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Kansas City Intellectual Property Blog

IP strategies for strengthening your new idea

Often the biggest problem for building a business around a new idea or invention is not coming up with the initial concept but developing a strategy that enables it to flourish in the marketplace. Once an inventor has the idea, need to consider the landscape in the project’s category at large, business objectives of licensees, who investors will be and their objectives, as well as wooing potential customers or buyers.

Different concepts have different needs -- licensing needs an agreement drafted from a position of strength, while startups look to align business objectives with those of investors -- but here are eight strategies that can help it flourish:

Patent trolls target small business

Patent trolls are patent assertion entities who buy up patents from bankrupt businesses, auctions and inventors for pennies on the dollar. They traditionally would then use these purchases to go after large corporations and sue for infringement. They do not engage in any business other than suing operating companies.

Change in law effects targeting

Ban on offensive trademarks ruled unconstitutional

We discussed the issue of the immoral, scandalous or deceptive trademarks back in January when the Supreme Court announced it would hear the case involving the FUCT clothing line’s attempt to trademark its brand and products since 2012. The case (Iancu v. Brunetti) was obviously attention-grabbing with news reports soberly discussing the validity of curse words and explicit imagery, but the case also was a legal clash between the First Amendment right to free speech versus the United State Patent and Trademark Office’s 113-year-old policy and the Lanham Act, which prohibits immoral, explicit or scandalous trademarks.

Final ruling based on viewpoint discrimination

Infringement claims only work when there is a registered copyright

A significant change in intellectual property law took place when the Supreme Court ruled recently on a copyright infringement case. With contradictory rulings on the books in the Circuit Courts, the highest court unanimously determined that copyright infringement claims are valid only when the copyright is registered with the U.S. Copyright Office.

The old way of doing things

Disney wins again

Disney has faced lawsuits in the past regarding its movies allegedly stealing plot lines, dialogue, or likenesses. Despite these lawsuits, the company has a strong record of successfully defending itself. It was most recently in court when two writers claimed that Pirates of the Caribbean: Curse of the Black Pearl used ideas from a script the duo submitted to the company in 2000 for the popular 2003 movie.  The writers identified suspicious similarities in the scripted dialogue, plot lines, and characters. Although the plot was substantially different, the writers claimed that the film used such ideas as:

Busting some patent myths

Anyone who has needed to copyright something has likely considered the option of the so-called “poor man’s copyright.” This is where you mail yourself a copy of the work to get a postal date on the envelope proving when you mailed the material. You keep the envelope sealed and, if there is ever a dispute about when you created the content, you can present the sealed envelope with the material inside as proof.

There is no provision in U.S. copyright law that approves this type of protection. It doesn’t work. And yet the strategy has been so widely circulated over the decades that it has also been proposed as a means to patent something on your own.

How does bankruptcy impact trademark rights?

The Supreme Court of the United States settled a complex question regarding trademark rights in bankruptcy. The case, Mission Product Holdings, Inc. v. Tempnology, LLC, arose out of Tempnology filing Chapter 11 bankruptcy in 2015. The company said in light of its bankruptcy that it could no longer guarantee quality control of the trademark, and thus it would cancel a current licensing agreement with Mission Product Holding. Mission Product responded by filing suit in bankruptcy court, essentially questioning whether Tempnology’s breach of contract could actually revoke Mission Product’s license.

Rulings go both ways

2019 National Hall of Fame Inventors inducted

U.S. Commerce Secretary Wilbur Ross and the United States Patent and Trademark Office (USTPO) recently inducted 19 of the country’s greatest inventors (nine of which are still living) into the National Inventors Hall of Fame. The gala event, held at the National Building Museum in Washington, D.C., spotlighted the transformative role of innovation in our society and reminded us all of the importance of protecting our own innovations.

Congratulations to the winners

A refresher on fair use

Fair use is often cited, but many may not have a clear idea of what it is. In short, fair use is a pragmatic doctrine that allows the use of portions of a copyrighted work without approval from the copyright owner or creator. Typically, this use is done with a good faith assertion. Many may not understand the scope of its application, but fair use is a part of our everyday life.

There are no black-and-white tests for fair use. Courts typically weigh four factors to distinguish between fair use and infringement.

Trademark Registration Guidelines for Goods and Services Related to Hemp

While avoiding guidance on cannabis-related trademarks, a few weeks ago, the USPTO issued guidelines to clarify its position on trademarks related to "hemp" products and goods derived therefrom.

To register a trademark with the USPTO, use of the mark in commerce must be lawful under federal law, regardless of whether the underlying goods or services are legal under state law. The Controlled Substances Act (CSA) contained a blanket prohibition on the use of marijuana in interstate commerce, including hemp, CBD, or other extracts of the marijuana plant. As such, the USPTO has consistently refused registration of trademark applications for such goods or related services.

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