What Is Intellectual Property?

Intellectual Property (“IP”) is generally classified as intangible personal property, meaning it’s an asset that lacks physical form but holds economic value.

The main types of IP are:

• Copyrights (protections for original works like books, music, software, art): Treated as intangible personal property under federal law.
• Patents (exclusive rights to inventions or processes): Classified as intangible personal property.
• Trademarks (protections for brands, logos, slogans): Regarded as intangible personal property.
• Trade Secrets (confidential business info like formulas, methods): Treated as intangible personal property or contract rights (enforced via agreements).

How Is IP Viewed in Marriage?

When you intertwine IP and marriage, it can create complications that many couples may not have been aware of previously. If you and your partner have not had a conversation or set up a prenuptial agreement where you explicitly state what happens to any IP, either created before or during marriage, in the event of divorce it can create animosity over who owns the IP, as well as who receives any assets the IP may generate.

Marital vs. Separate

IP developed before marriage is usually separate, but if developed during, that IP becomes marital. Even if the IP was created before marriage, an increase in value throughout the duration of the marriage may become marital property.

Valuation of the Asset

Valuing IP is complicated because it is intangible and based on future potential income. In some cases, if the IP is crucial to a spouse’s career and cannot be easily split, a court might award the asset to the creator, while retaining the non-creating spouse’s entitlement to financial interest in the work. Another method of division of IP is for the court to offset a given value of the IP by giving the spouse that is not awarded the IP more of other marital assets to balance the total value.

How A Court Would Divide in Divorce

Generally, a court will award intellectual property to the creator spouse (the spouse who created or obtained the intellectual property). Thus, the creator spouse has sole management and control over the intellectual property. However, the non-creator spouse may still be entitled to a financial interest in the work, if the work was created during the marriage. For example, if a spouse creates a new iPhone Application during the marriage, that spouse would hold the exclusive possession and control of that Application. The other spouse, however, could be entitled to a portion of the royalties and any other economic benefit earned from the Application.

How Do I Protect My Intellectual Property?

A prenuptial agreement is an effective way to protect your IP and any associated assets prior to marriage or in the event of a divorce. A well-drafted prenup can establish clear guidelines for how IP will be treated if the marriage ends. If you and your spouse have created IP during marriage, an experienced attorney can outline ownership rights or how any income associated with IP would be divided.

If you are an individual or business with intellectual property and would like advice on these assets, as well as how to protect them in the case of an upcoming marriage or potential divorce, our firm can handle these issues all under one roof. Our Intellectual Property and Domestic Relations attorneys will work hand-in-hand to ensure your IP is protected and passed along as you desire it to be.

For more information, or to seek counsel from our Family Law or Intellectual Property practice groups, please reach out to request a consultation or call us at 216-696-1422.

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On October 13, 2025, the J.M. Smucker Company (“Smucker”) filed a federal lawsuit in the U.S. District Court for the Northern District of Ohio against Trader Joe’s, claiming the grocery chain’s frozen peanut butter and jelly sandwiches are illegal copycats of Smucker’s famous Uncrustables®. Smucker alleges that Trader Joe’s “Crustless Peanut Butter & Strawberry Jam Sandwiches” copy the distinctive look and branding of Uncrustables. In particular, Smucker’s Complaint (link here: link ) highlights that Trader Joe’s sandwiches are round and crustless with the same “pie-like” crimped edges as Uncrustables. The complaint describes Trader Joe’s product as “an obvious attempt to trade off of the fame and recognition” of the Uncrustables brand. According to Smucker, the nearly identical design and packaging could confuse consumers into thinking Trader Joe’s sandwiches are made by or affiliated with Smucker.  

Smucker’s Uncrustables®

Trader Joe’s Crustless Peanut Butter & Strawberry Jam Sandwiches

Uncrustables have become a massive business for Smucker. The Ohio-based company disclosed in the lawsuit that it now sells approximately 1.5 billion Uncrustables sandwiches per year and has invested over $1 billion in developing and marketing the brand over two decades. Given this success, Smucker considers the round, crimp-edged sandwich design and its blue packaging elements to be valuable intellectual property.  In fact, Smucker has obtained federal trademark registrations covering the sandwich’s unique shape (a “round pie-like shape with distinct peripheral undulated crimping”) as well as the bitten-sandwich image used on its packaging. 

Trade Dress Legal Issues: Distinctiveness vs. Functionality

The dispute raises important questions about trade dress protection for food products. Trade dress refers to the distinctive visual appearance of a product or its packaging that signifies the product’s source. Under U.S. trademark law (the Lanham Act, 15 U.S.C. §§ 1051 et seq.), trade dress can be protected if it is distinctive (i.e. consumers associate the design with a particular source) and non-functional.  Smucker claims that the Uncrustables design has acquired this distinctiveness – known in trademark law as “secondary meaning” – due to the sandwich’s long-term popularity and extensive promotion.  The company argues that the round, crimped-edge look and blue color scheme of Uncrustables are now closely identified with Smucker in the minds of consumers, beyond any mere utilitarian purpose. 

