Law & Business Video

Here's a lightly-edited transcript of the video blog: Hi, I'm Anthony Verna, managing partner, Verna Law, back for another video blog: We have some thoughts on trademark damages. If you are going into federal court and you are going to be a plaintiff, here are a couple of thoughts for you.   Certainly, talking to our clients about getting money – and you're going to get money, you're going to get the lost profits and you're going to be entitled to triple those damages. You have to temper yourself a little bit about it because first off, number one, most cases don't go to trial. Most cases settle. So obviously on some kind of settlement, there's going to be a discount on the damages, but you're going to take the discount damages. Why? Well, you know, it's going to be less time in litigation and less time with legal fees. So that discount is generally taken in order to, uh, make the pain go away. Don't get me wrong, litigation can be painful. So that's one particular thought there as to what, why damages might be less than a trademark infringement matter than you were probably hoping it is the potential plaintiff. Also, many products have multiple trademarks. I'm going to pull this thing right here. It was way back to the old days of podcasting, the Blue Snowball. There it is the snowball, Blue and Snowball: two trademarks on one product. If one of those products were one of those trademarks, excuse me - were to be infringing? What I would say is, is there's a house Mark. And then there's the, the brand Mark. And we do sometimes take into account. Well, how much does one Mark matter from the other? And, and especially in a case like that, you're going to see again, your particular damages as a plaintiff are going to be discounted because there's more than one Mark on the product.A lot of products have more than one trademark as I'm sure you could see a lot of the stuff that's behind me, probably it has more than one trademark, somewhere on the actual product. That's going to be true here as well. So make sure that you go in with your eyes wide open into any particular type of litigation, because you need to make sure that you think about the kinds of damages that you may be entitled to I'm Anthony Verna, managing partner of Verna Law. We are a full-service intellectual property and advertising law firm. You can see us vernalaw.com. Thanks very much. See you soon.

Lightly-edited transcript of the blog entry: Hi, I'm Anthony Verna, managing partner, Verna Law. Let's talk a little bit about the Trademark Modernization Act of 2020. That's right. Congress passed a COVID spending bill and tucked in some other legislation. Congress, you need to stop doing that! One bill one thing, but, nope, Congress, isn't going to do that. So, the Trademark Modernization Act of 2020 buried in the middle of the COVID spending bill, let's talk a little bit about that. What it does. Number one, third parties may file petitions for expungement or reexamination. That's right. The biggest change to the current USPTO procedure is that there's a new provision. There are ex parte expungement petitions against registrations for trademarks that have never been used. Ex parte means it's not really going to be a two-party procedure. It's a one-party procedure. So you, as one party who you filed to show that this trademark has never been used before, that's how we get going on, on this expungement.The third party, can petition for expungement in connection with some of the goods and services or all of the goods and services. The act specially notes that the registrant's evidence of use is not subject to the stringent rules, applied to the submissions of use specimens in the application process. Marks registered from outside the U S who obtained the registration based on a home country registration or via the international registration process may present evidence of excusable non-use to avoid that expungement. Now, why can third parties do this? We've seen a jump - a jump! - in the number of registrations that have happened internationally, mainly from China. They really aren't real, and frankly,  have never been used in commerce. So the USPTO has been asking Congress for a way to simplify the process, to get rid of registrations that actually haven't been used in the United States.A third party can also seek reexamination of a registration. If a party submits evidence that a reasonable investigation shows that a trademark was not actually in use at the time of filing based on actual use or at the time that the applicant claimed use the difference between an expungement and reexamination are a expungement, is for cases in which a Mark has never been used. Whereas re-examination is for cases in which the Mark was not in use at the time that the use was claimed and be a petition for reexamination must be filed within five years of the issuance of a registry. Number two, third-party evidence is now allowed in trademark applications. That's right, the Trademark Modernization Act of 2020 authorizes the USPTO to permit third parties to submit evidence supporting a refusal to register a trademark and to collect a fee from that third party, making the filing.Let's remember our previous  video, where we talked about the amount of money that is going to be raised for the PTO in 2021, because fees are going up!  Well, here's a creation of a totally new fee, which basically does enhance the letter of protest that third parties have been able to file for many, many years. However, now, a third-party can really throw in that evidence and filed yet another fee, but it does expand the letter of protest. And it does help a third-party to submit evidence of non-use of the applied-for trademark. Number three, time periods for responses to office actions may be shorter, but extendable, right? Currently the USPTO issues an office action and reviews and registration are requiring further information or action. On behalf of the applicant, the applicant has six months to respond  The new act permits the USPTO to set a shorter response period, if it wishes.  It doesn't necessarily have to, but you can still be extendable to a total of six months. And then the USPTO is authorized to do what you guessed: It can charge a fee for the extension. So I have no doubt that change is going to be coming sometime soon. Fourth,

Hi, I'm Anthony Verna, managing partner, Verna Law. You can see us on the web at vernalaw.com. So 2021 is coming up - Happy New Year! That's why we're dressed casually: It's the holiday season.! However, the patent and trademark office has said big changes come in 2021. Those big changes? New fees! Thanks, federal government, for raising our fees in the middle of a pandemic, in a bad economy. However, not much we can do with that. The patent and trademark office is raising rates. Come January 1st, a standard patent and trademark office trademark application is going up to $350 per class. Now, a standard application is when an applicant actually types in his or her or its own goods and services description. A plus application is when a set of goods and services are selected from already written phrases. And usually this is only good for, you know, apparel, uh, uh, home where things where you can really list the goods and services as a list.That's going up to $250 per class, which is up from $225 per class. So again, standard application is up to $350 from 275, and a plus application is up to $250 from $225. And, if you are looking to oppose an application or cancel a registration, well, that's going up from $400 for class to $600 per class. So to file a case in the Trademark Trial and Appeal Board is now going to cost more than filing in federal district court, when you're asking for monetary damages. Yeah, I have to say, I think there's something about that that stinks a little bit, but the, again, that's what we've been handed. There's also going to be fees that didn't exist before in the Trademark Trial and Appeal Board. So for example, if you're filing a 90 day extension, that's going to be $200.If you're going to be filing a 60 day extension requests, that's going to be $400 an application. And if you're going to be filing an extension of time to file an appeal brief, it's going to be a hundred dollars per application and a new fee for, uh, filing a, uh, an oral argument hearing. That's right. The middle of your case, you would like an oral argument hearing. It's 500, hundred dollars per proceeding if you want the oral argument. So we have new fees from the patent and trademark office. What I would say is budget accordingly to your needs. Thanks very much. Again, my name is Anthony Verna, managing partner, Verna Law. You can see it right there. Visit us at vernalaw.com. I look forward to answering all your questions again.

Hi, I'm Anthony Verna, managing partner of Verna Law. We focus on intellectual property and advertising law, but I think you knew that already. Why should I seek patent protection? This is the Motherload question. Simply put, if you have a new and novel idea or invention, and it provides value to the marketplace - without patent protection, and you're leaving the door open for others to copy and sell your idea. You'll want the patent protection to obtain exclusivity. A patent is a monopoly for the invention that is claimed in the patent for 15 to 20 years, depending on the type of patent that is filed.  You have negotiating power. Again, of course, monopoly gives you negotiating power, but it's a signal to the market that you are serious about your technological assets, thereby opening the door to business negotiations regarding licensing of your invention. As for valuation, patents are assets, whether that asset is personal or to your company, that hopefully you're taking your patent, then you are assigning it to your company that you are creating, but it provides a basis for seeking investment into your company. It provides a basis for saying here is why this particular invention has value. This product has value. This company has value. It's also a way for your com you or your company to have additional revenue. In some cases, all of all of your revenue might be taken through licensing of that particular patent. But if you want to create the product that's described in the patent and then license it to somebody else, that's perfectly acceptable as well. So there are ways to have additional revenue streams because of one patent registration. And again, you get to stop competitors because your patent is filed. Establishing patent boundaries before competitors enter the market challenges them to avoid stepping on your granted or applied-for claims. It requires an expenditure of time, effort, and money on their part. And if they're infringing, you, of course can take them to federal court and get damages for lost profits. Get damages for attorney fees sometimes. It's really a way to stop those competitors. And it's a big gigantic hammer that the federal system gives you as a patent owner. And that's why that's why you should get the patent in your invention. I'm Anthony Verna, managing partner at Verna Law, where we focus on intellectual property and we'll see you next time.

Hi, I'm Anthony Verna, managing partner, Verna Law, P.C. We focus on intellectual property and advertising law. You can find us at vernalaw.com. Now, let's get to the meat of this. Do I need a model or prototype before I can file a patent? No. It's one of the most misunderstood aspects of patent law: you do not need a model or a prototype to file for a patent application. Instead, you only need to have enough information in order to be able to explain your invention to someone, such as a manufacturer, that is capable of making it. As a rule of thumb, if you're able to explain how to make your invention or how your invention works, then you should be able to file for a patent application. But - that's one of the tricky parts here let's get to from something to say theoretical to, well, what happens in real life. If somebody comes to our practice and says, “I have a great invention! It's a transporter beam!” and you're not really able to describe how you're going to take molecules of people, turn them into, you know, some other matter. And then, you know, deposit the person safely on the other side. Well, it's not really going to work all that well, but again, that goes back to the practical part of this. You have to be able to describe the invention, make sure your invention is new, novel, make sure it's not obvious, absolutely. Make sure that you're able to describe it so that those who have the capability to make it can make it. You don't need a model. You don't need a prototype, but you have to have the ability to describe it fully. Without that description, your patent application will just never be able to go to fruition. I'm Anthony Verna, managing partner of Verna law. Again, we focus on intellectual property, patents, trademarks, copyrights, domain names, and advertising law visit us at vernalaw.com. We'll see you here next week.

