Law Office of Lisa N. Kaufman, P.A.
Trademark, Copyright, and Unfair Competition Law
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Fraud on the USPTO

In the United States, federal trademark applications may be based on actual use in commerce or a bona fide intent to use the mark in commerce. However, before the trademark will register, actual use in commerce must be established. Also, to maintain the registration, use in commerce must be established to the satisfaction of the United States Patent and Trademark Office (USPTO). When use is claimed at the USPTO, that claim is made by means of a declaration under penalty of perjury. Use in commerce is not a mere token use but is a bona fide commercial use. The USPTO is quite stringent as to what constitutes use in commerce. A commercial use can be a use in interstate commerce (commerce between the states) within the U.S., or use in commerce between the U.S. and a foreign country. Moreover, that use must be upon all of the goods or services set forth in the application or registration in accordance with recent case law, or a finding of fraud upon the USPTO may be found which could have far reaching and detrimental impact upon the owner of the trademark registration.  

Sports Trademarks--Caution: Choose Your Trademarks Carefully 

For years The University of Southern California (USC) and the University of South Carolina have litigated over use of the USC logo. The University of Southern California sued The University of South Carolina claiming that its use of the USC logo was an infringement of its own USC logo and was likely to cause confusion in the marketplace. Recently the University of Southern California won the case. If you noticed that the University of South Carolina's logo has changed, now you know why.

Non-profit organizations also need trademark and copyright protection

Non-profit organizations often fail to protect their intellectual property rights. Simply because an organization is not for profit does not mean that it doesn't have valuable intellectual property rights that require protection. Time,effort and money were presumably expended to create the organization's trademarks, service marks and logos as well as promotional and marketing materials. All of these things can be valuable assets of the organization. Consideration should be given to protecting these assets just as any for profit organization would protect them.

What is a Work for Hire?

There is often a misunderstanding as to what constitutes a work for hire under copyright law. When an employee creates a copyrightable work during the course of his or her employment and as part of his or her duties as an employee, that work is a work for hire which belongs to the employer. However, when there is no employer/employee relationship, and a work is commissioned, only works which fall into the following categories will be considered works for hire.
1. Contribution to a larger work, such as a magazine 
2. Part of a motion picture or audiovisual work 
3. A compilation of existing works 
4. Instructional texts or graphic works 
5. A translation of an existing work 
6. A test 
7. Answers for a test 
8. Supplementary works, such as a graph for a book 
9. An atlas
Otherwise, such works belong to the creator of the work and a written transfer of the rights in the work must be made before the work belongs to the party requesting the creation of the work.


The Difference Between Licensing and Franchising

A franchise is a complicated license agreement. Whether an agreement is determined to be a franchise often turns on the degree of control the owner of the trademark exercises over the party utilizing the trademark. Even if the parties call an agreement a license instead of a franchise, the name given to the agreement is not determinative. In a 2008 case, Otto Dental Supply, Inc. v. Kerr Corp., 2008 WL 410630 (E.D. Ark. 2008) the owner of the trademarks claimed it entered into a license, not a franchise, and therefore the franchise laws did not apply. The court left it up to the jury to decide whether or not the license was actually a franchise. This turned out to be an expensive lesson for the "licensor." If an agreement is determined to be a franchise rather than a license, federal franchise disclosure requirements must have been made.  

Some states also require franchise disclosures.  http://www.ftc.gov/bcp/franchise/netdiscl.shtm.  




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