Intellectual Property Law

Will ICANN Protect IP Rights?

Posted on November 20, 2009
ICANN is in the middle of plans for launching new gTLDs. I'm serving on a team called the STI to consider mechanisms to protect IP rights. These are important issues - Overarching Issues, ICANN calls it - which create a lot of interest and controversy...

ICANN IPC Submits Position Statement on Rights Protection

Posted on November 07, 2009
The ICANN GNSO has formed a committee called the STI (Special Trademarks Issues) to consider the use of a Rights Clearinghouse and Uniform Rapid Suspension policy for the introduction of new gTLDs. The Intellectual Property Constituency has posted its position statement in support of rights protection...

Protecting And Defending Your Brand - Teleseminar June 11

Posted on June 01, 2009
You're invited to the following teleseminar on June 11, 2009. Please contact samantha@mikkiwilliams.com to RSVP. A strong brand is essential in this economic climate. Your brand differentiates you from the competition and confirms your credibility...

New gTLDs: Does anyone care?

Posted on April 09, 2009
ICANN is working on plans to allow operation of an unlimited number of Top Level Domains, or TLDs. I am a member of an Implementation Recommendation Team, created by the ICANN Board to develop procedures to avoid user confusion and trademark infringement in the new gTLD space...

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Association Forum Hosts Attorney Mark Partridge on Intellectual Capital Management

Posted on March 24, 2009
Mark will be speaking at the Association Forum of Chicagoland on March 31, 2009. Using Intellectual Capital to Step Up Your Business in a Down Economy Intellectual capital is your most valuable business assets, and its importance rises even higher in a down economy...

#5 Trademark Law Development of 2008: Medinol Fraud

Posted on March 18, 2009
#5 Trademark Law Development of 2008: Medinol Fraud

SHRM Top Rated Speaker List 2008 Includes Trademark Attorney Mark Partridge

Posted on March 16, 2009
The Society for Human Resource Management (SHRM) has published its list of top-rated speakers from its annual convention in 2008. I honored to lead the list and look forward to speaking for SHRM again at its annual convention in 2009 in New Orleans. Please let me know if you would like to arrange a similar program for your company, association or organization...

#4 Trademark Law Development of 2008: Non-commercial Speech

Posted on March 15, 2009
#4 Trademark Law Development of 2008: Non-commercial Speech:

New Book: "Alternative Dispute Resolution - An Essential Competency for Lawyers" By Mark Partridge, Trademark Lawyer and Mediator

Posted on March 14, 2009
I'm pleased to announce that I have a new book coming out from Oxford University Press in May 2009 entitled "Alternative Dispute Resolution: An Essential Competency For Lawyers." Client demands have caused ADR to become a mainstream discipline. It's time to master the skills...

$4.5 Million Awarded in Trademark Infringement and Telemarketing Fraud Suit

Posted on March 13, 2009
Janet Marvel and Jared Solovay of Pattishall, McAuliffe in Chicago, obtained a judgment for $4.5 million from the U.S. District Court of the Northern District of Illinois on behalf of their client Medline Industries, Inc. in Medline Industries, Inc. v...

#3 Trademark Development of 2008: Artistic Expression - strip club in video game

Posted on March 01, 2009

#2 Trademark Law Development of 2008: Dilution Dilution

Posted on February 24, 2009
#2 Trademark Law Development of 2008: Dilution Dilution

#1 Trademark Law Developement of 2008: Famous Marks Doctrine

Posted on February 24, 2009
I am speaking on Friday February 27, 2009, at the John Marshall Annual Conference on Intellectual Property Law on the top ten trademark law developments of 2008. Here they are: #1 Trademark Law Developement of 2008: Famous Marks Doctrine

Trademark Owners Should Consider .mp Domain Name Registration

Posted on February 20, 2009
Saipan DataCom, Inc.?s upcoming late March 2009 open launch of chi.mp (?Content Hub & Identity Management Platform) has implications for trademark holders that seem to have gone unnoticed to date. Chi.mp is a free platform that enables social network users to create social hubs on their own stand-alone hosted Web sites...

$2 Million Plus Awarded in Trademark Infringement Case

Posted on February 11, 2009
Chicago Lawyers Win $2 Million Award in Trademark Case Feb. 11, 2009. Judge Elaine Bucklo of the United States District Court for the Northern District of Illinois today awarded over $2 million to Paxar Corporation, f/k/a Monarch Marking Systems and now a wholly-owned subsidiary of Avery Dennison Corp...