Trademarks are meant to signify the source and quality of goods or services. Therefore, trademarks that are descriptive are relatively disfavored. How can someone register a descriptive trademark? I discuss in this video blog! Here is a lightly edited version of the transcript: Hi, I'm Anthony Verna, managing partner at Verna Law, where we focus on intellectual property and advertising law. How can someone register a descriptive trademark? Now, as you may recall, a trademark that is descriptive, in other words, a trademark that completely describes some aspect of the goods or services that the trademark owner is selling. That trademark generally cannot be registered. But how can somebody register that trademark? It requires what we call secondary meaning. Secondary meaning is some evidence that audiences associate this particular trademark with these sets of goods or services. We need some evidence to build that and generally it is circumstantial evidence. For example, we can have advertising revenues as a part of that evidence. Maybe the number of customers and the amount of sales; maybe the manner, the length and exclusivity of the trademark; use as much evidence as can be built about that particular relationship between the trademark and the consumers of the goods or services.That is what we need in order to get that registration in the Patent and Trademark Office. An example that we have on our website is a trademark called FOOD PSYCH. Its goods and services are podcasts and obviously those podcasts are related to food and the psychology of food. Therefore, FOOD PSYCH is descriptive of the goods and services. However, evidence of over 500,000 downloads of the podcast took that trademark application and bumped it up to a registration. That's the kind of evidence that we're looking for, if the trademark is descriptive. Again, I'm Anthony Verna, managing partner of Verna Law - IP and advertising law is our focus. Visit vernalaw.com. I look forward to seeing you next time. Thank you.

This is another video blog to go with our Patent Law FAQ - we hope you continue to enjoy our video blogs. Here is a lighted-edited transcript of the blog: Can I get a patent on my software? I'm Anthony Verna, managing partner of Verna Law, P.C, where we focus on intellectual property and advertising law. The short answer is “Maybe.” “It depends.” Lawyer answers, of course. Let's talk a little bit about what a patent for a software invention would require. Number one: the algorithm, because that's really what we're patenting, has to be new. Our algorithm - or your algorithm - has to be novel. Your algorithm also has to be non-obvious. This is the typical standard for any utility patent. However, we had a case about, let's call it six years ago, in which the Supreme Court said that an algorithmic patent must include an inventive step. What does that mean, six years later? We're all still a little confused about that, but what I would say is: What does your software, what does your algorithm do that is truly different from an algorithmic standpoint?Is it more efficient? And how is that efficiency defined? Some algorithms are defined by processing time, especially with software. Some algorithms are defined by user interface and how the user changes the interface. That's going to be considered an inventive step. All of that is something to consider while we ask the question, “Can I get a patent on my software invention?” Just remember, it's a very high bar. And as a matter of fact, the, Patent and Trademark Office, after the Supreme Court's decision a few years ago, took all software and algorithmic patent applications and put them to the side before they were considered, before an inventive step could truly be defined. The USPTO has their definition. We don't really know what that particular definition is, but we really see that those software patents that do something truly different from an efficiency standpoint are the ones that are granted. That's what's really hitting that bar. Again, I'm Anthony Verna, managing partner Verna Law. See us at vernalaw.com for all IP questions. Thank you.

At Verna Law, P.C., we are doing a series of video blogs that coincide with our FAQs. This video answers the question "What is a patent?" Hi, I'm Anthony Verna, managing partner of Verna Law, P.C. where our team focuses on intellectual property and advertising law. We're starting at the beginning of patent law for this series that matches up with the FAQ on our website. Let's start at the beginning because it's a very good place to start. What is a patent? A patent is a grant of protection for an invention. I want you to think about a patent as a contract. The government gives you a grant to protect your invention. You have to tell the government, and effectively, the public, what your invention is. That grant by the US Patent and Trademark Office, depending on the type of patent that's granted, could last between 15 and 20 years. Understand that this doesn't allow you to sell your product. You're always allowed to sell your product, even if you don't want to get a patent on it, you can sell it.What the patent grants you is the ability to stop others from copying your invention in your patent from selling the invention in your patent. That's the key. With patent law, it's a 15 to 20 year monopoly on what's described in the patent. We have three types of patents here in the United States. Utility patents. A utility patent covers anyone that invents a new and useful process, a new and useful article of manufacture, a new or useful machine, or composition of matter. Anything that improves upon any of that list will also qualify as a utility patent. We always say “build a better mouse trap.” That's what a utility patent is.There are design patents. Now, in other countries we might have other definitions for that, but in the United States, a design patent includes an original, new, ornamental design for a manufactured product. That's the key. It's just the design.The third type of patent that you can receive are plant patents. That's right. If you're a DNA engineer, I know there aren't a lot of you out there, but if you're engineering DNA and you create a new plant or you crossbreed, you cross-hybrid plants, that'll be a new plant. The Production, discover, invention of a new kind of plant that is capable of reproduction means that you'll get a plant patent. That's the basic overview of what a patent is. Again, I'm Anthony Verna, managing partner of law. You can find us vernalaw.com and I'll see you for the next part of our FAQ. Thank you.

The full transcript of this video blog can be seen on our Copyright vs. Trademark page: https://vernalaw.com/copyright-vs-trademark-law/

In today's troubled economic times, companies that fall may want to declare bankruptcy. Companies with registered trademarks may want to continue to use the trademarks and not lose any value in the brands. However, protecting the trademark from the beginning is paramount - not just registration, but understanding that it is an asset that other contracts may affect and that it must be treated like any other asset in bankruptcy. The consequence is that there may be a loss of registered trademarks otherwise. This is especially true in a scenario in which 1) a registered trademark is not listed on the asset sheet, 2) the registered trademarks are assigned to a third party not involved in the bankruptcy, and 3) there is an agreement for a creditor to have a security interest in the trademarks. Here is a lightly-edited transcript of the video: Several years ago, I had a client who did something that you shouldn't do once the company went into bankruptcy. Number one, the trademark was not actually listed on these set of assets that the company had .  All registered trademarks should be on this set of assets once a company goes into bankruptcy, whatever chapter is being filed. Number two, once that company went into bankruptcy, the trademarks were “transferred” to the wives of the business owners.  We call that a fraudulent transfer because the wives aren't actually running the business. Number three, there was an agreement.  One of the creditors of the company had the ability to take the assets of any particular part of the company and, of course, sell it in order to get money back. So therefore at the end of the bankruptcy, none of the debt was discharged. I'm coming from the other end looking at it as well, what can, what can happen if somebody senior to that particular company comes around in trademark use and calls it trademark infringement, which is exactly what happened. In today's tough times for economic activity, we need to keep this in mind. Trademarks aren't specifically mentioned in the bankruptcy code and therefore there are some special, they do work differently than other parts types of intellectual property, but we do need to still remember their assets of a company, so registered trademarks need to be listed on the asset sheet when a company files bankruptcy and, two, if those trademarks are subject to any other agreement that the company has, they're going to be treated with the same type of property rights that any creditor would have for any other piece of property in that particular business. Trademarks are treated specially when there's a license agreement and you know that that's a topic for another time. Apart from that, they're assets of the business treat them like they're the assets of the business and therefore if your company goes into bankruptcy during this particularly tough time, they can be adjudicated properly just like every other asset of the business. I'm Anthony Verna, managing partner of Verna Law where we focused on IP and advertising law, but chances are you already knew that by clicking on this video. Thanks very much, and I'll speak to you soon.

Verna Law, P.C. currently has cases in the Trademark Trial and Appeal Board, the Southern District of New York, the Eastern District of New York, the District of New Jersey, the Central District of California, and the Western District of Washington. The Trademark Trial and Appeal Board appears to be running normally, except that the TTAB's building itself is closed. The United States Patent and Trademark Office's building is closed. But the USPTO is still running, accepting applications, and the TTAB general case calendars are unaffected. Oral arguments will be heard via other means. Until further notice, examiner and examining attorney interviews, Patent Trial and Appeal Board (PTAB) and Trademark Trial and Appeal Board (TTAB) oral hearings, and other similar in-person meetings with parties and stakeholders scheduled to take place at USPTO offices on or after Friday, March 13, 2020 will be conducted remotely by video or telephone. Parties will receive further instructions on how to participate by video or telephone in advance of the interview, hearing, or meeting. The Southern District of New York, Eastern District of New York, Central District of California, and District of New Jersey courthouses are open to all except those who have visited China, Italy, Iran, South Korea, and Japan but all judges have ordered their clerks to work from home. Some judges allow conference calls for discovery matters, but dispositive, substantive hearings on motions will most likely be delayed. Deadlines for drafting motions and responses will not be delayed as the filing systems are electronic. The Western District of Washington has closed. However, all courts have said that motions that can be decided without an oral argument will be decided. Every judge will handle the situation differently, though. Here is a lightly edited transcript of the video blog: I've been asked how the novel coronavirus has affected the intellectual property system in the United States. And, apart from the fact that I haven't shaved since Saturday, the answer is it really hasn't affected the system all that much. The United States Patent and Trademark Office, the Patent Trial and Appeal Board, the Trademark Trial and Appeal Board, all are operated under the same federal agency and they've had systems in place for years for remote work. That means every time I call a trademark examining attorney or a patent examining attorney to ask what's wrong with an application, I'm calling them at home. Most employees are at home already. Fighting budget woes, the Patent and Trademark Office has already had this system in place. With electronic filing and work from home, the Patent and Trademark Office is operating almost normally. So, what about the courts? Well, federal courts are generally, closed or the judges themselves are not holding hearings in the courthouse. But, for many of my cases, if there's a substantive hearing, we're rescheduling it for some kind of telephone conference and, therefore, it can be recorded by the court. Frankly, the electronic filing system for the court, for the federal courts is still in operation. So, deadlines really haven't changed. Yes, if there's a trial, your trial is going to be held until a later date. If there's a substantive motion that can only be heard in court that's going to be held until a later date. But, apart from that, the Patent and Trademark Office is running. The Patent Trial and Appeal Board and the Trademark Trial and Appeal Board are all running. We can file intellectual property without a problem. And, for the most part, the administrative courts as well are running without an issue. I'm Anthony Verna, managing partner Verna Law, P.C., were we focus on intellectual property: patents, trademarks, and copyrights. And we'll talk to you next time. Thank you.

