207-219-8418 info@caseiroburke.com

Caseiro Burke has received a Best Law Firm distinction in Patent Law by U.S. News – Best Lawyers® for 2018.

 

CB Logo

We are pleased to announce that our firm, Caseiro Burke, has received a Best Law Firm distinction in Patent Law in Portland, Maine by U.S. News – Best Lawyers® for 2018. This is the fourth year in a row that Caseiro Burke has been recognized as one of the predominant Patent firms in the State of Maine.

According to U.S. News & World Report, the firms included in the 2018 “Best Law Firms” list are “recognized for professional excellence with persistently impressive ratings from clients and peers. Achieving a tiered ranking signals a unique combination of quality law practice and breadth of legal expertise. The 2018 rankings are based on the highest number of participating firms and highest number of client ballots on record. To be eligible for a ranking, a firm must have a lawyer listed in The Best Lawyers in America, which recognizes the top 4 percent of practicing attorneys in the U.S. Over 13,000 attorneys provided more than 1,000,000 law firm assessments, and over 7,500 clients provided more than 65,000 evaluations.” 13,745 law firms across the United States were reviewed across 75 practice areas. However, only 1,911 firms received a national law firm ranking.

. . .

About Caseiro Burke LLC

Caseiro Burke is an intellectual property law firm providing legal services to individuals and businesses around the world. We offer clients creative, cost-effective and reliable legal solutions in all intellectual property matters. Our dedication to the practice of intellectual property law provides our clients with the focus of attention necessary to establish, protect and commercialize their innovations. Whether you are a sole inventor looking for patent protection for your invention, a distillery protecting its brand or a manufacturing company asserting or defending a patent infringement claim, Caseiro Burke will work with you to achieve effective results.

About “Best Law Firms”

The U.S. News – Best Lawyers® “Best Law Firms” rankings are based on a rigorous evaluation process that includes the collection of client and lawyer evaluations, peer review from leading attorneys in their field, and review of additional information provided by law firms as part of the formal submission process. To be eligible for a ranking, a law firm must have at least one lawyer listed in the 23rd Edition of The Best Lawyers in America© list for that particular location and specialty.

About U.S. News & World Report

U.S. News & World Report is a digital news information company that empowers people to make better, more informed decisions about important issues affection their lives. Focusing on Education, Health, Personal Finance, Travel, Cars and News & Opinion, www.usnews.com provides consumer advice, rankings, news and analysis to serve people making complex decisions throughout all stages of life. 30 million people visit www.usnews.com each month for research and guidance. Founded in 1933, U.S. News is headquartered in Washington, DC.

About Best Lawyers

Best Lawyers is the oldest and most respected attorney ranking service in the world. For more than 30 years, Best Lawyers has assisted those in need of legal services to identify the attorneys best qualified to represent them in distant jurisdictions or unfamiliar specialties. Best Lawyers lists are published in leading local, regional and national publications across the globe. The Best Lawyers in America list recognizes the very best lawyers in each practice area and metropolitan region in the country.

Beware of Unwanted Trademark Solicitations

SolicitationOn November 2, 2015, I wrote a blog entry (click here) about concerns related to unwanted trademark solicitations from private companies. These private companies routinely send out letters and/or invoices, seeking money to prosecute, maintain and/or watch your pending federal trademark application and/or registration for you. In some instances, these unwanted trademark solicitations are designed to resemble US Patent and Trademark Office’s (“USPTO”) official communications. This has not gone unnoticed by the USPTO or the Department of Justice. In fact, the Department of Justice recently announced that two men from California have pled guilty to scamming U.S.trademark application owners. The two men created their own trademark solicitations and sent them to applicants with pending federal trademark applications in an effort to obtain money for services that neither men intended to perform. According to the Department of Justice, one of the defendants who pled guilty admitted that he scammed approximately 4,446 victims of $1.66 million. To learn more about this case, click here.

In an effort to help applicants and registrants combat these unwanted trademark solicitations and scams, the USPTO published an informative video warning applicants seeking federal trademark protection and/or owners with existing federal registrations about these unwanted trademark solicitations. Click here to view the video. Included in this blog is an example of an unwanted trademark solicitation that the USPTO has posted on its website. We have seen this identical unwanted trademark solicitation sent to our clients.

As indicated above, our clients have received unwanted trademark solicitations related to their pending federal trademark applications and existing federal registrations. Each time our clients inform us that they received an unwanted trademark solicitation, we tell them that if it is not from our firm; do not pay it. If you do not have an attorney and believe you have received one of these unwanted trademark solicitations, I suggest contacting a trusted intellectual property attorney before making any payments to these private companies.

