Intellectual Property Insights

Analysis and practical guides on intellectual property.

265 articles, checklists, and guides on intellectual property law, written by the attorneys at MC Law. Every piece is general information, not legal advice — for a specific matter, contact the firm.

Intellectual PropertyTrademark

Responding to a Trademark Cease-and-Desist Letter Checklist: A Practical Checklist

A calm, strategic checklist for what to do when a trademark cease-and-desist letter lands in your inbox: the first-72-hours housekeeping (conflicts check, no off-the-cuff reply, check PACER for an actual suit, holding letter, information request, insurer notice, litigation hold), decoding the letter, sizing up the sender and yourself using the free public record, the likelihood-of-confusion analysis, the defenses toolbox, the realistic menu of responses from rebrand to preemptive declaratory judgment, and the landmines. WHY notes, trap warnings, a common-mistakes list, and primary authority are included. Educational, not legal advice. The through-line is that the first written response sets the tone and the record for everything that follows, so it is worth the two days it takes to get right.

Casey Scott McKayAugust 13, 20249 min read

Intellectual PropertyTrademark

Trademark Registration Toolkit: A Roadmap from Brand Idea to Federal Registration and Maintenance

This toolkit is a high-level roadmap and curated library guide for taking a brand from an idea all the way to a federal trademark registration and through the maintenance that keeps it alive. It walks every stage in order—mark selection, clearance, choosing a filing basis, preparing and filing the application, examination and office actions, publication and opposition, registration, post-registration maintenance, and enforcement—and at each stage points to mclaw.io's articles and step-by-step checklists plus the controlling statutes, rules, and USPTO resources. It reflects the post-January 2025 USPTO fee and filing changes, including the single base application fee with surcharges, the cloud-based Trademark Search, and Trademark Center filing. Use it to orient yourself in the field and to find the right detailed resource for the task in front of you. Fees and deadlines change, so verify current amounts at the official USPTO site before relying on any number here.

Casey Scott McKayJuly 30, 202415 min read

Intellectual PropertyPatent

Patent Ownership, Assignments, and Standing: Chain-of-Title Problems That Sink Cases

A patent is only as enforceable as its chain of title, and the most expensive discovery in patent litigation is that the plaintiff does not own what it is asserting. This article explains who owns an invention at the moment of conception, why inventorship and ownership are different questions with different consequences, and how the Supreme Court's decision in Stanford v. Roche confirmed that even federally funded inventions vest first in the inventor. It works through assignment drafting, including the decisive difference between a present assignment and a mere promise to assign that the Federal Circuit drew in FilmTec, the treatment of future inventions, and state statutes that limit what an employer may claim. It then addresses standing: who may sue, what a patentee must hold to bring an action alone, when an exclusive licensee may sue in its own name, and why the Federal Circuit reframed much of this as a statutory rather than jurisdictional question in Lone Star Silicon. Sections on correction of inventorship, recordation and bona fide purchasers, security interests, government rights under Bayh-Dole, and shop rights follow, with a diligence checklist, a worked example, an FAQ, and related reading.

Casey Scott McKayJuly 22, 202425 min read

Intellectual PropertyPatent

The Intersection of Design and Utility Patents: Navigating Concurrent Protection and Double Patenting Challenges

A single product can often be protected by both a utility patent (covering how it works) and a design patent (covering how it looks), and pursuing both is frequently the smartest intellectual property strategy a company can adopt. This article explains the foundational differences between the two regimes, the functionality bar that separates a protectable ornamental design from an unprotectable functional one, and the precise circumstances in which concurrent protection is available. It then works through the double patenting doctrine as it applies across patent types, including obviousness-type double patenting, the Carman Industries cross-reading rule and the patentee-favorable two-way analysis, the Section 121 divisional safe harbor, the common-ownership requirement, and the role and risks of terminal disclaimers (including the USPTO's withdrawn 2024 rulemaking). The article also surveys the very different infringement tests and damages rules that apply to each regime, including the design-patent total-profit rule of 35 U.S.C. Section 289 after Samsung v. Apple and the article-of-manufacture question, and the seismic change to design-patent obviousness wrought by LKQ Corp. v. GM. A detailed worked example ties the doctrines together for a single hypothetical product, and a practitioner FAQ closes the piece.

