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The law once said that to file an application for a United States federal trademark registration, an individual or a business had to actually be using the mark in interstate commerce. That individual or business must have actually sold the goods or services to someone in another state, or their sale of the goods or services had to have had an effect on interstate commerce. There was no way to “reserve” a name prior to actual usage.

In 1989, however, the Trademark Act was amended to allow for an “intent to use” application (ITU) to be filed with the United States Patent and Trademark Office (USPTO). While actual use in interstate commerce is required to issue a registration, the ITU application allows an individual or business with the bona fide, good faith intent to use a certain mark to file an application in advance with the USPTO.

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Peter writes a bimonthly column for ColoradoBiz Magazine

Peter writes a bimonthly column for ColoradoBiz Magazine

My take on Tesla

What’s really behind Musk’s blog post?

Kurt Leyendecker

Tesla Motors and its CEO Elon Musk made news in the patent and intellectual property world a few months ago with a company blog post entitled “All Our Patent Are Belong To You” (the error in the title is Musk’s, not mine). The post was most simply an indictment of the patent system.

The blog post waxes poetic about how the global threat from the internal combustion engine was far greater than any exclusionary benefit the electricity-powered Tesla might derive from its patents. Of patents he wrote, “Too often these days, they serve merely to stifle progress, entrench the positions of giant corporations and enrich those in the legal profession, rather than the actual inventors.” Boldly, he declared, “Tesla will not initiate patent lawsuits against anyone who, in good faith, wants to use our technology.”

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Kurt writes a bimonthly column for ColoradoBiz Magazine

Kurt writes a bimonthly column for ColoradoBiz Magazine

A forgotten right the government can’t take away

If you have followed the news lately, you’ve probably have heard about the United States Patent and Trademark Office’s (USPTO) board decision to cancel the Washington Redskin’s federal trademark registrations covering their name and graphical logo. The USPTO had determined that the term, “Redskin” and the graphical logo associated with the NFL team, violated trademark laws’ prohibition against scandalous or immoral subject matter at the time the mark was registered.

It should be noted that this isn’t the first time the USPTO has come to such a conclusion with respect to the football team. The courts reversed the previous determination on a procedural issue regarding whether or not the individual that brought the cancellation action had standing to sue. It was interesting to see some of the initial commentary regarding the decision and the lack of knowledge about trademark law and the nature of trademark rights.

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Peter writes a bimonthly column for ColoradoBiz Magazine

Peter writes a bimonthly column for ColoradoBiz Magazine

The K-cup story

Many years ago, John Sylvan had an idea: provide a hermetically-sealed, compact cartridge containing a filter and enough ground coffee to brew a single serving in a specially designed brewer. After the freshly brewed coffee was delivered, the remaining carcass would simply be discarded without fuss or muss. Sylvan’s brilliant idea came to him in the mid-80s. He did not begin working on the idea in earnest until the 90s. John and the company he formed had the forethought to apply for patents on his innovation.

Keurig, named after the Danish word for excellence, toiled through the 90s funded almost exclusively by investors perfecting the cartridge, which came to be known as …

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Kurt writes a bimonthly column for ColoradoBiz Magazine

Kurt writes a bimonthly column for ColoradoBiz Magazine

Hazy times for Colorado’s marijuana businesses

Many businesses are dealing with the impacts of Colorado’s foray into recreational marijuana. Often, this uncertainty is focused on how the new laws and regulations will be implemented. While compliance with the Colorado regulatory framework is often the first priority of companies associated with the marijuana industry, another important legal issue is lurking below the surface, and unfortunately how it is resolved remains to be seen. The issue concerns an area of intellectual property law that all businesses have – trademarks.

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Peter writes a bimonthly column for ColoradoBiz Magazine

Peter writes a bimonthly column for ColoradoBiz Magazine

Internet marketing and trademark trouble: Somebody else might be using your biz name

In the not so distant past, marketing and advertising a business was a particularly challenging and daunting task. Local businesses relied heavily on Yellow Pages advertising, radio and television. They had to decide how large a listing, under what categories to be listed, and/or how comprehensive a broadcast campaign they could afford.

The cost could be substantial and no matter how large the listing, the amount of information conveyed was relatively small. Depending on the product and services, the businesses might also have to print brochures to be handed out or mailed to prospective consumers. If a mistake were made, the businesses would have to wait an entire year to make corrections.

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Kurt writes a bimonthly column for ColoradoBiz Magazine

Kurt writes a  column for ColoradoBiz Magazine

The perils of third-party IP policy shifts

A client recently gave me a head’s up about some new developments in YouTube’s Content ID System that was causing an uproar in the gaming community and with others who monetize their YouTube videos.

The conflict stems from what appears to be over-aggressive actions on YouTube’s part to attempt to deal with copyright infringement on its service. While YouTube’s actions may not directly affect a lot of mainstream businesses, it can serve as a good lesson for those that use third-party providers to host and disseminate content for their business and how a change in policies by these third parties can radically affect one’s business.

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Peter writes a bimonthly column for ColoradoBiz Magazine

Peter writes a bimonthly column for ColoradoBiz Magazine

The murky law of fair use

Weird Al doing a Michael Jackson song parody?

In our practice, we deal not only with the enforcement of intellectual property rights, but we also do a fair amount of defense of accused infringers. One of the surest ways of getting into an intellectual property dispute (aside from illegally downloading movies using

BitTorrent) is to make reference to, mention or otherwise utilize someone else’s intellectual property.

While this may seem obvious, it can creep up in the business context in unexpected ways. Generally speaking, business will cite that they are allowed to do their activities under the doctrine of “Fair Use.” Additionally, it is important to note that there is a difference in running afoul of the law and being embroiled in a conflict with another business. While a company’s actions may be justified legally, it may still find itself in a dispute which can cost a lot of money, time and resources.

Peter writes a bimonthly column for ColoradoBiz Magazine

Peter writes a bimonthly column for ColoradoBiz Magazine

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A fool’s bargain: Part 2 – Think before you sue

(Editor’s note: This is the second of two parts. Read Part 1.)

In the first part of this article, I discussed what trademarks are, what they protect and what factors courts generally use to determine if a trademark has been infringed.  In this installment I will be discussing how courts have dealt with the rise of keyword advertising and the use of trademarks in keyword advertising.

Peter writes a bimonthly column for ColoradoBiz Magazine

Peter writes a bimonthly column for ColoradoBiz Magazine

In the early days of the keyword advertising cases, the courts struggled with some threshold concepts, such as whether bidding on someone else’s trademark was a use in commerce. Some courts said yes, and some said no. After many years, everyone seems to agree that even though the consumer never sees the keyword bidding process, that the act of bidding on another’s trademark as a keyword is a use in commerce.

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A fool’s bargain: Part 1 – Should you sue over keyword advertising?

 

One thing is guaranteed; the law will always lag technology. That’s just the way it is. However, eventually the law catches up and usually comes up with the right result.

Peter writes a bimonthly column for ColoradoBiz Magazine

Peter writes a bimonthly column for ColoradoBiz Magazine

 

Such is the case with paid search advertising such as Google Ad-words. In case you have been living under a rock for the past decade, paid search advertising is where a company purchases web-based advertising that is triggered by users typing certain keywords into a search engine.  When the user types in their query, the search engine will display the paid ads in addition to the organic search results. The ads generally contain a few lines of text and will have a link that directs you to the advertiser’s website.

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