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.
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safe harbor, the common-ownership requirement, and the role and risks of terminal disclaimers (including the USPTO's withdrawn 2024 rulemaking).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.
Trade Secret Litigation Toolkit: Identification Statements, Two-Tier Protective Orders, and Forensic Protocols
This toolkit collects the working documents of trade secret litigation, each introduced by its purpose, the person who should prepare it, and when to use it, and each followed by drafting commentary tied to the governing statutes, rules, and cases. It opens with a model identification statement that meets the reasonable particularity standard, an internal secret-by-secret evidence matrix, a defendant's deficiency letter, and case management provisions that fix the timing, form, and amendment of the identification. The middle templates cover the key provisions of a two-tier protective order with a Rule 502(d) clause, a source code review protocol, a preservation demand letter, a stipulated neutral forensic examination protocol, and a forensic artifact chart with a chain-of-custody log. The final templates address requests for personal email and cloud data that respect the Stored Communications Act, Rule 30(b)(6) topic lists for each side, and a trial confidentiality plan with a secret-by-secret verdict form. The templates reflect the law as of January 2025 and are written for use by trade secret owners and by the employees and competitors they accuse.
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.
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.
Trade Secret Damages and Remedies: Unjust Enrichment, Reasonable Royalties, Injunctions, and Exemplary Awards
Trade secret cases are often won on liability and then shrunk, reversed, or retried on remedies, so the remedy theory deserves as much care as the proof of misappropriation. This article explains every remedy the Defend Trade Secrets Act and the Uniform Trade Secrets Act make available: injunctions, damages for actual loss, unjust enrichment including avoided development costs, reasonable royalties, exemplary damages of up to twice the compensatory award, attorney's fees, and interest. It walks through the leading decisions, including Syntel v. TriZetto, Epic Systems v. Tata Consultancy, Motorola Solutions v. Hytera, Texas Advanced Optoelectronic Solutions v. Renesas, the Virginia Appian v. Pegasystems reversal, and the classic head start cases, and it flags the real splits on avoided costs, burden of proof, judge versus jury, and the meaning of malice. It also covers injunction limits on employee mobility, apportionment and double counting, expert proof, criminal restitution, preemption, and the defenses that cut awards down. It closes with strategy for both sides, costs, common mistakes, two worked examples with real numbers, an FAQ, and practical takeaways.
Pleading and Proving Induced and Contributory Patent Infringement: A Practical Guide
This guide walks patentees and accused infringers through an induced or contributory patent infringement case in the order the work actually happens, from the pre-suit investigation and notice letter through pleading, infringement contentions, discovery, expert reports, summary judgment, jury instructions, and post-trial motions. Each step explains what must be proved under 35 U.S.C. § 271(b) and (c), what evidence carries the burden, which motions decide the issue, and what each side should file, say, or avoid. It covers the pleading standard after Twombly and Iqbal, the split over whether the complaint itself can supply knowledge, divided-infringement allegations after Akamai, the opinion-of-counsel election under 35 U.S.C. § 298, usage evidence and surveys on noninfringing uses, and the model jury instructions. A worked example follows a smart-thermostat dispute from the first letter to the verdict, with dates, decisions, and rough costs. Decision tables, common mistakes, and an FAQ close the guide.
Copyright Infringement Claim Evaluation Checklist: A Practical Checklist
This checklist screens a copyright infringement claim from either side, in the order a court will test it. It starts with intake and the exact versions of the two works, then works through ownership and standing, registration timing and its effect on remedies, the protectability of the claimant's work, copying in fact through access and probative or striking similarity, and filtration of unprotectable material before comparison under the governing circuit's test. Medium-specific checks cover music, literary and audiovisual works, games, visual art and photographs, and software. Later parts address defenses and limitations, remedies and case value, forum and pleading, evidence preservation and pre-suit letters, and the first thirty days for an accused party. It closes with a scoring matrix, a table of key authorities, answers to common questions, and practical takeaways.
People-Search Listing Response Checklist: A Practical Checklist
This checklist turns a people-search listing into phased, check-off tasks for the person named on the page, the lawyer advising that person, and the operator receiving the request. It begins with a safety screen and then moves through evidence capture, account and deadline checks, removal, California's DROP platform, covered-official notices, and re-checking. Later phases cover the decision to pursue a right of publicity or Fair Credit Reporting Act claim and the pre-filing diligence that avoids known traps. A separate phase gives operators the tasks that follow a removal request, Daniel's Law notice, or demand letter. Every task names its authority, with notes and red flags where a step commonly goes wrong. The law is stated as of 31 October 2026.
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.
Expressive Work Right of Publicity Risk Checklist: A Practical Checklist
This checklist turns the case law on the right of publicity and the First Amendment into a use-by-use risk review for anyone who puts a real person into a film, series, documentary, book, podcast, song, game, artwork, or campaign, and for the people depicted and their lawyers. It starts with triage (who appears, how each use is classified, and which forum and test apply) and then works through the statutory exemptions, the competing First Amendment tests, newsworthiness, commercial speech, fictionalization and defamation, and the federal overlays of false endorsement, copyright preemption, and Section 230. Separate parts cover medium-specific red flags, digital replicas, disclaimers and marketing copy, the clearance file and insurance, and readiness for an anti-SLAPP motion or other early dismissal. A parallel part for the person depicted covers preservation, claim selection, fee exposure, limitations periods, and pre-release demands. Each item is phrased as an action with a short note and the authority behind it, and the checklist closes with a risk scoring table, an FAQ, and practical takeaways.
Failure to Function and Ornamental Refusals: Why Slogans, Hashtags, and Merchandise Designs Get Rejected
This article explains why the USPTO refuses to register slogans, hashtags, catchphrases, and designs printed on merchandise, even when nobody else owns them, and why the refusal turns on how consumers perceive the matter rather than on whether it is original. It traces the failure-to-function doctrine from the statutory definition of a trademark in Section 45 through the TMEP categories for ornamental matter, informational matter, widely used messages, and hashtags, and it tells the stories of the leading decisions, from the polka dots of In re Swift and the BLACKER THE COLLEGE slogan to I ♥ DC, EVERYBODY VS RACISM, .SUCKS, and the Federal Circuit's 2025 remand in In re Brunetti. It covers the constitutional backdrop after Matal v. Tam, Iancu v. Brunetti, and Vidal v. Elster, and the role the same question plays in oppositions, cancellations, and infringement suits. Open questions are identified, including the missing standard for widely used words, the weight of print-on-demand evidence, and the limits of the Supplemental Register and Section 2(f) for messages. Practical implications for brand owners, merchandise sellers, and challengers, an extended worked example involving a small apparel brand, common mistakes, an FAQ, and takeaways close the article.
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.