"Copyrights and Wrongs" - The Guiding Rights Newsletter 3:1

Posted on February 07, 2009
Speakers, trainers, creative professionals - content creators of all types - need to be aware of copyright protection when developing presentations, training materials, slides, or handouts. Using another's material can lead to lengthy law suits, expensive legal bills, and large damages payments...

Will Plagiarism Chill Coldplay's Grammy Night?

Posted on February 07, 2009
Guitarist Joe Satriani has sued Coldplay for copyright infringement. Are the songs too close? Compare Satriani's "I Just Want To Fly" with Coldplay's "Viva La Vida." Listen here Read more here

Who Owns Obama Poster Rights?

Posted on February 07, 2009
When an artist creates a poster using another's photograph, who owns the rights? Photographer? Artist? Subject? Someone else? Consider this report on claims involving the famous Obama poster we seem to see everywhere.

Mikki Williams and Friends: Protecting Your Brand

Posted on February 05, 2009
I'm doing a program with Mikki Williams next month. Check it out. Sign up. Join us for a great event. Follow us here for more details. THE DATE! A new seminar series kicking off on Mar. 26th Mikki will be teaming up with some of her fabulous friends and peers to create unique training days...

CEO Club of Boston Hosts Chicago Attorney Mark Partridge

Posted on February 03, 2009
Mark Partridge will be speaking at The Chief Executive Officers' Club, Boston Chapter, on May 21, 2009. His topic is based on his book Guiding Rights: Trademarks, Copyright and the Internet, and will focus on building and protecting brands in tough economic times...

Trademark Search and Clearance

Posted on February 02, 2009
One of the first and most common tasks of in-house trademark counsel is searching and clearing potential trademarks. While this is often considered a low-level function, it is one of counsel's most difficult tasks. Analyzing the body of data that results from a trademark search requires knowledge and experience, and the stakes can be high...

Selling Intellectual Property

Posted on February 02, 2009
One of the key points of our class is that trademarks and other forms of IP are key business assets, not merely legal rights. The point is made well in an article by Ann Meyer entitled "Selling Intellectual Property" in the Chicago Tribune on February 2, 2008...

John Marshall "Trademark Transactions" Course Focuses on Corporate Trademark Practice

Posted on January 26, 2009
Today is the first day of the class I most enjoy teaching in Law School - Trademark Transactions" - a course on the transactional side of trademark law. The course was originally created to focus on transactions involving trademarks - licenses, assignments, consent agreements, etc...

Talking about IP and Watching the Inauguration in Baltimore

Posted on January 24, 2009
It's tough to be a warm up act for President Obama, but that was the task on inauguration day.  I spoke in Baltimore for a group of CEOs at a meeting at TIC Gums, Inc.  My topic:  "Guiding Rights: Intellectual Property Is Your Greatest Asset...

Chicago Trademark Attorney Speaks at PCMA

Posted on January 17, 2009
I returned last week from speaking at the Professional Convention Management Association annual meeting in New Orleans.  My topic: "Avoid Lawsuits . . . and Other Legal Problems."  When speaking to business groups, whether HR professionals at SHRM, professional speakers at NSA, or business owners and CEOs at Vistage, I find there is much uncertainty about the rules of copyright protection in the Internet world...

Pattishall Client Prevails In Ground-Breaking Domain Name Class Action

Posted on January 12, 2009
My Pattishall colleagues Brett August, Bradley Cohn and Alexis Payne recently won another round in a closely watched lawsuit involving Google and others regarding allegedly unfair use of domain names. The plaintiffs had attempted to bring a class action against multiple defendants for purported trademark infringement, cybersquatting and deceptive trade practices...

My Professional Life

Posted on January 10, 2009
1978 - BA, University of Nebraska, English and Linguistics 1980 - Vice President, Harvard Legal Aid Bureau 1981 - JD, Harvard Law School 1981 - Associate, Pattishall, McAuliffe & Hofstetter 1987 - Adjunct professor, John Marshall Law School 1987 - Partner, Pattishall, McAuliffe, Newbury, Hilliard & Geraldson 1989 - Chair, Trademark and Unfair Competition Committee, American Intellectual Property Law Association 1990 - Arbitrator, Cook County Mandatory Aribtration Program 1994 - Editorial Board, The Trademark Reporter 1996 - Chair, Professional Programs, American Intellectual Property Law Association 1996 - Chair, International Trademark Law Committee, American Bar Association, IP Law Section 1997 ...

