Three Things You Should Tell Your Clients About IP

Law firm professionals are jacks-of-all-trades. They behave like lawyers, business partners, advisors, parents and psychologists all at once.

Clients expect law firms to have all the answers. What type of funding should I choose? What’s the best time to expand my business? Can you draw up this or that contract? What is the best IP strategy?

And, although law firms can’t (and shouldn’t) answer all these questions, they do—naturally—bring with them a variety of expertise.

And whether it’s in formal meetings or informal newsletters circulated to your clients, it’s time lawyers did some due diligence regarding intellectual property. With real estate prices the way they (still) are toady, it’s the only type of property that may still hold its weight over time.

1.  Protect your U.S. Trademark registrations.

“Think twice before filing a voluntary surrender of a US trademark registration or expressly abandoning an application, because, like the decision to burn a bridge, the choice is irreversible,” writes Steven Abreu.

It turns out, Registrant International Expeditions Inc. found this out the hard way as chronicled in a recent precedential Trademark Trial and Appeal Board (TTAB) decision, Christiane E LLC v International Expeditions Inc. (Cancellation No 92055645, May 24, 2013), according to the law firm Sunstein Kann Murphy & Timbers, LLP.

The case in question involved an questionable surrender of a trademark. And, although clients reserve the right to change their minds, courts reserve the right to fight against its.

“As the withdrawal of one’s registration (and in this case the entry of judgment against the registrant with prejudice) is an important and final action, it should not be done lightly,” agrees Abreu.

“Thus, it is incumbent on trademark counsel to advise clients that voluntary surrender of one’s registration or an express abandonment of an application cannot be undone, and the decision to do so should only be taken after a thorough contemplation of the reasons and frank discussion of the irreversible consequences.”

2. Beware of both upstream and downstream consequences to consumer laws.

“Once a consumer buys a copyrighted product, like a book, the copyright holder—whether it be the author or a publisher—has exhausted all rights to control the product’s downstream distribution,” explains Sharona Sternberg.

But what happens when copyrighted works are manufactured abroad and sold abroad? Current laws never addressed that question… until today.

“In March 2013, the Supreme Court finally provided an answer, in Kirtsaeng v. John Wiley and Sons. Supap Kirtsaeng, a citizen of Thailand, moved to the United States in 1997 to study at Cornell University.  Noting the discrepancy in the price of textbooks between the U.S. and Thailand, Kirtsaeng asked family and friends back home to buy foreign editions of English-language texts in Thailand at the lower prices and ship them to the U.S.”

After reselling these books, Kirtsaeng allegedly made hundreds of thousands of dollars through this business model. Finally, one of the publishers of these textbooks got ahold of Kirtsaeng’s scheme, and sued for copyright infringement. The case made it to the Supreme Court.

If you don’t know what happened already, read the entire tale (and analysis) here.

And, if you’re clicking on the above link in order to figure out what this means for your clients, perhaps you should be writing your own monthly newsletter (and brushing up on recent IP cases).

3. Creativity wins (cases)!


Whether it’s creative ways to reach out to rekindle relationships with old clients or attract new ones, creativity wins. And, it wins cases.

Video game developers have been winning cases against clone technology. Read more here about the defense of gaming innovators.

Meanwhile, what has your firm been doing to support the innovation of its clients, or to promote innovation within its own walls?

Whether its helping lawyer moms, using iPads in the office, building a unique law firm business plan, or restructuring to boost entreprelawyering, C4CM has ideas for you (read here).

If law firm managers are expected to know it all (and then some), it doesn’t hurt to get a little help.

-WB

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