We offer cost-effective and comprehensive solutions for all of your patent, trademark, trade dress, domain name registration, copyright and entertainment law needs. This includes cost effective flat fee programs for patent, trademark & copyright filings, as well as similar programs to fit your legal budget.
PATENT PROTECTION SERVICES
A United States Patent offers a patentee a government granted limited monopoly to restrict others from making, using, selling or offering for sale certain processes, apparatus, methods or compositions of matter. In order to apply for a United States patent, the application (which can be a company, a single inventor, or a collection of inventors) must prepare a detailed written description of the invention which will allow someone skilled in that particular art to recreate the invention without undue experimentation. We help guide you through the steps from realizing your idea, to searching to see if any third party has sought a patent for that idea, to writing a requisite patent application capable of leading to an issued patent. We likewise can assist in monetizing your patent through licensing or enforcement.
Patentability Opinions & Clearance Searches
Our team of Miami registered patent attorneys can assist you in performing detailed prior art searches through either term or classification searches in a variety of technical disciplines including chemical compositions, biotechnology, medical devices, mechanical inventions, consumer products, computer systems and business methods.
Once the detailed prior art search is completed we will prepare a patent analysis including comprehensive comparison of the prior art with your proposed invention. This provides an indicator of whether your technology is ripe for patenting or could present a challenge during review by the United States Patent & Trademark Office (“USPTO”).
A prior art search is not per se required in order to file a non-provisional utility patent application. However, it provides two benefits: (i) greater clarity of your invention and how it should be claimed when drafted by one of our patent attorneys, and (ii) a greater targeted collection of relevant references for the examiners at the USPTO to review during review of your application (this creating a stronger and more enforceable patent).
Patent Drafting & Prosecution
Got an idea? Got an improvement for an existing product? We can help guide you through the maze from realizing your idea to preparing a legally sufficient written and detailed patent application which sufficiently meets all of the filing requirements as set by the USPTO.
You will meet one-on-one with a Miami patent attorney to review your invention, how it works, and how to best propose the idea for patent protection before the USPTO. We will also assist in preparing formal drawings for submission and review by the USPTO in addition to a written specification of that invention. Our team of registered patent attorneys are always available to answer your questions and fulfill your goals.
We take care of it all. We help create start-up technology companies, assign your patent rights to your new start-up company, and prepare all of the necessary paperwork required by the patent office. Put simply, we make the process easy and transparent.
Patent (non) Infringement Opinions
After a launch of a consumer product, medical device, mechanical invention or a computer system, it may be important for you to determine whether your technology may infringe a third-party competitor’s issued patent rights. Our team of Miami patent lawyers can help prepare a freedom-to-operate opinion to identify whether such offering may infringe. This includes a two part comprehensive process. First, we review your offering and then perform a detail search of issued United States patents. Second, we compare those identified patents with the salient components of our invention to determine if there is any risk. Often, this second step will include a written opinion for purposes of defending against a future allegation of willful infringement. Freedom-to-operate opinions are one of the most valuable legal documents a technology company can possess.
We are often able to provide freedom-to-operate and related patent (non) infringement opinions at a fixed or semi-fixed cost – once the universe of patent references are known.
Patent (In)validity Opinions
Often, a consumer product developer, medical device company, manufacturer or seller of technology products may discover an issued patent (or series of issued patents) that may read upon their products. However, your company may believe that this patent should not have been granted because you and/or a third party had made, sold or offered for sale the technology well before the application which gave rise to that patent was filed before the USPTO.
This scenario may warrant a patent (in)validity opinion to be prepared. In this scenario, we will often again search USPTO for prior filed and/or issued patents. Once identified, we will review your evidence of prior use in addition to these patents and determine the potential validity of the issued patents.
Patent (in)validity opinions are often important for a patent holder, who has later discovered a patent reference that was unknown at the time of filing and prosecuting a patent application. This also may warrant an opinion, as well as related investigation.
