In July 2019, the U.S. Trademark Office announced it would implement new rules to clarify what constitutes an acceptable specimen to show use on goods.
“Fredrikson & Byron offers the full suite of traditional prosecution, litigation and transactions services but distinguishes itself by the quality of the strategic business advice that it provides alongside them.”
IAM Patent 1000, 2019
What We Do
We acquire and protect intellectual property assets, including patents, trademarks and copyrights. We enforce your intellectual property rights and help maximize the value of your IP in business transactions. Our business clients range from individuals and small privately held business to Fortune 500 companies. The thoughtful attention we pay to clients and their changing needs often leads us to recognize better ways of serving them.
“The thoughtful attention we pay to clients and their changing needs lead us to recognize better ways of serving them.”
- Patent Applications and Prosecution
- Product Clearance
- Infringement, Invalidity and Freedom to Operate Opinions
TRADEMARK, MARKETING AND ADVERTISING
- Trademark Advice and Counseling
- Trademark Clearance, Registration and Maintenance
- Advertising Copy and Sweepstakes
- Agency, Talent and Celebrity Contracts
- Copyright Protection, Registration and Enforcement
- Domain Name Registration and Disputes
IP LICENSING AND TECHNOLOGY AGREEMENTS
- IP Evaluation and Licensing
- Complex Technology and Business Transactions
- Software, Website and App Development Agreements
- E-Commerce Agreements, including Saas, Hosting and Cloud Computing
- OEM Agreements
- Patent Litigation
- Trademark, Trade Dress and False Advertising Litigation
- Copyright and Right of Publicity Litigation
- Licensing Disputes
- Trade Secret Litigation
- Inter Partes Review (IPR) Proceedings in the Patent Trial and Appeal Board
- Opposition and Cancellation Proceedings in the Trademark Trial and Appeal Board (TTAB)
- Prevention Counseling
- Registering Trademarks With Customs Agencies
- Takedowns and Litigation
News & Articles
August 5, 2019
Beginning August 3, 2019, all foreign-domiciled trademark applicants, registrants and parties will be required to have a U.S. attorney appear on their behalf in the U.S. Trademark Office.
June 17, 2019
Attorneys Grant D. Fairbairn, Lora Friedemann, Thomas R. Hipkins, Ann M. Ladd, Kurt J. Niederluecke, Charles D. Segelbaum and David C. West were featured in the 2019 edition of the IAM Patent 1000: The World’s Leading Patent Professionals.
May 13, 2019
There has been a bloom of data analytics tools for patent practice, and some new features of these tools have profoundly enhanced patent practice. Here are five examples of how applicants and their attorneys can improve day-to-day patent strategy using the latest data analytics tools.
May 7, 2019
Instagram and other social media platforms have become fertile ground for all manner of intellectual property disputes.
March 25, 2019
Brand owners recently gained a new weapon for their arsenal in the ongoing fight against counterfeit products sold on online marketplace giant Amazon.com.
February 4, 2019
Fredrikson & Byron shareholders Lora Friedemann, Cynthia A. Moyer, John C. Pickerill and Ann Dunn Wessberg have been named to the 2019 World Trademark Review 1000 (WTR 1000) for Minnesota.
December 14, 2018
In the face of the nagging problem of fake products posing as genuine goods in online marketplaces, major e-commerce platforms are continuing to refine their strategies to address counterfeiting.
November 19, 2018
Major amendments to the Canadian Trademarks Act were passed in 2014.
September 25, 2018
Three new judges have recently joined the Minnesota federal bench, returning the District of Minnesota to full strength for the first time in more than two years.
September 12, 2018
The annual playoffs for Major League Baseball will soon begin in the U.S.
July 20, 2018
By Adam R. Steinert & Katherine J. Rahlin
The United States Court of Appeals for the Federal Circuit held today that a Native American tribe may not assert sovereign immunity to bar inter partes review proceedings before the Patent and Trademark Office’s Patent Trial and Appeal Board.
July 16, 2018
A Pre-Appeal Brief Review Request (PABR) offers an alternate to traditional options when applicants face a final rejection of their application. When is a PABR worth it?
June 14, 2018
Lora Friedemann, Thomas R. Hipkins, Ann M. Ladd, Kurt J. Niederluecke, Charles D. Segelbaum and David C. West were featured in the 2018 edition of the IAM Patent 1000.
