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

Trademark Specimen Preparation Checklist: A Practical Checklist

A checklist for assembling trademark specimens that survive USPTO examination, the single most common reason applications stall. It explains the controlling goods-versus-services distinction, what counts (labels, tags, packaging, point-of-sale displays, and properly functioning ordering web pages for goods; advertising for services) and what does not (invoices, mockups, pre-sale pages), and the two cross-cutting rules: actual use, and mark-matches-drawing. It covers specimens for the initial 1(a) filing, the statement of use, and post-registration Section 8 maintenance, with WHY notes, trap warnings, a common-mistakes list, and primary authority. Educational, not legal advice; confirm current USPTO requirements.

Casey Scott McKayDecember 31, 20238 min read

Intellectual PropertyTrademark

Benefits of Federal Trademark Registration: A Practical Guide

You do not need to register a trademark to own one—but registering it federally on the Principal Register converts a modest, local, hard-to-prove right into a national legal entitlement backed by statutory presumptions and remedies. This guide explains, for business owners, litigators, and judges alike, exactly what registration buys you under the Lanham Act. It centers on the provisions that change the game: Section 22's constructive notice (15 U.S.C. § 1072), Section 7's constructive use (15 U.S.C. § 1057(c)), and the nationwide priority they create; Section 33's prima facie validity and incontestability (15 U.S.C. §§ 1115, 1065); access to federal court; recordation with U.S. Customs; and the punishing statutory and treble damages available against counterfeiters of a registered mark. It also covers the honest limits (the Dawn Donut Rule), the costs and maintenance obligations, and how the Principal Register compares with the Supplemental Register and state registration.

Casey Scott McKayDecember 13, 202343 min read

Intellectual PropertyPatent

Patent Post-Grant Proceedings: IPR, PGR, and Reexamination at the PTAB

Since 2012, the cheapest and fastest way to kill a United States patent has not been a district court trial. It has been an inter partes review at the Patent Trial and Appeal Board, where a panel of technically trained administrative judges applies a preponderance standard, no presumption of validity attaches, and a final written decision issues within twelve months of institution. This article explains the full menu of post-grant options, inter partes review, post-grant review, ex parte reexamination, supplemental examination, and reissue, and shows how to choose among them. It covers eligibility windows, the one-year time bar of section 315(b) and how service of a complaint starts it, real-party-in-interest and privity traps, the discretionary denial doctrines built on Fintiv, General Plastic, and section 325(d), the mechanics of institution and trial, motions to amend after Aqua Products, and the estoppel that attaches under section 315(e) after California Institute of Technology v. Broadcom. It also addresses the parallel district court case: when to move for a stay, how the two proceedings interact, and what the different burdens of proof mean in practice. It closes with strategy for petitioners and patent owners, a worked example, an FAQ, and related reading.

Casey Scott McKayDecember 6, 202327 min read

Intellectual PropertyEntertainment

Producing a Film or Series: Rights, Talent, and Distribution Agreements

Producing a film or series is a rights assembly problem wrapped in a financing problem. Every element that appears on screen — the story, the script, the performances, the music, the locations, the artwork on a wall, a trademark on a coffee cup — must be licensed or cleared, and the resulting bundle must be documented well enough that a distributor's lawyer and an insurer will accept it. This guide follows the production chronologically: acquiring underlying rights and building chain of title, engaging writers and talent under guild and non-guild agreements, financing and the entity structure that supports it, the clearances that must be completed before delivery, and the distribution and sales agreements that determine whether anyone is paid. It closes with delivery, residuals, and the obligations that survive the production.

Casey Scott McKayDecember 4, 202327 min read

Intellectual PropertyIP Litigation

Serving Legal Documents to Chinese Defendants in IP Litigation: A Practitioner's Guide

For U.S. companies pursuing intellectual property claims against Chinese sellers, manufacturers, and counterfeiters, service of process is not a clerical formality--it is the load-bearing wall on which every downstream remedy rests. This guide is the IP-litigation companion to our general service overview, and it concentrates on the tools that make or break a cross-border IP case: the "Schedule A" counterfeiting playbook, court-ordered email service under Rule 4(f)(3), and the ex parte machinery--TROs, asset freezes under Rule 65, DTSA civil seizure under 18 U.S.C. 1836(b)(2), and anti-suit injunctions--that lets a rights holder strike before a Chinese defendant can move money or evidence offshore. We walk through the mandatory Hague Convention framework, the deep judicial split over emailing Chinese defendants, the landmark Schlunk, Water Splash, Rockefeller, and Luxottica decisions, and China's 2024 Civil Procedure Law. The throughline is a single hard question: how do you get sued papers in front of a defendant in Shenzhen, freeze the assets that matter, and build a judgment that survives challenge at home and abroad.

Casey Scott McKayNovember 30, 202350 min read

Intellectual PropertyTechnology

Intellectual Property Considerations and Protectable Content in Mobile Apps

A mobile app is not one thing you protect; it is a stack of separable assets, each governed by a different body of intellectual property law. This guide maps every protectable layer of an app—source and object code, the API question after Google v. Oracle, the user interface and "look and feel," graphics and sound, the app name and icon, novel functionality and algorithms, databases, trade secrets, and third-party and open-source components—and explains which legal tool fits each. It walks through the practical ownership traps (work made for hire versus contractor assignment), the post-Alice reality of software patents, design patents for graphical interfaces after Samsung v. Apple, and the constraints app-store developer agreements impose. Worked examples using a fictional app, "Larkspur," make the abstractions concrete. The aim is a clear-eyed inventory you can use to decide what is worth protecting, how, and in what order.

