Intellectual Property & Franchising Law

How Many Domain Names Do You Need?

October 28, 2010, 1:57 PM

Internet domain name registrations give certain opportunists openings to try to generate revenues through unsolicited offers to help domain name owners protect and expand their rights.

What Does and Does Not Constitute Patent Misuse

October 27, 2010, 9:53 AM

In a previous post, I discussed the Federal Circuits recent Princo decision, which limited the affirmative defense of patent misuse. The effect of the decision is to give licensors more room to use certain restrictive license terms. Princo is a good occasion to take stock and reconsider what types of practices may constitute patent misuse. What follows is not breaking news, but I hope it is a useful refresher.

Trademark Dilution: Reserved Only for the Truly Famous

October 20, 2010, 10:20 AM

Dilution of a trademark is a claim reserved for truly famous marks, not ordinary trademarks. Dilution of a trademark occurs when someone adopts and uses a famous trademark to promote a good or service not normally associated with the trademarks brand or something that tarnishes the brand. For example, Buick aspirin, Ferrari toothpaste, Budweiser facial crme or Candyland.com (for adult website rather than kids game). The theory is that the association of the trademark with these disparate uses weakens the strength or tarnishes the goodwill of the trademark. Sounds sensible, but who qualifies? Under the Trademark Dilution Revision Act of 2006 (TDRA), such dilution is actionable only where the requisites of fame are met.

Trademark Maintenance and Renewal Services: Beware the Unsolicited Offer/Invoice

October 19, 2010, 2:39 PM

Every applicant or registrant of a trademark with the United States Patent and Trademark Office (PTO) needs to be aware that there are a number of companies in the business of soliciting payment for services relating to maintenance and renewal of trademark registrations that may confuse the recipient into thinking they are being contacted by the PTO or an affiliated agency.

Social Media for Franchisors

October 13, 2010, 2:28 PM

The use of social media for marketing is evolving at a rapid pace. Many franchisors, like others, have been hesitant to embrace social media because of the time commitment required to achieve measurable results. Identifying the social media platforms that will reach the target audience and managing profiles, content, blogs and posts can be daunting tasks.

Registering a Domain Name

October 12, 2010, 10:04 AM

Selecting and registering a domain name is a quick process which can be completed online in a matter of minutes. No checks are done by the registrar to prevent entities from registering domain names which contain trademarks belonging to other entities. As more and more domain names are registered, disputes continue to arise over who has the right to register which domain names.

Searching for Registered Domain Names

October 11, 2010, 11:12 AM

If you have registered a domain name in the last few years, you may have used a Whois lookup service to determine whether a certain domain name is available for registration. Many websites offer such service for free and provide instantaneous results on domain name availability along with ownership information for registered domain names. For example, you could go to http://whois.domaintools.com or http://www.whois.com and determine whether a domain name is available.

Licensors Gain Latitude as Federal Circuit Limits Patent Misuse Defense

October 7, 2010, 3:07 PM

A licensor of intellectual property naturally desires to extract as much value as possible from its patent or copyright. In the collaborative development and manufacturing arrangements that are so common today, where licensors are working with actual or potential competitors, a licensor may also fairly wish to limit its partners ability to compete with the technology the licensor contributes to the venture. Yet, the law imposes limits on a licensors ability to use his intellectual property as leverage. A recent decision by the U.S. Court of Appeals for the Federal Circuit casts new light on one such limit, the defense of patent misuse.

Fourth Circuit Endorses New Law in Copyright Field

October 4, 2010, 4:02 PM

In a recent unpublished decision, the United States Court of Appeals for the Fourth Circuit endorsed new law in the copyright field. For the first time, the Court affirmed the dismissal, as a matter of law, of a copyright claim at the motion to dismiss stage of litigation. Affirming the trial courts use of law from the Ninth Circuit, the Court approved the trial courts comparison of two works and its finding, as a matter of law, that there was no substantial similarity as required by copyright law.

Welcome to K&Cs IP & Franchising Law Blog

September 16, 2010, 10:48 AM

Kaufman & Canoles' Intellectual Property Law and Franchising Practice Group has earned the reputation as one of the finest Practice Groups in the State specializing in the creation, protection and licensing of patents, trademarks, copyrights and other intellectual property rights. Boasting three past Presidents of the Virginia State Bar Intellectual Property Law Section and two members of the International Franchise Association, the Group has collective wisdom and experience in all facets of protecting your creative ideas and intellectual property rights. This experience includes intimate knowledge of the workings of all Divisions of the Eastern District of Virginia's "rocket docket," many successful jury trials in both federal and state courts, and experience before the United States Patent and Trademark Office and the United States Court of Appeals for the Federal Circuit. Sharing this wealth of knowledge and furthering the community's understanding of this particularly technical area of the law is the purpose of this blog. We aim to educate, elucidate and elevate the practice in this area of the law. Along the way, we hope to have some fun as well. So stay tuned; we will broadcast our blog on a twice weekly basis and hope to garner your interest and participation.--Stephen E. Noona