Nov 292011

Google is an interesting phenomena. Recently, I launched a new website for flat fee online trademark registration services.  You can find the website at In conjunction with launching the website, I also posted a few informative internet videos about the website and how to register a trademark.  On the first day after posting, my video “Find a Trademark Attorney” made it to the first page of Google in organic searches for certain key words. However, a few days later, the video already dropped to the second page of organic Google searches.

My question to the SEO gurus out there is: Does posting content on the internet get an initial SEO bump from Google that must be maintained by interest shown by traffic and links, or do you think that the video’s drop from page 1 to page 2 is more likely a result of someone else who had been bumped from page 1 reworking their SEO to get back on top and bumping my video down to page 2?

For those that are interested, here are the videos:

 Posted by at 10:00 am
Oct 152011

Bloomberg Business Week reports that Actor Corbin Bernsen (of L.A. Law notoriety) filed suit in Virginia court against Innovative Legal Marketing, LLC for breach of contract. According the complaint, Innovative Legal Marketing had contracted Bernsen to act as a spokesperson for the company.  Bernsen is seeking over $660,000 for the alleged breach. The complaint alleges that the company cancelled the $1 million contract, which was originally to last five years, in June because Innovative Legal Marketing had only been successful in New York.

Jan 102011

At common law, the general rule of invention assignment is that employees retain ownership of patents on their inventions, unless the employee was employed to invent.  (See post on Invention Assignment.) However, determining ownership of an invention at common law, e.g., who wins between the employee and employer, can be unpredictable and may involve complex factual issues relating to scope of employment, nature of the invention, and whether or not the employee used employer resources.  To avoid this uncertainty, employers have commonly used pre-invention assignment agreements.

A pre-invention assignment agreement addresses ownership of an employee’s invention before it is even invented, e.g., addresses potential innovations.  A contract having a pre-invention assignment provision typically requires the employee to assign to the employer the employee’s ownership rights in all inventions conceived or created during the course of employment.  These contract provisions are known as pre-invention assignments, because the assignment is executed at the start of employment before any invention is actually conceived. 

Courts have generally upheld pre-invention assignments under freedom of contract theories.  As stated in Gas Tool Patents Corp. v. Mould, 133 F.2d 815, 818 (7th Cir. 1943)(citing Guth v. Minn. Mining & Mfg. Co., 72 F.2d 385 (1935)), “patentable discoveries are the legitimate subject of contracts to assign, and that, with certain limitations, action for specific performance lies for failure to execute the assignment required by the contract.” However, if a contract “provide[s] for the assignment of patents beyond the term of the employment, [they] are to be strictly construed; they must be fair, reasonable and just. The rule is further stated in 25 R.C.L. Specific Performance § 108, ‘Nor will equity compel compliance with an agreement to assign future inventions made after the inventor, having been discharged from the employment of the other contracting party, has assumed, with such party’s acquiescence, that the contract is terminated, and has expended time, efforts, and money in developing and exploiting new ideas.’” See Gas Tool Patents, supra.

Some states have passed employment invention laws that limit the subject matter of pre-invention assignment agreements. Often, these employment invention acts prohibit employment agreements from requiring employees to assign inventions created outside the scope of employment.  These types of employment invention laws will be treated in more detail in a subsequent post.

 Posted by at 3:46 pm
Dec 222010

According to the FAQ section of the U.S. Copyright Office’s website, copyright law does not protect sightings of Elvis. However, the Copyright Office does provide instructions on how to protect photos and other depictions of Elvis sightings. According to the Copyright Office: “No one can lawfully use your photo of your [Elvis] sighting, although someone else may file his own photo of his sighting. Copyright law protects the original photograph, not the subject of the photograph.”

So, if you had an Elvis sighting and were lucky enough to take a photograph or have a depiction of your sighting, you should consider protecting your photograph or depiction by filing for a Copyright registration.   Instructions are available on the U.S. Copyright Office’s website.

 Posted by at 4:40 pm
Dec 152010

When an employee obtains a patent on an invention conceived while in another’s employ, who owns the patent?  The general rule of invention assignment in U.S. common law is that employees retain ownership of patents on their inventions, unless the employee was employed to invent.  However, if the employee was employed to invent, then the employer has the right of ownership for patents covering the employee’s inventions.  This latter exception is known as the “employed-to-invent” doctrine.
Another question regarding patent ownership also arises in the employment context.  Who owns the patent if an employee uses the employer’s equipment and resources in the development of the invention?  Under these circumstances the courts may find that the employer owns the patent or may grant the employer a “shop-right,” i.e., a nonexclusive, nontransferable, royalty-free license to make or use the invention during the life of the patent even if the employee was not employed to invent.  This is particularly true if the invention process occurred during the hours of employment.

