The opportunity to label social media posts with hashtags are endless. But there is a tension between brandowners’ desire to get as many people as possible to see their posts and use their hashtag, and the traditional trademark laws. Trademark law surrounding social media is still full of gray areas, but this article can provide brandowners some guidance.
Congress just gave trade secret owners a new way to defend their secret sauce. The Defend Trade Secrets Act (DTSA) was signed into law on May 11. An extension of the federal Economic Espionage Act, DTSA allows trade secret owners to bring a civil action in U.S. district court seeking relief for trade secret theft, also known as misappropriation.
Kyle Peterson is representing Stephanie Lake, a Minnesota jewelry designer and expert on the life and works of Bonnie Cashin, in a trademark opposition filed by Coach. Read more about the case in this New York Times article.
The strength of a company’s intellectual property portfolio often drives the value of corporate transactions. Regardless of whether you are the target company or the buyer in a business transaction involving IP, the due diligence process should be designed to reveal the value of the intangible assets—patents, trademarks, copyrights and trade secrets.
Patent law has recently undergone significant reform with the enactment of the America Invents Act (AIA). One such reform improves the value proposition of trade secrets. Before the AIA, an accused infringer who had practiced a patented invention in secret for many years prior to the patentee’s filing date could not rely on a so-called “prior user right,” unless the patent was for a so-called “business method.” Under the AIA, prior user rights have been extended to any technology. Having a robust trade secret, and practicing that trade secret prior to later patenting by another can provide an invaluable affirmative defense to patent infringement charges through prior user rights.
Trademarks are highly valuable assets. Developing and protecting trademarks is not merely a “cost of doing business,” but rather an investment in customer goodwill, leading to greater customer satisfaction and higher sales. A trademark can be almost anything that distinguishes the goods or services of one party from those of another. Trademarks also assure consumers of consistent quality and thus help promote efficient competition.
When entering into a joint research agreement with a prospective partner, it’s tempting to agree that both parties will jointly own any patent rights arising from the collaboration. This approach can be quite problematic once valuable patent rights are acquired. Unless the rights of each party are clearly detailed in the agreement, several complications can arise which can affect the value of the respective patent rights. In the United States, 35 USC 262 states that in the absence of an agreement to the contrary, each joint owner of a patent may make, use and sell the patented invention without the permission of or the need to account to the other joint owners. Case law has extended this provision so that each co-owner may also license the invention without recourse to the others. This effectively precludes the grant of an exclusive license in cases of joint ownership unless all the joint owners agree not to grant