IP Law Bulletin

Over the years, patents have issued on numerous games, including iconic favorites such as Monopoly® (1935), Battleship® (1935), Rubik’s Cube® (1983), Rock'em Sock'em Robots® (1966), Twister® (1969), and Simon® (1979). Although there is no per se rule under current U.S. patent law against the patenting of games, it may be more challenging today to obtain patents on certain games due to the patent eligibility requirements of 35 U.S.C. § 101.

Welcome!

The word “brand” has come to be used broadly as a business buzzword, and with good reason. A brand often is comprised of a company name or a product name - but it is much more than that. It is a projection and reflection of goodwill. It is a promise, a feeling, an ethos, a lifestyle statement. It acts as a reassuring signpost for consumers in a busy marketplace, signaling a trusted source and a consistent level of quality. 

Successful brands are not attention-grabbing gimmicks. A product or service name, however clever, merely is a shell, and hopefully that shell is filled with and overflows with positive consumer sentiment that results from a consistently good user experience – whether that experience is eating a taco, using a travel booking website or interacting with an accounting professional. 

This blog post is an introduction to a series of posts that address legal brand protection. Legal measures cannot provide the most fundamental underpinnings for a successful brand, such as quality, consistency, authenticity and good timing in terms of meeting a market demand. Legal measures can, however, position businesses to stake out, defend and protect their brands. Legal brand protection measures include pre-filing and pre-use diligence, registration and policing, and each of these categories involves an array of nuanced considerations that this blog series will address.

Key Takeaway: Key business considerations relevant for choosing between patents and trade secrets include:  (1) Need for transfer of IP rights; (2) Life cycle of the product or service; (3) Cost of IP protection; and (4) Other business considerations.

Website or information “service providers” who in the past have made hard-copy filings to designate agents to take advantage of the “safe harbor” liability shield provision under the Digital Millennium Copyright Act (DMCA) must re-register electronically by December 31, 2017 to maintain their status.

Key Takeaway: One critical question to ask when deciding whether to protect your invention using patents or trade secrets is how well the invention can be kept secret. Ease of reverse-engineering, risk of independent duplicate creation, and the ease of maintaining the invention secret in a commercial setting are factors that should be considered.

The Supreme Court held in Matal v. Tam that the Lanham Act’s provision forbidding the registration of disparaging trademarks is unconstitutional in violation of the First Amendment. The Court explained that “[s]peech may not be banned on the ground that it expresses ideas that offend.”

Professional service firms at times seem to focus on protecting the names of their service offerings or platforms at the expense of their house marks. Pat Concannon, a partner in Nutter’s Intellectual Property and Business Departments, with over 20 years of experience devoted to helping businesses establish and protect their brands, analyzes why professional service firms need to safeguard their house marks in Nutter Insights.

Nutter’s series on building a brand began with the selection of a trademark and the process of formally protecting a mark via trademark registration. More recent articles in the series have addressed policing a brand, proper trademark usage, and brand considerations in the social media environment. This article, the last in the series, focuses on additional post-registration considerations, namely: (1) exploiting your mark through licensing, including important quality control considerations; (2) applying to register branding elements in addition to the core plain text mark to enable more effective policing of your brand’s entire commercial impression; and (3) assessing the unauthorized use of your brand by third parties (or using another’s mark without authorization) for purposes of determining whether such uses are “fair” or, on the other hand, harmful and actionable.

Nutter’s series on building a brand began with the selection of a mark and the process of formally protecting it via trademark registration. At this point in the series, the mark is registered and ready for use and investment to elevate it into a brand. Moving from a mere “mark” to a lauded “brand” takes us into the realm of marketing, as most of what makes a mark into a brand is the result of marketing investment around the mark. However, there are still many legal considerations to keep in mind as you begin using your mark and building it into your brand.

As discussed in the previous article in Nutter’s IP Branding Series, monitoring competitors’ use of your marks and marks possibly akin to your marks, and enforcing your rights in your marks against those competitors, is an important aspect of protecting and building your brand. Equally important is policing your own use of the mark, the use of your mark by licensed third parties, and the use of the mark by third parties that are neither competitors nor licensees. The graveyard of brands that were arguably too successful because the brand name became genericised is fraught with lessons to be learned in protecting the use of your mark. Dilution is also a concern, although it is becoming increasingly more difficult to successfully show that your mark is being diluted or tarnished.