However, Trader Joe’s is expected to challenge those assertions. A key issue will be whether the shared features are purely functional or serve as brand identifiers. Trader Joe’s could argue that the crimped, crustless round shape is functional – it seals the sandwich to keep filling inside and eliminates messy crusts – and thus cannot be monopolized by one company as a trademark.  If a design is deemed functional, it is not legally protectable as trade dress, regardless of consumer recognition. Notably, Smucker itself once secured patents in 1999 for its “sealed, crustless sandwich” innovation. The existence of those early patents suggests the crimped-edge design had practical advantages, a point that may bolster Trader Joe’s functionality defense. Trader Joe’s might also highlight small differences (for example, its sandwich reportedly has a slightly more square shape) to argue that its product is not a slavish copy of Uncrustables’ design. 

Another legal question is whether the Uncrustables trade dress was distinctive before Trader Joe’s entered the market.  Because product design trade dress cannot be inherently distinctive, Smucker must prove that consumers recognize the round, crustless PB&J and its blue packaging as uniquely Smucker’s – a burden it will try to meet with evidence of its large sales and marketing investment. 

Smucker’s lawsuit asserts multiple causes of action under the Lanham Act and related laws, including trademark and trade dress infringement, trademark dilution, false designation of origin, unfair competition, and deceptive trade practices. All of these claims hinge on showing that Trader Joe’s look-alike sandwiches are confusing consumers and diluting the Uncrustables brand’s distinct identity.

What is at Stake?

Smucker is asking the court for an injunction to stop Trader Joe’s from selling the crustless PB&J product and to force a recall or destruction of all existing Trader Joe’s inventory and packaging that mimics Uncrustables.  Smucker also wants to recover Trader Joe’s profits from the sandwich, along with damages and attorneys’ fees. Essentially, if Smucker prevails, Trader Joe’s could be required to repackage or pull its product from shelves, an expensive outcome for the grocery chain.

The outcome of this lawsuit will be closely watched in the food and retail industry. If Smucker can prove its Uncrustables design is a distinctive, non-functional mark, it could reinforce the ability of companies to protect the appearance of even simple food products. On the other hand, if Trader Joe’s shows that the round, crimped sandwich shape is functional or not uniquely associated with Smucker, the case could limit how far trade dress claims can go for familiar grocery staples.

For more information or to seek counsel from our Intellectual Property group, please reach out to request a consultation or call us at 216-696-1422.

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Secure Your Business Domain Name Early

Your domain name is your business’s address on the internet, so it’s crucial to claim it before someone else does. Whenever possible, register a domain that matches your business name exactly (for example, YourBusinessName.com). Once you obtain rights in a domain name, no one else can use it, making it one of the easiest ways to protect your online presence. Be sure to claim domain names tied to your business name, key brands, and trademarks early – ideally, as soon as you settle on a business name and/or brand name – to avoid having cyber-squatters claim your preferred domain name(s). 

Protect Your Brand with Trademark Registrations

A trademark registration is a legal tool that protects your trademarks – for example, words, slogans, and logos – that you market and sell your goods or services under. Federally registering your marks allows you to prevent anyone else in the country from using them to market or sell similar goods or services. They are a powerful tool and provide cost-efficient protection. 

Use Clear Terms of Service to Protect Your Content

Your website’s Terms of Service (TOS) is not just fine print, it’s a valuable tool for protecting your original content and setting the rules for site visitors. In your TOS (sometimes called Terms of Use or Terms & Conditions), include language that explicitly states your business owns all the content published on the site (text, images, videos, etc.) and that you reserve all rights to that material. By clearly declaring your ownership, you put visitors on notice that things like your blog posts, product descriptions, and photos belong to your business and are not free for others to copy or republish.  Having a well-drafted TOS offers additional benefits as well. It can limit your liability, set guidelines for user behavior, and generally establish a professional tone for your website.  

Protecting your small business’s online presence from copycats might sound daunting, but it really comes down to a few proactive steps. By taking action early, you can prevent confusion among customers and save yourself the headaches associated with dealing with imitators later on. In the end, defending your online presence allows you to focus on what matters most: running and growing your business with confidence.

To seek counsel from our Intellectual Property practice group, please reach out to request a consultation or call us at 216-696-1422.

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In celebration of National Small Business Month, we proudly recognize the contributions of small businesses in our community. McCarthy Lebit is committed to supporting entrepreneurs and business owners with trusted legal guidance through every stage of their journey, from formation to growth and beyond. As a law firm deeply connected to the small business community, we’re proud to serve as trusted advisors and advocates for business owners throughout the region.

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• Trademarks (words, logos, symbols, colors, sounds) associated with the company, product, or service;
• Packaging for a product;
• Creative works (e.g. user manuals, website design, marketing materials, etc.) associated with the company, product, or service;
• Uniforms worn by employees;
• The look and feel of your place of business; and/or
• The design of the product itself.

Branding is critical because it encourages customer loyalty, indicates a high level of quality, and is a source of goodwill and increased value for your business. 

Risks of Not Branding Your Business

Without effective branding, your business and your goods or services are just a generic offering that provides no recognition and does not encourage customer loyalty or repeat business. This often results in one-time transactions, a diminished likelihood of repeat sales, and a reduction in the overall value of your business.

Benefits of Branding Your Business

With the proper branding, consumers come to associate you and your merchandise or services with a particular level of quality. Such “brand association” fosters customer loyalty, encouraging repeat business and boosting referrals. Establishing a brand is an effective way for building a business reputation, enhancing customer awareness and loyalty, increasing the value of your business, establishing credibility and trust with customers, and increasing the effectiveness of marketing efforts.

