Trademark and copyright registration, proceedings before the Trademark Trial and Appeal Board and the Copyright Claims Board, and infringement litigation in federal court.
The firm’s intellectual property practice covers trademarks and copyrights from registration through litigation, and patent disputes that are litigated in federal court. It grows out of the firm’s business practice: many IP questions first arise when a company is formed, a brand is launched, or a business is bought or sold.
The firm prepares and prosecutes federal trademark applications before the United States Patent and Trademark Office, responds to office actions, and maintains registrations. When a mark is challenged, or a competing application is filed, the firm handles opposition and cancellation proceedings before the Trademark Trial and Appeal Board. Michigan also offers state trademark registration, which can be useful for a business whose use is local.
The firm registers copyrights with the Copyright Office and enforces them. Registration matters for timing: under the Supreme Court’s decision in Fourth Estate v. Wall-Street.com, an infringement suit on a United States work generally cannot be filed until the Copyright Office has registered the work or refused registration. For smaller claims, the Copyright Claims Board offers a less expensive alternative to federal court, with total damages capped at $30,000 per proceeding.
Trademark, copyright, and patent infringement claims are litigated in federal court. The firm appears in the United States District Courts for the Eastern and Western Districts of Michigan, both for owners enforcing their rights and for parties accused of infringement.
No attorney at the firm is registered to practice before the Patent and Trademark Office in patent matters. The firm therefore does not prepare or prosecute patent applications or advise on whether to file one; that work is referred to registered patent practitioners. The firm does handle patent infringement litigation in federal court, usually with a registered practitioner as co-counsel, and patent licenses and assignments as part of its transactional work.
Not to have any rights: using a mark in commerce creates some rights in the area where it is used. Federal registration with the U.S. Patent and Trademark Office adds important advantages, including nationwide notice of your claim of ownership, legal evidence that you own the mark and have the exclusive right to use it for the listed goods or services, and the right to use the ® symbol. Those advantages make it considerably easier to stop a competitor from adopting a confusingly similar name.
A registration can last indefinitely as long as the mark stays in use and the owner makes the required filings. Under 15 U.S.C. § 1058, the owner must file a declaration of continued use in the year before the sixth anniversary of registration and in the year before each 10-year anniversary, and under 15 U.S.C. § 1059 the registration is renewed for successive 10-year periods. If the required filings are not made by the end of the six-month grace period, the registration is canceled.
After the USPTO publishes the application, a person who believes they would be harmed by the registration may file an opposition with the Trademark Trial and Appeal Board within 30 days, under 15 U.S.C. § 1063(a), and that period can be extended if a written request is made before it expires. If the mark has already registered, a petition to cancel the registration may be available instead. These Board proceedings decide only whether the mark may be registered, not whether the other party may keep using it, which is a question for a court.
For a United States work, generally yes. Under 17 U.S.C. § 411(a), an infringement suit cannot be filed until the Copyright Office has registered the work or refused registration. Timing also affects remedies: under 17 U.S.C. § 412, statutory damages and attorney’s fees are generally unavailable for infringement that began before registration, unless a published work was registered within three months after its first publication.
The Copyright Claims Board is a tribunal within the U.S. Copyright Office that decides smaller copyright disputes at less cost than federal court. Under 17 U.S.C. § 1504(e)(1), a party may seek no more than $30,000 in total damages in one proceeding, and statutory damages are limited to $15,000 per work for a timely registered work. Participation is voluntary, so a respondent may opt out, and the claimant must have at least applied to register the work before or when filing the claim.
No. Patent applications are prepared and prosecuted before the USPTO by registered patent practitioners, and no attorney at the firm is registered for that work, so we refer it to registered practitioners. The firm does handle patent infringement litigation in federal court, and patent licenses and assignments as part of business transactions.
These answers are general information about Michigan and federal law, not legal advice about your situation. Contacting the firm does not create an attorney-client relationship.
The firm handles new matters on a consultative basis. Call the office, or send us a message through our contact form.