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.
Trade Secret Damages and Remedies Checklist: A Practical Checklist
This checklist turns the remedies law of trade secret litigation into concrete tasks, ordered the way a case actually unfolds, so that neither the owner of a secret nor the accused party loses money or leverage through a missed step. It starts with intake and governing-law choices, then covers pleading and disclosure of every damages theory, emergency relief including the DTSA's employment proviso and civil seizure, and the discovery that damages experts need. The core of the checklist builds and tests each measure of recovery: actual loss, unjust enrichment from profits and avoided development costs, reasonable royalties, the head start period, apportionment, and the rules against double recovery. Later parts address expert challenges under Rule 702, the defenses that shrink awards, jury instructions and verdict forms, exemplary damages, fees, interest, permanent injunctions, post-trial motions, parallel criminal restitution, and settlement terms. Each item cites the statute, rule, or decision that drives it, and notes flag where the owner's and the accused party's tasks differ. It closes with common mistakes, an FAQ, and practical takeaways.
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.
Coexistence Agreement Toolkit: Term Sheets, Consent Agreements, and Field-of-Use Clauses
This toolkit collects the working documents for a trademark coexistence or consent deal, with each template stating its purpose, owner, and when to use it, followed by drafting commentary tied to the governing authority. It includes an assessment matrix, a first-contact settlement letter, a consented TTAB motion to suspend, a term sheet, core agreement provisions, field-of-use, presentation, and geographic clauses, consent and further-assurance terms, a short-form consent for filing with the USPTO, cooperation and policing clauses, a no-challenge covenant, notice-and-cure and termination provisions, dispute resolution, assignment and change-of-control terms, free-competition and no-license clauses, an office action argument outline, and a post-signing administration record. A running example follows a mattress company and a sleep-audio company that share the HALCYON name. Bracketed placeholders mark every field to complete.
Secondary Liability Toolkit: Repeat Infringer Policies, Notice Workflows, and Inducement Audits
This toolkit gives online services and rightsholders working papers for secondary copyright liability after Cox Communications v. Sony Music Entertainment. Operators get a function and theory matrix, a public repeat infringer policy with an internal implementation standard, a notice workflow with templates, and an inducement audit covering marketing, internal communications, and product design. It also provides a feature launch form, a vicarious liability worksheet, responses to demand letters and third-party orders, and a litigation hold. Rightsholders get a theory selection matrix, an evidence log, demand letter templates, and a clause bank of pleading language. Each paper states its purpose, owner, and timing and includes drafting notes tied to authority.
Copyright Claims Board Filing and Opt-Out Checklist: A Practical Checklist
This checklist turns the Copyright Claims Board's statute and rules into a sequence of concrete tasks and deadlines for both sides of a small copyright dispute. The claimant parts cover screening a dispute for Board eligibility, locking down registration and ownership, building the evidence file, choosing the claim type and track, completing the eCCB claim form, surviving compliance review, and serving the respondent and filing proof of service on time. The respondent parts cover the day of service, investigating the claim, comparing exposure at the Board and in federal court, and either opting out correctly with the confirmation code or preparing to participate. Shared parts cover the active proceeding, settlement, defaults, and the short windows for reconsideration, the Register's review, district court challenges, and confirmation of an unpaid award. A one-page deadline card leads the document, and each item carries a short note and the governing provision of 17 U.S.C. sections 1501 to 1511, 37 C.F.R. Parts 220 to 234, or the case law the Board applies. The checklist reflects the statute, the regulations, and Board practice as of April 2025.
Asserting or Defeating a Trademark Fair Use Defense: A Practical Guide
This guide walks through a trademark fair use dispute step by step from both sides: the accused user who wants to assert descriptive fair use, nominative fair use, a dilution exclusion, or an expressive-work defense, and the brand owner who wants to defeat it. Part one follows the accused user from the demand letter through the declaratory judgment decision, the answer, discovery, surveys, summary judgment, preliminary injunction practice, and trial. Part two follows the brand owner through investigation, claim selection, pleading around the defense after Jack Daniel's v. VIP Products, discovery aimed at use as a mark and good faith, and the injunction and summary judgment fights. It explains who carries which burden in each circuit, what evidence actually decides these cases, and how the Federal Rules and the Lanham Act set the deadlines. A timeline and cost table, special situations (the TTAB, personal names, certification marks, online uses, and constitutional challenges), an extended worked example involving a sunscreen tagline, common mistakes, an FAQ, and practical takeaways complete the guide.
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.
Advanced Domain Dispute Toolkit: URS Complaints, In Rem Pleadings, and Reverse Hijacking Defenses
This toolkit collects the working papers for the domain disputes that the basic UDRP forms do not cover. It begins with a URS eligibility worksheet, a model 500-word URS complaint with an annex index, a registrant's URS response, and appeal and default-review notices. The in rem section supplies the notice of intent to proceed, a due diligence declaration, a verified complaint for the Eastern District of Virginia, the letter that triggers the registrar certificate, a publication motion and order, and default judgment papers with a registry fallback. The registrant's section provides a reverse domain name hijacking request for a UDRP response, a ten-business-day action plan with the registrar notice, a complaint under 15 U.S.C. § 1114(2)(D)(v), a pre-suit self-audit, and a deadline calendar. Each template states its purpose, owner, and timing and ends with drafting commentary tied to the governing rules and cases.
Employee Invention Assignment Agreements: Drafting for Enforceability Across Jurisdictions
Companies routinely assume they own whatever their employees invent—and routinely discover, at the worst possible moment, that they do not. This article explains how to draft invention assignment agreements that courts will actually enforce, following a fictional startup through the title problems that surface in financings and acquisitions. It covers the default rule that inventors own their inventions, the shop-right and hired-to-invent doctrines that fill part of the gap, the decisive difference between a present assignment and a mere agreement to assign that the Supreme Court applied in Stanford v. Roche, the FilmTec line of Federal Circuit cases that made "hereby assigns" magic words, the state carve-out statutes that limit what employers can claim, the consideration that existing employees must receive, holdover and prior-invention provisions, the gap between copyright's work-made-for-hire doctrine and patent law, and the chain-of-title defects that derail transactions and standing. The throughline: the cheapest moment to secure clear title is at hiring, and the most expensive is when a deal or a lawsuit depends on it.
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.
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.
Trade Secret Defense Checklist: A Practical Checklist
This checklist turns a trade secret defense into phased tasks that can be printed and worked through from the day a demand letter arrives until post-trial motions. Each item names its governing authority, with notes on how the task goes wrong in practice and red flags where a mistake is hard to undo. It covers containment and preservation across source control, lab, chat, and personal accounts, then representation and privilege, fact finding, the letter response, and forcing identification. An element-by-element screen tests secrecy, publication, reasonable measures, value, use, limitations, contract terms, displacement, immunity, and unclean hands. Later phases address independent development proof, pleadings and Rule 11, emergency relief, discovery, summary judgment, trial preservation, and fee motions.