THE LONG MARCH-OUR TRANSFER OF TECHNOLOGY AND I.P. TO CHINA

The “Long March” was the strategic retreat of the Red Army led by Mao Zedong in 1934. It has become glorified by the People’s Republic of China as an example of the Communist Party’s strength and resilience. 

China has come a long way since 1934 becoming the world’s second largest economy and it has gotten that way not just by harnessing the know-how of the Chinese people but the know-how of the American people as well.

While there is talk of decoupling our economies today, for the last several decades, major American companies have introduced their technologies to China, for cash and for the opportunity of getting a share of a market of nearly one and a half billion people. 

This is not an all-inclusive list. For example, it does not include Apple on whose MacBook Air this blog post is being written. See https://nyti.ms/2UcwiKw 

General Instrument

Taiwan Semiconductor Manufacturing Company (TSMC) is the world’s most valuable semiconductor company, with a factory in Shanghai. Its customers include AMD, Apple, Broadcom and Qualcomm. See https://en.wikipedia.org/w/index.php?title=TSMC&oldid=985082323 On July 13, 1964 the New York Times reported that General Instrument, which was my late Father’s former employer, was rushing to complete a million-dollar (Note that this was 1964 dollars.) semiconductor plant to compete with Japan on the American electronics market. See https://nyti.ms/1RBCBOC   TSMC was founded in Taiwan in 1987 by Morris Chang. From 1958-1983 Chang was at Texas Instruments where he became the Vice President responsible for its semiconductor business.  The next two years he was President and COO of General Instrument. The government of Taiwan then recruited him to become head of its Industrial Technology Research Institute in charge of promoting industrial and technological development in Taiwan. He then became head of TSMC. Morris pioneered the then controversial idea of pricing semiconductors ahead of the cost curve, or sacrificing early profits to gain market share and achieve manufacturing yields that would result in greater long-term profits and was honored for doing this by an American university, Stanford.

Fiat-Chrysler

In 1979, American Motors, which then owned the Jeep brand and was subsequently acquired by Chrysler initiated discussions with the Chinese (not the Taiwan government) about building Jeep branded vehicles in China. The Chinese government agreed, the joint venture was called Beijing Jeep and in 1985 manufacture of the Jeep Cherokee commenced in China. Chrysler was subsequently purchased by Fiat and on November 20, 2014, Fiat Chrysler Automobiles (FCA) and Guangzhou Automobile Industry Group (GAC) announced a preliminary agreement to expand their current joint venture, including a second plant in Guangzhou, that would be responsible for all sales, marketing, product planning and after-sales support of a full line of Jeep, Fiat, and Chrysler vehicles, both locally made and imported. See https://www.allpar.com/world/china.html

General Motors

Fiat Chrysler’s competitor, General Motors, isn’t at all shy about its involvement in China. See https://www.gmchina.com/company/cn/en/gm/company/about-gm-china.html On that website GM writes, “GM and its joint ventures in China have more than 58,000 employees. GM, along with its joint ventures, offers the broadest lineup of vehicles and brands among automakers in China. Products are sold under the Buick, Cadillac, Chevrolet, Baojun and Wuling nameplates.” As for its technology, GM gloats that its “GM China Advanced Technical Center (ATC) is the most comprehensive and advanced automotive development center in China. It includes research and development, advanced design, vehicle engineering, powertrain engineering and OnStar laboratories. As a member of GM’s global engineering and design network, the ATC is developing solutions for GM on a domestic and global basis while supporting the company’s vision. The first phase of the facility opened in September 2011 and the second phase opened in November 2012.”

IBM

Another American corporate stalwart, IBM, sold its ThinkPad line of business-oriented laptop computers as well as its personal computer division to Beijing-based Lenovo in 2005. Lenovo’s founder said about that acquisition, “We benefited in three ways from the IBM acquisition. We got the ThinkPad brand, IBM’s more advanced PC manufacturing technology and the company’s international resources, such as its global sales channels and operation teams. These three elements have shored up our sales revenue in the past several years.” See https://en.wikipedia.org/w/index.php?title=ThinkPad&oldid=988007023 But that wasn’t the end of IBM’s sales of technology to Beijing-based Lenovo. IBM’s sold its Intel-based server lines, including IBM System x and IBM BladeCenter, to Lenovo in 2014. See https://en.wikipedia.org/w/index.php?title=Lenovo&oldid=987899309

Motorola

Motorola invented the first commercially available cellular phone small enough to be easily carried which was commercially released in 1984. Before the iPhone came out Motorola sold the wildly popular Razr, the best-selling clamshell phone ever made. Motorola’s cell phone business became Motorola Mobility, which was, from 2012-2014 part of Google, when it was sold to Lenovo. Lenovo originally sought to acquire Blackberry but that purchase was blocked by the Canadian government. See https://en.wikipedia.org/w/index.php? title=Motorola_Mobility&oldid=986872000

Tesla

The U.S. government made no objection to Lenovo’s acquisition of Motorola together with 2000 patents nor to any of the above transactions nor to Tesla’s construction of a car plant in Shanghai. See https://www.bbc.com/news/business-50080806

Blackberry (Note this is a Canadian company.)

Incidentally, Blackberry ended up licensing the manufacture of its phones to TCL Technology, located in Guangdong province in China. That license expired this past Summer.

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POLITICAL BRANDING

You may have noticed that there is an election coming up, at least in the United States. So I thought that I’d write about political branding. No, I’m not referring to branding your political opponent as a/an [fill in the blank] but rather redefining a policy or a phenomenon so as to make it more or less acceptable to voters. 

I consider the political consultant, Frank Luntz, to be the best at doing this but anyone can play this game. See http://en.wikipedia.org/w/index.php?title=Frank_Luntz&oldid=978941637 For example, Luntz renamed the “estate tax” as the “death tax” to make it more unpalatable to voters and replaced use of the phrase “global warming” with “climate change” to make the effects of that phenomenon sound less toxic. He advised the Israeli government to refer to Palestinian “talking points” as “demands” as “demands” would, by definition, be less acceptable to the American public.

