Intellectual Property – Chester Law

Jun 18

Washington Resdkins Trademark Registrations Canceled by USPTO

By Jim Chester Blog, Intellectual Property, International Business

In a recent decision by the Trademark Trial and Appeal Board (TTAB), the administrative appellate body of the United State Patent and Trademark Office (“USPTO”), the USPTO cancelled the registrations of a handful of trademarks owned by the NFL’s Washington Redskins.

The ruling held the name “R\redskins” to be disparaging, with the TTAB stating:
“. . . petitioners have shown by a preponderance of the evidence that a substantial composite of Native Americans found the term REDSKINS to be disparaging in connection with respondent’s services during the relevant time frame of 1967-1990. Accordingly, the six registrations must be cancelled as required under Sections 2(a) and 14(3) of the Trademark Act.”

The USPTO’s ruling means that the Redskins, whose team name has been the subject of controversy over the years, will no longer enjoy some of the rights and privileges afforded to owners of USPTO-registered marks.

This decision does not require the football club to change its name, although the TTAB decision certainly looks like a “win” (at least for now) for the small but vocal current movement to try to persuade (or force) the club to change its name.

That said, the Washington Redskins retain their common law rights to their names and logos, which are well-recognized throughout the US (and many foreign countries) as marks owned by the club.

SOURCE: USPTO TTAB

Ttab Order

USPTO TTAB Order – (as posted on web by Washington Post)

May 06

IP Guide: Protecting Software

By Jim Chester Blog, Intellectual Property, News, White Papers

Dallas-based business & innovation law firm Chester & Jeter LLP has recently posted a new white paper on its website.

The paper, titled “Protecting Software – Alternatives to Patents” discusses some of the concerns and limitations with using patents to protect rights in and to software, and provides some alternative tools and strategies that software owners can employ.

This free guide, along with other informative IP and business-related legal guides, is available Here.

Apr 23

Jim Chester Named to D Magazine “Best Lawyers in Dallas” List

By Jim Chester Innovation, Intellectual Property, News

Jim Chester Named to D Magazine “Best Lawyers in Dallas” List

J. F. (Jim) Chester, founding partner in the Dallas-based business & innovation law firm of Chester & Jeter LLP has been selected for inclusion in D Magazine’s 2014 list of “Best Lawyers in Dallas.”

Chester will be listed in the computer and technology law practice section, although his practice also covers a broad range of intellectual property, business, technology and international transactional matters.

Chester stated, “There are a number of lists and awards out there, but this one is of special significance because it is based on recommendations from colleagues in the Dallas legal community. To be recognized by such an esteemed group of legal professionals in my own city is truly an honor.”

About Chester & Jeter LLP

Chester & Jeter LLP is a Dallas, Texas law firm providing comprehensive legal services to innovation-based companies doing business in the US, around the world, and on the web. Its mission (and passion) is helping entrepreneurs and emerging companies solve problems and protect their interests. Chester & Jeter LLP delivers value by providing business-savvy, cost-effective solutions to legal challenges. The firm offers a wide array of business legal solutions, such as business entity formation (LLCs, corporations, etc.), trademarks and other intellectual property, technology transactions, contracts, ecommerce, employment law and dispute resolution. Additional information about the firm and its attorneys may be found at www.chester-law.com

Apr 14

Jim Chester Speaks at State Bar of Texas Annual “Advanced IP” CLE

By Jim Chester Blog, Customs IP Enforcement, Import, Intellectual Property, International Business, International IP, News, Technology Transactions

Dallas, Texas, 14 April 2014 – J. F. (Jim) Chester, founding partner in the Dallas-based business & innovation law firm of Chester & Jeter LLP recently presented a speech on the U.S. regulation of international technology transfers to a statewide audience of intellectual property attorneys at an event sponsored by the Intellectual Property Section of the State Bar of Texas (SBOT).

Chester’s presentation was part of the SBOT’s annual 2-day “Advanced IP” CLE program, which features many of the stats most notable IP attorneys. This year’s event was held in Dallas, Texas.

The title of Chester’s presentation was: “International Technology Transfers”, and focused on the regulatory issues associated with the import and export of technology and IP-oriented goods and information.

