Legal Insight

Trademarks Can Help Protect Businesses

Mon, 04 Mar 2013 17:18:24 Z

It’s difficult to stop a competing business from using a name that is similar to that of your business, especially if that business is registered in another state. Each state operates its own business registration system, which is separate from all other states.

Registration is on a first-come, first-serve basis, and registering your business with your state does not automatically protect your business from a competing business using a similar name and selling similar products.

According to SDCL 47-1A-401.1, a corporate name shall be distinguishable upon the records of the office of the secretary of state from:

• The corporate name of a corporation incorporated or authorized to transact business in the state.

• A foreign or domestic corporation name which has been reserved with the South Dakota secretary of state.

• The fictitious name adopted by a foreign corporation authorized to transact business in the state because its real name is unavailable.

• The corporate name of a nonprofit incorporated or authorized to transact business in the state.

• The name of a limited liability company, limited liability partnership, limited partnership or limited liability limited partnership organized or authorized to transact business in the state.

Nothing contained in South Dakota law requires the secretary of state to search business registrations of any other state. One of the best ways to protect your business and prevent another business from using a similar name and selling similar products is to trademark your business name with the United States Patent and Trademark Office.

A trademark is a word, phrase, symbol or design, or a combination of words, phrases, symbols or designs, that identifies and distinguishes the source of the goods of one party from those of others. A service mark is the same as a trademark, except that it identifies and distinguishes the source of a service rather than a product.

Trademarks provide protection to the owner of the mark by ensuring the exclusive right to use the mark to identify goods or services. The owner can license someone else to use the mark. Trademark protection prevents competing businesses from usurping the goodwill of your business by using similar distinctive signs to market inferior or different products or services.

While the USPTO works to ensure that no other party receives a federal trademark for an identical or similar mark, the owner of a registration is responsible for bringing any legal action to prevent a party from using an infringing mark.

Although not required, many business owners enlist the services of a trademark attorney for legal advice regarding the use of their trademark, filing an application and the likelihood of success in the registration process.

To contact Alex, please click here.

Understanding the Fair Housing Act

Tue, 23 Oct 2012 17:30:01 Z

As residential vacancy rates continue to decline around the city of Sioux Falls, both Landlords and Tenants should acquaint themselves with the rules, limitations and protections afforded by the 1968 Fair Housing Act, as amended in 1988 (the “Act”). The Act bans discrimination in the housing market, including rental, sales and financing, based on disability, race, sex, national origin, religion, skin color or familiar status. The Act is intended to increase housing opportunities for those above named classes; however, individual citizens must come forward with concerns, file complaints and ultimately file suit if they believe their rights have been violated. As a result, a thorough understanding of the Act’s provisions will prevent costly missteps in the future.

The Act covers rentals, purchases and financing, but is most oftentimes encountered in rental transactions, but the Act applies in cases of sales and financing as well. The Act states that Landlords cannot take any of the following action based upon race, color, national origin, religion, sex, familial status or disability:

Refuse to rent housing;
Refuse to negotiate;
Make housing unavailable;
Deny a dwelling;
Establish different terms, conditions or privileges for rental of a dwelling;
Establish different housing services or facilities;
Falsely deny housing availability; or
Deny anyone access to or membership in a facility or service related to rental property.

The Act provides additional, special protections in cases of disability. A Landlord may not:

Refuse to allow you to make reasonable modifications to your dwelling or common use areas, at your expense, if necessary for the disabled person to use the housing; or
Refuse to make reasonable accommodations in rules, policies, practices or services if necessary for the disabled person to use the housing.

Furthermore, it is illegal for anyone to threaten, coerce, intimidate, or interfere with anyone exercising a fair housing right; or to advertise or make any statement that indicates a limitation or preference based upon race, color, national origin, religion, sex, familial status or disability. This prohibition applies to single-family and owner-occupied housing that is otherwise exempt from the Act.

