Microsoft Settlement Final

According to the Des Moines Business Record, Polk County District Judge Scott Rosenberg has just given final approval to the Microsoft settlement agreement. In the settlement, Microsoft will pay up to $179.95 million in cash to consumers and $67.2 million to the class action attorneys. One of the attorneys, Roxanne Conlin noted that the payments would be spread out across 150 separate people who worked on the case.

To receive payment for past purchases of Microsoft software, visit www.IowaMicrosoftCase.com before December 14, 2007.

Brett Trout

Microsoft antitrust

Engineers Show Patent Reform Bill is Anti-Inventor

According to the New York Times, the IEEE, the largest professional society of electrical engineers, may have put the final nail in the coffin of the very anti-inventor Patent Reform Act of 2007.

In a letter to Speaker of the House Nancy Pelosi and Senate Majority Leader Harry Reid, the IEEE points out that the Patent Reform Act is a "disincentive to inventiveness" and "stifles new businesses and job growth." The IEEE believes the Patent Reform Act creates an environment "harmful to individual inventors and small business."

By undermining the current protections afforded inventors under the current patent system, the Patent Reform Act would allow large companies to exploit inventions of smaller players, creating a huge disincentive to innovate. Consumers will not see any price breaks. Instead, if the Patent Reform Act were to pass, consumers would likely be paying higher prices to larger companies selling older, less efficient, technology. Under the current system, which fosters innovation, customers spend less money, with smaller companies, which have developed better, faster solutions.

The Patent Reform Act simply strips away the protections and rewards patents afford smaller, more innovative companies, ensuring such innovations, and the benefits they provide consumers, never see the light of day.

Brett Trout

Patent Reform Patent USPTO

Maybe they could trademark their middle finger

Oprah's ex-boyfriend, movie critic Roger Ebert is in a bit of a tiff with Disney over what Ebert feels was an "offensively low" offer to continue hosting At the Movies with Ebert and Roeper. Ebert responded with a counter-offer. Instead of responding with a counter-counter-offer however, Disney implied Ebert could use his proprietary two thumbs to position the counter offer well beyond the reach of his proctologist.

Registered as a federal trademark in 1995, Gene Siskel and Roger Ebert began using the "two thumbs up" designation as far back as 1986. According to the movie review website Rotten Tomatoes, Ebert is claiming that it was Disney that unilaterally decided to stop using the iconic thumbs designation after receiving Ebert's counter-offer. Disney-ABC maintains that it was Ebert who decided to withhold the thumbs until a new contract was signed. As for now, the show seems to be proceeding without Ebert or thumbs while Ebert continues to write movie reviews for his website.

While he waits for an answer that may never come, at least Roger Ebert can use his trademarked thumbs as tiny backrests for two fist-sized chairs.

Brett Trout

Disney Ebert trademark two thumbs up

The Best Patent Lawyer in the World

In researching my continuing series on finding the best patent lawyer in the world, I ran across a particularly interesting post on Stephen Nipper's Invent Blog. Stephen posted a great video produced by a successful toy inventor. Rather than recommend a particular attorney, the inventor recommends strategies for finding a patent lawyer with a skill set and hourly rate most suited to your needs.

One of the best pieces of advice the inventor gives is contacting inventors to find out how they feel about their patent attorney AFTER the process is over. This is great advice, but you are really limiting your research to that narrow group of people whom the patent attorney made happy. If the patent attorney only gets 5% of his or her clients patents, those 5-10% are probably pretty happy. This still gives you a 95% chance of being unsatisfied with the process.

A better solution might be to use the United States Patent and Trademark Office to search patent applications, rather than issued patents. This will give you the opportunity to contact satisfied, as well as dissatisfied inventors.

Other helpful patent attorney finding advice from the video:

Search patents by inventor city to find inventors who can refer local patent attorneys;
Locate inventor contact info through Google, call them and ask them if they liked their attorney.
Speak with several patent attorneys before you decide which one to hire.
You do not always get what you pay for.

