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WHD Intellectual Property Counseling & Protection Blog

Beware of Unofficial Solicitations Regarding Your Trademarks & Domain Names

by Melinda S. Giftos, posted Wednesday, March 07, 2012

Image Have you recently received one or more official-looking notices or invoices relating to your trademarks, but were unsure who the notice was actually coming from? Does the notice indicate for a small fee, you can obtain registration or monitoring services? Were you surprised the notices were sent to you directly from the trademark office rather than through your attorney? If you answered yes to these questions, you have probably been the recipient of one or more trademark registry scams. Read more...

U.S. Patent and Trademark Office Launches America Invents Act Online Guide

by Michael J. Cronin, posted Wednesday, September 28, 2011

Image On September 16, 2011, President Obama signed the America Invents Act (AIA) into law. The AIA makes numerous changes to U.S. Patent Laws. To help with the transition, the U.S. Patent and Trademark Office (USPTO) has created an on-line guide that contains information about the changes the Act will bring. Some of those changes, such as patent fees, went into effect on Monday, September 26, 2011.  Other changes will fall into place over the next twelve to eighteen months. The site also includes a timeline that shows some major highlights in the coming year.  Finally, the USPTO website provides the opportunity to submit comments on the AIA and the agency’s implementation of the law.

President Obama Signs Leahy-Smith America Invents Act

by Michael J. Cronin, posted Friday, September 16, 2011

Image Earlier today President Obama signed the Leahy-Smith America Invents Act (AIA) into law, just several days after the USPTO issued the eight millionth patent. The AIA represents the most comprehensive change to U.S. Patent Law in more than 50 years. While many provisions do not take immediate effect, the provision mandating a 15% increase in many USPTO fees takes effect on September 26, 2011. If you have an application nearly ready to be filed, a patent maintenance fee due, or an issue fee that can be paid, taking action by September 26, 2011 will avoid the 15% fee increase.

President Obama to Sign AIA

by Michael Cronin, posted Wednesday, September 14, 2011

Image As reported by Fox news, President Obama will sign the "America Invents Act" Friday with an event in the Washington, DC area. Speaking to reporters on Air Force One, White House Press Secretary Jay Carney said, "The America Invents Act passed with the president's strong leadership after a decade of effort to reform our outdated patent laws. Patent reform is an issue both the White House and Congress have pushed for some time. The America Invents Act, previously known as the Patent Reform Act of 2011, was passed by the House in June with large bipartisan support. The U.S. Senate approved the House version of the bill last week voting 89-9.

It is Almost Time to Block Your Trademark From the .XXX Domain Registry

by Melinda S. Giftos, posted Wednesday, August 24, 2011

Image This year, the Internet Corporation for Assigned Names and Numbers (ICANN) approved a new .XXX top level domain (TLD) for the online adult entertainment industry. This is great news for the porn industry. However, companies in other industries aren't so excited about the prospect of having to register their trademarks with .XXX domain names, or alternatively, potentially allowing third parties to register their trademarks with the .XXX TLDs and then link the domain to porn sites. But all is not lost, and ICANN has set up a procedure for trademark owners to protect their marks.
The .XXX domains will become available in stages. From September 7, 2011 through October 28, 2011, concurrent "sunset" periods will run whereby owners of registered trademarks both inside and outside the adult entertainment industry may take action to reserve .XXX TLDs corresponding to their registered trademarks. One of the sunset periods, "Sunset B," is specifically geared toward non-adult industry owners of registered trademarks. During this time, trademark owners can reserve their trademark.xxx to prevent others from registering and using the domain name. However, to be eligible, the owner must hold a valid US or foreign trademark registration for the exact mark that it is seeking to block as of September 1, 2011. The owner must also pay a one-time fee, which has not yet been finally determined but is expected to be $200-$300. Once filed,, the blocked .XXX domain name will link to a standard page stating that the domain has been reserved, and the trademark owner will not be listed in WHOIS in connection with the domain and will not actually own the registration.
After the sunset periods end, general availability for all .XXX TLDs will begin on December 6, 2011.
If you have registered trademarks you would like to block from the .XXX TLD, or if you have further questions, please contact Mindi Giftos at (608) 234-6076 or mgiftos@whdlaw.com for more information.