Supreme Court Upholds Constitutionality of Inter Partes Review – PTAB Must Decide Patentability of All Challenged Claims
April 24, 2018
The Supreme Court of the United States issued a pair of significant decisions today regarding post-grant practice before the PTO’s Patent Trial and Appeal Board.
March 20, 2018
Fredrikson & Byron shareholders Lora Friedemann and John Pickerill have been named to the 2018 World Trademark Review 1000, which recognizes attorneys and firms that are deemed outstanding in the trademark practice.
March 8, 2018
Recently, industry professionals sat down together at Fredrikson & Byron to talk about social media influencers.
December 18, 2017
The District of Minnesota recently issued its fourth post-Alice decision, this time addressing the question of patent subject matter eligibility for a check processing patent.
December 8, 2017
Over a year after the Supreme Court’s decision in Halo Electronics, district courts continue to disagree over what is required to adequately plead a claim for willful infringement. The District of Minnesota is beginning to enter the fray.
September 1, 2017
In May 2017, the United States Supreme Court decided TC Heartland LLC v. Kraft Foods and limited venue in patent cases to where a corporate defendant is incorporated or has a regular and established place of business.
July 12, 2017
The Honorable Donovan Frank recently issued only the second decision in the District of Minnesota to address the question of patentable subject matter under 35 U.S.C. § 101 in the context of a motion to dismiss.
Patent Trial and Appeal Board Creates Loophole to Challenge Written Description and Enablement in Older Patent Families
June 15, 2017
The Patent Trial and Appeal Board’s May 10 decision in Minerva Surgical, Inc. v. Hologic, Inc. creates a loophole in Patent Office post-grant practice that enables challengers to bring new kinds of invalidity attacks against patents claiming priority to older applications.
May 30, 2017
May 22, 2017
The U.S. Supreme Court’s May 22, 2017, decision in TC Heartland LLC v. Kraft Foods Group redefined the possible venues for patent infringement lawsuits.
May 12, 2017
In Helsinn Healthcare, S.A., v. Teva Pharmaceuticals USA, Inc., the U.S. Court of Appeals for the Federal Circuit addressed the degree to which the Leahy-Smith America Invents Act of 2011 (AIA) altered the “on sale” prior art provision of 35 U.S.C. § 102.
May 8, 2017
Malicious counterfeiters often hide their identities, making it impossible to serve them through traditional means.
Relying On Assumptions in Your Complaint May Subject You to An Exceptional Case Finding and Award Of Attorneys’ Fees
May 8, 2017
In M-I Drilling Fluids UK Ltd. v. Dynamic Air Inc., Chief Judge Tunheim recently adopted the Report and Recommendation of Magistrate Judge Bowbeer, finding the case to be exceptional and awarding attorneys’ fees against Plaintiff M-I.
January 25, 2017
By Timothy M. O’Shea and Ted C. Koshiol
Parties facing allegations of willful patent infringement can rebut the claim by proving that they relied in good faith upon the advice of counsel when undertaking the allegedly infringing activity. However, asserting the advice of counsel defense carries a heavy cost – waiver of privilege as to at least the attorney work product and attorney-client communications relied upon in formulating the opinion. Some courts have even extended the scope of this waiver more broadly to cover any information even considered by the advising counsel. This tradeoff leads many to forego raising the advice of counsel defense.
January 18, 2017
If you read past the title, you are a civil procedure nerd. The answer for you is as easy as two plus two. Rule 15! You can recite the standard in your sleep: “freely given when justice so requires.”
January 12, 2017
On January 9, 2017, the U.S. Court of Appeals for the Federal Circuit issued its decision in Phigenix, Inc. v. ImmunoGen, Inc. (Case No. 2016-1544), severely limiting the appellate rights of petitioners in America Invents Act proceedings that do not engage in potentially infringing activities.
January 9, 2017
In Solutran, Inc. v. Elavon, Inc. and U.S. Bancorp, Magistrate Judge Thorson recently granted the defendants’ motion to compel the production of three slides in a PowerPoint presentation that plaintiff claimed were protected by attorney-client privilege or the work product doctrine. Plaintiff initially produced the entire presentation, which included a section discussing patent litigation. The slides in that section were drafted by plaintiff’s attorneys and included the law firm’s logo. When the presentation was used in a deposition, plaintiff immediately clawed it back and subsequently produced a new version with the three slides at issue redacted.