That last point is pretty important. Many time larger market attorneys charge much higher rates and are much less responsive, especially to small inventors. If you live in a large market, you may want to search a smaller market city where the attorney's response may be better and the overhead smaller.

Brett Trout

best patent lawyer inventor USPTO

Yankee Fan Gang Fashion

Feenin' about increasing your chances of getting shanked at the next Yankee/Red Sox game without having to rely on just your personality and getting your crunk on? Grab one of new NY gangsta hats from New Era. Choose from a Bloods, Crips or Latin Kings motif*. Heck, why not collect them all. Just be sure not to wear them all at the same time, as the surgeon general has determined this may drastically increases your chances of lead poisoning. Yes folks, this is the first MLB officially licensed product the mere wearing of which runs the same risk of mortality as returning sunglasses to OJ's ex.

No trademark infringement here, these are, or were, officially licensed products. That is until MLB received a Cat 5 storm of protest. Now, according to Silvia Alvarez, the league's director of multicultural and charitable communications, MLB is trying to get the hats off store shelves. Multicultural equanimity aside, this incident threatens to further tarnish the already beleaguered trademarks of the MLB. Between steroids and off-field antics, pro-gang hats could not have come at a worst time for a sport trying to entice kids back to the ballpark.

*If you want to represent with a NY hat, you better do it soon. And, oh yeah, just remember to pack the gat, or you might not be back.

Brett Trout

trademark MLB New Era

Taste that contract before you steal it . . .

. . . because if you don't, having it rammed down your throat is going to be a mighty unpleasant experience.

Last week Rush Nigut wrote a great post on his blog about copying other companies' employee handbooks. I see the same thing when it comes to companies and their online contracts.

The thing about stealing contracts is that, like smoking, one puff is probably not going to kill you. Over time, however, your three pack a day habit is going to catch up to you in an ugly way. By the time a problem arises, it is often too late to stave off disaster.

The beautiful thing about online commerce is its scalability. For not too much extra effort, you can increase your sales tenfold. Unfortunately, bad decisions, like stealing contracts, can increase your liability tenfold as well.

I have seen companies steal terms of use agreements and privacy policies from websites that have nothing to do with their line of business. Not even taking the time to read the contracts, they unwittingly leave in the original company's name, address and preferred jurisdiction. An Iowa company looks pretty awkward explaining to a court why their contract dispute should be tried in Albuquerque.

Terms in contracts are construed against the drafter. If you leave in an ambiguity, the court will read it in favor of the people suing you. That is why lawyers take such care in customizing contracts to your business and its goals.

Standard terms of use policies and online contracts are relatively inexpensive. If you need a lot of custom changes to the standard policy, the cost goes up. The more customization your company requires, however, the more likely a stolen contract would have gotten you into hot water by failing to address the unique aspects of your company.

Finally, there are a few attorneys out there that take a special pride in drafting online contracts from scratch. They also take particular umbrage at people stealing the fruits of their labor. Sometimes even going so far as to include a unique string of words in their contracts which makes the contracts easy to Google-trace.

So even before your stolen contract has an opportunity to get you in hot water with your clients, it may get you an copyright infringement injunction which shuts down your entire website.

Brett Trout

ebusiness Terms of Use Contracts

Technology Attorneys Are So HOTTTTTTTTTT!!!

All those swirlies have finally paid off. With the new electronic discovery rules, every lawsuit needs a technology attorney, but there are only so many to go around. New rules, and a new way of litigating cases has turned these 98 pound weaklings into Charles Atlas overnight (Yes, I realize that line is at the same time too fresh and too old to appeal to anyone).

According to the Technology Counsel Blog, technology attorneys are becoming "more popular than a water fountain in the Sahara." Even technology/law guru Dennis Kennedy is feeling the fervor when he notes "I now am feeling that the arrival of these types of roles in which a premium is placed on being able to understand, work, and be comfortable in the intersection of law and technology is closer that I had been thinking."