Western District of Wisconsin holds that the patent marking statute, 35 USC § 292 is constitutional

by Melinda S. Giftos, posted Tuesday, March 15, 2011

Image In the wake of two recent district court rulings that the patent marking statute, 35 U.S.C. § 292 is unconstitutional, the United States District Court for the Western District of Wisconsin has stepped into the fray to disagree. On March 15, 2011 in an Opinion and Order on defendants' motion to dismiss in Hy Cite Corporation v. Regal Ware, Inc.Case No. 10-cv-168, Hon. William Conley held that the patent marking statute does not violate the "take care" clause of Article II of the United States Constitution. The finding was based in large part on the history of qui tam actions and the fact that the government can in fact intervene if it so chooses. The decision can be read here. The court also applied the Rule 8 pleading standard in determining the sufficiency of plaintiff's allegations in the complaint. This is contrary to many other district courts, who have required plaintiffs to adhere to the heightened standard of Rule 9 in pleading false marking claims.

The Risk of Using Adwords Continues to be Unclear ...

by Christian D. Lavers, posted Tuesday, December 14, 2010

The pending 4th Circuit case Rosetta Stone Ltd. v. Google Inc. continues to create interest and argument about the use of Adwords. Amici briefs filed in the case are highlighting both the variety of trademark law matters raised in the case, as well as several splits in jurisdictions on these issues.  
Last year, the district court granted summary judgment to Google, finding that Google’s sale of trademarks owned by Rosetta Stone as Adwords was not trademark infringement because: (i) Google’s use of these trademarked terms was not likely to confuse internet users, and (ii) under the functionality doctrine, Adwords were an essential function of Google’s product and therefore were protected use. This application of the functionality doctrine was in opposition to the 9th Circuit case Playboy Enter., Inc. v. Netscape Communications Corp., where the 9th Circuit rejected the functionality doctrine when finding that the marks at issue performed a source-identifying function for Playboy, and therefore functional use by Netscape was irrelevant. The Rosetta Stone case also involves nominative fair use issues, similar to the 2nd Circuit case Tiffany (NJ) Inc. v. eBay Inc., 600 F.3d 93, (2d Cir. 2010), where the 2nd Circuit held that a defendant “may lawfully use a plaintiff's trademark where doing so is necessary to describe the plaintiff’s product and does not imply a false affiliation or endorsement by the plaintiff of the defendant.” Finally, the lower court opinion in Rosetta Stone also touched on contributory infringement liability – specifically whether Google’s sale of trademarks owned by one party as Adwords to another party is intentionally inducing trademark infringement.
Over 30 parties have filed amici briefs with the 4th Circuit in Rosetta Stone, and with so many issues that will potentially be addressed, the case may be a seminal case on the intersection of the internet and trademark law. Stay tuned...

Latta Introduces New Patent Marking Legislation

by Mindi Giftos, posted Tuesday, October 12, 2010

Image Recently, Congressman Bob Latta (R-Bowling Green) introduced new legislation in response to the wave of patent marking lawsuits that have been filed since the Federal Circuit issued its decision in Forest Group v. Bon Tool, which increased possible damages for violations to potentially $500 per article (as opposed to $500 per violation). The legislation, H.R. 6352, the Patent Lawsuit Reform Act of 2010, would revert back to the standard that courts were applying prior to Bon Tool and violators of Section 292 of the Patent Act would be fined a single $500 fine if found guilty of false patent marking. The legislation will also require the individual bringing the false marking lawsuit to have suffered actual harm to have standing. Currently, any individual may bring a claim on behalf of the United States for false patent marking.
“Because of the Forest Group decision, this legislation is now needed to help companies fend off frivolous lawsuits and strengthen current law. During this time of economic uncertainty, companies should not have to worry about expending additional resources on lawsuits based on one court’s interpretation of current law,” Latta stated after introducing the legislation.
The full text of the legislation is not yet available, but you may track the bill's progress and read the press release here.