Speeches and Presentations

Posted on January 01, 2009
"Proceed with Caution: Seven Hidden Hazards in Standard Book Contracts," Of Dark and Stormy Nights Writers Conference, Chicago, Illinois, June, 2004   "Business and Work Product Protection," American Society of Mechanical Engineers, Lexington, Kentucky, March, 2004   "The Effect of the Internet on Trademarks,"The Kent Law School IP Society, Chicago, Illinois, November, 2003   "Using Patents and Copyrights To Build Strong Brands," INTA Annual Meeting, Amsterdam, the Netherlands, May 2003   "Dilution: Affirmative Defenses," INTA Trademark Dilution Forum, Arlington, Virginia, March 2003   "Trademark Licensing In a Corporate Transaction," AIPLA Spring Meeting, New York, New York, March 2003  ...

ICANN Plans for gTLD Expansion: Summary and Comments

Posted on December 16, 2008
This message provides an Executive Summary and comments on the first ICANN proposal, prepared by an informal task force I gathered for the project.   ICANN closed the first period for comment on December 15.  A second draft is expected in early 2009 followed by a second comment period...

Victory for EULA: Software Distributors Rejoice

Posted on November 26, 2008
[Abstract of article by Sanjiv Sarwate]End user license agreements (EULAs) are used to impose terms and conditions on the use of software.  EULAs may restrict the user's ability to make copies of the software, to access or reverse engineer source code, or to make or use other software applications with the software...

Thanks, Nancy Chapman

Posted on November 26, 2008
Nancy Chapman has been my loyal administrative assistant for nine years.  We celebrated the anniversary today with lunch at Topolobampo, one of Rick Bayless's excellent Mexican restaurants.  Thanks, Nancy, for all your help.  Cheers!

Par for the Course for Western Golf Association in Korea

Posted on October 28, 2008
My colleagues Jonathan S. Jennings and Ashly Iacullo prevailed in an opposition against the application to register WGA for a variety of golf services on behalf of the Western Golf Association and its famous WGA mark for a variety of golf services offered since 1899, including the running of golf tournaments and a scholarship for caddies...

ICANN Plans for gTLD Expansion

Posted on October 25, 2008
Last week ICANN released more information about its plans to introduce new gTLDs as explained below. Many of our clients have asked about the opportunities and challenges posed by these plans. We hope this is alert is helpful to you as you consider how these developments may affect your interests on the Internet...

Infringing Import Problems

Posted on October 24, 2008
My colleague Scott Lonardo has an article entitled "Addressing the Problem of Infringing Imports" in our last firm newsletter.  He provides strategies for working with Customs and the International Trade Commission:"Infringing imports present a persistent and ever-growing problem for intellectual property owners...

Creating a Personal Brand

Posted on October 23, 2008
A recent article in Redeye focused on the importance of creating a personal brand. Personal branding is wise career advice.  The key attributes of a personal brand can be gleaned from those attributes that create a strong trademark.  Be distinctive...

Why didn't I think of this?

Posted on October 21, 2008
When I was a kid I belonged to The Mad Scientists Club, a group of junior high kids that wanted to invent cool things.  We never did anything that was as cool as this though:

Mickey Hart Channels Grateful Dead with Global Drum Project

Posted on October 19, 2008
One of the great brands of rock 'n roll is THE GRATEFUL DEAD.  I don't merely mean the music, although it's some of my favorite rock, but I mean the way it builds and maintains the brand over time, beyond the grave, if you will.Do you remember your first DEAD concert?  I do...

Obama Named Brand of the Year

Posted on October 18, 2008
Obama has been name Advertising Age's marketer of the year at the annual conference of the Association of National Advertisers.  Matthew Creamer at Ad Age writes:"Mr. Obama won the vote of hundreds of marketers, agency heads and marketing-services vendors gathered here at the Association of National Advertisers' annual conference...

Sam Silverstein at NSA Illinois

Posted on October 17, 2008
NSA President Sam Silverstein made a special presentation today at our local NSA Chapter.  Sam is an extremely successful speaker with much to share with the rest of us who aspire to build a speaking business.  As I sat through his program today I was particularly pleased to notice that he mentioned "trademarks" at least twice, including his own trademark NO MORE EXCUSES...

