Thursday, January 25, 2018
The "Tax Cuts and Jobs Act of 2017" (the "TCJA") changed the tax treatment of self-created intellectual property ("IP").
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Under the TCJA, patents, inventions, models or designs
and secret formulas or processes no longer qualify as capital assets, nor do they qualify as property used in a trade or business.
As a result, after recapture, all gain on these assets appear to be ordinary.
Fortunately, the limitation on capital gain treatment
of self-created IP does not apply to self-created copyrights, literary, musical, or artistic compositions and similar property.
The IRC Section 1221(b)(3) election remains unchanged by the new law.
In addition, Congress retained the narrow exception provided by
Section 1235 which allows some inventors and investors the opportunity to obtain capital gain treatment when transferring
"all substantial rights" to a patent. Unfortunately, Section 1235 does not apply to self-created
non-patent property; e.g., inventions, models or designs (unpatented), or secret formulas or processes - it only applies to
In light of the foregoing, patent owners should consider transferring "all substantial rights"
to patents. In addition, self-created IP owners should consider selling the ownership of the company and
not its assets. Regardless, IP owners should continue to identify all elements of the business which may
be capital assets, e.g., goodwill, workforce-in-place, trademarks, customer-based intangibles, supplier intangibles, etc.
Offices of Mark E. Wiemelt, P.C. do not render tax advice. Therefore, taxpayers should consult with their
tax advisors or professionals.
Wednesday, January 24, 2018
U.S. Copyright Office amends rules for deposit requirements
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16, 2018, the U.S. States Copyright Office rules that govern the deposit requirements for certain types of
literary works and musical compositions are amended. Under the previous regulations, two copies of the best edition
were generally needed to register these types of works and to comply with the mandatory deposit requirement. Under the new
rule, copyright owners will be able to satisfy both registration deposit and mandatory deposit requirements by submitting
one copy of the best edition of the work.
Tuesday, January 9, 2018
U.S. Copyright Office Issues Final Reminder to Re-Register DMCA Agents in Electronic System
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31, 2017, the U.S. Copyright Office issued a final reminder that any online service provider that designated an
agent with the Office pursuant to the Digital Millennium Copyright Act (DMCA) under the Office’s old paper-based registration
process, and that wishes to maintain an active designation with the Office, has until December 31, 2017, to re-register its designation using the Office’s
new online registration system. After December 31, 2017, all paper designations will expire and become invalid.
Tuesday, November 7, 2017
Revised system for designating agents under the Digital Millennium Copyright Act (“DMCA”)
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The United States Copyright Office revised its system for designating agents for receipt of claims of copyright
infringement under the Digital Millennium Copyright Act (“DMCA”) with a new electronic system. Under the revised
system, website operators and other online service providers must designate agents by December 31, 2017, or risk losing protection
under the DMCA.
A company which displays infringing content on
its website may be liable for copyright infringement even if the content was posted by a user.
However, the DMCA provides a safe harbor from copyright infringement liability for online service providers, such as
website owners. In particular, the DMCA provides protection from monetary damages and,
in many cases, injunctive and other equitable relief, due to copyright infringement arising from material stored at the direction
of a user. An online service provider can enjoy the safe harbor of the DMCA so long
as it (i) does not have actual knowledge that the material is infringing, or (ii) is not aware of facts or circumstances from
which infringing activity is apparent, or (iii) upon obtaining such knowledge or awareness, acts expeditiously to remove or
disable access to the material.
the DMCA, copyright owners send notices to online service providers, through their designated DMCA agents, identifying allegedly
infringing content. If the service providers expeditiously remove or disable access to the content, the DMCA protects the
service provider from liability. Online service providers must satisfy several requirements
to qualify for protection under the DMCA. Primarily, service providers must designate an agent with the Copyright Office.
This agent receives claims of copyright infringement. In order to maintain an active agent designation, a service provider must submit a new designation using the online DMCA system located at https://dmca.copyright.gov/osp/login.html by December 31, 2017. Agent registration
must be renewed with the Copyright Office using the electronic system every three years and currently incurs a government
fee of $6. Any designation not made by the electronic system will expire and become invalid after December 31, 2017.
A single account can be used to register and
manage designations for multiple service providers, but each separate legal entity must file separate designations. For example,
a parent company and subsidiaries may use the same account, but each must register their designated agents separately.
