Intellectual Property Lawyer
If you are seeking an Intellectual property lawyer‚ Mandour & Associates can assist you. We have offices conveniently located in Los Angeles‚ Orange County‚ and San Diego. If you are located outside southern California‚ we offer local counsel and pro hac vice services. If you are interested in a trademark, copyright, or patent related consultation, please contact us today.
Intellectual Property refers to a bundle of exclusive rights in inventions‚ brand names‚ creative or expressive works‚ and trade secrets. There are four core areas of intellectual property:
- Trade Secrets
Each unique area of intellectual property has its own requirements for protection and offers distinct rights. Often times a company’s intellectual property is its most valuable asset. Because our attorneys practice exclusively in the area of intellectual property‚ we can help you ensure that your intellectual property rights are protected.
Trademark registration provides the means for businesses and entrepreneurs to distinguish their products and services from the competition. This valuable form of IP protection also prevents competitors from using trademarks that are confusingly similar to your trademark.
The initial step in the process of acquiring a trademark involves clearing your brand before using or applying for registration of a trademark with the U.S. Patent and Trademark Office. The trademark search will verify that your trademark can be registered and will mitigate the risk of unintentional infringement.
Once you have cleared your trademark based on a properly conducted trademark search, the next step in the process involves filing your application. The application process will depend on whether you are already using the trademark in interstate commerce. A Use-Based Application must be filed if the trademark is being used while an Intent-to-Use Application should be filed to preserve the trademark for future use.
During the examination process, the assigned trademark examining attorney will analyze the application to assess the trademark’s eligibility for registration. The USPTO examining attorney will review the federal register to assess whether the proposed trademark will cause confusion with previous trademark applications and will consider other potential refusals that could prevent registration. At times the examining attorney will identify substantive issues (e.g. the trademark will cause confusion with a previously registered trademark) or procedural issues (e.g. disclaimers, specification of applicant’s entity type or name, color claims) and initiate correspondence with the applicant in the form of an Office Action.
A timely and proper response can resolve the issue so that the trademark can be approved for publication. If the response of the applicant does not resolve the issue, a Final Office Action will be issued by the examining attorney. An applicant wishing to continue pursuing the application must either file an Appeal of the Refusal with the Trademark Trial and Appeal Board or file a Request to Reconsider the Final Office Action. Strict deadlines apply, so prompt legal compliance is important.
Once the trademark is approved for publication, it will be published in the Official Gazette of the U.S. Patent and Trademark Office for a period of 30 days. During this time third parties can attempt to block registration by filing a Trademark Opposition. This opposition filing initiates an action to determine whether the party has a valid ground to block the trademark. However, properly researched and filed applications usually do not face opposition.
A recent report by CompuMark found that 81% of companies experienced trademark infringement in the last year. The first step in pursuing a trademark infringement claim if often to send a trademark cease and desist letter to the offending party. A legal claim for trademark infringement requires the party seeking protection of its intellectual property to establish the existence of a valid trademark or trademark registration. The plaintiff also must show that continued use of the trademark by the defendant will promote consumer confusion. If the trademark has been registered, an assumption exists that the trademark is valid. In cases where a trademark has not been registered, the party claiming to be the owner of the trademark must establish the existence of a protectable trademark that is sufficiently distinctive.
Establishing a Likelihood of Confusion
If the existence of a valid trademark has been established, the likelihood of consumer confusion typically will be the key issue in a trademark infringement lawsuit. The judge may consider several factors when assessing whether a likelihood of confusion exists, which include the following:
- The similarity of the impression between the trademarks (e.g. meaning, phonetic similarity, appearance)
- The similarity of the products and services
- The strength of the trademark
- The physical proximity of the associated products and services in the marketplace
- The probability that the lines of goods will be expanded
- The intent of the defendant
- Evidence of actual confusion in the market
- The anticipated degree of care by consumers in purchasing the products or services
Courts consider the similarity of the products and trademarks to be the most significant factors in determining whether trademark infringement has occurred. The court will not necessarily consider all the listed factors.
Potential Remedies in a Trademark Infringement Lawsuit
While a lawsuit for damages can be commenced in either state or federal court, the defendant frequently will petition to have the case “removed” to federal court when the action is filed in state court. The available remedies may include the following:
- An injunction to bar the defendant from using the trademark
- An order requiring forfeiture or destruction of infringing articles
- Damages sustained by the plaintiff, the defendant’s profits, and costs of the action
- An award of plaintiff’s attorney fees (in exceptional cases)
Defense Strategies in Cases Involving Infringement of Trademarks
Apart from denying that consumers are likely to be confused, a defendant in a trademark infringement lawsuit can assert affirmative defenses including: (1) parody and (2) fair use. While the First Amendment can shield a defendant who parodies a trademark, courts vary significantly in their analysis of this issue. Some courts will balance the extent of the confusion caused by the trademark at issue while other courts simply add parody to the list of relevant factors.
