IP Law & Business: Legal Reading List – Feb 2011

For your reference, here’s a reading list of legal updates covering IP Law and Business matters, recently published on JD Supra:

Trademark Owners Beware…Of Unofficial Trademark Registers and Domain Name Solicitations from China and Hong Kong by Mintz Levin:

“Entry of your trademark information into the ‘registers’ of these ‘wannabe’ trademark registration companies has no legal effect and does not grant any trademark rights. These companies also cannot provide any legal protection for your trademarks because they are not affiliated with any official government trademark institutions. Moreover, the most cost-effective way for a trademark owner to inform the public that it is claiming rights in a trademark or service mark as its brand identity is to simply affix the trademark or service mark designations, TM or SM, to marks that have not been registered with the USPTO or other official trademark registration offices or the registration notice…” Read on»

Patent Reform Is Again Before Congress – The Patent Reform Act of 2011 by Sheppard Mullin:

  Patent reform has been a topic of congressional debate since the introduction of the Patent Reform Act of 2005. Having failed to enact the 2005 legislation or any subsequently proposed reform, patent reform has again been introduced into the Senate, this time entitled The Patent Reform Act of 2011. (S. 23, 112th Cong. (2011).)

In introducing the new bill, Senator Leahy noted the following: ‘China has been modernizing its patent laws and promoting innovation while the United States has failed to keep pace. It has now been nearly 60 years since Congress last acted to reform American patent law. We can no longer wait’…” Read on»

How Do You Sue an Unknown Hacker Who Steals Data through the Company Web Site? by Nick Akerman;

“What the case describes is a fairly typical scenario – unknown individuals hack into the company web site and steal valuable data. There is no indication of the identity of the hackers. The only traces left behind are Internet Protocol (“IP”) addresses assigned to the hackers, the Internet Service Providers (“ISP”) that provided the hackers with Internet access and the dates and times of the intrusions. Rather than wait for law enforcement to investigate and prosecute, something that may or may not happen, taking the aggressive approach outlined by this case can have the same remedial impact as a criminal prosecution in stopping the illegal activity. It also does not preclude the matter from also being referred at any time to law enforcement…” Read on»

Common IP Issues All Businesses Face by Dunner Law PLLC:

“These issues arise often, regardless of your company’s size, but with a little planning, good communication within your company, and solid agreements with outside vendors and partners, a lot of issues can be avoided. It may take a little more work upfront to create an airtight business, but it will be better for your company in the long run.” Includes a look at creating an enforceable brand, distinctiveness, correct use of trademark, and more… Read on»

Valuation of Intellectual Property Assets by Philip Totaro:

“One of the best ways to sell is to put yourself into the mindset of the buyer. How will they make their decision to acquire an IP asset? The process of divesting IP assets occurs in three phases. First is a market assessment and valuation of the intellectual capital, second is target identification and sales terms negotiation, and last is the sales agreement drafting, deal closure and the transfer of assets…” Read on»

“Trademark Bullying” Comment Period Extended (Again) by Winthrop & Weinstine:

“It appears the USPTO, once again, has extended the period for submitting comments on what originally was termed a study regarding ‘trademark bullying,’ but was later characterized as a study on “aggressive trademark litigation tactics” – so, for those of you still interested in submitting comments, the new deadline is February 14, 2011.

Apparently, the USPTO plans on delivering the results of its study to Congress on March 17, 2011.

The current version of the survey omits (again) any reference to the politically-charged and pejorative term ‘trademark bully – keeping the focus more broadly on aggressive trademark litigation tactics’…” Read on»