Online service providers must comply with several other requirements
to enjoy the protection of the DMCA, including: (1) Designation of agent on website; (2) Repeat infringer policy on website;
(3) Repeat infringer policy reasonably implemented; and (4) No interference with standard technical measures – “Standard
technical measures” are measures used by copyright owners to identify or protect copyrighted works that have been developed
pursuant to a broad consensus of copyright owners and service providers.
Wednesday, June 28, 2017
Constitutionality of Trademark Law's Scandalous Provision Remains Questionable after Supreme Court Decision Invalidating Disparagement
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Section 2(a) of the Lanham Act,
15 U.S.C. § 1052(a), bars registration of marks that consist of or comprise matter which may disparage persons, institutions,
beliefs, or national symbols, or bring them into contempt or disrepute (“the disparagement provision”), and marks
that consist of or comprise immoral or scandalous matter (“the scandalousness provision”). These provisions were challenged in separate court actions as unconstitutional under the Free Speech Clause
of the First Amendment. See Matal v. Tam, No. 15-1293 (U.S. Supreme Court
on petition for certiorari from in In re Tam, No. 14-1203 (Federal Circuit) (disparagement provision) and In
re Brunetti, No. 15-1109 (Federal Circuit) (scandalousness provision). In 2015,
the Federal Circuit held that the disparagement provision constitutes viewpoint discrimination and is facially unconstitutional
under the First Amendment’s Free Speech Clause. In re Tam, 808 F.3d
1321, 1358, 117 USPQ2d 1001, 1025 (Fed. Cir. 2015) (en banc), as corrected (Feb. 11, 2016).
On June 19, 2017, the Supreme Court of the United States decided Matal v. Tam, 582 U.S. ___ (2017), which
affirmed the judgment of the Federal Circuit. Id.
The Federal Circuit has ordered the parties to submit supplemental briefing in Brunetti explaining how the
constitutionality of the scandalousness provision should be resolved in light of the Supreme Court’s decision in
States Trademark Office ("USPTO") has been suspending action on pending applications involving marks subject to
refusal under the disparagement and scandalousness provisions until the Tam and Brunetti litigations conclude.
Because the constitutionality of
the scandalousness provision remains pending before the Federal Circuit in Brunetti, the USPTO will continue to suspend
examination of an application based on the scandalousness provision of Section 2(a) until the Federal Circuit issues a decision
in Brunetti, after which the USPTO will re-evaluate the need for further suspension.
Thursday, June 22, 2017
You can go disparage yourself (or others)!
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The U.S. Supreme Court recently ruled that the Trademark Office's rejection of trademarks that "disparage" others
violates the First Amendment.
The decision may pave the way for the Washington Redskins’ to keep the team’s
The ruling came in a case that involved an Asian American rock group called the Slants, which tried
to register the band’s name in 2011. The band was turned down by the U.S. Patent and Trademark Office because of a law
against registering trademarks that are likely to disparage people or groups.
The Supreme Court ruled the “disparagement
clause” of the federal trademark law was not constitutional, even though it was written evenhandedly, prohibiting trademarks
that insult any group.
“This provision violates the Free Speech Clause of the First Amendment,” Justice
Samuel A. Alito Jr. wrote in a section of the opinion supported by all participating justices. “It offends a bedrock
First Amendment principle: Speech may not be banned on the ground that it expresses ideas that offend.”
Friday, March 20, 2015
WIEMELT KNECHTEL again ranked among the Top Trademark Firms in the U.S.
WIEMELT KNECHTEL was also ranked among the
"TOP TRADEMARK FIRMS" in the U.S. in the May 2014, May 2013, May 2012, May 2011, May, 2010 and
May 2009 issues of Intellectual Property Today, a monthly publication
focused on legal issues in patent, trademark and copyright law. WIEMELT KNECHTEL was also ranked
among the "TOP PATENT FIRMS" in
the U.S. in the March 2013, February 2012, and March 2010 issues of Intellectual Property Today.
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Monday, May 12, 2014
Wiemelt Knechtel was again ranked among the "TOP TRADEMARK FIRMS" in the U.S.
