Intellectual Property Insights
Analysis and practical guides on intellectual property.
446 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.
Discovery Practice in TTAB Trademark Proceedings: A Comprehensive Guide to Interrogatories, Requests for Production, and Requests for Admissions
This comprehensive guide explains how discovery works in inter partes proceedings before the Trademark Trial and Appeal Board (TTAB), the administrative tribunal that decides oppositions and cancellations within the U.S. Patent and Trademark Office. It walks through the framework set by the Federal Rules of Civil Procedure as modified by 37 C.F.R. § 2.120 and the Trademark Trial and Appeal Board Manual of Procedure (TBMP), including the mandatory discovery conference, initial disclosures, the 180-day discovery period, and the trial-phase structure that follows. The article details each principal discovery device—interrogatories (capped at 75 including subparts), requests for production (also capped at 75), requests for admission, and the ten-deposition limit—along with the post-2017 numerical limits, electronic discovery practice, and the Board's distinctive rules on expert disclosure and service timing. It covers motions to compel, the meet-and-confer obligation, discovery sanctions and estoppel, the standard protective order, and how to use discovery to build a persuasive likelihood-of-confusion record under the DuPont factors. Throughout, the guide offers worked examples, model requests, governing case law, and practical strategy for practitioners and self-represented parties alike.
Second Circuit Appellate Standards in Trademark Cases: A Practical Guide
On appeal, the standard of review often matters more than the merits—it fixes how much deference the appellate court owes the decision below, and that frequently decides the case before anyone reaches the argument on the law. This guide explains, in plain language for lawyers and business owners alike, how the United States Court of Appeals for the Second Circuit reviews trademark cases. It sets out the three core standards (de novo for legal questions and summary judgment, clear error for fact findings after a bench trial under Rule 52(a), and abuse of discretion for discretionary rulings), maps the appealability rules that govern when a trademark ruling can be challenged, and works through the most important and most misunderstood question in trademark appeals: how the likelihood-of-confusion determination and the individual Polaroid factors are reviewed. It recovers the historical de novo-versus-clear-error split the circuit resolved in Bristol-Myers Squibb, shows why the very same confusion question is reviewed three different ways depending on procedural posture, dissects the demanding clear-error standard, surveys abuse-of-discretion review of injunctions, fees, and evidentiary rulings, explains preservation, harmless error, and what a remand actually buys, and closes with a worked example, a side-by-side playbook, and an FAQ.
Responding to a Trademark Office Action Checklist: A Practical Checklist
A checklist for responding to a USPTO trademark office action, current to the December 2022 shift to a three-month response deadline (extendable once) for domestic-basis applications. It walks through docketing the deadline, diagnosing each refusal (likelihood of confusion under Section 2(d), descriptiveness under Section 2(e)(1), specimen and identification defects, disclaimers, and surname or geographic bars), choosing among arguments, amendments, and evidence, the examiner interview, and the path to a final refusal, appeal, or petition to revive. WHY notes, trap warnings, a common-mistakes list, and primary authority are included. Educational, not legal advice.
Consumer Survey Expert Methodology in Trademark Cases: A Practical Guide
A consumer survey is a scientific instrument, and in a trademark case it is only as good as its methodology. This guide explains, in plain language for lawyers and business owners alike, how trademark confusion surveys are designed and read—knowledge that is essential whether you are building a survey to prove your case or attacking the other side's. It covers the foundational choice of the survey universe (and why the wrong universe is usually fatal), the two principal confusion-survey formats (Eveready, for strong marks, and Squirt, for weaker marks or marks encountered together), the indispensable role of control groups and net confusion, double-blind administration, probability and non-probability sampling, sound question design and marketplace realism, how courts evaluate methodology under Daubert and the 2023 amendment to Federal Rule of Evidence 702, and what level of confusion is actually meaningful. It also maps the specialized genericness formats (Teflon and Thermos) and surveys for secondary meaning and fame, closes with a worked example showing how a single design choice can change the result, and ends with practical takeaways and an FAQ for both the proponent and the challenger.
