Patent and Trademark Archives - Page 2 of 6

Provisional Patent Applications in California: Strategic Advantages and Common Mistakes

California is home to one of the most dynamic innovation environments in the world. From Silicon Valley’s technology startups to San Diego’s thriving biotech sector and Los Angeles’s growing community of entrepreneurs and creators, new inventions are constantly emerging. In such a fast-paced landscape, securing intellectual property protection early can make the difference between leading a market and losing ground to competitors. For many inventors and startups, provisional patent applications offer an appealing way to establish an early filing date while continuing to refine an invention. However, while provisionals are often marketed as a simple and inexpensive first step, using them effectively requires careful strategy and proper legal guidance. Understanding when a provisional patent application truly adds value, and how to avoid mistakes that could weaken future patent protection, is essential for inventors seeking to protect their ideas and build lasting competitive advantage.

When Provisional Applications Make Strategic Sense

A provisional patent application establishes an early filing date while giving you twelve months to refine your invention before filing a nonprovisional application. This approach makes strategic sense in several scenarios.

For California inventors racing to secure funding, a provisional application provides “patent pending” status that can reassure investors while you continue developing your technology. Startups preparing for pitch competitions or demo days can file provisionally to protect their innovations before public disclosure.

Provisional applications also benefit inventors still refining their designs. If you have a working concept but anticipate improvements over the coming months, a provisional filing preserves your priority date while you optimize the invention. This flexibility is particularly valuable in California’s fast-moving tech sectors where products evolve rapidly.

Additionally, if you’re testing market viability before committing to the expense of a full patent prosecution, a provisional application offers a cost-effective way to secure your filing date while you gauge commercial interest.

Common Filing Mistakes That Weaken Protection

Despite their apparent simplicity, provisional applications require careful preparation. Many California inventors make critical mistakes that undermine their patent protection.

The most damaging error is filing an inadequate disclosure. Some inventors submit bare-bones descriptions, believing they can add details later. However, your nonprovisional application can only claim priority for subject matter disclosed in the provisional. Insufficient technical detail, missing drawings, or vague descriptions create gaps that competitors can exploit.

Another common mistake is treating the provisional as a placeholder rather than a serious legal document. While provisional applications don’t require formal claims, they must enable someone skilled in your field to make and use the invention. California inventors working in complex technologies like software, biotechnology, or medical devices must provide comprehensive technical specifications.

Many inventors also fail to file the nonprovisional application within the twelve-month deadline, permanently losing their priority date. There are no extensions for this deadline. Missing it means starting over.

Provisional Applications as Part of a Broader Strategy

Provisional applications should never be viewed as standalone solutions. They’re steppingstones in a comprehensive patent strategy.

Use the provisional filing period strategically. Conduct prior art searches, refine your invention, assess commercial viability, and prepare a stronger nonprovisional application. Many successful California companies file provisionals while simultaneously developing their product roadmap and identifying additional patentable features.

Consider your international strategy early. If you plan to file abroad, the provisional application’s priority date benefits your Patent Cooperation Treaty (PCT) application, but you must file the PCT within twelve months.

Finally, work with experienced patent counsel. While provisional applications cost less than nonprovisional filings, investing in professional preparation ensures your provisional provides meaningful protection rather than creating a false sense of security.

For California inventors, provisional patent applications are powerful tools, when used correctly. They provide breathing room to refine innovations, attract investment, and build comprehensive patent portfolios. However, they require thoughtful preparation and must fit within a larger intellectual property strategy to deliver lasting protection.

Have Questions? Speak with an Experienced Los Angeles Patent Lawyer Today

A provisional patent application can be a powerful first step in protecting your invention but only if it is prepared and filed strategically. Many inventors assume that a provisional filing is a simple placeholder, only to discover later that missing technical details, incomplete disclosures, or poor documentation weaken their ability to claim priority when filing a full patent application. In California’s highly competitive innovation landscape, where new technologies and products move quickly from concept to market, having a well-structured patent strategy from the beginning can make a critical difference in protecting your intellectual property and attracting investment.

At Omni Legal Group, our experienced Los Angeles patent attorneys work closely with startups, entrepreneurs, researchers, and established companies to help them navigate every stage of the patent process. From evaluating whether a provisional filing is the right strategy to preparing detailed patent disclosures and developing long-term patent portfolio plans, our team focuses on protecting the innovations that drive your business forward. We also assist clients with inventorship analysis, invention assignment agreements, contractor and employee IP provisions, and compliance with California’s unique legal requirements that can affect patent ownership and enforcement.

