal court litigation.  The proposed CASE Act would create a new Copyright Claims Board (CCB) in the United States Copyright Office (USCO).  The proposed CCB would involve a panel of three Copyright Claims Officers with the power to award [...]

By | May 13th, 2019|Categories: Intellectual Property|0 Comments

BRANDING CONSIDERATIONS: The Importance of a Trademark Search

Imagine being ordered by a court to immediately stop using your name.  How difficult would it be to: (1) choose a new name; (2) notify everyone of your new name without referencing your prior name; and (3) destroy all materials containing your prior name? Now imagine being ordered by a court to immediately stop using a trademark in which you have invested substantial time, money, and effort to build brand recognition and goodwill.  How difficult and expensive would it be to: (1) start over with a new brand; (2) notify customers, vendors, licensees, franchisees, referral sources, and others of your [...]

By | May 2nd, 2019|Categories: Intellectual Property|0 Comments

U.S. Supreme Court: Copyright Owners Must Register Works Before Filing Copyright Infringement Lawsuits

The United States Supreme Court has ruled that copyright owners must register their works prior to filing suit against infringers. In Fourth Estate Public Benefit Corporation v. Wall-Street.com, LLC, 586 U.S. ____ (2019), the Court held that registration is a statutory prerequisite to a copyright infringement lawsuit. Faced with a circuit split over whether filing a copyright application would suffice over full registration by the U.S. Copyright Office, the Court relied on the plain language of the Copyright Act to reach its decision. The Copyright Act states that “no civil action for infringement of the copyright in any United States [...]

By | March 7th, 2019|Categories: Intellectual Property|0 Comments