Patent Licensing & Enforcement
Our team of Miami patent attorneys not only assists in the registration of your patented ideas, but also can help license, monetize and enforce a company or inventor’s issued patent rights.
Miami patent attorney Robert H. Thornburg has assisted numerous technology ventures with comprehensive and complex patent licenses to help strength their intellectual property portfolio and to allow for an added income stream. Conversely, he has helped in acquiring licensed rights for technology companies from existing intellectual property holders. This has included intellectual property escrow agreements, consulting agreements and related transactions.
Our licensing strategies offer our clients the ability create thorough, long-lasting and detailed rights in patents and other forms of intellectual property.
TRADEMARK PROTECTION SERVICES
Trademarks and service marks help protect your business’ brand name, logo, or slogan. Moreover, trademarks help identify the source of your goods and services over and above your competitors. As our economy becomes more global and interdependent on e-commerce and internet transactions both trademarks and service marks will continue to grow in value and importance.
Trademark Clearance Searching:
Registration before the United State Trademark Office your brand name, logo and/or slogan may provide a key competitive edge. Often, it is advised and advantageous to determine whether your trademark or service mark is available in the United States or in other countries that you desire to offer your goods or services. Prior to investing time, effort and money into a particular name or logo, a trademark clearance search performed by one of our Miami patent lawyers is prudent and well-advised in many circumstances.
A simple trademark search by our trademark search team may help save thousands of dollars prior to labeling your goods with a proposed new name or logo. Often our trademark attorneys can perform a search in just a few hours from your first call. Moreover, our trademark law firm is experienced and well-versed in performing detailed, comprehensive and exhaustive searches.
Apart from registration clearance, an initial search may help prevent the risk down the road of an allegation of trademark infringement by a currently unknown trademark owner.
Trademark Preparation & Filing:
Registration of a trademark or service mark for your brand name, slogan or logo represents one of the best values in the field of intellectual property law. However, registration of a trademark does require a level of skill in determining the proper identification / description of the goods/services, selection of the right classifications, and providing proof to the Federal government of your use of the mark in commerce. We are here to help and guide you through this process.
Our Miami trademark law firm has three practitioners all licensed to practice before the United States Patent and Trademark office. Moreover, our experienced team has prepared, filed, and sought registration of hundreds of trademark applications. We understand the Trademark Office’s practices inside and out and know how to make the right moves to help progress from filing to registration. Moreover, we can often do this type of work in a cost effective and flat fee basis.
International Trademarks & Madrid Filings:
We maintain a comprehensive network of foreign trademark associates throughout Europe, South America, Central America and the Caribbean to help file and register international trademarks. Our trademark law firm likewise has experience with filing international trademark applications through the Madrid Filing system offered by the World Intellectual Property Association. Therefore, our Miami Trademark Attorneys can assist you in not only securing trademark rights in the United States, but also throughout Europe and Latin America.
In addition to securing these rights, our team of paralegals help assist with management and oversight of your International trademark portfolios. By offering global portfolio management of your trademarks, this ensures a comprehensive and value based asset for your business to help ensure growth and stability.
Trademark Licensing & Acquisition:
Our trademark attorneys have a wide breadth of experience in not only registering numerous trademarks, but also assisting clients in transactions to help license, monetize and/or acquire trademark portfolios. Our comprehensive trademark solutions include help with drafting, preparing and negotiating complex trademark licenses that ensure proper quality control provisions are included to technology transfer is effective and enforceable. Moreover, we help with performing due diligence and audits of intellectual property assets as part of any sale or acquisition of trademark portfolios.
Detailed, comprehensive and well written trademark agreements can have a huge effect on your business. Don’t go it alone and don’t try to use downloaded forms from the Internet that are often not applicable or relevant to your transaction. Should you desire to create business transactions that ensure proper rights and responsibilities, timely reporting of sales and income, and detailed obligations for reported payments – contact us today.
