The Patent and Trademark Office of the United States refused to register a Lizzo trademark application for "100% That Bitch" in apparel.



The reason why is because a phrase/trademark has to function as a trademark.



Taking a T-shirt and puting a phrase on top of it - we call that "ornamental use". Ornamental use - slogans, phrases - are generally not registerable as a trademark.



There has to be some kind of source identification of that particular mark.



With apparel, usually it's where the buyer would expect it to be. Maybe on the front pocket of a dress shirt; maybe on the inside of a sportscoat. That's what consumers are expecting - not the front of a t-shirt, which is what this was.



Generally, the Patent and Trademark Office is going to reject an application for stuff that is ornamental.



Now, in this particular case what bumps it from ornamental to a source identifier for Lizzo? In a precedential decision, the Trademark Trial and Appeal Board stated that the phrase "100% That Bitch" has become associated with her through the song "Truth Hurts" - through awards that it has won - through the recognition it has received.



There are lots of sales about that particular phrase. Let's also not forget the trick that her lawyers - a great trick, by the way - her lawyers used. The front of the T-shirt says "100 That Bitch" and on the back it says "Lizzo." Or "100 That Bith" with a picture of Lizzo and then the name Lizzo under it. There's that phrase and the source identification - they go hand in hand.



That is true with apparel regardless of the phrase. Remember ornamental use for a trademark is just putting a phrase on something. It's generally not enough. There must be that association of the source of the apparel and that was the key here. That was the key from bumping that from an application to a registration.

Here's a lightly-edited transcript of the video blog:







Hi, I'm Anthony Verna, managing partner, Verna Law, back for another video blog: We have some thoughts on trademark damages.



If you are going into federal court and you are going to be a plaintiff, here are a couple of thoughts for you.  



Certainly, talking to our clients about getting money – and you're going to get money, you're going to get the lost profits and you're going to be entitled to triple those damages.



You have to temper yourself a little bit about it because first off, number one, most cases don't go to trial. Most cases settle. So obviously on some kind of settlement, there's going to be a discount on the damages, but you're going to take the discount damages. Why? Well, you know, it's going to be less time in litigation and less time with legal fees. So that discount is generally taken in order to, uh, make the pain go away.



Don't get me wrong, litigation can be painful. So that's one particular thought there as to what, why damages might be less than a trademark infringement matter than you were probably hoping it is the potential plaintiff.



Also, many products have multiple trademarks. I'm going to pull this thing right here. It was way back to the old days of podcasting, the Blue Snowball. There it is the snowball, Blue and Snowball: two trademarks on one product.



If one of those products were one of those trademarks, excuse me - were to be infringing? What I would say is, is there's a house Mark. And then there's the, the brand Mark. And we do sometimes take into account. Well, how much does one Mark matter from the other? And, and especially in a case like that, you're going to see again, your particular damages as a plaintiff are going to be discounted because there's more than one Mark on the product.A lot of products have more than one trademark as I'm sure you could see a lot of the stuff that's behind me, probably it has more than one trademark, somewhere on the actual product. That's going to be true here as well. So make sure that you go in with your eyes wide open into any particular type of litigation, because you need to make sure that you think about the kinds of damages that you may be entitled to



I'm Anthony Verna, managing partner of Verna Law. We are a full-service intellectual property and advertising law firm. You can see us vernalaw.com. Thanks very much. See you soon.

Lightly-edited transcript of the blog entry:



Hi, I'm Anthony Verna, managing partner, Verna Law.



Let's talk a little bit about the Trademark Modernization Act of 2020. That's right. Congress passed a COVID spending bill and tucked in some other legislation.



Congress, you need to stop doing that! One bill one thing, but, nope, Congress, isn't going to do that.



So, the Trademark Modernization Act of 2020 buried in the middle of the COVID spending bill, let's talk a little bit about that. What it does.