Federal Circuit Raises the Stakes in Patent Marking Cases

by Mindi Giftos, posted Thursday, September 02, 2010

Image On August 31, 2010, the United States Court of Appeals for the Federal Circuit issued its decision in Stauffer v. Brooks Brothers. In its opinion, the Federal Circuit held that the plaintiff patent attorney did have standing to sue Brooks Brothers as a qui tam plaintiff. The court also held that the United States had a right to intervene in the patent marking case. This much anticipated decision is likely to embolden would-be patent marking plaintiffs and the number of patent marking lawsuits will undoubtedly continue to grow. If your company has not yet completed product review to ensure markings are correct and up-to-date, now is a very good time to do so.

False Patent Marking: There Must Be an Intent to Deceive

by Melinda S. Giftos, posted Thursday, June 17, 2010

In December 2009, the U.S. Federal Circuit Court of Appeals issued a landmark decision, Forest Group v. Bon Tool Inc., holding that the statutory penalty of up to $500 for false patent marking should be imposed for each article falsely marked, as opposed to each patented product at issue.  As a result of this decision which sanctions potentially huge damage awards, false patent marking lawsuits have begun pouring into the courts.
However, last week in Pequignot v. Solo Cup Company, the Federal Circuit held even though marking products with expired patent numbers does constitute false patent marking, a plaintiff cannot prevail in a false marking case unless the false marking was done with intent to deceive the public. The required intent must be more than mere knowledge that the patent marking is false. A defendant can rebut a presumption of intent to deceive by providing "credible evidence that [the] purpose was not to deceive the public." Such evidence could include relying on the advice of counsel, or reducing business costs when remarking products constantly would be heavily burdensome. This case does provide some good news for patent holders as it will be more difficult for patent mismarking plaintiffs to recover the large amounts of potential damages if there is no evidence of an intent to deceive the public.

Shortcomings of the UDRP and Domain Name Disputes

by Christian D. Lavers, posted Monday, May 03, 2010

Image The Uniform Domain Name Dispute Resolution Policy (UDRP) was designed to provide a quick, low-cost arbitration-like process for resolving domain name disputes.  Governed by the World Intellectual Property Organization, a UDRP complainant must establish that (i) the domain name at issue is confusingly similar to their trademark, and (ii) that the domain name is used in bad faith. While the UDRP is effective in many situations, the case Volvo Trademark Holding AB v. Volvospares.com illustrates one of its big problems—proving bad faith in "grey areas."
In this case, the domain name www.volvospares.com was used to sell low-priced parts for Volvo cars; the problem was that the registrant had no connection with Volvo. When Volvo filed a complaint under the UDRP, the arbitrator did not find the domain to have been registered in bad faith because the website had a disclaimer that it was not related to Volvo, and there was no other proof of misrepresentation. However, when Volvo filed a federal cyber-squatting complaint, where the discretion of the judge is far broader, Volvo won transfer of the domain name. The court found what should have been clear in the UDRP—there was intent to divert sales using the Volvo mark.
The case illustrates one of the problems with the UDRP. While the UDRP is very efficient and effective in open-shut cases, it is often better to file a cyber squatting complaint where more complex issues of fact will arise.

