“March Madness”

In between March coming in like a lion and going out like a lamb is the multi-week long American tradition known simply as NCAA “March Madness”. A time when both diehard basketball fans and non-sports fans alike spend hours filing out their brackets hoping to win this year’s pool. (It’s estimated that companies will lose over three billion dollars in productivity over the next couple weeks as their employees sneak out of the office early to catch some of the games.)

But just how big of a deal is the NCAA Tournament, and what are those magical words “March Madness” actually worth?

mm-bracket-no-logo
It’s often difficult, if not impossible, to determine the value of famous trademarks such as “March Madness” (that being said the NCAA paid over $17 million just to have the exclusive rights to use the mark in programing for mobile devices back in 2011). However, to put things in perspective, the NCAA Tournament is arguably the biggest sporting event in the United States. This year companies looking to partake in the madness will spend about $1.1 billion dollar in television ads alone (about three times the amount spent on the Super Bowl). Meanwhile Philadelphia (one of four cities to host the “Sweet Sixteen” and “Elite Eight” (both registered trademarks)) is expected to fetch $18.2 million; while Houston, the host of the fabled “Final Four” (also a registered trademark), is expecting upwards of $300 million of economic impact from the tournament.

Given these numbers, it’s not surprising that the NCAA is in the middle of a 14 year, $10.8 billion broadcasting deal with CBS Sports and Turner Broadcasting. All things considered, the NCAA Tournament accounts for roughly 90% of NCAA revenue (sorry football).

None of the above figures include the equally stunning numbers from brackets and betting. Las Vegas sources estimate $9 billion will be wagered legally on the NCAA tournament (with about $7 billion being illegal betting).

So given all of the hoopla (no pun intend), where did the term March Madness actually originate? While one might suspect a bunch of partners at an advertising agency coming up with the idea after an eventful St. Patrick’s Day; in reality the term was coined by Henry Porter as the title of a 1939 essay for the Illinois High School Athlete, describing the Illinois High School Association’s (IHSA) basketball tournament.

The IHSA officially began using the term in 1973 in conjunction with its tournament, claiming exclusive rights to it and even licensing the use of “March Madness” to the likes of Pepsi and Wilson Sporting Goods. However, the IHSA did not officially apply for a trademark registration until 1990.

Unfortunately for the IHSA, the NCAA began using the term March Madness in 1982 (eight years prior to the IHSA’s trademark application) to describe the NCAA Tournament and also begun licensing its use much the dismay of the IHSA.

As often happens when companies don’t register and/or police there trademarks, the courts had to step in and straighten things out. In Illinois High School Association v. GTE Vantage Inc., the courts decided that due to the IHSA not policing its rights, both the NCAA and the IHSA had rights to the mark “March Madness” despite the IHSA being the first to use the mark. In its decision the court ruled that the mark had acquired multiple meanings. Needless to say, someone at the IHSA was probably fired.

The IHSA and NCAA have since formed the March Madness Athletic Association, dedicated to suing infringers of the mark. While the parties were able to reach an agreement, the IHSA would have been in a much better financial situation had they registered and policed the mark at an earlier stage. The takeaway is simple: register and police your trademarks or you might lose a lot more than just this year’s office pool.
 
 

Did Apple Pay $533 Million to a Patent Troll or a Good Guy Standing Up for the Common Man?

(Did Apple Pay $533 Million to a Patent Troll or a Good Guy Standing Up for the Common Man? expands upon our article, An Extensive Collection of Patents Can Deter Lawsuits Altogether.)

Non-practicing entities are sometimes called “trolls” and are typically painted as bad guys in the IP world; however in this case it looks like Apple was seen as the bad guy and the “troll” was viewed as standing up for the little man. We think this case shows the importance of the “story” behind the patent, and how good lawyers recognize that story and use it to their client's advantage, (either in front of a jury or an examiner at the USPTO).
USPatent7334720-figure-drawings

How Apple lost $533 million to an 8th-grade dropout patent troll, by Philip Elmer-DeWitt at Fortune.com.

 

One of its mistakes was to make a fuss about Patrick Racz’ education in front of a Texas jury. Apple rarely comments on legal matters, and when it does it chooses its words carefully. So I read with interest the statement it issued after it was ordered to pay $532.9 million to Smartflash LLC for willful infringement of three U.S. patents. It’s a classic of the genre:

"Smartflash makes no products, has no employees, creates no jobs, has no U.S. presence, and is exploiting our patent system to seek royalties for technology Apple invented. We refused to pay off this company for the ideas our employees spent years innovating and unfortunately we have been left with no choice but to take this fight up through the court system. We rely on the patent system to protect real innovation and this case is one more example of why we feel so strongly Congress should enact meaningful patent reform.”