America's favorite export, that's right, LeBron James, and his media company, and Nike were all sued for trademark infringement this week in the Federal District Court of Washington D C. Why were they sued for trademark infringement and what does that tell the small business? So first off they were, excuse me, they were sued for trademark infringement because all of these entities, LeBron James' media company and Nike are using a phrase called “I am more than an athlete,” which another company in the Washington DC area already has registered for a clothing and other apparel in the nonprofit industry. In other words, they're selling clothing in order to raise funds for other charities. So it's very tricky, actually, when it comes to trademark law because, obviously, Nike and LeBron James are using this phrase in clothing. But if you go take a look at the use, the use is really on the front of the clothing, maybe on the sides, maybe on the sleeves. And in trademark law we call that ornamental use.  Ornamental use of a phrase where people are not really expecting a trademark is not really trademark use. We have to have in clothing use of a trademark on hang tags, on the back tags maybe where consumers expect it like on a breast pocket or maybe on the back of jeans. Those particular areas show us that, that that's where branding typically happens and therefore it's trademark use and not ornamental use. So that could easily be a defense that is used. That's not actually trademark use. The other issue that I have is if I'm the plaintiff, also ornamental use might be a problem. The registration of the trademark not withstanding, if there's ornamental use only then the plaintiff doesn't have a trademark to enforce. The lesson here is if you're an apparel company of any sort, no matter what kind of apparel is being made, you have to make sure that your trademarks are used properly as a trademark hang tags, breast pockets, back pockets. Those particular areas show that your mark is not, ornamental, if it's just on the front, that's going to be ornamental and therefore not a trademark. I'm Anthony Verna, managing partner of Verna Law where we focus on IP and advertising law. Visit us vernalaw.com. See you next time.

I'm Anthony Verna, managing partner of Verna Law. But chances are you already knew that! Hey, it's the middle of February and what does everyone say about the middle of February? It's my favorite time of year. Like, nobody says that about the middle of February, but it is my favorite time of year because it's Toy Fair and yes, I like toys. There we go. So ,what are some of the results that Verna Law has had for intellectual property in the toy industry? And, again, let's do that disclaimer. Past results cannot indicate any future results, but we certainly have protected plush toys from counterfeiting and also copyright infringement as well. We actually have recently received, our team has received the patent in the plush toy industry, which frankly still amazes me that there's something new that can be invented in plush toys. But there is, so we've been able to take that patent for, for one of our clients. The fact remains is that there's plenty of intellectual property for the toy industry, whether it's patents and new inventions, anything new that's being developed. The designs can be protected: the shapes of those toys. And, of course, any new toy, any new product line falls under trademark as well in the copyright realm. A lot of times in today's world, we see toy companies taking one particular product, like a plush toy, and making that a character and then taking back stories and making comic books and making books and videos. So, all of that falls under copyright law as well. Don't forget advertising law is very important to the toy industry. The Children's Online Privacy and Protection Act keeps getting tweaked. Well, not really tweaked, but reinterpreted as different administrations come and go. This is my 11th year at Toy Fair, which means this is my third presidential administration. Trust me, all three presidential administrations interpret the Children's Online Privacy and Protection Act differently. So there's a whole lot to think about from IP and advertising for the toy industry, and I'm thrilled to be a part of it. I am going to have very, very painful feet at the end of toy fair, but it's just a great industry to go to. Again, I'm Anthony Verna, managing partner Verna Law. www.vernalaw.com Thank you.

Video Blog 24: Why Were the Chicago Cubs Sued for Copyright Infringement? And what does it mean for the small business going into court? Recently, the Chicago Cubs were sued for copyright infringement. I kind of find it weird that I'm going to be suing a baseball team for copyright infringement. But it happened. Why? Because the Cubs retweeted a tweet that was already the subject of a copyright infringement lawsuit. So, the author and plaintiff of the original copyright lawsuit decided to file against the Cubs for the retweet. I think it's ridiculous as well, but it survived a motion to dismiss. Why? The judge in the case said . . .I personally don't know if the retweet creates another copy and if it creates another copy, then there is contributory infringement on the copyright. For those of us who have bachelor's in computer science, we already know that that retweet doesn't create another copy. It points to it. But I think this is the ultimate thought on intellectual property in the court system. Judges aren't gods, they're people. If a judge isn't going to understand the situation, then you as a lawyer have to make the judge understand the situation. And in this particular case, it's just a pointer to something that's already infringed. And even that's a question as well, if a tweet itself is enough to infringe a copyright. There are multiple levels here where I think copyright infringement should fail, but the judge is keeping the case around because the judge doesn't understand them. That's really, I think, our biggest frustration as IP practitioners when we're in court, judges are coming from all sorts of different backgrounds. A lot of them especially if they're, criminal defense lawyers or if they're prosecutors, really don't understand intellectual property. It's our job to make them understand that. So that's what we're really looking to do when we're in court is start at the very beginning and make sure that the judge understands what the situation is. I'm Anthony Verna, managing partner of Verna Law. We focus on IP and advertising law and hopefully we can help you through situations such as this to make sure that the judges understand why you are in court, either to prosecute intellectual property infringement or to defend yourself from complex intellectual property infringement claims.

Here at Verna Law, one of our goals of 2020 is to keep growing our patent practice, especially with our patent agent, Wil Jacques. Recently we've had a couple phone calls with potential clients who have business method or algorithmic patent ideas. In the last four or five years, ever since the Supreme Court decided a case called Alice, business method and algorithmic patents have been harder to procure. The reason for this is as time has gone on, a case has gone to the Supreme court and Supreme court said, “We're not saying that all algorithmic patents are void, just this algorithmic patent is void,” and well then there'd be another case and then that algorithmic patent was void until Alice. What happened in Alice a few years ago? The Supreme court said that not all algorithmic patents are void, but they need to have an “inventive step.” And where did the Supreme court decide to get this language? Nobody really knows, but it's an extra speed bump for algorithmic and business method patents. So, it requires making sure that the algorithm that is being presented in a patent application is really and truly new and novel, which is what the statute already says, but now whatever an “inventive step” still means, while we're still not 100% sure even three or four years down the down the line after that decision, but we need to make sure that we do our patent search. We need to make sure that we're thorough with that search. We need to find what other algorithms have anything to say with the algorithms that our potential clients give to us. And that's really the key is that first step, not yet drafting the claims that's truly important, but that first step of finding everything in the prior art that's out there. That's something that we try to do very well and especially with the algorithmic patents and especially with ever since the Supreme court decision requiring an extra inventive step in algorithmic patents. I'm Anthony Verna, managing partner Verna Law, focusing on IP and advertising law. Visit us at vernalaw.com, click on patents and you'll see everything that we have to do with patents. Thanks very much.

Back in 2014, a company called Surrey Nanosystems received a patent for a color that is so black and absorbs 94% of all light. Let me take a step back there. You don't receive a patent on the color. You receive a patent on the process for making such a new advancement in technology. That's really the key there. It's on the process. Now, a lot of people were outraged and the reason for that outrageous that Surrey Nanosystems allowed one artist to use this brand new color called Vantablack and everybody was saying, “How do you get a patent on the lack of light?” It's a color that's so black that Spinal Tap would have loved it. But again, it's on the process of creating this new technological advancement. Color has always been about technology: from indigo dyes that the royal families used, to black and white televisions, to the millions of colors that your monitors are actually showing that your eyes cannot detect. Color is technology. And in that technology, there's a new way of creating all of those particular colors. Now, for the smaller business, what does that actually mean? It means that every time there's a new way of creating something, there's a process there that is potentially patentable. That's the lesson for the smaller business: when something is new, there is a potential patent in that a business needs to do a patent search to make sure that that particular new process is not disclosed. And other prior art, the a business has to make sure that this particular invention is not disclosed elsewhere, is not disclosed in its own particular materials and also must not be in use for a year before filing that particular patent as well. Here at Verna Law, we have an excellent patent agent named Wil Jacques, who has a Bachelor's in Mechanical Engineering. I have a bachelor's in Computer Science. Therefore, we cover all sorts of areas of technology. We look forward to hearing from you and seeing your particular technology to see if there's a patent in there. Thank you very much.

Some statistics for 2019 are coming in in the trademark world. And in these particular statistics, one survey from CompuMark, a company from Clarivate Analytics and a company that does all of the Verna Law trademark searching, we're finding that for trademark infringement, main consequences were: customer confusion at 45% of respondents a loss of revenue due to trademark infringement for 38% of respondents to the survey and damage to brand reputation, which was 37% of respondents to the survey. Three quarters of trademark infringements also led to litigation, which doesn't really surprise me as litigation tends to keep climbing up every year. 40% of organizations have stated they spent between $50,000 to $249,000 on legal proceedings for trademark infringement. 46% of respondents said that a rebrand was a result of the infringement proceeding. Again, that doesn't really surprise me as defendants do tend to need to rebrand because, of course, they're the ones who are allegedly infringing. With brands filing infringement matters, what does this tell us? One, the registration of a trademark is very important. Recently we had a settlement where the settlement probably was not as good as we would've hoped for our client because the trademark registration was not in effect at the time of infringement. So that registration really does matter. Two, planning matters as well. If you're a smaller business, understand that you're going to be playing the same game as all of the big businesses when it comes to trademark infringement. So if you're going to register, you need to plan for what's going to happen if your mark is infringed, how you're going to budget, and how you're going to deal with the infringement. Sending a cease and desist letter in today's world generally doesn't get the same results as it used to. You're generally going to have to go to court and you're generally going to have to deal with high costs because right off the bat, most defense defendants today send file a motion to dismiss as a de rigeur part of their defense. So make sure that you're clear as a trademark owner what your costs are going to be in understanding this. Also if you're going to be creating any new brands, do your due diligence because doing your due diligence means that you can understand what brands are out there, what registered trademarks are out there, so that you can kind of fit your mark in this big virtual space that we have called trademark registrations. If your mark could infringe on somebody else's mark, maybe he should nip that in the bud from the very beginning rather than being a defendant in a trademark infringement suit. Three, when you're dealing with the budget, make sure you understand how your business can rebrand if you need to. That pivot is always going to be important. You always have to plan for every single situation when you're dealing with intellectual property. I'm Anthony Verna, managing partner of Verna Law, P.C, but chances are you already knew that. That's why you clicked on this video. Thank you for watching. See you soon.

