Legal insights
Analysis from the front lines of IP & technology law.
Our attorneys write about the developments shaping intellectual property—from the PTAB and the Federal Circuit to the practical realities of protecting fast-moving technology.
Design Patents vs. Trade Dress Protection for Product Configurations: A Comprehensive Analysis
Companies that want to protect the way a product looks face a choice between two very different intellectual property regimes: the design patent, a 15-year examined federal right, and trade dress, a use-based and potentially perpetual trademark right. This article compares the two head to head across every axis that matters in practice—subject matter, the functionality bar in each system, term, cost and timeline, the secondary-meaning requirement that burdens product-configuration trade dress, examination versus use-based rights, claiming and scope, infringement standards, remedies including the extraordinary total-profits award of 35 U.S.C. 289, and international protection. It explains how the two regimes interact, why an expired utility patent is "strong evidence" of functionality under TrafFix, and how a well-counseled company can layer both forms of protection over time. A decision framework rendered in prose and a worked hypothetical translate the doctrine into an actionable strategy. The article is written so that a judge, a practicing lawyer, and a non-lawyer business owner can each follow the analysis.
Seeking or Opposing an Apex Deposition: A Practical Guide
This guide takes the lawyer seeking a senior executive's deposition, and the lawyer resisting it, through every step from the first discovery plan to the day the executive testifies. It begins with the decisions to make before acting: which forum's burden rules apply, whether the witness is a current officer, a former executive, a nonparty, or a government official, and how far the executive was personally involved in the facts. The requesting side's steps cover mapping the executive's involvement, exhausting less intrusive discovery, building a unique-knowledge evidence chart, noticing or subpoenaing the deposition, and moving to compel. The resisting side's steps cover same-day triage of the notice, investigating before anyone signs a declaration, offering alternatives, drafting the motion and proposed order, seeking review, and preparing the executive for a limited deposition. A timeline and effort table, an extended worked example built around a supply-contract dispute, common mistakes, an FAQ, and takeaways close the guide.
Maintaining Trademark Registrations
A federal trademark registration is not a trophy you win once and hang on the wall; it is a living asset that must be fed, watered, and defended on a schedule set by the Lanham Act. This guide walks through every maintenance milestone the United States Patent and Trademark Office imposes—the Section 8 declaration of continued use between the fifth and sixth years and at every renewal, the Section 9 renewal every ten years, the Section 71 path for Madrid Protocol registrations, and the optional but powerful Section 15 declaration of incontestability. It explains specimens, the USPTO's random proof-of-use audit program, grace periods, the steep 2025 fee increases, and what actually happens when you miss a deadline. Beyond the paperwork, it covers the substantive threats that can destroy a mark no matter how perfectly you file—genericide, abandonment through three years of nonuse, and naked licensing that strips a mark of meaning. It closes with practical docketing and recordkeeping habits, an FAQ, and links to related mclaw.io resources on trademark prosecution, licensing, and enforcement.
Artificial Intelligence Key Legal Issues: An Overview
Artificial intelligence has moved from research labs into contracts, hiring pipelines, courtrooms, and creative studios, and the law is scrambling to keep up. This overview maps the legal terrain a business or its counsel must cross before deploying AI: who owns what a machine creates, how copyright and patent law treat the absence of a human author, where biometric and data-privacy statutes like BIPA draw the lines, how anti-discrimination law reaches algorithmic bias, and how to allocate risk in AI contracts. It also covers the liability puzzle of autonomous systems, the obligations the EU AI Act imposes on anyone touching the European market, and the professional-responsibility rules that punished lawyers who trusted a chatbot's citations. The piece pairs primary authority with plain-English explanation and practical guidance for navigating a fast-moving field.
