On My Mind Blog

Whether a licensee is precluded (legally called an “estoppel”) from challenging the validity or enforceability of the intellectual property rights licensed to it will depend on whether those rights are patents, trademarks, trade secrets or copyrights, and in some cases whether the license agreement has a no-contest provision.

Inaccurate information in a copyright application, though sometimes correctable, may end up costing a pretty penny.

A logo can be covered by both copyright and trademark rights.  If you commission an independent contractor to design a logo for your use, ownership of those rights may vary because there are differences between the copyright law and the trademark law in the United States.

You can preserve rights in a registered trademark if the mark’s non-use is beyond your control, and you have documented the specific steps you have taken to arrange for its use in the near future.

A non-U.S. applicant cannot use the Madrid Protocol to register a merely descriptive English word (or its foreign-language equivalent) as a trademark in the United States.  But another strategy may be available.

The Trademark Trial and Appeal Board  has decided a ”threshold legal issue” as to the registrability of a multiple color mark for product packaging.

Significant personal rights of attribution and integrity—distinct from rights under copyright—apply to some visual works of fine art. 

These are known as “moral rights” and they originated in France and Germany in the 18^th Century.  In the United States, these rights were recognized to some extent in various state and common law causes of action as well as in statutes enacted in California (in 1970) and in New York (in 1984).  In 1990, they were codified under federal law in the Visual Artists Rights Act (VARA).

Traditional lawyer demand letters can backfire.

You want your lawyers to be strongly assertive when you believe that your trademark rights are being used in an infringing or generic way.  But formal demands that the improper activity must cease have, on occasion, been posted to social media and ridiculed there, or have just been ineffective.

When a company decides to discontinue the primary use of a mark, the company nevertheless may wish to maintain its exclusive right to use that mark because the mark may continue to be associated with the company.  

The exclusive right to use an arguably descriptive trademark or service mark can be strengthened by obtaining a federal trademark registration and by filing a declaration of incontestability, when available.