It is important for Landlords and Tenants to read and understand the Act and its exemptions before charging anyone with wrong doing. Landlords should train employees and staff on the provisions of the Act and review rental policies and company guidelines to ensure compliance. Enforcement of the Act is administered by filing a complaint through the Department of Housing and Urban Development (“HUD”). HUD has the option of handling the complaint itself or can refer the case to the United States Attorney General. Or, if you have questions regarding the Act and its application, consult with your attorney.

For questions regarding the Fair Housing Act, contact Alex Halbach at (605) 335-4950 or visit his biography page.

Understanding the Fair Housing Act

Tue, 23 Oct 2012 17:30:01 Z

Refuse to rent housing;
Refuse to negotiate;
Make housing unavailable;
Deny a dwelling;
Establish different terms, conditions or privileges for rental of a dwelling;
Establish different housing services or facilities;
Falsely deny housing availability; or
Deny anyone access to or membership in a facility or service related to rental property.

The Act provides additional, special protections in cases of disability. A Landlord may not:

Refuse to allow you to make reasonable modifications to your dwelling or common use areas, at your expense, if necessary for the disabled person to use the housing; or
Refuse to make reasonable accommodations in rules, policies, practices or services if necessary for the disabled person to use the housing.

For questions regarding the Fair Housing Act, contact Alex Halbach at (605) 335-4950 or visit his biography page.

What's in a Name?

Mon, 30 Jul 2012 20:16:50 Z

As an entrepreneur, starting a business can be a challenging yet rewarding experience and choosing a catchy, easy-to-remember business name is a very important decision that should not be taken lightly.

What's in a Name?

Mon, 30 Jul 2012 20:16:50 Z

As an entrepreneur, starting a business can be a challenging yet rewarding experience and choosing a catchy, easy-to-remember business name is very important.

What's in a Name?

Mon, 30 Jul 2012 20:16:50 Z

As an entrepreneur, starting a business can be a challenging yet rewarding experience.

Many decisions must be made regarding the business, including what to call it. Choosing a name can be exciting but stressful and shouldn’t be taken lightly. It’s important to choose a name that grabs your customers’ attention, conveys information about the goods or services provided and lends credibility to the business.

Here are a few additional items business owners should consider when choosing a name:

• Uniqueness. One of the most important features of the business name should be uniqueness.

As the online marketplace continues to grow, it is important to consider how the business might market, promote and sell online, as well as the geographic growth potential.

In determining if your business name has been used in South Dakota, a search can be conducted on the South Dakota secretary of state’s website at www.sdsos.gov. If the business will be formed in South Dakota but will have a more regional or national presence, an Internet search, such as one conducted through Google.com will provide relevant information regarding the potential business name, including competitors and their products and services.

In South Dakota, if operating a business as a proprietorship and the name of the business does not include the last name of each owner, or if operating a business using anything other than the corporate name of the business, it is necessary to file a fictitious name statement – or “doing business as” – with the secretary of state.

• Consider an Internet domain name. Simple domain names, especially single word domain names, are becoming more and more difficult to find, making it important to strategize the coordination of the business name and domain name. Experts suggest choosing a domain name that captures the essence of your product or service and is easy to remember. If you can’t remember the domain name for the business, neither will its customers.

• Consider a name that can be trademarked. Registering a federal trademark on the Principal Register provides countless benefits, including public notice of your claim of ownership of the mark, the ability to bring an action concerning the mark in federal court, the right to use the federal registration symbol ® and a listing in the U.S. Patent and Trademark Office’s databases.

Trademarks and other intellectual property provide valuable protection to the business and the goodwill that business owners have worked to create. Additionally, trademarks are intangible assets that can increase the company’s value if the business is ever sold.

Choosing a catchy, easy-to-remember business name that easily coordinates with domain name registration and can be trademarked is an important decision and should not be taken lightly.

For more information, please contact Alex Halbach at alexh@cutlerlawfirm.com

What's in a Name?

Mon, 30 Jul 2012 20:16:50 Z

As an entrepreneur, starting a business can be a challenging yet rewarding experience.

Here are a few additional items business owners should consider when choosing a name:

• Uniqueness. One of the most important features of the business name should be uniqueness.