For example, don’t want to institute a national “sales tax,” then call it a “value-added tax” or a “consumption tax” as a consumable is considered to be something that is used relatively quickly, i.e., it’s a tax on wasteful spending.

“Slum Removal” has traditionally been referred to as “Urban Renewal.”

The Affordable Care Act (a/k/a Obamacare) was originally written to pay physicians for providing voluntary counseling to Medicare patients about living wills, advance directives, and end-of-life care options. That provision was coined establishing “death panels” and never made it to the final Act.

And there’s more…when a politician proposes “revenue enhancers” she is proposing raising your taxes.

When your boss announces that he is eliminating redundancies he plans on laying you off.

When your city cuts transit services it is rationalizing transit schedules.

And so on, so go out and vote, if you haven’t already; just realize that politics is another form of advertising, except consumers are called constituents, purchasers are called voters, purchases are called elections and TV ads are media buys. 

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The Trademark Dilemma

Here’s the trademark dilemma: 

The Dilemma!

You own a trademark that you have used for almost twenty years. Another entity has registered a similar trademark. 

The second half of both trademarks are virtually identical. The first half of both trademarks, while different in appearance, sound and meaning, both identify parts of the body in connection with which both products, which are nearly identical, are intended to be used.

In the next case, you own a trademark that was refused registration by the U.S. Patent and Trademark Office for the reason that the entirety of your mark forms the dominant element in a prior registered mark owned by someone else. The goods involved in this case and sold by both parties are closely related.

In both cases the complaining parties believe that the confusingly similar registered trademarks are no longer being used by their respective owners. 

What should the complaining parties do?

Pick a hired gun!

In both cases they hire highly respected law firms; in the first case a large national law firm with offices throughout the country; in the second case a long-established intellectual property boutique law firm with a single office in a major U.S. city.

The Large Law Firm Attorney

The lawyer for the large national law firm pays the U.S. Patent & Trademark Office a $400.00 filing fee and prepares a Petition for Cancellation of the similar registered trademark with multiple exhibits which he files with the Patent Office’s Trademark Trial and Appeal Board in February. He guesses correctly that the owner of the U.S. Trademark Registration that he sought cancellation of no longer uses its mark. That owner ignores the Petition for Cancellation and the Patent Office issues a Judgment by Default in the Cancellation Proceeding in late August and, simultaneously, the U.S. Patent & Trademark Office cancels the trademark registration that he objected to.

The Intellectual Property Boutique Firm Lawyer

In the second case, the I.P. boutique lawyer emails the lawyer for the owner of the registered trademark a page and a half letter in which she asserts that that registrant is no longer using its mark, states that her client is exploring its options as to whether to file a Petition for Cancellation of that trademark but states that she prefers to resolve the matter amicably. After being advised of this communication, the registrant’s lawyer determines that, in fact, the registrant has ceased the use of the complained of registered trademark and seven days after receiving the initial complaint about it, for a zero dollar filing fee with the U.S. Patent and Trademark Office, obtains the cancellation of that  trademark registration, thereby resolving the second attorney’s complaint.

The Same Results Achieved in Highly Different Ways!

So, attorneys need to choose their weapons wisely and consumers of legal services need to ask their attorneys, whether it’s a trademark matter, a divorce matter, a real estate matter, etc., what the most cost-effective and efficient means are to obtain the result that they desire. See https://www.chicagotrademarkattorney.net/why-litigation-may-not-be-your-best-remedy-to-resolve-a-trademark-dispute/

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Law in Cyberspace: A Comprehensive Legal Guide

Commerce

Electronic commerce (e-commerce) law governs commerce, trade, and sales. This field of cyberspace law deals with issues such as security, contracts, and human resources. The manufacture of products and their sale can also fall under e-commerce law. Security laws protect consumers and providers of goods and services as well as contractual parties. A section of e-commerce law that arises from contract formation deals with the liability of Internet providers for outages, which can be substantially damaging to contracting parties. Human resources are subject to laws designed to ensure fair hiring practices. Merchandising is also a part of e-commerce law. Product and service providers, as well as consumers, can benefit from learning about legal issues and protections governing online commerce.

Cybercrimes

Cybercrime law encompasses issues such as network intrusion (hacking) and other crimes that take place online. Hacking may be the most publicized cybercrime, and things like malicious viruses and the use of encryption to contribute to or cover up a crime are covered by cybercrime law. There are laws against fraud and identity theft, and some of the most difficult free expression issues are also covered in cybercrime law. Some of these are obvious, such as laws against child pornography and regulation of pornography that is not intrinsically illegal. Bullying is rapidly becoming an issue in the area of cybercrime, as online bullying behavior becomes more virulent. Cybercrime may be one of the most important areas of cyberspace law for everyone to understand.

Freedom of Expression

Freedom of expression as it applies to cyberspace law is a very controversial subject. Although free speech is a right in America, there must be a law against some of the most hurtful things that can happen on the Internet. It can be very difficult to draw the line between free speech and harmful activities. U.N. guidelines have been set to forbid activity when it impinges on human rights. According to Frank La Rue, who has served as the U.N. special rapporteur on freedom of expression, “Expression such as child pornography; incitement to genocide; advocacy of national, racial, or religious hatred that constitutes incitement to discrimination, hostility, or violence; and incitement to terrorism are all prohibited under international law.”

Intellectual Property

Intellectual property in cyberspace is a burgeoning area of law. As more illegally reproduced documents and images make the rounds on the Internet, copyright law is particularly important to understand. Copyright law protects materials by making it illegal to reproduce someone else’s work. It also prevents the distribution of the copyrighted work, public display of the material, and public performance of the work. Patented inventions and trademarks are protected as well.

Privacy

Privacy in cyberspace law means that people have the right to decide what is done with their personal information. This is largely disregarded, as many do not take the time to discover what is done with their information on the Internet. Social media, such as Facebook and Twitter, put information online for everyone to see, often with the consent of those who post on these platforms. Privacy is also an issue with purchasing goods and services online, as some suppliers sell personal information to other businesses, resulting in large amounts of spam. Insecure transmissions over the Internet, logs of emails, data trails, and Web page tracking are all privacy hazards that people meet with online every day. Another complex privacy issue is that of government surveillance.