The fair use affirmative defense involves both nominative fair use and classic fair use. This situation often involves a party using someone else’s trademark to refer to the trademark owner’s own products or services. An example might include Yahoo running an advertisement referencing Google in a comparison of the competing search engines.
The court will employ a different likelihood of confusion test in cases involving nominative fair use. Three specific questions will be considered by the judge:
- Did the user of the trademark misleadingly imply an endorsement or sponsorship by the trademark owner?
- Did the use of the trademark exceed what was reasonably necessary to identify the trademark owner?
- Was the good or service of the trademark owner easily identifiable without the use of the trademark?
This form of IP protection extends to the creations of photographers, artists, writers, musicians, and other creators who produce works original to the creator that are fixed to a tangible medium of expression like writing on a page, saving to a hard drive, or drawing on a canvas. While copyrights offer a longer period of protection to the rights holder than a patent, this form of IP protection also is limited in duration. The term is often the life of the author plus 70 years. Copyrights offer protection for “original works of authorship,” including musical, literary, artistic, dramatic, and other specific types of intellectual works (e.g. computer software) whether published or unpublished. While copyright protection applies to a fixed expression of the work, the underlying procedures, discoveries, methods of conducting business, concepts, etc. are not protected.
Copyright holders own exclusive rights to the following:
- Reproduction of the copyrighted work
- Public performance of the copyrighted work
- Development of derivative works
- Dissemination through sale, loan, transfer, or rental
Access to and infringement of copyrighted material has expanded dramatically with the Internet providing a powerful tool for copyright infringers. The power of the web allows copyrighted works and derivatives to be transmitted throughout the world in a virtually instantaneous manner. These advances in technology pose increasing challenges to copyright holders.
Because of the pervasive influence and reach of the Internet, a company or individual’s most valuable copyrighted content can be appropriated with the single click of a mouse. A prompt response often will be essential because stolen works can be posted on the Internet and then indexed by search engines within hours of being pilfered.
When an individual or entity infringes your copyright, a typical first step is a cease and desist letter. In the event of litigation, you must make decisions regarding the proper court to file your lawsuit, the parties to name in the lawsuit, and the categories of damages to pursue. Federal courts have exclusive jurisdiction over copyright infringement lawsuits, so effective litigation of copyright violations requires expertise regarding federal evidentiary rules and procedures as well as statutory and case law. An assessment must be made to determine whether to file the lawsuit in the federal court where the infringement occurred or the court where the defendant is located.
Lawsuits for Infringement of Copyrights
When filing a copyright infringement lawsuit, the complaint must allege ownership of the copyright and infringement of those rights. Although the copyright must be registered for a party to file an infringement lawsuit, the registration need not precede the infringement. The lawsuit can be based on infringement of any of the copyright owners’ rights, including the following:
- The right to create derivative work based on the copyrighted material
- The right to reproduce the work
- The right to distribute copies (sales, lending, leasing, renting, etc.)
A copyright lawsuit may be filed by an individual or entity belonging to either one of two groups of people: (1) the owner of the copyright or (2) a party with exclusive rights granted by the copyright owner. The owner of the copyright includes the following:
- The party who created the work
- The party for whom the work was made if a “work made for hire”
- The employer of the work creator if the work was created within the scope of employment
- The copyright assignee if transferred by written assignment agreement
Enforcing Copyright Protections – Sending a DMCA Takedown Notice
When a party engages in digital piracy and uses your content without your consent, your copyright attorney can send a DMCA takedown notice pursuant to the Digital Millennium Copyright Act. The notice sent to the copyright violator must comply with the proper format. The DMCA takedown notice also must indicate that the offending party’s use of the material does not conform to the content owner’s wishes or that the use constitutes a violation of the copyright. This notice can be used even if the owner of the content does not have a formal copyright registration for the material.
Remedies for Copyright Violations
While a DMCA takedown notice often will achieve the goal of getting the infringing work destroyed or removed, a copyright infringement lawsuit must be filed for more extensive remedies. If a party violates your exclusive copyright, the damages available in a copyright lawsuit will generally involve either pursuit of actual damages and the infringer’s profits or statutory damages depending on the circumstances.