Establishing a Business Brand

Before you decide on your business brand, you must be certain that it is available for your use. It is vital to reach out to an intellectual property (IP) attorney to research the availability of the brand, as this research can be very nuanced and intricate. If clearance is given from experienced IP counsel, you can feel more confident in dedicating the time, effort, and resources to establish your brand. Establishing your brand may involve securing one or more rights, including:

• Registering a company name with the with the secretary of state;
• Obtaining a trademark registration in your state as well as with the United States Patent and Trademark Office;
• Securing copyright protection for your creative materials;
• Entering business contracts with suppliers, licensees, or distributors to control the branding of the products or services,
• Registering an internet domain name, and
• Attaining a design patent on a product design.

The more of these rights you establish, the better equipped you will be to protect your brand from infringement by others. It is important to engage an experienced intellectual property lawyer who can assist in determining which of these brand-building protections apply to your brand, and can assist in securing the broadest protections possible.

Brand Protection

Once you have established and secured rights in your brand, you now must protect it so that competitors cannot improperly use it and benefit from your goodwill.

The first step in protecting a brand is using it. If you do not use or control the use of your brand, especially for a trademark, you may lose the right to exclude others from using it.

The next step is to monitor the use of your brand (or similar brands) by others. This may include monitoring competitors’ business activities, monitoring trademark applications filed with the USPTO for similar trademarks, keeping abreast of the relevant industry and trends, etc. A trademark watch can be established for this purpose.

The third step is to enforce your rights against infringers. If you do not stop brand infringement, your rights in the brand may be lost with respect to this and other infringing parties. If you find yourself a victim of brand infringement, it is advisable to hire a lawyer to contact the infringing party. Through the counsel of an attorney, a demand to cease the infringement should be made, settlements for any damages caused by the infringement should be negotiated, and if necessary, a lawsuit should be filed.

In summary, establishing and implementing strong branding creates an impactful connection between you and the consumer. This connection not only enables you as a business owner to charge a premium for your goods or services, but it directly contributes to increased profits and the overall value of your business.

If you want to establish a brand, have questions about branding, or if you want to seek counsel from our Intellectual Property practice group, please reach out to request a consultation or call us at 216-696-1422.

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Obtaining rights in your IP is crucial for business success and may increase the value of your company for a possible future sale or licensing of business interests.  A single business venture or idea may involve one or more types of IP, and therefore without consultation with an experienced IP attorney, it may be difficult to determine which type of IP you have and what type of IP protection to pursue. Successfully navigating the world of IP requires deep understanding and knowledge and should be done with the help of a qualified IP attorney.

The following is a primer on the four types of intellectual property and provides a general idea of how each type of IP may be relevant to your business. 

Trademarks

A trademark is a word, symbol, design, or even a sound, that is used to identify a source of goods or services.  A trademark allows consumers to know where the goods or services come from.  Examples of well-known trademarks include the words NIKE, PEPSI, MCDONALD’S, but also Nike’s swoosh, Pepsi’s red, blue and white globe, and McDonald’s golden arches, all of which indicate the source of the goods or services.

You should consider filing an application for a federal trademark registration to protect the branding of your goods and services.  Such a registration offers significant protection for your mark by providing nationwide coverage against infringing use of the mark or confusingly similar marks for similar goods or services.  A federal registration also allows for higher damages to be awarded and can last as long as the mark is used in commerce.

Patents

A patent is the exclusive right to make, use, sell, import, or offer to sell an invention.  There are three types of patents that can be attained.  A utility patent may be granted for a machine, article of manufacture, composition of matter, or a process, and covers how a thing is constructed, how it works, and/or what it does. However, a utility patent does not cover scientific theories, mathematical formulas, discoveries, or other abstract ideas.  A design patent covers how a thing looks, i.e. its aesthetics.  A plant patent can cover a new variety of plant. 

A patent can be granted if the invention is new and also not obvious over what is already known.  A utility patent provides nationwide protection and lasts for 20 years from the filing date of the application, after which the invention can be used by anyone. 

Copyrights

A copyright is the right to prevent others from copying your original work of authorship, such as a photograph, book, article, movie, a recorded song, computer code, etc.  A federal copyright registration allows you to control the distribution, reproduction, display, or performance of your work, and to control the production of derivative works based on your original work.

A federal copyright registration, like a trademark registration, offers nationwide coverage against infringing use of the work, and provides a powerful tool against infringers.  A copyright lasts for the life of the owner plus 70 years.

Trade Secrets

A trade secret is information known only to people within a company and is used by the company as part of the business.  A trade secret is not disclosed to anyone outside the company, and thus is not included in any application for a trademark, copyright, or patent. 

A trade secret may involve a recipe for a product such as the recipe for Coca-Cola, a computer code for a program that is offered as software as a service (SaaS), research and development information, business methods, or plans for expanding a business.  This information can be protected from disclosure through the use of contracts, passwords, restricted access, etc., and thus can last indefinitely.

For more information or to seek counsel from our intellectual property practice, please reach out to request a consultation or call us at 216-696-1422.

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What is a U.S. patent?

A patent is a right granted by the United States Patent and Trademark Office (USPTO). A patent gives the owner of the invention the right for a limited time (20 years from filing) to exclude others from making, using, selling, offering to sell, and importing an invention into the United States. In other words, if you get a patent granted, you can then prevent others from using the invention. After a patent expires, anyone is free to use the invention. A patent is considered intellectual property, and therefore may be transferred like other property between two people or entities.

