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Intellectual Property

In the intellectual property area, I mainly handle matters involving copyrights and trademarks.  I do trademark registrations, trademark consultation, and trademark litigation in the Trademark Office and in the federal courts.  I do copyright consultation and copyright litigation in the federal courts.  I’ll represent plaintiffs or defendants.  I have also handled matters involving trade secrets, right of privacy, right of publicity, and non-competition clauses.

Attorney fees in an intellectual property lawsuit are almost always charged on an hourly basis, and not on a contingency basis.  Applications to register copyrights or trademarks are usually done on a limited flat-fee basis.

Very Briefly About Intellectual Property

Copyright is available for works of artistic, literary or musical expression — a book, article, or software code, a painting, photograph, video, or sculpture, a song or other composition.  If your property consists of an invention, a process, or a material — a better mousetrap, a better way of emptying the trap, or a better substance for bait — you probably want patent protection.  If you want to protect a brand name, marketing slogan, or the look and feel of a product or service, what you probably need is trademark registration.   Here’s a link to a page that explains more about the differences.

Copyright

If you are the person who created the work of artistic, literary or musical expression, and you did it for yourself, not as an employee of someone else, then you can probably do the copyright registration yourself.  It’s fairly straightforward and the explanation on the form is clear enough.  It isn’t economical to have a lawyer do a simple, straightforward copyright registration for you.  Copyright registration is inexpensive,  and lasts a long time.  You can now do registration for most items online, here. If approved — and it almost always is — the Office issues you a copy of your application form with a registration number and date stamped on it.   The process of getting the certificate takes anywhere from ten weeks to 18 months, but your protection starts on the filing date.

If you’re an employer who hired someone to do the creative work for you, then the copyright registration can be tricky, and you’ll need other documentation as well.  Consulting legal counsel would be a good idea.  You might also want to consult counsel if your copyright involves other complexities, such as contributions to collective works, multiple authors, conflicting claims of authorship, copyright assignments and licenses, etc.  It’s also a good idea to get legal advice about copyright notices — when, how, what, where, why.

I do copyright consultations, registrations, and litigation in the federal courts.  Here’s a link to the main copyright website.

Patent

If what you want is a patent, I will try to refer you to patent counsel.   Patent applications are expensive and patents don’t last very long.  You can also search FindLaw for patent attorneys in your area.

Trademarks

Your brand name, marketing slogan, or the look and feel of your product or your service are candidates for trademark registration.  Trademark registration is more expensive than copyright but less than patent; if your mark remains in use, the registration can be renewed indefinitely.  Federal registration takes a year to 18 months from filing, and you get an impressive folder with a gold seal.  Trademark registration gives you the right to attach the ® symbol to your mark, and to prevent more recent market entrants from using a mark that is the same or confusingly similar.  You can obtain trademark registration cheaply from state trademark authorities, but those generally don’t carry much clout and are arguably a waste of money.  Any business that operates on more than a local scale — any business that solicits clients over the Internet — will want registration on the Principal Register with the federal Trademark Office.

Applications for trademark registration are complex and present a minefield for the unwary.  Although you can, in principle, file one yourself, I don’t recommend that you do so if you have a serious investment in the mark.

Once a registration certificate issues, you the client need to calendar the renewal dates;  neither the Trademark Office nor my office sends out advance notices.

For most trademark registrations, I charge a flat fee that covers all processing and fees involved in  preparing, filing, and updating the application through issuance of the registration certificate, unless the Office rejects the application for substantive grounds that require filing a brief.  In that case, the flat fee agreement terminates and we have to switch to an hourly fee arrangement.

I will always, as a rule, give you notice ahead of time if I think that your application runs the risk of being rejected on substantive grounds.  I will, of course, do a search of the Register and also a Google search for possibly conflicting marks before starting the application process.  More specialized searches of trade directories and proprietary databases are also available.

Below is a selection of trademarks that I have registered for clients.

If you become aware of someone else using a mark confusingly similar to yours in the same or a related market, or if you receive a letter from a competitor who claims that you are infringing their trademark, you should promptly consult counsel.  If you fail to act against infringers, you could lose your trademark rights.  If you fail to respond to a claim of infringement from someone else, you could not only lose your trademark rights but also be forced to pay damages and attorney fees.

Other Issues

If you’re an employer hiring someone in a creative area, or entering into a contract with a supplier for copyrightable goods, or an employee hiring on, then you may have a trade secrets issue.  You may need a trade secrets clause in your contract and a Nondisclosure Agreement.

Trade secrets issues also link up with non-competition clauses; as a rule of thumb in California, a non-compete clause is probably worthless unless the employee is deeply involved in a trade-secret area and plans to work in that same area for a competitor.

If you’re a celebrity, or the heir of a deceased celebrity, and someone is using the celebrity likeness without your permission, you may have a right of privacy / right of publicity claim.  These are neighbors to the law of libel and slander.  Call me if you have issues in these areas.

A Selection of Trademarks I Have Registered for Clients

I’m skipping most of the word marks; they aren’t at all interesting to look at.  But you should know that you don’t need a graphic design to register a trademark.  In fact, the plain word marks are usually the strongest marks, and the marks that incorporate words in a fancy design, a special font, or in combination with a graphic are sometimes weaker and narrower.

[In progress]

 

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