Number one, third parties may file petitions for expungement or reexamination. That's right. The biggest change to the current USPTO procedure is that there's a new provision. There are ex parte expungement petitions against registrations for trademarks that have never been used. Ex parte means it's not really going to be a two-party procedure. It's a one-party procedure. So you, as one party who you filed to show that this trademark has never been used before, that's how we get going on, on this expungement.The third party, can petition for expungement in connection with some of the goods and services or all of the goods and services. The act specially notes that the registrant's evidence of use is not subject to the stringent rules, applied to the submissions of use specimens in the application process. Marks registered from outside the U S who obtained the registration based on a home country registration or via the international registration process may present evidence of excusable non-use to avoid that expungement. Now, why can third parties do this? We've seen a jump - a jump! - in the number of registrations that have happened internationally, mainly from China. They really aren't real, and frankly,  have never been used in commerce. So the USPTO has been asking Congress for a way to simplify the process, to get rid of registrations that actually haven't been used in the United States.A third party can also seek reexamination of a registration. If a party submits evidence that a reasonable investigation shows that a trademark was not actually in use at the time of filing based on actual use or at the time that the applicant claimed use the difference between an expungement and reexamination are a expungement, is for cases in which a Mark has never been used. Whereas re-examination is for cases in which the Mark was not in use at the time that the use was claimed and be a petition for reexamination must be filed within five years of the issuance of a registry.



Number two, third-party evidence is now allowed in trademark applications. That's right, the Trademark Modernization Act of 2020 authorizes the USPTO to permit third parties to submit evidence supporting a refusal to register a trademark and to collect a fee from that third party, making the filing.Let's remember our previous  video, where we talked about the amount of money that is going to be raised for the PTO in 2021, because fees are going up!  Well, here's a creation of a totally new fee, which basically does enhance the letter of protest that third parties have been able to file for many, many years. However, now, a third-party can really throw in that evidence and filed yet another fee, but it does expand the letter of protest. And it does help a third-party to submit evidence of non-use of the applied-for trademark.



Number three, time periods for responses to office actions may be shorter, but extendable, right? Currently the USPTO issues an office action and reviews and registration are requiring further information or action. On behalf of the applicant, the applicant has six months to respond  The new act permits the USPTO to set a shorter response period, if it wishes.  It doesn't necessarily have to,

Hi, I'm Anthony Verna, managing partner, Verna Law. You can see us on the web at vernalaw.com. So 2021 is coming up - Happy New Year! That's why we're dressed casually: It's the holiday season.!



However, the patent and trademark office has said big changes come in 2021. Those big changes? New fees! Thanks, federal government, for raising our fees in the middle of a pandemic, in a bad economy.



However, not much we can do with that. The patent and trademark office is raising rates. Come January 1st, a standard patent and trademark office trademark application is going up to $350 per class.



Now, a standard application is when an applicant actually types in his or her or its own goods and services description. A plus application is when a set of goods and services are selected from already written phrases. And usually this is only good for, you know, apparel, uh, uh, home where things where you can really list the goods and services as a list.That's going up to $250 per class, which is up from $225 per class. So again, standard application is up to $350 from 275, and a plus application is up to $250 from $225. And, if you are looking to oppose an application or cancel a registration, well, that's going up from $400 for class to $600 per class.



So to file a case in the Trademark Trial and Appeal Board is now going to cost more than filing in federal district court, when you're asking for monetary damages.



Yeah, I have to say, I think there's something about that that stinks a little bit, but the, again, that's what we've been handed.



There's also going to be fees that didn't exist before in the Trademark Trial and Appeal Board. So for example, if you're filing a 90 day extension, that's going to be $200.If you're going to be filing a 60 day extension requests, that's going to be $400 an application. And if you're going to be filing an extension of time to file an appeal brief, it's going to be a hundred dollars per application and a new fee for, uh, filing a, uh, an oral argument hearing. That's right. The middle of your case, you would like an oral argument hearing. It's 500, hundred dollars per proceeding if you want the oral argument.



So we have new fees from the patent and trademark office.



What I would say is budget accordingly to your needs. Thanks very much.



Again, my name is Anthony Verna, managing partner, Verna Law. You can see it right there. Visit us at vernalaw.com. I look forward to answering all your questions again.

Hi, I'm Anthony Verna, managing partner of Verna Law. We focus on intellectual property and advertising law, but I think you knew that already.



Why should I seek patent protection?



This is the Motherload question.



Simply put, if you have a new and novel idea or invention, and it provides value to the marketplace - without patent protection, and you're leaving the door open for others to copy and sell your idea. You'll want the patent protection to obtain exclusivity.



A patent is a monopoly for the invention that is claimed in the patent for 15 to 20 years, depending on the type of patent that is filed.  You have negotiating power. Again, of course, monopoly gives you negotiating power, but it's a signal to the market that you are serious about your technological assets, thereby opening the door to business negotiations regarding licensing of your invention.



As for valuation, patents are assets, whether that asset is personal or to your company, that hopefully you're taking your patent, then you are assigning it to your company that you are creating, but it provides a basis for seeking investment into your company.



It provides a basis for saying here is why this particular invention has value. This product has value. This company has value.