There are three different kinds of patents that are granted by the USPTO, i.e. utility patents (covers what something is or does), design patents (covers the non-functional appearance of an object), and plant patents (covers new species of plants). This article will deal only with utility patents.

What kind of inventions are patentable?

Only certain kinds of inventions can be patented, and these include a machine, article of manufacture, composition of matter, or a process (see 35 USC §101). Scientific theories, mathematical formulas, discoveries, or abstract ideas, for example, cannot be patented.

Requirements for patentability

An invention is patentable only if it is new and not obvious over what is already known. More specifically, for an invention to be patentable, it cannot be “anticipated by” (see 35 U.S.C. §102) or “obvious over” (see 35 U.S.C. §103) what is known. Both of these thresholds of anticipation and obviousness must be satisfied. Therefore, although an invention may be new (i.e. it has not previously been invented), it may still not be patentable if it were considered obvious to modify what is known to arrive at the invention.

As an example of the anticipation and obviousness analysis, one could consider the spork. When the spork was first invented, it may have been new (i.e. not anticipated under §102) because only the spoon and fork existed at the time. However, the spork might still not have been patentable if it were found obvious to combine the spoon and the fork to arrive at the spork. On the other hand, it may not have been considered obvious to combine the spoon and the fork to arrive at the spork, and therefore the spork may have been patentable (see U.S. Patent No. 147,119 (1874))

How long does a U.S. utility patent last?

A U.S. utility patent typically lasts 20 years from the filing date. A U.S. patent is only enforceable in the U.S.A. If patent protection is sought in other countries, then separate patent applications need to be filed in each country.

Who enforces a patent?

You are required to enforce your own patent through litigation or through other less-extreme means such as a cease-and-desist letter. Please consult with an attorney before sending such a letter, as the infringer can file a preemptive lawsuit attacking the validity of your patent.

Do you need a patent to protect your invention?

If you want to prevent others from making, using, selling, or importing your invention, then you need a patent to do this. Otherwise, your invention can be used by anyone.

Do you need a patent attorney to help prepare the patent application?

A patent application is a very technical document and the USPTO has varied and complex formatting, language, and information requirements for these applications. An experienced patent attorney (i.e. intellectual property lawyer) can provide invaluable insight and help in meeting these requirements and attaining the broadest possible patent coverage on your invention.

While it may be possible to file your own patent application, this is not advised since a mistake on your part can significantly restrict or prevent patent coverage for your invention. Filing a patent application on your own may result in no patent being granted, or if granted, the protection of such a patent may be overly narrow, thus decreasing the value of such a patent. Therefore, it is highly recommended that you retain the services of patent counsel.

What about a provisional patent application?

Provisional patent applications are an optional, less-expensive first step into the patent process compared to filing a regular patent application. A provisional application is a document that is filed with the USPTO. The provisional application is not reviewed for patentability by a patent examiner, and therefore it cannot be granted or be issued as a patent. A provisional patent application is used to establish a “priority date” for an invention, and gives you a year to try to promote, make, sell, or otherwise commercialize the invention. Within that year, if the invention is deemed by you to be worthwhile, a regular (non-provisional) patent application may be filed. The regular patent application must be filed within one year from the priority date, and then the regular patent application will have that same priority date as the provisional application. A provisional patent application does not have all the formal requirements associated with filing a regular patent application, and thus preparation and filing costs of the provisional application are lower than a regular patent application.

What common issues may preclude a patent from being granted?

“Public disclosure” more than one year before filing a provisional or regular patent application will preclude a patent from being granted. Public disclosure can manifest itself in many forms, and therefore consultation with a patent attorney is highly encouraged before discussing with or showing your invention to others.

What is the process for getting a patent?

• Filing: A regular patent application is filed with the USPTO. If formal requirements are met, the application is assigned to a patent examiner for examination.
• Review: The patent examiner reviews the application for patentability, using the priority date of the application as a starting point to search back for “prior art” (already existing technology) that anticipates your invention or makes your invention obvious. This patentability analysis focuses on the “claims” in the patent application, which is a listing of the subject matter on which protection is sought.
• Office Action: The examiner will issue an Office Action, which is a document outlining whether or not the invention is patentable. The Office Action will issue within about 22 months from filing the application. The Office Action may include an allowance and/or a rejection of one or more of the claims.
• Response: Within three months, and up to three additional months with a fee, a response to the rejection must be filed with the USPTO answering all the rejections of the claims. The response can include arguments and/or amendments to the claims for overcoming the rejections.
• Final Office Action: If the examiner is not convinced by the response to withdrawn the rejection, the examiner will issue a Final Office Action rejecting the claims.
• Appeal/RCE: The Final Office Action can be answered with an Appeal to the Patent Trial and Appeal Board (PTAB) for review of the examiner’s rejection, or a Request for Continued Examination (RCE) can be filed with the examiner.
• Allowance: If the application is granted, then a patent will issue with the allowed claims. The scope of the patent depends on the allowed claims.
• Issuance: Once the issue fee is paid, the patent will issue in due course.

How much does it cost to get a patent?

There are several required and optional costs associated with the patent process. These may include getting a patentability search and opinion, provisional application drafting and filing, non-provisional application drafting and filing, responding to an office action (rejection), filing a Request for Continued Examination (RCE), filing an appeal, and paying an issue fee among others. These costs change over time and can vary depending on your locale and attorney. The costs include official USPTO fees (see the USPTO fee schedule for the current schedule of fees) as well as attorney fees.