Video Blog 20: California Consumer Privacy Act: An Introduction Hi, I'm Anthony Verna, managing partner of Verna Law, but you already knew that. That's why you're here. One of the perils of advertising law is the fact that there are 50 States and 50 States also means 50 different regulatory schemes. In this particular case, let's take a look at California's brand-new California Consumer Privacy Act. Number one, if you're not doing business in California, guess what? California thinks that you're doing business in California because chances are your business has a website and yes, that's California's definition of doing business in California. So you have to look at the California Consumer Privacy Act in case anybody from California happens to step over your website or well actually picks up the phone and calls for business and then buys your products. But here's the key. The brand-new statute only applies: If your business has a revenue in excess of $25 million gross revenue to your business, buys or sells personal information from 50,000 or more consumers or households or earns more than half of its annual revenue from selling the consumers' personal information. If none of those apply to you, then the CCPA does not apply to your business. If one of those three conditions applies to you, then the CCPA applies to your business. Now what are some of the responsibilities under the CCPA? One, your business must implement processes to obtain parental or guardian consent for minors under 13 years. And the affirmative consent of minors between 13 and 16 years to data sharing. For purposes of the CCPA, there must be a link on your main page and it must say, “Do not sell my personal information.” And when somebody clicks on that link, that user must have a page to insert information to opt out of the sale of any personal information. Your business must designate methods for submitting data access request, including at a minimum - atoll free number. Yes, if you do business in California, you must have a toll free number if the CCPA, applies to you so that somebody can call you without charge to ask about the data and information for that consumer. You must update your privacy policies with newly required information, including a description of California residents rights, which is exactly what I'm saying to you here. And then you must avoid requesting opt-in consent for 18 months after a California resident opt out. Again, the CCPA is new. It applies to those the listed above. Again, California always believes that you're doing business in California if your business has a website. So it's a part of the sticky thorn of advertising law. Certainly, we try to help our clients avoid any particular problems. I mean, Anthony Verna managing partner Verna law, where we focus on IP and advertising law. Send me an email at anthony@vernalaw.com. Thank you.

Right before Christmas, my wife had to pick me up from the airport and it's not fun to go from the airport straight to my parents. Where was I? I was in Los Angeles at a mediation. While I have the philosophical problem with a federal court ordering the parties to a private mediation, that's what happened in this case. So let's talk about what happens if you have a trademark infringement suit and are going to mediation. Number one, you need to expect to be compromising on your case in order to settle it. If a court is ordering you to mediation, whether that's a judge-led mediation or a private mediation, the judge really is expecting you to settle your case. That means that you have to compromise. Well, both parties have to compromise. That means you as the plaintiff can't be expecting $10 million if there's only, for example, 1000 sales. Of course, depending upon the price of the product. Number two, you need to understand the weaknesses for that particular situation. If your trademark is not registered, that is a weakness.  Number three, you're also going to be sitting down with somebody who probably doesn't necessarily have a lot of power but will be able to hopefully talk to both sides. So that person is going to prepare for the case. So, also, you have to know the strengths of your case and you also have to know the weaknesses of your case. That is very key in a mediation and it's certainly something that that personally I struggle with with my clients. I want to show you the strengths of the case, but I also am obligated to say here's why your case is not necessarily worth $10 million or here's why your case, you know is going to need to settle during this particular phase. Number four, understand that also there's going to be a lot of downtime at a mediation. The mediator is going to talk to us, the mediator is going to talk to the other side and there's a whole lot of thinking for what doesn't exactly seem like a whole lot of action. Don't expect a whole lot of action, expect a lot of downtime and trying to settle a case. It's going to take time, but hopefully during the mediation, the lawsuit can settle. Understand your case, understand the weaknesses of your case. Expect the private mediator to talk to both sides in order to get that resolution and ultimately expect to compromise on that resolution. But during that private mediation, get the resolution and then your case will be settled and then both sides can move on with the business that that, that they're doing. I'm Anthony Verna, managing partner of Verna Law, where we focus on IP and advertising law. Thank you.

Hi Anthony Verna here. Let's talk a little bit about a decision that came from the Trademark Trial and Appeal Board (TTAB) on October 31st. First, it reminded me of a case a few years ago that I had in which I made my appearance in the case and opposing counsel, about two weeks, later filed a motion for sanctions. Why did opposing counsel want to sanction me when I was only involved in the case for two weeks? Well, my client was really not forthcoming in giving his dates for his trial testimony. Now, my client being the plaintiff really did need to state his case at some at some point. Opposing counsel did call him for his testimony and since he was foreign he really was reluctant. However, since I had only been in the case for two weeks, the Trademark Trial and Appeal Board (TTAB) said that no appropriate type of sanction in this trademark dispute was really going to be appropriate. So no sanctions were needed. Also, at some point, we did give a date for my client's testimony and we worked it out. Now, this case on October 31st came from the makers of Tito's Vodka that's called Fifth Generation and they were filing to cancel trademarks from a company called Titomirov Vodka LLC. Now, Titomirov Vodka LLC and Tito's Vodka have had disputes since 2016.  One of the issues was that a Titomirov had said that the only board member that could be in the United States really isn't in the United States and therefore could not provide any particular testimony as to the cases. After a filing the Trademark Trial and Appeal Board (TTAB) found that this particular company might have been lying about that. And that's been a part of the reason for the sanctions. What were the sanctions? All of Titomirov Vodka LLC's trademarks were canceled by the Trademark Trial and Appeal Board and therefore no trademarks are registered here in the United States by this particular company anymore. It was fraudulent filings. It was repeated violation of court orders. It was repeated inability to put witnesses up for testimony. That is is a big reminder when there are disputes in the Trademark Trial and Appeal Board (TTAB). It is a federal court of law. It might be an administrative court, but it is a federal court of law and discovery requests are court orders, as subpoenas or court orders, any kind of testimony, is done under penalty of perjury. It's a federal court of law and that's the key with this particular case. And that court does have the power to put harsh sanctions for business, practicality and canceling all while that is a very hard sanction does come into play. So remember, if your trademark is in dispute and you're in the Trademark Trial and Appeal Board (TTAB), you'll want to take that case as seriously as if it were a trademark infringement case in any federal district court. I'm Anthony Verna, managing partner of Verna Law where we focus on IP and advertising law. See you next time. Thank you.

Well you haven't heard from me in a few weeks. And that's because I've been in the middle of depositions for several cases and the travel schedule can be a little hectic. But what are we looking for in a trademark infringement or trademark opposition deposition? We're looking to take the documentation that's been discovered as evidence in the case. And then we're going to look to distill all of this evidence into some factors. For those of us in the biz, in the industry of trademark law, we call these the DuPont factors, but these are the factors that we're going to ask about during a deposition. One, we want to know about the similarity or dissimilarity of the party's marks. So the witness that is being deposed should be able to testify about the similarity or the similarity of the trademarks, even though we look at those with our own eyes and we see them and we can read those ourselves. Of course any judge can do that, him or herself as well. We also want that witness to testify about the similarity or dissimilarity of the nature of the goods described in the trademark application or registration. In that connection with which the mark is used, we want that witness to testify about the similarity or dissimilarity of any established or likely to continue trade channels. In other words, where do these goods or services travel in trade? What are the supply chains look like? Those are very important factors that any witness should be able to testify about the conditions under which and to whom those sales are made. Is this an impulse purchase? Is this a careful purchase? What are the price points that are involved in the particular goods and services involved? The witness should be able to testify about all of those factors as well. The fame of the prior mark. And when I say prior mark, there will be one trademark that begins this entire dispute and that is the oldest mark. The witness should be able to testify about that to his or her best knowledge. The number and nature of similar marks in use on similar goods. The witness should be able to testify about what other marks are out there and how this particular trademark was formulated, as well as the nature and extent of any actual confusion between the parties. Whether that the witness, the plaintiff or defendant, that witness should be able to testify that the parties should have some confusion or maybe the parties don't actually have any confusion whatsoever in commerce. These are the keys that will make a good witness. These are the keys that we'll have a good prepared witness, have good testimony and match up with the documentation in the trademark dispute. I'm Anthony Verna, managing partner Verna law, where we focus on IP and advertising law issues. My e-mail is anthony@vernalaw.com and we look forward to talking with you later. Thank you.

Here at Verna Law, we have cases in several districts, in the federal courts. Southern District of New YorkNorthern District of New YorkDistrict of New Jersey; and the Central District of California. One of the defining aspects of different districts in federal court is how, especially in intellectual property, the judges tried to settle cases. For example, in the Northern district of New York, the magistrate actually has said to us in this particular case, “We have other magistrate judges who have lots of intellectual property experience,” and - let me tell you that, to my ears - that's music. Because a lot of judges don't have intellectual property experience. In the Northern District of New York, this particular magistrate judge said, “Why don't we refer this particular case to one of the judges who actually has intellectual property experience in order to help the parties settle the case?” Fantastic. Because a lot of times, especially here in the Southern District of New York, while there are rules to allow judges to force the parties to settle, quite often the judges say, “If the parties aren't looking to talk right now and aren't looking to settle the case, even though there might be something small, for example, a spelling difference in a trademark, or maybe one party doesn't actually have evidence of consumer confusion, well, these are cases that should be able to settle.” But here's a situation where a judge took control of the case, was able to say, “Here's somebody who's an expert in this particular area. And if the parties agree to go to that particular judge, we can go to that particular judge for a settlement conference.” I look forward to settling that particular case with the expertise of a judge who has the same experiences that I do in intellectual property, especially trademark and copyright infringement cases. Again, Anthony Verna, Verna Law, we focus on intellectual property: patents, trademarks, copyrights, and advertising law. Thank you.

