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.

Intellectual PropertyPatent and Trademark

Understanding Patent and Trade Dress Marking Requirements: A Comprehensive Guide for Businesses and Practitioners

This guide puts the marking and notice regimes that govern every major category of U.S. intellectual property side by side, so a business owner, an attorney, and a judge can all follow the analysis. It covers utility and design patents under 35 U.S.C. § 287 (constructive notice, the "substantially all" rule, actual notice, virtual marking, and licensee compliance), the false-marking prohibition of § 292 after Forest Group v. Bon Tool and the America Invents Act, federal trademark and trade dress registration notice under 15 U.S.C. § 1111, the TM and SM symbols for unregistered marks, and copyright notice under 17 U.S.C. §§ 401-402 after the Berne Convention. It explains how each regime affects a rights holder's ability to recover damages or profits, the penalties for over-marking, and how the three logics differ. The article then synthesizes everything into a unified marking-compliance program and a fully worked example of a single branded product carrying a utility patent, a design patent, registered trade dress, and copyrighted works, showing exactly how each notice should appear. Primary statutory and case authority is cited throughout.

Casey Scott McKayNovember 27, 202449 min read

Intellectual PropertyTrademark Litigation

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.

Casey Scott McKayNovember 24, 202460 min read

Intellectual PropertyTrademark Litigation

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.

Casey Scott McKayNovember 23, 202441 min read

Intellectual PropertyTrademark

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.

Casey Scott McKayNovember 23, 20248 min read

CorporateSecurities

Navigating the Capital Raising Maze: A Comprehensive Guide for Startups and Small Businesses

Raising money is one of the most heavily regulated things a young company will ever do, because nearly every dollar a startup accepts in exchange for stock, a note, or a SAFE is a sale of a "security" governed by the federal Securities Act of 1933. This guide maps the full terrain: the Section 5 registration requirement and why almost every private company instead relies on an exemption; the workhorse exemptions in Regulation D (Rules 504, 506(b), and 506(c)) and the meaning of "accredited investor" after the 2020 amendments; Regulation Crowdfunding, Regulation A+, and intrastate offerings; the integration framework that decides when two raises count as one; Form D, blue-sky notice filings, bad-actor disqualification, restricted securities and Rule 144, and the anti-fraud rules that always apply; and the practical menu of instruments, from priced equity and SAFEs to convertible notes, venture debt, and revenue-based financing. A worked example walks a hypothetical startup through a clean seed round. The article is written so a founder, a lawyer, and a judge can all follow it, and it is for general education only, not legal advice.

Casey Scott McKayNovember 19, 202459 min read

ConstitutionalGovernment Transparency

Requesting Public Records and Challenging a Denial: A Practical Guide

This guide is a working manual for getting records out of a government agency. It explains how to find the right agency and the right custodian, how to describe records so the request cannot be denied as unreasonable, how to request fee waivers and expedited processing, and how to negotiate scope when the estimate comes back high. It then covers what to do when the response is inadequate: identifying the defects that most often appear in denials, writing an administrative appeal that gets records released, and litigating when it does not. A final section covers open meetings complaints and the remedies available for a violation.

Casey Scott McKayNovember 17, 202427 min read

ImmigrationEmployment Verification

I-9 Compliance and Preparing for an ICE Audit

The Form I-9 is one page, and it generates more employer penalties than any other single document in immigration practice, because the violations are technical, countable, and multiplied across every employee. This guide covers the requirement and the audit. It walks the form section by section with the timing rules and the document rules that generate most errors, then covers reverification, the retention formula employers routinely miscalculate, and the remote examination alternative procedure and its conditions. It addresses E-Verify, where it is required, and the tentative nonconfirmation process that carries its own liability. The second half covers the internal audit, including the correction protocol that cures errors without creating new ones, then the ICE inspection from the notice through the fine notice, the categories of violation and how penalties are computed, and the anti-discrimination provisions that make overcorrection its own offense.

Casey Scott McKayNovember 15, 202425 min read

CorporateSecurities

Securities Compliance for Startups: Regulation D, Rule 506, Blue Sky, and Form D

Every time a startup takes money for equity, a SAFE, or a convertible note, it is selling a security, and federal law makes it unlawful to sell a security unless the offering is registered or exempt. Most founders never register, which means every financing depends on an exemption, and exemptions have conditions that are easy to break by accident. This article explains the system from the ground up: what counts as a security under Howey and Reves, why Section 5 imposes strict liability with a rescission remedy that lets a disappointed investor demand its money back, and how the private placement exemptions actually work. It covers Regulation D in detail, including the difference between Rule 506(b) and Rule 506(c), what general solicitation means and how founders trigger it inadvertently, the accredited investor definition, verification obligations, Form D filing, and the bad actor disqualification rules. It then covers the state blue sky layer and federal preemption, employee equity under Rule 701, the crowdfunding and Regulation A alternatives, resale restrictions under Rule 144, the integration rules, the anti-fraud provisions that apply to every offering regardless of exemption, and the finder problem that traps more startups than any other issue. It closes with a compliance checklist, a worked example, an FAQ, and related reading.

Casey Scott McKayNovember 13, 202426 min read

Real EstateResidential

Residential Real Estate Toolkit: Offers, Contingencies, Disclosures, and Closing

A working kit for residential transactions. Section A compares deed types, title policies, and loan products in tables built for decisions. Section B is a contingency clause library with strong and weak versions of each provision side by side. Section C holds letters and forms: an inspection response, a title objection, a repair credit amendment, an appraisal reconsideration request, an escrow release demand, a walkthrough form, and a post closing occupancy agreement. Section D holds a wire fraud verification protocol and a Closing Disclosure comparison worksheet. Section E holds a co ownership agreement term sheet. Section F collects the primary authorities.

Casey Scott McKayNovember 11, 202414 min read

TechnologyPrivacy and Data Security

Data Breach and Incident Response Toolkit: From Detection to Notification

An incident response plan is tested exactly once, under conditions where nobody has time to read it. This toolkit is built for that moment and for the preparation that makes it survivable. It starts with what must exist before an incident, because the decisions that determine cost are made in advance: the plan, the retainers, the insurance, and the logging that makes an investigation possible. It then works through the first hours, containment and evidence preservation, the privileged forensic investigation and the case law that governs whether the report stays privileged, the legal analysis that determines whether notification is required in each jurisdiction, and the notification mechanics themselves. Later stages cover ransomware and its sanctions problem, business email compromise, vendor breaches where the data is yours and the incident is not, regulatory response, litigation that follows, and the post-incident work that reduces the next one.

Casey Scott McKayNovember 11, 202414 min read

CorporateExecutive Compensation

Structuring an Employee Stock Ownership Plan

An ESOP is simultaneously a retirement plan governed by ERISA, an acquisition financing structure, a tax planning device, and a succession vehicle, and it fails when the parties treat it as only one of those. This guide covers the structure end to end: what an ESOP is and how leveraged transactions actually work, the tax benefits that make it attractive on both the seller side and the company side, the valuation and fiduciary requirements that generate nearly all of the litigation in this area, the repurchase obligation that determines whether the structure is sustainable, the governance arrangements that follow, and the ongoing administration. It also addresses when an ESOP is the wrong answer and what the alternatives are. It closes with a side-by-side comparison of an ESOP against a strategic sale and a private equity recapitalization, and with a caution about advisors who occupy multiple roles in the same transaction.

Casey Scott McKayNovember 9, 202425 min read

Intellectual PropertyTrademark Litigation

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.

Casey Scott McKayNovember 6, 202441 min read