Bush Signs New Counterfeiting Bill

Posted on October 14, 2008
President Bush has signed a new bill with enhanced protections against counterfeiting and piracy.  The Whitehouse announcement says that . . ."the Act increases statutory damage awards in civil counterfeiting cases, it strengthens remedies available in the prosecution of criminal cases involving counterfeiting and piracy, it enhances resources (personnel, training, and equipment) for Department of Justice programs that combat IP theft, and makes permanent the Administration?s Strategy Targeting Organized Piracy (STOP!) Initiative and its inter-agency IP coordination efforts...

Trademarks for Chicago Trash Trucks

Posted on October 13, 2008
On Friday I went with my son to visit the University of Colorado, where he would like to go when he graduates from St. Ignatius in Chicago.  We left Friday afternoon from Midway.  On our way from the parking lot in the shuttle we saw two Chicago street sweepers being washed in the spray of an open fire hydrant...

From "Aha!" to Profitability - AMIA Conference

Posted on October 09, 2008
I look forward to speaking at the AMIA (American Medical Informatics Association) 2008 annual conference in Washington DC on November 9, 2008, with the CEO of one of my long time clients, IMO (Intelligent Medical Object, Inc.).  I've worked with the founder Frank Naeymi-Rad since he started the company over ten years ago, dealing with IP protection and litigation over medical record and billing systems...

What happens to good brands in a downturn?

Posted on October 07, 2008
It's hard to ignore.  I have no special expertise or experience in the financial world, although I represent or have represented may businesses in that space: banks, hedge funds, credit card companies, ATMs, and insurance businesses.  I'm struck by the challenge...

IP Addresses Top Discussion

Posted on October 06, 2008
We have a monthly lunch at our firm, bringing all the attorneys and paralegals together for salad, chicken and pasta and a few quick updates on new issues.  Today we greeted our new associate Jake Linford and revealed plans for a small website upgrade...

Ben Hollis at Speaker U

Posted on October 05, 2008
Ben Hollis is a great Chicago brand, a visionary who's won Emmys and the Studs Terkel Award for fascinating, quirky television programs.  Ben was in the audience last week when I spoke at Speaker U, a program of the Illinois Chapter of the National Speakers Association, on "Stay out of Jail...

American Gangster on Trademark Infringement

Posted on October 04, 2008
I enjoy finding clips from movies that demonstrate legal issues and trial techniques.  I share these with my students at John Marshall and in CLE programs involving trial practice.  It's not too hard to come up with examples involving basis trial techniques - impeachment from Witness for the Prosecution; expert testimony from My Cousin Vinnie; the perils of pursuing questions when you don't know the answer from Anatomy of a Murder...

Maureen O'Brien Speaks

Posted on October 03, 2008
Maureen O'Brien came into the city today from Batavia to talk about her business ideas over lunch.  She's a woman of many talents and achievements - the CEO and founder of O'Brien & Son, Inc., a remodeling company; a motivational speaker and coach; the founder and leader of TAKECARA U, the "school of higher learner in momentum U", and CELTIC CONNECTIONS, an Organization for Personal Development for Women with the integration of mind, body, spirit, soul and a focus on character leadership and ethics...

Thomas Jefferson Didn't Live in the Past

Posted on October 02, 2008
Historian David McCullough makes the point in a recent presentation at Yale that the great historic figures didn't live in the past.  They lived in the present.  But it was a "present" we don't know.  That's what makes history interesting...

Germany Hosts Chicago Lawyer to Speak on U.S. Trademark Litigation

Posted on September 08, 2008
My partner Uli Widmaier is heading to Germany in November to speak on U.S. Trademark Litigation.  Uli is a native German speaker and this is a return visit for him as a participant at intellectual property law programs in Germany.  Nov 26, 2008 - "U...

AIPPI World Congress To Address Cybersquatting and the Bottom Line

Posted on September 07, 2008
The AIPPI World Congress opened in Boston this week hosting intellectual property attorneys from around the world.  I will be speaking at a workshop Monday September 8 on "Cybersquatting and the Bottom Line."  Please stop by an introduce yourself as a reader of this blog if you are at the Congress...

