Since giving birth to octuplets in January, Nadya Suleman, aka OctoMom, has captured nationwide media attention.  Earlier this month Ms. Suleman filed two separate applications to register OCTOMOM as a trademark and a service mark with the U.S. Patent and Trademark Office.  Was she beaten to the punch?  Almost a month earlier Super Happy Fun Fun, Inc. filed its own application to register the mark.

In most trademark cases, the first in time is the first in line.  The person who is the first to use a mark (or file an intent-to-use application) will have priority over anyone who begins using the mark or files for registration at a later point in time.  The OctoMom situation provides an interesting exception to this general rule.

Section 2(a) of the Federal Lanham Act prohibits registration of a trademark where the mark consists of matter which “falsely suggests a connection with persons, living or dead.”  Likewise, Section 2(c) of the Lanham Act prohibits registration where the mark consists of or comprises “a name, portrait or signature identifying a particular living individual except by his written consent.”  Section 2(c) of the Lanham Act operates to bar registration of marks containing not only full names, but also surnames, shortened names, nicknames, etc. so long as it identifies a specific living individual.

Ms. Suleman is widely known by the nickname OctoMom.  There are many news articles which specifically refer to Ms. Suleman as “OctoMom”.  Thus, it seems likely that the Trademark Office will refuse registration of the OCTOMOM trademark to Super Happy Fun Fun, Inc. unless they are able to obtain Ms. Suleman’s written consent.

This presents an important lesson for corporations and individuals who wish to capitalize on the fame of others.  Trademark laws protect the right of publicity of celebrities or any individual.  Obtaining the person’s consent is a prerequisite to registration.  Nikolai & Mersereau, P.A. can help you draft a consent agreement to gain permission to use a name as well as filing for the trademark registration.

Peter Nikolai    (612) 392-7311           Peter.Nikolai@nm-iplaw.com

On May 5, 1809, Mary Dixon Kies became the first woman to receive a U.S. Patent.  Many women during this time did not have patents because many states did not allow women to own property, and a patent is a form of property.  Mary Kies was the first woman to break that pattern with a patent directed to “a new and useful improvement in weaving straw with silk or thread.”  This method was supposed to be used in making women’s hats and bonnets.

Laurie Young                (612) 392-7309           Laurie.Young@nm-iplaw.com

Unscrupulous promoters often take advantage of an inventor’s enthusiasm for a new product or service by making false and exaggerated claims about the market potential of inventions.  According to the Federal Trade Commission, some inventors pay thousands of dollars to unscrupulous invention promotion firms promising to evaluate, develop and market inventions.  These firms then do little or nothing for their fees.  Sometimes the actions taken by such firms jeopardize an inventor’s ability to patent his or her invention.

Invention promotion firms advertise through television, radio and internet advertisements, as well as in newspapers and magazines.  Their advertisements typically target independent inventors with offers of free information on how to patent or market an invention.  Those responding to such ads often only receive a sales pitch to buy a market evaluation and claims about the invention promotion firm’s contacts and marketing expertise.  Inventors who succumb to the sales pressure applied by unscrupulous firms often do not receive an honest assessment, but rather a mass produced, positive but inaccurate report.

Both Minnesota law and the American Inventors Protection Act give inventors certain rights when dealing with invention promoters.  Under the American Inventors Protection Act, before an invention promoter can even enter into a contract with an inventor, the invention promoter must disclose to the interested party the following activities which have occurred in the preceding five years:

1. how many inventions it has evaluated;
2. how many of those inventions received a positive or negative evaluation;
3. its total number of customers;
4. how many customers earned a net profit from the promoter’s services; and
5. how many customers have licensed their invention due to the promoter’s services.

Minnesota law requires other disclosures be made including the median fee charged to all of the invention promoter’s customers.  Most importantly, the invention developer must give notice:

            No patent, copyright or trademark protection will be acquired for you by the invention developer.  Your failure to inquire into the law governing patent, copyright or trademark matters may jeopardize your rights in your idea or invention, both in the United States and in foreign countries.  Your failure to identify and investigate existing patents, trademarks or registered copyrights may place you in jeopardy of infringing the copyrights, patent or trademark rights of other persons if you proceed to make, use, distribute or sell your idea or invention.

