Brands that are weird – Avoiding the Waldo Paradox

The Ignite phenomenon is bubbling up throughout the world and it is happening within the state of Oklahoma as well (yes, even Oklahoma!)

Last week was the first Ignite Tulsa event and our own Emily Campbell dove into the fray with a talk entitled “How Not to be Waldo: Brands that Stand Out in a Crowd.”  I may be a bit biased – but she rocked it!

Emily’s mantra of “Be Weird, Be Different and Think Outside the Box” is a great way of thinking about your branding efforts and the need to stand out in a crowd.

It is a bit unusual for an attorney to be thinking about branding – Emily may have some additional thoughts on that topic – but, when you think about it – it makes perfect sense.  Trademark attorneys see the process at all stages – conceptualization (doing the clearance searches), design and development (filing intent to use applications), and product launch (filing statements of use), to name but a few.

As we say around here, the job of a good trademark attorney is to take you all the way from the minefield of cluttered competing corporate interests to the end point of bringing everything to a succesful conclusion – a customer buying the product and associating the product with the reputation and messaging you wish to develop.  Dare I say it – taking it from a Mess to Yes™

As you saw on PHOSITA last week, the IgniteOKC folks are working on launching their first event and are looking for volunteers and thought leaders.  The first planning meeting was last night – but there is still room for more help.  Drop Emily Campbell an email if you are interested.

Posted by Douglas Sorocco, September 24, 2009 at 10:27 am
Permalink: Brands that are weird – Avoiding the Waldo Paradox
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Confessions of a Trademark Junkie

It’s been awhile since I’ve provided commentary on the blog but after attending a local marketing presentation, I just had to share my two cents about the event. 

“Hey Emily!  What are you up to next Tuesday?  Let me tell you – I just signed you up to attend a marketing presentation.  It will be a good experience for you and you may pick up a few tips on branding.” 

Little did I know but the President of our firm signed me up to attend a marketing presentation conducted by a local news station at a nearby hotel.  Sounds interesting.  I’m game for learning new things.

I arrived only to be greeted by an account executive, a woman who shall remain nameless, that claimed she “researched” our “company” before the event “but couldn’t seem to remember what our website said.”  Since she obviously did not read our website, she will likely not read this article nor be ashamed that I am now revealing this information about her.  “What is a codding?” she asked.  I just chuckled.  Not a great way to start a sales pitch — Ay yay yay.

This account executive was whisked away to attend to another guest.  Although everyone else in the room was paired with another account executive, I was now left alone.  I was then approached by another account executive – AE #2, but who’s keeping track?  He started to lay the sales tactics on thick, explaining the marketing program to me and the wonderful opportunities television advertising could offer to our firm.

Luckily, after a few minutes, we were directed to a second room where a presentation was about to begin.  (At this point I had an eerie flashback to sorority rush – is there a skit about to take place?)  A third, yes third, account executive introduces himself to me.  We sit down to watch a video presentation about television marketing. 

After the video presentation, a PowerPoint presentation begins.  The speaker talks about how television marketing can raise consumer awareness of your brand.  I perked up when he flashed a bunch of trademarks up on the screen.  Sadly though, he lost me when he started to explain brands as generic source identifiers. 

“What is this?” he said as he pointed to a picture of some cell phones and MP3 players.  “iPhones and iPods” someone said.  “When your little one gets a ‘boo-boo,’ what do they ask for?” he asked.  “A Band-Aid.”  “Exactly,” he says, “they don’t ask for a self-adhesive strip, they ask for a Band-Aid.” 

I spent the next five minutes explaining to my third account executive that local television advertising is probably not the appropriate avenue to advertise our law firm’s services.  Once he got the hint that I was not prepared to sign on the dotted line, we spent the next ten minutes or so discussing the dichotomy between brand awareness and single-source brand awareness. 

There is an unfortunate disconnect between marketing and legal (particularly trademark) departments.  This was evident in the presentation I had just witnessed.  During the presentation, the speaker genericised each trademark he discussed, referring to all MP3 players as “iPods” and all self-adhesive strips as “Band-Aids.” 

