Scott McCollister Reviews How to Take Your IP International
January 03, 2012
Scott McCollister, Partner at Fay Sharpe, discusses how to protect intellectual property outside the Uniited States in the January issue of Smart Business Cleveland.
http://www.sbnonline.com/2012/01/how-to-take-your-ip-international/
Colleen Goss on Startups and Trademark Protection
December 01, 2011
Your trademarks are what customers use to recognize your company, your product, and/or your services. Wouldn’t you want to take the necessary steps to protect your hard-earned brand identity? Many businesses, especially startups, do not think about this subject until their products are ready to launch. Some do not consider trademark protection until even later, when they run into a conflict.
If you have reached that point, you are late, says Colleen Flynn Goss, Counsel at at Fay Sharpe LLP. “It needs to happen early in the process,” Goss says. “Certainly not when the business is still a ‘shower idea,’ but definitely before your product is well on its way to market.”
If you'd like to know why that is, you can read the rest of the article at Smart Business.
Colleen Flynn Goss is Counsel at Fay Sharpe LLP, can be reached at (216) 363-9132 or cfgoss@faysharpe.com
Tim Nauman discusses with Smart Business Cleveland How Patent Law Reform will affect your Business.
October 31, 2011
The America Invents Act, passed Sept. 16, 2011, contains reforms that will affect businesses in many ways, including how they must pursue patents. One of the goals of this legislation is to standardize U.S. law with the way the rest of the world handles patents. The change that is receiving the most attention is the switch from first-to-invent rights to first-to-file. The new system goes into effect in March of 2013.
Read the rest of the article over at Smart Business.
Timothy E. Nauman is a partner with Fay Sharpe LLP. Reach him at (216) 363-9136 or tnauman@faysharpe.com.
Avoiding Trademark Scams
October 24, 2011
By Ukeme Awakessien
Have you recently received a letter stating that your trademark registration is about to expire, or asking you to list your trademark on a “registry” of trademarks? Chances are … it’s a scam.
How Did They Get Your Information?
The United States Patent & Trademark Office (USPTO) makes existing trademark registrations and pending trademark applications public record. They do so for two reasons: (i) give notice to the world of the rights being claimed, and (ii) afford entities whose own rights may be harmed by registration of the published mark the opportunity to come forward and lodge an opposition. These records include bibliographic information like the trademark owner’s name, address, mark, registration number etc. Foreign trademark offices do likewise. Unfortunately, this data is mined for a number of different scams. If you have ever applied to register a trademark in the U.S. or abroad, you will likely receive more than one such mailing.
Types of Trademark Scams
The scams can come in the form of either regular mail or e-mail. They are purposefully designed to look official and they bear detailed information about a registrant’s mark and the associated goods and/or services. Hence, they could be misunderstood to be a notice from the USPTO or other government agencies. Some warn that failure to renew your trademark will result in its abandonment. Others solicit getting listed in something termed an International Trademark Registry. One thing they all have in common is that they ask for your money.
The “registry” type of scam letter solicits listing or monitoring your trademark when your mark is already listed in a public registry maintained by the USPTO or a foreign trademark office. No additional fee is required for such publication or registration. And, the proffered “International Trademark Registry” has no legal effect. You would be wasting your money.
The “renewal” type of scam letters are often sent before it is even possible to pay the renewal fee. The scammers need to send it out early to preempt communications from the attorney that handled the trademark application.
Moreover, these scams pose a much greater risk to your trademark than just trying to sell you something you don’t want. Besides paying much more than you should to renew your mark, failure to renew a registration properly may result in loss of the special benefits of a federal registration. Failure to renew a registration of a trademark does not void all rights to the mark, since common law rights remain in the U.S, and other common law countries. But registration does confer a number of benefits, namely it serves as evidence of: a) registrant’s ownership of the mark, b) exclusive right to use the mark, and c) validity of the mark. Registering a trademark heightens the protection it receives, deters others from using your trademark, and increases the remedies should someone infringe upon your trademark.
How to Avoid the Scams.
