Lex Indicium

  • Fixated on “Affixation”: Navigating the US’s Tricky “Use” RequirementApril 06, 2021

    Unlike most of the world, the United States Patent and Trademark Office (USPTO) requires trademark owners to demonstrate actual evidence of use of their marks in order to register and/or maintain their trademark rights. For domestic trademark owners, this “use” requirement is raised at the application stage as U.S. trademark owners are required to file evidence of use before the office will issue a registration. Non-U.S. filers who seek registration in the U.S. may be able to bypass this initial evidence of use requirement at the initial application stage if the U.S. application is based on an extension of the trademark owner’s foreign trademark rights. However, both domestic and foreign trademark owners are required to file evidence of use at both the maintenance deadline – between the fifth and sixth year after registration – and renewal deadlines – file every 10 years after registration.

    What exactly is “evidence of use” in the U.S.? The answer is likely far more specific than you may think. The short answer is the USPTO only recognizes current marketplace evidence showing the applied for or registered mark affixed to the goods and services claimed in the application or registration. But what qualifies as “affixation” … Keep reading

  • IP & Cybersecurity: Critical Points on Data MisuseMarch 25, 2021

    What strategies should businesses employ to circumvent “insider” cyber threats? Attorneys Howard Susser and Brooke Penrose will discuss the best practices to manage and prevent data misuse and the claims to consider when threats arise. Learn about the Computer Fraud and Abuse Act, trade secrets and other intellectual property claims, and breaches of agreements.

    Click here to view the full webinar.… Keep reading

  • Available vs. Allowed: The Pitfalls in Grabbing Domain Names That Incorporate Well-Known BrandsMarch 17, 2021

    “Available” is not the same as “lawful to own” when registering a domain name. Domain registrars – such as GoDaddy, Bluehost and Domain.com – are just marketplaces for available domain names. A registrar’s willingness to allow someone to purchase a domain name does not necessarily come with any assurances that the purchaser has the right to use that domain name. In fact, reputable registrars – and all of those that are accredited by the Internet Corporation for Assigned Names and Numbers (ICANN) – generally require the purchaser to represent that its purchase of the domain name does not infringe on others’ intellectual property rights.

    If a trademark owner believes a domain owner has acquired a domain name that incorporates its trademark – or something confusingly similar to its trademark – without permission, it may be able to grab the domain name from the original purchaser by instituting a “UDRP” proceeding. Under the Uniform Domain Name Dispute Resolution Policy (UDRP), a trademark owner can initiate an arbitration-like proceeding against a domain owner which will determine whether the domain owner can keep its domain or if it will be transferred to the trademark owner. Typical providers of UDRP arbitration services are … Keep reading

  • Top Tips for Drafting Privacy NoticesMarch 05, 2021

    If your website collects information about its visitors, whether by name or anonymously, you are almost certainly required to make specific public disclosures about your treatment of this data and offer visitors information on what rights may be available to them. This information is typically reflected in a privacy policy or privacy notice – for simplicity, we will use the term “privacy notice” – posted to your company’s website. The granularity and type of disclosures required, along with the scope of rights you must provide to visitors under applicable law, largely depends on the geographic areas where your visitors reside. It also depends on whether you are collecting “garden variety” information, like names and contact information, or highly regulated data, like children’s, health or financial data.

    The United States remains one of the few developed countries without a central, comprehensive federal privacy and data security law. Accordingly, websites that only collect information from U.S. residents have some of the loosest requirements with respect to disclosures and rights. However, most U.S. states have some sort of data security and privacy law requiring websites to post a privacy notice. The Federal Trademark Commission (FTC) has broad authority to regulate activities deemed … Keep reading

  • Top 5 Legal Considerations When Selecting a New TrademarkFebruary 17, 2021

    Companies often leave decisions on the new company name or the name of a new product for “another day,” believing that finding the right word is just a matter of internal consensus building or exercising a relatively minor amount of creative thought. But choosing a new name can be a time-consuming, emotionally draining, and resource-intensive task that is rarely accomplished in short order.

    Part of the complication with choosing names and trademarks derives from internal company issues. Choosing names involves understanding the mission and marketing plans of the company. Often these criteria are ill-defined or not agreed upon before the naming process begins. Another common misstep is that the task of naming is given to a business unit that works independently of or external to other management-level employees. This leads to the clearance and selection of names that another business unit or manager may dislike or refuse to accept.

    A fundamental key to success in choosing names and trademarks is putting in place an internal process that involves agreement on who will be involved and how the name should be selected. In particular, if at all possible, company personnel should decide what the new name or mark is intended … Keep reading

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