Adwords Promote Campaign

Posted on September 06, 2008
I'm catching up on some reading from August.  A report in the Wall Street Journal on August 28, 2008, catches my attention.  Emily Steel and Suzanne Vranica write about the McCain campaign's purchase of search terms to trigger McCain ads.  When you search "Joe Biden" with Google the top sponsored links leads to www...

Heart Objects to McCain's Use of Popular Song

Posted on September 05, 2008
The music group Heart has objected to the McCain campaign's use of the hit song "Barracuda" Read more here at www.sfgate.com.

ICANN Decision Finds MasterCard mark is well known worldwide

Posted on August 19, 2008
A recent decision of ICANN UDRP panel orders transfer of domain name <mastercreditcard.com> to MasterCard, finding that "Complainant's mark is well known worldwide."  MasterCard International v. Bankrate, Case No. D2008-0704 (WIPO, July 29, 2008)(Donahey, M...

Seven Pattishall Trademark Attorneys Picked for Who's Who Legal Illinois 2008

Posted on August 13, 2008
Who's Who Legal Illinois 2008 Lists 19 Trademark Attorneys.  Seven of the nineteen lawyers listed are partners at Pattishall, McAuliffe:Ray GeraldsonDavid HilliardJerry McAuliffeJanet MarvelRobert SacoffJoseph WelchandMark PartridgeSelections are based on interviews of in-house and outside counsel...

Five Steps to Prevent Your Employees from Selling Your Out: How to Avoid Employee Misuse of IP

Posted on July 24, 2008
Do you know any employees who are unhappy?  Who feel they aren't being treated right?  Who want to show the company a thing or two?  Perhaps they're like Joya Williams.Her story starts at a Thanksgiving dinner in 2005 in Georgia.  Joya Williams pulled family friend Edmund Duhaney away from the turkey, greens and candied sweet potatoes...

Heartland Angels Hosts Trade Secret Litigators

Posted on July 02, 2008
Heartland Angels, a Chicago-area private equity network, presented an evening panel discussion on trade secret issues for early stage companies on June 30, 2008.  The panel discussion was led by Bill Howard at Freeborn & Peters, the host site for the event...

EBay Ordered to Pay LVMH $61 Million for Counterfeit Goods

Posted on July 01, 2008
A French court has awarded LVMH $61 million in counterfeit case against eBay.  Read more here.

ICANN Opens Applications for New Generic Top Level Domains

Posted on June 30, 2008
At its Board meeting on June 25, ICANN decided to open the gTLD space to new applications subject to tests yet to be established.  Expected to begin in mid-2009, this may be largest expansion of the domain name space since the original introduction of gTLDs and ccTLDs...

SHRM Hosts Chicago Trademark Attorney at Annual Meeting

Posted on June 26, 2008
The Society for Human Resource Management or SHRM held its annual convention in Chicago this week.  I was honored to be invited to make a presentation on "HR's Role in Guiding Employees to Avoid Infringement."  I urged the attendees to consider four key areas of best practices:1...

Potbelly's Tips For Building a Great Brand

Posted on June 06, 2008
I attended Crain's Annual Entrepreneurs Luncheon this week at the Ritz-Carlton Hotel in Chicago.  The speaker was Bryant Keil, Chairman and CEO at Potbelly Sandwich Works.  Keil has turned POTBELLY into a great brand (first choice of my kids for fast food)...

Welcome Summer Associates!

Posted on June 03, 2008
Two new summer associates have arrived this week: Katie McGavin at Northwestern Law School and Meredith Monroe at University of Michigan Law School.  We will welcome them Wednesday night over dinner at OTOM, a remarkable new restaurant from the owners of MOTO, previously mentioned in this blog in connection with food patents...

Are Your Employees Selling You Out? June 12 John Marshall Law School FREE

Posted on May 30, 2008
Are Your Employees Selling You Out?Your Role in Guiding Employees to Avoid Infringement and Lost Rights Noon to 1:30 pm June 12,  2008 John Marshall Law SchoolIn 2006, a Coca-Cola employee offered company secrets for sale to competitors for $1.5 million...

Persistence Pays for Victoria's Secret in 10-year Old Trademark Dispute

Posted on May 21, 2008
A federal district court has decided in favor of Victoria's Secret in Supreme Court follow up:http://www.msnbc.msn.com/id/24760241/from/ET/

Smashing Pumpkins Smash Virgin Records with Law Suit

Posted on March 26, 2008
Smashing Pumpkins sue Virgin Records alleging unauthorized use of band's name, music and image in Pepsi commercial.  Read more at Crain's Chicago Business.