I think Johnson & Johnson’s trademark attorneys would have groaned when the presenter referred to their products as Band-Aids, rather than Band-Aid® brand adhesive bandages.  Has all their hard work been ignored?  What about their catchy theme song?  “I am stuck on Band-Aid® Brand cause Band-Aid®’s stuck on me.” 

I asked the third account executive if he understood that trademark rights could be completely lost if a brand becomes generic.  Brands like Aspirin, Escalator, and Trampoline are a few examples of things that were once brands but are now simply generic terms for acetylsalicylic acid, moving staircases, and rebound tumblers. 

From a trademark perspective, while we would like for people to be aware of brands, what’s equally as important is that people know that the brand represents a single source and not a generic line of products.  We want people to think of only one source or one company when they think of Band-Aid® brand adhesive bandages.  We want people to know that the brand of self-adhesive bandages that they can trust is Band-Aid® brand adhesive bandages because the brand stands for quality and consistency.  When you buy Band-Aid® brand adhesive bandages, you know that it will protect your little-one’s boo-boos.

“So how can we do this,” the third account executive asked. “How can we raise consumer awareness while at the same time, point to only one source of those products?”

Start with making sure that the company itself is properly using the brand.  There are few rules for proper trademark usage that should be shared with the advertising and marketing department so that everyone is on the same page. 

Rule number one — never use a trademark as a noun and stay vigilant in keeping others from using your mark as a noun.  For example, The Lego Company warns users against using the term LEGO® as a noun – if you enter the term “legos” into a search engine, the following statement would appear:

Using a trademark as a noun is a sure-fire way to transform your brand into a generic term for a particular type of product.  Consider the following – “My kids love to play with LEGOS.”  In the first example, the speaker could be referring to store bought bricks, The Original Toy CompanyTM bricks, Playskool® bricks, or LEGO® bricks since the speaker is using the term LEGOS to mean bricks.  To use the brand properly, the brand should be used as an adjective.  For example, the following would be appropriate – “My kids love to play with LEGO bricks.”

Another strategy companies can use to protect their brand names is to monitor and manage external usage of the mark.  You should educate the media about proper usage of your company’s brands and also send reminder letters and, in some cases, cease and desist letters to third parties who are incorrectly using your marks. 

If you find that someone is potentially infringing upon your company’s brands, you should perform some level of due diligence to protect what is, in many cases, a company’s most valuable asset – it’s reputation.

So, what did a trademark attorney attending a “sales dog and pony show” learn – well, raising awareness of your brand is one thing, but making sure that consumers associate that brand with only one source of products is another.  After all, what we don’t want, is for people to see our brand and think of a generic line of products.  We want our advertising to encourage people to buy our product, not just any product. 

Oh, and if you are still wondering what a Codding is, please check out our firm website at www.dunlapcodding.com.   

Posted by Emily E. Campbell, September 1, 2009 at 5:44 pm
Permalink: Confessions of a Trademark Junkie
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what is the difference between a patent, a trademark and a copyright?

Considering how complex intellectual property law can be, it is understandable that many people – including authors, journalists, biz and tech bloggers, tweeple, etc. – confuse the terms and oftentimes speak/write of “patenting a book” or “copywriting a new gadget”.  I also receive a large number of requests asking for advice on how to “copyright an idea” – so, I thought it would be helpful to lay out a short and concise explanation of each area of intellectual property law.

First, what do I mean by the term “intellectual property”?  According to Tech Terms Online:

“Intellectual property refers to the ownership of intangible and non-physical goods.  …  Since intellectual property is intangible, it is more difficult to protect than other types of property.”

While this is a fairly reasonable definition, I prefer to use a more shorthand version: “Intellectual property is something that is created by the mind.”  Typically, we think of ideas as being created by the mind – but intellectual property does not protect bare ideas: rather, it is the expression or symbolic power/recognizability of the ideas that are protected. 

Thus, it is the design of the rocket that is patented, not the idea of a rocket.  It is the painting of the lake that is copyrighted, not the idea of a lake.  And it is the consumer recognizable logo that is trademarked, not the idea of a logo.  Intellectual property protects how we express and identify ideas in concrete ways – not the idea itself.