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Wiemelt Knechtel was again ranked
among the "TOP TRADEMARK FIRMS" in the U.S. in the May 2014 issue of Intellectual Property Today, a monthly publication focused on legal issues in patent, trademark and copyright law. Wiemelt Knechtel was
also ranked among the "TOP PATENT FIRMS" in the U.S. in the March 2013, February 2012 and March 2010
issues of Intellectual Property Today. Wiemelt Knechtel was also ranked among the "TOP TRADEMARK FIRMS" in the U.S. in the May 2013, May 2012, May 2011, May 2010 and May 2009 issues of Intellectual Property Today.
Wednesday, May 15, 2013
Wiemelt Knechtel ranked again among the "TOP TRADEMARK FIRMS" in the U.S. in the May, 2013 issue of Intellectual Property
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Wiemelt Knechtel was ranked among the "TOP TRADEMARK
FIRMS" in the U.S. in the May 2013 issue of Intellectual Property Today, a monthly
publication focused on legal issues in patent, trademark and copyright law. Wiemelt Knechtel was also
ranked among the "TOP PATENT FIRMS" in the U.S. in the March 2013, February
2012 and March 2010 issues of Intellectual Property Today. Wiemelt Knechtel was
also ranked among the "TOP TRADEMARK FIRMS" in the U.S. in the May 2012, May 2011, May
2010 and May 2009 issues of Intellectual Property Today.
Why You Should Hire a Trademark Lawyer
WHY SHOULD YOU CONSIDER USING THE SERVICES OF
AN EXPERIENCED TRADEMARK ATTORNEY TO FILE TRADEMARK APPLICATIONS?
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A recent study
indicates that hiring an experienced trademark attorney statistically gives you a much greater chance
of successfully registering your trademark or service mark.
“Do Trademark Lawyers Matter?” University of North Carolina School of Law faculty members
Jon McClanahan and Deborah Gerhardt studied applications filed from 1985 to 2010 to determine whether
having a trademark attorney makes a difference in getting your application approved by the USPTO.
The study concluded that yes, in fact, it does. “These data suggest that the presence of
a lawyer made a meaningful difference,” the researchers wrote.
The study found that inexperienced, non-attorney applicants’ chances for registration
would have increased by 50 percent if they had used an attorney to file their application.
Monday, March 11, 2013
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Wiemelt Knechtel ranked among the "TOP PATENT FIRMS" in the U.S.
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Wiemelt Knechtel was ranked among the "TOP PATENT
FIRMS" in the U.S. in the March, 2013 issue of Intellectual Property Today, a
monthly publication focused on legal issues in patent, trademark and copyright law. Wiemelt Knechtel
was also ranked among the "TOP PATENT FIRMS" in the U.S. in the February,
2012, March, 2011, and March, 2010 issues of Intellectual Property Today. Wiemelt
Knechtel was also ranked among the "TOP TRADEMARK FIRMS" in the U.S. in the May, 2012, May,
2011, May 2010 and May, 2009 issues of Intellectual Property Today.
Monday, February 18, 2013
Mark E. Wiemelt appears on WBBM Noon Business Hour to discuss Tiffany lawsuit against Costco
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Mark E. Wiemelt, of WIEMELT KNECHTEL, appeared on the WBBM Noon Business Hour,
on February 15, 2013, to discuss the Tiffany lawsuit against Costco for selling alleged counterfeit engagement rings
under the Tiffany name. Mr. Wiemelt and the WBBM Noon Business Hour hosts, Sherman Kaplan and Kris Kridel, discussed
issues regarding detection of counterfeit products and enforcement of intellectual property rights, including trademarks and
Wednesday, December 19, 2012
Supreme Court to hear case involving reverse payment settlement in generic drug case
11:20 am cst
The Supreme Court has agreed to hear
the case of Federal
Trade Commission v. Watson Pharmaceuticals, et. al. (11th Cir.). This case involves the issue of “reverse payment”
settlement agreements. In these types of agreements, a generic drug company agrees to drop its challenge to a brand drug company’s
patent and refrain from entering the market for a specified period of time in exchange for a payment by the brand drug company
to the generic drug company.
There is a split in several
circuits with respect to the legality of reverse payment agreements. For example, the Third Circuit has found that “reverse
payments” are prima facie evidence of an unreasonable restraint of trade, which may result in a violation of
the antitrust laws. The Federal Circuit, however, has found that such agreements are valid if they do not extend beyond the
exclusionary scope of the patent.