General Cyberspace Law

It can sometimes be difficult to avoid getting into situations online that could bring legal entanglements, but the most important thing to remember is that the laws of the real world apply online. If you’re not allowed to do something in the “real world” without ramifications, chances are good that you’re not allowed to do it online, either.

This post is courtesy of Jonathan Rosenfeld of Rosenfeld Injury Lawyers.

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Supreme Court Holds Willful Infringement of a Trademark Not Required to Obtain Defendant’s Profits

In an April 23rd decision written by Justice Neil Gorsuch the Supreme Court decided that trademark infringement did not have to be willful for a Plaintiff to be entitled to Defendant’s profits.

In that case Appellee Fossil sold a variety of leather goods and watches. See www.fossil.com. Those goods used fasteners manufactured by Appellant Romag Fasteners, Inc. Romag discovered that Chinese factories making Fossil products were using counterfeit versions of its fasteners and subsequently sued Fossil and several retailers of its products for trademark infringement under Section 43(a) of the Trademark Act. 

That Section provides in part that “Any person who, on or in connection with any goods, uses in commerce any word, term, name, symbol, or device, or any combination thereof, or any false designation of origin or false or misleading representation of fact, which is likely to cause confusion as to the affiliation, connection, or association of such person with another person, or as to the origin, sponsorship, or approval of his or her goods by another person, shall be liable in a civil action by any person who believes that he or she is likely to be damaged by such act.”

Romag alleged under that Section that Fossil, by using counterfeit versions of its fasteners, infringed its trademark and falsely represented that its fasteners originated with Romag. While a jury held that Fossil had acted “in callous disregard” of Romag’s rights it rejected Romag’s’ accusation that Fossil had acted willfully, therefore entitling it to Fossil’s profits under Sections 35 and 43(a) of the Trademark Act.

In interpreting these relevant provisions of the Trademark Act Gorsuch found that its statutory language did not require a showing of willfulness to win a defendant’s profits where a violation of Section 43(a) has been proven to exist.

The prior Trademark Act of 1905, the predecessor to the current Trademark Act, did not mention a requirement of willfulness. Further, the case law under that Act is inconsistent in requiring that a defendant be guilty of willful fraud for profits to be obtained by the complaining party.

Gorsuch wrote that, “a defendant’s mental state is relevant to assigning an appropriate remedy. That principle arises not only in equity, but across many legal contexts…It’s a principle reflected in the [current Trademark Act’s] text, too, which permits greater statutory damages for certain willful violations than for other violations.”

Here, Fossil went around the supplier with which it had a contract to provide component parts for its goods and substituted for those parts cheaper counterfeited copies “in callous disregard” of its supplier’s rights. 

Clearly those acts were willful and with knowledge of Fossil’s violation of Romag’s rights. With those facts in mind, the Supreme Court held that Romag should not be constrained by a narrow interpretation of the Trademark Act to be denied an appropriate redress of its rights.

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Selecting a Trademark and Creating A Brand Identity

When you create a brand identity, you should think of the trademark that you adopt to identify your product or service and distinguish it from your competitors’ products and services as one tool among others in the toolbox that you use to get purchasers to buy your product or service. Those other tools may include your advertising, how you display your product or service in the marketplace, and how you relate to your customers.

For example, if you are selling beer to men in their twenties, that sector of consumers who usually buy beer, you want to get their attention.  If sex is on men’s minds a good part of the time, then sex is probably a good way to get their attention and, therefore, beer ads frequently display very attractive women showing significant amounts of bare skin in close proximity to bottles of that frothy beverage.

If you are selling frozen pizza, television or print advertising stating that that product is as good as pizzeria pizza will likely bring your pizza to the buyer’s attention but it probably won’t close the sale.  Most pizza consumers who eat pizza out likely assume that frozen pizza is a pale imitation of the real thing.  Therefore, you will need something more to close the sale, to get them to buy your product.  Here, placing the product at the end of the aisle in the supermarket, introducing it at a discount, or providing coupons to the buyer will help close the sale.

And if the product you’re offering isn’t pizza but is instead a new automobile brand from a country that isn’t known for manufacturing automobiles that are sold in the U.S., say China?  Buyers will be justifiably concerned whether the Chinese, who have not been manufacturing cars for export to the United States as long as the Japanese, have the same level of expertise in doing so.  So, how do you get over that hurdle?  Your car make, in the beginning, will not have a good reputation.  It won’t have a bad reputation either, rather, it will have no reputation at all.  So what do you do?  You offer the car buyer a long term and comprehensive warranty on the car, promising to fix the car for free.  By doing this you can immediately tag the product with a brand identity, that of a manufacturer that stands behind its product.

Finally, how you relate to your customers is important.  Suppose you sell a commodity; cellular phone service or airline service, for example, where you have several competitors.  You can compete on price but, if you do so, you run the risk that a competitor will undercut your price and grab your customers.  Or you can make the experience of using your product more enjoyable.  In the case of both cell phones and airlines, one way to do that is to make television available to your customers as part of your product, as both Verizon and Jet Blue have.  However, if you leave your customers sitting in a jetliner for numerous hours out on the runway going nowhere, the entertainment offered by television will soon fade to black as may the goodwill that your brand has appreciated over the years.

Whatever you do to sell your product, you need to call it something.  In selecting a trademark, you need to pick a mark that others in your business are not using.  Otherwise your purchasers may buy your competitor’s product when they mean to buy your product or vice versa and more than likely your competitors will sue you.  Then you should pick a mark that will help sell your product.  Here, you can go two ways; you can pick a mark that describes a desirable feature of your product or you can pick an arbitrary or fanciful mark.