COPYRIGHT PROTECTION SERVICES
A copyright is the set of exclusive rights granted to the author or claimant of an original work (such as a work of art), including the right to copy, distribute and adapt the work. A copyright lasts for a certain period of time, after which the work is said to enter the public domain.
Our team of Miami copyright attorneys has training, experience and acumen to properly and appropriately prepare copyright applications and attain copyright registrations for sculptures, visual arts, film, writings and other related forms of tangible expression. We also assist software and computer developers with protecting their computer source code through copyright.
In addition to copyright registrations, we help with enforcing copyright registrations in Federal Court as well as defending claims of copyright infringement. Alternatively, we help license copyright registrations – including assistance with works for hire, or transfer through consulting and/or employment agreements.
DOMAIN NAME DISPUTE RESOLUTION
In addition to more traditional trademark enforcement and litigation services, our attorneys are also capable of assisting in domain name dispute resolution – when a third-party has begun to use your trademarked name in their Internet web address. We have the capability of bring internet domain name arbitration proceedings before the World Intellectual Property Organization (WIPO) to transfer these infringing web addresses to you. These include scenarios where the owner of the infringing domain name resides or is located outside of the United States.
We also help defend against arbitration proceedings in which a competitor has brought a domain name dispute against your company or website.
Because of our experience in this area, we are typically able to offer domain name dispute services on a fixed or semi-fixed basis
ENTERTAINMENT LAW SERVICES
Our Miami Trademark Attorneys also assist musicians, artists, film makers, actors and producers address cutting-edge entertainment law issues. We help negotiate services agreements, prepare copyright ownership agreements, work for hire agreements and other related contracts. We even help with name changes for artists.
We are passionate about protecting artists and musicians rights, and proudly serve on the Creative Industries Committee of the Greater Miami Chamber of Commerce. We have helped many artists and musicians in South Florida register their works of art, protect new ideas, and help monetize their creativity.
IP LITIGATION SERVICES
Cease and Desist Letters:
In today’s competitive business climate, a patent or trademark owner is often required to enforce its registration and/or rights against a competitor, knock-off, copy-cat and/or infringer. Many times, this can be solved by having one of our Miami IP Attorneys draft, prepare and serve a well articulated cease and desist letter. These letters provide notice to the infringer to conform their conduct and to stop with their illegal conduct.
Likewise, many times a manufacturer, distributor or vendor may receive a cease and desist letter from a intellectual owner regarding a belief of infringement or unfair competition. Our intellectual property law firm can help. We assist clients accused of infringement with responding to such allegations, contacting opposing counsel who authored the notice letter, and negotiating a resolution. Often these cease and desist letters are based upon misperception or misinformation. Regardless, it is imperative that a timely responsive is prepared, and your rights maintained. Ignoring these letters may result in costly and unnecessary litigation. Many times, a phone call or a simply response by one of our Miami IP lawyers can resolve many of these issues.
Trademark Enforcement & Litigation:
Often a cease and desist letter goes unanswered, is ineffective and in some instances unwarranted. In these three scenarios a trademark owner may be forced to enforce its rights through state or Federal litigation. Our law firm is experienced and prepared to guide you through the maze and labyrinth of litigation. When trademark and trade dress disputes arise, it is important for you to have a seasoned, experienced and skilled trademark litigation attorney work to advocate for your rights.
Our team has handled over fifty complex trademark disputes for some of Florida and Latin America’s most valuable trademark portfolios. Moreover, we have litigated these cases in not only Florida, but in Federal Courts throughout the United States, and through international arbitration.
We have taken hundreds of complex depositions regarding trademark matters and participated in hearings before Federal judges. We likewise have experience in drafting and preparing trademark enforcement complaints and motions in these trademark disputes. We have had success after these filings and motion practice in negotiating advantageous settlement solutions on behalf of our clients to help receive the relief and results that they deserve.
