Microsoft Loses Patent Lawsuit

One of the top news stories this week that got virtually no popular press involves the judgment against Microsoft by a small company with a big software patent.

University of California and Eolas Technologies, Inc. hold a patent which Microsoft, according to several judges, violated with its popular Internet Explorer Web browser.

Without going into painful technical detail, the patent involves the "ActiveX" technology enabling Web browsers to display both web pages and content such as streaming audio, Flash, QuickTime video and other "rich" or "dynamic" content.

Despite heated input by the Internet community to invalidate Eolas' patent because of its broad nature, Microsoft lost every appeal and effort to get the patent nullified.

Bottom line: Microsoft faced two choices. First, they could pay the patent owner and keep things moving along, business as usual (much the way Blackberry did recently when a judge found them guilty of patent infringement).

Second choice: Microsoft could avoid future licensing fees by changing their IE browser and removing the offending code.

Which do you think they chose? Ding-ding-ding!

You guessed it, Microsoft chose to avoid paying millions more by simply removing the offending code.

Unfortunately, that decision means a bit of trouble for a few million web designers who use Flash, streaming movies, and more.

Ultimately, the change to IE may force visitors to sites with rich content to click on an object to enable it before they can interact with it.

Not a huge deal. However, time will tell what ultimately happens and the actual impact on sites running rich content.

But before everyone starts screaming that "The sky is falling" and "our websites are broken," let me ask you a question.

Do you really think that companies like Macromedia (makers of Flash) and sites like Google Video will let a few changes in Internet Explorer put them out of business?

I don't think so!

If anything, this change will force companies to step up to the plate and discover ways to serve dynamic content that does not depend on ActiveX.

Sure, it will mean some pain for both content creators and users in the short term, but in the end I honestly believe that, through innovation, we will all end up with a better solution than what currently exists.

In other news today...

** Hollywood Goes Online **

Six major movie studios recently announced their intentions to start selling new-release movies via Internet download from the site MovieLink.com.

But before you jump for joy at watching "Brokeback Mountain" on your pc, understand a couple of facts.

You can't burn the movie to DVD, and the downloadable films carry a price tag of around $15-30, a price comparable or more than a physical DVD you can purchase at Wal-Mart.

As a rabid DVD consumer and enthusiastic computer user (with six in my home office alone), I can tell you right up front, there is no way in @#$%* I'll pay 20 bucks for a movie I can't "veg" out with in front of the TV.

Are they insane?

Until it gets to the point where you can download a new- release movie, burn it to DVD or put it on your iPod, downloadable flicks will remain, at best, a novelty.

"Finally! A Quick and Easy Way For YOU to Painlessly Set Up Your OWN Moneymaking 'Mini' Websites... Without Being a Computer Geek, Buying Expensive Software, or Paying Outrageous Fees To A Webmaster!" Click Here => http://www.MiniSiteCreator.com

Patent - Business Method Patents - Part III

In this third article on business method patents we're going to continue our discussion with legal requirements for getting a business method patent.

In order for a company or individual to get a business method patent, the business method or software must meet the following requirements:

1. The method or software must be on a subject matter that the patent office defines as patentable. This is said to be anything created by humans that falls into two classes; laws of nature, natural phenomena and abstract ideas.

2. The method or software developed must be of some practical use. This is fairly easy to satisfy because any functional purpose will be good enough. A business only needs to demonstrate that its method or software produces some tangible result. For example; Amazon.com with their 1-click purchase produces a tangible result, an expected purchase.

3. The method or software must be novel. In other words, this method or software must be noticeably different from anything else that has come before it.

4. The method or software must be what they call "non obvious." What this means is that somebody who has ordinary skill in that specific technology would not have been able to think of it.

The cost of getting a business method patent depends on a number of factors, including the actual subject matter of the patent, how complex the examination process needs to be to determine if it is a new idea and whether or not the process goes through a lawyer. The cost for getting a business method patent can be anywhere from $3,000 to $15,000 unless you go through the process yourself without hiring a lawyer. After the patent is issued, the owner of the patent must pay maintenance fees to the U.S. Patent and Trademark Office after 3.5, 7.5 and 11.5 years. If the patent should be challenged, and many are, costs for getting the patent can go through the roof.

The next legal requirement for getting a patent is novelty. An application for a business method patent will fail the novelty test if the method was in use for more than 1 year before the patent was applied for. It is because of this novelty requirement that a company must research whether this method already exists and if not, file for a patent as quickly as possible.

A business method is considered to be novel when it is different in at least one area from all prior methods. This is known as "prior art." Prior art consists of the following as per the USPTO in these exact terms.

1. "Any published writing (including any patent) that was made publicly available either: (1) before the date of invention of the business method or (2) more than one year before the patent application for the business method is filed."

2. "Any U.S. patent that has a filing date earlier than the date of invention of the business method."

3. "Any relevant method or process (whether described in writing or not) existing publicly before the business method was conceived."

4. "Any public or commercial use, sale, or knowledge of the business method more than one year before the patent application for the business method is filed."

Finally, as to the timeline for obtaining a business method patent, it takes two and a half to three years to get a business method patent from the date it was filed. The patent is valid for 20 years after filing. After that it becomes public domain and anyone can use the method.

Michael Russell
Your Independent guide to Patents

Trademark Search

A trademark is a unique name, word, phrase, logo, symbol, design, image or a combination of these elements that uniquely identifies your product or service to your customers and distinguishes you from your competitors. By registering your trademark, you provide your company, your product and your services with government protection that are part of the benefits of trademark rights. With a registered trademark, your competitors will not be allowed to use a logo or name of the same likeness, or produce a product or offer services that are similar to yours. For example, Apple produces computer products with an Apple logo. Another company cannot use the apple, or something similar to an apple, to identify themselves within the same industry. Sometimes the benefits extend beyond industries as well.

Trademarks are filed under the United States Patent and Trademark Office (USPTO). The role of the USPTO is to make sure that there are no other trademarks like yours. This office was not setup for your benefit, but to protect the existing trademarks that are already registered. Their objective is to search for possible infringements in the trademark that you filed and rejecting your application if there is. Application fees are not refundable.

With these possible roadblocks in your application, it is best to do searches on existing trademarks to make sure that the trademark you are applying for is unique and distinctly identify your company, product or service. There are Patent and Trademark Depository Libraries (PTD), where you can visit and manually search for existing trademarks. You can also utilize the Trademark Electronic Search System (TESS) online to look for existing trademarks that are registered in the United States of America. To search for existing applications, you can use the Trademark Applications and Registrations Retrieval System under the USPTO. By doing these searches, you save the trouble of your application being rejected.

Trademark Search provides detailed information on Trademark Search, Free Trademark Searches, Online Trademark Searches, US Trademark Searches and more. Trademark Search is affiliated with Free Patent Searches.

Trademark Issues in the Mobil Auto Business

There have always been trademark issues and lawsuits in the mobile auto service business. I know this because I own several such businesses. We first noticed a competitor in the Mobile Auto Detailing Business, which had a name "Mobile Auto Services" another "Mobile Oil Change" and still another "Mobile Car Care". Mobil Oil Company was marketing at the time their Gas Station Service Centers as "Mobil Auto-Services" "Mobil Car Care" and "Mobil Auto Care."

Mobile Oil even filed one case against a company in Mobile Alabama, which used the name Mobile in its Auto Service Business. These cases occur more often than you think. Many times infringers do it on purpose to get easier name recognition, while at other times it is just coincidence, either way as the World gets closer together you can bet the problem will become more prevalent and more serious.

If you don't think this is an issue, check out this case with Kellogg's "Tony the Tiger" and Mobil Oil Company's "Tiger Mart." I guess you have to ask yourself "Whoooose Great"

http://www.eura.com/steffen/jura/aktuelles/texte/tony_kellogs_vs_exxon_tiger.htm

Whether or not you agree with the verdicts in these trademark infringement cases, the company with the greatest dollars often is victorious. Speaking of Victorious...Victor's Secrets, an adult store, has won a case where Victoria Secret, a 4 Billion Dollar a year marketer of lingerie, was not entitled to seek a cease and desist from the Proprietor of Victor's Secret, whose real name was Bob or something like that.

In the case of McDonalds, they sue just about everyone with anything even closely resembling their name and they have so much case law now that they usually win everything, you might beat them but it would cost you $190,000 +, as was the most recent case where it went to a very high court and McDonalds won anyway.

We have seen previously in California where Oil Max was taken by a San Diego company and the former Oil Max mobile oil change company changed their name to Oil Maxx, with two X's; unfortunate, but true. In a Trademark case at the Federal Level this would not even be possible, first use has rights, but even a federal trademark must be defended otherwise you lose certain rights to it's use.

Now we see again Where Pitts Stop Mobile Oil Change is using a similar paint scheme to the Pitts Stop for this major C-Store Chain where some offices also have Oil Changing. If they are ever going to be in the same market one company will have to yield if both companies cannot agree, problem being that there is a good chance they will be direct competitors, in which case there could easily be a lawsuit. One company he fixed sites are based in Las Vegas and the other is based in Riverside CA that is fairly close and so far neither company is so big that it matters. In franchising such as in Mobil Service Stations, Brand Name means a lot. So to will it in the future as one or more of these companies might make it to a point where there is a confusion. In a down economy there is also a potential for one or more companies to go out of business thus abandoning any use of such a mark therefore making such an example of this type very irrelevant.

Before you go into an auto business or any business for that matter, check on the use of the names and pay attention, these issues are easy to fix before you start, but once you grow large the costs in loss of brand name recognition if you have to change the name could be in the millions, think about it. I know you will.

Lance Winslow, a retired entrepreneur, adventurer, modern day philosopher and perpetual tourist.