The Telephone Consumer Protection Act of 1991 (TCPA) was passed by the United States Congress in 1991 and signed into law by President George H. W. Bush as Public Law 102-243. It amended the Communications Act of 1934. The TCPA is codified as 47 U.S.C. § 227. The TCPA restricts telephone solicitations (i.e., telemarketing) and the use of automated telephone equipment. The TCPA limits the use of automatic dialing systems, artificial or prerecorded voice messages, SMS text messages, and fax machines. It also specifies several technical requirements for fax machines, autodialers, and voice messaging systems—principally with provisions requiring identification and contact information of the entity using the device to be contained in the message. Consumer consent is an essential defense under the TCPA and should be a primary focus of any business that communicates with consumers and customers directly via telephony. You should consult with your legal counsel to ensure that your opt-out process is compliant with applicable law and consistent with industry standards. Here is a lightly-edited transcript of the video blog: In the video blogs, we've covered all sorts of intellectual property topics. One topic we haven't really covered: Advertising law. It's a lot of alphabet soup: States, federal regulations. Let's talk a little bit about the Telephone Consumer Protection Act. The TCPA – see, alphabet soup  - of 1991 has been amended many times since Congress passed it. It's all about telemarketing. The TCPA does not qualify if somebody by hand dials your phone. For all of you out there that are doing telemarketing, the TCPA applies if a computer is dialing, which of course 99.9% of telemarketing is done by computers today. The TCPA also sets hours and it's the time zone of, of course, the person receiving the phone call, 8:00 AM to 6:00 PM are absolutely legal marketing time, not before and not after that. Also, if you're calling the cell phone, guess what, you can't call a cell phone for marketing. I know we all get, telemarketing calls on our cell phones. That's also not allowed under the TCPA. I recently had a client who was doing telemarketing called some people on the West coast outside of the hours and now is being sued for violations of the Telephone Consumer Protection Act. It's, a frustrating and long process to deal with litigation when only a couple phone calls are outside of those legal ranges. But from a compliance standpoint, it's really not a difficult compliance to follow. Make sure that your telemarketing company is dialing within the hours. Make sure that none of those calls are cell phones and make sure that, that, that your telemarketing company is following all of these procedures and make sure that if there's a problem, they're the ones with the problem under the contract with your telemarketing company. The TCPA has violations for $500 per phone call that is outside of any of these ranges. Again, the Do Not Call List is a part of that as well. So set that up properly. Don't be a defendant in a TCPA violation lawsuit. Don't wind up in regulatory issues. Follow these completely.

Recently, I've had a lot of people send me emails. They're asking about celebrities and trademarks. Why? Well, Tom Brady filed for something called TOM TERRIFIC, although I think that nobody calls him that. And, recently, LeBron James filed for TACO TUESDAY in marketing, advertising and podcast services.  Of course, the Obamas have their production company called HIGHER GROUND Productions and they're actually fighting to get somebody else's trademark canceled in order to register their particular trademark. Frankly, all of this is really typical. A lot of people who have written me emails are very concerned about these particular phrases coming off of the public domain. Well, yes, but that's the point of trademark law.  We pluck these phrases from out of the public domain and well for very specific uses. There's a specific reason for the use of these phrases and the use of, well, TOM TERRIFIC, even though I don't think he will get that - or TACO TUESDAY. TACO TUESDAY for marketing and advertising services or a fight between a former president and another enterprise company for the phrase , HIGHER GROUND: none of that phases me. All of that sounds like Wednesday.  That's really the essence of a trademark law practice:  we're plucking phrases out of the public domain for a very specific use and only for a very specific use; one that is defined in the trademark registration and then one that can be argued over and can be fought over and may be blocked. Just because of celebrity is doing it doesn't necessarily mean that there's any limitation on language because that celebrity doesn't have superior rights to anybody else who is not a celebrity. This is why I encourage all of my clients from the very beginning to do a thorough search of trademarks to understand that trademark use and trademark registration go hand in hand and to understand that in order to maintain your registration, what that use needs to look like. Therefore, all of your rights, if you're not a celebrity, are exactly equal to those celebrities who are filing. And don't worry, Tom Brady's not going to get that trademark. His rights are inferior to some others. I'm Anthony Verna, Managing Partner of Verna Law, P.C. where we focus on intellectual property, patent, trademark, copyright, trade dress, domain names and advertising law. Thanks very much for listening. Anthony Verna Video Blog 14: Celebrities with Trademarks do not Have Superior Rights than You

Many people have had conversations with me about YouTube's copyright infringement reporting system. I've seen online discussions on Reddit, also, about the system. Bottom line: If you have any videos wrongly removed for infringement, appeal. But have a professional help you appeal. Here is a lightly-edited transcript of the video blog: YouTube has a copyright problem. Now, when I say that, most people think, “Well, sure there's lots of infringing material on YouTube, right?” That's not quite what I mean though. Lately, copyright take-down notices are being weaponized. How? A lot of big YouTubers are complaining about smaller YouTube competitors and those particular videos are then being taken down. It's really weird, but in a way it's a bit of an antitrust violation as somebody bigger is stepping on the smaller competition using copyright law to do it. A lot of YouTube content creators are complaining that these take down notices are not correct; that the material is either a not infringing or fair use or the complaints just don't relate at all to either original material from the complaining party or from the video that's being taken down. So, when I say that YouTube has a copyright problem, I mean there's a problem with the entire system of complaining about copyright infringement on YouTube. I'm not sure that I have a solution for Youtube, but for anybody whose material is being taken down and maybe not being taken down fairly, there is an appeal process. That process takes time. That process is not really fair to those who are not actually infringing somebody else's copyright with their own YouTube videos. That appeals process is not necessarily fair to those who are monetizing and then get stomped by somebody bigger. But if there is a problem, that's where somebody like Verna Law does come in handy. We can properly set up the appeals process: explain why the video is not infringing. We can set up in the appeals process why the video might be fair use. We could set up in the appeals process why there is a not original content in a certain video. So let us help you. Let us help those creators who are finding themselves being stamped on because having those actual arguments, having the cases that show YouTube what's infringement or what's fair use, those are all of the types of defenses that a YouTube creator needs to stop the stomping. I'm Anthony Verna, Managing Partner. Verna Law will help you with YouTube copyright complaints.

Intent-to-use trademark applications. An intent-to-use trademark application requires some other evidence, if it is challenged in court, to show that the applicant has a bona fide intent to use the mark in commerce. Why? “Because a bona fide intent to use the mark in commerce is a statutory requirement of a valid intent-to-use trademark application under Section 1(b), the lack of such intent is a basis on which an opposer may challenge an applicant's mark.” M.Z. Berger & Co. v. Swatch AG, 787 F.3d 1368, 114 USPQ2d 1892, 1898 (Fed. Cir. 2015). Applicant's intent must be "firm," “demonstrable” with "objective evidence of intent" and "more than a mere subjective belief.” Id. at 1897-1898; Swiss Grill Ltd. v. Wolf Steel Ltd., 115 USPQ2d 2001, 2008 (TTAB 2015). The court make an objective determination whether Applicant had a bona fide intention to use the mark in commerce at the time of filing her application, and, in doing so, consider the totality of the circumstances. See M.Z. Berger & Co., 114 USPQ2d at 1898; Swiss Grill Ltd., 115 USPQ2d at 2008. Opposer bears "the initial burden of demonstrating by a preponderance of the evidence that applicant lacked a bona fide intent to use the mark on the identified” services. Boston Red Sox Baseball Club LP v. Sherman, 88 USPQ2d 1581, 1587 (TTAB 2008). Opposer may meet this burden by establishing that there is an "absence of any documentary evidence on the part of [Applicant] regarding such intent." Commodore Electronics Ltd. v. CMB Kabushiki Kaisha, 26 USPQ2d 1503, 1507 (TTAB 1993). If Opposer meets its burden, Applicant may "elect to try to rebut the opposer[‘s] prima facie case by offering additional evidence concerning the factual circumstances bearing upon [her] intent to use [her] mark in commerce." Commodore Electronics Ltd., 26 USPQ2d at 1507 n.11. However, Applicant's "mere statement of subjective intention, without more, would be insufficient to establish applicant's bona fide intention to use the mark in commerce." Lane Ltd. v. Jackson Int'l Trading Co., 33 USPQ2d 1351, 1355 (TTAB 1994). Here is a lightly-edited transcript of the video: Most of my clients who come to me for a trademark application are not using the trademark yet. It's a good idea of course, to start at the very beginning with what we call an intent-to-use trademark application. That trademark not being in use will not register with the Patent and Trademark Office, if it passes muster, until it is in use in commerce. But, while products are being developed, while finalizations are being made, prototypes are being created. A lot of companies want to make sure that that trademark is, is at least reserved in the Patent and Trademark Office if the mark is not registered yet. There could be a little snag along the way that a lot of businesses don't really think of and that is if an intent-to-use trademark application is challenged by a third party during the review process. If that mark is not in use yet and there are no business plans, then that mark could actually not really be considered an intent-to-use application. In other words, the trademark applicant must have what we call a bona fide intent to use the trademark in commerce or else it's not really considered an application under the statutory requirements. If a third party is challenging a mark, we need to make sure that we've got a little bit more than just that trademark application. As I said, a lot of businesses have prototypes, have business plans, and I even discussed the importance of business plans in an earlier blog. Any piece of evidence that discusses that ability to take the trademark and put it into commerce without those business plans, without those prototypes, without whatever those first iterations are, is needed. An intent-to-use application isn't actually qualified as an intent-to-use application without that evidence. If we're going to start at the beginning, and that is, of course,