The Supreme Court decision is expected by the end of June 2013. Until then, parties should continue
to be cautious about entering into such agreements and should consider
the circuit split when doing so.
Friday, September 28, 2012
Inventions take more than Eureka moment
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Mark E. Wiemelt, of WIEMELT KNECHTEL, was quoted in a September 26, 2012
Suburban Life article entitled Inventions take more than Eureka moment. The article addressed
the expense of defending patents during patent infringement lawsuits.
Wednesday, July 25, 2012
Slep-Tone lawsuit in Chicago appears to be subject to a Motion to Dismiss and/or Sever
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The recent lawsuit filed by Slep-Tone Entertainment Corporation against numerous
karaoke DJs (“KJs”) and venues in Chicago for alleged infringement of its SOUND CHOICE trademark and related trade dress appears to be subject to a Moton to Dismiss and/or Sever
for Improper Joinder. (Case No. 12-5750 in the Northern District of Illinois.)
In addition, the Defendants
may have insurance coverage for the lawsuits. Of course, it may not always be in the Defendant's best interest
to trigger insurance coverage. This decision should be made by counsel familiar with the merits of the intellectual property
claims, as well as the insurance coverage issues. Click here for an overview of FREE DEFENSE for IP infringement lawsuits.
If you have questions, please feel free to contact Attorney Mark Wiemelt at 312-372-7664 or by email
Tuesday, July 17, 2012
Supreme Court Decision Favors Generics
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On April 17, 2012, the Supreme Court, in Caraco Pharmaceutical Laboratories,
Ltd. v. Novo Nordisk A/S, confirmed that generic drug manufacturers can challenge brand-name use-code descriptions in
The Supreme Court interpreted a portion of the Hatch-Waxman Act dealing with section
viii statements. In particular, it addressed use codes and carve-out drug labeling and ruled
that it does not make sense to allow patentees to block unpatented treatment methods by filing inaccurate use
codes with the FDA. "Congress meant (as it usually does) for the provision it enacted to fit within the statutory
scheme—here, by facilitating the approval of non-infringing generic drugs under section viii.”
have questions, please feel free to contact Wiemelt Knechtel at 312-372-7664 or 602-910-4250 or by email at firstname.lastname@example.org or email@example.com.
Thursday, July 12, 2012
Seventh Circuit Ruling Favors Trademark Licensees
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On July 9, 2012, the U.S. Court of Appeals for the Seventh Circuit issued its
decision in Sunbeam Products, Inc. v. Chicago American Manufacturing, LLC, ruling in favor trademark licensees
whose licenses are rejected in bankruptcy by trademark owners. Under Sunbeam, rejection of a trademark
license by a trustee does not terminate the license rights.
The full impact of the Seventh Circuit's
Sunbeam decision is yet to be determined and many questions remain. However, because the Seventh Circuit's
opinion creates a split of authority with the Fourth Circuit's 1985 decision in Lubrizol Enterprises, Inc. v. Richmond
Metal Finishers, Inc. it may lead to a Supreme Court review. Significantly, the Seventh Circuit sided
with scholarly criticism of the Lubrizol decision and soundly rejected same, and Sunbeam is the first
court of appeals decision in 27 years to challenge Lubrizol's view of how rejection impacts an intellectual
property license. Accordingly, the Sunbeam decision has the potential to impact licensee rights in cases
across the country.
If you have questions, please feel free to contact Wiemelt Knechtel at 312-372-7664 or 602-910-4250
or by email at firstname.lastname@example.org or email@example.com.
Monday, July 9, 2012
U.S. Patent Office Issues Prometheus Examination Guidelines
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Tuesday, May 29, 2012
Wiemelt Knechtel again ranked among TOP TRADEMARK FIRMS in U.S.
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Wiemelt Knechtel was ranked among the "TOP TRADEMARK
FIRMS" in the U.S. in the May, 2012 issue of Intellectual Property Today, a monthly publication
focused on legal issues in patent, trademark and copyright law. Wiemelt Knechtel was also ranked among the "TOP PATENT
FIRMS" in the U.S. in the February 2012 and March 2010 issues of Intellectual Property Today. Wiemelt
Knechtel was also ranked among the "TOP TRADEMARK FIRMS" in the U.S. in the May, 2011, May
2010 and May, 2009 issues of Intellectual Property Today.