Federal Judges Speak Out On Intellectual Property Litigation

Posted on March 21, 2008
Last month, the Young Lawyers Section of the Chicago Bar Association, hosted a program on intellectual property law, featuring three Federal Court Judges: Virginia Kendall, Rebecca Pallmeyer, and Matthew Kennelly.The meeting closed with the following litigation mistakes and related nuggets of advice:1...

Datarecovery.con Sells for $1.7 million

Posted on March 03, 2008
ESS Data Recovery, Inc.of Edwardsville, Illinois aquires <datarecovery.com> for $1.7 million.  More

"Cybersquatting: the Bottom Line" Chicago Bar Association Presentation

Posted on February 28, 2008
I recently spoke at the Chicago Bar Association on "Cyberquatting: the Bottom Line," focusing on the money being generate by the legitimate and infringing use of domain names by "cyber-entrepreneurs."  A copy of the presentation slides are available on the resources page of my GuidingRights...

Buidling Your B.R.A.N.D. - The Guiding Rights Newsletter 2:1

Posted on February 18, 2008
Building and protecting your BRAND is a key facet of creating business success at all levels.  Whether you are the manager of a multi-national corporation, a middle-market B-to-B company, a creative professional or an emerging entrepreneur, your BRAND is a key to success...

Naked Cowboy Sues M&Ms

Posted on February 17, 2008
Manhattan street star the Naked Cowboy claims M&Ms has infringed his trademark by using his likeness in advertising.  He wants $2m but where not sure where he'll keep it.  Read more here.

Yoko Use Singer Over Use of Lennon

Posted on February 13, 2008
John Lennon's widow Yoko Ono has sued singer Lennon Murphy over the name LENNON.  John Lennon's son Julian sides with Lennon Murphy.This case poses the often challenging questions: Does a person have a right to use their own name as a trademark if it is confusingly similar to another's name or mark?  And who has standing to complain?Could Harrison Ford use his own last name as a brand for automobiles?Could my Scottish friend Charters McDonald Brown open McDonald's restaurants selling McHaggis dinners?More on LENNON available here.

Law Bulletin IP Seminar Features Pattishall Attorney

Posted on February 12, 2008
The Law Bulletin is hosting a seminar on "Corporate IP" in Chicago on February 19.  The program includes my partner Thad Chaloemtiarana on Licensing.  Aside from being my partner, Thad is one of the most knowledgeable experts on IP licensing, especially computer software and Internet based licensing, that I know...

Use of PROGRESSIVE Leads to Infringement Dispute

Posted on February 11, 2008
A paint and body shop in Crestview, Florida earns infringement suit from the Progressive insurance company over allegedly improper use of the Progressive logo.  Read more here.

ASCAP Sues Metropolis Radio Station; Pattishall Respresents Plaintiff

Posted on November 21, 2007
Copyright infringement.  It even happens in Superman's hometown - Metropolis.  My colleague Jared Solovay has filed suit for ASCAP against WRIK-FM in Metropolis, Illinois.  Read more in The Madison St. Clair Record.

Iconix Shows How To Make Money With IP Rights

Posted on November 06, 2007
Many businesses recognize that most of the value of their organization now involves intangible assets including IP.  Iconix Brand Group Inc. takes this a step farther.  It is an example of a business that has moved away from the old economy of manufacturing and selling goods and services to a business apparently based completely on the value of brands...

Howard Stern's Cousin Sues Over Bee Movie

Posted on November 02, 2007
Blomberg.com reports here that Howard Stern's cousin Richie Gerber, owner of BeeCeuticals LLC, has sued Dreamworks and Paramount for trademark infringement based on the slogan "give bees a chance" to promote the animated film "Bee Movie".  The mediator in me thinks they should "Give peace a chance...

Small Business Success - The Guiding Rights Newsletter 1:5

Posted on October 17, 2007
When I speak to business owners, entrepreneurs and CEOs, they often want to know how a small businesses can capitalize on intellectual property.  They wonder, is IP protection for big firms only?  What difference does IP make to them?  Sure, it's nice to know that IBM earns billions each year in royalty payments on its IP portfolio, but what about the rest of us? Here's a small business success story built on IP rights...