If you are developing a new product, technology, or process, now is the time to ensure your intellectual property is properly protected. Taking proactive legal steps early can help you secure priority rights, strengthen your patent applications, and avoid costly disputes or missed opportunities down the road.

Contact Omni Legal Group today to schedule a confidential consultation with a trusted patent lawyer in Los Angeles. Call 855.433.2226 to speak with our legal team and learn how we can help protect your invention, strengthen your patent strategy, and position your innovation for long-term success.

Common Reasons USPTO Rejects Trademark Applications Filed by California Businesses

California businesses file thousands of trademark applications every year in an effort to secure exclusive rights to their brand names, logos, slogans, and product identities. In a state driven by innovation, entertainment, technology, fashion, and e-commerce, brand identity is often one of a company’s most valuable assets. But despite the importance of trademark protection, many applications are rejected by the United States Patent and Trademark Office (USPTO), sometimes after businesses have already invested heavily in marketing, packaging, website development, and advertising.

A trademark rejection is more than a bureaucratic setback. It can delay product launches, disrupt fundraising efforts, force costly rebranding, and create legal uncertainty around your most important brand assets. In highly competitive California markets, where similar businesses often operate in overlapping industries, the risk of conflict or refusal is even greater.

Understanding why the USPTO rejects trademark applications, and how to proactively avoid those pitfalls, is not just a legal technicality. It is a strategic business decision that can protect your investment, preserve your brand equity, and prevent expensive course corrections down the road. With proper planning and experienced trademark counsel, many common rejections can be anticipated and avoided before they ever become obstacles.

Likelihood of Confusion

The most frequent rejection ground is likelihood of confusion with an existing registered or pending trademark. The USPTO examines whether consumers might confuse your mark with another already in use for related goods or services.

Many California entrepreneurs underestimate how broadly the USPTO interprets “related” goods and services. Your craft brewery’s name might conflict with an existing winery’s trademark, or your tech startup’s brand could be too similar to a software company in a different niche. The marks don’t need to be identical. They simply need to be similar enough that consumers might believe they share a common source.

California’s crowded marketplace makes this particularly challenging. With countless businesses operating in overlapping industries, finding truly distinctive marks requires comprehensive searching beyond a simple Google query or USPTO database check.

Merely Descriptive Marks

The USPTO frequently rejects marks that merely describe the goods or services offered. If your mark directly describes a feature, quality, ingredient, or characteristic of your product, it likely won’t qualify for registration.

California businesses often stumble here with seemingly clever names. “Golden State Solar Panels,” “San Diego Fresh Seafood,” or “Quick California Delivery” all face rejection because they simply describe what the business does or where it operates. These marks don’t distinguish your business from competitors. Rather, they describe what any similar business might offer.

Descriptiveness rejections frustrate applicants who’ve already invested in branding, signage, and marketing materials. The mark might work commercially, but federal registration requires distinctiveness that sets you apart.

Geographically Descriptive Marks

Related to descriptiveness, the USPTO rejects marks that are primarily geographically descriptive. “Silicon Valley Software” or “Napa Valley Wines” describe where the goods originate rather than identifying a unique source.

California applicants frequently encounter this obstacle because the state’s regional identities carry commercial appeal. However, unless your mark has acquired distinctiveness through extensive use, typically requiring five years of substantially exclusive and continuous use, geographic descriptiveness will bar registration.

Ornamental Refusals

California’s fashion, apparel, and lifestyle brands often face ornamental refusals. If your design or slogan appears on products merely as decoration rather than as a brand identifier, the USPTO will refuse registration.

Phrases on t-shirts, decorative logos on accessories, or stylized text that consumers perceive as ornamentation rather than source identification commonly receive this rejection. The challenge is proving that consumers view your mark as identifying the brand, not just embellishing the product.

Improper Specimens of Use

One of the most common and avoidable reasons the USPTO rejects trademark applications is the submission of improper specimens of use. A specimen is not just a sample image; it is legal proof that your trademark is actually being used in commerce in connection with the goods or services listed in your application. If the specimen does not clearly demonstrate real-world commercial use, the application will be refused.

For goods, the mark must appear directly on the product, its packaging, labels, tags, or a legitimate point-of-sale display. Simply placing a logo on a website without showing the product available for purchase may not be enough. For services, the specimen must show the mark used in the actual marketing or offering of the services, such as on a live website, brochure, or advertisement where customers can engage or request the service.