If you do not have access to technology counsel in litigation, the next 18 months are going to be a wake-up call. Unfortunately, by the time you realize you do need a date to the big dance, it will be too late. Stop the swirlies, towel off the nearest technology counsel and start developing the relationship you will sooner, rather than later, not be able to live without.

Brett Trout

electronic discovery technology counsel FRCP

Mange à Entrepreneurs - Des Moines

No, that is not a misspelling; it is just lunch.

You have read me discussing Mike Colwell in this blog before. Mike is a friend of Des Moines area entrepreneurs and is currently assisting several start-ups reach their maximum potential. Mike is not the kind of guy who does your fishing for you. He teaches you how to fish. He is an expert guide with lots of experience. What places him above most others in his field is that he will tell you if he does not think your project has the "Right Stuff." The words may be harsh to hear, but they could just guide you toward another entrepreneurial venture with a better fit and a greater potential.

If you want to meet Mike, sign up for the Business Innovation Zone's (BIZ) first networking event on Wednesday August 22nd from Noon to 1:30. If you are interested, be sure to RSVP by the end of business today, Monday, August 20th. The event will be in the Arthur Davis conference room at the Greater Des Moines Partnership at 700 Locust St in Des Moines. The featured speaker will be Steven Smith, President and CEO of GCommerce. He will be talking about early stage equity funding for startup business, and what has changed in recent years.

Lunch will be provided and there will be plenty of time for networking. The cost for the event is $8 for members, and $12 for non-members. Sign up now by emailing Mike at mcolwell@desmoinesmetro.com

Hope to see you there!

Brett Trout

BIZ Des Moines entrepreneur

Patented Booty Call

According to engadget, Samsung has filed a patent on a phone that tracks a woman's fertility. The phone apparently tracks the temperature of a woman's ear, mapping the cool before the heat to pinpoint the best day for ovulation.

Brett Trout

patent Samsung phone

Nobody Puts Baby in the Corner

According to a lawsuit filed by Lionsgate Entertainment, at least fifteen companies are selling T-shirts emblazoned with that famous phrase from the movie Dirty Dancing. The Hollywood Reporter, Esq. reports that Lionsgate is alleging trademark infringement under the Lanham Act, unfair competition under California's Business & Professions Code 17200, common law unfair competition and copyright infringement.

Not surprisingly, I was not able to find a federal trademark for "Nobody Puts Baby in the Corner" registered to anyone. While the absence of a federal trademark registration does not mean that Lionsgate cannot sue under the Lanham Act, it makes one wonder why Lionsgate never federally registered such a valuable trademark.

Perhaps we can find the answer in the United States Patent and Trademark Office (USPTO) Trademark Manual of Examining Procedure (TMEP):

1202.03(f)(i) Slogans or Words Used on the Goods

Slogans or phrases used on items such as t-shirts andsweatshirts, jewelry, and ceramic plates have been refused registration as ornamentation that purchasers will perceive as conveying a message rather than indicating source of the goods. See Damn I'm Good Inc. v. Sakowitz, Inc., 514 F. Supp. 1357, 212 USPQ 684 (S.D.N.Y. 1981) ("DAMN I'M GOOD," inscribed in large letters on bracelets and used on hang tags affixed to the goods, found to be without any source-indicating significance); In re Pro-Line Corp., 28 USPQ2d 1141 (TTAB 1993) (BLACKER THE COLLEGE SWEETER THE KNOWLEDGE primarily ornamental slogan that is not likely to be perceived as source indicator); In re Dimitri's Inc., 9 USPQ2d 1666 (TTAB 1988) ("SUMO," as used in connection with stylized representations of sumo wrestlers on applicant's T-shirts andbaseball-style caps); In re Astro-Gods Inc., 223 USPQ 621, 624 (TTAB 1984) ("[T]he designation 'ASTRO GODS' and design is not likely to be perceived as anything other than part of the thematic whole of the ornamentation of applicant's shirts."); In re Original Red Plate Co., 223 USPQ 836 (TTAB 1984) ("YOU ARE SPECIAL TODAY" for ceramic plates found to be without any source-indicating significance).