Rescuecom Drops Google Adwords Lawsuit After Six Years of Litigation

by Melinda Giftos, posted Tuesday, March 09, 2010

Image After six years of battling with Google in the courtroom over Google's sale of Rescuecom's trademarked adwords, Rescuecom has dropped its trademark infringement lawsuit.
As we previously wrote, in April 2009, the Second Circuit Court of Appeals held that Google's sale of trademarked adwords constituted "use in commerce."  This holding was a major victory for Rescuecom as some courts had previously been readily dismissing adwords cases on this issue at the very early stages of litigation.  The case was remanded to district court where Rescuecom next had to prove that the sale of trademarked adwords also constituted "likelihood of confusion," the second prong of a trademark infringement action.  The case has been closely followed by both the business and legal communities since the issue of whether use of trademarked adwords can constitute trademark infringement is largely unsettled.
So why would Rescuecom simply drop its important case after years of litigation?
Apparently Rescuecom found itself on both sides of the adwords action.  Rescuecom purchased the Google adwords "geek squad" to optimize its own search engine ranking.  In October 2009, Best Buy demanded that Rescuecom stop using "geek squad" as an adword.  Rescuecom then quietly brought a declaratory judgment action in the Northern District of New York claiming that its use of the "geek squad" adwords was legitimate.  Best Buy counterclaimed, alleging trademark infringement and substantially the same allegations Rescuecom had asserted in its Google case.  That case is still pending.  It appears, however, that Rescuecom found it difficult to argue both sides of the issue.  Unfortunately, this means the Rescuecom case will not result in the precedent many were waiting for.
Interestingly, however, this issue is still percolating internationally.  In September 2009, the European Court of Justice's Advocate General issued an advisory opinion which held that use of trademarked keywords by Google or third-party users through Google's AdWords program did not constitute trademark infringement.  Instead, the Advocate General found that Google was providing information society services.  The advisory opinion, however, is not binding and several cases are still pending in European courts, including the heated adwords lawsuit between Louis Vuitton and Google.

Court Confirms that No Trademark Registration is Required to Pursue an Anticybersquatting Case

by Christian D. Lavers, posted Monday, December 21, 2009

Image The US District Court for the Central District of California confirmed that the trademark ownership that is necessary to pursue a claim under the Anticybersquatting Consumer Protection Act (ACPA) does not require ownership of a federal trademark registration. (See Monex Deposit Co. v. Gilliam, C.D. Cal., No. CV 09-287, 12/3/09.) In making this decision the court recognized that common law trademark rights and ownership will support an ACPA claim even if the trademark owner has not obtained a federal trademark registration. While this decision is not surprising based on the language of the ACPA statute, (which requires trademark ownership, not specifically registration), it provides case law for common law owners to rely on in asserting these claims.
The court also held that the fact that a third party may own a registration for the same mark at issue but on different and distinctive goods and services, (thus preventing confusion between the marks), will not prevent assertion of an ACPA claim by a common law trademark owner. This decision is also consistent with federal trademark law, but provides further ammunition for common law trademark owners in ACPA suits, and presumably in UDRP actions and other domain name dispute resolution procedures.

Beware of Trademark Registry Scams

by Melinda Giftos, posted Wednesday, November 18, 2009

Image Have you recently received an invoice for an international trademark registration fee and wondered in which country the mark was registered? Was the invoice legitimate looking, yet somewhat confusing? Were you wondering why you received the invoice directly rather than through your trademark attorney? Hopefully you thought about all of the above and inquired into the situation a bit more. The sad reality is that there are several overseas organizations, such as www.patentonline.org, which use these types of letters and their hoax websites to extort money from unwitting businesses. You are more likely to become duped if you have a large, international trademark portfolio, so registration and maintenance costs are nothing out of the ordinary; or if you typically handle all such fees directly in house.
A client recently received an invoice for the registration fee of one of its marks for almost $2,500 from the "Register of International Patents and Trademarks." It contained a drawing of the client's trademark with a registration number (which coincidentally corresponded with the client's U.S. Reg. No. for the mark) and a "Published" date (which corresponded to the U.S. Registration Date). The fine print: 
"Dear madam, and sir, the publishing of the public registration of your patent is the basis of our offer. We offer the registration of your Patent dates in our private Database. ... Our offer will be accepted, with the payment of the amount, and becomes a binding contract between you and ODM srl, is irrevocably binding for one year. Please notice that this private registration hasn't any connection with the publication of official registrations, but is a solicitation without obligation to pay, unless our offer is accepted...." 
Had they paid the fee, they would have received registry in nothing more than an unofficial, private registry. It was a scam. The clear lesson is to always carefully review invoices and correspondence such as this. If you receive any invoices for trademark or patent fees, carefully review the invoice to ensure it matches up with your company's trademark portfolio. Be vary of invoices that do not clearly indicate a known patent and trademark registry, such as the U.S. Patent and Trademark Office. If your attorney has assisted you with the trademark application/registration, you should not be receiving invoices directly. Last but not least, always read the fine print. Of course, if you have any doubt, be sure to consult with your trademark attorney to verify whether it is legitimate. While you would never want to miss an important fee deadline, you certainly do not want to fall prey to this type of scam.