. . .

John M. Burke is a trademark attorney who assists clients in selection, screening, registration, licensing and enforcement of trademarks and service marks. In addition to trademark prosecution and enforcement, John works with clients to identify, manage and license their intellectual property. Through Caseiro Burke’s Litigation Practice, John also provides intellectual property litigation service.

Caseiro Burke is an intellectual property law firm providing legal services to individuals and businesses around the world. We offer clients creative, cost-effective and reliable legal solutions in all intellectual property matters. Our dedication to the practice of intellectual property law provides our clients with the focus of attention necessary to establish, protect and commercialize their innovations. Whether you are a sole inventor looking for patent protection for your invention, a distillery protecting its brand or a manufacturing company asserting or defending a patent infringement claim, Caseiro Burke will work with you to achieve effective results.

Trademark 101: How Strong is your Trademark?

Trademarks are an important aspect of any business. Your trademarks help consumers identify the source of goods and/or services offered in the marketplace. But what makes a trademark strong? The key to any strong trademark is its distinctiveness with respect to the goods and/or services offered under it. The following chart illustrates the five levels of distinctiveness that the United States Patent and Trademark Office (hereafter, “USPTO”), considers when assessing whether to grant registration in a trademark:

trademark-chart2

Fanciful and arbitrary trademarks are virtually guaranteed to receive federal registration at the USPTO. Kodak and Xerox are classic examples of fanciful trademarks. Neither trademark suggests or describes the goods and/or services offered. With the appropriate marketing strategy, these types of trademarks leave a lasting impression on the consumer.

Suggestive trademarks and descriptive trademarks are common. While suggestive trademarks are generally registerable, descriptive trademarks are generally not registerable. Descriptive trademarks can be registered if it can be demonstrated that the trademark has acquired “secondary meaning;” that is, the mark is recognized by the consumers as an indicator of the sources of the goods or services. One way to establishing “secondary meaning” is having used the trademark in interstate commerce for the same goods and/or services for five consecutive years.

Generic terms are weak trademarks, if trademarks at all, as they identify the goods and/or services themselves rather than the source of the goods and/or services. These types of trademarks are never registerable at the USPTO.

When establishing your brands, make sure you have strong trademarks. Relevant consumers should be able to identify a trademark and connect it to you, whether directly or inherently. Apple is an excellent example of a trademark that everyone can trace back to the source of the goods and services offered. The same can be said with respect to the trademark, Pumpkinhead, a popular seasonal beer created by Shipyard Brewing Company located in Portland, Maine. A good trademark is an important aspect of business success. Get creative with your names and register them at the USPTO so that you, not others, reap the rewards of creating distinctiveness in the marketplace.

. . .

John M. Burke is a trademark attorney who assists clients in selection, screening, registration, licensing and enforcement of trademarks and service marks. In addition to trademark prosecution and enforcement, John works with clients to identify, manage and license their intellectual property. Through Caseiro Burke’s Litigation Practice, John also provides intellectual property litigation service.

Caseiro Burke is an intellectual property law firm providing legal services to individuals and businesses around the world. We offer clients creative, cost-effective and reliable legal solutions in all intellectual property matters. Our dedication to the practice of intellectual property law provides our clients with the focus of attention necessary to establish, protect and commercialize their innovations. Whether you are a sole inventor looking for patent protection for your invention, a distillery protecting its brand or a manufacturing company asserting or defending a patent infringement claim, Caseiro Burke will work with you to achieve effective results.

Caseiro Burke has received a Best Law Firm distinction in Patent Law by U.S. News – Best Lawyers® for 2017.

 

CB Logo

We are pleased to announce that our firm has received a First Tier ranking in Portland, Maine in Patent Law by U.S. News – Best Lawyers® for 2017. This is the third year in a row that Caseiro Burke has been recognized as one of the predominant Patent firms in the State of Maine.

According to U.S. News & World Report, the firms included in the 2017 “Best Law Firms” list are recognized for professional excellence with persistently impressive ratings from clients and peers. Achieving a tiered ranking signals a unique combination of quality law practice and breadth of legal expertise.

The 2017 rankings are based on the highest number of participating firms and highest number of client ballots on record. To be eligible for a ranking, a firm must have a lawyer listed in The Best Lawyers in America, which recognizes the top 4 percent of practicing attorneys in the U.S. Over 10,000 attorneys provided more than 800,000 law firm assessments, and over 10,000 clients provided more than 90,000 evaluations.