Unfortunately for Lionsgate, copyright does not protect names, titles, slogans, or short phrases either.

Notwithstanding the foregoing, Lionsgate might have a shot if they can show consumers associate T-shirts bearing the phrase "Nobody puts baby in the corner" as indicating merchandise supplied by Lionsgate, or if Lionsgate can show the phrase is a sufficiently famous trademark that use by third parties on goods like T-shirts dilutes their trademark. Methinks, however, that these claims seem tenuous, at best. I would love to see how this one plays out, but I see it ending with a settled whimper, rather than a judicial bang.

In this case, it appears Lionsgate may be relying more heavily on its prima donna persona to win this pas de deux than on any true legal tango. If Liongate's tiny dance partner can survive long enough to chassez, Lionsgate could be left looking like it has two left feet. (I apologize profusely for channelling Gene Shalit, but I have very little control over these things).

If Lionsgate takes this all the way to a jury, another line from that movie may just spring to mind. "You were right Johnny, you can't win no matter what you do!"

Brett Trout

slogans Lionsgate trademark copyright

Free Resourse For New Online Businesses

The American Bar Association has just launched a new website for online entrepreneurs. SafeSelling.org provides tips and insight on legal issues ranging from legal structure, for which you should probably retain a knowledgeable business lawyer, to registering a domain name, which you can probably do yourself.

Although the site is a little light on patent, trademark and copyright information, next to this blog, SafeSelling.org is probably the most comprehensive resource on the internet for entrepreneurs looking to create an online presence.

Thanks to Mike Cowell for the heads up.

Brett Trout

ABA online business entrepreneur

Inventor Defies Experts

Rob Law, inventor of the trunki ride-on suitcase for kids, is riding high on success the experts said would never happen. According to the Daily Mail, Mr. Law appeared on the BBC show Dragon's Den, where a successful entrepreneur, a tycoon and a business leader all told Mr. Law that the invention was worthless.

The panel declined a £100,000, but now may have egg on their faces. Since appearing on the show, Mr. Law has sold over 85,000 in trunkis in over twenty countries. The trunkis have a retail price of £25 and with airport waits on the rise sales of the child-sized portable seats show no sign of slowing. Says law about the ordeal "It just goes to show you should never give up."

Brett Trout

entrepreneur invention Dragon's Den

What is Your Lawyer Hiding?

Attorneys make money because they know things you do not. In the past, some attorneys attempted to drive business by increasing the mystery associated with the profession. They did this by increasing the perception of the attorney/client knowledge gap. These attorneys parlayed hundred dollar words and a pedantic (I’ll only charge you $50 for that one) tone into repeat business. From the time I first entered the profession, however, I noted that these attorneys were typically the least knowledgeable and least skilled.

In addition to drumming up business, the witch doctor approach serves to conceal the attorneys lack of skill and knowledge. What better way to keep you from finding out I am not the best lawyer in the world than making you feel stupid from the start. You might not like me, but you are much more likely to hire me than if you thought I was incompetent.

The good news is that clients now are far more savvy than they were even a decade ago. They know more about the law, ask better questions and do their research. Most of the new clients that walk into my office already know quite a bit about me and the law just from reading my blog. Starting the meeting with some sense of what they want and who I am allows us to cut right to the chase.

The quality of legal representation is tied directly to how much pertinent information you provide to your attorney. Educating yourself about the area of
law and your attorney can lower your bills and leverage the effectiveness of your
legal representation. The next time you need an attorney, see what the web has to say about him or her. Do some searching. Is there a lot of information about the attorney available? Does the attorney provide information about his or her specialized area of the law?