Novel Applications of Trademark Law: "Reflashing" Cell Phones Could Constitute Trademark Infringement

by Christian D. Lavers, posted Tuesday, October 06, 2009

Image The Northern District of Texas has held that the question of whether modifying a cell phone so that it could work on a third party's mobile phone network (or "reflashing" the phone) constitutes trademark infringement must be determined at trial—and not by summary judgment. The key question: does reflashing constitute "use in commerce" as required under the Lanham Act?
In the case, MetroPCS Inc. v. Virgin Mobile USA LP, MetroPCS took branded Virgin Mobile phones and "reflashed" them so that they could work on the MetroPCS cell network. The Virgin Mobile phones were originally locked so that they could only function on a Virgin Mobile cell network—and obviously the phones bear the Virgin Mobile trademark. Virgin Mobile is arguing that reflashing the phones to operate on a different network in effect creates new phones—thus satisfying the "use in commerce" requirement—and therefore the fact that the phones still bear the Virgin Mobile trademarks constitutes trademark infringement.
The case illustrates a novel application of trademark law, and while its ultimate success is still undetermined, it may open the door to new application of trademark law in the information technology arena.

McDonalds Loses Trademark Infringement Suit Against McCurry's

by Christian D. Lavers, posted Tuesday, September 08, 2009

Image An 8-year legal battle ended last week between McDonald's Corp. and the restaurant McCurry over use of the prefix "Mc." McCurry is a restaurant in Kuala Lumpur that serves traditional Indian and Malaysian food, but with a "fast-food ambiance" (see mccurryrecipe.com/). McCurry describes itself as the "first Indian Fast Food Outlet" in Kuala Lumpur.
McDonald's sued McCurry in 2001 for trademark infringement for use of the prefix "Mc"—but the Malaysian Federal Court affirmed a lower court ruling last Tuesday that there was a distinguishable difference between hamburgers and curry ("McCurry" is short for Malaysian Chicken Curry according to the owners of McCurry).
Interestingly, the McCurry restaurant also uses a red and white color scheme, and also uses a smaller tagline under the name—which looks very similar to the "millions and millions served" tagline under the well-known McDonald's signs. Taken together—a stated intent to create "Western style fast-food ambiance", a similar color scheme, similar signage, and a similar name with the same dominant prefix—it seems a good argument that there was a clear intent to evoke the image associated with McDonald's. Perhaps a trade dress lawsuit would have been more appropriate than a straight trademark infringement suit based only on the word mark itself. In fact, if you look at the McCurry home page there is a video showing the interior of the restaurant—which looks almost identical to any McDonald's restaurant.

