There are a number of intellectual property myths that attorneys
hear over and over again. Periodically, we'll feature
some of these myths and examine the reality.
Myth: Because my company sells only in the
United States, we don't need to worry about protecting our
Reality: Although trademark rights are
territorial in nature, in some countries use is not required to
obtain rights. In these countries, notably including China,
trademark priority goes to the first person to file an application
(often called "first-to-file" jurisdictions), regardless
of whether or not the applicant is using or even plans to use the
trademark in that country.
Consider, for example, a company located in the United States that
sells its products exclusively in the United States, but
manufactures goods or has suppliers in China. It would be
possible for a third party to register the U.S. company's
trademarks in China and then bring or threaten a lawsuit. It
might be that a Chinese court would dismiss these claims, but many
trademark owners decide that obtaining foreign trademark
registrations in first-to-file jurisdictions is a worthwhile
investment to reduce the risks of facing a foreign trademark threat
For another example, consider a company that sells a popular
consumer product in the United States. Even if the company
has no activity in China and never intends to -- it may want to
obtain a Chinese trademark registration as a way to try to deter
A trademark attorney can provide advice on whether it is possible
to obtain trademark protection in a foreign country without use in
that country and the benefits it may provide based on individual
When last we looked in on the Google Books dispute, the Second Circuit had overturned class certification in the suit, brought by the Authors Guild and multiple individual authors, on the basis that the District Court first should have resolved Google’s fair use defense, which could moot the class certification issue.
The America Invents Act, which became fully effective on March 16, 2013, has fundamentally changed U.S. patent law. Some of the most important of these changes relate to the scope of prior art available under 35 U.S.C. § 102.
Addressing a decision of patentability by the U.S. Patent and Trademark Office (PTO) Patent Trial and Appeal Board (Board), the U.S. Court of Appeals for the Federal Circuit vacated the and remanded the case, finding that the Board failed to account for critical background information.