Here is a lightly-edited transcript of the video: Recently, Verna Law, P.C. sign a new client who was sued for copyright infringement.  Verna Law, P.C. has had about four cases in the last year that look exactly the same as this particular case. What do they all have in common? One, they all received a subpoena notice from their Internet service provider. Two, they were downloading material that they shouldn't have and that's what the copyright infringement is. Three, what they were downloading was pornography. I've developed a bit of a strategy to handle cases like this.  What all clients have in common when they're defendants in a copyright infringement suit in which the copyright owner sends a subpoena notice to the ISP is that, of course, nobody wants to be identified as the defendant in a lawsuit like this in federal court. A lawsuit like this requires a plaintiff to file against a John Doe defendant with an IP address. Well, for people who have downloaded porn, it's sensitive and those defendants don't want to be identified publicly in court. Step number one for all of my new clients is keeping identities anonymous and as John Doe. This includes contacting opposing counsel and stating the client wishes to remain a John Due and that we're going to settle this case quietly. I, then, make my appearance in the case, and then we sign a stipulation between the parties that states that the defendant can remain a John Doe. And then we talk about what the damages are for the infringement. We try to keep everything quiet. We try to keep the defendants anonymous and that this way, especially if that person is a professional, that professional will never be linked to this particular lawsuit because, of course, then we'll agree between the parties to keep the settlement confidential. It's a case where copyright law intersects with, I hope, a lot of practicality, and that's kind of my strategy for handling these particular cases. Keep it anonymous, keep the settlement confidential. And then this way, that linkage will never actually be made. Here is a list of recent cases filed for copyright infringement (for downloading pornography): Most of these cases follow the same pattern. The defendant is a John Doe at a subscriber IP address. Cases Filed in the Michigan Eastern District Court (16) in 2017:MALIBU MEDIA, LCC v. JOHN DOE subscriber assigned IP ) Address 107.4.109.143 (Case No. 2:17-cv-10426) MALIBU MEDIA, LCC v. JOHN DOE subscriber assigned IP ) Address 107.4.109.143 (Case No. 5:17-cv-10426) MALIBU MEDIA, LCC v. JOHN DOE subscriber assigned IP Address 68.32.2.28 (Case No. 2:17-cv-10432) MALIBU MEDIA, LCC v. JOHN DOE subscriber assigned IP Address 68.49.201.228 (Case No. 2:17-cv-10442) MALIBU MEDIA, LCC v. JOHN DOE subscriber assigned IP Address 68.49.243.199 (Case No. 2:17-cv-10443) MALIBU MEDIA, LCC v. JOHN DOE subscriber assigned IP Address 68.49.243.199 (Case No. 2:17-cv-10445) MALIBU MEDIA, LCC v. JOHN DOE subscriber assigned IP Address 68.55.89.28 (Case No. 2:17-cv-10444) MALIBU MEDIA, LCC v. JOHN DOE subscriber assigned IP Address 68.55.89.28 (Case No. 4:17-cv-10444) MALIBU MEDIA, LCC v. JOHN DOE subscriber assigned IP Address 68.56.223.52 (Case No. 2:17-cv-10446) MALIBU MEDIA, LCC v. JOHN DOE subscriber assigned IP Address 68.56.223.52 (Case No. 2:17-cv-10447) MALIBU MEDIA, LCC v. JOHN DOE subscriber assigned IP Address 68.60.174.21 (Case No. 2:17-cv-10448) MALIBU MEDIA, LCC v. JOHN DOE subscriber assigned IP Address 98.209.250.195 (Case No. 2:17-cv-10449) MALIBU MEDIA, LCC v. JOHN DOE subscriber assigned IP Address 98.224.223.170 (Case No. 2:17-cv-10450) MALIBU MEDIA, LCC v. JOHN DOE subscriber assigned IP Address 99.37.173.71 (Case No. 2:17-cv-10451) MALIBU MEDIA, LLC v. JOHN DOE subscriber assigned IP Address 68.40.27.99 (Case No. 2:17-cv-10441) Cases Filed in the New Jersey District Court (38)MALIBU MEDIA , LLC. v. JOHN DOE SUBSCRIBER ASSIGNED IP ADDRESS 24.

The Great Gatsby will lose its copyright and go into the public domain in January 2021 and Ernest Hemingway's The Sun Also Rises also will fall into the public domain in January 2022. On January 1, 2024, society will see the expiration of the copyright for the short film, Steamboat Willie — and with the expiration of the copyright of the short film means there are new questions about the film's star, Mickey Mouse. The copyrights to works featuring the characters of Superman, Batman, Disney's Snow White, and early Looney Tunes characters will all fall into the public domain between 2031 and 2035. The expiration of copyrights for works featuring characters like Mickey Mouse and Batman will raise tricky new legal questions. For example, if someone wants to sell a CD or DVD or Blu-Ray or stream a copy of Steamboat Willie, it will be in the public domain and there is nothing that Disney will be able to do in 2024 in order to stop anyone who wants to do that. However, Mickey Mouse as a character, as a logo, as a symbol for sales, is a registered trademark of Disney. There are also later versions of the character, also. This means that there will be a variety of ways to sell a product, such as in a brown, paper wrapper to something more fancy, with screenshots of the short film. There has never been an intersection of copyright and trademark law before so that characters who are featured in works that fall into the public domain are still registered in future works and are still registered as trademarks. Chances are that the use of screenshots on advertising for sales of the film may indeed be trademark use of the character, though there are arguments that the screenshots are in the public domain, also. It will be an argument that will be litigated over once 2024 comes and sales of public domain films start. Here is a lightly-edited transcript of the video blog: A few people have asked me about Mickey mouse and some upcoming copyright expirations. So let's start here: January 1st, 2024, we see the expiration, for the copyright to "Steamboat Willie," which is Disney's first short feature with Mickey Mouse. What exactly does that mean for Disney? We are still not 100% sure. First off, Mickey mouse has been redesigned since then. There is a different design of the character. Also, there is not just the copyright in the short film, but there's also the trademark in the character. So I think we can probably all agree that if you're going to be selling "Steamboat Willie" on January 2nd, 2024 in a DVD or blu-ray or offering it for a video download, you're going to be perfectly fine doing so. And you can say that you are selling "Steamboat Willie," but if you start putting pictures of Mickey Mouse around it, there might be some issues. And that's the intersection here of Copyright Law and Trademark Law that we really haven't seen yet and we've really haven't had in the history of the planet, let alone our country. These mega-characters that continue to last for a long time and therefore cross boundaries between Copyright Law and Trademark Law are new. The copyright in the actual work will be expired. You want to sell copies of it, knock yourself out. It'll be in the public domain. You want to make something new based on it, knock yourself out. It will be in the public domain. But then the question is going to be how do you create something to sell that and say that these mega-characters are in the work. That intersection is probably going to be litigated once 2024 rolls around and people start selling copies of "Steamboat Willie", creating other versions of "Steamboat Willie." The future is going to be wide open in a few years, but the copyright will certainly be ending and we will see works - classic works - coming into the public domain.

When I first settled a trademark infringement suit for about $20,000, I thought I did a great job. The client did have to change the trademark and did have to send the excess product to a company to destroy the products, but I still thought it was a great settlement when in defense. Recently, however, there are a pair of settlement agreements for separate lawsuits that we have attained here at Verna Law. For one client, being sued in Federal District Court for trademark and trade dress infringement, his settlement is sterling: Paying the Plaintiff in the case no money!120 days to finish selling current inventory.60 days to establish a new domain.240 days for the old domain to redirect to the new domain. So, here is a client who, after a year of litigating, still does not need to pay the Plaintiff anything. And the client can still redirect website traffic for about eight months. Another client is being sued in Federal District Court for trademark and copyright infringement. His settlement also looks good: Paying the Plaintiff in the case no money!Changing any copy in the product that may be infringement (with no admittance to the copy being infringement)30 days to establish a new domain and to rebrand Two intellectual property infringement lawsuits. Two defendants who can walk away with business changes, but no damages. That's victory.