If you want to file a patent application, you should budget at least $8,000-$10,000 as of 2023. In case of a rejection from the USPTO, then you will need to prosecute the application to allowance (i.e. attempt to get the application granted as a patent). To complete the patent process, you should budget a total of $15,000-$25,000 as of 2023. After grant, there are maintenance fees due to keep the patent in force. These fees are due at years 4, 8, and 12 after issuance. Each subsequent maintenance fee is higher than the previous one (see the fee schedule above).

How long does it take to get a patent granted?

The typical time from filing the application to patent grant is about 22-30 months.

For more information or to seek counsel from our intellectual property law group, please reach out to request a consultation or call us at 216-696-1422.

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Recently, Coca-Cola found itself in a situation where its failure to seek registration in the United States ultimately made proving economic and reputational harm caused by a competitor’s superior registration a challenge, and one that they could not meet.

Background

Coca-Cola acquired Parle (Exports), Limited of Bombay, India (Parle) in 1993. Parle had introduced Thums Up, a cola beverage, in India in 1977 and Limca, a lemon-lime soft drink, in India in 1971 and had obtained Indian registrations of the marks THUMS UP and LIMCA. After acquiring Parle and its Indian registrations, Coca-Cola continued to sell the soft drinks under these marks throughout India and in countries such as Bangladesh, Oman, Singapore, the UAE, Angola, Nigeria, Sri Lanka and Bhutan.

While these products were quite popular in these Asian and African markets, Coca-Cola never widely distributed them in the United States. The cola could be found in “World of Coca-Cola” and “Coca-Cola Store” locations in Atlanta and Orlando, but this use was ultimately considered de minimis. The drinks were distributed in the United States by third-party retailers in restaurants, grocery stores and other retail outlets that service the Indian community in the United States. Additionally, Coca-Cola offered no evidence to show it attempted to obtain registrations for THUMS UP or LIMCA in the United States.

Meenaxi began selling cola and lemon-lime soda in the United States under the marks THUMS UP and LIMCA in 2008. In 2012, it sought and obtained registrations at the United States Patent and Trademark Office (USPTO) for both marks.

Trademark Trial and Appeal Board

In 2016, Coca-Cola challenged Meenaxi’s registrations through the Trademark Trial and Appeal Board (TTAB), bringing a cancellation claim under § 14(3) of the Lanham Act for misrepresentation of source. The Lanham Act provides that any person who “believes that he is or will be damaged” by the registration of a mark may file a petition to cancel the registration of that mark if “the registered mark is being used by, or with the permission of, the registrant so as to misrepresent the source of the goods or services on or in connection with which the mark is used.” 5 U.S.C. §1064(3).

In its 2019 decision, the TTAB sided with Coca-Cola and found that Meenaxi’s copycat business model of reproducing popular Indian brands and selling them to Indian-American consumers was intended to cause consumers “to draw the logical conclusion that Respondent’s products in the United States are licensed or produced by the source of the same types of cola and lemon-lime soda sold under these marks for decades in India.” The TTAB also found it notable that these were not isolated instances by Meenaxi, but rather “part of a broader pattern of copying the word marks and logos of others, particularly brands from India.” In fact, other Meenaxi marks, including NUTRELA, RASNA and REAL NAMKEEN, have been challenged in the United States, resulting in the cancellation or abandonment of the other Meenaxi registrations or applications. Coca-Cola seemed to have won the day.

Court of Appeals for the Federal Circuit

Meenaxi appealed to the Court of Appeals for the Federal Circuit (CAFC) and the court reversed the TTAB decision holding that Coca-Cola had not established a cause of action under the Lanham Act. It may seem strange that a basis for appeal would exist given Meenaxi’s copycat business strategy. However, despite the seemingly deceptive business practice by Meenaxi, Coca-Cola needed to show harm in the United States. Meenaxi’s appeal challenged that Coca-Cola had met that threshold.

In 2014, the Supreme Court decision in Lexmark International, Inc. v. Static Control Components, Inc. stated that “entitlement to a statutory cause of action under the Lanham Act requires demonstrating (1) an interest falling within the zone of interests protected by the Lanham Act and (2) an injury proximately caused by a violation of the Act.” This requires a claimant, here Coca-Cola, to show an injury to its commercial interest, like lost sales and damage to its business reputation, in the United States. The TTAB accepted Coca-Cola’s assertions that Meenaxi’s actions resulted in these types of injuries, but the CAFC called their conclusions “stereotyped speculation.”

Meenaxi’s appeal asserted that Coca-Cola failed to show evidence of lost sales and failed to demonstrate any reputational injury in the United States. Coca-Cola provided testimony that their THUMS UP and LIMCA products were sold in Indian grocery stores to show lost sales, but the court rejected this argument because third-party sales do not establish sales lost by Coca-Cola. Further, Coca-Cola did not present any survey results or other evidence to show that brand recognition for either product existed in the United States. Awareness abroad, regardless of how widespread, is not relevant in the United States because trademark rights are territorial.

Coca-Cola’s failure to establish an injury in the United States meant it was not able to sustain a cause of action under the Lanham Act. The court found the evidence did not support the TTAB’s holding and reversed, restoring Meenaxi’s registrations for both marks.