Case history regarding invention assignment is remarkably captivating.  Many of the cases involve the U.S. government as the employer.  For example, one of the early cases involved a U.S. officer, Sibley, close to the time of the Civil War who had obtained a patent for a conical tent.  Sibley had licensed his conical tent patent to the U.S. government for use by the U.S. army.   Sidley later assigned half of his license royalties to another officer named Burns.  Sibley, however, defected to the Confederate army sometime after he assigned half of his royalty interest to Burns.  The Court treated Sibley’s and Burns’ contract (i.e., license) rights separately.  Sibley’s rights to royalties were not at issue in the case and had been extinguished because of his disloyalty to the Union.  The U.S. Supreme Court, however, affirmed Sibley’s underlying patent rights as support for Burns’ right to royalty payments. (Burns’ had been loyal to the Union.)  The U.S. Supreme Court stated:

If an officer in the military service, not specially employed to make experiments with a view to suggest improvements, devises a new and valuable improvement in arms, tents, or any other kind of war material, he is entitled to the benefit of it, and to letters patent for the improvement from the United States, equally with any other citizen not engaged in such service; and the government cannot, after the patent is issued, make use of the improvement any more than a private individual, without license of the inventor or making compensation to him.

In the present case, there is no question of the right of Sibley to the improved conical tent. He received a patent for the improvement in April, 1856, and, by the contract with him, the United States recognized his right to it and to compensation for its use.

See United States v. Burns, 79 U.S. 246 (1870). Other significant cases in the common law history of invention assignment include Solomons v. United States, 137 U. S. 342 (1890); Gill v. United States, 160 U.S. 426 (1896); and United States v. Dubilier Condenser Corp., 289 U. S. 178 (1933).

Related to the history of common law invention assignment doctrines is the law governing pre-invention assignment contracts, which will be treated in a subsequent post.

 Posted by at 1:58 am
Dec 132010

Trademarks and trade names are commonly confused by small businesses and young entrepreneurs.  Frequently, non-attorneys (and occasionally some attorneys) incorrectly assume that once a business entity is registered with the Secretary of State the company has unlimited rights in the registered trade name.  The confusion usually occurs because many businesses use the name of the company, at least in part, as a trademark.  Unfortunately, this can be a costly mistake.

Trade names and trademarks are different.  Registering a company name with the state at the time a company is organized, or when changing the company name, does not provide trademark rights.  To understand why, one needs understand the difference between trademarks and trade names.

Trade Names

Trade names are just the name of the business entity.   Companies may have more than one trade name.  The name of the company provided to the state in the organizational documents is one type of trade name.  A second type of trade name is the d.b.a. (“doing business as”) name which some companies use for different business divisions of the company.  In each case, these are merely names for identifying a business and generally used by the company for billing, taxes, banking, or other identification purposes.


Trademarks, on the other hand, are marks used in connection with goods or services in a manner that consumers recognize the marks as identifying a source of goods or services.  For trademark rights associated with goods, a mark must be affixed to the goods or product packaging so that that consumers would associate the goods with the mark.  Sending out letters with company letterhead does not generally work for this purpose.  The same is generally true for service marks.  The mark must be conspicuously used in the advertising for the services.

Another thing to consider is that trademarks usually cannot be descriptive of the goods or services for which they are source identifiers.  For example, one cannot get a trademark for “BLUE COUCHES” if they are selling blue couches.  (There is an exception to this, but it is outside the scope of this article.)

Comparing Trademark and Trade Name Registrations

You may readily recognize that there are some similarities between trademarks and trade names.  The similarities are what lead to confusion and the costly mistakes often made by small businesses and entrepreneurs.   Obviously, there are instances in which trade names may be used as trademarks –
McDonalds and Sears are good examples – but understanding the differences is most important.  
For example, when an applicant files a federal trademark registration application there is an examination process in which an examining attorney evaluates to application to determine if the mark is “descriptive” and whether there is a likelihood of confusion with any other marks registered with the United States Patent & Trademark Office (USPTO).  States, on the other hand, do not engage in a trademark examination process when one registers a business name at the time one is organizing a business entity. 

In fact, since most States now have online filing procedures for setting up new business entities, what little name examination gets done is generally automated and limited to such things as whether or not another entity has already been organized in that particular state with the exact same name.  No examination is done to determine whether any other companies have been organized with a confusingly similar name or to determine whether or not your company name is descriptive.  Thus, while you might register the name “BLUE COUCHES, Inc.” with your state for your company name, you may not be able to register it as a trademark with the USPTO for the sale of blue couches.