Or is the attorney hiding in a tiny corner of the Internet, hoping no one asks to see the man (or woman) behind the curtain.

Brett Trout

best lawyer hiring a lawyer

SCO Goes Down in Flames

According to Ryan Paul of ars technica, Federal district judge Dale Kimball ruled Friday that Novell owns the Unix copyrights and that SCO owes Novell for royalties SCO received from Microsoft and Sun. If this ruling stands, it will be the death knell for SCO.

Now where are we on Linux?

Brett Trout

Novell Unix SCO Microsoft Sun

Johnson & Johnson Both Red and Cross

Johnson & Johnson began using the Red Cross trademark for its products as far back as 1887. According to the Kilmer House:

In 1895, as a contingency plan, Robert Wood Johnson the first and Fred Kilmer had started discussions with Clara Barton about the use of the Red Cross symbol. The Johnson brothers asserted that they had established the right to use the trademark they had been using for eight years. As a result, after a number of meetings, an agreement was signed between Johnson & Johnson and the American National Red Cross on January 29, 1895 that recognized Johnson & Johnson’s rights. It stated “It is agreed that the said Johnson & Johnson are now and for a long time past have been entitled at common law and otherwise to the exclusive use of the symbol of a red cross as a trade-mark.” The document was signed by R. W. Johnson and Clara Barton. Finally, a decade after the agreement, President Theodore Roosevelt signed legislation protecting the American Red Cross’s use of the red cross mark, but at the same time reserving the rights of Johnson & Johnson to use it too.

For over a century, the American Red Cross (ARC) and Johnson & Johnson (J&J) have existed in harmony, with ARC using the trademark in conjunction with relief efforts and J&J using the trademark in association goods such as first aid kits. Recently however, ARC has been licensing third parties to use the red cross trademark in association with things like surgical gloves, combs and toothbrushes.

In response, J&J sued ARC for trademark infringement, issuing this press release:

Johnson & Johnson began using the Red Cross design and "Red Cross" word trademarks in 1887, predating the formation of the American Red Cross. The Company has had exclusive rights to use the Red Cross trademark on commercial products within its longstanding product categories for over 100 years. Since its creation, the American Red Cross has at all times possessed only the rights to use the Red Cross trademark in connection with its non-profit relief services.

...

For the past several months, Johnson & Johnson has attempted to resolve this issue through cooperation and discussion with the ARC, and recently offered mediation, to no avail. The Company was left with no choice but to seek protection of our trademark rights through the courts.

So who is the bad guy here? Well, you could view it as a multi-national corporation picking on a charity. Or, you could look at it as a charity's outright theft of property from one of its biggest donors. If ARC employees had walked into a store and stole thousands of dollars worth of J&J products, would it be any less of a crime simply because ARC is a charity?

Just because intellectual property is intellectual, does not mean it is not property. Even if J&J had wanted to overlook the theft, J&J's refusal to pursue ARC for the misappropriation of J&J's intellectual property, could cause the red cross trademark to become generic. This would strip J&J of over a century of good will in one of the world's most famous trademarks.

While some pundits see this as a publicity war, I see it as nothing more than an attempt by ARC to extort property from J&J under the threat of bad press. The only bad guy here is the American Red Cross. Time for them to admit they are wrong and stop taking things that do not belong to them.

Thanks to Mike Colwell of the Business Innovation Zone (BIZ) for the heads up.

Brett Trout

red cross johnson johnson trademark

Patent Office Pilot Program for Complex Works

The United States Patent and Trademark Office (USPTO) is seeking participants for a Complex Work Units (CWUs) Pilot Program scheduled for late 2007. CWUs are chemical structure drawings, mathematical formulae, protein crystal data, and table data, which often add significant complexity and cost to the examination and publication of patent applications in which they are contained.

