With the explosion of new breweries in Minnesota and elsewhere around the country, we are seeing overlap in the names given to breweries and their beers. This has resulted in trademark disputes as breweries attempt to build and protect their brands. While breweries gain some common law trademark rights by using their brewery and beer... Read More →
Minneapolis Intellectual Property Attorneys
Thompson Hall Santi Cerny & Katkov’s attorneys have been representing clients in the area of intellectual property for years. The most common forms of intellectual property involve:
- trade secrets
- internet domain names
- licensing issues
Thompson Hall Santi Cerny & Dooley has represented clients with both proactive and reactive efforts. Our attorneys represent individuals and businesses from the start of new ventures or projects to prevent violations of intellectual property laws. Thompson Hall Santi Cerny & Dooley‘s attorneys represent clients in identifying, acquiring, and protecting their intellectual property. Our attorneys also represent individuals and businesses in litigation once there has been a violation, or an alleged violation, of an intellectual property law.
Important considerations in protecting yourself or your business
Contracts to protect your intellectual property
Contracts, confidentiality agreements, and non-disclosure agreements drafted by experienced attorneys will help protect your intellectual property before it is disclosed to others, such as employees. Non-competition agreements may also be useful in this area.
Licensing of the use of your intellectual property
You may wish to license another person or entity to use your intellectual property. An experienced attorney will help protect your rights by drafting a thorough licensing agreement.
Before acquiring a trademark a search must be conducted to determine whether that trademark is already in use. Experienced attorneys can guide you through this process.
Trademark and copyright registration
Registration of trademarks and copyrights is not necessary but experienced attorneys will show you the benefits of registration and register trademarks and copyrights on your behalf.
Negotiating potential violations
When someone believes a violation of an intellectual property law has occurred, or may have violated such a law himself or herself, often the person does not want to engage in extensive litigation over the matter. Our attorneys are experienced negotiators and help intellectual property clients negotiate their claims or defenses in order to achieve positive results. Often clients want to explore the option of settling violations before proceeding through litigation.
Mediating or arbitrating potential violations
When parties want to explore settlement or other results short of trial, but are unable to resolve the matter themselves or through their attorneys, often they will seek mediation or arbitration. Thompson Hall Santi Cerny & Dooley‘s attorneys are experienced in mediation and arbitration and help clients obtain the results they seek through these processes when clients wish to explore alternatives other than trials.
Determining violations and litigating claims and defenses
Once there has been a potential violation of an intellectual property law and settlement negotiations are either undesirable or unproductive, litigation often ensues. The attorneys of Thompson Hall Santi Cerny & Dooley are also experienced litigators and will initiate lawsuits, conduct discovery, litigate motions, and represent clients in trial after there has been a potential violation of an intellectual property law.
SCOTUS and Trademarks: B&B Hardware v. Hargis Hana Financial v. Hana Bank In December 2014, the Supreme Court of the United States heard oral arguments in two trademark cases. It has been almost ten years since the Court has issued any substantive decision involving trademark law. This case is a highly anticipated case in the... Read More →
In what is yet another clash between state law and federal prohibition of marijuana under the Controlled Substances Act, the United States Patent and Trademark Office (“USPTO”) has held steadfast in its refusal to register trademarks for marijuana based products. Naturally, business owners in the medical (and recreational) marijuana want to protect their business and... Read More →
At the Grammys a few weeks ago, Sam Smith was the big winner. He took home the top awards winning Best New Artist, Best Record, and Best Song. The Best Record and Best Song awards were for his insanely popular song, “Stay With Me.” It is Smith’s most successful song to date. It topped the... Read More →
In the case of Sprinkler Warehouse, Inc. v. Systematic Rain, Inc. d/b/a GPLAWN.com, et al., --- N.W.2d ---, (Minn. Ct. App. 2015), the Minnesota Court of Appeals recently held that “[u]nder Minn. Stat. § 571.73, subd. 3 (2014) domain names and the copyright-protected material contained in websites are subject to garnishment.” Before getting into the... Read More →
