Intellectual Property & Franchising Law

.XXX General Availability Commences December 6, 2011

December 5, 2011, 11:11 AM

The General Availability period in which to register remaining .xxx domain names commences on December 6, 2011 at 11:00 am EST. There are no qualifications, such as a registered trademark or pre-existing domain name, required in order to register during this period. Anyone can attempt to register an available .xxx domain name through one of the designated registrars. Available .xxx domain names will be issued on a first come, first served basis, and some registrars are currently accepting pre-registrations. If you obtain the requested domain name, the registration will be effective for one year, with the ability to renew. --Nicole J. Harrell

The America Invents Act - Change from "First-to-Invent" to "First-to-File"

December 2, 2011, 3:28 PM

Perhaps the most significant reform effected by the America Invents Act (AIA) is its provisions that will transition the United States patent system to one in which the first inventor to file a patent application will generally be the one entitled to a patent on the invention in question.

Prospective Franchisees Should Take Steps to Preclude Later Franchisor Claims for Future Lost Profits

November 28, 2011, 12:37 PM

Franchisors continue to pursue claims for lost future profits (e.g., lost future royalties and advertising fees), even after the franchisor has terminated the franchise agreement. The only sure way for a franchisee to eliminate claims for such damages is up front, when the franchise agreement is being negotiated. Franchisees often bargain to exclude (or attempt to exclude) liquidated damages clauses specifically granting the franchisor a set sum of damages upon termination of the franchise agreement, even by the franchisor particularly in non-hotel franchise agreements, where the use of such liquidated damages provisions are not as well-established.

Twitter Wins Halloween Victory in Norfolk

November 11, 2011, 3:40 PM

In a case filed earlier this year in federal court in the United States District Court for the Eastern District of Virginia (Civil Action No. 2:11cv43), plaintiff, VS Technologies, LLC, alleged that defendant, Twitter, Inc., infringed its patent entitled Method and System for Creating an Interactive Virtual Community of Famous People. In response to the complaint, Twitter, Inc. denied the infringement allegations and claimed that the patent was invalid as anticipated, obvious or abstract. The technology at issue allegedly was invented by a patent lawyer in Northern Virginia with the rights to the patent later assigned to VS Technologies, LLC. Through trial, VS Technologies, LLC claimed that Twitter, Inc. used its patented technology to develop Twitter, Inc.s browse interest page on the social networking website.

Feedback Loops in Trademark Law

October 27, 2011, 3:52 PM

A fascinating dynamic in trademark law is the interplay between public perception of trademark rights and the rights themselves. Driven by a desire to monetize the value of marks in new ways, especially by licensing, mark owners sometimes can create their own realities, broadening their rights and shrinking the public domain. A couple of recent developments illustrate the process.

Don't Let your Trademark End Up in the Graveyard

October 13, 2011, 1:55 PM

Do the words Escalator, Zipper and Cellophane sound familiar? Sure they are items that you may use every day, but they were also once registered trademarks. They became so popular that the trademark became the generic name for the product. The marks are now dead and considered to be in the trademark graveyard. There are several ways to help keep your mark alive. Xerox Corporation has an advertising campaign to remind the public that the mark XEROX is not a generic term for photocopiers. Another way is to ensure there is a generic name for your branded product, even if you have to invent the name. For example, "online skates" was created for ROLLERBLADES. The use of the term "brand" is another way to avoid the trademark graveyard. Johnson & Johnson uses BAND-AID brand bandages. Take note of the use of your trademark by others and, if necessary, put your trademark on a maintenance plan to keep it out of the trademark graveyard. --Nicole J. Harrell


October 7, 2011, 11:28 AM

As detailed in an earlier post by Nicole Harrell, the .xxx top level domain names for the adult entertainment industry are scheduled to go live later this year, and, if you are a registered trademark holder, you can apply to opt-out of .xxx domains. A local organization in Norfolk, Virginia is viewing the new .xxx top level domain names as a marketing opportunity. Instead of opting out of the .xxx domains for its trademark, People for the Ethical Treatment of Animals (PETA) indicated through a spokeswoman that PETA has applied to launch a website at Through that website, PETA plans to feature videos and photographs which will lead viewers to animal rights messages.

Can You Hear Me Now?

September 30, 2011, 3:58 PM

What happens when a small company backed by a big investor is kicked to the curb by the Phone Company? Throw in a multiple-year courtship of that company gone bad along with a preemptive suit by the Phone Company to squash the companys major customer and you can get the kind of facts that can lead to a multimillion dollar jury verdict. That is exactly what happened in a recent jury trial in the Norfolk Division of the Eastern District of Virginia where a small company, ActiveVideo Networks, Inc. (ActiveVideo), sued several Verizon entities claiming the Phone Company infringed a series of ActiveVideos interactive video technology patents. The result was a message that even the non-4G T-Mobile girl could hear and understand: a historic $115 Million verdict against Verizon.

Patent Reform Legislation Targets Certain Business Method Patents

September 19, 2011, 3:07 PM

In addition to its provisions undercutting patents on tax avoidance strategies, the patent reform legislation just passed by Congress (S.23/H.R. 1249) -- now called the America Invents Act, formerly the Patent Reform Act of 2011 -- includes provisions that will make it more difficult to enforce any business method patent that claims a method or corresponding apparatus for performing data processing operations utilized in the practice, administration, or management of a financial product or service.

Registered Trademark? Dont get .XXX-ed in.

