The Role of Patents in Commercializing USC and UCLA University Research

Universities, including USC and UCLA, have long been engines of scientific discovery and technological innovation, but the path from research innovation to commercial application can be challenging, especially when it comes to navigating the complexities of the patent application process.

Overview of the Patent Protection Framework

Patents play a crucial role in the commercialization of USC and UCLA university research. Patents serve as both protective shields and commercial catalysts that enable academic research to reach the public marketplace.

For context, patents generally provide universities with exclusive rights to their inventions for a specified period, typically 20 years from the filing date. This exclusivity creates a temporary monopoly that allows academic institutions to recoup their research investments and incentivize further innovation and research endeavors. In other words, without U.S. patent protection, competitors could freely copy and commercialize university discoveries, eliminating the financial incentive for companies to invest in the costly process of bringing academic research to market.

In effect, federal patent protections help ensure that universities like USC and UCLA can economically justify investments in research and development without concern to immediate competition.

Technology Transfer and Licensing

Universities typically commercialize their patented technologies through technology transfer offices, which serve as intermediaries between academic researchers and industry partners. These offices evaluate the commercial potential of university inventions, file patent applications, and negotiate licensing agreements with companies willing to develop the technology further.

Licensing arrangements can take various forms, from exclusive licenses that grant a single company the right to develop and market the technology, to non-exclusive licenses that allow multiple companies to use the innovation. The choice depends on factors such as the technology’s development stage, market size, and the level of investment required for commercialization.

Revenue generated from patent licensing provides universities with funding for additional research while offering companies access to cutting-edge innovations they might not have developed internally. This symbiotic relationship has proven particularly successful in fields like biotechnology, pharmaceuticals, and information technology, where academic research often leads to breakthrough discoveries.

Understanding the Bayh-Dole Act

When it comes to navigating the university patent commercialization process, it is important to have an understanding of the Bayh-Dole Act of 1980, which allowed universities to retain ownership of inventions developed with federal funding.

Prior to this legislation, the government held rights to most university research, creating barriers to commercialization since private companies were reluctant to invest in developing technologies they couldn’t exclusively control.

Since Bayh-Dole’s enactment, university patent activity has increased dramatically. For example, the number of patents issued to universities has grown from fewer than 250 annually in the early 1980s to over 6,000 per year at present. This surge has coincided with the emergence of numerous university spin-off companies and the development of major industries built on academic research, including the biotechnology sector.

Looking Forward

The role of patents in university research commercialization continues to evolve as technology advances and global competition intensifies. Universities are increasingly sophisticated in their approach to intellectual property management but should make sure to retain experienced and knowledgeable legal counsel to help develop effective strategies for commercializing innovations and promoting educational and research missions.

Have Questions About the Patent Application Process? Speak to an Experienced Patent Lawyer in Los Angeles Today

If you have questions regarding the patent application process, including applications related to university-led research efforts, then now is the time to speak to an experienced and knowledgeable patent lawyer in Los Angeles with Omni Legal Group. We are a reputable and renowned patent law firm in Los Angeles with lawyers who possess a deep understanding of the complexities associated with IP and patent law. Whether it’s a provisional patent, non-provisional patent, design patent, utility patent, or plant patent application, the intellectual property lawyers at Omni legal Group are ready and able to help.

Schedule a consultation today, call 855.433.2226 or visit www.OmniLegalGroup.com to learn more.

Influencer Collabs and Co-Branding: Trademark Considerations for Los Angeles Creatives

Influencer marketing, particularly in and around Los Angeles, has proliferated rapidly and created new opportunities for brands to reach consumers through authentic, personalized content. However, as influencer collaborations evolve from simple endorsements to complex co-branding opportunities, it is important to be cognizant of applicable trademark laws and related legal issues. Taking trademarks into consideration early in the negotiation process can help the parties involved and mitigate the risk of a costly legal dispute.