Ranked firms, presented in tiers, are listed on a national and/or metropolitan scale. Receiving a tier designation reflects the high level of respect a firm has earned among other leading lawyers and clients in the same communities and the same practice areas for its abilities, its professionalism and its integrity.

Awards were given in 74 national practice areas and 122 metropolitan practice areas. One “Law Firm of the Year” is named in each of the 74 nationally ranked practice areas.

. . .

About Caseiro Burke LLC

Caseiro Burke is an intellectual property law firm providing legal services to individuals and businesses around the world. We offer clients creative, cost-effective and reliable legal solutions in all intellectual property matters. Our dedication to the practice of intellectual property law provides our clients with the focus of attention necessary to establish, protect and commercialize their innovations. Whether you are a sole inventor looking for patent protection for your invention, a distillery protecting its brand or a manufacturing company asserting or defending a patent infringement claim, Caseiro Burke will work with you to achieve effective results.

About “Best Law Firms”

The U.S. News – Best Lawyers® “Best Law Firms” rankings are based on a rigorous evaluation process that includes the collection of client and lawyer evaluations, peer review from leading attorneys in their field, and review of additional information provided by law firms as part of the formal submission process. To be eligible for a ranking, a law firm must have at least one lawyer listed in the 21st Edition of The Best Lawyers in America© list for that particular location and specialty.

About U.S. News & World Report

U.S. News & World Report is a digital news information company that empowers people to make better, more informed decisions about important issues affection their lives. Focusing on Education, Health, Personal Finance, Travel, Cars and News & Opinion, www.usnews.com provides consumer advice, rankings, news and analysis to serve people making complex decisions throughout all stages of life. 30 million people visit www.usnews.com each month for research and guidance. Founded in 1933, U.S. News is headquartered in Washington, DC.

About Best Lawyers

Best Lawyers is the oldest and most respected attorney ranking service in the world. For more than 30 years, Best Lawyers has assisted those in need of legal services to identify the attorneys best qualified to represent them in distant jurisdictions or unfamiliar specialties. Best Lawyers lists are published in leading local, regional and national publications across the globe. The Best Lawyers in America list recognizes the very best lawyers in each practice area and metropolitan region in the country.

logo_sm

Defend Trade Secrets Act – What You Need to Know

On May 11, 2016, President Obama signed into law the Defend Trade Secrets Act of 2016 (hereafter, the “DTSA”). While the Economic Espionage Act of 1996 provided federal criminal sanctions for trade secret misappropriation, there was no federal civil remedy available to combat trade secret theft in the United States. Trade secret theft was left to state jurisdictions, which created a variety of issues, including different obligations for trade secret owners.

What is a trade secret? A trade secret is a formula, pattern, compilation, program, code, device, method, technique or process, (1) that has independent economic value, (2) not generally known to the public, (3) not readily ascertainable through proper means and (4) reasonable efforts are taken to maintain its secrecy. For example, the Coca-Cola formula is considered a trade secret because Coca-Cola has gone to great lengths to protect the secrecy of its valuable soda formula. While many have tried, no one has been able to recreate the exact formula.

Under the DTSA, for the first time, an owner of a trade secret may bring a lawsuit in federal court against an individual and/or a company by establishing:

  1. The trade secret was misappropriated;
  2. The trade secret is related to a product or service; and
  3. The product or service is used OR intended for use in interstate or foreign commerce.

The DTSA provides the owner of the trade secret the ability to seek a “civil seizure” of the trade secret without notifying the accused.  This is an enormously powerful remedy available to the owner of the misappropriated trade secret. Stopping others from disseminating the trade secret through this seizure protects the value of the trade secret. Other remedies include injunctive relief, monetary and punitive damages.

If a trade secret has been misappropriated, the owner of that trade secret must file a lawsuit in federal court no more than 3 years from the date the misappropriation was discovered OR should have been discovered by reasonable diligence.

The DTSA has been hailed as a strong step in protecting trade secrets. During the signing of the DTSA, President Obama said:

Unfortunately, all too often, some of our competitors, instead of competing with us fairly, are trying to steal these trade secrets from American companies.  And that means a loss of American jobs, a loss of American markets, a loss of American leadership.

What these members of Congress have done is to, on a bipartisan basis, pass a strong enforcement bill that allows us not only to go after folks who are stealing trade secrets through criminal actions, but also through civil actions, and hurt them where it counts in their pocketbook.