As the online marketplace continues to grow, it is important to consider how the business might market, promote and sell online, as well as the geographic growth potential.

Choosing a catchy, easy-to-remember business name that easily coordinates with domain name registration and can be trademarked is an important decision and should not be taken lightly.

For more information, please contact Alex Halbach at alexh@cutlerlawfirm.com

Sole Proprietors Beware

Tue, 24 Jan 2012 19:24:35 Z

Becoming a sole proprietor is simple and inexpensive, but beware of the pitfalls associated with this entity.

Sole Proprietors Beware

Tue, 24 Jan 2012 19:24:35 Z

Becoming a sole proprietor is simple and inexpensive, but beware of the pitfalls associated with this entity.

The America Invents Act

Thu, 01 Dec 2011 14:18:56 Z

Herein, we’ll summarize the America Invents Act, explaining the good, the bad, and the ugly.

The America Invents Act

Thu, 01 Dec 2011 14:18:56 Z

Herein, we’ll summarize the America Invents Act, explaining the good, the bad, and the ugly.

Think Your Patent has been Infringed?

Tue, 08 Nov 2011 15:43:23 Z

At Cutler & Donahoe, LLP, we know that you work long and hard to develop your products. And then you go through the rigorous process of patenting them so that you can receive the compensation you deserve for your work. But your efforts cannot stop there; you must enforce your patents to receive just compensation.

Here is some basic information that will help you to determine whether your patent has been infringed and what you should do if you believe that it has been infringed:

Types of patent infringement

Direct Infringement

A single actor infringes a patent. The single actor performs “each and every element” of the asserted claim.

Induced Infringement

Under an agency-like doctrine, a direct infringement includes all acts of a single actor and all those controlled by that same actor. In other words, the single actor controls others, who in conjunction with one another infringe a patent.

Indirect Infringement

Indirect infringement occurs when a party supplies a product that can only be used to create a patented product.

Take action now if your patent has been infringed

Doctrine of Laches

If you do not seek help immediately upon discovery of patent infringement, your claim may be barred by the doctrine of laches. The equitable defense of “laches” is based upon the premise that you “slept on your rights” and therefore aren’t entitled to recover compensation for any alleged patent infringement.

The “infringing” party may assert that it relied on your lack of action and is in a worse place because of your failure to act. In other words, they invested more time and money is their product because you didn’t object to the alleged infringement. Therefore, you are barred from being awarded damages that you might have received had you brought your case in a timely manner.

The Statute of Limitations

There is a specific time period set by law in which any legal claim must be filed or be forever barred. This is called the statute of limitation. If you fail to bring your claim within the applicable statute of limitation, you will never be able to file your claim.

If you allow the statute of limitations to pass before filing your claim, you will receive no compensation for any patent infringement.

Where to get help if your patent has been infringed or if you want to be sure that your work is not an infringement

If your patent has been infringed or if you have an invention and want to be sure that you are not infringing someone else’s patent, hire an attorney who focuses his or her practice on patent law. Cutler & Donahoe, LLP’s attorney Jared R. Clark focuses his practice on representing people just like you. Not only do we help you to obtain your patents for your inventions, we help you protect your patents and get the compensation that you deserve.

If you have questions about patents and patent infringement or need help, call our offices now at 605-335-4950 or email us.

Think Your Patent has been Infringed

Tue, 08 Nov 2011 15:43:23 Z

Here is some basic information that will help you to determine whether your patent has been infringed and what you should do if you believe that it has been infringed:

Types of patent infringement

Direct Infringement

A single actor infringes a patent. The single actor performs “each and every element” of the asserted claim.

Induced Infringement

Indirect Infringement

Indirect infringement occurs when a party supplies a product that can only be used to create a patented product.

Why you need to take action now if your patent has been infringed

Doctrine of Laches

The Statute of Limitations

If you allow the statute of limitations to pass before filing your claim, you will receive no compensation for any patent infringement.