The Federal Circuit Overturns the TTAB's Standard for Fraud

by Melinda Giftos, posted Monday, August 31, 2009

Today, the Federal Circuit reversed the Trademark Trial and Appeal Board's ("TTAB") finding of fraud in Bose Corp. v. Hexawave, Inc., 88 USPQ2d 1332 (TTAB 2007).  In Bose Corp. v. Hexawave, Inc., the Bose Corporation was no longer manufacturing and selling audio tape recorders and players when it renewed its WAVE trademark for use with several goods, including the tape recorders and players.  However, Bose was still repairing its tape players and believed that such services constituted use in commerce of the mark.  The TTAB held it was not, and that by signing its renewal declaration of use, Bose had committed fraud on the Patent and Trademark Office ("PTO").  The TTAB then cancelled Bose's WAVE trademark registration.  Bose appealed the decision to the Federal Circuit, claiming that it had not engaged in fraud on the PTO.
The Federal Circuit held that even though Bose was incorrect in its belief that repairing tape players and recorders was appropriate use in commerce of the mark, it had not committed fraud.  The Federal Circuit reiterated the standard for fraud and held that subjective intent to deceive is required for fraud claims to invalidate a trademark registration.  Mere negligence is not sufficient.  By equating a "should have known" standard with subjective intent to deceive, the TTAB erroneously lowered the fraud standard to a simple negligence standard.  However, a trademark is obtained fraudulently under the Lanham Act only if the applicant or registrant knowingly makes a false, material representation with the intent to deceive the PTO.
This has been a long awaited decision and will certainly have an impact on the TTAB's increasing willingness to cancel trademark registrations for errors - whether intentional or not.  You may review the full opinion at: http://www.cafc.uscourts.gov/opinions/08-1448.pdf .

The Adword Wars Continue

by Melinda S. Giftos, posted Tuesday, August 18, 2009

Image In April 2009, the Second Circuit Court of Appeals issued a favorable ruling to Rescuecom, finding that Google's sale of adwords - which often include third party trademarks - constituted "use in commerce" of trademarks under the Lanham Act. The Rescuecom ruling has since prompted a flurry of lawsuits against Google, with claims that its sale of adwords to third parties and competitors constitutes trademark infringement.
These cases face a variety of challenges, however. One of the most difficult hurdles for plaintiffs will be proving a likelihood of consumer confusion - something none of them have yet done.  Another substantial obstacle is Google's aggressive defense of its Trademark Adwords Policy. Indeed, Google has taken a very proactive approach in the adword litigation arena.  In May 2009, a class action lawsuit was filed against Google in the Eastern District of Texas. After failing to serve Google for two months, Google turned the tables on its would-be opponent and filed a complaint in late July 2009 against the individual named in the class action seeking a declaratory judgment and a breach of contract claim.
That has not stopped the action, however. The newest trademark owner to join the adwords wars against Google is Flowbee International, Inc., who filed a complaint in the Southern District of Texas on August 13, 2009.
Stay tuned for more developments.

Kappos confirmed as New USPTO Director

by Ted J. Barthel, posted Tuesday, August 11, 2009

With no notice to the public, and after the Senate was reported to have adjourned for their August recess, on Friday, August 7, 2009, David Kappos was confirmed as Undersecretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office.  Prior to his confirmation, Mr. Kappos spent his entire career with IBM – both as an electrical engineer and later as a patent attorney. His most recent position at IBM was Vice President and Assistant General Counsel, Intellectual Property Law.
The intellectual property community is generally pleased with the Kappos nomination.  Mr. Kappos is seen as a patent office director who has a global perspective on intellectual property in view of 20 years of private sector experience at IBM.  Mr. Kappos appears ready to balance (i) innovative approaches to catch the  intellectual property system up to the twenty first century while (ii) maintaining the value of intellectual property.
Mr. Kappos received his Bachelor of Science Degree in Electrical and Computer engineering from the Universityof California Davisin 1983, and his law degree from the University of California Berkeley in 1990.  He joined IBM in 1983 as a Development Engineer and has served as an Intellectual Property Law attorney in IBM’s Storage Division and Litigation group, as IP Law Counsel in IBM Software Group, as Assistant General Counsel in IBM Asia/Pacific, and IBM Corporate Counsel and as Assistant General Counsel.