Motions to Compel and Discovery Sanctions Under Rule 37: From Meet and Confer to Default Judgment
This article explains how federal discovery enforcement works as a ladder, from the good-faith conference that must precede a motion to compel, through mandatory fee shifting under Rule 37(a)(5), to the escalating sanctions of Rule 37(b) that end in default judgment or dismissal. It traces the Supreme Court cases that set the outer limits, including Societe Internationale v. Rogers, National Hockey League v. Metropolitan Hockey Club, Insurance Corp. of Ireland v. Compagnie des Bauxites de Guinee, Pierce v. Underwood, Chambers v. NASCO, and Goodyear Tire & Rubber Co. v. Haeger. It sets out what counts as a failure to respond, why boilerplate objections and silent withholding now lose motions, and how the circuits' multi-factor tests decide when terminating sanctions are just. Separate sections cover Rules 37(c), (d), (e), and (f), 28 U.S.C. § 1927 and inherent power, magistrate judge authority and Rule 72(a), nonparty enforcement under Rule 45, and the limits on immediate appeal. An extended worked example follows a commercial case from deficiency letter to default, and the article closes with common mistakes, an FAQ, and practical takeaways for both sides.
Filing or Responding to a Trademark Expungement or Reexamination Petition: A Practical Guide
This guide walks petitioners and registrants through a trademark expungement or reexamination proceeding under 15 U.S.C. §§ 1066a and 1066b and 37 C.F.R. §§ 2.91 to 2.94, step by step and in the order things actually happen. For petitioners, it covers computing the filing windows, choosing between expungement, reexamination, and a TTAB cancellation, planning and documenting a reasonable investigation, assembling the evidence index and verified statement, and filing through TEAS. For registrants, it covers reading the institution notice, calendaring the three-month deadline, gathering evidence of use that satisfies the statute rather than the specimen rules, deciding what to defend and what to delete, claiming excusable nonuse where available, and preserving the record for appeal. It explains the decisions that shape practice, including In re Locus Link and Common Sense Press v. Van Sciver, along with timelines, fees, special situations, and the rules on reconsideration, TTAB appeals, and Federal Circuit review. A worked example follows a coffee roaster that receives a reexamination notice for services it launched after its statement-of-use deadline, and the guide closes with common mistakes, an FAQ, and practical takeaways.
Software Licensing Agreements: An Overview
A software license is permission to use code you do not own, and that one legal choice—license, not sale—quietly organizes a multi-trillion-dollar industry. This high-level overview explains the big ideas behind software licensing rather than walking clause by clause: why copyright (17 U.S.C. 106 and 117) makes running a program an act that needs permission, why the first-sale doctrine pushed the whole industry from selling to licensing, and how Vernor v. Autodesk decides when a "sale" is really a license. It offers mental models for reading any software contract, surveys the four licensing worlds (perpetual, subscription, SaaS, and open source), explains how courts decide whether a clickwrap or browsewrap deal even formed (ProCD, Specht, Nguyen, Meyer), and maps the lifecycle of a license from grant to exit. Throughout, it points you to mclaw.io's deeper drafting, review, and transaction resources for the clause-level detail. The aim is a clear conceptual map a founder, an in-house lawyer, a judge, or a curious non-lawyer can all follow. This is general information, not legal advice.
Open Source Compliance Checklists: The Complete Collection
Ready-to-use checklists for every stage of an open source compliance program, from pre-audit scoping to incident response. Open source compliance fails not because the law is mysterious but because nobody runs the checklist. Hundreds of components, dozens of license families, and a codebase that changes hourly turn a tractable legal obligation into an overwhelming one—until you break it into discrete, checkable steps. This collection is the operational backbone of an open source compliance program: ready-to-use checklists for every stage, from pre-audit scoping and component discovery through license classification, copyleft exposure analysis, gap assessment, remediation, ongoing program maintenance, M&A due diligence, SBOM generation, and incident response. Each checklist carries enough legal context—anchored in real cases like Jacobsen v. Katzer and SFC v. Vizio, and in concrete obligations under the MIT, BSD, Apache, GPL, LGPL, AGPL, and MPL licenses—to make clear why the step matters and what happens if you skip it. It is the operational companion to our narrative guide on open source licensing landmines, and the definitive working reference for engineers, in-house counsel, and deal teams who would rather check a box than receive a demand letter.