In particular:

• Patents: protect functional expressions of an idea – not the idea itself.  A machines, method/process, manufacture, compositions of matter, and improvements of any of these items can be patented.  Thus, I can patent a design for the nozzle on a rocket, or the method of making the rocket, or the method of making the rocket fuel, or the metal in which the rocket fuel is stored, or a new way of transporting the rocket fuel to the rocket.  But I cannot patent the broad “idea” of a rocket.
   
• Copyrights: protect the specific creative expression of an idea through any medium of artistic/creative expression – i.e., paintings, photographs, sculpture, writings, software, etc.   A copyright protects your painting of a haystack, but it would not prohibit another painter from expressing their artistry or viewpoint by also painting a haystack. Likewise, while Ian Fleming was able to receive a copyright on his particular expression of the idea of a secret agent (i.e., a debonair English secret agent), he could not prevent Rich Wilkes from receiving a copyright on his expression of the idea of a secret agent (i.e., a tattooed bald extreme athlete turned reluctant secret agent).  
   
• Trademarks: protect any symbol that indicates the source or origin of the goods or services to which it is affixed.  While a trademark can be extremely valuable to its owner, the ultimate purpose of a trademark is to protect consumers – that is, the function of a trademark is to inform the consumer where the goods or services originate.  The consumer, knowing the origin of the goods, can make purchasing decisions based on prior knowledge, reputation or marketing. 

While each category is distinct, a product (or components/aspects of a product) may fall into one or more of the categories.  For example, software can be protected by both patents and copyrights.  The copyright would protect the artistic expression of the idea – i.e., the code itself – while the patent would protect the functional expression of the idea – e.g., using a single click to purchase a book online.  Likewise, it is likely that the software company will use a trademark to indicate who made the software. 

An additional example would be a logo for a company.  The logo may serve as a trademark indicating that all products affixed with the logo are from the same source.  The creative and artistic aspects of the logo may also be protected by a copyright. 

The complexity of intellectual property protection increases exponentially during the life cycle of innovation, research, product development, etc.  A single product may contain, for example, more than one patentable feature, one or more creative or artistic expressions that may be protected by copyright, and one or more trademarks indicating the source of the product.  All of these points of intellectual property provide an opportunity for protection and/or an opportunity for infringement of a third party’s intellectual property.

So – while it is simple and straightforward (well, mostly) to differentiate between the different aspects of intellectual property, it is a more difficult process to implement a strategic path forward and determine which type(s) of intellectual property protection are appropriate/desirable.

I am sure that PHOSITA readers will quibble, argue and debate me to death on the above-referenced “short hand” guides to intellectual property.  Drop your thoughts/short hand (keep it clean) into the comments.

(Photograph by Halima Ahkdar, used under Creative Commons license.)

Posted by Douglas Sorocco, January 11, 2009 at 10:03 pm
Permalink: what is the difference between a patent, a trademark and a copyright?
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DJ Action Dismissed – 1st Post MedImmune

In what appears to to be the first dismissal of a declaratory judgment action post the Supreme Court’s decision in MedImmune, a court in Minneapolis dismissed two counts seeking declaratory judgment of non-infringement and invalidity (Case 08–cv-00816).

According to the ruling:

“However, although MedImmune lowers the bar for declaratory judgment jurisdiction, a substantial controversy is still required. In the post-MedImmune authorities relied on by[Plaintiff], a patentee has either demonstrated a preparedness to litigate against the prospective declaratory judgment plaintiff, accused the prospective declaratory judgment plaintiff of infringement, affirmatively asserted its rights to license fees, or engaged in some combination of all three. For example, in Micron Technology, Inc. v. MOSAID Technologies, Inc., 518 F.3d 897 (Fed. Cir. 2008), …

Under these circumstances, the Federal Circuit found that the record demonstrated a “substantial controversy” between the parties under the MedImmune standard.” (Emphasis added).

The instant case is distinguishable because [Defendant] has not demonstrated an intent to litigate against [Plaintiff], has not accused [Plaintiff] of infringement, and has not demanded licensing fees. There is no evidence that [Defendant] has pursued litigation against [Plaintiff].