If you would like to obtain trademark rights in your company’s trade name, seek the advice of competent trademark counsel who can assist you in obtaining a trademark registration and advise you how to properly use your company name in a way that gives rise to trademark rights.

 Posted by at 4:06 pm
Oct 042010

Apple Inc. received a new patent on September 21, 2010.  So what is so special about this patent over the numerous other patents Apple has sought?  Apple’s new patent (U.S. Patent No. 7,800,592) covers “handheld device” technology that recognizes your identity just by the way you hold the device and then personalizes the device settings based on your associated user profile.  You might compare it with user login accounts on a desktop.  But instead of selecting the user profile with a mouse and then typing in a password, you just pick up the handheld device, which could then automatically configure the handheld device to the settings associated with a pixilated image of your hand.  The pixilated hand image used for user recognition really puts this technology in the realm of biometrics.  In other words, Apple is using biometrics for the more practical application of determining user settings – beyond the less practical application of biometrics for high level security.  Way to go Apple!  (A few figures from the touch recognition patent can be viewed below.)

 Posted by at 1:17 pm
Sep 132010

On September 7, 2010, David Kappos , the Director of the United States Patent & Trademark Office, announced the launch of a beta version of a new USPTO Data Visualization Center .  The new Data Visualization Center offers a patents dashboard that displays USPTO productivity measurements.  The USPTO has traditionally used two primary benchmarks to measure patent pendency.  As stated by Kappos on his public blog:

Traditionally, we have measured pendency at two points in the process:  first, we have measured the average time from filing to First Office Action, which is the first substantive examination action; and we have measured the average time from filing to allowance or abandonment of the application, which we refer to on the dashboard as Traditional Total Pendency.

But the new patents dashboard also displays a number of other new pendency-related measures.  For example, information is provided regarding:

a.   Inventory Position;
b.   Pendency from Filing to Board Decision;
c.   Pendency of RCEs;
d.   Pendency of Continuations;
e.   Pendency of Divisional Applications; and
f.   Traditional Total Pendency Including RCEs.

While the USPTO’s new patents dashboard may not appear earth shattering at first glance, it is a big step in the right direction.  What is significant about the new patents dashboard is transparency.  The older way of disclosing the average time of patent application pendency made it appear much shorter than reality, because it failed to take into account RCEs.  (See, e.g., Erik Sherman’s blog addressing the deceptiveness of the older definition of pendency.)  Indeed, it appears that Patently-O‘s statement that Kappos “is likely to open access to previously hidden data and information” will prove true. This will be increasingly important given the current backlog of pending patents at the USPTO and the USPTO’s primary objective to drive this number down.

You can see the USPTO Data Visualization Center and patents dashboard at .

 Posted by at 1:34 pm
Apr 272010

Sheri L. Dew will be honored with the Lifetime Achievement Award at the Utah Genius luncheon on May 5, 2010 at Little America Hotel .  Dew, a native of Ulysses, Kansas , is being recognized for substantial contributions to Utah’s economy in the field of creative content.  She is currently president and chief executive officer of Deseret Book , in Salt Lake City, Utah and is a successful author and publisher.  Dew has also acted as a White House delegate to the United Nations , been a religious leader within The Church of Jesus Christ of Latter-day Saints (LDS Church ), and is an inspirational speaker.

Dew will be joined by Utah Governor Gary Herbert and Doug Fabrizio of KUER, both of whom will also be speaking at the Utah Genius luncheon. Utah Genius recognizes the creative people, companies, and cities behind Utah’s economy.  Event and ticket information can be found at

 Posted by at 12:48 pm
Apr 162010
Doug Fabrizio will be the keynote speaker at the Utah Genius awards luncheon on May 5, 2010 at Little America Hotel.  Mr. Fabrizio, a native of Bountiful, Utah, is well known for RadioWest, the program that he hosts on 90.1 KUER.  He has also served as a guest host for NPR’s “Talk of the Nation” and currently hosts the weekly broadcast of Utah Now on KUED Channel 7.  Mr. Fabrizio has received numerous awards for his reporting and for RadioWest from such organizations as the Society of Professional Journalists, the Utah Broadcasters Association, and the Public Radio News Directors Association. 

Doug will be joined by Utah Governor Gary Herbert who will also be speaking at the Utah Genius luncheon. Utah Genius recognizes the creative people, companies, and cities behind Utah’s economy.  This year, Sheri Dew will receive the Lifetime Achievement Award.  Event and ticket information can be found at 
 Posted by at 11:22 am