Copyright 101 for Bloggers - Killing the Myths

by Deborah Spanic, posted Thursday, March 26, 2009

Image Blogs obtain copyright protection from the moment they are published on the web. Therefore, bloggers as a rule should have a basic understanding of how copyright law applies to their blogs, and the content of others that they may reference in their blogs. This post provides a very high-level summary of some key points of U.S. copyright law that bloggers should be aware of—note that laws will vary in other jurisdictions, and as always, this post does not constitute legal advice. You should consult a copyright lawyer if you need specific advice.
KILLING THE MYTHS #1 — If it's older than 50 years it's in the public domain.
First things first, there is no provision in the Copyright Act which states that anything older than 50 years is in the public domain. Yet I usually hear this urban legend at least 2-3 times per month. In fact, determining whether an older work is still protected by copyright can often be quite complex due to the myriad of changes in U.S. copyright law since the early 20th Century, and requires an evaluation of a whole host of factors, including whether the work was created by an individual or a company, the year it was published, whether the copyright registration was renewed and when, just to name a few. The safe bet is to just assume that the work is copyrighted and go from there.
KILLING THE MYTHS #2 — If it is on the internet, I can do what I want with it.
Websites, photos on the internet, blog posts, tweets are all protected by copyright. Let me repeat that again—if it is text, photos, graphics, images and it's on the internet, unless it states otherwise, it is protected by copyright. Let me state that yet another way—just because it is on the internet does not mean that you can copy, duplicate, repost, and use it in any way you want. Copyright protects works of authorship fixed in a tangible medium. A blog post is a work of authorship. Text on a web page is a work of authorship. A photograph is a work of authorship. And a hard drive is a tangible medium, so content on the web is protected by copyright.
KILLING THE MYTHS #3 — Since I'm not yet making money off my blog, anything I copy is "fair use."
Fair use analysis is about as complex as determining whether an older work is protected by copyright (see Myth #1 above). There are hundreds of cases that analyze and apply the fair use factors, including an analysis of the purpose and character of the use (is it commercial or for non-profit educational purposes), the nature of the copyrighted work, the amount and substantiality of the portion of the work used in relation to the whole, and the effect of the use on the potential market and value of the work. See 17 USC 107. In other words, it's quite complex and highly fact specific. This is one area where it is never safe to make assumptions, and if you want to be more confident that your use is fair, consult with an experienced copyright attorney.
KILLING THE MYTHS #4 — If it doesn't have the (c) legend, it's not protected by copyright.
First, see Myth #2 above. Next, copyright law as of 1977 does not require the (c) legend for a work to be protected by copyright—a work is AUTOMATICALLY protected once it's fixed in a tangible medium, (c) or not. However, if you want to go after someone who may be infringing, you need to provide constructive notice, and the (c) with the year of publication and owner information (i.e. (c) 2009 — Whyte Hirschboeck Dudek S.C., Milwaukee, WI) provides that notice. See 17 USC 401(b) for the notice provisions under the Copyright Act.
As always, seek legal advice from an attorney that specializes in copyright law if you are concerned about properly protecting your own work, or not infringing on others. Blog safe out there.

TTAB Clarifies Open Issue Regarding Fraud

by Melinda S. Giftos, posted Thursday, February 05, 2009

Image The Trademark Trial and Appeal Board recently issued a precidential opinion clarifying the role of fraud in multi-class trademark applications. In G&W Laboratories, Inc. v. G W Pharma Limited, the Board held that multi-class trademark registrations can be viewed as a series of separate registrations with regard to each class of goods and services. In using that view, if one class is invalid due to fraud, only that class is affected, not the entire application.
G&W Laboratories represents a positive step by the Board in clarifying how the evolving "fraud" standard should be applied. While trademark registration owners need to continue exercising proper diligence in ensuring all information in trademark registrations are correct, they no longer have to fear the harsh penalty of losing trademark rights in an entire multi-class registration based on errors in single class.
To view the full G&W Laboratories decision, please click here.