Considering all the circumstances, the Court finds there is no substantial controversy regarding the … Patent supporting declaratory judgment jurisdiction. Specifically, [Defendant] has not yet established any position on whether [Plaintiff] infringes the ‘356 Patent. [Defendant]’s letter to Plaintiff was a means of gathering information regarding potential infringement, not an assertion of an already determined legal interest adverse to [Plaintiff]. Therefore, because the parties have not established positions of adverse legal interests, there is no substantial controversy regarding the ‘356 patent. Accordingly, this Court does not have subject matter jurisdiction over Counts II and III of [Plaintiff]’s Complaint.

A copy of the decision in PDF format can be found by clicking the link (Dismissal Order (26 KB)).

Posted by Douglas Sorocco, August 8, 2008 at 10:14 am
Permalink: DJ Action Dismissed – 1st Post MedImmune
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In defense of offense…

A couple of months ago I came across Mike Dillon’s blog – The Legal Thing – covering all things legal from the perspective of General Counsel at Sun. 

As GC for Sun, Mike’s daily routine must entail a significant amount of attention to intellectual property issues and his blog plows a lot of ground concerning this topic.  The posts are informative – albeit they have a “big corporate shine” to them, much to the dismay of a lot of “anonymous commenters”.   If you read many patent blogs, you can probably guess the identities of many of these “anonymous commenters” – but they do make for an interesting peek at the more reactionary component of our niche of the legal world. 

That is a lot of setup for a recent post of Mike’s dealing with how Sun defends against patent “troll” lawsuits – namely, a good offense.

I recently shared dinner with a few other GCs of local technology companies. It was a nice evening in which we were able to relax and share insights (and commiserate) about topics of common interest. During the course of our meal while we were discussing rising legal costs, one of my table mates made a statement that I found somewhat bothersome. He said that when faced with patent “troll” litigation, he knows he is going to pay something to get rid of the lawsuit and so he economizes on the use of defense counsel. After all, the thinking goes, if your intent is to settle a case, why spend money on a strong defense?

His view is completely contrary to how we think about this problem at Sun. It’s also symptomatic of the way many companies view this issue as a quarterly “cost of doing business” without considering the long term consequences of settlement both for individual companies and our industry.

Before going further, let me state that we respect the intellectual rights of third parties. When a third party claim has been clear and the terms reasonable, we have entered into licenses. However, those situations are easily distinguished from the cases that make up almost all of our present docket of patent litigation. These lawsuits have usually been filed with no advance notice, by plaintiffs that don’t commercialize their patents (i.e. create and sell products) and in venues considered favorable to them. It’s also almost always the case that these plaintiffs have done little or no investigation to ascertain whether our products infringe prior to filing their lawsuit.

I think the approach that Mike outlines is a good example of how to frame decisions when confronted with a freedom to operate issue – whether the FTO issue is brought to your attention through an offer to license, or a cease and desist, or a patent search, or even when you have been served with a complaint — i.e., “How do we play offense in this particular case or instance?”

As Mike mentions, oftentimes it makes sense strategically and economically to simply license the patent – especially if the license allows you to preclude other competitors in the marketplace. 

On the other hand, a careful analysis may lead to a determination that a license is unworkable – e.g., that the patent is invalid or because the license fee does not make economic sense.  In such a circumstance, a zealous defense against an accusation of infringement may be in order – including the invalidation of the asserted claims.

In either case – taking a license or defending zealously – the accused infringer is approaching the case in an active/offensive manner and judging each case on its relative merits.  Defaulting into paying to settle every case is no better than defaulting into aggresively defending every case. 

The best defense to a patent infringement lawsuit?

Early analysis of the case and its relative merits (including the type of entity bringing the lawsuit).  As each case and situation is unique, arbitrary “blanket rules” – while being easy to implement – don’t necessarily increase value to the corporation.  Licensing everything or defending against everything is not a strategy – it is simply an invitation for disaster.

In any event, go on over and read Mike’s blog – I can guarantee that you will learn something.

The best offense…is a good defense.: the legal thing… by Mike Dillon.

Posted by Douglas Sorocco, March 17, 2008 at 9:33 pm
Permalink: In defense of offense…
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Viva Las Vegas! IP CLE in Sin City…

Nipper, as usual, beat me to the punch in announcing a reunion of sorts for the Rethink(IP) guys in Las Vegas next month.

Namely, all three of us will be speaking (along with a host of other great IP panelists) at Dunes’ “Patent Drafting & Prosecution” CLE that is happening on April 11th, 2008 in shiny Las Vegas, Nevada.