Common mistakes include submitting mockups, digitally altered images, “coming soon” webpages, incomplete websites, or promotional materials that reflect an intent to use the mark rather than proof of current use. The USPTO carefully scrutinizes specimens, and even small inconsistencies can trigger an Office Action. These technical errors may seem minor, but they can lead to delays, additional legal costs, or even abandonment of the application if not corrected properly.

Ensuring your specimen meets USPTO standards from the outset can prevent unnecessary setbacks and keep your registration process moving forward smoothly.

How Trademark Attorneys Prevent Rejections

Experienced trademark attorneys conduct comprehensive clearance searches that go beyond surface-level database queries, identifying potential conflicts before you file. They help you select inherently distinctive marks or develop strategies for descriptive marks, such as disclaiming unregistrable portions or pursuing alternative protection.

Attorneys also prepare applications with proper classifications, accurate descriptions of goods and services, and appropriate specimens demonstrating actual use. When rejections occur, they craft persuasive responses addressing concerns raised by the USPTO.

For California businesses building valuable brands, investing in professional trademark counsel from the start prevents costly rejections, refiling fees, and potential rebranding expenses down the road.

Have Questions? Contact an Experienced Los Angeles Trademark Attorney

A trademark rejection is not just a paperwork issue, it can disrupt your launch timeline, weaken investor confidence, and force expensive rebranding efforts at the worst possible time. In California’s competitive business landscape, your brand is often your most valuable asset. Protecting it properly from the outset is far more cost-effective than fixing problems later.

Whether you are launching a startup in Los Angeles, expanding an established brand, or rebranding after growth, a proactive trademark strategy is essential. The right legal guidance can help you select a strong, distinctive mark, conduct comprehensive clearance searches, avoid common USPTO refusals, and respond effectively if an Office Action is issued. Filing without a clear strategy may seem faster or less expensive upfront but mistakes can cost far more in the long run.

At Omni Legal Group, our experienced Los Angeles trademark attorneys work with entrepreneurs, creators, technology companies, fashion brands, entertainment businesses, and growing enterprises across California. We take a strategic, business-focused approach to trademark protection, helping clients not only secure registrations, but also build brand portfolios that support long-term expansion, licensing, and enforcement.

If you are considering filing a trademark, or have already received a USPTO rejection, now is the time to speak with knowledgeable legal counsel. Early intervention can save time, preserve your brand investment, and strengthen your position before small issues become major setbacks.

Contact Omni Legal Group today to schedule a confidential consultation with a trusted Los Angeles intellectual property attorney. Call 855.433.2226 to speak with our legal team and take the next step toward securing, protecting, and strengthening your brand with confidence.

To learn more, please visit www.OmniLegalGroup.com.

Social Media Handles vs. Trademark Rights What You Need to Know

In today’s digital world, your social media handle is more than just a quirky username, it can be a powerful extension of your brand. But what happens when your favorite handle is already taken, or worse, someone else is using your business name to mislead customers? This is where trademark law steps in offering protection, but it doesn’t always play out as straightforwardly as you might think.

Take the case of @Starbucks on Twitter. Starbucks, the global coffee giant, obviously holds trademark rights to its brand name. But imagine a scenario where someone else had scooped up the handle first and started selling coffee-related merchandise under the Starbucks name. While Starbucks’ trademark gives them a strong legal position, reclaiming the social media handle requires navigating both trademark law and the platform’s own policies, a process that can be surprisingly complex. Social media handles don’t automatically fall under trademark protection, but if the handle is being used in a way that causes confusion, that’s when the law steps in.

Pop culture gives us plenty of examples too. Remember when Taylor Swift tried to secure her name across multiple platforms early in her career? While her trademarked name gave her legal backing, she still had to negotiate with platforms and users to gain control of certain handles. It’s a reminder that even celebrities with strong brands face practical hurdles online. The lesson for smaller businesses and entrepreneurs is clear: think ahead and secure your handles early, your digital identity can be as valuable as your physical one.

Trademark law primarily aims to prevent consumer confusion. That means if someone is using your brand name as a handle to sell competing products, impersonate your brand, or divert your customers, you likely have a case. But if it’s a fan account or a parody handle, platforms and courts often protect free speech, making the line blurry. For businesses, this highlights the importance of not only registering trademarks but also actively monitoring how your brand appears across social media.

At the end of the day, your social media handle is part of your brand’s identity, and protecting it requires a mix of proactive registration, legal awareness, and sometimes a little negotiation. Whether you’re a startup, a celebrity, or a growing business, understanding the intersection of trademarks and social media is key to maintaining control over your name and reputation online. In the digital age, your handle isn’t just your name, it’s your brand’s first impression.