Where to get help if your patent has been infringed or if you want to be sure that your work is not an infringement

If your patent has been infringed or if you have an invention and want to be sure that you are not infringing someone else’s patent, hire an attorney who focuses his or her practice on patent law. Cutler & Donahoe’s attorney Jared R. Clark focuses his practice on representing people just like you. Not only do we help you to obtain your patents for your inventions, we help you protect your patents and get the compensation that you deserve.

If you have questions about patents and patent infringement or need help, call our offices now at 605-335-4950 or email us.

Inventor's Notebook - October 2011

Tue, 08 Nov 2011 15:20:00 Z

From the Oct. 19 edition of the Sioux Falls Business Journal

Why get a patent? A US patent enables the holder to prevent others from copying their idea. Technically, a patent prevents making, using, selling, offering for sale or importing of an invention. If you are in a situation where you or your business has a product you can’t have copied, then patent protection may be for you. In addition to putting a stop to the copying your invention, a patent can be useful for attracting investors, licensing your ideas for royalties, or selling your idea. Contact a patent attorney with any other questions you might have—they are best equipped to provide sound advice.

The United States Patent and Trademark Office has issued the following United States Patents to South Dakota Inventors from August 30, 2011 to October 4, 2011.

1. US Patent No. 8,007,010, issued August 30, 2011 with the title “Hydraulic line attachment device and method”

Inventors: Joseph W. Langenfeld, Onawa, IA; Matthew N. Westendorf, Onawa, IA; Neal W. Westendorf, Dakota Dunes, SD; James Curtis Stender, Schleswig, IA; Mitch Gibler, Onawa, IA

Assigned: Westendorf Manufacturing Co., Inc., Onawa, IA

Summary: Mr. Westendorf and his co-inventor have developed a device for attaching multiple hydraulic lines together at the same time, using a cam mechanism to tighten several hydraulic connectors together.

2. US Patent No. 8,018,310, issued September 13, 2011 with the title “Inductor with thermally stable resistance”

Inventors: Thomas T. Hansen, Yankton, SD; Jerome J. Hoffman, Yankton, SD; Timothy Shafer, Yankton, SD; Nicholas J. Schade, Yankton, SD; David Lange, Columbus, NE; Clark Smith, Columbus, NE; Rod Brune, Columbus, NE

Assigned: Vishay Dale Electronics, Inc., Des Moines, IA

Summary: An inductor is an electrical component used to store energy in a magnetic field. The inventors have developed an inductor designed to withstand a greater range of temperatures than previously developed inductors. Their inductor also features fewer parts than other inductors, making it suitable for use in compact spaces.

3. US Patent No. 8,016,345, issued September 13, 2011 with the title “Operator cab having inwardly folding access door”

Inventors: Aaron Goddard, Germantown, WI; Marvin Joray, Wentworth, SD; Robert Claas, Saukville, WI; Curtiss M. Lee, Arlington, SD; Anthony Saiia, Mequon, WI

Assigned: Gehl Company, West Bend, WI

Summary: The inventors have developed an access door for the front of a skid steer vehicle. The access door folds inward toward the operator cab of the skid steer, and locks into a storage position so that the skid steer can be operated without the front access door impeding the operators view.

4. US Patent No. 8,020,734, issued September 20, 2011 with the title “Hand washing timing system”

Inventors: Robert H. Vandendries, Sioux Falls, SD; Roxanne L. Vandendries, Sioux Falls, SD

Assigned: None reported

Summary: The inventors have developed a hand washing timing system that turns on a light to illuminate a user’s hands when they actuate an automatic faucet.

5. US Patent No. 8,024,884, issued September 27, 2011 with the title “Electronic device mount system for weapons”

Inventor: Larry Holmberg, Harrisburg, SD

Assigned: None reported

Summary: Mr. Holmberg has invented an electronic device mounting system that can be used to attach electronic devices, such as rangefinders and video cameras, to weapons.