You don’t have to love the U.S. patent system or non-practicing entities (A.K.A. patent trolls) to wonder: How the hell did Apple lose this case? It’s a question that took on new urgency when Smartflash turned around two days later and sued Apple a second time, this time for infringement of four new patents. I wasn’t able to reach Apple’s attorneys, but I did have a chat with Brad Caldwell, the Dallas-based patent infringement specialist who represented Smartflash. He tells a curious story.

“I think the reason we won,” he says, “is because we focused on the questions that were going to be presented to the jury: Were the patents valid? Did Apple infringe? Was the infringement willful?” Apple, according to Caldwell, focused on everything but the issue at hand: Three digital rights management patents granted Patrick Racz and others between 2008 and 2012. Apple, he says, “paraded witness after witness through courtroom who couldn’t be bothered to read the patents.”

I haven’t seen the full transcript of the six-day trial, but I’ve read enough to get a feel for what Caldwell is talking about.
When Apple’s lawyers got Racz on the stand they brought up his education (he left school at 8th grade), his horticultural training, the fact that he was from a farming family on the Isle of Jersey. They asked him, according to Caldwell: “Did you invent the Internet?” “Did you invent touch screen technology?” Racz, of course, had not.

By contrast, Augustin Farrugia, Apple’s director of security and its key witness, had previously designed the national banking system for Singapore. On the stand he said he too hadn’t gotten around to reading Racz’ patents. “They thumbed their nose at other people,” says Caldwell. “They acted like we’re Apple and have no need to respect other people’s intellectual property.”

The jury, I’m told, was paying close attention. They took notes. They deliberated for three hours. They found for the plaintiff.
I don’t know whether Apple copied Racz intellectual property or even knew of its existence. I don’t know that it’s worth half a billion dollar. I don’t know where Racz got the technical chops to file these patents, and I’m certainly not qualified to say whether U.S. Patent Office should have granted them. But I think I know now how Apple lost the case.

So, did Apple pay $533 million to a patent troll or a good guy standing up for the common man? The moral of this tale may be as simple as this—it's important to frame yourself as the good guy, both to a jury and to a patent examiner. Especially, if you're seen as just a wee little troll. For more on the subject of Non-practicing Entities, click here.

Whether you’re looking to add to your own arsenal or are looking to acquire your first patent; give Corridor Law Group a call for a free consultation to discuss intelligent strategies that our firm can implement to protect your company’s assets.

An Extensive Collection of Patents Can Deter Lawsuits Altogether

(An Extensive Collection of Patents Can Deter Lawsuits Altogether is a follow-up to our article, Defensive Patent Portfolio Strategies.)

Technology companies often use defensives patents to prevent and/or settle litigation. The strategy involves accumulating an extensive collection of patents to use as protection in the event a competitor attempts to file an infringement suit. Like the Soviets and the United States during the Cold War, competitors often partake in “patent arm races” with neither side ever actually planning on pressing the metaphorical button, since doing so would set off a chain reaction of law suits leading to the “mutual assured destruction” of both parties.
CLG-patent-arm-races

A well-organized defensive patent portfolio strategy can often help protect your intellectual property—and those patents can deter lawsuits. The legal benefits can include:

  • The ability to force a settlement quickly by threatening a countersuit
  • Preventing competitors and trolls from applying for similar patents

The “patent arms race” is typically seen as an expensive game only the “big boys” can play. (Google's recently spent over $12.5 billion to acquire Motorola Mobility and its portfolio of roughly 17,000 patents to "help protect the Android ecosystem.") However, it’s worth noting that even having a couple of patents can be enough to level the playing field. In Smartflash vs. Apple, Apple was ordered to pay $533 million for patent infringement to patent licensing firm Smartflash LLC.

The moral of the story is, whether you’re a superpower with a patent arsenal large enough to “blow your competitors up" several times over, or a relative newcomer simply looking for respect, having the option to “go nuclear” on a competitor is a very powerful deterrent.

Whether you’re looking to add to your own arsenal or are looking to acquire your first patent; give Corridor Law Group a call for a free consultation to discuss intelligent strategies that our firm can implement to protect your company’s assets.

USPTO’s 16TH ANNUAL INDEPENDENT INVENTORS CONFERENCE 2014

USPTO’s 16TH ANNUAL INDEPENDENT INVENTORS CONFERENCE 2014

The United States Patent and Trademark Office’s (USPTO) 16th Annual Independent Inventors Conference will be held August 15-16, 2014. After taking place in various regions around the country, the annual conference is coming home to the USPTO headquarters in Alexandria, Virginia.