If you go with a descriptive mark, that mark will go to work right away, on its own, and help you sell your product.  For example, suppose you offer an allergy medication that doesn’t make you sleepy and you want to extend that brand to an allergy medication that you take at night that does make you sleepy and to distinguish between the two products you add P.M. to the brand name.  P.M. merely describes when you would take that medication, that is, at night, and therefore, that trademark would be a weak one.  From a marketing standpoint your adoption of such a mark would be fast acting and you could get a lot of initial bang for your marketing bucks;  it would not take a lot of advertising other than putting P.M. on your packaging to identify your product to consumers as a nighttime remedy.  However, because it would be a descriptive mark, your competitors could adopt the same or a similar mark and once this occurs, you will need to come up with some other marketing magic to convince customers that your product is better.

On the other hand, you could select an arbitrary or fanciful mark.  A fanciful mark would be a coined word such as Exxon.  An arbitrary mark would be a mark such as Apple which when it is used on computers or personal music players means nothing but has all the meaning in the world when it is applied to fruit.  Initially, when you select such a mark, it would have no immediate significance to consumers.  You would affix it to your product and display it in your advertising and it would, by itself, accomplish nothing in selling your product other than identifying that product as coming from you and not your competitors.  But use the other tools mentioned above to build a strong brand recognition for your product and once consumers recognize your product as working better, looking better or lasting longer than your competitors’ products, that mark will become easily remembered and your rights in it more readily enforced as a fanciful or arbitrary trademark is given greater protection by the courts not only against competitors using the same mark on the same products but against competitors using the same mark on related and, in some cases, if that mark becomes famous, unrelated products.

So what route should you take?  Should you select a descriptive mark for its immediate marketing benefits or a fanciful or arbitrary mark?  You decide, but here are a few examples of fanciful or arbitrary marks; APPLE, STARBUCK’S, GOOGLE, AMAZON, YAHOO, VERIZON, and here are some not so fanciful marks; GENERAL MOTORS, NORTHWEST AIRLINES, UNITED STATES STEEL, TOYS ‘R US.

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PROTECTING YOUR PRODUCT DESIGNS

As a business, you want to be able to protect your product designs. That’s because an attractive, distinctive product design can attract buyers, increase sales and enhance your goodwill. But that same distinctive design, once copied by a competitor, can become commonplace, siphoning off sales and prospective customers.

How can you protect your distinctive product design? One way is through trademark law. Trademark law makes it possible to obtain indefinite exclusive rights to a non-functional product design as long as that design is not the subject of a patent (except a design patent), is not advertised or promoted as improving the function, operation or ease of use of the product, is not the result of a simpler or more inexpensive manufacturing process, is not essential to the use or purpose of the product or affects the cost or quality of the product.

If a product design meets these conditions, and the product bearing the design is used in interstate or foreign commerce, the design can be registered in the United States Patent and Trademark Office on the Supplemental Register. A Supplemental Registration will put subsequent applicants and others on notice that you are claiming trademark rights to your design, and later applicants will be barred from registering confusingly similar designs for related products. If, additionally, you can prove to the satisfaction of the United States Patent and Trademark Office that your design is distinctive, it may be registered on the Principal Register. A trademark registration on the Principal Register is prima facie evidence of your ownership of and exclusive right to use the registered design and it can be used to get the Customs and Border Protection Agency to stop the importation of competing products featuring your design. It will also place subsequent applicants and others on notice that your design is claimed as a trademark and bar later applicants from registering confusingly similar designs in the U.S. Trade¬mark Office.

In order to prove to the satisfaction of the United States Patent and Trademark Office that your product is distinctive, you will need to submit to the Office examining attorney sales figures and advertising expenditures for your product containing the design. You will also need to submit examples of your product advertising that highlights the design. These examples should call attention to your design in a manner which will cause customers to recognize it as your trademark. If, however, your advertising instead draws attention to any functional features of the product design, it will likely defeat your quest for trademark protection.

Should your sales figures and advertising expenditures prove sufficiently substantial; if they include advertising and promotion in relevant trade and customer publications and at trade shows, and if this advertising draws attention to your design, you will be able to obtain recognition and protection of your design as a registered trademark. Examples of distinctive designs which have been protected as trademarks include the external design for the receiver portion of a Browning automatic shotgun, the shape of a plastic spray dispenser and the round design of the Honeywell thermostat as well as the configuration of McDonald’s original golden arches.

A U.S. trademark registration is valid for a period of ten years and can be renewed for future ten year periods of as long as you continue to use the trade¬mark in interstate or foreign commerce on the products that are described in the registration certificate.

Remember that prior to filing an application to protect a product name, logo or design, a search should be undertaken to determine if a mark or design similar to the one that you are seeking to protect has already been applied for or registered.

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Cyberattacks at Your (My) Front Door

For years on this page I have discussed the risk of cyberattacks or cyberwar. But it you want a list of bad actors ready, willing and able to attack the homeland via cyberattacks, you need not look any further than this website.

Way back on May 30, 2007 I discussed Russia’s distributed denial-of-service attack on Estonia which forced Estonia’s biggest bank to shut down its online service temporarily, which bank suffered losses of at least $1,000,000. See https://www.chicagotrademarkattorney.net/cyberwar/

On April 15, 2010 I discussed China’s work in the cyber field and, quoting James Fallows from The Atlantic, I wrote, “China may not be our biggest cyberwar threat. Quoting a former diplomat who worked on security and intelligence issues, that former official stated that our #1 electronic threat was Russia, #2 was the Israelis, who are looking for political advantage, tied with the Israelis is China, but the French, who are looking for economic advantage, and the Brazilians, who are involved in financial crime, are also countries to be concerned about.” See https://www.chicagotrademarkattorney.net/cyberwar-cont/

On August 27, 2013 in a piece entitled, “Asymetric Warfare, Cyberwar & The Blowback” See https://www.chicagotrademarkattorney.net/asymmetric-warfare-cyberwar-the-blowback/ I wrote that, “a group calling itself the Syrian Electronic Army, an online group that supports Syrian president Bashar al-Assad, has claimed responsibility for taking down the New York Times website.” See http://www.nbcnews.com/technology/new-york-times-hacked-syrian-electronic-army-suspected-8C11016739