The Trademark Landscape in Influencer Marketing

Trademarks serve as source identifiers, distinguishing goods and services in the marketplace. In influencer collaborations, multiple trademark issues can arise when personal brands intersect with commercial entities. Influencers often develop their own trademark rights through consistent use of names, logos, catchphrases, or distinctive visual elements that identify their personal brand. Similarly, companies bring established trademarks that represent years of brand building and consumer recognition.

When these entities collaborate, the resulting partnership must carefully navigate overlapping trademark rights. The challenge intensifies when collaborations involve creating new products, services, or content that incorporates elements from both parties’ trademark portfolios. Without proper legal frameworks, these partnerships can inadvertently create confusion about trademark ownership, usage rights, and future commercial exploitation.

Co-Branding Complexities

Co-branding partnerships between influencers and companies present particularly complex trademark challenges. When an influencer’s personal brand appears alongside a company’s trademark on products or promotional materials, questions arise about who owns the resulting intellectual property and how it can be used in future marketing efforts.

Consider a scenario where a fashion influencer collaborates with a clothing brand to create a signature line. The products may feature the influencer’s name, the company’s logo, and potentially new design elements created specifically for the collaboration. Each of these elements may have distinct trademark implications, requiring careful delineation of ownership rights and usage permissions.

Companies must also consider whether their association with an influencer’s personal brand could dilute their own trademark rights or create unwanted associations. Conversely, influencers risk having their personal brand overshadowed or misrepresented when partnering with larger commercial entities.

Key Contractual Protections

Successful influencer collaborations require comprehensive agreements that address trademark usage, ownership, and protection. These contracts should clearly define how each party’s trademarks can be used during the partnership, including specific guidelines for logo placement, brand messaging, and visual presentation standards.

Licensing provisions must specify the scope, duration, and territorial limits of trademark usage rights. Companies typically grant influencers limited licenses to use their trademarks in approved contexts, while influencers may reciprocate by allowing companies to use their name or likeness in marketing materials. These licenses should include quality control provisions to ensure that trademark usage maintains brand standards and protects the trademark owner’s reputation.

Termination clauses are equally important, establishing how trademark usage will be handled if the partnership ends. This includes provisions for removing trademarked content from social media platforms, discontinuing product sales, and addressing any remaining inventory that features both parties’ trademarks.

Challenges with Enforcement and Monitoring

The digital nature of influencer marketing creates unique enforcement challenges. Social media platforms, websites, and digital content can be difficult to monitor and control, making it challenging to ensure proper trademark usage throughout a collaboration’s lifecycle.

Companies and LA creatives need to proactively establish monitoring systems to track how their trademarks appear in content. In addition, influencers need to protect their personal brand from unauthorized use by third parties seeking to capitalize on their success. This dual monitoring responsibility requires clear communication channels and defined response procedures for addressing trademark misuse.

Why It Makes Sense to Hire a Los Angeles Trademark Attorney

Successful influencer collaborations require proactive trademark planning that helps protect your interests while enabling creative and fruitful partnerships. This is where hiring a skilled and knowledgeable trademark lawyer in Los Angeles can pay dividends. By addressing complex legal issues early in the collaborative process, influencers and companies can focus on creating compelling content while safeguarding their valuable trademark assets for future growth and commercialization opportunities.

Need Help with Legal Issues Related to Collaborations and Co-Branding? Speak to an Experienced Trademark Lawyer in Los Angeles

As you can see, the issues around influencer collaborations and co-branding initiatives can become quite complex, particularly around trademarks and other legal issues. If you are contemplating such a collaboration and are concerned about protecting your IP, then now is the time to speak to an experienced and knowledgeable trademark attorney in Los Angeles with Omni Legal Group. Our legal team is ready and able to assist by assessing your specific situation, researching relevant regulations and case law, and developing a compliance roadmap. We will be there to help you and to answer your questions.