For two days, independent inventors and small business owners will have an opportunity to learn, network, and jumpstart their creative endeavors. Experts and senior officials from the USPTO will present valuable information on patents, trademarks, and other intellectual property (IP) matters while successful business owners and inventors will relate their inspiring personal experiences in bringing their dreams to market. In addition, representatives from government, legal, and business development entities will discuss commercial best practices and the various resources offered by their organizations. Each attendee will have an exclusive opportunity to meet one-on-one with a USPTO expert or IP professional of his or her choice, as well as hear keynote addresses from major figures in the entrepreneurial world. The featured keynote luncheon speaker for Friday, August 15, is Woody Norris. A successful serial inventor holding over 50 patents, Norris was the recipient of the $500,000 Lemelson-MIT prize in 2005.

While the Annual Independent Inventors Conference promises to be a great opportunity for independent inventors and small business owners to obtain a better understanding of the legal tools available to them; one doesn’t need to travel to Virginia to receive this valuable information. In fact, an expert resource is very accessible right here...a phone call away with the IP attorneys at Corridor Law Group. Our attorneys offer a free 20-minute consultation to anyone in the market for legal advice on how to protect their intellectual property. With decades of experience, our attorneys have advised clients ranging from individual inventors to Fortune 500 companies.

So if you’re an individual inventor, a CEO of a fortune 500 company, or a president of a startup and you don't have time for a trip to Virginia in the coming days, just give the attorneys at Corridor Law a call.

Try Not to Get Too High on a Clever Trademark

Try Not to Get Too High on a Clever Trademark

Colorado is the first state to legalize marijuana for non-medical sale and use. The state projects $578.1 million a year in marijuana sales from the over a hundred new businesses selling pot.

An Influx of Marijuana Trademarks

This myriad of new businesses opening up in the marijuana industry is a perfect illustration of how important it is for consumers to be able to identify the “high” achieving business over those with poor quality standards that are destined to “burn-out.” Businesses realize this and hence it is unsurprising that the legalization of pot has created a rush to the United States Patent and Trademark Office for those looking to register trademarks for new products and services related to the marijuana industry—marijuana trademarks if you will.

Some of the more interesting marks include: MJ Freeway for computer services for inventory control and management of medical marijuana; Giving Tree of Denver for use with retail services featuring clothing and lifestyle herbs including marijuana; MyBudTender for a mobile app that provides marijuana-related information; Colorado Weed Wear for use on clothing; and Pot is the New Gay for consulting services related to marijuana legalization strategies.

At Corridor Law Group we are experienced at helping our clients obtain protection for new marks and enforce their current marks. We also work with a network of marketing specialists to aid clients in creating and branding a new legally protectable trademark.

When considering a trademark, business owners need to understand that the protection a given mark will receive from the courts, and the likelihood that a registration will be granted from the USPTO, depends on, among other factors, where the mark falls on the “spectrum of distinctiveness” which runs from fanciful to generic.

Marks that are fanciful are “coined” terms, and generally receive the most protection. Examples of fanciful marks include Kodak, Starbucks, and Exxon. Similar to fanciful marks, and slightly lower on the “spectrum of distinctiveness” are arbitrary marks. Arbitrary marks are common words which are normally used in a way that has no relationship to the goods or services they are being used to identify. Possibly the most famous example of an arbitrary mark is Apple Computer. While fanciful and arbitrary marks are easily registered and protected, companies may be discouraged from using them since by their nature, they tell nothing about the product or services being offered.

Further down the “spectrum of distinctiveness” fall the suggestive trademarks. These are marks that allude to some quality or characteristic of the product or service, but are not merely descriptive. Examples or suggestive marks include Jaguar and Mustang for automobiles.

Even lower on the “spectrum of distinctiveness are descriptive trademarks. These marks are often chosen by companies as they are self-explanatory, but it should be noted that the scope of their protection is quite narrow. Examples of descriptive marks would include Carpetland for a carpet store or Famous Footwear for a shoe store.

Finally, at the far end of the “spectrum of distinctiveness” are generic marks. Generic trademarks occur when the mark used to identify the product is also used to identify the whole class of similar products. Although these marks are not protectable, an example of one would be using Apple to identify apples.

While creative branding is important, businesses should never forget that the purpose of a trademark is to serve as a source identification. Some of the most famous marks had no relationship to their related products. Although a creative trademark may at the fringes help sell an item, at the end a company’s success ride or falls on the quality of the goods and services it provides.


Props to 99designs for providing some nice "brand" examples (seen above) and holding up their end of the spectrum of distinctiveness: cheap marijuana logo design for companies.