So, now we got the Russians, Chinese, the Israelis and even the Syrians posing a threat to the systems that we rely on for banking, trading, shopping, streaming as well as our national security and, earlier this month, as tensions ramped up between the U.S. and Iran, in a tweet I added the Islamic Republic to the list. See http://www.smartbrief.com/branded/8F5F957D-57FD-4533-BD54-E4386ED388CE/341EDE63-BB94-4D8F-A44F-D243D3030A13

On January 27th of this year I received the following list of attempted attacks on this website:

Top 10 IPs Blocked

IPCountryBlock Count
91.122.30.68   Russian Federation 4
5.202.47.92   Iran, Islamic Republic of 2
64.225.9.108   United States 2
47.103.106.39   China 1
194.143.251.120   Hungary 1
182.148.92.5   China 1
115.239.27.152   China 1
45.186.163.2(Unknown) 1
113.103.117.8   China 1
36.22.76.89   China 1

Top 10 Countries Blocked

CountryTotal IPs BlockedBlock Count
   China 8181
   Russian Federation 36
   United States 23
   Vietnam 22
   Turkey 22
   Iran, Islamic Republic of 12
   Germany 11
   Canada 11
   Hungary 11
(Unknown) 11

Of 15 IP addresses blocked, four were from Russia, two were from the Islamic Republic of Iran and five were from China. The vast majority of attempts to hack this site came from the People’s Republic of China. So, to learn who our biggest cyber threats are as a nation I need not look any further than who my biggest cyber threats are as a website owner. Apparently, they’re one and the same and if I’m a target you may be one too.

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BLOCKING ADULT DOMAIN NAMES FROM HIJACKING YOUR DOMAIN NAME

On June 16, 2012 in a post labeled https://www.chicagotrademarkattorney.net/new-domain-names-bring-new-challenges-to-protecting-your-brand/ I alerted trademark owners to the establishment of new generic top level domains. Among those new domains were .XXX, .ADULT, .PORN & SEX and I wrote that “When the .XXX domain was created for adult sites last year, operators of adult businesses had the opportunity to identify themselves as adult businesses by using that domain suffix. At the same time, non-adult businesses could park .XXX domains and thereby make them unavailable for use by adult businesses thereby preventing what might be an unsavory association, e.g., GOOGLE.XXX. Now both owners of adult websites and owners of non-adult websites that wish to avoid such associations will have to deal with .ADULT and .PORN as well.”

Now, the domain name registry responsible for the .XXX, .PORN, .ADULT and .SEX domain names, the ICM Registry, has come up with a new mechanism to protect brands at a lower cost than filing a defensive domain name registration. An example of a defensive domain name registration would be, in the case of Apple, Apple registering the domain names APPLE.XXX, APPLE.PORN, APPLE.ADULT and APPLE.SEX so as to prevent another entity from diluting its brand by registering an “adult” suffix domain name incorporating their registered house mark.

The ICM registry is now offering a service called AdultBlock. It lets brand owners block the registration of terms registered in the Trademark Clearinghouse and will block that term in all four TLD’s, namely, .XXX, .PORN, .ADULT and .SEX, and will even block the adoption of confusingly similar marks with that those suffixes. It will not block existing domain names but will block future domain names. When the problematic “adult” suffixed domain name becomes available, both the AdultBlock and AdultBlock+ service will add the newly available domain name to the block for the remainder of the service period. Once a domain name is blocked by the AdultBlock or AdultBlock+ service no other users can register the domain name during the service period.  In addition, the AdultBlock+ service will block confusingly similar characters, such as replacing an “L” with a “1” and an “E” with a “3”. See http://adultblock.icmregistry.com/ for further information.

Note that to use this service you will need to obtain a Signed Mark Data (SMD) file from the Trademark Clearinghouse. Any trademark holder can submit a trademark record to the Clearinghouse. A trademark record is a registered trademark, a court validated trademark, or a trademark protected under statute or treaty. A Signed Mark Data (SMD) file is similar to a token. It is a file generated by the Trademark Clearinghouse once the trademark record and Proof of Use of that mark have been verified. This SMD has a public and encrypted identification part and allows trademark holders access to Sunrise Periods for new GTLD’s and to request other services such as to initiate a URS proceeding to recover a cybersquatted domain name. Detailed information on how to submit Proof of Use of your mark and obtain your Signed Mark Data file (SMD) may be found at http://www.trademark-clearinghouse.com/sites/default/files/files/downloads/how_to_submit_and_change_a_proof_of_use_0.pdf See also the following videos http://www.trademark-clearinghouse.com/content/how-register-clearinghouse , http://www.youtube.com/watch?v=aL0n_pNTVgE&feature=youtu.be , http://www.youtube.com/watch?v=kxHDrOS6qYI&feature=youtu.be &http://www.youtube.com/watch?v=FaW-S5G6y6A&feature=youtu.be          

Registering a trademark with the Clearinghouse costs $150.00 for the first year and can be registered for up to five years at a discount based on the length of the term. Up to ten trademark registrations can registered with the Clearinghouse on a single credit card.

If you need additional information, please let me know.   

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How to File An Application to Obtain A Trademark Registration in the U.S.

In https://www.chicagotrademarkattorney.net/acquiring-and-maintaining-a-trademark/ I discussed the advantages of obtaining a federal trademark registration in the U.S. To enjoy those advantages, you need to file an application to obtain that registration in the U.S. Patent and Trademark Office.

The first step in filing an application is to check the records of that Office to make sure that that mark is available, i.e., that that mark or a confusingly similar mark is not used on the same or related goods or services. Related goods or services are goods or services that would be sold or used together such that the use of the same or similar name to identify them would cause customer confusion. Since trademark rights in the U.S. are generally based on being the first to use that mark, the exception being that you can file a trademark application based on your intent to use that mark in the future, (See https://www.chicagotrademarkattorney.net/intent-use-mark-must-bona-fide/ ) you should also, at least, check the Internet to see if your proposed mark or a confusingly similar mark is used on related goods. Here, I recommend that you retain the services of an experienced trademark attorney to conduct that search and analyze the results as he or she would be aware of the relevant law and Patent Office practice and, thereby, be able to advise you as to whether your selection and use of a particular trademark or service mark is likely to be approved by that Office and, more importantly, whether in adopting and using that mark you run the risk of a potential legal claim being raised by the owner of another mark.

