Nearly 30 Years Of Representing Businesses And Their Owners

California-Based Intellectual Property Attorneys, International Reach

A key to success for companies in today’s marketplace is the ability to procure, protect and exploit intellectual property. Our IP department, which is highly integrated with our litigation and transactions departments, has the depth and experience to provide sophisticated and comprehensive solutions to any IP issues our clients face. We assist in the procurement of IP assets, provide representation in the negotiation and drafting of IP transactions, and litigate infringement actions and unfair competition claims.

Our Intellectual Property Services Include:

Intellectual Property Strategies and Monetization
Patent and Trademark Monitoring and Portfolio Management
Patent Searches, Prosecution, Licensing and Litigation
Trademark Searches, Registration, Licensing, and Litigation
Copyright Registration, Licensing and Litigation
Trade Secret Protection, Policies and Litigation
Trade Dress Protection
Unfair Competition
Right of Publicity Contracts and Disputes
Entertainment Litigation
Nondisclosure Agreements, Assignments, Purchase/Sale Agreements, Coexistence and Other IP Agreements
Privacy Policies, Website Disclaimers and Website Terms of Use
Advising Start-Ups
Artificial Intelligence, Augmented Reality, and Virtual Reality

The Role Of The USPTO

The United States Patent and Trademark Office (USPTO) fosters American innovation and protects intellectual property by granting patents and registering trademarks. It allows inventors and businesses to safeguard their innovations and brand identities.

However, applicants may make mistakes when dealing with the USPTO. Examples include:

Failing to research existing patents or trademarks
Submitting incomplete or incorrect paperwork
Missing filing deadlines and timeframes
Not understanding the requirements for patents or trademarks
Not seeking legal guidance

Proper preparation and an understanding of USPTO procedures can increase the chances of a successful application.

Types Of Patents

The USPTO grants three main types of patents:

Utility patents: For new and useful processes, machines, articles of manufacture or compositions of matter, protecting the functional aspects of an invention
Design patents: For protecting the ornamental design of functional items, focusing on unique visual qualities
Plant patents: For new and distinct plant varieties that can be asexually reproduced, preserving their unique characteristics.

Choosing the right type of patent provides the appropriate level of protection for new innovations.

The Patent Application Process

Applying for a patent involves several steps. Conducting a comprehensive patent search is a critical first step. A thorough search helps ensure your invention is novel and not already patented, preventing potential legal issues and wasted resources. Other steps include:

Prepare detailed descriptions, claims and drawings of the invention.
Submit the completed application with documentation and fees.
A USPTO examiner will review the application, which may involve back-and-forth communication for clarification or amendments.
The examiner grants the patent, rejects it or requests further amendments.

Since this process requires careful attention to detail, an intellectual property lawyer can provide crucial guidance.

Registering A Trademark

There is no legal mandate to register a trademark, but it offers several benefits. Federal registration grants exclusive nationwide rights, legal presumption of ownership and the ability to use the ® symbol, enhancing brand credibility and protection.

Remember to conduct a thorough trademark search to ensure the desired mark is not already in use. Another critical step involves including details about the mark and its intended use along with the trademark application.

If the examiner finds no conflicts or mistakes, the trademark is published, allowing others to oppose it if needed. Unless there is opposition, the trademark is registered.

Our experienced intellectual property lawyers can facilitate a smooth application process and help to prevent errors.

IP In The Digital Age

The digital age has redefined intellectual property challenges, with online platforms increasing exposure to copyright infringement, software patent disputes and digital rights management issues.

For example, online copyright infringement is a growing concern in the 21st century. Unauthorized sharing of images, music, videos and software on websites or social media platforms can erode intellectual property value. Fortunately, taking swift action, including issuing takedown notices and seeking legal remedies, can mitigate potential losses.

Similarly, software patents also demand legal attention. Protecting innovations in algorithms, system architecture and applications can help promote a competitive advantage. However, overlapping claims and vague standards often lead to disputes. This is precisely why clear documentation and reputable legal guidance are the major and decisive components for resolving these issues effectively.

Digital rights management (DRM) tools are key in protecting intellectual property. Employing encryption, access control and watermarking technology can help secure proprietary content and limit unauthorized use.

IP Valuation And Audits

Regular evaluation of intellectual property assets can strengthen a company’s business position and reveal untapped opportunities. This can help to ensure you make better decisions in licensing, mergers and acquisitions, or litigation.

Frequent IP audits assess the current status of a company’s intellectual property portfolio of patents, trademarks, copyrights and trade secrets. This process uncovers:

● Gaps in protection that require immediate attention
● Unused assets that could generate revenue
● Potential infringement risks
● Areas for strategic growth and development

Understanding the true value of IP can guide investment decisions and position businesses for sustainable growth. However, during an audit, companies should review licensing agreements, check for expired registrations and evaluate competitor activity. The information gathered can help streamline IP management and ensure compliance with legal standards.

Licensing And Franchising

Licensing intellectual property creates additional revenue streams while expanding market presence. When drafting a licensing agreement, both parties should define clear terms regarding royalties, duration, exclusivity and jurisdiction.

Franchising is a more comprehensive model that allows businesses to scale operations using established trademarks, trade secrets and systems. Franchise agreements must include protections for intellectual property to prevent misuse or dilution.

Both licensing and franchising agreements should include dispute resolution clauses to address potential disagreements effectively. Consulting our experienced intellectual property attorneys can help ensure the terms of these agreements align with business goals, protect proprietary assets and prevent common pitfalls in IP commercialization efforts.

California Intellectual Property: Answering Common Questions

It is natural to face uncertainty or have questions about your business intellectual property. To help you move forward confidently, here is how we answer common questions from other clients.

What constitutes trade secret information, and how can I safeguard it from unauthorized use or disclosure?

Trade secrets are a type of confidential business information that gives you a competitive advantage. It can include formulas, inventions, designs, processes, customer lists or other information not generally known to the public. Implementing strong security measures like these can safeguard trade secrets:

Identify and classify your trade secrets
Limit access to trade secrets on a need-to-know basis
Use nondisclosure agreements (NDAs) with employees, contractors and other third parties
Implement physical and technological safeguards such as secure storage and passwords to strengthen your protections
Have a plan for what to do if you suspect a trade secret has been misappropriated (call a lawyer, etc.)

Considering the sacrifices you made in the interest of running your business, do not let trade secret theft bring it down around you.

What rights do I have if someone is infringing on my intellectual property?

If someone has stolen your intellectual property or used it unlawfully, taking the appropriate legal steps can help to stop them. This could include seeking an injunction – a court order prohibiting the infringement – or suing for damages. The specific legal action you should take depends on the circumstances and how much damage it causes.

How can I avoid infringing on the intellectual property rights of others in my business activities?

Inadvertent infringement can happen and often leads to costly legal consequences. Following these guidelines assures no violations occur:

Conduct thorough searches for existing patents and registered trademarks to help you avoid accidental infringement
Avoid the use of third-party logos, trademarks and any copyrighted material

It can be tempting sometimes to cut corners and alter another’s existing intellectual property for use in your business. Unfortunately, this is a dangerous habit that can lead to intellectual property litigation if it is discovered.

Contact Coleman & Horowitt, LLP, For IP Protection And Guidance

Coleman & Horowitt, LLP, has a reputation as a sophisticated, modern law firm with tools to match each client’s needs. Learn how to protect all your business’s assets, including long-held and newly developed intellectual property.

Call 559-248-4820 or send an inquiry by email to schedule a consultation with one of our IP lawyers in central California.