Chester reports, “I was honored to be asked to participate in this program, which is one of the top IP law-oriented events in the State of Texas. IP is an increasingly global asset, and although increased international trade creates opportunities for IP owners, there are also increased risks. I applaud the SBOT, and the IP Section in particular, for ensuring that emerging important subject like these are addressed in its programs. ”

About Chester & Jeter LLP

Mar 31

Annual Report of Customs Seizures for IP Violations

By Jim Chester Customs IP Enforcement, Import, Intellectual Property, International IP

U.S. Immigration and Customs Enforcement’s (ICE) Homeland Security Investigations (HSI) and U.S. Customs and Border Protection (CBP) recently announced the comprehensive results of counterfeit and pirated goods seized during fiscal year (FY) 2013. Under the Department of Homeland Security (DHS), HSI and CBP are the agencies charged with the enforcement of intellectual property rights (IPR) for goods entering the United States.

The number of IPR seizures increased nearly 7 percent from 22,848 in FY 2012 to 24,361 in FY 2013. The manufacturer’s suggested retail price (MSRP) of the seized goods also increased from $1.26 billion in FY 2012 to $1.74 billion in FY 2013. DHS averaged slightly over 66 seizures per day, with an average MSRP of each seizure being slightly more than $71,500.

“These numbers are the result of the hard work of the men and women of the Department of Homeland Security and the increased collaboration of our agencies through the IPR Center,” said ICE’s Principal Deputy Assistant Secretary Thomas S. Winkowski. “But a great deal more has to be done to protect the public from the health and safety threat that counterfeits pose to our society. We will continue to pursue these criminals and educate the public about the real threats that intellectual property crimes pose.”

“Together with our IPR partners, CBP continues to guard the nation’s borders against counterfeit products,” said CBP Commissioner R. Gil Kerlikowske. “These products are not only unsafe and dangerous to consumers, but they also pose a threat to the economic security of our country.”

The National Intellectual Property Rights Coordination Center (IPR Center) continued Operation In Our Sites (IOS), a long-term law enforcement initiative which targets counterfeiting and piracy on the Internet. In FY 2013, the IPR Center seized 1,413 domain names, and since the launch of IOS in June 2010, the center has seized more than 2,700 domain names. Collaboration through the IPR Center led to 692 arrests, 401 criminal indictments, and 451 criminal convictions for criminal IPR infringement activities in FY 2013.

The People’s Republic of China remained the primary source for counterfeit and pirated goods seized in FY 2013 with a total value of $1.1 billion. This represented 68 percent of all IPR seizures by MSRP. DHS also made seizures from 73 additional economies during FY 2013 including Hong Kong, India, Korea, Singapore and Vietnam.

The HSI-led IPR Center is one of the U.S. government’s key weapons in the fight against criminal counterfeiting and piracy. Working in close coordination with the Department of Justice Task Force on Intellectual Property, the IPR Center uses the expertise of its 21-member agencies to share information, develop initiatives, coordinate enforcement actions and conduct investigations related to intellectual property theft. Through this strategic interagency partnership, the IPR Center protects the public’s health and safety and the U.S. economy.

SOURCE: US CBP/ICE

Feb 26

An 18-Wheeler with better Gas Mileage than your SUV?

By Jim Chester Blog, Innovation, Intellectual Property, International Business, News

Pedestrians passing by the Energy Department headquarters in Washington, D.C., on February 19 saw quite a strange sight—an ultra-modern 18-wheeler, Class 8 tractor-trailer parked outside the headquarters building. This is no ordinary truck—it’s called a SuperTruck, a demonstration vehicle that is part of the Energy Department’s SuperTruck initiative. This program’s goal is to develop tractor-trailers that are 50% more efficient than baseline models by 2015.

The truck on display, developed by heavy-duty manufacturers Cummins and Peterbilt, has exceeded this goal. Since 2010, the truck has demonstrated a 20% increase in engine efficiency and a 70% increase in freight efficiency, reaching over 10 miles per gallon under real world driving conditions on a Class 8 tractor-trailer. In comparison, an average Class 8 truck typically gets 5.8 miles to the gallon. This accomplishment is so impressive that the SuperTruck served as a backdrop to President Obama’s announcement of new fuel economy standards for heavy-duty vehicles.

Improving the efficiency of long-haul tractor-trailers is one of the many ways that the United States can reduce the amount of petroleum we use and the carbon pollution we produce. Commercial trucks, which include Class 8 vehicles, haul as much as 80% of the goods transported in the country. Although they only make up 4% of vehicles on the road, they use about 20% of the fuel consumed. For the complete story, see the EERE Blog

SOURCE: US Dept of Energy

Dec 15

EU Proposes New Law on Protection of Trade Secrets

By Jim Chester Innovation, Intellectual Property, International IP

On November 28, 2013, the European Commission adopted a proposal for a new directive on the protection of undisclosed know-how and business information (trade secrets) against their unlawful acquisition, use, and disclosure. Trade secrets, otherwise known as “confidential business information” or “undisclosed information,” are used by a large number of companies to safeguard a wide range of different information, including, for example, such things as the manufacturing process of Michelin tires, the technology and know-how used in Airbus aircraft, and Google’s search algorithm. (Press Release, European Commission, Commission Proposes Rules to Help Protect Against the Theft of Confidential Business Information (Nov. 28, 2013).)