Conclusion

This case showcases the importance of trademark registration. Coca-Cola had at least 15 years to make use of and secure its rights in these marks in the United States before Meenaxi began using the marks, but it failed to do so. Coca-Cola’s failure to use and seek registration for these marks in the United States allowed a competitor to obtain priority in the marks. Despite Meenaxi’s arguably unscrupulous business practice of intentionally adopting well-known marks of Indian goods, there must be a showing of economic and reputational harm in the United States in order to obtain recompense under federal trademark law.

It is critical for brand owners to seek protection of their brands in the United States if they intend to enter this market. This case underlines the importance of seeking federal registration, as well as beginning and documenting use in the United States as early as possible. The importance of trademark registration cannot be understated. Registration should be part of the beginning stages of brand protection so that businesses can benefit from the full protection provided under trademark law. Businesses that miss this crucial step could find themselves without rights in the very situations that the trademark law was intended to prevent.

For more information or to seek counsel from our intellectual property group, reach out to request a consultation or call us at 216-696-1422.

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NCAA Policy

Effective July 1, 2021, the NCAA implemented an interim policy that allows student-athletes to profit off their NIL. Student-athletes engaging in NIL endorsements or sponsorships will no longer lose their eligibility. However, much is left up to state NIL laws and as of yet there is no federal NIL legislation, though there has been a significant push for this with many University coaches and administrators, student-athletes, and the NCAA President speaking to Congress on the issue. In the absence of a federal law governing NIL, states and individual institutions will be left to deal with matters of compliance and enforcement of state and institutional rules and regulations.

In addition to schools being responsible for reporting potential violations of the NCAA interim policy or other NCAA rules, there are some important provisions in the interim policy for student-athletes to be aware of:

• Any NIL compensation must be for work actually performed
• NIL compensation cannot be contingent on enrollment at a particular school
• While performance may enhance NIL value, NIL compensation cannot be contingent on specific performance or achievement (e.g. points earned, etc.)
• NIL compensation cannot be in violation or contradiction of state or institutional policies

Ohio’s NIL Laws

On June 16, 2021, the Ohio Senate unanimously voted in favor of Senate Bill-187. The bill was brought to the House of Representatives on June 24, 2021 and passed. The bill entered into law July 1, the same date as seven other states’ NIL bills. With only 12 states left with no proposed or passed NIL legislation and Ohio having a large number of NCAA schools and student-athletes, it makes sense that Ohio was one of the many states addressing this issue right away and a means of staying competitive in the collegiate sports environment.

In addition to permitting student-athletes to engage in NIL deals without affecting their eligibility to play or receive scholarships, Ohio NIL law has some important provisions that place obligations on both student-athletes and schools:

• Student-athletes may engage professional representation regarding NIL opportunities
• Student-athletes must disclose proposed NIL contracts to the institution for review and, in the event of a conflict, the institution must communicate the conflict to the student-athlete so as to allow the student-athlete an opportunity to renegotiate the proposed contract
• Institutions are permitted to establish reasonable policies or standards to address a student-athlete’s failure to disclose a proposed NIL contract
• Institutions (as well as athletic associations, conferences, groups or organizations with authority over intercollegiate athletics) may prohibit a student-athlete from entering into an NIL contract if the contract is associated with controlled substances, adult entertainment, casinos, or entities that sponsor or promote “gambling activities”
• Student-athletes cannot enter into contracts that require them to display a product, or advertise for a sponsor, during official team activities or certain other times, if that requirement conflicts with a provision of a contract to which the institution is a party
• Institutions are not obligated to “identify, create, facilitate, negotiate, or otherwise enable” NIL opportunities for student-athletes
• Student-athletes are not afforded any right to use an institution’s name, trademarks, service marks, logos, symbols or “any other intellectual property regardless of whether the intellectual property is registered with the appropriate authority”

Many schools have implemented educational resources for student-athletes to ensure they’re operating within the law and in some cases even providing one-on-one training in brand building.

FTC Endorsement Guides

In addition to the NCAA policy and state laws, the Federal Trade Commission (FTC) has guides for the use of endorsements and testimonials in advertising meant to provide guidance on the use of endorsements and testimonials, and to prevent deceptive and misleading advertisements and set forth the general principles that the FTC uses in evaluating whether practices fall within the scope of conduct declared unlawful by Section 5 of the Federal Trade Commission Act.

A student-athlete’s endorsement of a product or service must reflect his or her honest opinions, findings, beliefs, or experiences. Further, if an ad represents that the student-athlete uses the endorsed product, they must in fact be a bona fide user at the time of the endorsement. Student-athletes must also disclose material connections between themselves and their endorsers (i.e. an employment, personal, family, or financial relationship between the student-athlete and the business). Additionally, the FTC does not limit financial relationships to money, it can also include free or discounted products or perks.

Intellectual Property

Student-athletes are now able to begin building their brand. While, as mentioned above, they are not necessarily afforded any rights in IP owned by their university, they can certainly create and use their own to facilitate brand recognition. One way to do so would be through federal trademarks with the United States Patent and Trademark Office. Not only will trademarks allow student-athletes to capitalize on their NIL, they provide protection against imitations and counterfeits. Indeed, many student-athletes have been proactive in doing so, like Graham Mertz, the quarterback at the University of Wisconsin-Madison, who submitted a trademark application for his own personal logo incorporating his initials.