Calculation of actual damages focuses on “lost market value” at the time the infringement occurred. The content owner has the legal burden of establishing the infringer’s gross revenue while the alleged infringer has the burden of proving its expenses.
Alternatively, the author of the infringed work can pursue statutory damages under certain circumstances. This form of damages can only be awarded if the work was formally registered within three months of creation or prior to the infringement. The penalty for infringement under this provision depends on the nature of the violation. In the case of innocent infringement, the fine may be as low as two hundred dollars. If the infringement was willful, the statutory award can range from $750 and $150,000. The penalty is per infringed work not for each instance of infringement of the work.
Patent holders can use this form of IP protection to bar the competition from selling, offering, making, importing, or using an invention. Since U.S. public policy opposes monopolies, patent protection only lasts for a limited duration of time. During this time while an invention is protected by a patent, the patent holder can keep the price of the product inflated by barring competition. Patents not only protect the holder of the patent, but they also benefit the public by providing the motivation for inventors and businesses to invest time and money in the development and research of useful goods and services.
Types of Patents
Broadly speaking, patents protect three categories of inventions:
- Utility Inventions: This type of patent protects the way the invention functions, such as a light bulb.
- Design Inventions: This type of patent protects the ornamental aspects of a product, such as the pattern, shape, etc. Ornamental designs of jewelry, drink containers, and furniture can be protected by a design patent.
- Plant Inventions: This form of patent offers protection covering asexually reproducible plants.
Overview of the Patent Process
If you want to obtain a patent, you must apply to the United States Patent and Trademark Office (USPTO). The USPTO will evaluate the application to determine if an invention is patentable. Patent Statute Section 101 (codified at 35. U.S.C. 101) delineates the categories of inventions that qualify for patent protection. Under this provision, “any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof” can qualify for patent protection.
The broad scope of the statute and caselaw allows an item to be patentable if it is useful, nonobvious, and new. The application for a patent also must provide an adequate description of the invention, and the inventor must claim it in definite and clear language. Documentation of the conception process and the process of building an actual model are important.
When analyzing whether an invention meets the requirement of being novel enough for a patent, a patent search should be done. The patent search will include prior art references. Prior art references provide the basis upon which an inventor must form an opinion as to whether an invention is patentable. The investigation must examine whether the public was already aware of the invention. If an invention has been described, publicly used, or offered for sale before the filing of a patent application, the inventor may not be able to obtain a patent.
After a patent application is filed with the USPTO, an examiner will review the application based on priority in terms of the order it was received. This analysis will consider compliance with federal law regarding issues such as definiteness, the written description, enablement, and more. Communication with the patent office will be necessary during the time the patent application is pending on various issues regarding the invention.
In patent infringement claims, the patent at issue will be examined including the patent prosecution history, the language of the claim, the written description of the specifications, and extrinsic evidence when appropriate. Unless the claim explicitly defines terms in the description, the terms will be given their ordinary meaning.
Literal infringement occurs when a device at issue literally infringes on all elements of one or more claims of the patent. The elements of each of the patent’s claims will be evaluated against the alleged infringing invention.
Doctrine of Equivalents
If the accused product involves only minor trivial modifications, a patent could be infringed based on the doctrine of equivalents. Under this legal theory, an infringement exists if the accused’s invention and the individual claim limitations are substantially equivalent in their function and how that function is performed. This doctrine also applies in situations where two elements are interchangeable and a person with ordinary skill in the art of which the invention arises would have been aware of this interchangeability when the infringement occurred.
The “triple identity” test is one of several ways a court may analyze whether the differences are insubstantial. Under this test, the court will find that the differences are insubstantial if the accused invention (1) performs substantially the same way, (2) the same function, and (3) in substantially the same manner.
Remedies for Patent Infringement
Either a judge or jury will determine damages. In either situation, the court might award a maximum of three times the amount assessed or found if the infringement was willful. Expert witnesses often must be utilized to evaluate the damages, or a reasonable royalty based on the facts and circumstances. Courts take two basic approaches to assessing damages considering either a reasonably royalty or lost profits. The reasonable royalty resembles a minimum floor amount that will be awarded, but the patent owner can obtain more than this amount by seeking lost profits. The court has significant discretion in evaluating lost profits, so persuasive advocacy based on a careful analysis of relevant data can significantly affect any recovery.
Trade secrets often include some of the most important and sensitive information of a business like the KFC original recipe or Google algorithms. The term “trade secret” refers to information not known by others that has economic value because an owner keeps it secret. The scope of information that can be protected as a trade secret includes programs, patterns, formulas, techniques, processes, devices, compilations, or methods.
