Cost-Effective, Proactive IP Strategies for Building &

Sustaining Your Business

About AppFolio SecureDocs

AppFolio SecureDocs is a virtual data room for sharing and

storing sensitive documents both internally and with outside

parties.

AppFolio, Inc. Company Basics:

• Founded by the team that created and launched GoToMyPC and

GoToMeeting

• Backed by leading technology companies and investors

• Web-based business software for financial and legal professionals

About Loza & Loza

• Loza & Loza is an Intellectual Property (IP) law boutique located in California serving clients worldwide in developing strong IP portfolios, protecting their ideas, trademarks, and slogans, and providing logical, straightforward solutions for all IP issues.

• Attorneys specialize in the following areas:– Patents

– Trademarks

– Copyrights

– Internet Law

– Technology Counseling & Licensing

– IP Litigation

– Trade Secrets

– eBay Disputes

About Tina Loza

• Tina Loza is the Founder and Managing Partner of Loza & Loza, LLP and is a registered patent attorney admitted to practice law in California. She also acts as Trademark Of Counsel for Manhattan Advertising & Media Law and Buynak, Fauver, Archbald & Spray.

• She has experience in all areas of IP law with a special interest in trademark prosecution and domain name disputes.

• Tina is a member of the American Intellectual Property Law Association and the President-Elect for the National Association of Women Business Owners – California.

“But he that filches from me my good name Robs me of that which not enriches him,

And makes me poor indeed.” - W. Shakespeare, Othello, Act III, Scene iii, Line

159.

Why should you care about Intellectual Property?

• Every contract and transaction may expose a

business to IP liability. You could unknowingly be

an infringer and the first warning will be a “cease

and desist letter” or service of a lawsuit.

• “The entire U.S. economy relies on some form of

IP, because virtually every industry either produces

it or uses it.”

Intellectual Property and the U.S. Economy.

• “IP intensive industries accounted for about 34.8%

of U.S. gross domestic product in 2010.” Id.

• “The estimated Manufacturer’s Suggested Retail

Price (MSRP) for all FY 2011 IPR seizures is $1.1

billion.” 2011 Seizure Statistics.

Why should you care? Continued.

• Proactively protecting your IP, taking

preventative measures, and policing

competitors, allows you to focus on being

profitable rather than dealing with costly legal

hassles.

• Having a strong, IP portfolio is an asset of

your business. IP can be assigned,

transferred, or sold.

• Valuable, protected IP assets gives you a

competitive edge that sets you apart from

competitors.

Poll #1

• Have you ever dealt with an infringement issue?– Yes, it was a huge problem for my business– Yes, but it was a minor issue– No, but I am very worried about it– No, but I am not too worried about it

An IP Overview

Patent Primer• What is an invention?

– A new, useful, non-obvious idea for a device, structure, process, machinery, business method, etc.

• What is a patent?

– The right to exclude others from making, using, importing, or selling within the United States the invention as defined in the claims of the patent for 20 years from the filing of the application.

• What are the different kinds of patent applications? – Utility, Design, and Plant Patents

– Provisional v. Non-provisonal

• What are “Claims”?

– Defines specifically the subject matter which the inventor is trying to protect.

• When should you file a patent application?

– No more than one year after you have publicly used or sold the invention. (“One Year Bar”)

– First to Invent v. First to File – Law changes March 2013

• Where can you research patents? www.google.com/patents

Poll #2

• Are all of your company inventions patented?– Yes– All of the important ones– No, I am in the process– No, I have not gotten to it

Patent Primer

Using your Patent as a Sword

• How to Police?:– Check out competitor’s websites.

– eBay, Google, and Yahoo searches

– Follow up on leads about products that customers say are “just like yours” and are being sold for less.

– Use the accounting provision in licensing agreements to review the books of licensees – accounting “errors” are common.

• How to use the cease and desist letter?:– It is an opportunity to stop infringing activity without initiating

litigation.

– It is an opportunity to create a licensing arrangement.

– It is usually more effective when sent by an attorney.

Poll #3

• How do you police your patent?– Keep an eye on competitors– Search engines– I have not policed it– Other

Shielding Your Business Against Patent Infringement Claims

• As a competitor, do not fear the cease & desist letter, perform due diligence, and be smart about “knocking off” goods. – Obtain an opinion letter from counsel.– Research prior art that you are aware of (on-line) and in

trade publications and keep it.– Were they selling before the one year bar? See The

Wayback Machine, http://www.archive.org/index.php. – Are they using proper notice? Check original boxes of

competitors – no patent number, no notice, no damages until there was notice.

Trademark PrimerTM versus ®: TM indicates use in commerce of a good, SM indicates use in commerce of a service, ® indicates that the mark has been registered before the United States Patent and Trademark Office (USPTO).

• What is the function of trademarks?

– To identify and distinguish;

– To show that all goods/services with the mark originate from one source; and

– To provide quality assurance and consistency.

• Do you have to register your mark?

– No. You just have to use your mark in commerce to establish rights.

• What are the benefits of Federal Trademark Registration?