Additionally, colleges and universities are permitted to grant permission to student-athletes to use university-owned trademarks and have entered into licensing agreements with their current and former student-athletes to allow the use of their trademarks. These licensing agreements also provide a means for these institutions to restrict the use of their trademarks to endorsements that align with their values. When entering into a license for trademarks owned by another, student-athletes (and the businesses who are engaging them) need to have a clear understanding of the scope of use permitted under these license agreements.

Conclusion

Whether it is through entering into NIL agreements, creating and protecting their brand, or licensing the marks of their university, as student-athletes and their advisors begin to explore these new NIL opportunities, it is imperative to navigate carefully within this changing legal landscape.

For more information or assistance, please reach out to request a consultation, give us a call at 216-696-1422.

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So, what are the differences and what do these types of intellectual property protect?

Patents

The type of patents that most people are familiar with are utility patents. Utility patents are used to protect a “new and useful process, machine, article of manufacture, or composition of matter, or any new and useful improvement thereof.” (35 U.S.C. § 101) The right conferred when a patent is granted is the ability to prevent others from “making, using, offering for sale, or selling” the invention in the United States or importing the invention into the United States. (35 U.S.C § 154) It’s important to understand that the right is a right to exclude others, not a right for the patent owner to practice the invention themselves. This right is granted for a limited time in exchange for public disclosure of the invention. Once the term of protection has ended, the patented invention enters the public domain. In addition to utility patents, there are design patents which protect new, original, and ornamental design for an article of manufacture and plant patents which protect asexually reproduced, distinct and new plant varieties. It’s important to make sure you choose the appropriate type of patent to protect your innovation.

It is also important to note that not everything is considered patentable subject matter. There has been a lot of discussion recently about what is encompassed as patentable subject matter, but generally the subject matter that cannot be patented includes mathematical formulas, naturally occurring substances, laws of nature, and processes done entirely with the human body. Furthermore, patents cannot protect mere ideas or suggestions.

Broadly speaking, patent protection safeguards inventions, such as chemical compositions like pharmaceutical drugs, mechanical processes like complex machinery, or machine designs that are new, unique, and usable in some type of industry, from other parties copying, making, using, or selling the invention without the patent owner’s consent.

Trademarks

Trademarks can be any word, phrase, symbol, or design that identify the source of your goods or services. Your trademark is how consumers recognize you in the marketplace and it allows you to distinguish yourself from competitors as well as build brand recognition for your business. There are common law rights that apply as soon as you begin using your mark in commerce. The limitation to relying on common law rights is that these rights can only be enforced in the specific area where you used your trademark. However, federal or state trademark registration affords broader rights and protections. With a federal registration, trademark owners establish rights throughout the United States and its territories.

While the most common trademarks are words, phrases, symbols or designs, there are some instances of more unusual marks such as sounds or colors. Do you know the MGM Lion Roar or the Law and Order chimes? How about Tiffany blue or UPS brown? These all have been protected as trademarks. These are certainly less common, but they still hold true to the function and purpose intended of a trademark, they identify the source of the goods and services and thus are deserving of trademark protection.

Trademark protection safeguards against infringement which is a type of unfair competition. Federal trademark law provides protection against someone else using the same or a confusingly similar mark, on the same or closely related goods or services in order to prevent confusion in the marketplace as to the source of the goods or services.

Copyrights

Copyrights protect artistic, literary or intellectually created works. Copyrightable works include:

• literary, musical and dramatic works;
• pantomimes and choreographic works;
• pictorial, graphic and sculptural works (including the nonutilitarian design features of useful articles);
• motion pictures and other audiovisual works;
• sound recordings;
• computer programs;
• certain architectural works; and
• compilations of works and derivative works.

Unlike patents and trademarks, creators of these works have copyright protection the instant they have created and fixed their work in a tangible form, for example recording a song or writing down a poem. As such, these works enjoy a certain amount of protection even without a registration. However, registering your work with the Copyright Office is a good idea because it’s necessary in order to sue an infringer and it allows you to recover statutory damages.

Copyright protection is only for expressions of ideas, not the ideas themselves. Additionally, in order to be protectible, a work must be “original.” The work must also pass a certain threshold of creativity so as not to be too elementary in nature (i.e., it cannot be a common shape or a short phrase).

What’s the Right Intellectual Property Protection for Me?

The answer is “it depends.” As you can see, the different types of intellectual property are intended to protect different things. For businesses, it is likely that some combination of these protections will be necessary to protect certain assets. It may even be that multiple forms of intellectual property could be used. For example, the Coca-Cola® bottle design is a trademark and was also a design patent and Tarzan is a trademark and the story is protected by copyright. Maybe you’re thinking a certain type of intellectual property protection doesn’t apply to you at all. No type of intellectual property is one-size fits all and it is important to make sure the appropriate pieces are included in your business’ intellectual property portfolio. Working with an intellectual property attorney who can help you navigate the different types of intellectual property and figure out how to protect your important business assets. Contact an MLCL attorney to help you develop the appropriate intellectual property portfolio for your business.

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The Lanham Act is the primary federal trademark statute in the United States and it governs, among other things, what constitutes a registrable mark. The United States Patent and Trademark Office (USPTO) reviews federal trademark applications to ensure they satisfy all of the federal legal requirements under the Lanham Act. Most of the registration process is carried out exclusively between the applicant (usually a business) seeking registration and the USPTO with limited opportunities for third parties to object to the registration of a mark. The TMA has key provisions that update the Lanham Act and provide tools to businesses to protect their marks more effectively and efficiently both with applying for registration and in protecting their existing registrations.