Patent FAQs: Frequently Asked Questions About Patents
A friendly, plain-English question-and-answer guide to the patent questions inventors and small-business owners actually ask, from "Do I even need a patent?" to "Can I patent my app?" and "How much will this cost?" It explains the difference between patents, trademarks, and copyrights; walks through provisional versus nonprovisional filings; demystifies prior art, patent searches, and the famous Alice software-eligibility test; and covers timelines, fees, international protection, licensing, and infringement. It also tackles the traps that quietly kill rights—public disclosures, the on-sale bar, missed deadlines, and the myth of the "poor man's patent." Written so a curious layperson, a busy founder, and a legal professional can all follow along, with concrete worked examples and links to deeper resources. For the procedural deep dive into USPTO mechanics, this guide points you to our companion hub. As always, it is general information, not legal advice.
Rebranding Without Regret: Clearance, Transition, and Protecting the Old Mark While Launching the New One
A rebrand is two trademark projects running at once: clearing and securing a new mark, and deciding what happens to the old one. This article explains why companies rebrand and how the reason for the change shapes the legal plan, then walks through clearance under Section 2(d) and the du Pont and Polaroid factors, priority through intent-to-use filings, constructive use, and Paris Convention claims, and the limits of tacking after Hana Financial v. Hana Bank. It covers the transition period, including "formerly known as" messaging, nominative fair use, false advertising risk, and the migration of domains and social handles. It then examines the legacy mark: abandonment under the three-year presumption, the cases on intent to resume and residual goodwill from Exxon's retirement of HUMBLE to the Brooklyn Dodgers, maintenance filings, and the choice among keeping, licensing, selling, or retiring the old brand. Litigation-driven rebrands, phase-out and sell-off periods, corrective advertising, and reverse confusion get their own treatment, along with lessons from Meta, X, and the Washington Commanders. An extended worked example, common mistakes, an FAQ, and takeaways close the article.
Copyright Claims Board Toolkit: Claim Statements, Opt-Out Decisions, and Settlement Templates
This toolkit collects annotated templates for every stage of a Copyright Claims Board proceeding, written for claimants, respondents, and the lawyers who advise them. It opens with a forum-fit worksheet and a pre-filing demand letter, then supplies model claim statements for the three claims the Board hears: infringement, declarations of noninfringement, and DMCA misrepresentation under section 512(f). For respondents it provides an opt-out decision memo with an exposure comparison, an opt-out notification worksheet, and model response, agreement-to-cease, and agreement-based counterclaim language. The settlement templates cover a term sheet with Board-specific clauses, a settlement conference position statement, and a joint request asking the Board to dismiss and adopt agreed terms in a final determination so they can be enforced in federal court. Supporting tools include an evidence log, a service tracker, a witness statement, and an application to confirm an unpaid award under 17 U.S.C. section 1508. Each template states its purpose, owner, and timing and is followed by drafting notes tied to the statute, the Board's regulations, and the case law as of June 2025.
Section 8 Declaration of Continued Use: A Practical Checklist
A federal trademark registration is a living asset that must be maintained on a schedule set by the Lanham Act, and the Section 8 declaration of continued use is the heart of that schedule. This checklist walks a registrant and its counsel through the year-six and year-ten (and every-decade) Section 8 windows, confirming current use class by class, gathering compliant specimens, pruning deadwood, drafting the verified declaration, filing through the USPTO, and surviving a random proof-of-use audit. It covers the narrow excusable-nonuse escape hatch, the Section 71 counterpart for Madrid-based registrations, and the value of combining the filing with a Section 15 incontestability declaration. WHY notes and traps accompany each phase. Verify current fees, deadlines, and forms on the USPTO site before filing.