Casey Scott McKayJuly 11, 202453 min read

Intellectual PropertyTrademark Litigation

Polaroid Factors on Summary Judgment in the Second Circuit: A Practical Guide

In the Second Circuit, whether one trademark is likely to be confused with another is governed by the eight-factor test announced in Polaroid Corp. v. Polarad Electronics Corp. Likelihood of confusion is a fact-laden inquiry, which makes summary judgment the exception rather than the rule—but it is far from unavailable, and certain factors lend themselves to resolution as a matter of law much more readily than others. This guide explains, in plain language for lawyers and business owners alike, how courts in the Second Circuit (including the busy Eastern District of New York) apply each Polaroid factor on summary judgment, which factors most often drive a no-confusion ruling, and how Rule 56's "no genuine dispute" standard plays out factor by factor. It pays particular attention to the dissimilarity of marks, competitive proximity, the absence-of-actual-confusion inference from long coexistence, and the demanding evidentiary showing required to prove bad faith. It closes with a worked hypothetical, a frequently asked questions section, and concrete takeaways for both movants and non-movants.

Casey Scott McKayJuly 5, 202444 min read

Intellectual PropertyTrademark

Stone Creek v. Omnia: Knowledge Destroys Good Faith Under the Tea Rose-Rectanus Doctrine

In Stone Creek, Inc. v. Omnia Italian Design, Inc., 875 F.3d 426 (9th Cir. 2017), the Ninth Circuit held that a junior user's mere knowledge of a senior user's mark destroys the "good faith" required for the century-old Tea Rose-Rectanus defense--and that internet commerce makes geographic "remoteness" far harder to prove. The case is a cautionary tale: the infringer was Stone Creek's own manufacturing partner, which recreated the STONE CREEK logo from Stone Creek's marketing materials and sold identical furniture to a Midwestern department-store chain for five years. This article traces the doctrine from its 1916-1918 Supreme Court origins through Stone Creek and the deeper circuit split it sharpened; explains how the Lanham Act's "Swiss cheese" registration system, its constructive-notice rule (15 U.S.C. § 1072), and its constructive-use rule (§ 1057(c)) interact with common-law territorial rights; and unpacks the remedies twist--the willfulness-for-disgorgement holding that the Supreme Court later abrogated in Romag Fasteners v. Fossil (2020). It closes with worked hypotheticals, practical guidance for brand owners, licensees, and litigators, an FAQ, and cross-links to related trademark resources. Written for judges, practitioners, and business owners alike.

Casey Scott McKayJuly 4, 202442 min read

Intellectual PropertyCopyright

Copyright Registration of Photographs

Photographs are among the most-copied and least-registered works on earth, and the gap between those two facts is where photographers lose money. This guide explains why a photograph is copyrightable at all (the answer traces to an 1884 Supreme Court case about an Oscar Wilde portrait), who actually owns the copyright in a wedding shot or a corporate headshot, and how to register hundreds or even thousands of images at once using the Copyright Office's group-registration options for published and unpublished photographs. It covers the deposit rules, the all-important title list, registration timing and its dramatic effect on damages, and the metadata and copyright-management-information protections of DMCA Section 1202. It closes with the frontier questions—who owns a monkey's selfie, whether an AI can be an author, and how to deal with stock-photo demand letters—plus a practical FAQ. The goal is a single, plain-English roadmap a professional photographer, a marketing manager, or a curious lawyer can all follow.

Casey Scott McKayJune 17, 202435 min read

Intellectual PropertyTrademark

USPTO Trademark Application Checklists: From Filing to Registration

This is the operational, filing-desk checklist for federal trademark prosecution—the tick-list you run from the moment you open the application form through to a registered, maintained mark. It walks the mechanical arc step by step: completing and submitting the base application, reading the filing receipt, monitoring status in TSDR, triaging and answering office actions on the post-2022 three-month clock, surviving publication and opposition, perfecting an intent-to-use application with a Statement of Use or extensions after a Notice of Allowance, and keeping the registration alive with Section 8, 9, and 15 filings. Every box is grounded in primary authority (the Lanham Act, 37 C.F.R., the TMEP, and the Trademark Modernization Act) and updated for the USPTO's January 18, 2025 fee overhaul, which retired the TEAS Plus and TEAS Standard tiers in favor of one base application plus surcharges, filed through the new Trademark Center. Fees change—verify current amounts at USPTO.gov before filing.