Protect Your Brand Where It Matters Most

In today’s marketplace, your brand lives as much online as it does in the real world. A social media handle can drive customer trust, shape public perception, and influence purchasing decisions in seconds. But without proper trademark protection and proactive monitoring, that digital identity can be misused, diluted, or even taken from you. The difference between owning your brand and fighting for it often comes down to early legal strategy.

At Omni Legal Group, our experienced Los Angeles trademark attorneys help businesses secure, enforce, and defend their brand rights both online and offline. From trademark registration and clearance searches to social media disputes and platform takedown strategies, we work with startups, entrepreneurs, and established brands to ensure their digital presence is protected.

If you’re launching a new brand, facing a handle dispute, or concerned about online impersonation, now is the time to act.

Contact Omni Legal Group today to schedule a confidential consultation with a trusted Los Angeles IP lawyer. Call 855.433.2226 and take the next step toward protecting your name, your reputation, and your brand’s future.

Patent Ownership Disputes in Startups: Who Really Owns the Invention?

Patent ownership disputes are among the most damaging and overlooked risks facing startups, often surfacing at the worst possible moment. A company may appear poised for rapid growth, outside investment, or acquisition, only to discover that its most valuable asset is legally uncertain. When multiple founders, employees, or contractors claim rights to the same invention, the resulting conflict can stall funding rounds, derail partnerships, and in some cases bring an otherwise viable business to a standstill.

These disputes rarely stem from bad intentions. More often, they arise from early-stage assumptions, informal arrangements, or rushed development timelines where legal ownership was never clearly defined. In California’s fast-moving startup ecosystem, founders frequently prioritize product development and market traction, leaving intellectual property documentation for “later.” Unfortunately, later is often too late. Investors, acquirers, and strategic partners will not move forward without clear, defensible ownership of core patents and technology.

Understanding who legally owns an invention, when ownership vests, and how California law affects IP assignment is critical for any founder building a technology-driven company. With proper planning, patent ownership disputes are almost always preventable, but without it, they can become one of the most expensive and disruptive challenges a startup will ever face.

How Patent Disputes Emerge

The root cause of most patent ownership disputes is surprisingly simple: unclear or missing agreements about who owns what. Many founders assume that because they’re building a company together, or because someone is working “for” the startup, the company automatically owns any inventions created. This assumption can prove catastrophically wrong.

Under default intellectual property law, inventors own their inventions. If a founder develops technology before formally assigning rights to the company, they may retain ownership. If an employee creates something outside the scope of their employment, they might have legitimate ownership claims. Contractors and consultants who build key technology without proper agreements can walk away, owning the intellectual property they created, even if the startup paid them for their work.

The problem intensifies when relationships sour. A departing co-founder, disgruntled employee, or contractor who feels undercompensated may suddenly assert ownership rights to critical patents. Even if these claims ultimately fail in court, the legal process is expensive and creates uncertainty that investors find unacceptable. Many startups have lost funding rounds or acquisition opportunities because of unresolved IP ownership questions.

California’s Unique Considerations

California businesses face specific legal nuances. While California Labor Code Section 2870 protects employee inventions developed entirely on their own time without company resources and unrelated to the company’s business, this protection creates gray areas that can spawn disputes. Employers cannot require blanket assignment of all employee inventions, which means agreements must be carefully crafted to comply with state law while still protecting company interests.

Additionally, California courts scrutinize non-compete clauses and IP assignments more carefully than many other states, making proper documentation even more critical. An overly broad assignment agreement might be partially invalidated, leaving ownership questions unresolved precisely when clarity matters most.

Prevention Through Proper Planning

Preventing patent ownership disputes requires proactive legal planning from day one. Every founder should execute a comprehensive invention assignment agreement that transfers all IP rights related to the business to the company, ideally before substantial development work begins. These agreements should clearly define what inventions are covered while respecting California’s statutory protections for employee inventions.

Employee offer letters and employment agreements must include invention assignment clauses that specify the company owns work-related inventions created during employment. For California businesses, these clauses should explicitly reference Section 2870 and clarify that the assignment doesn’t extend to protected inventions.

Contractor and consultant agreements require particular attention. These agreements should include explicit work-for-hire provisions and assignment language, making clear that all deliverables and related IP belong to the company. Never assume contractor work is automatically owned by your business.

Finally, document everything. Keep records of who contributed to inventions, when key innovations occurred, and what resources were used. This documentation becomes invaluable if disputes arise later.

Patent ownership disputes are preventable problems. With clear agreements, proper legal planning, and attention to California’s specific requirements, startups can build on solid IP foundations rather than legal quicksand.