Craft breweries have become increasingly popular in recent years and there is no sign of this trend slowing down. Minnesota alone is home base for about 50 breweries, and according to the Brewers Association, there was an 81 percent jump in craft beer that is produced in Minnesota. (The New Yorker made a great map... Read More →
Coffee giant Starbucks takes protecting its trademark Frappuccino seriously. Starbucks owns the trademark “FRAPPUCCINO” in the United States. For those who are not familiar with a Starbucks Frappuccino, it is a line of frozen coffee beverages that is blended with ice and other sweet ingredients and usually topped with whipped cream. Bottled Frappuccino drinks can... Read More →
I suspect that most of you are very familiar with Disney and its signature spokesperson, Mickey Mouse. There are probably fewer of you that are familiar with Deadmau5 (pronounced “dead mouse,” real name Joel Zimmerman). Deadmau5 is a music producer, performer and DJ. He often wears a mouse head while performing. Deadmau5 has used this... Read More →
Outside the trademark arena, the idea of unfair competition exists in common law and statutes to compensate businesses that have suffered an injury through deceptive or wrongful business practices. In a trademark situation an injured party can bring an unfair competition claim under § 43(a) of the Lanham Act. Section 43(a) provides that: Any person... Read More →
Most people do not spend time reviewing on a regular basis the Official Gazette, which is the official journal of the United States Patent and Trademark Office. The Gazette is published every Tuesday and it contains information regarding each patent granted and trademark published. And because most people do not review it weekly, a person... Read More →
The Disney-owned production company, Lucasfilm Ltd., filed an opposition to Walton Street Brewing Corp.’s application to register the trademark for its beer aptly named “Empire Strikes Bock.” Walton Street Brewery describes its “Empire Strikes Bock” lager as a “spring lager…brewed with German malt & hops and then lagered for six weeks. Extremely clean and refreshing.”... Read More →
Intellectual property cases have become a hot topic the United States Supreme Court. Ten of the sixty-nine cases that the United States Supreme Court heard in 2013 and 2014 dealt with intellectual property issues. Two of those decisions dealt directly with the Lanham Act: POM Wonderful LLC v. Coca-Cola, Co. and Lexmark International, Inc. v.... Read More →
The Blaine restaurant, Bluzy’s Roadside Bar, recently reach settlement with Rich Pour Enterprises, LLC, owner of The Blue Door Pub to change its name to “The Roadside.” Bluzy’s original opened in the Fall of 2013 with its original name of “Blucy’s Roadside Bar.” When Rich Pour objected claiming it was too similar to its hamburger... Read More →
La Quinta operates approximately 800 hotels in the United States and most are under franchise agreements. Quinta Real is considered a “luxury” hotel chain in Mexico and has established 8 hotels in Mexico. Quinta Real has published two letters of intent, one in 1994 and one in 2007, to expand into the United States. There... Read More →
Under the Copyright Act of 1976 there are exclusive rights provided to the owner of a copyright. The owner of the copyright has the exclusive right to the following: To prepare derivative works based upon the copyrighted work; To distribute copies or phonorecords of the copyrighted work to the public by sale or other transfer... Read More →
The Story of Southern California Darts Association On August 11, 2014, the Court of Appeals for the Ninth Circuit, in which the states of Arizona, California, Nevada, Oregon, Idaho Washington and Montana are subject, held that unincorporated associations have the legal capacity and right to own trademarks and to sue infringers to enforce them. The... Read More →
In trademark law, "likelihood of confusion" is the primary legal standard for trademark infringement. A recent decision from the 9th Circuit Court of Appeals nicely articulates the black letter law behind the "likelihood of confusion" standard: To show trademark infringement, a plaintiff must establish ownership of a trademark and a likelihood of consumer confusion. AMF,... Read More →
The general rule is that a work’s creator initially owns the copyright of the work created. But there are exceptions to this rule. Some of the exceptions to this rule are: Work created by an employee in the scope of their employment. The work created is owned by the employer. If an independent contractor creates... Read More →
A parody is defined as “an imitation of the style of a particular writer, artist, or genre with deliberate exaggeration for comic effect.” Common sense reveals that most authors of protected work would not freely license their work to be parodied. Therefore, most parody authors must rely on the defense of "fair use." A defense... Read More →
After a plaintiff has been able to prove copyright infringement a defendant can allege a number of defenses, including fair use. A defense of fair use is not alleging that an infringement did not occur, but rather that the infringement is excusable. The defense of fair use allows courts some flexibility to assess matters on... Read More →