Casey Scott McKayJune 10, 202444 min read

Intellectual PropertyPatent

Patent Eligibility After Alice: Strategies for Protecting Software and Business Method Innovations

More than a decade after the Supreme Court's decision in Alice Corp. v. CLS Bank, software and business method patents still face a brutal invalidity rate under 35 U.S.C. Section 101. Yet meaningful patent protection for software, fintech, cybersecurity, and AI innovations remains achievable for those who understand the rules. This guide walks through the Alice/Mayo two-step framework and its statutory and historical roots (Chakrabarty, Diehr, Bilski, Mayo), the Federal Circuit guideposts that mark the narrow path to eligibility (Enfish, DDR Holdings, McRO, BASCOM, Finjan, and the factual twist of Berkheimer), and the USPTO's evolving examination guidance, including the 2019 Patent Eligibility Guidance, the 2024 AI update, and the precedential Desjardins decision. It then turns practical: claim-drafting and prosecution strategies grounded in labeled hypotheticals, a layered-protection portfolio plan that pairs patents with trade secrets, copyright, and design patents, the status of Section 101 reform through PERA, and a working checklist. The goal is to give judges, practitioners, and inventors alike a clear, usable map of where claims live and where they die.

Casey Scott McKayJune 8, 202454 min read

Intellectual PropertySoftware Protection

Legal Protection of Software: Copyrights, Patents, Trade Secrets, and Contracts

Proprietary software is often a company's single most valuable asset, yet no one legal doctrine fully protects it, because software is at once a literary work, a functional machine, a confidential secret, and a bundle of contract rights. This guide explains the four pillars of software protection—copyright, patent, trade secret, and contract law—in plain language, following a fictional startup's routing engine from the keyboard to the courtroom. It shows what each pillar covers, where each one fails, and how experienced counsel layer them so that one tool's blind spot becomes another tool's strength. It walks through the governing statutes and the landmark cases that shape them, from *Altai* and *Alice* to *Google v. Oracle*, *Vernor*, and *Van Buren*. It addresses who actually owns software, why a missing assignment can quietly sink a multimillion-dollar deal, and how to combine the four pillars into a coherent program. By the end, a reader with no legal training should understand not just the rules but the strategy behind them.

Casey Scott McKayJune 3, 202456 min read

Intellectual PropertyCopyright

Work Made for Hire Determination Checklist: A Practical Checklist

Whether a work is "made for hire" decides who is the author and owner of a copyright from the very moment of creation, and getting it wrong is one of the most common and damaging mistakes in copyright practice. This checklist walks an author, hiring party, or counsel through the two and only two routes into work-for-hire status, the employee route under the CCNV v. Reid agency test and the commissioned route limited to nine enumerated categories with a signed writing, and explains the belt-and-suspenders assignment that closes the gap when work-for-hire fails. It flags the consequences for registration, ownership, and the non-waivable termination right, and the special context of contributions to a collective work. Confirm the analysis against current authority for your facts.

Casey Scott McKayMay 26, 20247 min read

Intellectual PropertyEntertainment

Entertainment and Media Production Toolkit: Rights, Talent, and Distribution

A production is a copyright, and its value depends entirely on whether the producer can prove ownership of every element inside it. A distributor's counsel reviews the chain of title document by document, and an errors and omissions insurer declines to write a policy on a picture with gaps — which means a film nobody can insure cannot be distributed regardless of its quality. This toolkit follows a production chronologically: acquiring underlying rights and building chain of title, engaging writers and talent, financing and entity structure, the clearances that must be completed before delivery, distribution and sales agreements, delivery itself, and the residual and reporting obligations that survive the production. It runs the production arc from underlying rights and option agreements through talent deals, clearance, delivery, and distribution.

Casey Scott McKayMay 26, 202413 min read