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.
Patent Subject-Matter Eligibility After Alice: A Practical Checklist
More than a decade after Alice Corp. v. CLS Bank, software and business-method patents still face a brutal invalidity rate under 35 U.S.C. § 101—yet meaningful protection remains achievable for those who understand the rules. This checklist walks a drafter or prosecutor through the Alice/Mayo two-step framework as the USPTO applies it (Step 2A Prong One and Prong Two, then Step 2B), through the Federal Circuit guideposts that mark the narrow path to eligibility (Enfish, DDR Holdings, McRO, BASCOM, Finjan), and through the recurring patterns of ineligibility to avoid (the collect/analyze/display trap, the specification-claim disconnect, "do it on a computer"). It translates each into concrete claim-drafting, specification, and prosecution moves, including the Berkheimer factual showing and the 2024 AI guidance examples, and it flags the unsettled state of § 101 reform (PERA). The goal is to draft and prosecute claims that live on the right side of the line.
Trademark Licensing and Quality Control: How Naked Licensing Kills a Brand
A trademark license is not like a patent or copyright license. Because a trademark exists to tell consumers who stands behind a product, a licensor who lets someone else use the mark without controlling the quality of what the mark appears on is not just being careless. It may be forfeiting the mark entirely, a doctrine courts call naked licensing. This article explains why quality control is a legal requirement rather than a business preference, what the leading cases in the Ninth, Seventh, and Second Circuits actually demand, and how much control is enough, including the reasonable-reliance line of authority that saves some licensors who never inspected anything. It then works through the anatomy of a trademark license clause by clause: grant and scope, quality standards and approval mechanics, audit rights, marking, goodwill and assignment, sublicensing, term and termination, post-termination sell-off, and what happens in bankruptcy after Mission Product v. Tempnology. A long section covers the accidental franchise problem under the FTC Franchise Rule and state franchise statutes, which turns many ordinary licenses into regulated offerings without anyone noticing. It closes with drafting checklists, a worked example, an FAQ, and related reading.
Patent Basics: A Plain-English Guide
A warm, beginner-friendly introduction to patents for inventors, founders, and the merely curious—but with real legal teeth. It explains what a patent actually is (a bargain: you disclose your invention to the public, and in exchange you get a time-limited right to exclude others) and walks through the four statutes that govern patentability—35 U.S.C. 101, 102, 103, and 112. It covers the three types of patents, the claims that form the heart of every patent, the term of protection, and the first-inventor-to-file system created by the America Invents Act. It explains step by step how you actually get a patent, what it costs, and how long it takes, and it explains what happens after a patent issues, including how third parties can challenge it. It debunks the two most persistent and dangerous myths in this field—the "poor man's patent" and the idea that "patent pending" gives you enforceable rights—and closes with guidance on hiring a registered patent attorney, an FAQ, and links to deeper resources.
Winning or Opposing a Trademark Preliminary Injunction: A Practical Guide
This guide walks a trademark owner and an accused party through a preliminary injunction fight in the order the work actually happens. It starts with the first 48 hours, then covers the decision to move, whether to send a letter, forum and parties, and the choice among an ex parte TRO, a seizure order, and a noticed motion. It sets out who should sign which declaration, how to structure each side's brief around the statutory presumption, and how to write and attack a delay chronology. Sample language, a survey decision framework, bond strategy, order drafting, hearing preparation, and post-ruling steps follow. Two worked examples show a movant with a six-week runway and a small defendant with a thin budget. A section on common mistakes closes the guide for each side.
Federal Registration and Constructive Use Under 15 U.S.C. § 1057(c): A Practical Guide
The single most valuable date in a trademark owner's life is often its application filing date, and the reason is a doctrine called constructive use. Under 15 U.S.C. § 1057(c), filing a federal application that later matures into a registration is treated as use of the mark everywhere in the country as of the filing date—conferring a nationwide right of priority against almost everyone who comes later. This guide explains, in plain language for lawyers and business owners alike, exactly what constructive use does and does not accomplish. It distinguishes constructive use from the older concept of constructive notice, explains why the priority is "contingent" on registration and relates back to the filing date, walks through the crucial "except for" carve-outs that protect prior users, prior applicants, and foreign-priority claimants, and analyzes how the doctrine interacts with the Tea Rose-Rectanus common-law framework. It covers Zirco, WarnerVision, Allard, and Sengoku, the burden of proof, the Madrid Protocol's earlier-still constructive-use date, and closes with worked examples, a litigator's playbook, and an FAQ.