Casey Scott McKayNovember 24, 202346 min read

Intellectual PropertyTrade Secret

Trade Secret Audit Checklist: A Practical Checklist

A trade secret audit is the systematic exercise of finding, classifying, and verifying the protection of an organization's confidential information. This checklist guides counsel and security teams through scoping the audit, inventorying the crown jewels, mapping where each secret lives and who can reach it, verifying the physical, technical, administrative, and contractual measures protecting each item, scoring the program against a maturity model, and remediating the gaps. It explains why a current, honest audit is both a security exercise and the contemporaneous evidence of "reasonable measures" the Defend Trade Secrets Act (18 U.S.C. § 1839(3)) demands, and why it is the document that lets a plaintiff identify its secrets "with reasonable particularity" without losing them. The audit is the heartbeat of a living protection program and a recurring requirement before any financing, acquisition, or shift to remote work.

Casey Scott McKayNovember 22, 20239 min read

Intellectual PropertyTrademark

Trademarking Your Own Name

Can you turn your own name into a registered trademark? Often yes, but the Lanham Act puts two big speed bumps in the road. The first is the "primarily merely a surname" bar of Section 2(e)(4), which the USPTO applies through the five-factor Benthin test and which usually forces you to prove acquired distinctiveness (secondary meaning) under Section 2(f). The second is Section 2(c), which blocks registration of a living person's name without written consent and which the Supreme Court upheld in Vidal v. Elster. This article walks through both rules in plain English, with real cases from In re Benthin and In re Beds & Bars to McDonald's, Ford, Kim Kardashian, and Michael Jordan. It explains how a name trademark differs from the right of publicity, what to do if someone else grabs your name first, and how to build a name into a protectable brand. It closes with a practical roadmap, a detailed FAQ, and a map of related mclaw.io guides.

Casey Scott McKayNovember 21, 202344 min read

Intellectual PropertyPatent

Maintaining the Duty of Candor to Avoid Inequitable Conduct: A Practical Checklist

Inequitable conduct is the defense that can render an entire patent—and related patents in the same family—permanently unenforceable when an applicant breaches the duty of candor owed to the USPTO under 37 C.F.R. § 1.56. This checklist translates the doctrine into a repeatable compliance program: educating everyone who owes the duty, gathering and cross-routing material information across a patent family, drafting candor-compliant specifications and declarations, filing timely and complete Information Disclosure Statements under 37 C.F.R. §§ 1.97–1.98, correcting errors expressly, and curing post-grant problems through supplemental examination under 35 U.S.C. § 257. It frames the controlling Therasense standard (but-for materiality and specific intent, each by clear and convincing evidence), the narrow egregious-misconduct exception, and the traps—prophetic examples, inconsistent agency statements, withheld related-application rejections, and burying or mistranslating foreign references—that detonate the "atomic bomb" of patent law.

Casey Scott McKayNovember 21, 20239 min read

Intellectual PropertyTrademark

Drafting a Trademark Cease-and-Desist Letter Checklist: A Practical Checklist

A checklist for drafting a trademark cease-and-desist letter that stops infringement without triggering a declaratory-judgment suit or a public-relations backlash. It runs from clearing your own rights (priority, scope, registration status, honest likelihood-of-confusion assessment) through the strategic decision whether to send a letter at all, the section-by-section anatomy of the letter, the remedies that actually back the threats, the tone calculus, and the two great hazards: declaratory-judgment jeopardy under MedImmune and trademark bullying. WHY notes, trap warnings, a common-mistakes list, and primary authority are included. Educational, not legal advice.

Casey Scott McKayNovember 21, 20238 min read

Intellectual PropertyPatent

Design Patent Toolkit: A Roadmap for Protecting How a Product Looks

This toolkit is a high-level roadmap and curated research guide for protecting the ornamental appearance of a product through U.S. design patents. It walks the full life cycle—from deciding what a design patent can and cannot protect, through drawings and prosecution, to functionality and obviousness after the Federal Circuit's en banc LKQ decision, the ordinary-observer infringement test of Egyptian Goddess, and the total-profits remedy of 35 U.S.C. § 289 as construed in Samsung v. Apple. At each stage it links the firm's articles and checklists alongside primary statutes, USPTO resources, and controlling cases. It is written for product companies, in-house counsel, founders, and litigators who need to navigate the field, not for a single discrete task. Use it to orient yourself, then drill into the linked deep-dive documents. Verify all fees and deadlines at the official USPTO site before relying on them.

Casey Scott McKayNovember 17, 202316 min read

Intellectual PropertyPatent

Design Patents v. Utility Patents: Key Differences

Design patents and utility patents are two entirely different legal instruments that happen to share the word "patent." A utility patent protects how an invention works under 35 U.S.C. 101; a design patent protects how an article of manufacture looks under 35 U.S.C. 171. They differ in term, claim structure, examination, cost, the test for infringement, and—dramatically—the damages a winner can recover. This guide walks a judge, a lawyer, and a curious inventor through every key difference, with worked examples, current authority including Egyptian Goddess, Samsung v. Apple, and the 2024 en banc LKQ decision, and practical guidance on when to file one, the other, or both.

Casey Scott McKayNovember 4, 202333 min read