It's also a way for your com you or your company to have additional revenue.



In some cases, all of all of your revenue might be taken through licensing of that particular patent. But if you want to create the product that's described in the patent and then license it to somebody else, that's perfectly acceptable as well.



So there are ways to have additional revenue streams because of one patent registration. And again, you get to stop competitors because your patent is filed.



Establishing patent boundaries before competitors enter the market challenges them to avoid stepping on your granted or applied-for claims. It requires an expenditure of time, effort, and money on their part.



And if they're infringing, you, of course can take them to federal court and get damages for lost profits. Get damages for attorney fees sometimes.



It's really a way to stop those competitors. And it's a big gigantic hammer that the federal system gives you as a patent owner.



And that's why that's why you should get the patent in your invention.



I'm Anthony Verna, managing partner at Verna Law, where we focus on intellectual property and we'll see you next time.

Trademarks are meant to signify the source and quality of goods or services. Therefore, trademarks that are descriptive are relatively disfavored. How can someone register a descriptive trademark? I discuss in this video blog!



Here is a lightly edited version of the transcript:



Hi, I'm Anthony Verna, managing partner at Verna Law, where we focus on intellectual property and advertising law. How can someone register a descriptive trademark?



Now, as you may recall, a trademark that is descriptive, in other words, a trademark that completely describes some aspect of the goods or services that the trademark owner is selling. That trademark generally cannot be registered. But how can somebody register that trademark?



It requires what we call secondary meaning. Secondary meaning is some evidence that audiences associate this particular trademark with these sets of goods or services. We need some evidence to build that and generally it is circumstantial evidence. For example, we can have advertising revenues as a part of that evidence. Maybe the number of customers and the amount of sales; maybe the manner, the length and exclusivity of the trademark; use as much evidence as can be built about that particular relationship between the trademark and the consumers of the goods or services.That is what we need in order to get that registration in the Patent and Trademark Office.



An example that we have on our website is a trademark called FOOD PSYCH. Its goods and services are podcasts and obviously those podcasts are related to food and the psychology of food. Therefore, FOOD PSYCH is descriptive of the goods and services.



However, evidence of over 500,000 downloads of the podcast took that trademark application and bumped it up to a registration.



That's the kind of evidence that we're looking for, if the trademark is descriptive.



Again, I'm Anthony Verna, managing partner of Verna Law - IP and advertising law is our focus.



Visit vernalaw.com. I look forward to seeing you next time. Thank you.

This is another video blog to go with our Patent Law FAQ - we hope you continue to enjoy our video blogs.



Here is a lighted-edited transcript of the blog:



Can I get a patent on my software?



I'm Anthony Verna, managing partner of Verna Law, P.C, where we focus on intellectual property and advertising law.



The short answer is “Maybe.” “It depends.” Lawyer answers, of course.



Let's talk a little bit about what a patent for a software invention would require.



Number one: the algorithm, because that's really what we're patenting, has to be new. Our algorithm - or your algorithm - has to be novel. Your algorithm also has to be non-obvious.



This is the typical standard for any utility patent.



However, we had a case about, let's call it six years ago, in which the Supreme Court said that an algorithmic patent must include an inventive step. What does that mean, six years later? We're all still a little confused about that, but what I would say is: What does your software, what does your algorithm do that is truly different from an algorithmic standpoint?Is it more efficient? And how is that efficiency defined? Some algorithms are defined by processing time, especially with software. Some algorithms are defined by user interface and how the user changes the interface. That's going to be considered an inventive step.



All of that is something to consider while we ask the question, “Can I get a patent on my software invention?”



Just remember, it's a very high bar. And as a matter of fact, the, Patent and Trademark Office, after the Supreme Court's decision a few years ago, took all software and algorithmic patent applications and put them to the side before they were considered, before an inventive step could truly be defined.



The USPTO has their definition. We don't really know what that particular definition is, but we really see that those software patents that do something truly different from an efficiency standpoint are the ones that are granted. That's what's really hitting that bar.



Again, I'm Anthony Verna, managing partner Verna Law. See us at vernalaw.com for all IP questions. Thank you.

At Verna Law, P.C., we are doing a series of video blogs that coincide with our FAQs. This video answers the question "What is a patent?"



Hi, I'm Anthony Verna, managing partner of Verna Law, P.C. where our team focuses on intellectual property and advertising law. We're starting at the beginning of patent law for this series that matches up with the FAQ on our website.



Let's start at the beginning because it's a very good place to start.



What is a patent?



