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

Gray Market Goods and the First Sale Doctrine: Parallel Imports, Material Differences, and Exhaustion

Gray market goods are genuine products, made by or for the brand owner, that reach a market through channels the brand owner did not authorize. Because the goods are real, the usual trademark claim fails: the first sale doctrine exhausts the owner's rights once it puts the goods into commerce. The exception that swallows a great deal of the rule is the material differences test, under which genuine goods that differ materially from the authorized domestic version are treated as different products and their sale is infringement. This article explains the three structural varieties of gray market trade identified in K Mart v. Cartier, the material differences and quality control theories developed in the First, Second, Third, Eleventh, and D.C. Circuits, the customs regime under 19 U.S.C. section 1526 including the Lever rule labeling exception, and the very different exhaustion rules that now govern copyright after Kirtsaeng and patents after Impression Products v. Lexmark. It then turns to what actually works commercially: distribution controls, serialization, product differentiation, warranty policy, and authorized dealer programs, with attention to the antitrust limits on resale price maintenance. It closes with a worked example, a program checklist, an FAQ, and related reading.

Casey Scott McKayMay 22, 202425 min read

Intellectual PropertyIP and IT in Corporate Transactions

IP Due Diligence Checklist for Mergers and Acquisitions: A Practical Checklist

In a technology or brand acquisition the intellectual property often is the deal, and the most expensive diligence findings are not infringement risks but ownership gaps. This checklist runs the diligence in the order that surfaces those gaps early: building the inventory, tracing chain of title back to every individual creator, and confirming that contractors and founders actually assigned what everyone assumes they assigned. It then covers registrations and their maintenance status, inbound and outbound licenses and the assignment and change of control provisions that decide whether the target's rights survive closing, open source obligations, trade secret hygiene, encumbrances, and pending disputes. The final phases translate findings into deal terms: what to fix before closing, what to cover with representations and indemnity, and what belongs in a purchase price adjustment.

Casey Scott McKayMay 20, 20249 min read

Intellectual PropertyTrademark

Trademark Basics

A warm, plain-English primer on trademarks for founders, creators, and anyone curious about how brands become legal rights. It explains what a trademark actually is (a source identifier, not ownership of a word), the surprising range of things that can be marks, and the all-important "distinctiveness spectrum" that decides whether your name is strong, weak, or legally hopeless. It walks through how trademark rights are born from use, what the TM, SM, and R symbols really mean, the likelihood-of-confusion test that powers every infringement fight, and the concrete advantages of federal registration with the USPTO. It closes with practical dos and don'ts for picking a mark, the duty to use and police your brand, a full worked example, an FAQ, and cross-links to deeper guides on the trademark process and registration.

Casey Scott McKayMay 11, 202446 min read

Intellectual PropertyTrademark

Trademark Enforcement and Litigation Toolkit: From Watching to Verdict and Appeal

This toolkit maps the full arc of protecting a trademark against infringers, from routine watching and policing through cease-and-desist letters, domain-name disputes, TTAB proceedings, federal infringement litigation, surveys and damages, and appeal. At each stage it links mclaw.io's practical checklists and litigation articles alongside the controlling Lanham Act provisions, key cases, and the research tools (PACER, CourtListener, WIPO) practitioners actually use. It explains the substantive heart of most disputes—likelihood of confusion—and the evidentiary battles over consumer surveys and damages that decide them. It is written for brand owners deciding how aggressively to police, and for litigators building or defending a case. Citations are provided to statutes and leading authority; verify current procedural deadlines and local rules before filing.

Casey Scott McKayMay 10, 202413 min read

Intellectual PropertyCopyright

Registering a Copyright in a Song: A Practical Checklist

Every recorded song contains two distinct copyrights, the musical work (the composition) and the sound recording (the master), and each must be registered separately. This checklist walks a band, songwriter, or adviser through sorting out authorship and ownership, papering the producer and session players, registering both copyrights through the eCO system using the single, standard, GRAM, and unpublished-works options, preparing the right deposit, and timing the filing to preserve statutory damages and attorney's fees. It also flags the royalty-collection registrations, the PRO and the MLC for the composition and SoundExchange for the master, that legal registration alone does not handle. Verify current fees, group caps, and royalty rates at copyright.gov and with the collecting organizations.

Casey Scott McKayMay 2, 20248 min read

Intellectual PropertyTrademark

Trademark Rights Under Common Law

Common law trademark rights arise automatically from using a brand name, logo, slogan, or other source identifier in commerce, even with no registration anywhere. This article explains how those rights are born, why "first to use" usually beats "first to file" in the United States, and how the geographic reach of unregistered rights is famously narrow under the Tea Rose-Rectanus doctrine drawn from Hanover Star Milling Co. v. Metcalf, 240 U.S. 403 (1916), and United Drug Co. v. Theodore Rectanus Co., 248 U.S. 90 (1918). It covers the proper use of the TM and SM symbols, how common law rights collide with—and are partly frozen by—a later federal registration's constructive notice, how concurrent-use battles get resolved, and the surprising ways unregistered rights can be lost. Worked hypotheticals walk through priority disputes, the "good faith remote user" defense, analogous-use priority, and proof-of-first-use problems. The piece closes with practical guidance on when an unregistered mark is enough and when federal registration is worth the cost, plus a FAQ and links to related mclaw.io resources.