Both Minnesota law and the American Inventors Protection Act provide inventors whose rights have been violated a cause of action against unscrupulous invention promoters.  Such law suits rarely restore lost patent rights.  We recommend you contact us to discuss ways to protect yourself and your rights before disclosing your invention or otherwise beginning work with an invention promoter.  Entering into a contract with an invention promoter is no different than any other major business or financial arrangement.  Your contract should contain all the terms necessary to protect your rights and, at the same time, clearly identify the services to be provided by the invention promoter and the payment terms.  As Benjamin Franklin so simply stated, “An ounce of prevention is worth a pound of cure.”

Laurie Young                (612) 392-7309           Laurie.Young@nm-iplaw.com

By far the most common mistake made by people new to the patent world is revealing their inventions to the public too early.  Any public disclosure of an invention - by word of mouth, demonstration, advertisement, journal article, an offer for sale, or any other disclosure - before you apply for a patent can jeopardize your ability to secure valid patent rights. A public disclosure is not limited to the general public; it can also be a disclosure to one or two individuals. 

If you feel the need to describe your invention to someone before you apply for a patent, such as a potential business partner, or a manufacturer, you should ask that person to sign a confidentiality agreement before you disclose your invention.  This means they have to treat what you tell them with confidence and they are not allowed to tell anyone else what your invention is.  This will assist you in assuring your invention is not disclosed to the public.  We can assist you in preparing this type of agreement.  Any conversation a client has with one of our attorneys is confidential.  

It is often best to apply for patent rights before any public disclosure of an invention is made.  Applying for a U.S. patent is done by filing a legal document called a patent application with the United States Patent and Trademark Office.  The content of a patent application is used to determine whether a patent can be granted, and also what rights a patent provides. 

It is possible for an individual to file a patent application without the assistance of a patent attorney; however it is very rare for individuals who are not patent attorneys to have their patents granted.  Individuals who are not trained in U.S. patent law generally do not know or have the legal skills needed to prepare an application for you; nor are they are familiar with the Rules of Practice imposed by the U.S. government.  Not having someone who understands the ins and outs of the patent system could result in either you not obtaining patent rights or not obtaining all the patent rights you deserve.  We can assist you in preparing and prosecuting patent applications both in the United States and in foreign countries.

Tom Nikolai                 (612) 392-7307           Tom.Nikolai@nm-iplaw.com

It appears that Bratz^® dolls will not be on the shelves of your favorite toy stores after 2009.  U.S. District Judge Stephen Larson ruled that the manufacturer, MGA Entertainment, Inc., must cease manufacturing, distributing and offering for sale Bratz^® dolls by the end of 2009.

The order issued by Judge Larson is just one more chapter in the long dispute between Mattel and MGA.  Originally, Mattel sued MGA asserting that Mattel owns the copyrights and other related intellectual property to the Bratz^® line of dolls.  (See our July 23, 2008 blog entry).  The jury found MGA infringed Mattel’s copyrights.  The jury also found that MGA intentionally interfered with Mattel’s contractual relations.  In total, the jury awarded Mattel over $100 million.  Of the $100 million, MGA is responsible for about $68 million and Isaac Liarian (MGA’s CEO) is responsible for about $33 million.  These financial issues are currently at a stand-still while a court-appointed forensic auditor reviews all of MGA’s financial records.

Judge Larson also permanently enjoined MGA from  making and selling any Bratz^®, or Bratz^®-like, dolls or using any trademark, copyright or other image which may be similar to the Bratz^® dolls after December 31, 2009.  MGA appealed Judge Larson’s injunction order to the 9^th Circuit.  However, the 9^th Circuit Court of Appeals dismissed this appeal on January 14, 2009 for lack of jurisdiction since Judge Larson’s order was not yet final.