Trademark Function Toolkit: Specimen Audits, Secondary Source Evidence, and Office Action Response Outlines
This toolkit collects the working papers for responding to USPTO failure-to-function and ornamental refusals, each introduced by its purpose, its owner, and when to use it, and each followed by drafting commentary tied to the governing statute, rules, and cases. The intake templates are a refusal triage memo, a specimen audit worksheet, a client fact and document request, and a chart for classifying the examining attorney's third-party evidence. The evidence templates are a substitute specimen and basis amendment package, a secondary-source declaration, and a bank of alternative-claim language for Section 2(f) and the Supplemental Register. Four office action response outlines address ornamental, informational, widely used message, and hashtag refusals, and a further template covers the request for reconsideration and notice of appeal. A client-facing merchandise labeling guide, a letter-of-protest and opposition evidence outline for third parties, and a deadline tracker complete the set, all illustrated by one running example.
Missed Federal Deadlines: Rule 6, Excusable Neglect, and the Deadlines a Court Cannot Excuse
Federal deadlines fall into three families, and the family decides whether a judge can help you. This article explains how Rule 6 counts time, including holidays, backward counting, electronic filing cutoffs that come well before midnight, and what happens when CM/ECF fails. It reads Pioneer and the circuit decisions applying it closely to show when a calendaring error is excusable and when it loses. It then separates the deadlines a court may extend from the ones it may not, tracing the line from Kontrick through Bowles, Hamer, Boechler, Harrow, Riley, and Parrish. Separate sections cover service under Rule 4(m), scheduling orders, default, relief from judgment after Kemp and Coney Island, removal, equitable tolling, and a lawyer's duty to tell the client and the carrier. Practitioners get the splits and standards of review, and everyone else gets a plain account of what can still be saved.
Fraud on the USPTO: How a False Declaration Can Cost You a Trademark Registration
Every trademark application and maintenance filing rests on a sworn statement, and a knowingly false one can destroy the registration it supports. This article traces the law from the Board's "should have known" era under Medinol through the intent requirement of In re Bose and the unresolved fight over reckless disregard after Chutter and Great Concepts. It separates fraud in procuring or maintaining a registration, which supports cancellation under Section 14, from fraud in a Section 15 incontestability declaration, which does not. It explains what is lost when fraud is proved (the class, not always the whole registration), how damages work under 15 U.S.C. § 1120, why fabricated and digitally created specimens have become a central battleground, and how USPTO sanctions orders have terminated tens of thousands of filings tied to filing mills. It also compares fraud with the easier routes of nonuse cancellation, expungement, reexamination, and post-registration audit. Readers get worked examples, a circuit-by-circuit map, and a list of what remains unsettled as of November 2026.
The Evolving Landscape of Product Configuration Protection: Balancing Innovation and Competition
Product configuration—the shape and overall appearance of a product itself—can be protected as trade dress, but only within boundaries the Supreme Court has deliberately drawn tight to preserve competition. This article approaches the subject as a problem of competition policy and protection strategy, not just doctrine. It explains the foundational right to copy unpatented articles under Sears, Compco, and Bonito Boats; the channeling principle that routes inventions to patent law and source-identifiers to trademark law; the functionality doctrine as the system's safety valve, now sharpened by TrafFix and the Third Circuit's Pocky decision; and the heavy proof burdens of non-functionality and acquired distinctiveness that flow from Wal-Mart. It maps the four overlapping regimes—utility patent, design patent, trade dress, and post-Star Athletica copyright—and shows how to select and layer them on purpose rather than by accident. It then covers registration practice before the USPTO and the TTAB and the emerging pressure points of 3D printing and virtual goods. The goal is a practical, forward-looking framework for protecting design without overreaching into territory the law reserves for the public.