December 23, 2016
Hydreon Corporation sells a product called FakeTV®, which deters burglars by emitting and projecting light patterns to simulate real television broadcasts. The light patterns make it appear that someone is home watching television when the house is actually empty. In recent years, counterfeit versions of the FakeTV® device have sprung up on Amazon.com and eBay.com. This has become an all-too-common occurrence for U.S. companies.
December 22, 2016
With support from the Department of Justice (DOJ), the U.S. Immigration and Customs Enforcement (ICE) and U.S. Customs and Border Protection (CBP) launched a new program to stop the illegal importation and distribution of dangerous counterfeit consumer electronics at the border.
District of Minnesota Adopts Local Rule 5.6, – Instituting New Processes and Requirements for Civil Parties Filing Under Seal
December 21, 2016
With the adoption of new Local Rule 5.6, the District of Minnesota will be changing the game for filing documents under seal in civil cases.
December 9, 2016
The maker of the popular Snuggie blanket, Allstar Marketing Group, LLC, sued Amazon for trademark infringement earlier this week, alleging that the online retailer enabled the importation and sale of counterfeit Snuggie blankets.
November 22, 2016
Under 28 U.S.C. § 1404(a), “[f]or the convenience of parties and witnesses, in the interest of justice, a district court may transfer any civil action to any other district or division where it might have been brought.” When a party moves to transfer venue under § 1404(a), courts consider: (1) “the convenience of the parties,” (2) “the convenience of the witnesses,” (3) “the interests of justice,” and (4) “any other relevant factors when comparing alternative venues.” A recent opinion from Judge Nelson in the The Valspar Corporation and Valspar Sourcing, Inc. v. PPG Industries, Inc. case provides useful guidance for parties considering such a motion, especially concerning the convenience-of-the-parties prong of the analysis.
October 19, 2016
The Federal Circuit’s recent patent eligibility opinion in McRO Inc. v. Bandai Namco Games America, 2016 WL 4896481 (Fed. Cir. Sept. 13, 2016) is the latest to find claims involving computer technology that survive a § 101 challenge.
Avoiding Punitive Damages in Patent Infringement Cases: Staying on the Right Side of the Now-Blurred Line
September 19, 2016
The United States Supreme Court’s recent Halo Electronics v. Pulse Electronics case made it easier for a patent holder to win punitive damages in a patent infringement case.
Your First Shot to Invalidate a Patent May be Your Last—District of Minnesota Holds Issue Preclusion Bars Party from Presenting ANY Invalidity Arguments
August 30, 2016
The District of Minnesota recently held that the doctrine of issue preclusion bars a party from making any invalidity arguments or re-construing claims of a patent it has previously litigated.
July 7, 2016
What is old is new again when it comes to willful infringement.
Six Fredrikson & Byron Attorneys Recognized in Intellectual Asset Management’s 2016 Patent 1000 Guide
June 1, 2016
Debuting in the 2016 edition of the IAM Patent 1000: The World’s Leading Patent Professionals were Lora Friedemann and Ann M. Ladd. Also ranked again were Thomas R. Hipkins, Kurt J. Niederluecke, Charles D. Segelbaum and David C. West. The IAM Patent 1000 identifies the top patent professionals in key jurisdictions around the world.
May 11, 2016
On May 11, 2016, President Obama signed the Defend Trade Secrets Act (DTSA) into law, creating a new federal cause of action for trade secret misappropriation. Previously, all trade secret claims had to be brought under state law (either under a state’s Uniform Trade Secrets Act or under common law). The new federal trade secret law has some notable features that will make it a useful tool for protecting innovation, especially for those industries where patent protection may be hard to obtain under the Supreme Court’s recent Mayo and Alice decisions.