Have Questions? Speak to an Experienced Los Angeles Patent Lawyer Today

Patent ownership disputes can place your entire business at risk, especially when core technology, investor confidence, or future acquisition opportunities are on the line. Whether a dispute arises between co-founders, employees, contractors, or outside collaborators, resolving ownership issues quickly and correctly is critical to protecting your company’s intellectual property and long-term value.

At Omni Legal Group, our experienced Los Angeles patent attorneys work closely with startups, entrepreneurs, and established businesses to prevent and resolve patent ownership disputes before they escalate. We help clients clarify inventorship, draft and enforce invention assignment agreements, review employment and contractor contracts, and ensure compliance with California’s unique IP and labor laws. When disputes do arise, our legal team provides strategic guidance aimed at minimizing disruption, preserving business momentum, and restoring clarity to IP ownership.

If you are building, scaling, or restructuring a business in California, now is the time to ensure your intellectual property is protected with enforceable, well-documented ownership rights. Proactive legal guidance can help you avoid costly litigation, strengthen your position with investors, and protect the innovations that set your company apart.

Contact Omni Legal Group today to schedule a confidential consultation with a trusted Los Angeles patent lawyer. Call 855.433.2226 to discuss your situation and take the next step toward securing clear, defensible ownership of your inventions.

The Interplay between Patents and Trade Secrets for Utilizing Artificial Intelligence

When it comes to effectively protecting valuable technology and products based on artificial intelligence (“AI”), it is important to understand the complex interplay between patent law and trade secret law. There are advantages and potential pitfalls related to both patents and trade secret law. For example, trade secret law can offer protection where patent law does not, and vice versa.

The Challenge is Securing an AI-based Patent

It is commonly said that an invention is only as valuable as the patent that protects the invention. However, this old adage becomes moot if you are unable to secure a patent. When it comes to inventors seeking a patent for a product that utilizes AI technology, the hurdles are quite challenging to overcome in the journey to obtain a USPTO-approved patent.

The difficulties associated with securing a patent for a product predicated on AI goes to the heart of the legal definition for a patent. For example, according to 35 U.S.C. § 101, a patentable subject matter is “any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof.”

The difficulty associated with AI technology and a patent application is that many patent examiners with the USPTO often consider this type of technology to be more of abstract ideas. In an effort to address this issue, the USPTO established multiple categories to refine the definition, but the overarching theme amongst the categories set forth by the USPTO is that if a human mind can accomplish the task, then it is likely an abstract idea.

Trade Secret Law

If an inventor of an AI product or technology is rebuffed by USPTO when applying for a patent, it may be worthwhile to review relevant trade secret laws. Why? Because the protections afforded to trade secrets were bolstered by the enactment of the Defend Trade Secrets Act (DTSA). This federal law was passed in 2016 and contains an array of features focused on reinvigorating what had become a set of stale and ineffective laws that were not very effective in protecting trade secrets.

According to the DTSA, specifically 18 U.S.C. § 1839(3)(B), a secret only needs to have “actual or potential” value derived from the secrecy to be deemed a trade secret for a business. As a result, a trade secret can now cover a plethora of potential subjects, as long as the trade secret meets this new legal standard.

**Navigating the Patent Application Process is Not Easy. Take Action by Contacting an Experienced Patent Attorney in Los Angeles Today**

Securing a patent for an invention is extremely important. Nevertheless, the patent application process is complex and can be intimidating to navigate. This is where Omni Legal Group comes in. Whether you are looking for a provisional patent, non-provisional patent, design patent, utility patent, or plant patent application, you can always count on the professionals at Omni Legal Group to give you and your invention the care and attention it deserves. Omni Legal Group is a premier Patent, Trademark, and Copyright law firm located in Los Angeles. For further information or to schedule a consultation please contact Omni Legal Group at 855.433.2226 or visit www.OmniLegalGroup.com to learn more.

How to Reduce the Risk of Engaging in an Illegal Trademark Assignment

Owning a trademark is widely viewed as one of the most valuable and important assets for any business. Hence, it is so important not to be cavalier about engaging in a trademark assignment. When a business owner mishandles or violates the law while engaging in a trademark assignment, it could completely negate the enforceability of the trademark, thereby torpedoing its value.

When an illegal trademark assignment occurs, it is typically the product of carelessness and neglect, or it could very well be deemed an assignment-in-gross.

What is an Assignment-in-Gross?