These scams can easily be avoided if you are educated about the risks:
- If you registered your trademark through an attorney, all correspondence from the USPTO as well as any foreign trademark office will be sent directly to your attorney. One clear indicator that you have received a scam is that the correspondence is sent directly to you.
- The USPTO charges fees for any trademark according to fee schedule 37 CFR 1.27 and it is done "per class" - that is, the fees you are charged are determined by the goods and/or services that your trademark falls under. You can find fee information on the USPTO website.
- Check the source of the communication, and note where they are asking the money to be sent. An examination of the company’s solicitation may help to raise suspicions that the letter is not legitimate.
- Notify your accounts payable department to make them aware of these scams; do not allow them to be misled by the official looking “invoices.” You should always contact your attorney if you have any questions about the legitimacy of the services offered.
Unfortunately, while unethical, these scams are not entirely illegal either. If there are any doubts, companies are advised to contact their attorney in order to verify trademark-related correspondence.
Guidance for Trademark Owners on Blocking .XXX Domain Names
October 11, 2011
By: Scott Frederick Peachman
Adult entertainment providers will soon be able to register for .xxx top-level domains (TLDs) using their registered trademarks or established domain names. The .xxx TLD was created by the Internet Corporation for Assigned Names and Numbers (ICANN) to offset, regulate, and centralize adult content on the Internet. While there are advantages to the launch of .xxx TLDs, such as increased source identification for adult entertainment providers and lessened chance that children will accidently access adult websites, there is also concern that cybersquatters may embarrass non-adult companies by registering domain names similar to their brands. Concerned non-adult trademark holders can act now to protect their marks already registered on the Principal Register by applying for an “opt-out” that prevents their brands from being incorporated into a .xxx domain name.
As part of the launch of the .xxx TLDs, ICANN has instituted two concurrently running “Sunrise” periods that expire on October 28, 2011. The “Sunrise A” period applies to qualified adult entertainment providers that own nationally registered trademarks or domain names and are seeking to register .xxx TLDs that incorporate those terms. The “Sunrise B” period applies to non-adult businesses that own nationally registered trademarks (not domain names) and are seeking an opt-out to remove their trademarks from the new TLD regime in order to block third parties from acquiring .xxx domain names incorporating their registered trademarks.
The domain name sought by either adult entertainment providers or non-adult trademark holders must correspond to the entire text of a textual registered mark (or in the case of adult oriented domain name registrations, the entire domain name), or correspond to the complete textual component of a graphical or compound registered trademark. If a non-adult trademark owner’s application to opt-out of a .xxx TLD is approved during the Sunrise B period, and no adult entertainment provider has applied for the same .xxx TLD, the domain name will be blocked and resolve to a standard information page indicating that the mark is not available for registration. If both Sunrise A (adult site) and Sunrise B (general site) applications are filed for the same domain name, each party will receive notice. This would provide the Sunrise B applicant with an opportunity to negotiate an agreement preventing its trademark from being used in a .xxx domain name. If the Sunrise A applicant does not withdraw its application, however, priority will go the qualified Sunrise A applicant.
To be eligible to opt-out of an .xxx TLD during the Sunrise B period, you must own a mark that has been nationally (US Principal Register or Foreign) registered as of September 1, 2011. If you have trademarks that are not registered or are registered on the U.S. Supplemental Register and are worried about the potential misuse of your brand as a .xxx TLD, you may apply to register your common law mark as a non-resolving .xxx TLD (meaning that a blank page will be shown) during the General Availability period, which beings on December 6, 2011.
If your application to opt-out of an .xxx TLD is approved during the Sunrise B period the domain name will be blocked for ten years. If you choose to register your mark during the General Availability Period, you may do so for up to ten years.
Contact us today to reserve your mark before the end of the Sunrise B period on October 28th. Reserving your mark during the Sunrise B period provides low-cost insurance against the potential abuse of your mark by third parties. For more information regarding the application process, please contact your Fay Sharpe attorney.
Patent Publication Scams
October 11, 2011
By DeMarcus Levy
Have you recently received a notice indicating that a fee is required from you in order to publish your recently filed Patent Cooperation Treaty (PCT) or international patent applications or register your international trademarks? If so, it is likely a con.