Trade secrets are an important component of any intellectual property portfolio. While patents, trademarks and copyrights have been afforded federal protection and remedies for decades, it is about time trade secrets are afforded the same level of protection. In many cases, however, individuals and/or companies that believe they have a “trade secret” fail to take reasonable steps to ensure the trade secret remains a secret.

One thing we suggest to all our clients is to have an intellectual property audit performed on an annual basis. One aspect of the audit is to assess trade secrets and make sure reasonable steps are taken to maintain secrecy. For example, all companies should require its employees to sign a non-disclosure agreement. That way, the employee is on notice and agrees not to disclose any trade secrets he or she may have learned while employed at the company. The goal of these audits are to prevent your company from ever engaging in litigation; however, if litigation is necessary, individuals and companies now have a federal civil remedy for trade secret theft.

. . .

John M. Burke is a trademark attorney who assists clients in selection, screening, registration, licensing and enforcement of trademarks and service marks. In addition to trademark prosecution and enforcement, John works with clients to identify, manage and license their intellectual property. Through Caseiro Burke’s Litigation Practice, John also provides intellectual property litigation service.

Caseiro Burke is an intellectual property law firm providing legal services to individuals and businesses around the world. We offer clients creative, cost-effective and reliable legal solutions in all intellectual property matters. Our dedication to the practice of intellectual property law provides our clients with the focus of attention necessary to establish, protect and commercialize their innovations. Whether you are a sole inventor looking for patent protection for your invention, a distillery protecting its brand or a manufacturing company asserting or defending a patent infringement claim, Caseiro Burke will work with you to achieve effective results.

Disparaging Trademark Registration Restrictions under the Lanham Act found Unconstitutional

In the last year, the Washington Redskins professional football team had its registered trademark REDSKINS cancelled because on the assertion made by the US Trademark Office that the mark is disparaging under Section 2(a) of the Lanham Act, 15 U.S.C. § 1052(a). However, that may now be reversed.

On December 22, 2015, the United States Court of Appeals for the Federal Circuit held that the “disparagement restriction” under Section 2(a) of the Lanham Act, 15 U.S.C. § 1052(a), violates a person’s First Amendment right to free speech. See In re Simon Shaio Tam, en banc Fed. Cir., No. 2014-1203. In Tam, an Asian musician group, sought to obtained federal trademark protection in THE SLANTS mark, to describe their band. The examining attorney assigned to the group’s trademark application rejected the trademark application, asserting that because THE SLANTS mark had a negative connotation to Asian people. This rejection led to the appeal.

Why is this important? The Federal Circuit, which hears all appeals related to patent and trademark matters, has overturned In re McGinley, 660 F.2d 481 (CCPA 1981), which held that it is not a violation of one’s free speech for the Government to deny federal registration in a trademark. Judge Moore disagreed with this notion and stated:

The government cannot refuse to register disparaging marks because it disapproves of the expressive messages conveyed by the marks. It cannot refuse to register marks because it concludes that such marks will be disparaging to others. The government regulation at issue amounts to viewpoint discrimination, and under the strict scrutiny review appropriate for government regulation of message or viewpoint, we conclude that the disparagement proscription of § 2(a) is unconstitutional.

In short, the Court does not believe the Government has the right to restrict speech because it does not like its meaning of the speech or in this case, a trademark. In addition, the Court was not persuaded by the Government’s argument that federally registered trademarks are considered “government speech.”

This decision has now limited a provision of the Lanham Act, which governs US Trademark Law. It is not clear whether the Government will attempt to appeal to the US Supreme Court. The US Supreme Court has been very active in the last few years regarding US patent law. This case likely opens up the door for registrations in trademarks that the US Trademark Office once considered “disparaging,” including REDSKINS.

If you are interested in reviewing the Court’s decision, please click here.

. . .

John M. Burke is a trademark attorney who assists clients in selection, screening, registration, licensing and enforcement of trademarks and service marks. In addition to trademark prosecution and enforcement, John works with clients to identify, manage and license their intellectual property. Through Caseiro Burke’s Litigation Practice, John also provides intellectual property litigation service.

Caseiro Burke is an intellectual property law firm providing legal services to individuals and businesses around the world. We offer clients creative, cost-effective and reliable legal solutions in all intellectual property matters. Our dedication to the practice of intellectual property law provides our clients with the focus of attention necessary to establish, protect and commercialize their innovations. Whether you are a sole inventor looking for patent protection for your invention, a distillery protecting its brand or a manufacturing company asserting or defending a patent infringement claim, Caseiro Burke will work with you to achieve effective results.

BACK