The IP Beacon


The IP Beacon is a Haynes and Boone Newsletter highlighting current issues in Intellectual Property Law. Articles featured in the October 2012 issue include:

Fraud: The ‘F’ Word Trademark Owners Should Avoid:

While the U.S. Trademark Office’s stated standard for fraud is quite high and envisions a specific intent to mislead, the U.S. Trademark Trial and Appeal Board (“TTAB”) has recently taken the position that, in certain circumstances, mere carelessness can constitute fraud. This article discusses the TTAB decisions leading up to this position, some options available when erroneous statements about trademark use have been made, and practice points to be considered going forward, including:

• Explaining to clients that careless misstatements can result in a loss of rights.
• Auditing client portfolios for erroneous statements.
• Ensuring no uncertainty exists as to what the client has offered in comerce under the mark.
• Maintaining a file supporting use of the mark in connection with all of the goods and services.
• Erring on the side of deleting goods or services at issue if evidence of use cannot be found
• Filing separate applications for separate offerings.
• Paying attention to U.S. registrations originally based on foreign applications and registrations. 

Preparing For (and Avoiding) The Courtroom:

Getting sued can be terrifying, especially for a small company. This article presents a few good practices along the way that can not only increase your odds of winning if a full-blown trial occurs, but also help you avoid the courtroom entirely, such as:

• Having suitable agreements in place with employees, consultants and related associates.
• Focusing on protecting your intellectual property.
• Keeping an eye on your competitors and yourself.
• Limiting possible damages.
• Preparing trial strategy to focus on early settlement. 

Offshore Outsourcing: Trends and Critical Issues:

There is considerable opportunity for U.S. companies to improve efficiency and save money by offshore outsourcing as long as they recognize the risks and undertake the necessary due diligence. This article presents a comparison of outsourcing to the BRIC countries: Brazil, Russia, India and China, along with some of the more important factors that should be considered when entering into outsourcing arrangements.

Online Registration of Copyright Claims:

On July 1, 2008, the Copyright Office began offering online registration of basic claims through the Electronic Copyright Office (“eCO”). This article presents an overview of the new online system for filing copyright applications, including:

Advantages of filing through eCO include:

• Secure payment by credit/debit card, electronic check, or deposit account.
• A lower filing fee ($35 vs. $45 per basic claim.)
• Online status tracking of claims.
• The ability to upload works digitally to eCO.
• Registration through the eCO is now the preferred way to register basic claims for literary works, visual arts works, and performing arts works.
• A single basic claim can include a single work, multiple unpublished works if they are by the same author, or multiple published works if they are all first published together in the same publication on the same date.

For more information, click here to visit our Intellectual Property Practice Group page.

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