An assignment-in-gross occurs when a business owner assigns their trademark without including the underlying goodwill (i.e. the inherent value and name recognition associated with the mark) and any other accompanying assets. When a business owner commits an assignment-in-gross, the ramifications are severe since a court could invalidate the assignment and would result in the trademark being deemed abandoned. As a result, both parties (i.e. the owner of the mark and party attempting to secure the mark) will lose any rights to the trademark.

To prevent such circumstances, an assignment must include (i) other related business assets and (ii) must be completed with genuine goodwill.

Assets that are deemed eligible to accompany a trademark assignment include:

Company shares;
Trade secrets; and/or
Management or other financial assets

Analyzing whether a trademark assignment was completed with genuine goodwill can be extremely difficult to measure. Courts tackle this issue by using the “substantial similarity” test. This test assesses both the quality and description of the goods and/or services prior to, and after, the transfer of the trademark.

When a business owner attempts to simply assign their trademark without any accompanying business assets or without sufficient evidence of genuine goodwill, it is a violation of federal law since a trademark, in and of itself, does not possess actual value. When a trademark transfer occurs without meeting the two-part standard described above, it is an illegal trademark transfer under the Lanham Trademark Act, which is codified under 15 U.S.C. § 1060.

**Take Action by Contacting an Experienced Trademark Attorney in Los Angeles Today**

It is incredibly important to protect your brand identity; hence it is in your best interest to invest the time and resources to secure a trademark registered with the United States Patent and Trademark Office. Once registered, it will provide you exclusive right to use the mark with specific goods or services. Furthermore, there is tremendous value in completing a trademark assignment the right way. In either instance, you should retain the services of an experienced and knowledgeable trademark attorney in Los Angeles such as the professionals at the Omni Legal Group. Omni Legal Group is a premier Patent, Trademark, and Copyright law firm located in Los Angeles. For further information or to schedule a consultation please contact Omni Legal Group at 855.433.2226 or visit www.OmniLegalGroup.com to learn more.

Landlord May be Held Liable for Trademark Infringement

If you are a landlord renting a property to a tenant who is found to be selling counterfeit goods, you may be held liable for trademark infringement. However, a landlord can only be held liable if there is evidence that the landlord had actual knowledge that the tenant was engaged in infringing acts, or they were willfully negligent to the infringing activities.

Court Decision in Eleventh Circuit Highlights Landlord Liability

An actual case of a landlord being held liable for a tenant’s trademark infringing activities can be found in Luxottica Group v. Airport Mini Mall, LLC, 932 F.3d 1303 (11th Cir. August 2019). In this case, a subsidiary corporation Oakley, Inc. and its parent company Luxottica Group filed a civil lawsuit against the owners of a shopping mall in Georgia. The basis for the lawsuit was alleging the shopping mall owners were liable based on contributory trademark infringement under a federal law known as the Lanham Act.

The infringing activities involved high-end luxury sunglasses. The lawsuit alleged that Luxottica and Oakley, Inc. sold luxury sunglasses using Ray-Ban and Oakley trademarks. The owners of the shopping mall also managed the interior of the mall and were the landlords for businesses within the mall. The lawsuit revealed that the shopping mall owners were aware of three separate raids by law enforcement officials of businesses within the mall that were actively selling counterfeit sunglasses.

The shopping mall owners reportedly gained actual knowledge of the infringing activities since they received copies of search warrants from law enforcement and knew which businesses were the focus of the raids. In addition, there is evidence of correspondence sent from Luxottica to the shopping mall owners informing them that some of their subtenants were engaged in selling counterfeit sunglasses that infringed upon the trademarks owned by Ray-Ban and Oakley.

Another key factor is that the shopping mall owners apparently failed to take any action to remedy or halt the subtenants from engaging in the sale of counterfeit products within their property. For example, the shopping mall owners never even attempted to evict the subtenants or terminate their leases.

The lawsuit went to trial and a jury found the shopping mall owners liable for contributory trademark infringement. The jury awarded $1.9 million in damages to Luxottica as a result. The shopping mall owners appealed the jury verdict. Nevertheless, the Eleventh Circuit Court of Appeals affirmed the nearly-two-million-dollar jury verdict.

The Lanham Act

The Lanham Act is a federal law that establishes a defendant can be held liable for contributory infringement when the defendant induces or knowingly facilitates the trademark infringement.

In order to establish contributory trademark infringement under the Lanham Act, a plaintiff bears the burden of establishing the following during a lawsuit:

There was direct trademark infringement by someone; and
A defendant intentionally induces the infringer, or supplied a product to the infringer, with either actual knowledge or constructive knowledge of the infringing acts.

If you are wondering, “what is constructive knowledge? Well, a prime example is willful blindness, which occurs when a defendant suspects a wrongful act but deliberately fails to investigate the act.