Schedule a consultation today, call us at 855.433.2226 or visit www.OmniLegalGroup.com to learn more.

Intellectual Property and the Spirit of Independence: Why Protecting Your Ideas Is the Modern American Dream

When we think of the Fourth of July, we often picture fireworks, flags, and the birth of a nation. But Independence Day also represents something deeper—the power to think freely, build boldly, and own the fruits of your labor. That spirit of innovation and ownership didn’t stop with the Declaration of Independence. In fact, it continues today in the form of intellectual property (IP) rights—modern tools that protect your ideas, inventions, and brands so you can control and benefit from what you create.

The Founding Fathers understood the importance of protecting ideas. So much so that the U.S. Constitution includes a specific clause—Article I, Section 8, Clause 8—that gives Congress the power “to promote the progress of science and useful arts, by securing for limited times to authors and inventors the exclusive right to their respective writings and discoveries.” In plain English? They believed inventors, artists, and thinkers should have the right to own and protect their work—a radical idea at the time. And it laid the foundation for the U.S. patent and copyright systems we rely on today.

One of the earliest and most famous examples is President George Washington signing the first U.S. patent in 1790. The recipient? A man named Samuel Hopkins, for his method of making potash (a key ingredient in fertilizer and soap). Fast forward to today, and patents are still a cornerstone of American innovation—just ask the creators of the iPhone or life-saving medical technologies. And trademarks? They’re what keep your brand identity—your business name, logo, and reputation—safe from imitators. Think of how recognizable names like Nike®, Apple®, or Coca-Cola® are. Without trademark protection, anyone could use those names and confuse customers.

But here’s the thing—IP isn’t just for big corporations. Whether you’re a startup, a solo entrepreneur, a content creator, or an inventor in your garage, your ideas are valuable. In fact, they’re often your most valuable asset. Registering a trademark, filing for a patent, or protecting your original content with copyright ensures that you decide how your creations are used—not someone else. It’s the modern form of independence: the freedom to control what you build and how it’s used.

So this Independence Day, while we celebrate the freedoms our country was built on, take a moment to think about your own independence as a creator, business owner, or entrepreneur. Are your ideas protected? Are you building your brand on a solid legal foundation? If not, now’s the time to act. At Omni Legal Group, we help protect what matters most—your vision, your voice, and your future.

Safeguard your innovations and embrace the spirit of independence. Call 855.433.2226 or visit www.OmniLegalGroup.com to schedule your consultation today.

Navigating Patent Eligibility for AI Inventions After the USPTO’s AI Guidance Update

The United States Patent and Trademark Office (USPTO) took a bold step in July 2024 issuing important guidance designed to help evaluate AI-related patent claims. Notably, the USPTO guidance takes the position that AI-powered, or AI-influenced, inventions, when claimed appropriately, can be eligible for patent protections.

The USPTO guidance is a tacit acknowledgement that AI-centric patent applications have spiked to the point where targeted analysis on how to address AI-related issues is warranted.  For context, the guidance is designed to help USPTO personnel and stakeholders develop a deeper understanding of the key factors that need to be analyzed when evaluating patent eligibility of AI inventions during proceedings in front of the USPTO. In addition, the USPTO guidance provides a series of AI-specific examples to help clarify how the USPTO will assess the subject matter eligibility for AI inventions.

Overview of the USPTO’s AI Guidance Update

The USPTO’s AI guidance is broken down into five sections. Each section addresses a different aspect of patent eligibility and the USPTO’s AI and emerging technology efforts. Let’s take a look at each section:

Section 1. Overview of Existing Patent Subject Matter Eligibility Guidance

The USPTO makes clear that its existing subject matter eligibility guidance applies to all technologies, including AI inventions. Though, it’s worth noting that the guidance fuses the criteria for eligibility into a single analysis, addressing whether a claimed invention falls into one of the four statutory categories, including:

• Processes
• Machines
• Manufactures, and
• compositions of matter

The guidance also addresses whether the claimed invention is directed to a judicial exception, such as an abstract idea, law of nature, and/or natural phenomena.