The CWU Pilot Program will be conducted in an effort to:

* Investigate filing practice options for CWUs
* Gather information about existing CWU formats and their use in the Intellectual Property community
* Evaluate rule changes to allow applicants to submit CWU files
* Determine other acceptable file types

The pilot will allow applicants to submit original source files for CWUs through EFS-Web or on a CD, supplementing the traditionally-filed application parts. The CWU source file submissions will not be considered when calculating the application size fee, which will reduce the cost of filing for pilot participants.

The USPTO is requesting participants in an effort to gather more information about CWUs from the intellectual property community. If you have any questions or would like to participate in CWU Pilot activities, please send an e-mail to cwupilotsupport@uspto.gov .

Brett Trout

USPTO Complex Works

Punch Your Lawyer in the Face

Last night a client punched me in the face repeatedly. Now I am a pretty big guy, 6'4" 240, but this guy rocked me. In addition to experiencing the joy of punching a lawyer in the face, this guy also helped himself out in ways he did not even anticipate. The client was in from out of town and stopped by for an update on some projects. He said he was a cage fighter and we began talking. I told him I was a cage fighter wannabe and told him where I trained.

Turns out he knew my instructor and had been meaning to get in touch with him. I told the client where we trained and he met us there for practice. He then proceeded to demonstrate the difference between a cage fighter and a potential cage fighter. Even though he was hitting me with maybe 10% of his potential, it still rung my bell. He not only taught me a lot about fighting, he also gave me insight into his business, what his current plans entail and where he wants to be in five years.

Advising clients on patents, trademarks and copyrights is complicated. What might be right for one client, may not be right for another. You never know what piece of information is going to be the critical piece of the puzzle that allows your attorney to turn a problem into an opportunity. Generally however, the more your lawyer knows about you, the more likely this critical piece of information will come out. The best way to minimize the likelihood of something slipping past is to keep in close contact with your attorney, working him or her into all facets of your company. If your attorney knows all of your key people and discusses key corporate issues with you several times a week, you substantially minimize the chance that a critical piece of intel might slip by your lawyer.

But what about smaller companies? If your company only talks to your patent and trademark lawyer a few times a year, stepping that up fifty fold at $255/hr, just to shoot the breeze, is prohibitively expensive. The one thing you can do is get to know your attorney. Sit down and talk with them at Rotary. Stop them at the gym and say "Hi." Be friendly. Now there is a big difference between being friendly and cornering your attorney at a cocktail party to grill him or her on specific issues. In that situation you will not only get a bill, but you will likely not see your lawyer in a social situation again (especially if they see you first).

Avoid talking about the law. Stick to social discussions. Just be friendly. Like my client last night. He talked about anything but shop. He is a just a super interesting guy; it made me want to know more about him and his business. The next time I give him advice, I will take what I learned into account. Not only did he save about $500 in attorney fees in getting me this information, he got to pound my head in while doing it.

Don't worry, I am checking ebay right now for a take a number sign to place outside the gym.

Brett Trout

client service laywer

Provisional Patents are Naked

I have said it for over a decade and now someone else is joining the choir. The provisional patent emperor has no clothes. Since 1995, I have warned clients against the dangers of filing provisional patent applications. Except in a limited number of very special circumstances, provisional patent applications run the risk of placing invaluable intellectual property into the public domain.

Legal blogger Erik Heels has a nice little blog post (complete with drawing) on why provisional patents are a very bad idea for most small companies. Like me, Heels believes "it is not possible to write an effective patent specification without writing claims." When clients wanted a provisional patent, he would write the claims and then just not file them.

Heels found he was spending as much time writing the provisionals as he spent writing full utility applications. He finally decided that writing provisional patent applications was not only a bad idea for his clients, it was a bad idea for him as well. His firm has since stopped filing provisional patent applications because they "falsely raised the expectations of our clients about cost savings and were rarely the right solution."