If your mark is available, in your U.S trademark application you need to identify who the owner of the mark is, who should also be the user of the mark, and list its address, entity type, and then  the state or country under which it is organized, e.g., state of incorporation.

Then you need to identify the mark. If it’s a word or slogan, you can display it in block letters or standard characters, i.e., type it. If it includes a logo, you need to decide if color is an important marketing feature. If it is, the mark should be registered in color. If the design rather than the color is more important or if the logo will appear either on your products or in your marketing materials in more than one color, you should register the mark in black and white. To meet U.S. Patent and Trademark Office requirements you will need to provide a .jpg drawing of your logo scanned at not less than 300 dots per inch and no more than 350 dots per inch, to produce the highest quality image with all lines clean, sharp, and solid, with a  length of no less than 250 pixels and no more than 944 pixels, and a width of no less than 250 pixels and no more than 944 pixels.

Next, whether the mark is a word, slogan or logo, you need to identify what goods or services it is used or intended to be used in connection with (For goods, the mark must be used on packaging or labeling for the product, for services, the mark must be used on advertising for the product, e.g., store signage, brochures, web site, etc.). The Patent and Trademark Office provides a handy list of suggested goods or services for your application at http://idm-tmng.uspto.gov/id-master-list-public.html, By using one of these pre-approved descriptions of your goods and services, you qualify for a reduced government filing fee.

If you are currently using the mark, you need to identify the date when the mark was first used on your goods or in connection with your services and the first date that those goods with labeling or packaging bearing the mark that you want to register were shipped either across state lines or to the U.S. from abroad. For services, advertised on the web, it is sufficient to use the date that the relevant advertising went live on the web, as your first date of use. But note, it is not sufficient that you are advertising the services; on that relevant date you must be providing your services to the public. You also need to prove that you are using your trademark or service mark on the goods or services that you have listed in the application by providing via a .jpg or .pdf file an image of your advertising for your services, for a service mark, or an image of labeling for the product or packaging for the product for a trademark and identify in your application what that proof of use is, e.g., a label, product packaging or a webpage advertising your services.

Note that if your goods and services are in more than one class, you will have to submit additional filing fees. If you use the Patent Office’s suggested list of goods or services, it will identify the applicable class that those particular goods or services are in, and when you complete your application, will calculate the filing fees that you owe. For example, cosmetics are in one class, motor vehicle parts are in another class, financial services are in another class, marketing services are in another class, etc. but most articles of clothing and most electronic goods, because they are related products, would be in the same class, that is, most articles of clothing would be in the same class and most electronic goods would be in the same class.

Finally, you need to sign the application electronically by inserting your name or initials between two slash marks, typing in your name and title and dating the application. If you are not a U.S. resident, you will have to designate a domestic representative in the United States. You pay the government filing fee by credit card online and the Patent Office will acknowledge its receipt of your application by electronic mail to your email address.

In about three or four months you should hear from the government, either by telephone or by mail, if your trademark registration application has to be corrected or was refused. If you do not hear anything, then you’ll hear that it was approved and published in the U.S. Patent and Trademark Office Official Gazette to give third-parties 30 days to oppose your application. If there is no objection by those third parties, you’ll receive a Certificate of Registration if your application stated that the mark was currently in use or a Notice of Allowance if you intend to use your mark in the future.

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Determining if Your Trademark Has Been Infringed

Section 32 of the U.S. Trademark Act defines (15 U.S.C. sec. 1114) trademark infringement as the unauthorized use of an owner’s mark which is likely to cause confusion, mistake or deception. Among the elements considered in determining whether trademark infringement has taken place are the similarity or dissimilarity of the marks at issue in their entireties as to appearance, sound, meaning and commercial impression and the similarity or dissimilarity of the nature of the goods, that is, whether members of the purchasing public would mistakenly assume that the plaintiff’s goods or services originate with, are sponsored by, or are in some way associated with the goods sold under the defendant’s trademark. As to the similarity of the marks in question, the Patent Office has held that it may be sufficient that two marks look the same or sound the same or mean the same to find likelihood of confusion See In re White Swan, Ltd., 8 USPQ2d 1534 (TTAB 1988).

There traditionally have been three routes to proving likelihood of confusion; (1) a consumer survey, which is expensive and inherently raises issues about sample size, the manner of display of the marks at issue, and the relevancy of the population surveyed, that is, are they likely to be the purchases of the trademarked products at issue; (2) evidence of actual confusion, if it can be found or (3) the finding of a clear inference of confusion based on a comparison of the conflicting marks and how they are used. At least in this Federal Circuit, the 7th, proof of intentional copying only creates a presumption of likelihood of confusion, rather it is just one of several factors to be weighed in determining whether there is a likelihood of confusion and infringement has taken place. See Schwinn Bicycle Co. v. Ross Bicycles, Inc., 870 F.2d. 1176 (1989).

All of which brings me to the “book,” an image of which appears below, which I received from Chofn Intellectual Property, a Chinese trademark firm, by one of its authors, Tingxi Huo, entitled Classification of Similar Goods and Services for Registration of Marks in the Peoples Republic of China.

Chinese Classification of Similar Goods and Services for Registration of Marks

Let’s assume that you have two similar marks; they may sound the same or they may look the same. You next need to determine if they are used on sufficiently related goods as to cause infringement. Here’s where Mr. Huo’s book makes that determination. Say the services at issue are “Providing on-line videos, non-downloadable.” You will find those services in that book, which is in both English and Chinese, on page 345, listed in English in alphabetical order. To the right of that listing of services is a four-digit code, in this case “4105.” Turning to page 599 of Mr. Huo’s book, you will find the start of a little more than one page of related services. These run from “Entertainment service” to “Movie studios services” to “Production of radio and television programmes” to Rental of videotapes” to “Videotaping” to “Production of music,” which is a rather thorough listing of related services, which if sold under the same or similar mark to the one alleged to be infringed for providing on-line videos, would be likely to cause confusion, mistake or deception.