The title of my sesion is “Current Issues in U.S. and Foreign Patent Prosecution” – specifically, I will be addressing:

As the world continues to become flatter, patent professionals in the United States are receiving increasingly complex requests from clients as to the patent procedures found in many foreign jurisdictions.  As such, the U.S. patent professional must be able to quickly identify foreign patenting issues early and implement U.S. and foreign patenting activities in a coordinated manner.  In Current Issues in U.S. and Foreign Patent Prosecution, Mr. Sorocco will discuss newly implemented U.S. and foreign jurisdiction rules and regulations that may impact U.S. based practitioners and the clients they serve.  Representative topics include the current status of rule changes at the USPTO, the Hague Agreement on Industrial Designs, the London Protocol Agreement and the possibility of a European Community Patent.

I always appreciate the tips, tricks and insight that come from PHOSITA readers – so, feel free to send them my way.

Posted by Douglas Sorocco, March 14, 2008 at 9:28 pm
Permalink: Viva Las Vegas! IP CLE in Sin City…
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All New PatentFizz – The Good Stuff Always Rises to the Top

All around intellectual property and web wunderkind Matt Buchanan has taken his hugely popular PatentFizz site to the next level this past week – bold new colors, new layouts, and useful new content and tools.

According to Matt, on his summer vacation he has been anything but slothful:

You’ll notice right away that the site has been completely redesigned. It’s a bit easier on the eyes, you might say. The FizzDisplay pages present the abstract, claims, and bibliographic information in an attractive, easy to read format that loads quickly. The FizzDisplay is sweet, instant gratification.

The improvements are not just cosmetic, though. Nope….PatentFizz has an impressive slate of all new features designed to more effectively deliver patent-based information. I’ll be detailing these features on Fizzure, the PatentFizz blog, over the coming weeks, so be sure to subscribe to the RSS feed.

We failed to mention last month that PatentFizz was featured as part of the Economist magazine’s article on patent commenting, examination and intelligence sites.

Check it out and if you have some “scoop” on a particular patent and be sure to share it with the world!

Posted by Douglas Sorocco, October 3, 2007 at 9:28 pm
Permalink: All New PatentFizz – The Good Stuff Always Rises to the Top
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New Blog to Check Out: Financial Aspects of Intellectual Property

One of my new favorite blogs is the Financial Aspects of Intellectual Property blog by the folks at the Innovation Asset Group.

According to their “about” page:

Innovation Asset is a leading provider of software for intellectual property (IP) and contracts management. Founded in 2002, we set out to design fresh solutions to the challenges today’s companies face in managing their intangible assets. We’ve quickly gained a national reputation for our flagship product, Decipher™.

So far, their blog has really been a fun and informative read – dealing with meta trends in intellectual property acquisition and valuation.  As a sample to whet your appetite:

We are seeing an evolution – perhaps revolution. Not just in terms of the recognition of IP as the fundamentally core asset for businesses today; but also in terms of the way in which that IP is managed (I think “where” remains the same).

Initially, IP is managed out of the legal department. In a non-strategic mindset, IP management equates to docketing in some of these companies.

As companies embrace the strategic importance of IP and understand the need to move beyond simply docketing, there is an evolution of the role of the legal department. Much the way IT departments in corporate America evolved from a cost center and service provider to a strategic enabler of the business in the past couple of decades, legal departments are making a similar evolution today.

If you picture a pyramid similar to Maslow’s hierarchy of needs, and similar to the one described in “Edison in the Boardroom,” the bottom of the pyramid represents the least sophisticated IP companies, and the top of the pyramid the most sophisticated.

Well worth a read for anyone interested in intellectual property and what I would consider a “must read” for those within corporate intellectual property departments who must identify, protect and communicate the importance of intellectual property assets.

Sorry for the disruption in the middle of all the “Rules Mess” – we now return you to your regularly scheduled programming.

Posted by Douglas Sorocco, September 26, 2007 at 7:41 pm
Permalink: New Blog to Check Out: Financial Aspects of Intellectual Property
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Round 2 – Part 3 – Review of the New Continuation Rules

As you may or may not already know, on November 1, 2007, the USPTO’s new claims and continuation rules become effective.  The new rules change various aspects of continued examination filings, requests for continued examination, and divisional filings.  This post covers the key rule changes regarding to related applications.   