Section 2. Evaluation of AI Inventions

The USPTO guidance update provides specific instructions for evaluating AI inventions, including:

• Whether the claimed invention recites an abstract idea; and
• Whether the claimed invention integrates a judicial exception into a practical application.

Section 3. Abstract Ideas and AI Inventions

The USPTO guidance provides insights on how to distinguish between claims that simply involve an abstract idea and claims that recite an abstract idea. This is an important distinction when it comes to AI-centric inventions that often involve abstract ideas and concepts (e.g., mathematical equations and/or methods of organizing types of activities).

Section 4. Practical Application and Improvements

A key consideration in determining subject matter eligibility, according to the USPTO, is whether the claimed invention integrates a judicial exception into a practical application. This can be demonstrated by showing that the claimed invention improves the functioning of a computer or another technology or technical field.

The guidance highlights the importance of claims that provide a particular solution to a problem or a specific way to achieve a desired outcome, rather than merely claiming the idea of a solution. For example, claims to a rule-based system for animating lip synchronization and facial expressions in three-dimensional characters were found to improve existing technological processes and were thus eligible.

Section 5. AI-Assisted Inventions

The USPTO guidance clarifies that the method of invention creation, including the use of AI, is not a consideration in the subject matter eligibility analysis. Nevertheless, patent protection should only be sought for AI-assisted inventions where an individual, or individuals, made a significant contribution to the claimed invention.

Key Takeaways from the USPTO Guidance

Overall, the USPTO’s AI guidance highlights the fact that AI claims must go beyond mere data processing steps by including additional elements that result in tangible and practical outcomes. Viable claims need to emphasize how the integration of AI leads to specific technological advancements. For example, an applicant who can demonstrate that an AI model improves the functionality or performance of a system can strengthen their claim that the invention provides a practical utility, which is necessary for patent eligibility.

Have Questions? Contact an Experienced Patent Lawyer in Los Angeles

If you have questions about patent application process for an AI-centric invention, then now is the time to speak to an experienced and knowledgeable patent lawyer in Los Angeles with the Omni Legal Group. We are a respected patent law firm in Los Angeles and understand the complexities of IP and patent law. Whether it’s a provisional patent, non-provisional patent, design patent, utility patent, or plant patent application, the lawyers at Omni legal Group are ready and able to help.

Schedule a consultation today, call 855.433.2226 or visit www.OmniLegalGroup.com to learn more.

The ‘Baby Birkin’ NFT and the Legal Scrutiny on Digital Fashion

Non-fungible tokens (NFTs) associated with digital artwork, pictures, trading cards, music, and online gaming, have recently exploded in popularity. NFTs came onto the scene around 2021 and are continuing to grow in prominence within the Metaverse. A prime example of NFTs popularity, and value, can be found in the “Baby Birkin” NFT. For context, the “Baby Birkin” NFT was an animation of a baby growing in a Hermès Birkin bag. This NFT was recently sold in a basic space auction for the equivalent of $23,500, according to Vogue Business.

A notable aspect of this auction is the fact that the artistic NFT was not affiliated with Hermès. The NFT was created by two Los Angeles-based creatives Mason Rothschild and Eric Ramirez. Despite the NFT using the popular Birkin brand name and style, Hermès did not receive a portion of the auction proceeds. This has raised an array of important questions and concerns around the interplay between NFTs, copyright law, trademark law, and general protections for intellectual property.

Before we deep dive into some of these issues, let’s clarify some core concepts around NFTs.

Overview of NFTS

Non-fungible tokens (NFTs) are assets like artworks, digital content, or videos that have been tokenized via a blockchain, according to Investopedia. These tokens contain unique identification codes created from metadata via an encryption function. They are then stored on a digital ledger, while the assets themselves are stored in other locations. In effect, the link between the token and the asset is what makes them unique and provides a level of value.