The three key provisions of the TMA are: Formalizing a simpler and more affordable procedure for challenging the federal registration of a trademark; Authorizing discretionary shortened response deadlines to office actions; and Restoring a national presumption of irreparable harm, which lowers the standard of proof for trademark owners seeking to enjoin trademark infringement by their competitors.

1. Improved Tools to Challenge USPTO Filings

First, the TMA provides new tools to challenge USPTO trademark filings that are based on inaccurate claims of use. Previously, third parties’ opportunities and mechanisms to challenge filings were expensive, lengthy, and far from streamlined. The TMA (a) codifies the Letters of Protest system, (b) streamlines expungement procedures, and (c) establishes new grounds for re-examination of a registration.

Codified Letters of Protest

The existing Letters of Protest process provided a way for third parties to give the USPTO evidence about the registrability of a trademark in a pending application. However, Letters of Protest were rarely utilized. While they were a less expensive means to challenge a pending registration than an opposition proceeding, they remained a relatively obscure practice largely because any protest procedure was administered at the “discretion of the USPTO.”

Under the TMA, the process is formalized. A party may submit a Letter of Protest including arguments for grounds of refusing the mark, with evidence relevant to the proposed grounds, and a $50 fee. The Director of the USPTO then has two months to review and determine if this evidence will be included in the record. The Director’s decision on whether the evidence will be made of record is final and non-reviewable. However, the applicant may also raise any issues regarding the ground for refusal.

Takeaway: This tool provides a clear and definitive mechanism for third parties to submit relevant evidence on the registrability of marks. Trademark owners may want to consider utilizing trademark watch services to be alerted when potentially conflicting marks are filed, thus preserving their opportunity to file Letters of Protest which avoids the cost of challenging problematic marks in opposition or cancellation proceedings. Businesses should also be aware this process may make it more difficult as an applicant to secure a registration.

Ex Parte Expungement

Currently, third parties wishing to challenge registrations must do so through a cancellation proceeding at the Trademark Trial and Appeal Board (TTAB) or through a lawsuit in federal court. This was a particularly expensive and laborious process and, in the case of small businesses, often cost prohibitive.

The TMA establishes an ex parte expungement process where any third party can challenge a registration, either in whole or in part, where there are specific goods or services listed in the registration for which the trademark has never been used in U.S. commerce. This new procedure must be brought between three to ten years after the registration date.

Takeaway: For businesses looking to file a new application, it is important to make sure all the claimed goods and services are actually being provided. Including extraneous goods and services may expose your registration to the risk of cancellation, either in whole or in part.

In dealing with problematic prior registrations, businesses should investigate whether the registered mark has truly been used with all the affiliated goods and services. If it’s determined that they have not, petitioning to remove these marks may clear a path to obtaining your own registration.

Ex Parte Re-examination

Similar to the new expungement process, the TMA adds a new ground to invalidate a registration that was not used in U.S. commerce for some or all of the goods or services listed in the registration as of the “relevant date” in the application process. The TMA defines the “relevant date” as one of the following: (1) the initial filing date of a use-based application; (2) the date a statement of use was filed to satisfy the use in commerce requirement of an intent-to-use application; or (3) the period by which filing a statement of use expired.

Takeaway: As with expungement, businesses should be deliberate in selecting the goods and services they choose to include in their application to avoid risk of cancellation of their own marks and consider using this process when dealing with problematic existing registrations as well.

2. Shortened Office Action Response Deadlines

Currently, the standard response time allowed for applicants is six months for office actions. The TMA provides the USPTO the flexibility to assign shortened response times with the applicant able to extend up to the full six-month period. The expectation is this shortened response time will be utilized for simpler office action responses, but this remains to be seen. The intent seems to be to help streamline the application process and provide a clear and quick path for legitimate applications.

Takeaway: Businesses will need to pay attention to response deadlines or potentially incur fees in order to extend those deadlines.

3. Restoration of Presumption of Irreparable Harm

Prior to the TMA, there has been a circuit split in the courts on the standard for injunctive relief following the U.S. Supreme Court’s ruling in eBay Inc. v. MercExchange. 547 U.S. 388 (2006). A business seeking an injunction against an infringer must prove “irreparable harm,” but eBay eliminated a similar presumption of irreparable harm in patent cases. In trademark cases post-eBay, circuit courts have inconsistently applied the eBay standard to trademark infringement cases.

The TMA codifies a uniform standard of presumption of irreparable harm should be applied in trademark cases for injunctive relief. This reduces the evidentiary burden on businesses for obtaining injunctive relief to protect their trademark rights.

Takeaway: The lowered standard makes injunctive relief more readily available to trademark owners in defending the marks and protecting their trademark rights. Businesses may consider a more aggressive approach in using temporary injunctions in order to achieve a quicker resolution.

Conclusion

For most businesses, branding plays a key role in their success. It’s important to be familiar with these new provisions or consult an attorney to help you navigate them. The TMA affects the process to obtain a registration, steps necessary to maintain existing registrations, and the ways to enforce trademark rights. For small businesses in particular, it provides more affordable ways to obtain and protect their marks. Businesses wishing to discuss their trademark protection strategy should contact a McCarthy Lebit intellectual property attorney for a consultation and to discuss their options.

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