Have Questions About How to Protect Your Trademark? Contact the Highly Reputable Trademark Lawyer in Los Angeles

If you have a trademark that you suspect is being infringed, or you want to ensure proper protection, the trademark lawyers at Omni Legal Group is here to help. Omni Legal Group is a premier Patent, Trademark, and Copyright law firm located in Los Angeles. For further information or to schedule a consultation please contact Omni Legal Group at 855.433.2226 or visit www.OmniLegalGroup.com to learn more.

The Federal Government Can Be Held Liable for Patent Infringement

If you have ever asked yourself, “can the U.S. government be held liable in a civil action for patent infringement?” Here is the answer – Yes. This is because the federal government has effectively waived sovereign immunity when it comes to civil claims alleging patent infringement. As a result, the federal government can be the named defendant in a civil action alleging patent infringement, in certain circumstances.

Legal Basis to File a Civil Action against the Government

The legal basis to file a civil lawsuit against the U.S. government for patent infringement is 28 U.S.C. § 1498. This federal statute states that whenever an invention is protected by a registered patent and is used or manufactured by or for the United States without license of the patent owner, then the patent owner is afforded a civil remedy by filing a civil action against the federal government in the United States Court of Federal Claims. A civil claim can demand recovery of reasonable compensatory damages associated with the government’s use and manufacture of a patent-protected product.

Court of Federal Claims Maintains Jurisdiction over Patent Infringement

If a patent owner is looking to file a patent infringement lawsuit against the federal government, it is important to understand that you cannot simply file a lawsuit in any federal court. The civil action must be filed specifically within the U.S. Court of Federal Claims. Why? Because this is a unique court established to adjudicate civil claims based upon “the Constitution, federal statutes, executive regulations, or contracts, express or implied in fact, with the United States.”

Exception for Federal Contractors

There is an important exception you need to be aware of if you are looking to file a civil action against the federal government for patent infringement. The exception is that a patent owner is prohibited from suing a federal contractor who produced the allegedly infringing product or performed the allegedly infringing method. Instead, any civil action must be filed against the federal government. Though, it is worth noting that the federal government’s contract with the allegedly infringing contractor may require the contractor to indemnify the government for liability and costs associated with the litigation.

**Have Questions About Securing a Patent or Protecting Your Current Patent? Take Action by Contacting a Patent Attorney in Los Angeles Today**

If you have a registered patent that you suspect is being infringed, whether by a private competitor or federal government, one of the most important things you can do is take proactive steps to assess your legal options and determine what can be done to protect your patent. Thus, it is in your best interest to retain the services of a reputable patent in attorney Los Angeles such as the lawyers at Omni Legal Group. Omni Legal Group is a premier Patent, Trademark, and Copyright law firm located in Los Angeles. For further information or to schedule a consultation please contact Omni Legal Group at 855.433.2226 or visit www.OmniLegalGroup.com to learn more.

Filing an Information Disclosure Statement (IDS)

When filing a patent application, you have a legal obligation to disclose all information known to you that is material to the “patentability” of your device, product, idea, etc. These disclosures must be formally conveyed to the U.S. Patent and Trademark Office (USPTO) in accordance with 35 C.F.R. §1.56. You may be asking, “what exactly constitutes material information for my patent application?” Well, the governing standard is that any information that a reasonable patent application examiner would consider important in assessing whether to grant the application is deemed to be material. It is also important to understand that this disclosure duty is ongoing from the moment you file the application all the way to the issuance of the U.S. Patent.

Limitation of Disclosure Requirement

It is worth noting that the disclosure requirement set forth in 35 C.F.R. §1.56 only obligates an applicant to disclose material information that is “actually known” to the applicant and does not require a search to be conducted. This is an important, and necessary, limitation since the USPTO wants to avoid disclosures that are based purely on conjecture or speculation.

Satisfying the Duty to Disclose

The duty of disclosure is satisfied when you submit an Information Disclosure Statement (IDS) to the USPTO listing relevant patents, patent applications, and other published documents or information. Depending on the nature of the disclosure, a copy of the document may also need to be provided to the USPTO.

Ramifications Associated with Failing to Disclose Material Information

The ramifications from failing to comply with the duty of disclose can be quite severe. For example, if it is determined that you willfully failed to provide material information to the USPTO, it can result in a later ruling of “unequitable conduct” that ultimately renders your issued patent unenforceable. If that was not bad enough, when there is evidence of willful failure to disclose, it exposes you to being sued for damages in federal court.

