June 2009


Under federal law, a patent is a granted right which allows the patent owner to exclude others from making, using, selling, offering for sale, or importing the subject matter of the patent without the inventor’s permission for a period of 20 years from the time of the patent application. An activity in violation of that right, involving the patented invention, is said to infringe the patent, and may result in the patent owner bringing suit for damages and to stop the unlawful activity. There are several defenses to patent infringement. One defense is patent misuse. If you have an invention and would like to determine if is patentable, call or email to schedule a meeting with one of our patent attorneys.

Marking Patens

Recent markings enforcement activities have raised some questions related to the requirements of patent marking provisions. Generally, after a patent is issued by the United States Patent and Trademark Office, the patent owner may mark the patented articles with the word “Patent” or the abbreviation “Pat.” along with the patent number assigned by the USPTO. This marking of the patent number on the product constitutes notification of the patent, which is essential to a monetary recovery in a patent action. Although that patent statute states that a patent owner “may give notice” of the patent by marking the patented article, monetary damages for the infringement of an unmarked item can only be recovered from the time that the alleged infringer has been notified of the infringement by a cease and desist letter, by service of a summons and a copy of the complaint, or by other means. In such a case, if the alleged infringer ceases the infringing activity immediately upon notification, a monetary recovery could not be had at all in an infringement suit. If you feel you have rights that are being infringed, you should consider scheduling a meeting with one of our patent attorneys.

Actual and Intended Use of Trademarks

Trademark rights are legal rights acquired based upon actual use of a mark rather than by registration. Generally, the first party who uses a mark in commerce has the right to use the mark in that geographic area as well as in the natural zone of expansion for that geographic area. Any shipment of goods bearing the trademark across a state line in the normal course of business satisfies the “use in commerce” requirement. Token sales made solely to establish trademark use do not constitute legally sufficient “use.” To help determine if a Mark is available for protection or to help register your Mark, please contact one of our Trademark Attorneys.

Trademark Fair Use

Even if a mark is registered for trade or service mark protection, another party ay use the trademark in such as way as to describe the qualities that the trademark represents as long as the manner of using the mark is not in a trademark sense but in a descriptive sense. Fair use of a trademark occurs when a defendant uses a descriptive trademark of another party to describe the defendant’s own product. This is the fair use defense set forth under federal trademark law. US trademark law provides that the use of the registered name, term, or device is not an infringement if the use is other than as a mark and it is use of which is descriptive of the party and is being used to fairly and in good faith, describe the goods or services of the party, or their geographic origin. If you have questions about this or any other aspect of trademark protection, contact one of our trademark attorneys for more information.

Copyright Infringement and Plagiarism

A copyright holder has the exclusive rights to reproduce, display, transmit, perform, and modify a work as well as the right to publicly perform a sound recording by digital transmission. There are exemptions in the Copyright Act that provide for certain exceptions to those exclusive rights, many in favor of limited nonprofit educational purposes. If none of the exemptions apply, the proposed use of someone else’s copyrighted work will probably be copyright infringement. If proper attribution is required and is missing, the proposed use will also be plagiarism. Copyright laws prohibit plagiarism. Contact a copyright specialists at The Intellectual Property Center for more information.