September 9, 2011, 2:46 PM

The .xxx top level domain names for the adult entertainment industry are scheduled to go live later this year. If you have registered trademark there is a limited of time in which you have to block third parties from registering your trademark as .xxx domains. Beginning on September 7, 2011, trademark owners can apply to opt-out of .xxx domains. This period, called Sunrise B, will end on October 28, 2011. A successful application to block a domain name will have the effect of removing that domain name from the pool of domain names available for registration. For more information about the .xxx domain name opt-out process, see --Nicole J. Harrell

How Successful is the Current Uniform Dispute Resolution Policy?

August 25, 2011, 8:52 AM

The Internet Corporation for Assigned Names and Numbers (ICANN) recently sought comment on the current state of the Uniform Dispute Resolution Policy (UDRP). The UDRP dictates how domain name disputes are resolved, and all domain name registrars and anyone who registers a domain name must agree to follow the UDRP for disputes.

Technology Transfer Lessons from Stanford v. Roche

August 16, 2011, 3:46 PM

In its June, 2011 decision in Stanford v. Roche, the U.S. Supreme Court ruled that the Bayh-Dole Act, governing federal funding of university research, does not override the rule that invention rights belong to the inventor, not to his or her employer.

The Green Advantage

July 25, 2011, 8:37 AM

Beginning in December 2009, the United States Patent and Trademark Office (USPTO) has offered an accelerated program for patent applications for certain green inventions. Examples include inventions which materially enhance environmental quality and inventions through which greenhouse gas emission is reduced. In November 2010, the USPTO extended the deadline for filing petitions under this Green Technology Pilot Program, and to date, a total of 1,918 petitions have been granted for green technology patent applications, with 328 patents having issued. Under the Green Technology Pilot Program, the average time between granting a green technology petition and the first office action on the merits is 49 days. To read more about the Green Technology Pilot Program offered by the USPTO, visit -Kristan B. Burch

Hot News

July 18, 2011, 11:13 AM

Different types of intellectual property law protect different things. Copyright law prohibits unauthorized copying of creative expression, but not facts (not even if those facts are embodied in creative expression). Trade secret law can protect facts, but only when they are competitively valuable and kept secret. Neither body of law protects factual information, perhaps developed through great effort and expense, that is in high demand for a brief time, and that is provided to those willing to pay for it. It is called hot news. Harnessing the power of computers and instant communications technologies, many businesses have built profitable businesses based on compiling, assembling, and selling such valuable, time-sensitive information. Given the gap between copyright and trade secret law, however, these businesses face a major challenge in trying to prevent competitors from taking their hot news, once public, and using it for their own benefit. Doing so is very hard, as is illustrated by a recent Second Circuit decision that has attracted much interest in the financial sector.

Selecting a Franchise? Make Sure to Interview Franchisees

July 11, 2011, 9:49 AM

Before you buy a franchise, its important that you perform your due diligence. The franchisor will gather a lot of information about you and determine if you are the right fit for their business. You should do the same about the franchisor and its business. A critical piece of your due diligence should be contacting franchisees. The franchisor is required to provide you with a list of franchisees, and if they dont a red flag should go up. You should pick a mix of franchisees franchisees currently in the franchise system and those who no longer own franchises, newer and more experienced franchisees and franchisees in varying sized outlets and locations. You should ask questions such as their relationship with the franchisor, whether they think the training and support was adequate, what problems they have encountered with the franchisor and how did the franchisor handle them, why they chose to buy this particular franchise, and whether they would invest in that franchise system again, knowing what they now know. Your interviews with franchisees should help you determine if a particular franchise is right for you and give you an idea of the relationship you can expect with the franchisor. --Nicole J. Harrell

Beware Inadvertent Franchises

July 5, 2011, 3:14 PM

Companies expanding through opening additional outlets, not entirely owned by the company, often inadvertently fail to comply with applicable franchise laws. Franchise registration, which entails the preparation of a detailed franchise disclosure document and franchise agreement, together with other documents, can be time-consuming and expensive. Thus, we are often asked, typically by the owner of a single restaurant or retail outlet who is seeking to expand to a second outlet, whether the business owner can avoid compliance with the franchise laws, at least initially, and expand to a second or third outlet using a license agreement, a trademark license agreement, a joint venture agreement, or some other characterization of the business arrangement.

ICANN IN MOTION: Creating New Generic Top-Level Domains

June 29, 2011, 8:15 AM

On June 20, 2011, the Board of Directors of the Internet Corporation for Assigned Names and Numbers (ICANN) approved a new program for generic top-level domains (gTLD). The new gTLD Applicant Guidebook is available online at

Recent Guidance on Franchisors Recovering Future Damages from Franchisees

June 16, 2011, 11:51 AM

The United States Court of Appeals for the 4th Circuit (which includes Virginia), recently held in Meineke Car Care Centers, Incorporated v. RLB Holdings, LLC, et al., Bus. Franchise Guide (CCH) 14,586, that a franchisor could recover future damages, including future royalties and future advertising contributions, after termination of franchise agreements, even though the franchise agreements at issue were completely silent on that issue. The Court held that in the absence of an express contractual provision barring future damages, the [franchise agreements] did not prohibit the recovery of those damages if otherwise permitted under [applicable] law.


June 8, 2011, 11:54 AM

Headlines like Navy Fights Disney for Seal Team 6 Trademark and Walt Disney Surrenders to Navys SEAL Team 6 led reports of a skirmish in which Disney tried to exploit the popularity of the Navy Seals by applying for federal registration of SEAL TEAM 6 as a trademark for, among other things, entertainment services, toys and games, and clothing.