Archive for the ‘Lipton Weinberger & Husick’ Category

Treb Lipton (1942-2011)

Thursday, July 28th, 2011
Treb
Treb and Lawrence

Our founding partner, Robert “Treb” Lipton died this month.¬† Of course, for our firm, and for his family, he had departed some time ago in one of the cruelest jokes that disease plays on us: the Alzheimer’s Disease that robbed him of his memories.¬† We will miss him, but we have missed him for some time now.¬† Only now, the ceremonies of his passing have allowed us to celebrate his life.

For his partners, his employees, and his colleagues, Treb was, as they say, a force of nature.¬† His was an oversized presence in any room.¬† His joy in flying, in learning about his clients’ inventions, the more than occasional off-color joke, and in his family were evident in his characteristic crooked smile and crushing handshake.¬† The universal respect of other attorneys, judges, patent examiners, clients and adversaries is a testament to his knowledge and skill.¬† Above all, his prudent business judgment meant that all who turned to him received respectful and valuable counsel.¬† Treb and I used to say that attorneys have clients and retail businesses have customers – the difference between the two is that while the customer is always right, a client needs his lawyer to advise him when he is wrong.¬† Treb’s clients understood and valued such advice.

For myself and the present and former members of Lipton, Weinberger & Husick – we extend our condolences to Treb’s family, and to all those who knew our partner.¬† His skill, knowledge and integrity will continue to guide the manner in which we practice law – with professionalism, respect, courtesy, and more than a bit of humor.

LAH

LWH Reclaims Domain Name from Marchex Sales

Wednesday, June 29th, 2011

domainsYour trademarks are among your company’s most valuable assets; controlling them is a necessity for successful branding.¬† Domain names, particularly if they incorporate your trademarks, are part of your intellectual property portfolio and demand as much attention as your other assets.

Sometimes, through no fault of your own,¬† another company owns a domain name, which flatly infringes your trademark.¬† Such was the case with a client who recently retained Adam Garson of Lipton, Weinberger & Husick to reclaim a domain name from Marchex Sales, Inc. (Marchex), a public company in the business of acquiring huge portfolios of domains for Internet marketing.¬† It owns such domains as videocamera.com, Debts.com, LasVegasVacations.com, CareerInfo.com and RentGuide.com.¬† Marchex was running a website using our client’s trademark as its domain name.¬† The web site contained various links to related goods and services including our client’s competitors.

Our client’s trademark, which cannot be disclosed here for confidentiality reasons, was only recently registered with United States Patent and Trademark Office.¬† Nevertheless, it had been using the mark since the 1990’s and could prove continuous use until the present.

To rescue our client’s domain name, LWH filed an administrative action with the National Arbitration Forum (NAF) under the Uniform Domain-Name Dispute Resolution Policy (UDRP).¬† The UDRP is a procedure sanctioned by the Internet Corporation for Assigned Names and Numbers and is available to anyone who has a domain name dispute.¬† The UDRP may be used to obtain an order directing a domain’s registrar to transfer the domain to its rightful owner.

To succeed, the plaintiff — in this case our client — is required to prove the following:

(i) its domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and

(ii) it has no rights or legitimate interests in respect of the domain name; and

(iii) its domain name has been registered and is being used in bad faith.

The process involves eight steps, from filing a complaint to final review.¬† In our situation, it took 60 days after filing the complaint for the NAF to render an opinion.¬† The panel found in favor of our client on all three counts.¬† Marchex, the Respondent, argued that at the time it acquired the domain name, our client possessed no trademark rights because the trademark was generic and descriptive.¬† The Panel rejected that argument.¬† Here’s a sample from the panel’s 24-page opinion:

Complainant’s uncontested relevant evidence presented in support of Complainant’s having timely common law trademark rights in the at-issue mark are sufficient to demonstrate secondary meaning and overcome any presumption that the … mark is generic notwithstanding that each of the component words may be generic when taken discretely.