While I guess that was one way to do it, I merely directed stubborn clients to another firm in town who I knew would be happy to oblige their Jones for a provisional patent. I may have lost a client or two, but I saved myself a lot of headaches. I would love to have been a fly on the wall when their new patent attorney explained to them why they ended up spending much more money for much less protection than if they had filed a standard utility patent application instead of a Paper Tiger.

Brett Trout

provisional patent USPTO patent application

Can a Document Retention Policy Actually Hurt Your Company?

Rush Nigut has a great post on the impact a Document Retention Policy (DRP) may have on your company. Rush notes that Pennsylvania attorney Michael Moore argues a DRP may lead to an inference by a jury that certain evidence existed, but that it was destroyed to keep the truth from coming out.

While I have been a vocal proponent of DRPs since the implementation of the new rules on electronic discovery, my preaching has recently turned sotto voce. I still think DRPs are about the only way for a company to ensure compliance with the new Federal Rules of Civil Procedure, but witnessing the actual response of courts and juries to allegations of evidence destruction leaves me questioning whether DRPs are the best approach from a pragmatic standpoint. Based upon my obviously non-scientific, and clearly subjective, empirical evidence, it appears to me that not only are courts reticent to issue sanctions for admitted destruction of evidence (even after litigation has begun), but juries afford such allegations little weight.

Jurors are people. They work at companies where email is destroyed every day and no policy exists. Convincing them that the other side's destruction of evidence is a violation of the Federal Rules of Evidence and evidence of wrongdoing sounds good in theory, but you are basically telling the jurors the things they do every day involves surreptitious wrongdoing. To convince them to follow your line of reasoning means convincing them they are wrong, deceptive, bad people. Obviously this is never an easy sell to a jury.

While judges are in the best position to sanction litigants for spoliation of critical evidence, I have yet to see it actually happen in a case in which I have been involved. This difference between what the law says and what the law does, makes it very difficult to recommend a company spend thousands of dollars and hundreds of hours implementing a document retention policy that may put it at a substantial disadvantage in court. Implementing a DRP is absolutely the "right" thing to do. I just wish judges and juries eventually make it the commercially viable thing to do as well.

Brett Trout

document retention FRCP destroying evidence

Technology Law Icon Involved in Motorcycle Accident

According to Radio Iowa News, 57 year old Chair of the Iowa Bar Association Technology Committee, David Beckman, was riding his 1987 Harley Davidson northwest on P53, near the Madison/Dallas county line, when he became involved in a single vehicle accident. According to reports, Mr. Beckman lost control of his motorcycle around a curve and rolled into a ditch. The passenger on the motorcycle, David Beckman's wife Julie Ann was fatally injured in the accident.

David Beckman is a tireless supporter of technology law, both in Iowa and across the country. In 2005, Mr. Beckman was recognized for "Outstanding Contribution to the Legal Technology Community" at the Annual Legal Consultants & Technologists Dinner (Lexie Awards). Mr. Beckman is probably best known for his column in the American Bar Association Journal entitled "in Re Technology," which he writes with his law partner David Hirsch. Mr. Beckman is a past president of The Iowa State Bar Association and continues to work tirelessly behind the scenes helping lawyers use technology to more effectively serve the public.

Our thoughts and prayers go out to David and his family.

Brett Trout

David Beckman

Trademarks FAQ

Nearly every business has a trademark, but few know what a trademark is. Even fewer take the steps necessary to protect what for many companies is their most valuable asset. A little knowledge can not only help you choose between "good" and "bad" trademarks, but can help steer your company clear of a trademark lawsuit costing hundreds of thousands of dollars. Here are some of the most frequently asked questions I am asked about trademarks:

So what is a trademark?
A trademark is a mark that identifies goods or services coming from a particular source. The mark may be a word, name, phrase or symbol. By identifying goods or services as coming from a particular source, consumers can go back to that good or service time and again, relying on the quality they have grown to trust.