A patent is a grant of protection for an invention. I want you to think about a patent as a contract. The government gives you a grant to protect your invention. You have to tell the government, and effectively, the public, what your invention is. That grant by the US Patent and Trademark Office, depending on the type of patent that's granted, could last between 15 and 20 years.



Understand that this doesn't allow you to sell your product. You're always allowed to sell your product, even if you don't want to get a patent on it, you can sell it.What the patent grants you is the ability to stop others from copying your invention in your patent from selling the invention in your patent. That's the key. With patent law, it's a 15 to 20 year monopoly on what's described in the patent.



We have three types of patents here in the United States.



* Utility patents. A utility patent covers anyone that invents a new and useful process, a new and useful article of manufacture, a new or useful machine, or composition of matter. Anything that improves upon any of that list will also qualify as a utility patent. We always say “build a better mouse trap.” That's what a utility patent is.* There are design patents. Now, in other countries we might have other definitions for that, but in the United States, a design patent includes an original, new, ornamental design for a manufactured product. That's the key. It's just the design.* The third type of patent that you can receive are plant patents. That's right. If you're a DNA engineer, I know there aren't a lot of you out there, but if you're engineering DNA and you create a new plant or you crossbreed, you cross-hybrid plants, that'll be a new plant. The Production, discover, invention of a new kind of plant that is capable of reproduction means that you'll get a plant patent.



That's the basic overview of what a patent is.



Again, I'm Anthony Verna, managing partner of law. You can find us vernalaw.com and I'll see you for the next part of our FAQ. Thank you.

The full transcript of this video blog can be seen on our Copyright vs. Trademark page: https://vernalaw.com/copyright-vs-trademark-law/

In today's troubled economic times, companies that fall may want to declare bankruptcy. Companies with registered trademarks may want to continue to use the trademarks and not lose any value in the brands. However, protecting the trademark from the beginning is paramount - not just registration, but understanding that it is an asset that other contracts may affect and that it must be treated like any other asset in bankruptcy.



The consequence is that there may be a loss of registered trademarks otherwise. This is especially true in a scenario in which 1) a registered trademark is not listed on the asset sheet, 2) the registered trademarks are assigned to a third party not involved in the bankruptcy, and 3) there is an agreement for a creditor to have a security interest in the trademarks.



Here is a lightly-edited transcript of the video:



Several years ago, I had a client who did something that you shouldn't do once the company went into bankruptcy.



Number one, the trademark was not actually listed on these set of assets that the company had .  All registered trademarks should be on this set of assets once a company goes into bankruptcy, whatever chapter is being filed.



Number two, once that company went into bankruptcy, the trademarks were “transferred” to the wives of the business owners.  We call that a fraudulent transfer because the wives aren't actually running the business.



Number three, there was an agreement.  One of the creditors of the company had the ability to take the assets of any particular part of the company and, of course, sell it in order to get money back. So therefore at the end of the bankruptcy, none of the debt was discharged.



I'm coming from the other end looking at it as well, what can, what can happen if somebody senior to that particular company comes around in trademark use and calls it trademark infringement, which is exactly what happened.



In today's tough times for economic activity, we need to keep this in mind.



Trademarks aren't specifically mentioned in the bankruptcy code and therefore there are some special, they do work differently than other parts types of intellectual property, but we do need to still remember their assets of a company, so registered trademarks need to be listed on the asset sheet when a company files bankruptcy and, two, if those trademarks are subject to any other agreement that the company has, they're going to be treated with the same type of property rights that any creditor would have for any other piece of property in that particular business.



Trademarks are treated specially when there's a license agreement and you know that that's a topic for another time. Apart from that, they’re assets of the business treat them like they're the assets of the business and therefore if your company goes into bankruptcy during this particularly tough time, they can be adjudicated properly just like every other asset of the business.



I'm Anthony Verna, managing partner of Verna Law where we focused on IP and advertising law, but chances are you already knew that by clicking on this video. Thanks very much, and I'll speak to you soon.

Verna Law, P.C. currently has cases in the Trademark Trial and Appeal Board, the Southern District of New York, the Eastern District of New York, the District of New Jersey, the Central District of California, and the Western District of Washington.



The Trademark Trial and Appeal Board appears to be running normally, except that the TTAB's building itself is closed. The United States Patent and Trademark Office's building is closed. But the USPTO is still running, accepting applications, and the TTAB general case calendars are unaffected. Oral arguments will be heard via other means.