The invoices appear to be official government communications, and are purposely designed so. The notices and associated websites often feature names and logos similar to those of the World Intellectual Property Organization (WIPO) and include biographical information about the application available in the public domain. Additionally, the invoices requesting these unnecessary fees may come in envelopes bearing the WIPO logo and mailing address. These notices typically call for a payment in Euros, U.S. Dollars, or British Pounds in the form of a check or electronic transfer to addresses in Australia, Switzerland, the Czech Republic, Hong Kong, Germany, Iceland, Slovakia, or the United States. Fees typically range between two and three thousand U.S. dollars. As you may have guessed, some of these documents even include warnings about unwarranted fees that may be charged by other companies.
False Promise:
So, where’s the fraud? Any registration or publication offered by these companies is not recognized by WIPO or any national or regional patent office and grants no rights or protections to applicants. This is so because as per PCT Article 21 only the International Bureau of WIPO is authorized to publish international patent applications or register international trademarks. No additional fee is required for such international publication or registration.
What’s so important about international publication or registration? Remember, as per PCT Article 29 an applicant, upon the publication of his or her international application or the registration of his or her international trademark, enjoys the rights and protections afforded to applicants holding national applications or marks in PCT member states that the applicant has designated in his or her PCT application.
The Response:
What has WIPO done to combat these fraud attempts? WIPO regularly places warnings about these scams in its PCT Newsletter. WIPO also posts copies of fraudulent invoices on its website (http://www.wipo.int/pct/en/warning/pct_warning.html) as they are made known. Various National patent offices (e.g. Australia, Austria, France, Germany, Israel, Japan, Switzerland, and the United Kingdom) have placed similar warnings on their websites.
Is legal action an effective way to combat this deceptive business practice? The Czech Republic and the state of Florida have taken legal action against violators within their borders. Unfortunately, these scams are not necessarily illegal, so legal action is not often an effective deterrent.
What You Can Do:
- DO NOT PAY THE REQUESTED FEE.
- Contact your patent attorney to determine if it is a deceptive invoice. If the fraudulent invoice is not currently listed on the WIPO website, have your attorney alert WIPO and also notify appropriate US government agencies (e.g. the United States Patent and Trademark Office).
- Spread the word to colleagues and complain to consumer interest groups. (This may be especially important due to the lack of effective legal responses.)
Steve Haas in "Smart Business Cleveland" on how to control your Intellectual Property costs.
October 04, 2011
Fay Sharpe's own Steve Haas was featured in this month's Smart Business Cleveland, with an article on how to plan for and control your Intellectual Property Costs. With tips for companies just getting started, and even some tips for established companies, the full article can be found at the link below.
How to develop and control your intellectual property budget for a competitive advantage
Sue Ellen Phillips Advises on How Start-ups and Small Businesses Should Handle Their Intellectual Property
September 01, 2011
In the September edition of Smart Business Cleveland, Fay Sharpe partner Sue Ellen Phillips provides insight into the importance of intellectual property for small businesses and start-ups. Click the link below to read the entire article.
August Edition of Smart Business Cleveland Features Partner, Phil Moy, Regarding Avoiding False Patent Marking Litigation
August 01, 2011
Please click on the link below to read the article featuring Phil Moy, discussing how to avoid patent marking litigation and the fines that accompany it. Phil's article can be found in the August edition of Smart Business Cleveland.
Ann Skerry Discusses How to Secure a Patent for Green Technology in Smart Business Cleveland
July 07, 2011
In the July edition of Smart Business News Cleveland, Fay Sharpe partner Ann Skerry provides information to best help secure a patent for green technology. To read the full article, click on the link below.
Sandra Koenig Contributes to Article On How To Protect Your Website
June 02, 2011
Smart Business News interviewed Fay Sharpe partner, Sandra Koenig, on the importance of protecting your website from copyright and trademark infringement. The Q&A was featured in an article published in Cleveland's June edition. You can read the article by clicking on the link below: