Articles

Many of those who try to register trademarks in the US quickly discover that things are already crowded on the US Trademark Register, making it difficult to find and then register word marks.  While some of this is due to a healthy business environment, much is also due to companies and individuals filing for and obtaining registrations that include goods and services not actually used in interstate commerce.  

We often get calls regarding provisional patent applications (“PVAs").  These “quick and dirty” patent applications require less drafting and formality than a standard utility patent applications and are thus less expensive.  The PVA establishes a filing date and places the invention in a “patent pending” state.  The PVA can thus serve as a pre-disclosure patent application filing to preserve the inventor’s right to file patent applications in foreign countries.  Lastly, PVAs are considered to increase the value of a venture and can help in fundraising. 

By Eric Bjorgum, first published in Forum (July/August 2008).

There are many opportunities for plaintiff's attorneys to pursue intellectual property claims. For copyright and patent claims, the requirement of a federal registration can pose a barrier to immediately filing suit. But one legal theory in intellectual property, perhaps more than any other, is suited to the plaintiff's bar: so-called "reverse confusion" trademark infringement.

By William Brutocao and Eric Bjorgum, first published in Intellectual Property Today (Sept. 2008)

In early June 2006, the famous Los Angeles mural Ed Ruscha Monument by Kent Twitchell was painted over. Public outcry followed, and Twitchell filed suit under the Visual Artists Rights Act and California Artists Protection Act, which give the artist so-called “moral rights” (from the French droit moral).1 Twitchell also brought claims for conversion, negligence, negligent supervision and California statutory unfair competition. Eventually, thirteen defendants were sued, including the United States, the Los Angeles YWCA and various contractors and subcontractors. Almost two years later, the case settled for $1.1 million.

Flying under the radar with some of intellectual property's most obscure claims

Last spring, my firm was settling a case brought under the Visual Artists Rights Act, 17 U.S.C. § I06A. We obtained a $1.1 million settlement for our client, artist Kent nvitchell, whose 70-foot mural had been painted over on a building owned by the federal governnlent.

By Eric Bjorgum, first published in Coagula Art Journal (Sept. 2008).

The Case of Kent Twitchell's Ed Ruscha Monument: Government Is the Men, Federal Preemption and What You Need to Know about VARA

The intersection of law and the arts presents unique challenges calling upon different aspects of intellectual property law.  A particular artistic problem may involve elements of copyright, trademark and even patent law. 

As intellectual property litigators, the attorneys of Karish & Bjorgum often run into issues involving allegations of wrongful conduct arising from enforcement of intellectual property rights.  This issue can arise when notification of a suit is sent to the trade or even when a cease and desist letter is sent.  Sometimes the defendant of the suit or the recipient of the letter will retaliate with a lawsuit claiming malicious prosecution, abuse of process, interference with contract or some other tort allegedly based upon the underlying dispute. 

In its decision on December 28, 2009 in The Forest Group, Inc. v. Bon Tool Company, the Federal Circuit clearly set forth the standards and possible penalties for false marking (placing a patent number on a product when the product is not covered by that patent).

A patent is a property right given by the U.S. government that allows a patent owner to exclude others from making, using, offering for sale, or selling an invention in the United States for a limited time.  The U.S. government awards patent so that inventors will reveal their inventions to the public.

Who can apply for a patent?

Only an inventor can apply for a patent in the United States.  The inventor does not need to be a U.S. citizen to file a patent application.  A company cannot file a patent application in its own name, but can own the rights in a patent application or issued patent.