HILARY J. SUMNER
Creating Assets from Innovations
Richland, PA 17087
1121 Stouchsburg Rd.

LAW OFFICE OF  

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IP In the News


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Louis Vitton Doesn't See the Humor

Posted on December 15, 2017 at 10:15 AM Comments comments (0)

A hand bag company called My Other Bag (MOB) has been engaged in a long legal battle with Louis Vitton.  The company claimed that MOB's canvas tote bags depicting images of Louis Vitton bags was an infringing use of their copyrights and trademarks and was diluting their brands. The District Court for the Southern District of New York held that such use amounted to parody and was an acceptable use.  The Second Circuit affirmed and the Supreme Court rejected Louis Vitton's appeal.  CLICK HERE FOR FULL ARTICLE





Amazon Attempts to Trademark Blue Rings

Posted on December 11, 2017 at 11:45 AM Comments comments (0)

In July 2016, Amazon submitted an application to trademark the blue rings that encircle the top of their Echo product.  This type of trademark has been granted in the past and will turn on whether the general public associates these cyan rings with the voice-controlled speaker.  CLICK HERE FOR ARTICLE



Be Wary of Bluffing an IP Action in the UK

Posted on November 15, 2017 at 6:00 PM Comments comments (0)

"Threatening" a potential infringer for acts performed in the UK will now be govered by a new Intellectual Property Unjustified Threats Act. The act took effect on October 1, 2017 and outlines "permitted communications" between potential adversaries in patent, trademark and designs.  It should be noted that the act will not apply to copyright infringements, assertions of passing off or trade secret actions.  CLICK HERE FOR FULL ARTICLE


Cheerios Loses Fight to Trademark Yellow Cereal Box

Posted on September 1, 2017 at 10:25 AM Comments comments (0)

After two years of trying to secure the color yellow as a trademark, the TTAB has ruled that consumers do not necessarily associate a yellow box with Cheerios brand cereal Click here for full article




The Defend Trade Secrets Act: Suggested Steps for the Protection of your Trade Secrets

Posted on December 20, 2016 at 3:25 PM Comments comments (0)

 Written by: Hilary J. Sumner, Esq. 

 

What is DTSA? The Defend Trade Secrets Act (DTSA) was signed into law on May 11th, 2016. This law creates the first federal civil remedy to address the misappropriation of trade secrets. Prior to the enactment of this law, civil trade secret actions were governed primarily by individual state unfair competition laws. These conflicting laws led to varying standards of protection and remedies to injured parties and non-uniformity created uncertainty as to best means to protect and defend trade secrets in interstate commerce.

The DTSA provides a robust and uniform protection for any trade secret that is related to a product or service used or intended for use in interstate or foreign commerce. It gives US district courts original jurisdiction over civil actions involving trade secret misappropriation, allowing the granting of an injunction, damages for actual loss, unjust enrichment and reasonable royalties. If the plaintiff successfully demonstrates that the misappropriation was willful or malicious, exemplary damages as well as reasonable attorney’s fees may also be awarded; but protections are offered to the defendant as well. If the defending party can demonstrate that a claim of misappropriation was made in bad faith, reasonable attorney’s fees may be awarded to the defense.

What qualifies as a Trade Secret? The certainty provided by this new legislation has prompted many companies to revisit their intellectual property profiles. Unlike patents, trade secrets do not need to be technical in nature to be deserving of protection nor do they need to be new, useful or non-obvious. A trade secret must only confer some economic benefit to the owner. That economic benefit cannot be derived from the information itself but from the fact that the information is not known to others.

In order to qualify for protection, the trade secret owner must take reasonable steps to keep that information a secret. The information cannot be generally known to the public or to others in the same industry or business. Customer lists, recipes, special manufacturing processes, marketing plans, and sales methods are all examples of items that may be protected by trade secret law. Coca-Cola provides a prime example of the power of a trade secret, holding their recipe in confidence since 1903. Unlike patent protection, trade secret protection can last indefinitely so long as the information remains undisclosed. It is important to note that a competitor is free to ascertain the trade secret through any lawful means including reverse engineering.

What is the Best Method for Protecting Trade Secrets? Companies should periodically audit their intellectual property portfolio and determine what qualifies as a trade secret. Once a trade secret has been identified, it should be recorded in a trade secret asset management system that will track and identify the appropriate level of protection needed for each trade secret. This system should also identify the person(s) in the organization responsible for safeguarding each trade secret. A policy should be created to periodically review each trade secret and the steps being taken to limit access and prevent unintentional disclosures. All employees with knowledge of the trade secret(s) should be trained in the proper disclosure and safeguarding and access to this information should be limited to those with a genuine need to know.

Contracts Involving Trade Secrets: Contracts involving trade secrets must also be reviewed. The DTSA provides immunity to employees reporting a suspected violation of law. Employers are required to provide notice of this immunity in any employee agreement governing the use of a trade secret or confidential information. Failure to include this immunity provision may result in the loss of exemplary damages and attorney’s fees.

Trade secrets have always provided a robust means of long term protection for intellectual property and the certainty of this protection will only increase with the introduction of DTSA. Those with trade secrets should take the necessary steps to make the most of this new legislation.

Choose your Trademark Carefully! 7 Unfortunate Branding Mistakes...

Posted on December 14, 2016 at 5:00 PM Comments comments (0)

When creating a trademark it is important to look at the selected name from all angles and potential misunderstandings... 

CLICK HERE FOR ARTICLE ON THE 7 MOST UNFORTUNATE BRAND NAMES EVER TRADEMARKED

Can Culinary Creations be Protected by Copyright Law?

Posted on July 20, 2016 at 11:05 AM Comments comments (0)

While copyright law will not protect utilitarian articles, it will protect the creative expression in making those articles.  As a result, expressive culinary works may be protected by copyright law. Additional IP protectections may also be available such as design patent, trademark and trade secret law.

CLICK HERE FOR FULL ARTICLE



USPTO Releases Post-Prosecution Pilot Program

Posted on July 17, 2016 at 2:40 PM Comments comments (0)

The USPTO recently released a pilot program offering inventors a means for getting their applications allowed after a final rejection. Inventors may now submit five pages of response following a final rejection, arguing why the rejection was improper.  The inventor can then present a 20 minute oral argument to a panel of examiners. A notice of decision will be sent to the inventor at a later date.  CLICK HERE FOR FULL DESCRIPTION OF PILOT PROGRAM

Google Applies for Vision Enhancement Device Injected Directly into the Eye

Posted on May 20, 2016 at 11:00 AM Comments comments (0)

Google has recently submitted a patent for a device injected directly into the eye. The device contains storage, sensors, a radio,  abattery and an electronic lens and is powered wirelessly from an “energy harvesting antenna.”

CLICK HERE FOR FULL ARTICLE



Obama Signs Defend Trade Secrets Act (DTSA) into Law

Posted on May 15, 2016 at 2:50 PM Comments comments (0)

Obama has signed the federal Defend Trade Secrets Act of 2016 (DTSA) into law.  This law amends the Economic Espionage Act of 1996, creating a federal civil remedy for the misappropriation of trade secrets.  It also provides an additional means of protection for intellectual property. https://www.dlapiper.com/en/us/insights/publications/2016/05/obama-signs-federal-trade-secret-bill-into-law/" target="_blank">CLICK HERE FOR ARTICLE




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