According to a survey, one in five companies in the European Union has been beset by at least one attempt of trade secret theft during the last ten years. In general, trade secrets do not enjoy the same legal protection as inventions, because no exclusive right applies to the confidential information. At present, some EU members have no specific law on the protection of trade secrets while others have differing rules in place.

The proposed directive is designed to harmonize common rules on trade secrets across the EU by establishing a common definition of trade secrets and to facilitate access to national courts for victims of abuse of trade secrets, in order to allow them to seek redress. Among the remedial measures available, in addition to monetary compensation, will be the removal of trade secret infringing products from the market.

The proposal will be submitted to the Council of the EU and the Parliament for review and adoption.

SOURCE: US Library of Congress, Global Legal Monitor

Dec 02

Black-Out Monday: 706 Web Sites Selling Counterfeit Merchandise Seized

By Jim Chester copyright, Customs IP Enforcement, Export, Import, Intellectual Property, International IP, Internet / eCommerce, News, Technology Transactions

U.S. Immigration and Customs Enforcement’s (ICE) Homeland Security Investigations (HSI) teamed with 10 foreign law enforcement agencies to seize hundreds of domain names that were illegally selling counterfeit merchandise online to unsuspecting consumers. Seizures come as US consumers flock to the Web for Cyber Monday shopping deals.

The 706 domain names seized were set up to dupe consumers into unknowingly buying counterfeit goods as part of the holiday shopping season. The operations were coordinated by the HSI-led National Intellectual Property Rights Coordination Center (IPR Center) in Washington, D.C.

An iteration of “Operation In Our Sites,” Project Cyber Monday IV resulted in the seizure of 297 domain names from undercover operations conducted by HSI offices around the country. This is the fourth year that the IPR Center has targeted websites selling counterfeit products online in conjunction with Cyber Monday. Due to the global nature of Internet crime, the IPR Center partnered with Europol who, through its member countries, seized 393 foreign-based top-level domains as part of Project Transatlantic III. Additionally, Hong Kong Customs coordinated the seizure of 16 foreign-based top-level domains hosted in Hong Kong, enlisting the assistance of the web-hosting companies to suspend the service of related websites.

“Working with our international partners on operations like this shows the true global impact of IP crime,” said ICE Acting Director John Sandweg. “Counterfeiters take advantage of the holiday season and sell cheap fakes to unsuspecting consumers everywhere. Consumers need to protect themselves, their families, and their personal financial information from the criminal networks operating these bogus sites.”

During the weeks leading up to the end of the year, the market is flooded with counterfeit products being sold at stores, on street corners, and online, according to law enforcement officials, not only ripping off the consumer with shoddy products, but also putting their personal financial information at risk. The most popular counterfeit products seized each year include headphones, sports jerseys, personal care products, shoes, toys, luxury goods, cell phones and electronic accessories, according to the IPR Center.

“This operation is another good example of how transatlantic law enforcement cooperation works. It sends a signal to criminals that they should not feel safe anywhere,” said Rob Wainwright, director of Europol. “Unfortunately the economic downturn has meant that disposable income has gone down, which may tempt more people to buy products for prices that are too good to be true. Consumers should realize that, by buying these products, they risk supporting organized crime.”

During the last few weeks, the IPR Center and its international partners received leads from trademark holders regarding the infringing websites. Those leads were disseminated to HSI offices in Denver, Dallas, El Paso, Houston and Salt Lake City as well as the Belgium Economic Inspection, Belgium Customs, Denmark Police, Hungarian Customs, French Gendarmerie, French Customs, Romanian Police, Spanish Guardia Civil, City of London Police, and Hong Kong Customs and Excise Department.

The domain names seized are now in the custody of the governments involved in these operations. Visitors typing those domain names into their Web browsers will now find a banner that notifies them of the seizure and educates them about the federal crime of willful copyright infringement.

During this operation, federal law enforcement officers made undercover purchases of a host of products including professional sports jerseys and equipment, DVD sets and a variety of clothing, jewelry and luxury goods from online retailers who were suspected of selling counterfeit products. Upon confirmation by the trademark or copyright holders that the purchased products were counterfeit or otherwise illegal, law enforcement officers obtained seizure orders for the domain names of the websites that sold these goods.