How do I "get" a trademark?
You cannot obtain trademark rights unless you actually USE the trademark in commerce in association with goods or services. Without use, there is no trademark. Even if you have a trademark, if you stop using it, it will go abandoned after a period of time.

What are the different types of trademark protection?
Once you start using your trademark in commerce, you obtain what are known as "common law" trademark rights.  Common law trademark rights can be effective in obtaining an injunction or a judgment against someone infringing your trademark, but they do not provide all of the benefits associated with state or federal trademark registration.

Every state provides for both registration and enforcement of trademark rights. While these state protections involve a small cost, they typically offer little more protection than common law rights. Accordingly, most companies opt for either free common law protection or much more valuable federal law protection. Federal trademark registration involves governmental and attorney fees of approximately $1,200 and about an eighteen month wait.

What are the advantages associated with federal trademark registration?

Federal registration provides several advantages over common law and state law trademark protection. Like common law and state law protection, federal trademark registration allows you to recover the damages a trademark infringer has caused your company.  Unlike those two weaker types of protection, however, federal registration allows you to recover your attorney fees and up to three times your actual damages if the infringer of your federal registration is found to be "willfully" infringing your trademark.

Federal registration also allows you to use the ® symbol as a warning to would-be infringers and constructive notice to everyone in the country of your ownership of the trademark. Federal registration provides several other benefits, including incontestability, and prima facia evidence of the validity of the trademark and your ownership thereof. Unlike patents and copyrights, trademarks can last forever, as long as you keep using them.

Are some trademarks easier to register than others?
Yes. How easy it is to register a trademark depends in large part on how descriptive the trademark is of the particular product or service provided in association with the trademark. For example, if the product is bananas the trademark "Banana" would be deemed “generic,” and would not be protectable at all. Similarly, the trademark "Yellow" would be deemed “descriptive,” and would also not be protectable. The trademark “Monkey Stick” however, would merely be “suggestive,” and would, therefore be protectable. Suggestive trademarks do not provide enough information to determine what the good or service is, but trigger that mental "Ahhh" after you find out what the good or service is.

What are the easiest types of trademarks to register?
Not surprisingly, the easiest types of trademarks to register are the ones least preferred by marketing departments. "Arbitrary" and "fanciful" trademarks are the easiest to register because they do not describe or suggest the goods or services. This is the exact reasons marketing departments shy away from them. The trademark “REGAL” for bananas would be “arbitrary,” whereas the trademark “Baaan” would be “fanciful.” Both arbitrary and fanciful marks are protectable and registrable.

The question to ask in determining whether a prospective trademark is likely to be registrable is “Would my competitors likely use the word in their marketing of the product?" If so, the trademark is probably protectable, if not, then the trademark is probably not protectable.

While arbitrary and fanciful marks may seem initially less attractive, once the public associates the trademark with your goods or services, as in the case with eBay, the trademark can become extremely valuable with a broad scope of protection.

Can things other than words be trademarks?
Yes. Logos, symbols, colors, sounds and smells can all be protectable trademarks if they are not descriptive and uniquely identify your goods or services.

Should I register my trademark?
To determine whether you should register your trademark, you should examine several factors.

• How much is the trademark worth to the company?



• How likely is it that someone may infringe the trademark?



• How likely is it that a competitor will obtain rights in the trademark by using the trademark in a different geographic region?



• How much would it cost your company to have to change trademarks?



• How much value would a trademark registration add to your company's intellectual property portfolio?

Once you have the answers to these questions, visit with an intellectual property attorney to determine whether a federal trademark registration would be right for your company. Many intellectual property attorneys offer a free consultation to determine whether or not a federal trademark registration is warranted.

Even if the decision is not to proceed with a registration, it will not have cost you anything and at least you have the piece of mind knowing what you have and where you stand at when it comes to trademarks. 

Brett Trout

trademark USPTO