6. US Patent No. 8,029,785, issued October 4, 2011 with the title “Therapeutic antibodies for treatment and prophylaxis of transmittable viral diseases”

Inventors: James M. Schiltz, Sisseton, SD; Marshall K. Brinton, Spicer, MN; James K. Petell, Grand Forks, ND; David S. Bradley, Grand Forks, ND

Assigned: Avianax, LLC, Grand Forks, ND

Summary: Mr. Schiltz and his co-inventors have developed a treatment and preventative for various viral transmittable diseases using avian antibodies to the particular disease to be treated or prevented.

7. US Patent No. 8,029,493, issued October 4, 2011 with the title “Method for aspirating a space within a body”

Inventors: Wilson T. Asfora, Sioux Falls, SD

Assigned: Medtronic PS Medical, Inc., Goleta, CA

Summary: Dr. Asfora has invented a method for removing fluid from a space within the body of a patient. The method includes using an evacuation port designed to receive a specially designed instrument for dispensing medication or removing materials from the space in the body.

8. US Patent No. 8,028,620, issued October 4, 2011 with the title “System for automated application of inoculants onto forage materials and measurement of moisture for optimum application”

Inventors: Steve Freeman, Windsor, CO; Wes Byers, Loveland, CO; Michael Van Lith, Harrisburg, SD; Dean Nordhues, Kearney, NE; Chad Greiman, Wellington, CO

Assigned: Animal Health International, Inc., Greeley, CO

Summary: Mr. Van Lith and his co-inventors have invented a system that measures, in real time, the humidity and moisture content of forage material, and dispenses an inoculant product on the material when it is needed.

Data Source: United States Patent and Trademark Office. For more information on any of the patents listed in this column, visit http://www.uspto.gov and select “search patents.”

Inventor's Notebook - Oct. 19

Tue, 08 Nov 2011 15:20:00 Z

From the Oct. 19 edition of the Sioux Falls Business Journal

The United States Patent and Trademark Office has issued the following United States Patents to South Dakota Inventors from August 30, 2011 to October 4, 2011.

1. US Patent No. 8,007,010, issued August 30, 2011 with the title “Hydraulic line attachment device and method”

Inventors: Joseph W. Langenfeld, Onawa, IA; Matthew N. Westendorf, Onawa, IA; Neal W. Westendorf, Dakota Dunes, SD; James Curtis Stender, Schleswig, IA; Mitch Gibler, Onawa, IA

Assigned: Westendorf Manufacturing Co., Inc., Onawa, IA

2. US Patent No. 8,018,310, issued September 13, 2011 with the title “Inductor with thermally stable resistance”

Assigned: Vishay Dale Electronics, Inc., Des Moines, IA

3. US Patent No. 8,016,345, issued September 13, 2011 with the title “Operator cab having inwardly folding access door”

Inventors: Aaron Goddard, Germantown, WI; Marvin Joray, Wentworth, SD; Robert Claas, Saukville, WI; Curtiss M. Lee, Arlington, SD; Anthony Saiia, Mequon, WI

Assigned: Gehl Company, West Bend, WI

4. US Patent No. 8,020,734, issued September 20, 2011 with the title “Hand washing timing system”

Inventors: Robert H. Vandendries, Sioux Falls, SD; Roxanne L. Vandendries, Sioux Falls, SD

Assigned: None reported

Summary: The inventors have developed a hand washing timing system that turns on a light to illuminate a user’s hands when they actuate an automatic faucet.

5. US Patent No. 8,024,884, issued September 27, 2011 with the title “Electronic device mount system for weapons”

Inventor: Larry Holmberg, Harrisburg, SD

Assigned: None reported

Summary: Mr. Holmberg has invented an electronic device mounting system that can be used to attach electronic devices, such as rangefinders and video cameras, to weapons.