Until further notice, examiner and examining attorney interviews, Patent Trial and Appeal Board (PTAB) and Trademark Trial and Appeal Board (TTAB) oral hearings, and other similar in-person meetings with parties and stakeholders scheduled to take place at USPTO offices on or after Friday, March 13, 2020 will be conducted remotely by video or telephone. Parties will receive further instructions on how to participate by video or telephone in advance of the interview, hearing, or meeting.



The Southern District of New York, Eastern District of New York, Central District of California, and District of New Jersey courthouses are open to all except those who have visited China, Italy, Iran, South Korea, and Japan but all judges have ordered their clerks to work from home. Some judges allow conference calls for discovery matters, but dispositive, substantive hearings on motions will most likely be delayed. Deadlines for drafting motions and responses will not be delayed as the filing systems are electronic.



The Western District of Washington has closed.



However, all courts have said that motions that can be decided without an oral argument will be decided. Every judge will handle the situation differently, though.



Here is a lightly edited transcript of the video blog:



I've been asked how the novel coronavirus has affected the intellectual property system in the United States. And, apart from the fact that I haven't shaved since Saturday, the answer is it really hasn't affected the system all that much.



The United States Patent and Trademark Office, the Patent Trial
and Appeal Board, the Trademark Trial and Appeal Board, all are operated under
the same federal agency and they've had systems in place for years for remote
work. That means every time I call a trademark examining attorney or a patent
examining attorney to ask what's wrong with an application, I'm calling them at
home.



Most employees are at home already. Fighting budget woes, the
Patent and Trademark Office has already had this system in place. With
electronic filing and work from home, the Patent and Trademark Office is operating
almost normally.



So, what about the courts?

Well, federal courts are generally, closed or the judges themselves are not
holding hearings in the courthouse.



But, for many of my cases, if there's a substantive hearing,
we're rescheduling it for some kind of telephone conference and, therefore, it
can be recorded by the court. Frankly, the electronic filing system for the
court, for the federal courts is still in operation. So, deadlines really
haven't changed.



Yes, if there's a trial, your trial is going to be held
until a later date. If there's a substantive motion that can only be heard in court
that's going to be held until a later date.



But, apart from that, the Patent and Trademark Office is
running. The Patent Trial and Appeal Board and the Trademark Trial and Appeal Board

America's favorite export, that's right, LeBron James, and
his media company, and Nike were all sued for trademark infringement this week
in the Federal District Court of Washington D C.



Why were they sued for trademark infringement and what does
that tell the small business? So first off they were, excuse me, they were sued
for trademark infringement because all of these entities, LeBron James’ media
company and Nike are using a phrase called “I am more than an athlete,” which
another company in the Washington DC area already has registered for a clothing
and other apparel in the nonprofit industry.



In other words, they're selling clothing in order to raise funds for other charities. So it's very tricky, actually, when it comes to trademark law because, obviously, Nike and LeBron James are using this phrase in clothing. But if you go take a look at the use, the use is really on the front of the clothing, maybe on the sides, maybe on the sleeves. And in trademark law we call that ornamental use.  Ornamental use of a phrase where people are not really expecting a trademark is not really trademark use. We have to have in clothing use of a trademark on hang tags, on the back tags maybe where consumers expect it like on a breast pocket or maybe on the back of jeans.



Those particular areas show us that, that that's where
branding typically happens and therefore it's trademark use and not ornamental
use. So that could easily be a defense that is used. That's not actually
trademark use.



The other issue that I have is if I'm the plaintiff, also
ornamental use might be a problem. The registration of the trademark not
withstanding, if there's ornamental use only then the plaintiff doesn't have a
trademark to enforce.



The lesson here is if you're an apparel company of any sort,
no matter what kind of apparel is being made, you have to make sure that your
trademarks are used properly as a trademark hang tags, breast pockets, back
pockets.



Those particular areas show that your mark is not, ornamental, if it's just on the front, that's going to be ornamental and therefore not a trademark.



I'm Anthony Verna, managing partner of Verna Law where we focus on IP and advertising law. Visit us vernalaw.com. See you next time.

I'm Anthony Verna, managing partner of Verna Law. But
chances are you already knew that!



Hey, it's the middle of February and what does everyone say
about the middle of February? It's my favorite time of year.



Like, nobody says that about the middle of February, but it
is my favorite time of year because it's Toy Fair and yes, I like toys.



There we go.



So ,what are some of the results that Verna Law has had for
intellectual property in the toy industry? And, again, let's do that
disclaimer. Past results cannot indicate any future results, but we certainly
have protected plush toys from counterfeiting and also copyright infringement
as well.