NFTS and Digital Fashion

The use of NFTs is becoming quite common in the digital fashion sector. For example, users on digital fashion platforms have made and sold items that appear to be created by luxury brands, but without brand participation. This raises important legal questions around ownership and IP protections. Many people are concerned that such sales of branded digital items may violate intellectual property protections when a particular brand has nothing to do with creation and sale of the digital asset.

The rules and regulatory framework around physical counterfeits are relatively clear. However, the rules in the metaverse are not so clear. There are open questions around who actually owns the IP on a digitally created or mutated physical product.

Many companies operating in the physical world with manufactured physical products have legitimate concerns around the unauthorized use of their brand image and likeness within the metaverse.

Some brands, such as Gucci, have opted to proactively partner with digital platforms and creators to design digital clothing. Whether other brands follow suit or decide to take the position that such digital creations are effectively counterfeits remains an open question.

Contact an Experienced Trademark and Copyright Attorney in Los Angeles

As you can see, the legal issues around NFTS (including in digital fashion) are complex and novel. If you are concerned about protecting your IP, or have questions around launching an NFT, then now is the time to speak to an experienced and knowledgeable trademark and copyright lawyer in Los Angeles with the Omni Legal Group. Our legal team is ready and able to assist by assessing your specific situation, researching relevant regulations and case law, and developing a compliance roadmap. We will be there to help you and to answer your questions.

Schedule a consultation today, call us at 855.433.2226 or visit www.OmniLegalGroup.com to learn more.

IP Challenges in the Video Game Industry: What Developers Should Know

The video game industry is booming, but with massive creativity comes equally massive legal complexity. Behind every hit game—whether it’s a triple-A blockbuster like The Legend of Zelda or an indie darling like Stardew Valley—there are layers of intellectual property (IP) involved: storylines, character designs, code, music, branding, and more. For developers, protecting these assets (and avoiding legal landmines) isn’t just smart—it’s essential.

Copyrights: It’s More Than Just the Code

Copyright protects original creative works, and in video games, that includes artwork, music, dialogue, and even in-game cinematics. Developers might think, “I wrote the code, so I own the game,” but it’s not always that simple. If you’re working with collaborators, freelancers, or using pre-made assets (like royalty-free music), you need to clearly document who owns what. One famous case involved Fortnite being sued for allegedly copying real-life dance moves (like the “Carlton” from The Fresh Prince of Bel-Air)—a reminder that even short animations can raise copyright questions.

Trademarks: Names, Logos, and Game Titles Matter

Trademarks protect brand identity—things like your game’s name, logo, or slogan. This is what helps your game stand out in a crowded marketplace. But beware: naming your new fantasy game something too close to Elder Scrolls might land you in legal trouble. Bethesda, the company behind Skyrim, once challenged another game developer over the use of the word “Scrolls.” If you’re launching a new title, do a thorough trademark search before you invest in merch, ads, or a splashy game trailer.

Fan Art, Mods, and UGC: Where It Gets Messy

Many developers embrace fan-created content like mods, art, or fan fiction—but there’s a legal gray zone. While fan enthusiasm is great for community building, it can also blur IP lines. Nintendo, for example, is known for aggressively protecting its IP and shutting down fan games. Developers should have clear terms of use for modding and user-generated content (UGC) to avoid confusion and maintain control over their brand while still engaging fans.

Licensing and Collaborations: Get It in Writing

Whether you’re licensing a popular music track for your game or collaborating with an influencer to create a skin or character, always formalize these relationships in writing. One of the best examples? Grand Theft Auto includes dozens of licensed songs on its in-game radio stations. If those licenses expire, Rockstar has to remove them from future editions of the game. Developers—big or small—should make sure all licenses (art, music, voice acting) are crystal clear and cover the full intended use.