April 26, 2016
By Katherine J. Rahlin & Kara K. Fairbairn
In Genetic Technologies Ltd. v. Merial LLC, the Court of Appeals for the Federal Circuit recently issued an opinion holding yet another biotech patent invalid. The Federal Circuit applied the two-step Alice/Mayo test for patent eligibility in upholding the district court’s finding of invalidity. The patent at issue, U.S. Patent No. 5,612,179 (the ‘179 patent), is directed to methods of analyzing DNA sequences to detect an allele of gene by amplifying non-coding regions of the DNA. The parties agreed that claim 1 is representative of all of the invalidated claims:
April 18, 2016
Important changes in the regulations governing European Union Community Trademarks (formerly CTMs, now called EUTMs) may affect the scope of your trademark protection for CTM applications filed before June 22, 2012.
April 1, 2016
In October 2015, the Federal Trade Commission (FTC) said that it was investigating the advertising practices of Volkswagen Group of America, Inc. (Volkswagen) after it was uncovered that Volkswagen fitted its “clean diesel” automobiles with illegal emission defeat devices meant to mask emissions during government tests.
Recent Order from Magistrate Judge Franklin L. Noel Provides Important Lessons on Expert Disclosures
March 15, 2016
Contact: Intellectual Property Litigation
A recent order by Magistrate Judge Noel in Luminara Worldwide, LLC v. Liown Electronics Co. helps to clarify the Federal Rules on expert disclosures.
March 2, 2016
LifeLock will pay $100 million to the Federal Trade Commission (FTC) to settle the FTC’s contempt charges that the company violated a 2010 federal court order that requires the company to protect consumers’ personal information and stop its deceptive advertising. This settlement is the largest award the FTC has obtained in an enforcement action.
100 Bottles of Beer on the Wall (All with the Same Name) – What’s Wrong with Co-Existence Agreements?
March 1, 2016
Are co-existence agreements no longer a surefire strategy for getting a trademark registration in the face of a likelihood of confusion refusal? That could be the takeaway from the Trademark Trial and Appeal Board’s (TTAB) recent decision in which it held that a co-existence agreement was insufficient to overcome a refusal based on likelihood of confusion. In re Bay State Brewing Co., Inc., Serial No. 85826258 (Feb. 25, 2016).
Magistrate Judge Hildy Bowbeer Offers Further Guidance on When a Court Should Order a Patentee to Reduce the Number of Asserted Claims
March 1, 2016
A Patent holder bringing an infringement suit sometimes brings suit to enforce hundreds of patent claims and may have little motivation to drop asserted claims until late in the litigation, leaving a defendant and the Court with numerous claims in the pre-trial phase. A recent case before Magistrate Judge Bowbeer offered further guidance on how and when courts should reduce the number of asserted claims.
February 10, 2016
In a precedential decision issued by the Trademark Trial and Appeal Board (TTAB), the TTAB affirmed the examining attorney’s refusal to register SMART SERIES because the mark was merely descriptive. In re Cannon Safe, Inc., Serial No. 85651960 (TTAB Sept. 24, 2015). This raises two questions: how is SMART SERIES descriptive? And, what is wrong with being descriptive?
February 2, 2016
A recent decision by the Trademark Trial and Appeal Board serves as a good reminder that the title of a single work cannot be a trademark. Independent Media Corporation (PVT) Ltd. v. BOL Enterprise (PVT) Ltd., decided January 14, 2016.
February 1, 2016
January 22, 2016
In Hollywood Casino LLC v. Chateau Celeste, Inc., Opposition No. 91203686 (December 14, 2015), Applicant Chateau Celeste filed a trademark application to register the mark Hollywood Hotel. A problem arose, however, when Applicant’s President and CEO testified in a deposition that the Applicant was only a licensee – not the owner – of the mark. The Opposer, Hollywood Casino, seized on this testimony and moved for summary judgment, saying the Applicant could not apply to register a mark it did not actually own.
January 22, 2016
It is not uncommon for a party seeking to license or acquire a patent to request information from the patent holder regarding the patent’s validity and strength. Often, this includes highly confidential documents between the patent holder and attorneys, which are generally privileged and protected from disclosure. However, disclosing privileged documents to a third party usually constitutes a waiver of the privilege. In limited circumstances, the “common interest doctrine” allows two or more entities with a joint interest to share privileged information without waiving its protection. This can include, for example, communications between separate parties negotiating a patent license. Before disclosing any privileged communications to a potential licensee, though, a patent holder should carefully consider whether they may be discoverable in subsequent litigation by a party seeking to invalidate the patent.