Google Claims Victory in Settlement with American Blind

Posted on September 04, 2007
Google claims victory as a result of a settlement of the adword infringement claim brought by American Blind.  See New York Times report here.Full report and copy of settlement agreement is available at Eric Goldman's Technology and Marketing Law Blog here.

Plagiarism, Fair Use and Infringement: The Meter Drops On Anthony Robbins - The Guiding Rights Newsletter 1:4

Posted on August 24, 2007
            When I speak on copyright and plagiarism, two key questions often arise:  First, how much does someone have to copy to be an infringer?  Second, how much do I risk if I copy someone else's work?  The answers are "not much" and "a lot...

James Brown's Heirs Win Right To Sue Over Singer's Image

Posted on August 06, 2007
An Illinois court has ruled that the heirs of James Brown can proceed with their lawsuit against an Internet stock photo library for unauthorized sale of his image.  James Brown et. al. v. ACMI Pop Division et. al., No. 1-06-08709 (Ill. 1st App. Ct...

IICLE Seminar on "Hot Topics in Business Law" Features Chicago Trademark Attorney Mark Partridge

Posted on August 02, 2007
Press Release - August 2, 2007The Illinois Institute for Continuing Legal Education (IICLE) has announced that its September seminar on "Hot Topics in Business Law" will including Chicago trademark attorney Mark V.B. Partridge.  Mr. Partridge's topic is "Intellectual Property Update: Resolving Disputes with Cybersquatters...

Protecting Your Brand: The Billion Dollar Cookie - The Guiding Rights Newsletter 1:3

Posted on July 30, 2007
The billion dollar cookie is a story about the importance of brands.  Why would anyone pay a billion dollars for a cookie?  Join me on a trip to New York to learn why. It's Tuesday morning, June 6, 1989.  Picture yourself in a law firm conference room overlooking Manhattan...

The National Speakers Association Convention - Trademark Registration for Speakers

Posted on July 09, 2007
I arrived in San Diego for the National Speakers Association Convention mid-day on Sunday.  At the registration desk I met up with fellow NSA Illinois member Dr. Michael Mercer, an expert on pre-employment testing.  The author of numerous books and two blogs, Dr...

National Speakers Association Convention Starts July 9

Posted on July 08, 2007
I will be leaving today for San Diego to attend the National Speakers Association Annual Convention.  I attended my first local chapter meeting of NSA five years ago at the invitation of my friend and former neighbor Cyndi Maxey when she began her term as chapter president...

Four Hour Work Week Faces Infringement Problems

Posted on July 05, 2007
For those of you who want to change your life or simply dream about doing so, I recommend you check out the new best seller "The Four Hour Work Week" by Tim Ferris.  Learn more about it at his site here. His latest blog entry shows that even people who only work four hours a week face infringement problems...

Domain Name Parking A Growing Industry

Posted on June 28, 2007
Domain name parking is a rampant trend, attracting a wide range of entrepreneurs and media attention, as demonstrated by this story in the New York Times: "More than just squatting (on domain names," by Louise Story.

Small Firms May Survive After All

Posted on June 22, 2007
Sun Microsystems GC Mike Dillon has a blog called "The Legal Thing: Notes from a General Counsel."  A recent post gives hope to attorneys in small specialized firms.  Mr. Dillion notes how the law firm's role as an aggregator of legal talent has decreased in importance with the growth of effective Internet communication...

ABC Retreats on "Sam I Am" after Dr. Seuss Objects

Posted on June 21, 2007
Dr. Suess remains vigilant in protecting his trademarks and copyrights (you will remember the battle against Dr. Juice and The Cat Not In The Hat).Now ABC has backed off use of the name "Sam I Am" after objection.  More available in this story from AHN.

Intellectual Property Trials Disappear

Posted on June 15, 2007
During final preparation for my Illinois State Bar Association program on "ADR in IP" I checked recent federal court statistics on trials for IP cases.  I was amazed.We've all heard about the declining number of federal court trials overall.  For the period ending September 30, 2006, the percent of cases terminated during or after trial was down to 1...

"Disinfectable" Is Generic

Posted on June 14, 2007
Wouldn't life be different if your clients started with a protectable mark?A recent case decided by the 9th Circuit is a good example.  Rudolph International Inc. v. Realys, Inc., 82 U.S.P.Q.2d 1375 (9th Cir. 2007).The plaintiff started using the term "disinfectable" for nail files in April 2001...