Let’s pick another example, “Mobile Phones.” “Mobile Telephones” may be found on page 317 of the book, to the right of which may be found the code “0907.” That code may be found on pages 478-479 of the book next to such related goods as “Antennas,” “Transmitters of electronic signals,” “Video telephones,” “Navigation apparatus for vehicles,” “Cordless telephones,” “Radio Pagers,” “Satellite navigational apparatus,” [Most smartphones have GPS] and “Wearable activity trackers,” which when used with a mobile phone can transmit notifications from that phone to your wrist.

Or let’s pick an everyday item like Lipstick, found on page 307 of the “book” next to the code “0306.” That code may be found on page 428 of the book next to a host of items generally sold together by the same maker such as “Nail polish,” “Make-up,” “Mascara,” “Lip glosses,” and “Sunscreen preparations.”

Now, what if all of this information was computerized. If software can do voice recognition, you can set up parameters by which that software will determine if two words sound alike, image processing software such as Google Images can determine if two marks look alike and word processing software contains a thesaurus function that determines which words carry the same meaning. Put it all together and in the not too distant future trademark infringement decisions may be rendered by computers eliminating both Patent Office trademark examiners and judges.

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Why It Is Important to Register Your Trademark Abroad

Most countries outside the United States do not require that you use your trademark in that country in order to obtain exclusive rights in that mark in that country. All you have to do to obtain those rights is to register your mark in that country. Nothing more is required. Therefore, if you are considering doing business in a registration-first country, or even if that is a mere possibility, you should register your mark there early. Otherwise, a cybersquatter or even a potential distributor who gets wind of your potential intent to do business in that country can register your mark there and force you to litigate or buy your own mark back before you can use your own mark to do business in that country. See http://t.co/jMvinPQjfi

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CAN YOU LIVE WITHOUT THE INTERNET?

The short answer to that question is no. Most people can’t live without access to the world’s knowledge, most recorded music, on-call transport, the world’s largest retail store, Facebook, Twitter, Instagram, instantaneous traffic and weather reports, etc., all of which can be found on the Internet. Just ask the President of the United States, who can’t stay off his Twitter Account, or the six billion people who are estimated to own smartphones by 2020. See http://www.cnbc.com/2017/01/17/6-billion-smartphones-will-be-in-circulation-in-2020-ihs-report.html

If you can order dinner on GrubHub, get a ride on Uber or Lyft, and do your shopping on Amazon, why bother to learn how to drive a car. “in 2014, just 24.5 percent of 16-year-olds had a license, a 47-percent decrease from 1983, when 46.2 percent did. And at the tail end of the teen years, 69 percent of 19-year-olds had licenses in 2014, compared to 87.3 percent in 1983, a 21-percent decrease.” Maybe one reason young people are no longer getting drivers licenses is they don’t need to go to the mall to go shopping or to go to the mall to hang out with their friends, assuming their mall still exists. See http://en.wikipedia.org/wiki/Category:Defunct_shopping_malls_in_the_United_States and http://www.theatlantic.com/technology/archive/2016/01/the-decline-of-the-drivers-license/425169/ Why visit with your friends in person when you can use FaceTime?

The mobile device that sits in your hand carries great power but like anything with great power it carries great danger as well. With the ability to access the world’s knowledge, its goods and services, your friends and relatives as well as your financial information it gives you amazing powers.

But there are dangers as well. See http://www.wired.com/story/app-permissions/ For example, on my Android phone, Amazon’s app can access my device’s location, identify when I’m on a call, access my contacts, pictures, music documents and other files stored on my device and even in the cloud, and record sound using the microphone. My Facebook app can access my calendar as well as my pictures, music documents and other files stored on my device and even in the cloud. My Fitbit app can access my location, identify when I am on a call as well as access my contacts, pictures, music documents and other files stored on my device and even in the cloud as well my device’s camera and if I want to access my wearable Fitbit device and use that app I cannot delete those settings. My bank’s app will access my device’s current location, identify when I am on a call, access my contacts and record sound using the device’s microphone and I cannot delete those settings and use that app. My Spotify app will access my device’s location, identify when I am on a call, as well as access my contacts, pictures, music documents and other files stored on my device and even in the cloud. And, again, I can’t change those settings. My smartphone is designed to locate me, the names of my friends, record my voice, potentially access images of my family and whereabouts, learn my future plans and even listen in on my conversations and, unless I’m willing to not use my Fitbit device, enjoy Spotify or bank online, etc., i.e., exchange my smartphone for a flip phone, by using that device, the control that I think it gives me, I have, in fact, granted to larger entities; a big bank, Spotify, Facebook, Amazon, etc. over which I have no control. By using that device, I have willingly become a character in a Black Mirror episode.

See the Black Mirror episodes Nosedive, Shut Up and Dance, and Hang the D.J.

Maybe, the Godfathers of Tech knew something we didn’t realize. See
http://nyti.ms/2JkjOdJ

So what to do? Maybe we can live without the Internet, that is, the Internet that exists as we use it today. And what would that future Internet look like? Can we enjoy the power that it provides without the surveillance that it provides to the powers that designed it? I suggest that we pay for its convenience. Before the Internet, I used a service called Lexis/Nexis. There were no ads and I could retrieve articles from almost any newspaper or scientific publication in the world as well as any published court case. The cost for this, which my employer paid, was not cheap (There was an annual subscription.) and while Lexis/Nexis knew what I was reading and how long I was on line; after all, I was paying for the ability to read what they provided to me, they couldn’t access anything else on my computer. Similarly, if you have a “dumb” TV and Cable, you can access HBO, Showtime, Comedy Central, FX, etc., and pretty safely assume that unless you purchase a movie that your Cable TV provider probably doesn’t know what you’re watching and, if they do, at least they are not peering into your living room or obtaining the names of the people watching Sunday Night Football with you. Hell, Blockbuster knew what movies you were watching and your public library knows what books you are reading.