Miami trademark attorney Robert H. Thornburg has been tapped on multiple occasions to serve as a trademark expert in complex trademark disputes throughout the country.
Patent Enforcement & Litigation:
It is often necessary to enforce your patent rights against a competitor. Just as with trademark enforcement, patent litigation requires a patent holder to file suit in Federal Court against the competitor for infringement. We provide the requisite pre-filing investigation to determine whether a good faith basis for a patent infringement may exist. Once determined that at least one independent claim of your patent may be infringed, our team of patent litigation attorneys will prepare and create an appropriate complaint for patent infringement. We will then help serve the accused infringement with process and then proceed with litigation on the merits.
Our experience patent litigation team will prepare all necessary motions, conduct thorough technical depositions, prepare and defend your depositions, and attend hearings before the Federal Judge. This includes working with technical experts which will opine as to the issue of whether infringement has occurred, and counseling clients as to the scope of potential damages.
Our team has handled some of the most noteworthy and largest patent infringement disputes in Florida. Likewise, we have helped defend allegations and claims of patent infringement in Federal Courts throughout the country. We are proud of our capabilities to offer our patent infringement services for a wide variety of technology ventures for both Florida and Latin American based companies.
Unfair Competition & Dilution:
In scenarios where a trademark holder has not registered a well known and source identifying mark, it may be possible to bring an unfair competition claim under the Lanham Act. We help prepare, file, enforce as well as defend unfair competition claims in both state and Federal Court. Similar to trademark enforcement proceedings, our team of trademark attorneys will help to prepare motions and other court filings for purposes of enforcing and defending claims of unfair competition.
In addition, in scenarios well a well known and famous mark is used for an unrelated category of goods or services – a trademark dilution claim may be brought as to the issue of tarnishment. Our team of trademark lawyers likewise has experience in defending and litigating these types of claims under both the Federal and Florida State Dilution Acts.
LOCAL COUNSEL REPRESENTATION
Miami Trademark Attorney Robert H. Thornburg has served as local counsel in both the Southern and Middle Districts of Florida to numerous law firms and attorneys not licensed in the state of Florida. Our trademark law firm is well versed and experienced with the intricacies of the local rules of both districts. Moreover, we have experience in hearings and motion practice before many of the judges throughout Central and South Florida.
We enjoy the opportunity to co-counsel cases with out of state practitioners. Moreover, we aren’t scared or intimidated to go to court and argue complex motions, take detailed depositions, or help organize cases for litigants outside our state.
With over eight years of litigation experience in Florida and after handling over fifty complex intellectual property law suits in both state of Federal courts, I would be happy to serve as local counsel in your intellectual property dispute.
TECHNOLOGY START UP SERVICES
Our team of intellectual property attorneys have drafted, prepared and negotiated numerous technology agreements, including employment, non-compete, and independent contractor agreements. We also assist in preparing vendor agreements, service agreements, manufacturing agreements, and distribution agreements with a keen eye toward protecting, growing and monetizing your copyright and trademark rights.
Our Miami trademark attorneys also serve as outside counsel to a variety of technology companies in South Florida, helping ensure comprehensive and detailed protection of your brand, slogan, logo, creative works and ideas.
BOAT DESIGN PROTECTION
The Vessel Hull Design Protection Act
Overview and Summary
The recreational boating industry brings an annual economic impact to Florida of $23.3 Billion. There are an astonishing 918,000 registered boats in our state. The recreational boating industry supports some 6,000 businesses in Florida, resulting in 92,000 jobs. In Florida alone, retail sales of new boats, engines and marine accessories amounts to $2.9 Billion annually. According to the National Marine Manufacturers Association (NMMA): “The recreational boating industry has been on a seven-year climb that’s expected to continue[.]”
Boat designs, such as the shape of the hull of a vessel, are extremely important aspects of recreational boats. “Hull” is defined as “the main body of a ship or other vessel, inclusive of the bottom, sides and deck.” Such “Hull” design shape is important because it affects the boat’s safety, load carrying capacity, speed and efficiency.