Casey Scott McKayApril 26, 202440 min read

Intellectual PropertyTrademark

Recording a Trademark Assignment: A Practical Checklist

When a registered or applied-for trademark changes hands, the new owner should record the assignment with the USPTO so the public record reflects the true owner. This checklist guides counsel through structuring a valid assignment that transfers the mark together with its goodwill, avoiding the assignment-in-gross and intent-to-use anti-trafficking traps, conducting chain-of-title due diligence, drafting the assignment, recording it through the USPTO Assignment Recordation system, and confirming downstream records. It explains why recording matters even though it is not strictly required for validity, and how an improper assignment can void rights. WHY notes and traps accompany each phase. Verify current USPTO recordation procedures and fees before filing.

Casey Scott McKayApril 8, 20245 min read

Intellectual PropertyTrademark

Selecting a Protectable Trademark Checklist: A Practical Checklist

A checklist for choosing a brand name that the law will actually protect, built around the distinctiveness spectrum that governs trademark strength. It guides you from confirming you need a trademark, through generating candidates, scoring each on the fanciful-to-generic scale, screening out statutory bars (surnames, geographic terms, deceptive and functional matter), pressure-testing strength and scope, and handing off to clearance and filing. Each phase includes WHY notes and trap warnings, plus a common-mistakes list and primary authority. It reflects that distinctiveness is decided at the naming whiteboard, not at the USPTO. Educational, not legal advice.

Casey Scott McKayApril 2, 20248 min read

Intellectual PropertyPatent

Responding to a Patent Office Action: A Practical Checklist

An office action is not a rejection of you—it is the opening move in a structured negotiation the patent system is built to give you the second, third, and fourth word in. This checklist teaches you to read an office action structurally (header, body, final vs. non-final, deadlines), to docket and protect your deadlines, and to choose among argument, amendment, declaration evidence, the examiner interview, and appeal. It covers the four substantive rejections—anticipation under § 102, obviousness under § 103, eligibility under § 101, and the § 112 family—plus restriction and rejoinder, Rule 1.130 declarations that knock out prior art, after-final practice in the post-AFCP-2.0 world, requests for continued examination, and the full PTAB appeal track, with the 2025 fee changes that reshaped post-final strategy. The aim is to turn rejections into granted patents whose claims are still worth owning.

Casey Scott McKayMarch 30, 202410 min read

Intellectual PropertyPatent Litigation

What Constitutes Patent Infringement: Claims and Defenses: A Practical Guide

A patent infringement claim is a federal lawsuit asserting that another party is practicing a patented invention without authority. This guide explains, in plain language for accused businesses, patent owners, and the lawyers who advise them, what actually constitutes patent infringement and how infringement claims and defenses work in U.S. federal court. It begins where every infringement analysis begins—the patent's claims and the all-elements rule—and then explains the types of infringement (direct under 35 U.S.C. 271(a); induced and contributory under 271(b)-(c); divided infringement after Akamai; and the special categories in 271(e), (f), and (g)), the pivotal role of claim construction under Markman and Phillips, and literal infringement and the doctrine of equivalents under Warner-Jenkinson and Festo. It surveys the full bench of defenses—non-infringement, invalidity (Sections 102, 103, 112, and 101), inequitable conduct, license and exhaustion, and equitable estoppel—and the remedies, from a Georgia-Pacific reasonable royalty and Panduit lost profits to enhanced damages for willfulness under Halo, attorney's fees under Octane, and injunctions under eBay. A running hypothetical—an encryption-key startup that receives a cease-and-desist letter—anchors the analysis, and the guide closes with an FAQ, a reference table of leading authorities, and practical takeaways.

Casey Scott McKayMarch 27, 202461 min read

Intellectual PropertyTrademark Litigation

TTAB Discovery: A Practical Checklist

Discovery is the engine of every contested opposition or cancellation before the Trademark Trial and Appeal Board, but it runs on its own rules—an administrative timetable, hard numerical caps, mandatory cooperation, and a paper trial in which the discovery you obtain becomes much of the evidence. This checklist walks counsel and self-represented parties through the discovery conference and initial disclosures, the 180-day discovery period, sequencing interrogatories, requests for production, and requests for admission within the uniform 75-request caps, expert disclosure, the standard protective order, motions to compel, and building the DuPont likelihood-of-confusion record. WHY notes and traps accompany each phase. Stated as amended through the 2017 rules; verify current 37 C.F.R. Part 2 and TBMP guidance before relying on any limit or deadline.

Casey Scott McKayMarch 12, 20248 min read

Intellectual PropertyCopyright

Fair Use After Warhol: A Practical Guide to the Four Factors in the Age of AI

Fair use is the most important and least predictable doctrine in American copyright law, and the Supreme Court's 2023 decision in Andy Warhol Foundation v. Goldsmith changed how the first factor works without changing a word of the statute. This guide explains the four statutory factors of 17 U.S.C. section 107 one at a time, in plain English, and shows how Warhol narrowed "transformative use" by refocusing courts on the specific use challenged rather than the new work as a whole. It traces the doctrine from Justice Story's 1841 opinion in Folsom v. Marsh through Campbell, Harper and Row, Sony, Google v. Oracle, and the appropriation-art cases, then applies the framework to software, search, news, education, and parody. A long section addresses the question every technology company is now asking: whether training a generative AI model on copyrighted works is fair use, and what the 2025 district court decisions in Bartz v. Anthropic, Kadrey v. Meta, and Thomson Reuters v. Ross actually held. The guide closes with a step-by-step method for running a fair use analysis before you copy, a worked example, litigation-posture advice on burdens and summary judgment, an FAQ, and related reading.

Casey Scott McKayMarch 11, 202440 min read