Final Boss: Legal Protection Is Part of the Game

For game developers, IP law can feel like a hidden level with too many traps. But ignoring it can mean takedown notices, lawsuits, or losing control of your own creation. Whether you’re a solo coder or part of a growing studio, it’s worth consulting an IP attorney early in the process. After all, in the high-stakes world of game development, protecting your creative work might be the difference between leveling up—or getting game over.

Protect your creative assets with expert legal guidance. Call us today at 855.433.2226 or visit www.OmniLegalGroup.com to schedule your consultation and safeguard your game development journey.

Emerging Trends in Copyright Law: What Creators Should Know

In today’s digital-first world, creators are everywhere—from TikTok dancers and YouTube filmmakers to indie game developers and newsletter writers. But as the content landscape evolves, so does the law that protects it. Copyright law is no longer just about books and music; it’s rapidly adapting to AI-generated content, memes, NFTs, and global sharing platforms. If you’re a creator in 2025, here’s what you really need to know about the latest trends.

AI and Copyright: Who Owns the Output?

One of the hottest (and most confusing) issues in copyright today is artificial intelligence. If you use AI to help write a song or generate an image, who owns the result—you or the AI platform? The U.S. Copyright Office recently made it clear that only human-generated content is eligible for copyright protection. For example, if a comic book is created using AI-generated art with minimal human input, the copyright may not fully apply. So, if you’re using AI tools, make sure your role is clear and creative—don’t rely solely on machines if you want full rights.

The Rise of Remix Culture—and Legal Pushback

Creators today love to remix, reuse, and mash up existing content. But that comes with risk. Just ask TikTokers who’ve had their dance routines or song snippets pulled for copyright claims. While “fair use” exists, it’s a legal gray area and doesn’t always protect you. In one high-profile case, musician Lizzo faced a lawsuit over alleged sampling in her song “Truth Hurts”—a dispute that hinged on whether reused lyrics were transformative or copied. If you’re sampling, referencing, or remixing others’ work, it’s wise to get clearance or legal advice.

Streaming and Licensing Are Getting Stricter

Streaming platforms are tightening up copyright enforcement, and automated bots don’t always get it right. Whether you’re live-streaming a video game or using background music in a vlog, platforms like YouTube and Twitch can flag you—even for short clips. Indie artists have also started pulling music from platforms like TikTok when licensing deals fall through, as seen in recent disputes involving Universal Music Group. This trend means creators need to be extra careful about what media they include in their content and consider royalty-free or properly licensed alternatives.

NFTs and Digital Ownership

While the NFT craze has cooled, questions around copyright and digital collectibles remain. Many creators assumed selling an NFT of their artwork automatically gave buyers full rights—wrong! Copyright stays with the creator unless it’s explicitly transferred. In fact, some high-profile NFT buyers were surprised to learn they couldn’t legally reproduce or profit from the artwork they “owned.” If you’re minting, selling, or buying NFTs, make sure your copyright rights (or limitations) are clearly spelled out.

The Bottom Line: Stay Informed and Stay Protected

Copyright law is changing quickly—and it’s not just for lawyers anymore. Whether you’re creating content for fun, profit, or both, understanding your rights (and limits) can help you stay ahead of disputes and protect your work. When in doubt, consult a copyright attorney who can help you navigate gray areas and set your creative business up for success. Because in the content economy, protecting your ideas is just as important as creating them.

Stay ahead of the curve in copyright protection. Call 855.433.2226 or visit www.OmniLegalGroup.com to schedule your consultation and safeguard your creative work today.

Patent Infringement: Common Myths and Misconceptions—What Businesses Really Need to Know

When it comes to patents, there’s a lot of confusion floating around—especially when it comes to what counts as infringement. From Silicon Valley startups to small Etsy shops, businesses often misunderstand their rights (and risks). In this blog post, we’re clearing the air and breaking down some of the most common myths about patent infringement—no legal jargon required.