Understanding Copyright Registration for a Song: A Comprehensive Guide for Bands
Every recorded song contains two distinct copyrights—the musical work (the underlying composition of notes and lyrics) and the sound recording (the master that captures a particular performance)—and each must be registered separately with the U.S. Copyright Office. This guide explains who owns what when a band creates a song, including how members become joint authors under 17 U.S.C. 201(a), how session musicians and producers fit in, and why work-made-for-hire status matters and so often fails for music. It walks step by step through registering both copyrights through the eCO system, covering the single application, standard application, the modern group-registration options (the GRAM option for albums and the group option for unpublished works), preregistration for works still in production, deposit requirements, and fees. It explains the concrete legal payoffs of timely registration—registration as a prerequisite to suit under 17 U.S.C. 411 after Fourth Estate v. Wall-Street.com, eligibility for statutory damages and attorney's fees under 17 U.S.C. 412, and access to the Copyright Claims Board. Finally, it covers band agreements, split sheets, sampling and interpolation clearance, the royalty pipeline (PROs, the Section 115 blanket mechanical license and the MLC, and SoundExchange), and provides a worked example and an action checklist.
Hiring From a Competitor: Inevitable Disclosure, Employee Raiding, and the New Employer's Trade Secret Exposure
Hiring a competitor's employee is lawful almost everywhere, and the cases that hurt new employers turn on what arrives with the hire and what the company knew or should have asked. This article explains why the law protects the hire itself, how the Defend Trade Secrets Act and state law reach a new employer through knowledge, constructive notice, and vicarious liability, and where inevitable disclosure still survives after PepsiCo, Whyte, Bimbo Bakeries, and the DTSA's limits on employment injunctions. It covers employee raiding and tortious interference, the state of noncompete law after the FTC removed its rule from the Code of Federal Regulations in February 2026, and the 2026 appellate decisions in Comet v. XP Power and Insulet v. EOFlow. It reads the leading contamination cases closely and describes what actually happens on the systems involved, from USB registry entries to cloud sync folders. Worked hypotheticals show how the rules apply, and a closing section lists what remains unsettled.
Trademark Overview: Substantive Standards for Protection
This is Part 2 of our four-part Trademark Overview series, and it answers the question that decides every trademark fight before it starts: which designations the law is actually willing to protect, and which it turns away at the door. We begin with the affirmative requirement of distinctiveness—the Abercrombie spectrum from generic to fanciful, and the secondary-meaning doctrine that lets a weak descriptive term grow into a protectable mark. Then we walk the statutory gauntlet of Lanham Act Section 2, the list of bars that sink most applications: mere descriptiveness and deceptive misdescriptiveness under Section 2(e)(1), primarily geographically descriptive and deceptively misdescriptive marks under Section 2(e)(2) and (3), primarily-merely-a-surname refusals under Section 2(e)(4), the functionality bar that keeps useful product features out of trademark law, the likelihood-of-confusion bar of Section 2(d), and the deception and "names" bars of Section 2(a)—including what survived the First Amendment earthquake of Matal v. Tam, Iancu v. Brunetti, and Vidal v. Elster. Throughout we supply the actual legal tests examiners and courts apply, with citations, plus worked hypotheticals and a practical FAQ. Read it alongside Part 1 (subject matter), Part 3 (obtaining protection and licensing), and Part 4 (infringement).
Preparing and Filing a Provisional Patent Application: A Practical Guide
This guide walks an inventor, a startup, or the lawyer advising them through a provisional patent application from the first conversation to the conversion deadline twelve months later. It begins with the decisions to make before drafting: whether to patent at all, whether a provisional is the right vehicle, and what event sets the real deadline. The numbered steps cover controlling disclosures, securing ownership and identifying inventors, running an invention capture session, drafting a specification and figures that will support later claims, optional claims, entity status and fees, the cover sheet, filing through Patent Center, the foreign filing license, and the year of follow-up work that ends in a nonprovisional, PCT, or deliberate lapse. A separate step shows a challenger how to audit a provisional priority claim. A timeline and cost table, an extended worked example involving a marine robotics startup, common mistakes, an FAQ, and takeaways close the guide.