We actually have recently received, our team has received
the patent in the plush toy industry, which frankly still amazes me that
there's something new that can be invented in plush toys. But there is, so
we've been able to take that patent for, for one of our clients.

The fact remains is that there's plenty of intellectual property for the toy
industry, whether it's patents and new inventions, anything new that's being
developed. The designs can be protected: the shapes of those toys.



And, of course, any new toy, any new product line falls
under trademark as well in the copyright realm.



A lot of times in today's world, we see toy companies taking one particular product, like a plush toy, and making that a character and then taking back stories and making comic books and making books and videos.



So, all of that falls under copyright law as well. Don't
forget advertising law is very important to the toy industry. The Children's Online
Privacy and Protection Act keeps getting tweaked. Well, not really tweaked, but
reinterpreted as different administrations come and go. This is my 11th year at
Toy Fair, which means this is my third presidential administration. Trust me,
all three presidential administrations interpret the Children's Online Privacy
and Protection Act differently.



So there's a whole lot to think about from IP and advertising for the toy industry, and I'm thrilled to be a part of it. I am going to have very, very painful feet at the end of toy fair, but it's just a great industry to go to. Again, I'm Anthony Verna, managing partner Verna Law. www.vernalaw.com Thank you.

Video Blog 24: Why Were the Chicago Cubs Sued for Copyright Infringement? And what does it mean for the small business going into court?



Recently, the Chicago Cubs were sued for copyright infringement.



I kind of find it weird that I'm going to be suing a
baseball team for copyright infringement. But it happened. Why?



Because the Cubs retweeted a tweet that was already the
subject of a copyright infringement lawsuit.



So, the author and plaintiff of the original copyright
lawsuit decided to file against the Cubs for the retweet.



I think it's ridiculous as well, but it survived a motion to
dismiss.



Why?



The judge in the case said . . .I personally don't know if
the retweet creates another copy and if it creates another copy, then there is
contributory infringement on the copyright.



For those of us who have bachelor's in computer science, we already know that that retweet doesn't create another copy. It points to it. But I think this is the ultimate thought on intellectual property in the court system. Judges aren't gods, they're people.



If a judge isn't going to understand the situation, then you
as a lawyer have to make the judge understand the situation. And in this particular
case, it's just a pointer to something that's already infringed. And even
that's a question as well, if a tweet itself is enough to infringe a copyright.




There are multiple levels here where I think copyright
infringement should fail, but the judge is keeping the case around because the
judge doesn't understand them.



That's really, I think, our biggest frustration as IP
practitioners when we're in court, judges are coming from all sorts of
different backgrounds. A lot of them especially if they're, criminal defense
lawyers or if they're prosecutors, really don't understand intellectual
property. It's our job to make them understand that.



So that's what we're really looking to do when we're in
court is start at the very beginning and make sure that the judge understands
what the situation is.



I'm Anthony Verna, managing partner of Verna Law. We focus
on IP and advertising law and hopefully we can help you through situations such
as this to make sure that the judges understand why you are in court, either to
prosecute intellectual property infringement or to defend yourself from complex
intellectual property infringement claims.

Here at Verna Law, one of our goals of 2020 is to keep
growing our patent practice, especially with our patent agent, Wil Jacques.



Recently we've had a couple phone calls with potential
clients who have business method or algorithmic patent ideas. In the last four
or five years, ever since the Supreme Court decided a case called Alice,
business method and algorithmic patents have been harder to procure.



The reason for this is as time has gone on, a case has gone
to the Supreme court and Supreme court said, “We're not saying that all
algorithmic patents are void, just this algorithmic patent is void,” and well
then there'd be another case and then that algorithmic patent was void until
Alice.



What happened in Alice a few years ago? The Supreme court said
that not all algorithmic patents are void, but they need to have an “inventive
step.”



And where did the Supreme court decide to get this language?


Nobody really knows, but it's an extra speed bump for algorithmic and business
method patents.



So, it requires making sure that the algorithm that is being presented in a patent application is really and truly new and novel, which is what the statute already says, but now whatever an “inventive step” still means, while we're still not 100% sure even three or four years down the down the line after that decision, but we need to make sure that we do our patent search.



We need to make sure that we're thorough with that search.
We need to find what other algorithms have anything to say with the algorithms
that our potential clients give to us. And that's really the key is that first
step, not yet drafting the claims that's truly important, but that first step
of finding everything in the prior art that's out there.