Operation In Our Sites is a sustained law enforcement initiative that began more than three years ago to protect consumers by targeting the sale of counterfeit merchandise on the Internet. The 297 domain names seized under Project Cyber Monday IV bring the total number of In Our Sites domain names seized to 2,550 since the operation began in June 2010. In that time, the seizure banner has received more than 122 million individual views.

U.S. Attorney’s Offices in the District of Utah, Western District of Texas, Southern District of Texas, Northern District of Texas, and the District of Colorado issued the warrants for U.S. seizures. Significant assistance was provided by the Department of Justice’s Computer Crime and Intellectual Property Section.

SOURCE: U.S. ICE (www.iprcenter.gov)

Nov 24

USPTO Publishes Regulations to Sync with PLT

By Jim Chester Blog, copyright, Intellectual Property

The United States Patent and Trademark Office (USPTO) recently published its Final rules to adjust its protocols and policies in light of the Patent Law Treaties Implementation Act of 2012 (PLTIA). The rule goes into effect December 18, 2013.

PLTIA amends the patent laws to implement the provisions of the Hague Agreement Concerning International Registration of Industrial Designs (Hague Agreement) in title I, and the Patent Law Treaty (PLT) in title II. The PLT harmonizes and streamlines formal procedures pertaining to the filing and processing of patent applications.

This final rule revises the rules of practice for consistency with the changes in the PLT and title II of the PLTIA. The United States Patent and Trademark Office (Office) is implementing the Hague Agreement and title I of the PLTIA in a separate rulemaking.

The notable changes in the PLT and title II of the PLTIA pertain to: The filing date requirements for a patent application; the restoration of patent rights via the revival of abandoned applications and acceptance of delayed maintenance fee payments; and the restoration of the right of priority to a foreign application or the benefit of a provisional application in a subsequent application filed within two months of the expiration of the twelve- month period (six-month period for design applications) for filing such a subsequent application.

This final rule also revises the patent term adjustment provisions to provide for a reduction of any patent term adjustment if an application is not in condition for examination within eight months of its filing date or date of commencement of national stage in an international application, and contains miscellaneous changes pertaining to the supplemental examination, inventor’s oath or declaration, and first inventor to file provisions of the Leahy-Smith America Invents Act (AIA).

SOURCE: USPTO

Aug 29

Elderly Man Arrested for Smuggling Counterfeit Erectile Dysfunction Pills

By Jim Chester Customs IP Enforcement, Intellectual Property

A man was sentenced recently to 30 months in federal prison for smuggling nearly 40,000 counterfeit erectile dysfunction pills that were discovered in a golf bag and other luggage when he entered the United States at Los Angeles International Airport last year.

Kil Jun Lee, 73, who resides in the Koreatown district of Los Angeles, was sentenced by U.S. District Judge Dean D. Pregerson, who said the sentence, in part, was due to the threat to public health posed by the counterfeit pills. The case is a result of a probe by U.S. Immigration and Customs Enforcement’s (ICE) Homeland Security Investigations (HSI), with substantial assistance from U.S. Customs and Border Protection (CBP).

In May, a federal jury found Lee guilty of three counts of smuggling and three counts of trafficking in counterfeit goods for bringing the phony pills into the United States in February 2012. The retail value of the pills would have been more than $750,000 had the medications been genuine.

The counterfeit products – purporting to be Viagra, Cialis and Levitra – were discovered by CBP officers at LAX when Lee returned from a trip to China that included a stop in his native Korea. Most of the pills were hidden in a golf bag.

Analysis of the pills showed they were inconsistent with the genuine products. While many of the pills contained the active ingredient for the brand name medications, they typically contained the wrong amount (up to 150 percent of the claimed dose) or contained the active ingredient for a competitor’s product (so the purported Viagra would contain the active ingredient found in Cialis). Some of the counterfeit pills had no active ingredient at all.

When HSI special agents subsequently searched Lee’s residence, they found a small number of counterfeit pills, as well as numerous counterfeit labels that were hidden under a rug.

“The danger of this conduct is substantial,” prosecutors wrote in a sentencing memorandum filed with the court. “Indeed, while the government is not aware of any inherently harmful chemicals contained in the pills, the prospect of a user ingesting pills that contain more active ingredient than is listed on the pill, or a different active ingredient than is supposed to be in that pill, raises serious medical concerns.”

SOURCE: ICE