So, here’s what I propose. A subscription-based Internet. If you want just a browser and email, you can purchase that; if you want Facebook, Spotify, Google Maps, Google Hangouts, your bank’s app, Amazon, Netflix, etc., you would pay for those packages. In return for the money that Facebook, Spotify, Google, Bank of America, Amazon, Netflix, etc., makes from your subscriptions, there would be limits on what information they could gather from you. For example, Facebook could obtain your profile and the names of your friends, if you opt to provide the latter. In addition, you could opt into advertising which would be limited to advertising based on your newsfeed. For example, if you have a dog or post your vacation photos, Facebook could provide advertising for pet supplies or travel offers but not political ads or Russian bots. In the case of Spotify, it would be entitled to a list of the music and performers you listen to and could provide information to you as to when those performers have concerts in your area or suggest similar music to what you are listening to. They would have no further access to your device or your data. Google would be entitled through the use of anonymous cookies to provide advertising on its site relevant to your searches; they already can learn your location, your operating system and the device on which you are searching, but would have no further access to your data, e.g., being able to identify you personally and determine what you are searching. Your bank would have access only to the financial information that you supply to them and to your smartphone camera for the purpose of depositing checks, limited to from the time you log in to the time that you log out. At no time could an app access your device’s location, identify when you are on a call, access your contacts, pictures, music documents and other files stored on your device and even in the cloud, unless that information is necessary to the operation of the relevant app, e.g., Dropbox, Google Maps, Waze or a Weather App. I see no reason why an app would need to identify when you are in a call except for the limited technical purpose, if you are listening to Spotify or watching a You Tube or Netflix video, to resume the audio or video transmission when your call ends.

Wrapped up in the ability to order dinner on GrubHub, get a ride on Uber or Lyft, and do your shopping on Amazon is the sense of control, but the reality is on today’s World Wide Web, someone else is on the line listening; you have no control. If we don’t have the option to get that control back, we may become willing to trade-in our smartphones for dumbphones. “Security and privacy offer more reasons to consider a dumbphone. Smartphones are sophisticated tracking devices. GPS and motion sensors, along with the always-on internet servicing dozens of apps doing unspecified processing in the background make these devices encyclopedias of their users’ actions and behavior. While the cellular network can always be used to determine a handset’s location, the granularity and accuracy of its physical tracking is limited compared to a GPS device. And given recent examples of border agents demanding access to travelers’ smartphones, feature phones might become standard equipment for frequent travelers.” See http://www.theatlantic.com/technology/archive/2017/02/the-wisdom-of-the-dumbphone/518055/ & http://www.makeuseof.com/tag/best-flip-phone/

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THESE ARE THE INTELLECTUAL PROPERTY LAW AND CORPORATE LAW SERVICES THAT MY FIRM PROVIDES

These are the Intellectual Property Law and Corporate Law services that my firm provides:

Corporate Formation

We will conduct a search and advise you as to whether your proposed corporate name is also available as a domain name.

We will advise you as to which domain names you should register to protect yourself against cybersquatting.

We will conduct a trademark search to determine if your proposed corporate name is available for your use as a trademark and is registrable with the United States Patent and Trademark Office, thus offering you national protection for that name.

We can incorporate your entity in Illinois as a corporation or form it as a limited liability company as well as advise you as to which entity form best meets your needs.

Internet Services

We can prepare the necessary language for your website to protect you against potential liability, set forth terms of use and provide your customers and clients with the necessary privacy policy language.

Where appropriate, we can assist you to register your domain names with the Library of Congress, thereby providing you with additional protection against potential infringement claims.

If an infringement problem does arise, we can take action against the infringer to stop those infringing activities as well as defend you against claims of infringement arising from your adoption and use of your domain name.

Trademark Services

We can assist you in the creation of strong brand names and logos to offer you the broadest protection for your corporate, product and service names and logos, including conducting searches to ensure that those names and logos are available for your use and registration as trademarks and service marks.

We can register your corporate and product names, including your logos and trade dress, as appropriate and necessary to provide you with nationwide protection for those names, logos and trade dress as well as register those names and logos abroad, if necessary, to protect your names and logos against foreign infringement.

We can maintain your existing portfolio of registered and applied-for service marks and trademarks.

We can take action against potential infringers of your marks as well as defend you against claims of infringement, including trademark, service mark and trade dress infringement.

Trade Secret Services

We can create a plan to ensure that your vital corporate information, including marketing plans, product development plans, supplier and customer information, formulas, data, etc. are kept confidential and protectible as trade secrets.

To do this, we can provide you with the necessary Employment Agreements, Confidentiality Agreements, Non-Disclosure Agreements, etc. to protect that information and ensure that you have a legal remedy if that information falls into the wrong hands.

Copyright Services

We can register your computer software, writings, musical compositions, art, photographs and product designs, to the extent that U.S. law may protect the latter, with the U.S. Copyright Office so as to provide you with the right to sue for infringement of these works should infringements occur.

We can defend you against claims of copyright infringement of such works as well as assert such claims as necessary to protect your rights.

Working with Patent Counsel, we can assist you to determine how you may best protect your products, designs, and formulations against infringement through either copyright, patent or trademark protection.

Other Legal Services

We can prepare by-laws for your newly-formed corporation or an operating agreement for your limited liability company.

Should you decide to sell your business, we can prepare both asset and stock purchase agreements, where appropriate to effectuate said sale.

As noted above, we can prepare a wide range of business agreements for your use, including but not limited to Employment Agreements, Confidentiality Agreements, Non-Disclosure Agreements, Operating Agreements, License Agreements, Manufacturing Agreements, Vendor Agreements, Internet Provider Agreements, Supplier Agreements, Model Releases, Settlement Agreements, etc.

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