Myth #1: “If I change the product a little, I’m safe.”

Not so fast. Even small changes to a patented invention can still land you in hot water. U.S. patent law looks at whether your product performs substantially the same function in substantially the same way to achieve the same result. A famous example? Apple vs. Samsung. Samsung tweaked some design features on its smartphones, but Apple successfully argued in court that Samsung’s devices still infringed on key utility and design patents. The result? A billion-dollar judgment (later reduced, but still hefty). Moral of the story: Slight tweaks don’t always keep you out of the courtroom.

Myth #2: “If there’s no patent number on it, it’s not protected.”

It’s a common belief that if something isn’t labeled with a patent number, it must be up for grabs. That’s a risky assumption. A patent owner isn’t required to mark every product with the patent number—especially in the digital space. Infringing without knowing doesn’t always get you off the hook, either. Courts can still impose damages, especially after you’re notified. Businesses should do their homework before launching a product, not after a cease-and-desist letter lands in their inbox.

Myth #3: “Patents are only for big companies.”

False. Some of the most valuable patents come from small inventors and startups. Take Spanx, for example—Sara Blakely patented her unique shapewear design early on and used that IP protection to build a billion-dollar brand. Enforcing your patent rights isn’t just for corporate giants; it’s a crucial business tool for entrepreneurs, too. If someone copies your invention, you have legal remedies, and sometimes, the threat of legal action is enough to stop copycats in their tracks.

So what should you actually do?

If you’re launching a new product or think someone’s copying yours, talk to a patent attorney before making assumptions. Don’t rely on myths or what you read in forums. Understanding your rights—and your risks—can protect your company, your creativity, and your future. In today’s market, where innovation is everything, knowing the truth about patent infringement is more than smart. It’s essential.

Need help reviewing your patent strategy or responding to a potential infringement issue? Our team is here to help you cut through the confusion and protect what you’ve worked hard to build.

Schedule a consultation today, call 855.433.2226 or visit www.OmniLegalGroup.com to learn more.

How to Avoid Paying Extra Fees in Connection with Trademark Registration Maintenance

An important aspect of trademarks that many people may not realize is that they are use-based rights. Basically, this means a trademark is only entitled to be registered if the mark is actually being used. Likewise, a trademark registrant needs to continue to use the mark in commerce in order to maintain registration and must take action to renew a trademark registration at specific points in time (e.g., at year 5, 10, 20, and so forth). When reaching these milestones, trademark owners are obligated to submit specimen materials showing that the mark is still in use in interstate commerce.

For many years, trademark renewals were on a quasi-honor system basis whereby a trademark owner needed only submit one specimen showing use in commerce per each registered class. However, in an effort to crack down on trademark squatting, the United States Patent and Trademark Office (USPTO) is now actively conducting quality checks at random that require trademark owners to submit additional specimen to show that all goods and/or services in specified classes are still in use.

In addition, the USPTO instituted a fee to combat trademark squatting. The fee could be considered a quasi-fine. For example, if a trademark owner is required to delete goods, services, or classes in response to a USPTO quality check, the agency will impose a $250 per class fee.

USPTO Guidance on Trademark Maintenance Fee

The USPTO advised that there are two ways to avoid paying the $250 fee:

• delete the goods, services, or classes when filing your Section 8 or 71 Declaration: or
• file a Section 7 Request to Amend a registration prior to submitting a Section 8 or 71 Declaration.

If the Section 7 Request to Amend a registration is filed prior to filing a Section 8 or 71 Declaration and the only amendment requested is the deletion of goods, services, and/or classes, the Section 7 Request to Amend can be submitted for free.

The USPTO has indicated that the goal of imposing a fee for deletions made after a Section 8 or 71 Declaration is filed and before the Declaration is accepted is to strengthen the integrity of the trademark by securing more accurate and up to date information from the trademark owner.