Running a Rebrand: A Practical Legal Guide
This guide walks a company and its counsel through a rebrand from the first conversation about why the name must change to the year after launch, with a parallel track for the senior user whose objection forces a rebrand. It starts with the decisions that shape the project: the reason for the change, its scope, whether it is a refresh or a replacement, and the budget and timeline. Twelve numbered steps follow, each with what to do, why, the governing authority, pitfalls, timing, and cost: inventorying the existing brand estate, setting legally sound naming criteria, knockout and full searches, resolving conflicts, filing intent-to-use and foreign applications, securing domains and handles, planning the transition, changing corporate names and notifying counterparties, launching and perfecting registrations, deciding the legacy mark's future, and monitoring after launch. A separate section covers rebrands required by a demand letter, settlement, or injunction, from both sides. A timeline and cost table, a worked example following a pet food company from PAWSOME BITES to KINDLEWOOD, common mistakes, an FAQ, and takeaways close the guide.
Filing an International Trademark Application Under the Madrid Protocol: A Practical Guide
This guide takes a U.S. trademark owner through an international application under the Madrid Protocol, from choosing the basic mark to renewing the international registration ten years later. It begins with the decisions to make before filing: eligibility, whether Madrid suits the target countries, which U.S. application or registration to rely on, the Paris priority window, and the goods and services specification. Twelve numbered steps then cover building the specification, choosing designations, computing fees in Swiss francs, preparing the USPTO's TEAS international application, answering USPTO and WIPO irregularity notices, docketing the registration, handling provisional refusals through local counsel, surviving the five-year dependency period, and managing subsequent designations, changes, replacement, and renewal. Separate sections address foreign owners extending protection to the United States and third parties who want to oppose a designation or mount a central attack. A timeline and cost table, a worked example following a skincare company's filing, common mistakes, an FAQ, and takeaways close the guide.
Trademark Clearance Search Checklist: A Practical Checklist
A step-by-step clearance checklist that takes a proposed mark from a short list of candidates through a knockout pass, a full search across federal, state, common-law, domain, and social sources, a likelihood-of-confusion analysis, risk triage, documentation, and the proceed/modify/abandon decision. It reflects the USPTO's retirement of TESS in favor of the cloud-based Trademark Search tool. It explains why each step matters, the traps that breed false confidence, and how a documented clearance file builds the good-faith record that blunts a later willful-infringement charge. Use it alongside our full clearance article and the application checklists. Educational, not legal advice; for a high-stakes launch, obtain a clearance opinion from qualified counsel.
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.
The Doctrine of Equivalents and Prosecution History Estoppel: When a Patent Reaches Beyond Its Literal Words
This article explains how a patent can reach a product that falls outside the literal words of its claims, and why that reach has shrunk so far. It traces the doctrine of equivalents from a nineteenth-century coal car through Graver Tank, Warner-Jenkinson, and Festo, then works through the limits that now decide most cases: prosecution history estoppel, the all-elements rule and vitiation, disclosure-dedication, and ensnarement. A running hypothetical about a claim to "at least three rollers" shows how each limit operates on the same facts. Separate sections cover foreseeability and narrow claiming, the proof demanded by VLSI and NexStep, software, design patents, and who decides what between judge and jury. Readers finish with a working map of why these cases are won and lost, and what that means for drafters and for companies designing around a patent.
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.
Trademark Coexistence and Consent Agreement Checklist: A Practical Checklist
This checklist turns the negotiation, drafting, filing, and administration of a trademark coexistence or consent agreement into check-off tasks for both the party seeking consent and the party asked to give it. It is organized in nine phases, from the threshold assessment and rights mapping through core terms, protective covenants, long-term provisions, the USPTO consent, closing, and post-signing administration. Each item names the governing authority and adds a short practical note. Red-flag boxes highlight the problems that most often defeat agreements: naked consents, territorial promises that do not match the register, market-division terms, and accidental licenses. A deadlines table, a list of common failure points, and a short worked example close the checklist.