– Constructive notice nationwide of the trademark owner's claim;

– Evidence of ownership;

– Federal court jurisdiction;

– Registration can be used as a basis for obtaining registration in foreign countries; and

– Registration may be filed with U.S. Customs Service to prevent importation of infringing foreign goods.

• What is trademark infringement? Use in commerce of the same or a similar mark in a way that it is likely to cause confusion, or to cause mistake or to deceive with a trademark owner’s mark.

Building Your Legend . . . Build Your Brand

According to the USPTO Levi Strauss & Co

is the only manufacturer entitled to use the

double curved “arcuate” design on a patch

pocket. Regardless of what color of thread

is used. Or whether it is a fabric insert,

piping, a pocket flap, or even printed on the

material. The arcuate is our design

trademark. And we will continue to do

everything necessary to protect it. If you

want to apply decorative stitching to a back

pocket, more power to you. But please, just

be sure you choose a different design.

It’s More than the ® - Creative Enforcement out of Court• Confusingly similar trademarks used on/with

confusingly similar goods/services can be (mostly) prevented without filing suit in Federal Court.– Oppositions: Filed before the TTAB

• Prevents others from obtaining a confusingly similar registered mark before the PTO.

• Does not prevent use in commerce but a settlement usually leads to limiting the other parties’ use.

– Cancellations: Filed before the TTAB• Cancels another parties’ confusingly similar registered mark if

you prove, for example, prior use, descriptiveness, non-use/ abandonment, etc.

It’s More than the ® -Stopping Infringers in their Tracks

• eBay VeRO Program:

– “eBay is committed to protecting the intellectual property rights of third parties and to providing its users with a safe place to trade. eBay created the Verified Rights Owner (VeRO) Program so that intellectual property owners could easily report listings that infringe their rights. It is in eBay’s interest to ensure that infringing items are removed from the site, as they erode buyer and seller trust.”

– You can use the VeRO program to remove infringing listings. The infringer can only get the listings back up with your express consent.

• United States Customs:

– Trademarks can be registered with customs and infringing shipments can be stopped at the border.

– Customs registration is a very affordable option with goods results.

• $190/mark

• If the shipment is seized, the importer is effectively “blacklisted” because these seizures are put into an database that CBP can access at any time. The importer will suffer fines of the MSRP value of the goods as if they were authentic less mitigating factors if the importer doesn’t fight it. On subsequent seizures, there is no mitigating factor considered, so the importer is fined the MSRP value of the goods.

Picture of seized counterfeit airbags.

It’s More than the ® -Don’t Forget the Domain Names!

• Before you file your trademark application, obtain all TLDs for your mark and confusing variations thereof. – For example, if your mark is MOONBUCKS, you should register the

following: • .com, .biz, .net, .mobi, .tv., .tel, .us, .info, and .org • MOONBUX.COM, MOONBUKS.COM, MOONBUCK.COM, etc.

– This is an affordable and easy way to carve out IP, create an valuable asset, and prevent legal hassles in the future.

• Domain Name Dispute Resolution: This is the way to get “your” domain name back. – Affordable – May be easier and cheaper than buying out the infringer. – Fast – Only takes two months from Complaint to Panel Decision.– Straightforward – Need to show rights to mark and bad faith when

domain name was purchased.

Poll #4

• Have you bought domain names to protect your brand?– Yes, I bought them all– Yes, I bought the domain names I thought most

important– Yes, but just a few– No, aside from my main domain name I have not

bought any

Copyright Primer• What is a Copyright?

– It is an original work of authorship (literary, dramatic, musical, and artistic works, such as poetry, novels, movies and songs, but it also protects blueprints, technical drawings, product brochures, advertising, computer software, and architecture) fixed in a tangible medium of expression.

– Your work is under copyright protection the moment it is created and fixed in a tangible form that is perceptible either directly or with the aid of a machine or device.

• So, why register a copyright?

– Public record & certificate of registration.

– Statutory damages and attorney's fees in successful litigation if registered with the first 3 months after the first date of publication.

– If registration occurs within 5 years of publication, it is considered prima facie evidence in a court of law.

– Can be filed with customs.

• How do you register a copyright?

– Submit an application, $35, a copy of the work at www.copyright.gov.

Cost-Effective Copyright Enforcement: Knock It Off

• For example, product packaging is registerable and easily

knocked off abroad. Solution?

– File application, get registration within 2 months, and you can

stop infringers.• eBay: http://pages.ebay.com/help/tp/vero-rights-owner.html

• Registering with U.S. Customs: http://www.ice.gov/pi/iprctr/index.htm

• With registration, a cease and desist letter can demand an accounting

of infringing goods sold and profits.

• Similar approaches can be taken with jewelry, furniture

designs, after market auto parts, etc.

Product Packaging:An Example

Contact Us

AppFolio SecureDocs50 Castilian DriveGoleta, CA 93117Phone: (866) 700-7975info@securedocs.comsales@securedocs.comwww.securedocs.com@SecureDocsVDR

Loza & Loza305 N. Second Ave. #127Upland, CA 91786-6064Phone: (877) 406-5164tina@lozaip.comwww.lozaip.com

Thank You!

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