USPTO Issues Trademark Management Best Practices

The USPTO issued guidance regarding best practices aimed at avoiding the $250 fee for certain deletions. These best practices include:

• creating a checklist for evaluating and confirming the use of the trademark in commerce with registered goods and services;
• maintaining notes regarding the people and records utilized to obtain this information; and
• retaining a record of evidence of your mark’s current use in commerce, such as photos of each good bearing the trademark, printouts or screenshots of supporting webpages with the date and URL, and copies of print advertising or promotional materials.

Adhering to these best practices help provide the information necessary to determine whether certain goods, services, or classes should be left off a Section 8 or 71 Declaration, especially if followed when a Section 8 or 71 Declaration deadline is approaching. Following the best practices is also helpful when a Section 8 or 71 Declaration deadline is far off, as the Section 7 Request to Amend a registration is free to file when done for the purpose of deleting goods, services, or classes from a registration, which offers protection in the future from having to pay the new $250 filing fee for having to delete certain goods, services, or classes after a Section 8 or 71 Declaration has been filed.

Have Questions? Contact an Experienced Trademark Attorney in Los Angeles

If you have questions about effective trademark maintenance, then now is the time to speak to an experienced and knowledgeable trademark lawyer in Los Angeles with the Omni Legal Group. Our legal team is ready and able to assist by researching your trademark, filing your federal trademark application, ensuring a smooth process, and assist with maintaining your mark. We will be there to help guide you through the entire trademark registration and maintenance process.

Schedule a consultation today, call 855.433.2226 or visit www.OmniLegalGroup.com to learn more.

How to Assess a Potential Infringement of a Utility Patent

If your company received a threatening “cease and desist” letter from a competitor claiming to own a patent that prevents you from selling your product (or demands a patent licensing fee to continue your sales), then now is the time to proactively assess the situation to determine if there is a viable infringement claim.

Below is a summary of some notable considerations that generally go into a proper patent infringement analysis.  For example, the specific claims are key in a patent infringement analysis. The claims are generally located at the end of a patent, which comes after the patent’s front page, drawings, and written description. Following the drawings comes a specification containing a written description of the invention. The written description is required to set forth “the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same.

Meaning and Scope of the Patent Claims

One of the primary components of an infringement analysis is assessing the meaning and scope of the claims (i.e., the meaning and scope of what’s recited in the consecutively numbered claim at the end of the specification).

It’s well established that a patent’s claims define the invention to which the patent holder is entitled the right to prevent others from practicing. In claim construction, the words of the claims are generally given their ordinary and customary meaning as they would be understood by “a person of ordinary skill in the art” at the time of the invention.

Compare the Construed Claims to The Accused Product or Method

Another important component of a proper patent infringement analysis is comparing each patent claim – as construed – to the accused product or method. The proper infringement analysis asks whether the accused product or method contains every claimed element of the patented invention—or the equivalent of every claimed element. This is commonly referred to as the “all-elements rule.” Though, it is important to note that only one claim needs to be infringed for liability to attach. For example, if a patent contains 20 claims, infringement can occur if the “all-elements rule” is satisfied for just a single claim.

In-Depth Knowledge of Patent Law is Important

As you can see, conducting a detailed utility patent infringement analysis involves more than simply asking: “is my product the same as what’s shown in this patent?” Properly assessing utility patent infringement risks requires careful and informed study. This is where retaining the services of an experienced and knowledgeable patent attorney can pay dividends.

Have Questions? Speak to an Experienced Patent Attorney in Los Angeles

If you have questions about properly analyzing a potential patent infringement, then take action by contacting the experienced and reputable Los Angeles patent attorneys at Omni Legal Group. We are an established patent law firm in Los Angeles and understand the complexities of IP and patent law. Whether it’s a provisional patent, non-provisional patent, design patent, utility patent, or plant patent application, Omni legal Group is ready and able to help.

Schedule a consultation today, call 855.433.2226 or visit www.OmniLegalGroup.com to learn more.