Respondent takes no steps to avoid holding or using trademarked domain names when it would be a simple matter to screen domain names prior to registration or acquisition to determine if they contain registered trademarks or marks in which there is likely a claim of rights such as the … mark.¬† With even less trouble the Respondent might, after finding out that a trademarked domain name such as Complainant’s was registered as a domain name, cancel the trademarked domain name or voluntarily transfer registration, rather than link it do the mark holder’s competition.

….

It thus seems disingenuous for Respondent to claim it acquires domains because of the target domain name’s descriptive value. And even if Respondent’s motivation is as stated, the fact that Respondent cares not that it also is acquiring trademarked names is troubling and further calls into question the bona fide nature of Respondent’s endeavors….Registrants of large numbers of domain names or those acquiring domain names in bulk must be particularly careful in respect of the rights of third parties.

The case demonstrates that trademark owners who can establish common law trademark rights can prevail against large corporations even when the odds do not seem particularly favorable.  Let us know if we can assist you with your efforts at reclaiming your trademarks and domain names.

— Adam G. Garson, Esq.

Lawrence Husick to Present on “Understanding Cyberspace as a Battlefield”

Thursday, January 27th, 2011

On Friday, February 11, 2011 from 11:30 a.m. – 12:30 p.m. at the Foreign Policy Research Institute (“FPRI”), Lawrence Husick will be presenting on the subject of “Understanding Cyberspace as a Battlefield.”¬† The FPRI describes Lawrence’s presentation as follows:

Cyberwar, as Richard Clarke recently explained to FPRI’s members, is the next great threat to national security. It is a threat to military capabilities, but even more so, to civilian systems and infrastructure. Cyberspace is likely to be the theater of our next war, and that war may already be underway. Because cyberwar weapons are computers, networks, routers and compilers, there are few who genuinely understand the battlefield, and fewer who understand the goals, strategies and tactics necessary to develop both an offensive capability and a defensive stance. Lawrence Husick, FPRI’s resident tech-geek, will discuss cyberwar in the context of value-based threat models. How can we identify the likely targets, evaluate the consequences of successful attacks, and implement a competent defense? More importantly, how likely is the US to actually do so?

To learn more, visit the FPRI website.

Firm News: Lawrence Husick Teaches Innovation in the Life Sciences

Thursday, January 28th, 2010

InnovationFor the past 5 years, our partner Lawrence Husick has been co-teaching the Managing Innovation course at the Whiting Graduate School of Engineering at The Johns Hopkins University.¬† Beginning in the Summer Term 2010, he and Dr. Ed Addison will offer “Managing Innovation in the Life Sciences” as a distance learning course in the Hopkins Advanced Biotechnology Studies Program.

This course will explore innovation, invention, and value creation as a driving force in the biotechnology or life sciences enterprise and the ways in which managers should plan to take full advantage of innovation as the only true competitive weapon for long-term success.  A special emphasis will be placed on innovation as applied to life science applications (biotechnology, medical devices, health care delivery, drug discovery, development and packaging, bioinformatics, etc.). Topics include invention, ROI, disruption, creative destruction, types of innovation, technology brokering, organizational structures that foster innovation, planning and managing for innovation.

News from LWH

Thursday, September 24th, 2009

KeynoteOn September 17, 2009, Adam Garson made a presentation on copyright and trademark law to the National Organization of Professional Organizers (NAPO).¬† If your group would like Adam or other lawyers at Lipton, Weinberger & Husick to present topics on intellectual property law, let us know.¬† We’d be pleased to help.

News from LWH

Thursday, August 20th, 2009

KeynoteOn July 21, 2009, Adam Garson made a presentation on the basics of copyright law to the Lehigh Valley Writers Symposium.¬† In attendance were writers, publishers, photographers and online entrepreneurs.¬† The group asked many questions in a lively post-presentation discussion.¬† If your group would like Adam or other lawyers at Lipton, Weinberger & Husick to present topics on intellectual property law, let us know.¬† We’d be pleased to help.