Supplemental Examination

If you are applying for a patent or currently own a patent and, at some point, you discover material information that should have been disclosed to the USPTO, you can request a “supplemental examination” which affords the opportunity to consider, reconsider, or correct information believed to be relevant to the patent. The ability to request a supplemental examination is available at any point during the period of enforceability for the patent.

There are various benefits associated with a request for supplemental examination. Once your supplemental examination materials are filed with the USPTO, a review will be undertaken, and you will usually get a response from the federal agency within three months. The response will typically come in the form of a certificate indicating whether the information you provided raises a “substantial new question of patentability.” If that is the case, an ex parte, re-examination of the patent will be required. If not, the request ends there. Another benefit associated with a request for supplemental examination is that a patent cannot be deemed unenforceable based solely on information that was considered, reconsidered, or corrected during a supplemental examination, so you can have a level of confidence during this process that you will not, sua sponte, lose your patent protections.

**Contact an Experienced Patent Attorney in Los Angeles Today**

As you can see, the process of applying for a patent is complex, time-intensive, and involves an array of different rules and regulations. Hence, it is in your best interest to retain the services of a patent in attorney Los Angeles such as the highly reputable professionals at Omni Legal Group. Omni Legal Group is a premier Patent, Trademark, and Copyright law firm located in Los Angeles. For further information or to schedule a consultation please contact Omni Legal Group at 855.433.2226 or visit www.OmniLegalGroup.com to learn more.

Helpful Tips for Drafting a Licensing Agreement

When you register a trademark for your business, there is a crucial next step you need to be prepared to address – licensing the rights to that trademark so other individuals and companies collaborating with you to manufacture or sell your product featuring that mark are legally compliant. It is important to understand the impact of a trademark license agreement. If this agreement is detailed and well-crafted, it can play a big role in determining how much you, the owner of the trademark, will benefit financially from the commercial success of the product. A trademark license agreement will also help in protecting both your registered trademark and the resources you invested into building goodwill and a positive affiliation with the consuming public.

To help ensure your trademark licensing agreement is valid and detailed, here are some helpful tips to consider when drafting a licensing agreement.

No. 1 – Clearly Establish the Licensee Requirements

In a trademark license agreement, you, the owner of the registered trademark, are known as the licensor. The party that pays you money in exchange for the right to market or manufacture products bearing your trademark is known as the licensee. In the trademark license agreement, you should be as specific as possible about what trademark rights you are licensing and what the licensee is and is not allowed to do with your trademark. If, for example, you own the trademark to a children’s character, and you want to preserve their child-friendly image, say so. Don’t want your trademark adorning beer bottles? Specify this in the agreement. Don’t want your character hawking weight loss supplements? Put it in writing.

No. 2 – Ensure All Key Pieces of Information are Included in the Agreement

Relying on a cookie-cutter printout of a license agreement you found online, or hastily drafting an agreement, is often a recipe for disaster and heightens the risk that vitally important pieces of information are not included in the final agreement. Do not make this mistake. You need to ensure the license agreement clearly addresses the following issues:

Who owns any new intellectual property that the licensee creates incorporating your trademark;
The geographic region where the licensee may sell the licensed products; and
Which state will have jurisdiction to decide legal disputes that may arise from the trademark license agreement (this is often referred to as a “choice of law” provision).

No. 3 – Be Transparent About Duration of the Agreement and the Timetable for Payments

Mistakes and oversights regarding the duration and payment terms in a trademark licensing agreement can lead to costly disputes and glaring loopholes. Hence, it is imperative to not gloss over these sections of the agreement or merely state, in broad terms, how long the agreement lasts. You need to provide specific details about what happens at the end of the established license period. For example, you should address what happens if the parties take no further action. Does the licensing agreement automatically terminate, or does it automatically renew? Likewise, does the licensee pay a fixed amount or a share of their sales? Do they pay a lump sum at the beginning of the contract period, or do they pay you in monthly or quarterly installments? These are critically important questions and issues that need to be fully fleshed out in the licensing agreement.

Have Questions? Contact an Experienced Trademark Lawyer in Los Angeles Today

It is extremely important to draft a detailed, airtight trademark license agreement to help safeguard your financial and brand interests, as well as the interests of the licensee, or licensees. Hence, it is in your best interest to retain the services of a skilled and knowledgeable trademark lawyer in Los Angeles such as the professionals at Omni Legal Group. Omni Legal Group is a premier Patent, Trademark, and Copyright law firm located in Los Angeles, California. For further information or to schedule a consultation please contact Omni Legal Group at 855.433.2226 or visit www.OmniLegalGroup.com to learn more.