That's something that we try to do very well and especially
with the algorithmic patents and especially with ever since the Supreme court
decision requiring an extra inventive step in algorithmic patents.



I'm Anthony Verna, managing partner Verna Law, focusing on IP and advertising law. Visit us at vernalaw.com, click on patents and you'll see everything that we have to do with patents.



Thanks very much.

Back in 2014, a company called Surrey Nanosystems received a patent for a color
that is so black and absorbs 94% of all light. Let me take a step back there.
You don't receive a patent on the color. You receive a patent on the process
for making such a new advancement in technology.



That's really the key there. It's on the process. Now, a lot
of people were outraged and the reason for that outrageous that Surrey
Nanosystems allowed one artist to use this brand new color called Vantablack
and everybody was saying, “How do you get a patent on the lack of light?”



It's a color that's so black that Spinal Tap would have
loved it. But again, it's on the process of creating this new technological
advancement. Color has always been about technology: from indigo dyes that the royal
families used, to black and white televisions, to the millions of colors that
your monitors are actually showing that your eyes cannot detect.

Color is technology. And in that technology, there's a new way of creating all
of those particular colors.



Now, for the smaller business, what does that actually mean?




It means that every time there's a new way of creating
something, there's a process there that is potentially patentable.



That's the lesson for the smaller business: when something
is new, there is a potential patent in that a business needs to do a patent
search to make sure that that particular new process is not disclosed.



And other prior art, the a business has to make sure that
this particular invention is not disclosed elsewhere, is not disclosed in its
own particular materials and also must not be in use for a year before filing
that particular patent as well.



Here at Verna Law, we have an excellent patent agent named Wil Jacques, who has a Bachelor's in Mechanical Engineering. I have a bachelor's in Computer Science. Therefore, we cover all sorts of areas of technology. We look forward to hearing from you and seeing your particular technology to see if there's a patent in there. Thank you very much.

Some statistics for 2019 are coming in in the trademark
world. And in these particular statistics, one survey from CompuMark, a company
from Clarivate Analytics and a company that does all of the Verna Law trademark
searching, we're finding that for trademark infringement, main consequences were:



* customer confusion at 45% of respondents * a loss of revenue due to trademark infringement
for 38% of respondents to the survey and * damage to brand reputation, which was 37% of
respondents to the survey.



Three quarters of trademark infringements also led to litigation,
which doesn't really surprise me as litigation tends to keep climbing up every
year. 40% of organizations have stated they spent between $50,000 to $249,000
on legal proceedings for trademark infringement.



46% of respondents said that a rebrand was a result of the
infringement proceeding. Again, that doesn't really surprise me as defendants
do tend to need to rebrand because, of course, they're the ones who are allegedly
infringing.






With brands filing infringement matters, what does this tell
us?



One, the registration of a trademark is very
important. Recently we had a settlement where the settlement probably was not
as good as we would've hoped for our client because the trademark registration
was not in effect at the time of infringement. So that registration really does
matter.



Two, planning matters as well. If you're a smaller
business, understand that you're going to be playing the same game as all of
the big businesses when it comes to trademark infringement. So if you're going
to register, you need to plan for what's going to happen if your mark is
infringed, how you're going to budget, and how you're going to deal with the
infringement. Sending a cease and desist letter in today's world generally
doesn't get the same results as it used to. You're generally going to have to
go to court and you're generally going to have to deal with high costs because
right off the bat, most defense defendants today send file a motion to dismiss
as a de rigeur part of their defense.

So make sure that you're clear as a trademark owner what your costs are going
to be in understanding this. Also if you're going to be creating any new
brands, do your due diligence because doing your due diligence means that you
can understand what brands are out there, what registered trademarks are out
there, so that you can kind of fit your mark in this big virtual space that we
have called trademark registrations.



If your mark could infringe on somebody else's mark, maybe
he should nip that in the bud from the very beginning rather than being a
defendant in a trademark infringement suit.



Three, when you're dealing with the budget, make sure
you understand how your business can rebrand if you need to. That pivot is
always going to be important. You always have to plan for every single
situation when you're dealing with intellectual property.



I'm Anthony Verna, managing partner of Verna Law, P.C, but
chances are you already knew that. That's why you clicked on this video. Thank
you for watching. See you soon.

Video Blog 20: California Consumer Privacy Act: An Introduction



Hi, I'm Anthony Verna, managing partner of Verna Law, but
you already knew that. That's why you're here.



One of the perils of advertising law is the fact that there
are 50 States and 50 States also means 50 different regulatory schemes. In this
particular case, let's take a look at California's brand-new California Consumer
Privacy Act.