In late June, the Supreme Court struck down the part of federal trademark law that prohibited the registration of “immoral or scandalous” trademarks. The case was called Iancu v. Brunetti, and it was a follow-up to the court's Matal v. Tam ruling two years ago. In Tam, the justices unanimously ruled that the Lanham Act's ban on disparaging trademarks was a violation of free speech rights under the First Amendment. In Brunetti, the justices used the First Amendment to strike down another ban: the one on “immoral or scandalous” trademarks. Mr. Erik Brunetti sought to register the word mark "FUCT," in connection with clothing. The examining attorney at the United States Patent and Trademark Office ("USPTO") refused registration under Section 2(a) of the Lanham Act, on the basis that the mark was vulgar, and therefore "immoral" or "scandalous."  The Trademark Trial and Appeal Board ("TTAB") upheld the examining attorney's decision on appeal.  Mr. Brunetti then appealed the TTAB's decision to the Federal Circuit.  The Federal Circuit requested additional briefing from the parties following the Supreme Court's decision in Matal v. Tam, 137 S.Ct. 1744 (2017), which held that Section 2(a)'s prohibition on registering "disparaging" trademarks is unconstitutional under the First Amendment. In December 2017, the United States Court of Appeals for the Federal Circuit issued a unanimous ruling declaring unconstitutional Section 2(a) of the Lanham Act, 15 U.S.C. § 1052(a), which prohibits the registration of "immoral" or "scandalous" trademarks.   The issue came down to a key part of First Amendment law: is the regulation in question viewpoint-neutral? The First Amendment protects speech despite the viewpoint it expresses, so the government (in this case, the USPTO) cannot pick winners and losers because it likes some views better than others. Writing for a 6-3 majority, Justice Elena Kagan concluded that is exactly what the USPTO had been doing in applying the “immoral or scandalous” ban codified in the Lanham Act. Kagan examined the USPTO's treatment of trademarks related to drugs: trademark examiners rejected “YOU CAN'T SPELL HEALTHCARE WITHOUT THC,” “MARIJUANA COLA,” and “KO KANE.” But they approved “D.A.R.E. TO RESIST DRUGS AND VIOLENCE” and “SAY NO TO DRUGS—REALITY IS THE BEST TRIP IN LIFE.” According to the Court, those decisions are clearly viewpoint-based and, therefore, unconstitutional, even if they are “understandable” because of the trademarks' potential to offend. Justice Sotomayor in her dissenting opinion—anticipate a rush to register trademarks containing arguably vulgar, profane, or obscene words and images, with the PTO now powerless to say no. She's right! This ruling means that trademark registrations are open to any type of language. It's the Wild West in the dusty, old town of TrademarkVille. What do you want to say about your product? Does your product's branding have a viewpoint? Registrations at the USPTO now must be open to all, even those marks that will offend. Intellectual Property law seemed to be one area that was stuck in the past, even as technology keeps changing at a rapid pace. Not anymore. Bring on all the words that you may need to cover your ears to hear. They're registrable. Here is a lightly-edited transcript of the video blog: Trademark law generally does not change. In the last two years, however, trademark law has had a couple of really big changes, thanks to the Supreme Court. Several 6-3 decisions have basically allowed, well, some bolder language to come in and well, maybe some trademarks that don't actually treat people very well to be registered. How did this happen? A couple of years ago, a band called The Slants wanted to register the band name as trademark. It was rejected. Why? Because "The Slants" was deemed to be words that disparaged people. Specifically, it was deemed to be an ethnic slur and a trademark under the

The United States Patent and Trademark Office (USPTO) announced on July 2, 2019 a new rule requiring all foreign-domiciled trademark applicants, registrants, and parties to Trademark Trial and Appeal Board proceedings to be represented by an attorney who is licensed to practice law in the United States. The requirement applies to all trademark applicants, registrants, and parties whose permanent legal residence or principal place of business is outside the United States. These applicants, registrants, and parties are required to have a U.S.-licensed attorney represent them at the USPTO in all trademark matters. Additionally, U.S.-licensed attorneys representing anyone before the USPTO in trademark matters are required to confirm they are an active member in good standing of their bar and to provide their bar membership information. “Many other countries worldwide have had this requirement for decades,” said USPTO Commissioner for Trademarks Mary Boney Denison. “We believe that this new rule will help improve the quality of submissions to the USPTO.” Canadian patent agents will no longer be authorized to represent Canadian trademark applicants, registrants, or parties before the USPTO in trademark matters. Canadian trademark attorneys and agents will continue, if eligible, to be recognized as additionally appointed practitioners who can represent their Canadian clients, although the USPTO will correspond only with the appointed U.S.-licensed attorney. This new rule becomes effective on August 3rd. Here's what the USPTO says about it: “Businesses rely on the U.S. trademark register to make important legal decisions about their brands. In order to maintain the accuracy and integrity of the register, for the benefit of all its users, the USPTO must have the appropriate tools to enforce compliance by all applicants and registrants. We discovered an increasing number of foreign trademark applicants, registrants, and parties are filing inaccurate and possibly fraudulent submissions with the USPTO that do not comply with U.S. trademark law or the USPTO's rules. Often, these submissions are made with the assistance of foreign individuals or entities not authorized to represent applicants at the USPTO. Many countries already require local attorneys to represent applicants. A significant number of trademark offices around the world require foreign-domiciled applicants and registrants to obtain local counsel as a condition for filing papers with those trademark offices.” Frankly, the phrase “possibly fraudulent submissions” refers to the growing number of Chinese submissions to the United States Patent and Trademark Office. One main issue of foreign filings are what we call the “trademark specimen.” The specimen must be an actual picture or photograph of the trademark on advertising or on products. Sadly, many foreign filings contain a computer-generated graphic of what a trademark would look like on advertising or on products. Those computer-generated graphics are insufficient for registration in the USPTO, but many more foreign filings are more suspect of having false trademark specimen than domestic filings. This new rule means that any foreign person or business must use an attorney licensed in a state in the United States. This does mean more work for attorneys in the United States as those who want to apply for a U.S. trademark will need to seek one out.

Intellectual property and business plans. You know what a good business plan is, right? A business plan is a description of how you want to build your company. In the business plan, you want to explain what customers you want to target via which marketing channels, what makes you different from competitors, who the management team is, how you are going to make a profit, and what the milestones are for achieving your business plan. So, in a nutshell a good business plan follows the story of your business. Why do you need a business plan for intellectual property? Simple. You want to make money. Intellectual property helps you make money by creating worth in the intangibles of your business. Your inventions are protected by patents. Your brands are protected as trademarks. Your work is protected under copyright law. Your business plan needs to talk about intellectual property and your intellectual property lawyer needs to know how you're going to monetize, else your intellectual property will not have the right value or worth. A lightly-edited transcript of the vlog appears below: Hi, I'm Anthony Verna, managing partner of Verna Law, P.C., where we focus on IP and Advertising Law. But you probably knew that because this is about the sixth video blog I've done. Yesterday, I had a dinner with a law firm from Brazil. The two partners are patent attorneys and we were talking about relevant issues between our clients. They said something magical to me. They said that if their clients are startups, they want to see a business plan. Funny, when my clients are startups, what do I ask them for? I say, "Please show me your business plan." Or, "Please tell me your business plan." "Please describe your business plan to me." Why? Because intellectual property goes hand in hand with, of course, making money. If your business doesn't have a plan for how you're going to make money, your business doesn't have a plan for how your intellectual property is going to be valued. And you may ask yourself, "That might make sense, but I'm still not completely sure about that." Let me explain to you, especially on the trademark side, if there's a company out there that's infringing upon your brand and upon your trademark, well you need to have a registered in order to really truly ask for damages like attorneys fees, and lost sales. You really need that registration. If you are not making money, then what are your lost sales from the infringer's sales. If your patent is not used in business, then then what good is it to you if your copyright is not being used to make money, what good is it for you? So I'm thrilled that my international colleagues are asking the same thing of their clients that I'm asking of my clients. Show me your business plan because we have to make the registration worthwhile. We have to make the enforcement worthwhile if we're going to license or if you're going to take a license, we need to make that worthwhile. And the only way that we're going to make that worthwhile is this blend of business and law actually coming together. So make a business plan. See a business consultant and make sure that you have a business plan. You know, I'll gladly talk to you before you have a business plan, but there might not be action before you have a business plan. Get that business plan and then we'll get your IP solidified.

Video blog on trademarks and the craft beverage industry. Intellectual property is important today as there are more craft breweries, distilleries, and wineries than ever before and many similar brands are chosen independently of each other. Also, many of these businesses need to take their IP more seriously in case of a buyout. Here is a lightly-edited transcript of the vlog: Hi, I'm Anthony Verna, managing partner of Verna Law, P.C., with a focus on Intellectual Property and Advertising Law. You know, some of my favorite clients are my beverage clients and yeah, maybe it has to do with the free bottle of wine or free can of beer here every once in awhile. But really it's because they're thinking long-term about their business and the brands that they have for all of their different types of beverages. It's very important because they think about that end goal, which is are they going to be bought out and if they're going to be bought out, are all of the trademarks registered? Is the due diligence done? What is the goal of actually naming a certain product? In 2016, there were the most lawsuits ever trademark infringement suits and trademark opposition proceedings between beverage companies. Why? We have more breweries. We have more distilleries. We have more wineries than we've ever had before. And that those numbers just keep growing as states find that agricultural businesses bring in tax revenue. Therefore, those laws get liberalized. And so we have more breweries and more distilleries and more wineries. That means that all of these businesses wind up branding independently of each other and therefore they go to the Patent and Trademark Office. They filed the trademark and boom, there's a collision. And then, in 2017, we had more beverage industry trademark disputes. These numbers keep growing. Bigger companies like Anheuser Busch are looking to buy out more and more craft breweries, regional breweries. In order for that to happen, the registrations have to be done properly. The due diligence has to be done properly. Sometimes these bigger companies do lend a hand to the small, smaller breweries. But, ultimately, it's up to all of these smaller beverage companies to line up their intellectual property correctly to understand what's registered, what's not, what could cause a collision and how not to wind up as a defendant in a trademark infringement suit. And that's what I really like about all of our small beverage companies, all of our distillery, clients, all of our beer, our brewery clients, all of our winery clients. They're all looking towards that end: how can we brand something properly? How can we do our due diligence to avoid problems? How do we not wind up just as another statistic? I don't want to call it the craft beverage wars, because that's not ultimately what what they're out to do, but it's what happens and it's happening too often. So do the due diligence and the clearance. Let's sit down and let's talk about your craft beverage branding. Thanks very much.