The “Vessel Hull Design Protection Act”, which is now part of the Copyright Act, affords federal registration of a vessel hull design to give an exclusive right to make, import, sell and/or distribute any vessel with said design. Registration, through a Florida Copyright Attorney, provides the owner of a protected hull design the ability to bring a copyright infringement suit against any person who infringes such rights. A finding of copyright infringement, under the “Vessel Hull Design Protection Act” may result in injunctive relief, as well as, damages to the owner of the protected boat design. Accordingly, it is important to consult with an experience Boat Design Attorney about copyright.
Florida’s Prior Boat Design Registration Law:
The anthesis of the Vessel Hull Design Protection Act derives from a prior Florida state registration law that the Supreme Court of the United States declared as unconstitutional.
With the popularity of boats in Florida rising during the 1900’s, the Florida legislature was forced to take notice. These same law makers as a result passed laws trying to help innovative manufacturers of boats, by preventing the unauthorized copying of boat hull designs. In the 1988 case Bonito Boats, Inc. v. Thunder Craft Boats, Inc., the Supreme Court rejected the Florida laws as being constitutional due to the Supremacy Clause. Justice O’Connor further explained that Florida’s laws interfered with the patent monopoly system established by the United States Constitution and codified in the Patent Laws. This case ultimately led to Federal intellectual property law being the only means in which to legally protect a vessel’s hull design.
Key Aspects of the Boat Design Law:
Ten years later after the Bonito Boats decision in 1998, Congress enacted the Vessel Hull Design Protection Act (VHDPA). The VHDPA protects “the original design of a vessel hull, deck and/or combination of the two which makes the article in which the design is incorporated attractive or distinctive in appearance to the purchasing or using public.” 17 U.S.C. § 1301(a)(2).
An applicant who wishes to register a boat hull design must complete Form D-VH, along with a “deposit” of the design for the underlying boat hull and the applicable fee of $400.00. 37 C.F.R § 212.3 Additionally, the applicant must be the owner of the underlying design or its duly authorized agent.
The deposit material submitted with Form D-VH may consist of no more than two drawings or photographs per sheet. Three sheets maximum may be submitted on 8 ½ x 11 paper. Drawings must be in black ink only and have “appropriate surface showing which shows clearly the character and contour of all surfaces of any 3- dimensional aspects of the design.” Broken lines can be used to denote portions not claimed in the design. If photographs are used as deposit material, they must be “[h]igh quality black and white or color photos.”
A single application may be used for more than one design embodied in a vessel provided that the information contained in all spaces of the application other than space 2 is the same for each design. An application for registration of the boat design must be made with the Copyright Office within two years of the design being made public.
Information Needed for Copyright Form DV-H:
Form DV-H is a specialized Copyright Application for registering vessels hull designs before the United States Copyright Office.
This Boat Copyright Application requires the following six key items:
- the make and model of the vessel that embodies the boat design, i.e. what is the name of the boat;
- the type or style of the boat design, i.e. a sailboat, power boat, cruiser, open water fisherman, or troller;
- a general statement regarding the boat design features, i.e. what specifically makes the design unique;
- a list of the designers of the boat hull, or of the employer if the design was made within regular scope of employment, i.e. a design made for hire.
- the date of when the boat design was first made public.
- a declaration that the applicant’s statements are true and correct – including that the boat hull design is original, created by the designers, and that the design is not protected by a design patent.
Services relating to registration of original designs of vessels are subject to fees prescribed in 37 C.F.R. §§201.3(c) and (d). The price to register a vessel hull with the Copyright Office has risen in the past years and is currently at $400 (US).
Vessel owners, manufacturers, and designers alike should consider protection under the Vessel Design Protection Act, along with the monetary incentives it provides to create new vessel hull designs.
If you have questions on how to protect a boat design, call a Florida Boat Attorney today at 305-374-8303 to help answer your questions.