Trademarks: When and How to Search and File Trademark Applications

A trademark can be any word, slogan, design, symbol, or even a color, smell, product configuration or a combination of these, used to identify the source of origin of particular goods and services.  The trademark serves as a source identifier of your goods and services, to distinguish it from the goods and services of others. 

1.                  What is a Trademark?

A trademark can be any word, slogan, design, symbol, or even a color, smell, product configuration or a combination of these, used to identify the source of origin of particular goods and services.  The trademark serves as a source identifier of your goods and services, to distinguish it from the goods and services of others.  For example, Nike? has a registered trademark with the United States Patent and Trademark Office (?USPTO?).  Their mark is used to distinguish their goods and services over other shoe companies.  Nike? actually owns several trademarks, including design marks as well, such as their swoosh symbol. 

Here is another example, remember when Paris Hilton was saying ?that?s hot? everywhere?  She applied for a trademark application with the USPTO.  If it ultimately gets issued, it doesn?t mean that no one else can ever say that phrase.  Ms. Hilton?s trademark attorney has filed the slogan only in connection with particular specified goods and services.  Therefore, if the mark does ultimately issue, she will have federal rights to prevent others from using the mark in connection with the same or similar goods and services she registered the mark with. 

2.                  Why You Need to Conduct a Trademark Search and File an Application

You are ready to launch a new product, or you are about to start a new business and you have a great name you?ve been wanting to use for years.  But can you?  Here is a typical scenario: Company A opens its doors (a physical store and online) choosing a name without conducting a trademark search.  Company A starts promoting its name by investing in advertisements (print and online such as Google adwords).  Months go by and Company A is doing quite well financially, has invested a lot money in advertising and marketing, and its page ranking in Google and went up considerable for its desired terms (after spending a ton of money to search engine optimization marketing firms).  Then one day, Company A receives a cease and desist letter from Company B?s attorney similar to this:

Company B is the owner of United States Federal Trademark Registration No. XX and other trademark registrations pertaining to this mark.  Company B uses this mark in the United States in conjunction with its goods and services.  Company B legally owns the trademark upon which your online store, products, and advertisement are infringing.

Company B believes that you are intentionally trading on the goodwill of Company B by using a trademark that is confusingly similar to Company B?s Trademark and that your use of the Trademark does, or is intended to confuse or mislead customers seeking Company B?s products or services. This activity is actionable under federal law and causes you to be liable to Company B in every state in which you have made sales or done business. Your activities are unlawful and constitute unfair competition, intentional trademark infringement and dilution, false designation of origin and/or cybersquatting.

Federal Law provides numerous legal remedies for trademark infringement and dilution, including, but not limited to, preliminary and permanent injunctive relief, monetary damages, claim to a defendant?s profits?

So now what?  You are thinking it can only be a bad dream, I can?t stop using the name I?ve been using all this time.  Think again.  Although you may be able to fight  or settle in order to prevent your name from being taken away, it typically takes time and a lot of money.  This is the sad scenario many business owners face when the neglect to take into account intellectual property rights of others.

Rather than being a victim to bad business practices, the proper way to proceed is to obtain a trademark search on each and every name you intend to use in connection with the goods and services your business is promoting.  A competent trademark attorney can conduct the search and analyze the results to advise you whether or not you should use the name.  If name appears to be clear, then it is advisable to proceed with your own application for a trademark in order to serve as a defense and to be used offensively against would be trademark infringers. 

Upon issuance of your federally registered trademark, you have the following significant benefits:

• Nationwide constructive notice of trademark ownership
• Evidence of and a presumption of ownership
• Federal court jurisdiction (should you have to sue to prevent infringement)
• Federal registration can be used to obtain foreign registration
• The registration may also be filed with U.S. Customs Service to prevent importation of foreign goods that infringe on the trademark

3.                  Trademark Issues on the Internet

What about domain name disputes; use of trademarks in Google adwords advertising or banner advertisements; cybersquatting; how about protect, parody, or criticism websites like www.starbucked.com; trademark issues with pop up ads; etc.  These are all issues that occur everyday online and are costing business owners millions.  Each issue can be resolved in different ways, either by the use of cease and desist letters; negotiations and settlement; a traditional trademark infringement lawsuit in either federal or state court; an Anticybersquatting Consumer Protection Act (ACPA) lawsuit; or an Uniform Domain Name Dispute Resolution Policy (UDRP) proceeding. 

? 2006 Michael N. Cohen, Esq.  No portion of this article may be copied, retransmitted, reposted, duplicated or otherwise used without the express written approval of the author.

This article is not intended as a substitute for legal advice. The specific facts that apply to your matter may make the outcome different than would be anticipated by you. You should consult with an attorney familiar with the issues and the laws.

Michael N. Cohen, Esq. is an intellectual property attorney with specializations in trademark, patent and internet law.  The Law Office of Michael N. Cohen, P.C., is located in Beverly Hills, California, and Mr. Cohen can be contacted at 310-288-4500 or http://www.patentlawip.com.