I digress, before reading the rest of this article, think of the great song of the late 70s, We are Fa-mily, I got all my sistas with me!  We are Fa-mily, get up ev-rybody and sing!  It sets the tone for the remainder of this article since this post discusses patent Fa-milies.   

According to the new rules, an applicant must identify other pending and issued patents within its patent family.  This means, the applicant must identify patents that:

1. Other commonly owned applications  -OR-
2. Patents that have:

1. an inventor in common with the application; and
2. a filing date within 2 months of the filing date of the application.

1. Are commonly owned,
2. have an inventor in common with the application; AND
3. have a priority date within 2 months of the priority date of the application. 

Also, the new rules state that a rebuttable presumption exists that the application contains at least one claim that is not patentably distinct from at least one of the claims from its patent family if the related family patent:

1. has an inventor in common with the application
2. has a claimed filing or priority date that is the same as the claimed filing or priority date as the application; and
3. has substantial overlapping disclosure with the application. 

Where there is a rebuttable presumption, the applicant must:  

1. rebut the presumption that the claims are not patentably distinct by explaining how the application contains only patentably distinct claims
   -OR-
2. submit a terminal disclaimer. 

For additional information click here.  Also click here for a chart detailing the rule changes to “Commonly Owned Applications and Applications Containing Patentably Indistinct Claims”.

Posted by Douglas Sorocco, at 1:47 pm
Permalink: Round 2 – Part 3 – Review of the New Continuation Rules
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Patent Reform Act of 2007 – Part 4

You are no doubt on the edge of your seat waiting to see what other changes are in store if the Patent Reform Act of 2007 is enacted.  Well, wait no longer, this blog post brings to you not one, but two more proposed changes to the current Patent System:  (1) Prior User Rights and (2) Best Mode Requirement Violations. 

You might be asking yourself, “Self, what are prior user rights?”  Well, prior user rights (also called the first inventor defense) stem from 35 U.S.C. § 273.  Currently, 35 U.S.C. § 273 provides a limited defense for actions that would normally constitute infringement if the person “actually reduced the subject matter to practice at least 1 year before the effective filing date of such patent, and commercially used the subject matter before the effective filing date of such patent.”  The defense is narrowly tailored so that “[a] person may not assert the defense under this section unless the invention for which the defense is asserted is for a method.”  In other words, the defense is limited to business method patents. 

After the State Street Bank decision, the USPTO experienced a huge surge of business method applications as well as a huge lack of adequate prior art to judge the novelty and obviousness of these applications.  Consequently, litigation erupted and the prior user defense was enacted to remedy the effects of the enforcement of poor-quality business method patents.   

The Patent Reform Act proposed to widen the scope of the prior user defense by eliminating the business method patent limitation so that users of all types of inventions would have been able to use the defense.  But as amended and passed, the legislation does not include any such changes to the prior user defense.  Instead, the legislation requires the USPTO to prepare a report for Congress detailing their findings and recommendations on the operation of prior user rights in several selected countries. 

The Patent Reform Act, if enacted, would also affect violations of the best mode requirement.  What is the best mode requirement, you might ask.  Well, funny you ask, because I just so happen to have a brief explanation.  Currently, under 35 U.S.C. § 112 a specification must, among other elements, “set forth the best mode contemplated by the inventor of carrying out his invention.”  Under the current law, a defendant in an infringement action could assert invalidity as a defense if the patentee failed to set forth the best mode of carrying out his invention.  35 U.S.C. § 282(3). 

But according to the Judiciary Committee Report there were several problems involved in litigating violations of the best mode requirement since it is so subjective.  So the Patent Reform Act amended the defenses available to potential infringers by making failure to meet the best mode requirement unavailable as a defense to infringement.  Now, the Patent Reform Act, if enacted, replaces Section 282(3) and states that invalidity of a patent or failure to comply with any requirement of Section 112 “other than the requirement that the specification shall set forth the best mode contemplated by the inventor of carrying out his invention” is an available defense. 

Posted by Douglas Sorocco, September 20, 2007 at 4:11 pm
Permalink: Patent Reform Act of 2007 – Part 4
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