Number one, if you're not doing business in California,
guess what? California thinks that you're doing business in California because
chances are your business has a website and yes, that's California's definition
of doing business in California. So you have to look at the California Consumer
Privacy Act in case anybody from California happens to step over your website
or well actually picks up the phone and calls for business and then buys your
products. But here's the key. The brand-new statute only applies:



* If your business has a revenue in excess of $25
million gross revenue to your business, * buys or sells personal information from 50,000
or more consumers or households or * earns more than half of its annual revenue from
selling the consumers' personal information.



If none of those apply to you, then the CCPA does not apply
to your business. If one of those three conditions applies to you, then the
CCPA applies to your business. Now what are some of the responsibilities under
the CCPA? One, your business must implement processes to obtain parental or
guardian consent for minors under 13 years. And the affirmative consent of
minors between 13 and 16 years to data sharing. For purposes of the CCPA, there
must be a link on your main page and it must say, “Do not sell my personal
information.” And when somebody clicks on that link, that user must have a page
to insert information to opt out of the sale of any personal information. Your
business must designate methods for submitting data access request, including
at a minimum - atoll free number. Yes, if you do business in California, you
must have a toll free number if the CCPA, applies to you so that somebody can
call you without charge to ask about the data and information for that
consumer.



You must update your privacy policies with newly required
information, including a description of California residents rights, which is
exactly what I'm saying to you here. And then you must avoid requesting opt-in
consent for 18 months after a California resident opt out. Again, the CCPA is
new. It applies to those the listed above.



Again, California always believes that you're doing business
in California if your business has a website. So it's a part of the sticky
thorn of advertising law.



Certainly, we try to help our clients avoid any particular
problems. I mean, Anthony Verna managing partner Verna law, where we focus on
IP and advertising law. Send me an email at anthony@vernalaw.com. Thank you.

Most cases settle. Most lawsuits settle. We at Verna Law, P.C. have settled most of our trademark infringement lawsuits or trademark oppositions or trademark cancellations.



Navigating Trademark Disputes: A Guide to Alternative Dispute Resolution



Trademark disputes are a common challenge in the business world, arising from conflicts over rights to specific trademarks, allegations of infringement and dilution, or trademark opposition proceedings or trademark cancellation proceedings. These disputes are not only complex but also potentially disruptive and expensive if they escalate to prolonged legal battles. Fortunately, litigation is not the sole path to resolution. Alternative dispute resolution (ADR) offers several efficient and cost-effective methods for resolving such conflicts amicably. This article explores the ADR options available for trademark disputes, highlighting their advantages and practical considerations.



Mediation: A Collaborative Approach



Mediation is a voluntary and confidential process where a neutral third party—the mediator—helps disputing parties negotiate a resolution. The mediator assists by clarifying interests, fostering mutual understanding, and guiding the parties toward a compromise.



Advantages of Mediation:




* Cost Efficiency: Mediation is generally less expensive than court proceedings as it bypasses many legal formalities.



* Speed: Disputes can be resolved quickly since mediation sessions can be organized flexibly and without court schedules.



* Relationship Preservation: By promoting cooperation, mediation helps maintain professional relationships post-dispute.




Mediation Considerations:




* Voluntary Participation: Mediation requires all parties' willingness to participate, which may not always be present. Some courts do require mediation to be tried before the court itself will interject in a settlement attempt. Some courts will allow a magistrate judge to help settle a lawsuit. This is a favorite tactic of Verna Law, P.C. because magistrate judges in federal court understand the issues involved better than many private mediators and judges can comment on the case in a frank manner.



* Binding Agreements: Solutions reached in mediation are binding once formalized in a written agreement, underscoring the importance of clear documentation.




Arbitration: Expert Resolution



In arbitration, one or more arbitrators (neutral third parties) hear the evidence and arguments from all involved parties and then make a binding decision. Arbitration can be managed through independent procedures or organized by entities like the World Intellectual Property Organization (WIPO).



Advantages of Arbitration:




* Expertise: Arbitrators typically possess deep knowledge of trademark law, ensuring well-informed decisions.



* Confidentiality: The arbitration process is private, protecting sensitive information.



* Efficiency: With set timelines and limited discovery, arbitration is streamlined compared to court litigation.




Arbitration Considerations:




* Finality: The arbitrator’s decision is usually final, with limited scope for appeal.



* Costs: While generally more cost-effective than litigation, arbitration still incurs fees for the arbitrator and administrati...