PepsiCo Loses Blue Storm Ruling in China

Posted on June 13, 2007
Forbes.com reports on "Mosquito v. Pepsico."  A high court in China ruled against Pepsico in favor of a local beer company over the use of BLUE STORM.  Read more at forbes.com.

ADR in IP: Is there a better way?

Posted on June 12, 2007
The AIPLA Economic Survey reports that the average cost for patent litigation disputes is over $5,000,000.00 where the amount in controversy exceeds $25 million.  This begs the question: "Is there a better way?"I will be speaking at a Illinois State Bar Association CLE program on June 14 in Chicago and on June 28 in Bloomington...

Vistage Group In Dallas Hosts Chicago Trademark Attorney Mark Partridge

Posted on June 11, 2007
Last week, I spoke to a Vistage Group in Dallas on "Intellectual Property is Your Greatest Asset: Protect It, Use It, or Lose It."  The Group is chaired by Linda Swindling, a former attorney who now helps businesses achieve success in negotiations...

TTAB Default Does Not Bar Federal Civil Action

Posted on June 08, 2007
Default judgment entered against plaintiff in trademark cancellation proceeding does not bar plaintiff from bringing civil action in federal court, says New York court in Santos v. Hecht, 82 U.S.P.Q.2d 1542 (E.D.N.Y. 2006).

YBOR GOLD "Primarily Geographically Deceptively Misdescriptive"

Posted on June 07, 2007
YBOR GOLD for cigars is not entitled to registration as a trademark for cigars that do not come from the Ybor neighborhood of Tampa, Florida because the proposed mark would be "primarily geographically deceptively misdescriptive."  See In re South Park Cigar Inc...

Noninfringement Opinion Leads to Disqualification

Posted on June 06, 2007
A law firm providing a patent infringement defendant with a noninfringement opinion may be disqualified from serving as trial counsel due to potential conflict of interest and impeachment of  counsel credibility, rules Texas court in Crossroads Systems Inc...

"Counterfeit Pine-Sol" - The Guiding Rights Newsletter 1:2

Posted on June 05, 2007
            One of my hobbies is wine tasting.  So it?s no surprise that an article from the Wall Street Journal recently grabbed my attention.  It said: ?U.S. Investigates Counterfeiting of Rare Wines...

Five Key Questions About IP Help Increase Market Value and Improve Bottom Line Results

Posted on June 04, 2007
Intellectual assets are critical to business success in today's global market.If you are a CEO, CFO, GC or other business leader, asking questions about these assets will help you to bring added value to your company.Failure to consider these issues yields adverse business consequences, including unrealized value, unnecessary expense and legal risk...

GPS Tracking Technology Creates Concerns About Privacy and Data Ownership

Posted on June 01, 2007
Many businesses now use Global Positioning and telematics technologies to track vehicles, shipment routes, vehicle diagnostics, and employee whereabouts. These technologies collect useful data, but raise concerns about privacy and data ownership.  Read more in this Pattishall McAulliffe Newsletter by Sharon Ceresnie and Mark Partridge entitled "Privacy and Data Ownership Issues Arising from Use of GPS and Telematics Technologies"...

Bona Fide Intent Requires Objective Evidence To Support ITU Trademark Application

Posted on May 31, 2007
A "bona fide intent to use in commerce" is a basis for applying for U.S. trademark registration.  But what satisfies that test?  A recent decision indicates objective evidence may be required, as explained in this summary by Sanjiv Sarwate at www...

Utah State Law on "Electronic Registration Marks" Directed at Keyword Advertising

Posted on May 30, 2007
Utah changed its state trademark law on March 19, 2007, to allow for a cause of action against keyword advertising displayed in the state.  See the bill here.  The relevant provision on infringement states:             302           70-3a-402...

How To Take and Defend Effective Depositions

Posted on May 29, 2007
The key to winning your case or to an effective settlement can be a solid depositon based on goals and strategy.  Given the cost of litigation, it is no longer acceptable to treat depostions as a "standard" or "routine" process (if it ever was!)...

Taking and Defending Effective Depositions - Lorman Educational Services

Posted on May 29, 2007
Lorman Educational Services is offering a one-day CLE program on "Taking and Defending Effective Depositions" on August 14, 2007, in Naperville, Illinois.  Mark V.B. Partridge is moderator and will be speaking on "Witness Preparation and Deposition Defense...