6. US Patent No. 8,029,785, issued October 4, 2011 with the title “Therapeutic antibodies for treatment and prophylaxis of transmittable viral diseases”

Inventors: James M. Schiltz, Sisseton, SD; Marshall K. Brinton, Spicer, MN; James K. Petell, Grand Forks, ND; David S. Bradley, Grand Forks, ND

Assigned: Avianax, LLC, Grand Forks, ND

7. US Patent No. 8,029,493, issued October 4, 2011 with the title “Method for aspirating a space within a body”

Inventors: Wilson T. Asfora, Sioux Falls, SD

Assigned: Medtronic PS Medical, Inc., Goleta, CA

8. US Patent No. 8,028,620, issued October 4, 2011 with the title “System for automated application of inoculants onto forage materials and measurement of moisture for optimum application”

Inventors: Steve Freeman, Windsor, CO; Wes Byers, Loveland, CO; Michael Van Lith, Harrisburg, SD; Dean Nordhues, Kearney, NE; Chad Greiman, Wellington, CO

Assigned: Animal Health International, Inc., Greeley, CO

Data Source: United States Patent and Trademark Office. For more information on any of the patents listed in this column, visit http://www.uspto.gov and select “search patents.”

Patent Hot Topics

Fri, 14 Oct 2011 21:46:48 Z

As technology is dynamic, changing exponentially, patent law has exploded into the headlines.

Patent Hot Topics

Fri, 14 Oct 2011 21:46:48 Z

As technology is dynamic, changing exponentially, patent law has exploded into the headlines. Below, we briefly highlight current patent hot topics. If you have questions, concerns, or need patent law and intellectual property advice, be sure to call (605-335-4950) or email our office for a confidential consultation.

Induced Infringement U.S. Supreme Court decision May 31, 2011

The Supreme Court declares, “(1) Induced infringement under 35 U.S.C. §271(b) requires knowledge that the induced acts constitute patent infringement; and (2) that deliberate indifference to a known risk that a patent exists does not satisfy the knowledge required by Section 271(b).”

“Actual knowledge” remains the legal standard for induced infringement cases.

Quality Versus Quantity

“HP is seeking broad patents that relate directly to its main businesses, avoiding the costs of filing patents that may relate to more specific processes....HP seems to be keeping secret certain innovations, especially in its services division, rather than filing patents,” Kevin Light, a deputy general counsel and vice president for intellectual property at Hewlett-Packard as quoted in the Wall Street Journal.”

Finding a uniquely qualified patent attorney is essential to filing a quality patent.

Patent Marking Suits

In patent marking suits, third parties bring suit against companies who inappropriately mark protects as patented when they have not been afforded patent protection or the patent protection has expired. Third parties have interest because they are entitled to an equal share (with the U.S. government) in all fines levied.

Banks are the focus of patent marking suits in 2011. Earlier this year, Main Hastings LLC of Texas sued Citigroup, J.P. Morgan Chase, HSBC USA in District Court, accusing each of having expired patents (regarding telephone technology) listed on their website.

In 2009, it was ruled that each patent marking offense is punishable by a fine of up to $500.

It will be interesting to see how the court rules in this case and how it measures the number of offenses by offending website.

Ashton Kutcher Replaces Charlie Sheen

2011 headlines have been filled with news of Charlie Sheen and, now, news of his replacement on the popular television series, Two and a Half Men, Ashton Kutcher.

What in the world does this have to do with patent law?

Charlie Sheen has his own patent! Charlie Sheen (also known as Carlos Irwin Estevez) and Rodger D. Thomason hold patent number US 6,283,658 with an issue date of September 4, 2001.

Where to get good advice and patent law services

We are closely watching current issues in patent law for the benefit of our clients. If your patent has been infringed or if you have an innovative invention that you want to protect, hire an attorney who focuses his or her practice on patent law.

At Cutler & Donahoe, LLP, we focus our practice on representing people just like you. Not only do we help you to obtain patents for your inventions, we help you protect your patents and get the compensation that you deserve.

If you have questions about patents and patent hot topics, call our offices at 605-335-4950 or email us at jared@cutlerlawfirm.com.

The America Invents Act

Fri, 14 Oct 2011 14:24:51 Z

Herein, we’ll summarize the America Invents Act, explaining the good, the bad, and the ugly.

The America Invents Act

Fri, 14 Oct 2011 14:24:51 Z

Herein, we’ll summarize the America Invents Act, explaining the good, the bad, and the ugly.