Raymond Area Rotary Club Sparks Colorful Exchange

By Catherine S. Yao

The Raymond Area Rotary Club’s 4th annual Thunder Run is a 5K obstacle race to be held in Epping, NH, on May 20 this year.  But, just a few weeks from race day, the Rotary Club seems to have run into an obstacle of its own.

According to the New Hampshire Union Leader, an attorney for Tough Mudder, an endurance event series, has recently notified the Rotary Club that Tough Mudder is the owner of a trademark registration for the color orange “in connection with obstacle course mud runs” and has requested that the Rotary Club cease significant usage of such color on the Thunder Run website (http://thunderrunnh.com/).  It’s unclear how long the club has been using the color orange for the Thunder Run.

Rotary Club member Joe Pratt was not at a loss for words in his response, painting any potential litigation between the two sides as a scene of David and Goliath proportions.  Pratt further stated that the club might change the colors for next year’s race “if we have to.”  The full story may be read here: http://www.unionleader.com/courts/raymond-rotary-pushes-back-after-tough-mudder-lays-claim-to-the-color-orange-20170511.

U.S. trademark registrations (whether for color or otherwise) are always tied to particular goods and services.  Over the years, many companies have successfully obtained federal trademark/service mark registrations for their valued brand colors, such as Tiffany & Co.’s famous shade of blue and Owens Corning’s pink, the color of the company’s ubiquitous fiberglass insulation.  Colors are often an important aspect of a company’s brand identity, so it really comes as no surprise that a trademark registrant/owner would be protective of such intellectual property.

With the race only days away, we’ll be interested to see if and how the attorneys for Tough Mudder respond!

Copyright Office Releases New Rule Governing Designation of Agent

By Scott C. Rand

The U.S. Copyright Office recently announced a final rule changing the registration requirements for online service providers seeking to avail themselves of the “safe harbor” under the Digital Millennium Copyright Act (“DMCA”).  Under the DMCA, online service providers that store or post content from users can shield itself against claims of copyright infringement provided certain eligibility requirements are met.

To be eligible under the safe harbor from copyright infringement, online service providers must designate an agent to receive notifications of copyright infringement.  Previously, the Copyright Office maintained an online directory of scanned copies of agent designation filings.  Effective December 1, 2016, designation of agent filings must be made using the Copyright Office’s new electronic system.

This requirement also applies to any online service provider that has previously designated an agent under the old system.  Any online service provider that wishes to maintain a designation filed under the old system is required to re-designate their agents using the new electronic system by December 31, 2017.  Designations that are not re-registered by December 31, 2017 will expire.

Another change under the new rule is that agent designations will expire every three years.  Thus, periodic renewals will be required for an online service provider to maintain safe harbor protection.  Under the new system, agent designation fees have been reduced from $105 to $6.

Know the Law: How Can I Start Protecting My Trademark?

By Catherine S. Yao

Q: I have a small business in New Hampshire and have been selling goods to customers in New Hampshire and Massachusetts for several years.  How can I start protecting my company’s trademark?

A:  It sounds like your company has been around for some time, so the mark has likely already started accumulating rights, at least in your geographic area.  Simply applying the mark to a product or using the mark to provide a product/service, creates “common law” trademark/service mark rights, which is the lowest level of trademark protection.  Notably, common law trademark rights are limited to the geographic area of use.  At this point, you can start using the “TM ” superscript (for trademarks not federally registered; “SM” for service marks not federally registered) to put others on notice of your mark.  The mark should be prominently displayed/used on the products themselves and/or the labels, tags, or packaging of the product.

To read my full article that was published in the Union Leader, please click here.

The ABCs of IP

By Catherine S. Yao

Anyone from individuals to companies of all sizes may have a range of intellectual property (“IP”) considerations.  Even where you do not specifically intend to create intellectual property, you and/or your company may have protectable rights or interests to consider.  You should also be wary of the possibility that you may be using and even unintentionally infringing the intellectual property of others.  From trademarks to copyrights to patents to trade secrets, it is important to understand each distinct category of intellectual property as well as the respective protections and limitations that surround them.

Therefore, the goal here is to provide a general baseline of understanding of the different types of intellectual property and help you to begin to identify and understand your property as well as the relevant rights, protections, and risks.  Subsequently, you will likely find it worthwhile to further explore certain categories in detail.

To read the full article that was published in the NH High Tech Council’s newsletter, please click here.

Know the Law: Copyright Infringement or Legal Fair Use?

By Jeremy T. Walker

Q.  My company subscribes to various technical journals. We often copy pertinent articles and distribute copies to our employees for their reference. Could we be exposing ourselves to copyright infringement liability?

A.  Possibly. The issue is one that implicates the “Fair Use” Doctrine of Copyright Law. A copyright is the federal grant of exclusive legal rights for original works of authorship, such as books, articles, songs, and computer programs. A copyright owner has certain exclusive rights, including the rights to copy and distribute the work. A violation of any of these rights constitutes copyright infringement. Penalties for copyright infringement can be severe, with statutory damages of up to $150,000 per infringement for willful infringement.

To read my full article that was published in the Union Leader, please click here.

New Domain Name Dispute Policy a Boon to Trademark Owners

By Mark A. Wright

Those who use Internet domain names in bad faith beware. On January 1, 2000, the Internet Corporation for Assigned Names and Numbers’ (“ICANN”) Uniform Domain Name Dispute Resolution Policy (the “Policy”) took effect. Under the new policy, if you hold and use a domain name that is identical or confusingly similar to an existing trademark, and do so in bad faith, you may lose all rights in the domain name.

The purpose of the Policy is to provide an administrative process to resolve disputes between legitimate trademark owners and those who adopt domain names that are identical or confusingly similar to another’s trademark. The Policy applies to all registered domain names, and establishes a mandatory administrative process for resolution of such complaints. Unlike the prior policy, both owners of common law and registered trademarks can now block the use of infringing domain names.

To read my full article, please click here.

Know the Law: Preserve Patent Rights in the United States and Foreign Countries

By Scott C. Rand

Q.  I have an invention and plan to disclose it at a trade show.  What do I have to know and what steps do I need to take to preserve patent rights in the United States and foreign countries?

A.  To maintain your ability to obtain patent protection in the U.S. and abroad, it is important to file a patent application covering your invention in at least one country prior to publicizing or attempting to commercialize the invention.

To read my full article that was published in the Union Leader, please click here.

Know the Law: Copyright Protection

By Jeremy T. Walker

Q.  I am a freelance writer, and I understand I automatically have copyright protection for works that I author. Do I still need to register my works with the United States Copyright Office?

A.  The short answer is no, you do not need to register to have copyright protection, but in most cases, you should register your works for the significant benefits to which registration entitles you.

To read my full article that was published in the Union Leader, please click here.

Know the Law: How Should I Respond to a Claim of Patent Infringement

By Scott C. Rand

Q.  My company recently received a letter alleging patent infringement and demanding payment for use of commercially available technology. We are not a technology company, but rather an end user of the technology. The patent owner has been referred to in media reports as a “patent troll.” What protections against patent trolls are in place for companies like mine and can I safely ignore the letter?

A.  Recently, more and more businesses have been receiving letters of this type. Although so-called patent trolls (persons or companies that assert patent rights to collect license fees, but do not manufacture products or provide services, also known as non-practicing entities or NPE’s) have been around for many years, they have historically targeted companies that either develop, manufacture, or sell the technology in question. A trend has now emerged, however, where NPE’s target end users based on their use of off-the-shelf products.

To read my full article that was published in the Union Leader, please click here.