State law governed trade secret cases until recently, but almost every state in the U.S. has now adopted a version of the Uniform Trade Secrets Act. These statutes set forth the protocols and requirements that govern trade secrets. The Defend Trade Secrets Act was enacted in 2016 which permits federal jurisdiction and provides certain remedies that may not exist under state laws.
To be considered a trade secret, information must have economic value beyond merely its confidential nature, and the owner must have undertaken reasonable steps to keep the information secret. This secrecy typically will be maintained by utilization of network security, company secrecy policies, and use of nondisclosure and confidentiality agreements with employees, contractors, and third parties.
Trade Secret Misappropriation
If an individual or entity compromises your trade secrets, prompt action in the form of a cease and desist letter or lawsuit must be taken. Trade secret misappropriation can be either intentional or inadvertent. This form of IP infringement typically will result from theft, industrial espionage, breach of a nondisclosure agreement (NDA), bribery, or fraud.
Legal Remedies for Misappropriation of Trade Secrets
When a party files a lawsuit for trade secret misappropriation, several legal remedies can be pursued, which include the following:
Injunction: Prompt action in seeking injunctive relief can mitigate the harm suffered by a company affected by trade secret misappropriation by another party. Section 2 of the Uniform Trade Secrets Act (UTSA) permits an injunction to be imposed to protect the secrecy of a party’s trade secrets. Despite the availability of this form of relief, First Amendment issues can be raised by efforts to prevent publication of the information.
Damages: A party that engages in misappropriation can be liable for the harm suffered by the disclosure or publication of the proprietary information. The measure of this harm may include the financial losses stemming from the misappropriation as well as the profits generated by the infringing party. In the alternative, the judge could order the party that commits the trade secret infringement to pay a royalty to the owner of the improperly disclosed information. If the owner of the trade secret established that the conduct of the defendant was malicious or willful, punitive damages in an amount up to double the plaintiff’s actual damages could be awarded by the court.
Attorney Fee Award: When the court concludes that the conduct of the defendant is either malicious or willful, the defendant could be liable for the plaintiff’s attorney fees.
Common Defenses Strategies in Trade Secret Misappropriate Cases
The most common defense strategies in trade secret misappropriation lawsuits often involve challenges to the sufficiency of the evidence supporting key elements of establishing misappropriation, such as: (1) inadequate secrecy measures, (2) no breach of confidence or other improper means of obtaining the information, (3) or failure to establish the existence of a trade secret. The defendant also can argue that the information did not create a commercial advantage for the plaintiff. If the defendant establishes that a patent exists involving the alleged trade secret, the information will be regarded as public knowledge rather than a trade secret.
Fencing: This defense may be used when a plaintiff fails to take reasonable precautions to protect the information from public disclosure. Evidence supporting this defense strategy might include a lack of steps to secure access to a production facility or the failure to have an employee execute a nondisclosure agreement (NDA). The evaluation of the secrecy measures implemented will be a fact intensive process, so skilled advocacy regarding the specific steps taken, industry practices, and the surrounding circumstances will be important. Similarly, a competitor that learns about the information because it was disclosed to a third party (e.g. an employee) without an NDA might argue that its innocent use did not merit liability.
Non-Misappropriation: This defense strategy can be asserted when the holder of the trade secret does not establish that another party wrongfully acquired the information. Use of reverse engineering of a product or other items available to the public will not generally be considered misappropriation of a trade secret. A competitor also might learn about the information through its own independent research and development process.
Other Defenses to Misappropriation Claims: Some other defenses asserted in lawsuits involving trade secrets include the statute of limitations and laches. Both defenses relate to the promptness of the plaintiff in bringing the misappropriation lawsuit. The statute of limitations constitutes the deadline for commencing a lawsuit. Although the UTSA establishes a three-year period to commence a lawsuit, many states have amended this provision so that the deadline varies between three and five years. Generally, this limitation period commences at the point the plaintiff knew or should have known of the misappropriation based on the exercise of reasonable diligence. The related defense of laches allows a defense to be asserted based on prejudice suffered by the defendant because of the failure of the plaintiff to promptly assert his or her rights. A judge might determine that a plaintiff’s claim should be barred by laches if the plaintiff allows the defendant to use the alleged trade secret for a period and creates the impression the plaintiff will not take action.
Mandour & Associates – Intellectual Property Lawyers
At Mandour & Associates, Intellectual property is more than a practice area—it is our practice. We are driven to help our clients make IP a profit center for the company. If you are dealing with an infringement issue, our intellectual property lawyers will aggressively defend your rights.
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