Anything is capable of becoming a trademark—including a word, a phrase, letters, a number or a series of numbers, a sound, a color and product configurations. A trademark identifies the origin or ownership of goods and services in the market. Where a party has been in the habit of labeling his goods with a distinctive mark, so that purchasers recognize goods marked as originating from such party, this mark has acquired trademark meaning.

A mark will be valid and can be automatically eligible for trademark status if it has inherent distinctiveness. This may consist of a made up word or fanciful mark (e.g. Enron) or an arbitrary mark where there is no relationship between the good offered in commerce and the mark (e.g. Apple). A mark can also qualify as a trademark if it has acquired distinctiveness. This may consist of a mark that has secondary meaning i.e., in the mind of consumers the descriptive term is associated with the good and its origin. Thus, it has gained a trademark meaning.

The benefits of federal trademark registration are as follows: constructive notice to the public of the registrant’s claim of ownership, legal presumption of registrant’s ownership and exclusive right to use of the mark nationwide or in relation to the goods and services listed in the registration, ability to bring an action concerning the mark in federal court, use of U.S. registration as a basis to acquire foreign registration, ability to file the U.S. registration with the U.S. Customs Service to prevent importation of infringing foreign goods.

If you are using a mark but did not register it with the USPTO (U.S. Patent and Trademark Office), someone using an identical mark could enter your territory with a federal trademark registration for the similar mark, and have federal protection. You could potentially be exposed to litigation and investment losses.

Before selecting a trademark for use and building equity, we suggest a thorough and comprehensive search to determine prior use of the mark. Trademark rights may be earned through registration with any of the 50 state governments or through use in commerce (also called common law use). Thus, if another company or individual has a state-based registration or common law use, which predates your federal trademark application, you are susceptible to a suit for infringement. A comprehensive search in state and common law databases in addition to the federal database could prevent unnecessary problems.

The USPTO is an administrative agency responsible for the registration of trademarks. After conducting a search and filing of trademark application, an ex parte examination is done by a PTO examiner. The mark is then published in the Trademark Official Gazette (OG). Any party who believes it will be damaged by the registration of the mark may file a notice of opposition or extension of time with the Trademark Trial and Appeal Board. If no one files an opposition or extension request within 30 days after such publication, then within 12 weeks of the publication date a certificate of registration should issue.

We work with our clients during the trademark selection process to perform clearance searches and assist in the selection of strong and legally enforceable trademarks. We file electronic applications at the trademark office. We are aware of the costs of litigation and administration procedures and attempt to first negotiate workable settlements. We are skilled in drafting settlements that guard our client’s rights. However, when needed we can represent parties in trademark litigation before state and federal courts. We can also pursue trademark oppositions and cancellations before the Trademark Trial and Appeals Board.

COPYRIGHTS

A copyright comes into being automatically upon “fixation in a tangible medium.” This means that the work or writing has been recorded, videotaped or put on paper. It typically lasts only for the life of the author plus 70 years after the author’s death. A copyright is awarded in the first instance to the author of the work or the party who actually creates the work.

A copyright owner has the exclusive right to do and to authorize others to do the following: reproduce the work, prepare derivative works, distribute copies of the work to the public by sale or other modes of transfer, perform the work public, display the copyrighted work publicly and in the case of sound recordings, to perform the work publicly by means of a digital audio transmission.

Where an employee within the scope of his employment creates the work, the employer is treated as the author and owner of the copyright. This work for hire doctrine also confers authorship status on persons who commission another party to create certain types of copyright work. The copyright can in any event be transferred. The duration for works made for hire, anonymous works and pseudonymous works is 95 years from publication or 120 years from creation, whichever is shorter.

The tangible benefit of registering a copyright with the United States Copyright Office before any infringement happens is compensation in the form of special statutory damages and attorneys’ fees for every infringing copy. Higher damages will be awarded if the court finds willful infringement.

We are skilled in preparing settlements that protect our client’s rights. However when necessary, we can represent parties in copyright litigation before state and federal courts.

LICENSING

NON-DISCLOSURE AGREEMENTS (NDAs)

NDAs are often made between parties who contemplate a closer relationship such as a license. A prospective licensee will be able to examine the licensed technology before committing to actually making the product. The NDA includes terms and conditions of the transfer of confidential information that would allow the recipient to evaluate the licensed property and make a knowledgeable decision about taking a license. A license agreement will typically include similar provisions to protect know-how and trade secret specifications that cannot be garnered from manufactured products or published software.

Parties are able to create an agreement that ensures their protection against unauthorized disclosure by entering into an NDA. Such agreements protect intellectual property regardless of whether the property is protected by patents, registered copyrights or trademarks. As between parties, an NDA may provide broader protection. NDAs are contracts and courts are familiar with enforcing them. Absent an underlying illegality, it is in the public interest to enforce them.

LICENSE AGREEMENTS

A licensor and licensee have common interests in establishing a license. The licensor stands to gain revenue at a minimal, marginal cost of transferring technology while the licensee may gain a new product or product line, save on research and development cost and shelter itself from the marketing risks that accompany marketing a new product for the payment of royalty.

ENTERTAINMENT LAW

Our approach to Entertainment law in the course of a vastly evolving technological landscape is multidimensional. Our firm counsels and represents various artists, singers, writers, composers, producers, distributors, record labels, and filmmakers in the media and entertainment industry. We provide you a detailed explanation of the contract and suggest terms and clauses that may be included to secure your interests. Our team will assist clients in acquiring creative opportunities to maximize financial benefits, artistic license and exposure. We endeavor to protect essential business relationships by negotiating the terms of the contract.

We render advice on issues concerning:

  • The film industry and all other parties including production, distribution, employment related matters, Writers Guild of America (WGA), Directors Guild of America (DGA), and Screen Actors Guild (SAG).
  • The music industry, and Musicians and Singers.
  • Television and television programming related matters.
  • Book publishing contracts.
  • Minors’ contracts.
  • Management contracts.
  • Entertainment on the Internet

CYBER LAW

Cyber law is the area of law relating to the Internet that often deals with the activities, transactions, software and technology, and intellectual property. Cyber law further governs communications, transactions, privacy, intellectual property, speech, and domain names related issues occurring over the Internet.

Bhatta Law & Associates represents small and mid-sized technology companies and individuals in defending their actions or protecting their interests including Intellectual Property rights, domain names, and electronic transactions from disputes arising from the Internet.