Video blog: Trademarks and the Cannabis industry. It's harder to register the brand of cannabis products as trademarks for several reasons. I go through those reasons and some tips for potential trademark protection for the cannabis industry. Here is a lightly-edited transcript of the video blog: Hi, I'm Anthony Verna, managing partner of Verna Law, P.C., a law firm focused on IP and Advertising Law. I'm going to give you a little hypothetical. You are either growing cannabis or you're a cannabis dispensary or you have a company that has some kind of accessories to cannabis and you want to take either the strain that you're selling, or growing or the products that you're making and you want to brand that and registered as a trademark. You're going to have a couple problems with that, however. We have a case called in re Pharmacon LLC. At which point, the Trademark Trial and Appeal Board ruled that because we have the Controlled Substances Act, a federal legislation which makes cannabis sales illegal. Even though states are legalizing the use and sale of cannabis more and more, it is still illegal under federal law. And the Trademark Act is very blatant about federally registered trademarks. They must be in lawful use. Therefore, the Trademark Act and this federal Controlled Substances Act basically make cannabis trademarks illegal. So if you're in this particular industry, how are you protecting your brand as something that can be only yours? Well, number one, I would state that if you're in the accessory business, that's perfectly fine. Anything that's related to cannabis would be fine as long as you forget to have any designs that relate to cannabis, no leaves. No stating the product is related to cannabis. If you're in this particular business and you're making hemp or you're making CBD oil, well those products are fine. And, what I would say is that if you're in those industries, take your brands and register them there. Another thought would be state trademark registrations. Usually, I'm not a big fan of state trademark registrations because usually they're only evidentiary in nature. At the very least in the states where this is legalized, you as a business owner can state what the brands are. Here are what we are selling. And at least in these particular states where it's legalized, you'll have some kind of protection there. And, of course, the business can always rely on the common law as well for trademark protection. But that, of course, is a matter for the courts. For actually receiving a federal registration, remember any product that's an accessory to cannabis is perfectly fine. Just make sure you leave out the leaves, make sure you leave out the word "cannabis" at the Patent and Trademark Office.

Why does someone need to register a copyright? It's quite simple. The statute requires that a potential plaintiff must have a copyright registration certificate before walking into court. The Supreme Court affirmed the plain language of the statute in March 2019. It is also better for the types of damages that a plaintiff in a copyright infringement lawsuit can ask the court for. Registration Required for a Lawsuit Registration of a copyright occurs, and a copyright claimant may commence an infringement suit, when the Copyright Office registers a copyright. Upon registration the copyright, however, a copyright owner can recover for infringement that occurred both before and after registration. Under the Copyright Act of 1976, as amended, a copyright author gains “exclusive rights” in her work immediately upon the work's creation. 17 U.S.C. §106. A copyright owner may institute a civil action for infringement of those rights, §501(b), but generally only after complying with §411(a)'s requirement that “registration . . . has been made.” Registration Required for Copyright Damages One of the greatest advantages of registering a copyright pertains to the ability to recover statutory damages and attorney's fees in a successful action. Given that many infringements costs many thousands of dollars to prove in court yet only generate provable damages of minor amount, the inability to collect significant damages and incurred attorney's fees for infringement of a non registered copyright may make the difference between a successful action or a Pyrrhic victory. Here is a lightly-edited transcript of the video: Hi, I'm Anthony Verna, managing partner of Verna Law, P.C. We focus on Intellectual Property and Advertising Law. This past week I had a phone call with the judge and the plaintiff in a case where I'm representing the defendant. The plaintiff sued my client for copyright infringement. One little problem though with the plaintiff's case: the plaintiff does not have a copyright certificate from the Library of Congress. Well, of course that's a bit of an issue. Recently as a matter of fact, in March, the Supreme Court ruled that you must have a certificate from the Library of Congress before you start an infringement lawsuit. Now, this has been written in the statute since the Copyright Act has been passed, but a lot of lawyers started to do this little trick of filing the application for a copyright, showing that there's a number for the application and then filing a lawsuit. Some judges have accepted that, but the majority of courts have not. So we had this split in which some judges said the application counts as a registration and some cases in which, of course the application is just that: an application. That split was recently resolved by the Supreme Court. This isn't an ideal situation for a plaintiff if your copyright is being infringed. You need to have that copyright certificate for not just being able to walk into court, but also being able to claim extra damages, which we call statutory damages, which are made by the judge and really are punitive in nature as well as the ability to ask for attorney's fees. If infringement happens before a certificate is issued, the only damages that plaintiff can ask for is the actual damages of the infringement. So in other words, lost profits. In order to actually get into court on a copyright infringement suit, you need to have that certificate. And in order to ask for damages that actually make a copyright infringement suit worthwhile statutory damages and attorney's fees, you need that copyright certificate. Make sure that you're registering your copyrights before any of this becomes an issue. In other words, right after the finish of the creation of the work.

Being a trademark licensee means that your business is using the trademarks of another business in order to create products that the licensor (the trademark owner) cannot or will not create. This creates a bigger pie for both the licensor and licensee and then the licensee can pay the licensor a royalty to use the trademarks. What Is Trademark Licensing? Trademark licensing is the process by which a registered trademark owner, called a licensor or proprietor, allows another party, called a licensee, to make and distribute specific products or services under the licensor's trademark agreement. Trademark licensing is a type of merchandise agreement. The licensor receives a certain amount of money or royalties, a percentage of all sales, in exchange for sharing the trademark. This compensation is also called consideration. Fashion and consumer products concerned with sports and entertainment are often sold under a trademark licensing agreement. The licensee usually creates a trademark licensing agreement, but a licensor can also create this document. Both parties usually agree upon the terms before creating a trademark licensing agreement. Here is a lightly-edited transcript of the video blog: Hi, I'm Anthony Verna, managing partner of Verna Law, P.C. where we focus on Intellectual Property and Advertising Law. I've had some clients who've asked me about licensing, and sometimes licensing is very good. I mean there are some products that don't work unless it's actually licensed from somebody else. Well, yeah, go Eagles. One of the big issues with licensing is of course you're in a contract with a partner, so you as the business owner are now taking somebody else's intellectual property and you're using it on your own product. So you will have to account for product quality. You're going to have to account for obviously sales. What a lot of people are concerned when they talk to me about licensing are minimums, royalties, those payments that you're going to send to, your licensor, and, and really if that license or is going to work with you. What I, always tell clients or potential clients who are looking to be a licensee and work with a licensor and take that intellectual property is number one: Your goal is to make sure that there's a bigger pie for both sides of the transaction. So there's a bigger pie for you. Yes, you'll be paying royalties, but in using somebody else's intellectual property, the goal in that particular case is to make sure that your pie is bigger and their pies. That's number one. Number two, does your product fit well? You don't necessarily know that and they don't necessarily know that. And the only way that you're going to know that is by asking and starting those particular contract negotiations. Another issue that clients come to me with is the size of, of the license or are they going to work with me if I'm a smaller licensee? And the answer to that is sometimes and, again, the only way that you're going to know that is by sitting down and having those contract discussions. Certainly a lot of people are afraid that that some licensors, like the NFL, are not going to work with them and a lot of sports leagues have programs for smaller, licensees and having smaller businesses so that hopefully those businesses grow. Why? Because, if those businesses grow, then the licensor's businesses grow as well. And that's one very important aspect of finding out if there's a program for working with small, smaller licensers and this way as your business grows, their business grows as well. Don't be afraid of minimums. Don't be afraid of asking. Don't be afraid of, of taking those steps and, and finding out if that growth is available for you. I've had clients who are worried about having more skews. If you're going to grow your business, sometimes you need more skews as well. So don't be afraid. Don't let those issues stop you.

Potential Plaintiffs A trademark search shows possible plaintiffs.  Does your business' trademark cause a likelihood of confusion with other trademarks that are already registered or in use?  It is impossible to judge without a trademark search. Potential plaintiffs are those whose marks are either registered before your mark or in use before your mark.  Many businesses find themselves as defendants in either trademark oppositions in the Trademark Trial and Appeal Board or in trademark infringement lawsuits in federal district court because of the lack of a trademark search.  Finding these potential plaintiffs helps to judge the risk of being a defendant in a trademark dispute. Alternatively, if a business has already registered a trademark while your mark is in use, then you will need to dispute that registration.  Is it worth that dispute or is it more economical to find a new trademark? Analysis of the Trademark A trademark search reveals how strong your trademark choice is.  For example, if there are 50 other similar trademarks in economically related goods/services, then the trademark you chose is particularly weak, especially if the trademark itself is related to the goods/services the mark is to represent. If a trademark search shows that a trademark is in a crowded field, then it may be better to find a new mark.  Fanciful trademarks are stronger and will probably live in a less-crowded field, making them easier to police and enforce. There are five levels to trademark strength. Fanciful marks A fanciful/inherently distinctive trademark is prima facie registrable, and comprises an entirely invented or “fanciful” word. For example, “Kodak” had no meaning before it was adopted and used as a trademark in relation to goods, whether photographic goods or otherwise. Invented marks are neologisms which will not previously have been found in any dictionary. Arbitrary marks An arbitrary trademark is usually a common word which is used in a meaningless context (e.g. “Apple” for computers). Such marks consist of words or images which have some dictionary meaning before being adopted as trademarks, but which are used in connection with products or services unrelated to that dictionary meaning. Arbitrary marks are also immediately eligible for registration. Salty would be an arbitrary mark if it used in connection with e.g. telephones such as in Salty Telephones, as the term “salt” has no particular connection with such products. Suggestive marks A suggestive trademark tends to indicate the nature, quality, or a characteristic of the products or services in relation to which it is used, but does not describe this characteristic, and requires imagination on the part of the consumer to identify the characteristic. Suggestive marks invoke the consumer's perceptive imagination. An example of a suggestive mark is Blu-ray, a new technology of high-capacity data storage. Descriptive marks A descriptive mark is a term with a dictionary meaning which is used in connection with products or services directly related to that meaning. An example might be Salty used in connection with saltine crackers or anchovies. Such terms are not registrable unless it can be shown that distinctive character has been established in the term through extensive use in the marketplace (see further below). Lektronic was famously refused protection by the USPTO on ground of being descriptive for electronic goods. Generic marks A generic term is the common name for the products or services in connection with which it is used, such as “salt” when used in connection with sodium chloride. A generic term is not capable of serving the essential trademark function of distinguishing the products or services of a business from the products or services of other businesses, and therefore cannot be afforded any legal protection. This is because there has to be some term which ...