Posts in Business

Brands — legally protected as trademarks — have value. We all understand that intuitively. Registering brands as federal trademarks also provides significant legal benefits, such as the presumption of ownership, validity, and nationwide priority in the mark. According to a recent study, the number of trademarks a company registers in a given year helps predict that company’s profitability and stock returns for the following year.

As I described in my previous article about the protocol for clean room product development, there are often situations where a company has come into contact with intellectual property that it cannot allow to spread to a product in development. In that article, I described the concepts of a clean room. In this article, I describe the practical implementation details. Once a clean room protocol has been set up, the following sections describe the recommended procedure to implement.

Brand owners frequently encounter significant challenges in obtaining federal trade dress registration. The recent ruling in the Eastern District of Virginia confirmed that TBL Licensing, LLC, the brand owner of Timberland boots, was not an exception to this struggle. Unlike a word mark, a product design can never be inherently distinctive as a matter of law because consumers are aware that such designs are intended to render the goods more useful or appealing rather than identifying their source. Wal-Mart Stores, Inc. v. Samara Bros., Inc., 529 U.S. 205, 212-213 (2000). In order to obtain a federal trademark registration for a product design, the applicant must establish secondary meaning.

There are often situations where a company has come into contact with intellectual property that it cannot allow to spread to a product in development. One example is a joint development project between two companies where the IP for the jointly developed product cannot seep into other products but where each company must develop products that interface with the jointly developed one. This situation can occur when groups create standards that involve IP from various sources.

Although the mining and metallurgical sectors are still seen as environmentally unfriendly industries, innovation in these sectors has been increasing since the beginning of the century, including in the development of green technologies. Four years ago, the World Intellectual Property Organization (WIPO) released a study measuring innovation in the mining industry with patents, “Mining patent data: Measuring innovation in the mining industry with patents”, showing a sharp increase in the number of correlated patent applications since 2005, which is a clear sign of the growth in investments in R&D and innovation made by these industries.

In January of this year, the Federal Trade Commission (FTC) proposed a new rule that would ban employers from using noncompete clauses for their employees. In an announcement, the FTC said that the use of noncompete clauses is “a widespread and often exploitative practice that suppresses wages, hampers innovation, and blocks entrepreneurs from starting new businesses.” The agency estimated the new rule could increase wages by $300 billion a year, as firms would be encouraged to do more to keep their workers. The proposed rule change was opened for public comment in January, and the deadline for submissions was extended from March 20 to April 19 in early March. As of April 18, the Regulations.gov website indicated that 24,259 comments had been received and 14,946 posted. With the comment period coming to a close this week, the U.S. Chamber of Commerce has weighed in, urging April Tabor, FTC Secretary to withdraw the proposed rule.

The simplest facts are sometimes the most difficult to comprehend. Patent suits are not as pervasive as they are portrayed in the media or by defendants. Remarkably few are filed relative to the number of patents that are active. The necessity to litigate patent disputes to get the attention of potential infringers and hold a meaningful licensing discussion has likely increased the total number of suits filed. If it has, it has not had much of an impact on the net total. This suggests that many patent holders who should be suing are not.

In commercial contracts, especially with foreign entities, it is very common to agree on arbitration as a dispute resolution method. A typical arbitration agreement specifies arbitrable matters, arbitration institution, place of arbitration, and arbitration rules. In crafting an arbitration agreement, especially when the arbitration clause is embedded in the main body, contracting parties normally write into the contract the applicable law and dispute resolution authority for the main contract, but rarely do the same for the arbitration agreement itself in addition to the main contract. In general, if a dispute involves issues surrounding the validity (or arbitrability) of an arbitration clause, whereas the arbitration agreement does not provide anything about arbitrability, two questions may come up in practice: (1) what is the applicable law on resolving the arbitrability issue? (2) who has jurisdiction over the arbitrability issue – a court or an arbitration institution?

Resources such as marketing and branding agencies can help new businesses struggling to find a unique brand name, and lawyers specializing in trademark law can help evaluate infringement and refusal risks and assist in registering a trademark. That said, the costs associated with each of these options are not insignificant, leading some smaller brands and startups to choose a name, do a quick internet search for prior use, and just hope they don’t face repercussions. One of the many issues with this is that as a new business grows and becomes more recognizable, the increased exposure makes it easier for someone with pre-existing rights to find and enforce those rights against the new business. This could include financial penalties and a complete rebrand of the business causing confusion to established customers, which is why choosing and trademarking one’s brand name early is vital. Insert Artificial Intelligence (AI). I

In teaching Intellectual Property (IP) licensing for the Licensing Executives Society (USA & Canada), Inc., we often open with the first principle of contracts: the “contract” is the meeting of the minds between the parties. What did they actually agree to? The work of the written agreement is to memorialize that meeting of the minds. It is necessarily imperfect. Sir Ernest Gowers aptly describes the challenge of good writing generally, saying it is “the choice and arrangement of words in such a way as to get an idea as exactly as possible out of one mind and into another.” (Sir Ernest Gowers, Plain Words: Their ABC, Alfred Knopf, New York, 1955). In IP licensing, it is the difficult task of reducing to writing an idea from two or more minds such that it conveys to both what each conceived of as the agreement.

The Global Innovation Policy Center (GIPC) of the U.S. Chamber of Commerce issued its 11th annual International IP Index today, striking what seems like a more dismal tone than usual compared with past reports. While 18 economies saw modest progress on IP protection improvements, 28 economies, including many of the high-scorers, like the United States and the United Kingdom, had a 0% change in score. Only two countries had a 0% change in the 10th edition of the Index. The Index covers 55 economies that represent “most of the global economic output, together contributing over 90% of global GDP.”

In January 2023, the Federal Trade Commission (FTC) unveiled a proposed ban on non-compete clauses that prohibits employees from joining or forming competitive firms following the termination of their employment. According to the FTC, non-compete clauses unfairly and unnecessarily stifle employees’ ability to pursue better employment opportunities. While this criticism may ring true in the case of lower-wage workers, such as restaurant and warehouse employees, even the staunchest critics of non-compete clauses will typically acknowledge that they can — and often do — play a legitimate role in the protection of trade secrets. This is why the FTC’s proposed rulemaking is causing consternation in the intellectual property community.

A report released  Wednesday by MarqVision found that 68% of direct-to-customer (DTC) brands have had their products counterfeited. The report surveyed 295 representatives from DTC brands across the world. The report also provides information about how worried DTC brands are about IP infringement and counterfeiting. The DTC market has tripled over the last five years, accounting now for $1 of every $7 spent, according to the report.

Engagement in proactive IP litigation by global companies is the bedrock of trademark enforcement, and Adidas is no stranger to this strategy. Since 2008, this athleisure accessories manufacturer has consistently protected its intellectual property by signing over 200 settlement agreements and fighting more than 90 court battles. Most recently, on  January 12, 2023, Adidas’s efforts to sue Thom Browne Inc., a Zegna subsidiary, for trademark infringement of its ‘three-stripes logo’ was foiled. The damages claim of around $7.8 million, or £6.4 million, backfired on the German sportswear giant when it was denied by an eight-person Manhattan jury.