Fay Sharpe is honored to announce that counsel Colleen Goss has been appointed to the Publications Committee (formerly the Legal Practice Resources Committee) of the prestigious International Trademark Association (INTA). INTA is a global association of trademark owners and professionals who support trademarks and related intellectual property in order to protect consumers and promote fair and effective commerce. As a member of the Publication Committee, Colleen will help select, develop, write and edit content for INTA members-only online resources. She will also participate in conference calls and attend annual meetings and leadership meetings. Colleen has been an attorney with Fay Sharpe since 1995. Her two-year INTA committee term begins January 1 2016....

Fay Sharpe is proud to announce that partner Sandra Koenig has been appointed to a two-year term on the Public Information Committee of the International Trademark Association (INTA). INTA is a global association of trademark owners and professionals who support trademarks and related intellectual property to protect consumers and promote fair and effective commerce. Koenig will help research, write and maintain material for placement on the INTA website that will teach and inform the general public about trademarks and brands. Additional responsibilities include participating in conference calls and attending INTA annual and leadership meetings. Koenig has been with Fay Sharpe since 1985 and is registered to practice before the U.S. Patent and Trademark Office. Her term will begin Jan. 1, 2016, and last through the end of 2017....

By Ameera Haider, law clerk, and Jay Moldovanyi, partner, Fay Sharpe LLP Inventors occasionally create complex, technical devices that can be better described by the function they perform, as opposed to their structure. This is particularly true of inventions in the electronic and computer arts but can also be true of mechanical inventions. Traditional patent claims describe the specific structure of an invention. In contrast, “means-plus-function” claims express a technical feature in functional terms. This offers patent writers more flexibility in how they describe the function a device performs. For example, an inventor could claim an electronic or electromechanical device by describing circuits performing specific functions, as opposed to the circuitry of the actual device. Statutory support for means-plus-function claims is found in 35 U.S.C. 112(f), which states, “An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of...

How startups and small businesses should handle their intellectual property By Theresa A. Rakocy, attorney, Fay Sharpe LLP As a startup or small business, you’ve taken the necessary steps to protect yourself and your assets. You’ve insured your physical assets, such as your building, equipment and vehicles, and you’ve protected yourself by securing insurance and possibly incorporating your business. You started your business with a great idea in mind, but have you taken the necessary steps to protect your most important and valuable asset, your intellectual property? Intangible assets such as product development ideas and prototypes, branding ideas, business and product names, logos and proprietary manufacturing methods may be a small business’s most important assets, but too many businesses fail to protect them. You may not think it’s important to protect your intellectual property, but failing to do so can hurt you in the long run. Unfortunately, many business owners don’t think about IP...

By William Samore, attorney, Fay Sharpe LLP Marking a product with the word “patent,” or the abbreviation “pat.,” along with one or more relevant patent numbers, is considered constructive notice of the existence of a patent. Providing this constructive notice gives an advantage in infringement disputes because damages for patent infringement are limited to the period of time after the alleged infringer had knowledge of the infringement. Written notification to the alleged infringer provides the infringer with actual notice of infringement, but such notice could occur months, if not years, after the infringing activity began. On the other hand, constructive notice can be provided long before actual notice by simply marking a patented product with the corresponding patent number, effectively extending the period for which infringement damages can be recovered. Under the America Invents Act, patent holders can provide constructive notice by affixing “patent,” or “pat.,” combined with an address of an Internet...

By Sandra Koenig, partner, Fay Sharpe LLP If you own a corporate trademark, you have to use it, or you’re going to lose it. If your company stops using a particular mark, it can eventually be legally co-opted, in whole or in part, by another party. So why do you care? If you’re not using the package of words, phrases, symbols and designs that identify and characterize your company or brand, do you really care that some other marketer might use one or more of those elements that you’re abandoning? Your company may want to resurrect the product at a later date — or strip it for parts, so to speak. Or maybe it’s simply a matter of blocking competitors, or even marketers outside of your industry, from creating a brand usage with your elements that might confuse or mislead your target audience. Unless you’re absolutely certain that you never again will want to...

By Sandra Koenig, partner, Fay Sharpe LLP There are many dangers on the Web today, both threats against your company’s website and pitfalls you can inadvertently fall into that leave your site open to legal challenges. Here are areas to look out for. Cybersquatters When a trademark is used in a domain name with the intent to profit from the goodwill of another existing mark, it is considered cybersquatting. Cybersquatters direct traffic away from a valid website, often to a competitor’s page or to a website with a list of advertisements that relate to the industry, brand or subject being searched, enabling another entity to cash in on the goodwill you have established with your name on the Internet. The Anti-Cybersquatting Protection Act states that civil action can be taken against any person who, in bad faith, uses, registers or traffics in a domain name that is confusingly similar to another’s trademark. For example, cybersquatters...

By Matthew Dugan, partner, Fay Sharpe LLP Companies routinely direct substantial resources to the development of new products, which includes the design of exterior shapes and visual characteristics, in addition to the product’s technical and functional features. To protect the look of your new product from being copied, go beyond a utility patent and consider obtaining a design patent. A design patent protects the appearance of a product, such as the shape or the surface ornamentation that gives the products its look. And while this type of patent is often not considered as valuable or as comprehensive as a utility patent, design patent rights are invaluable for protecting many types of products and can be quickly acquired at a relatively low cost. The benefits Let’s say your company is in the eyewear business, and an employee has developed a new pair of sunglasses. There is nothing particularly innovative about this product — it has...

Language that should not be included your patent protection By Ryan Jones, Associate, and Mark Einsiedel, Law Clerk, Fay Sharpe LLP Patents are secured to protect intellectual property from theft, but they only work as intended if carefully written. It’s important to consult with a patent law firm to ensure that when your patent is filed, it offers strong defenses against infringement. Here are three examples of “patent profanity,” the language that can leave your patent open to either intellectual theft or products liability suits. Preambles The preamble, or introduction, to claims of the patent application should only be used to provide such information as the intended use of the invention. It should not provide details or state claim limitations (the patent language that describes the invention’s scope). If a competing product can be described as operating beyond that scope, the legal case can be made that there’s no infringement. The body of the claim,...

By Sandra Koenig, partner, Fay Sharpe LLP When corporations develop new and unique logos, designs, packaging configurations or even sensory elements and other unique identifying elements of goods and services, they need to protect these distinctive features from being cannibalized. If competitors can reap a financial benefit from piggybacking off your branding efforts, your creativity and innovation are squandered. That’s why you need to hire intellectual property attorneys to secure, protect and maintain what can sometimes be a large and complex portfolio of trademarks. Smaller companies may only have a single mark to obtain and defend, but larger corporations could have hundreds. These portfolios can be so large because of the quantity of elements that might qualify. For example, for one client, I once successfully registered the color red for a brand of handheld vacuum cleaners. On another occasion, I played a significant role in securing approval for the registration of the color...