Exceptional Patent, Trademark, and Copyright Prosecution

Intellectual property law includes patents, trademarks, copyrights, and trade secrets. The rights provided by these laws may represent a significant value to both individuals and corporate entities in the United States and internationally.

John C. Laurence Law, PLLC, specializes in helping its clients understand and develop their intellectual property rights across various technologies and industries.

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John C. Laurence

Intellectual Property Lawyer

John C. Laurence received his B.S. in Electrical Engineering from Polytechnic University and his J.D. from New York Law School. He is a member of the New York State Bar, the U.S. Patent and Trademark Office (Patent Bar), and the District Court of the Southern District of New York.

Client Testimonials

  • Excellent

    While I consulted John with my case, he frankly discussed with me the options I have. After I signed the agreement, he proceeded promptly. Overall experience is great.

    Alan via Avvo
  • Patent Preparation and Technology Review

    John prepared the patent claims based on highly complex electromagnetic field applications and guided us though the patent application process. We were very satisfied with his work.

    Toby via Avvo
  • Excellent legal service regarding Copyright issue.

    I contacted him regarding Copyright issue. He provided seamless service with quick response. He is knowledgeable in his area. Plus, he provides free consultation which is very helpful. He also charges very reasonable price. I totally recommend him.

    Karen via Avvo

Recent Articles

Learn More about Trademarks, Copyrights, and Patents

Trademark Modernization Act

In an effort to help combat an increase in fraudulent trademark filings and registrations, the Trademark Modernization Act of 2020 (TMA) was signed into law on December 27, 202. The TMA addresses improper use claims and fake or doctored specimen submissions for trademarks by providing new mechanisms for challenging trademark applications and registrations on non-use grounds. The TMA also addresses the enforcement of trademark registrations by making it easier for trademark registrants to obtain injunction relief against alleged infringers. Letter of Protest Third parties may challenge a pending trademark application before that application is published for opposition by submitting a letter of protest to the USPTO. A Letter of Protest enables a third party to submit evidence that supports a ground for refusing registration of another party’s pending trademark. This submission differs from a conventional trademark opposition, which is filed during the thirty days that the application is published for opposition. Unfortunately, the Letter of Protest process has been underutilized due to the USPTO not having a formal process for submitting and reviewing Letters of Protest. The TMA tasks the Director of the USPTO to develop formalized processes for submitting and evaluating evidence by third parties supporting the refusal of another party’s pending trademark application. The Director is tasked with establishing these processes within a year. Once the USPTO formalizes the processes for submitting and evaluating Letters of Protest, trademark watch services that provide trademark owners with notice of potentially conflicting trademark applications will become even more critical. Ex Parte Expungement and Reexamination Proceedings In contrast to other countries, the US requires submission of a sworn statement of use that includes a first use date and a specimen demonstrating use of the mark for the defined goods and services before a trademark registration will issue.  A significant problem for the USPTO and legitimate trademark owners has been false assertions of use and fake specimens of use. The TMA established the new Expungement and Reexamination procedures to help alleviate some of these problems. Currently, inter parte Cancellation proceedings allow for petitions before the Trademark Trial and Appeal Board (TTAB) to cancel trademark registrations for abandonment or lack of use. This proceeding is similar to court litigation in that both the petitioner and the trademark owner must engage in the proceedings in an attempt to prove their case before the TTAB. The new ex parte Expungement and Reexamination Proceedings may also be used to petition to cancel a trademark registration for lack of use. However, in contrast to existing Cancellation proceedings, the petitioner will not continue to engage after filing the petition with the USPTO Director. Also, the USPTO Director has discretion on the commencement of either the Expungement and Reexamination Proceeding. The ex parte Expungement Proceeding provides for third-party filing of a petition for an expungement of a trademark registration on the ground that the trademark was never used in US commerce. A petition for expungement cannot be brought until three years after the registration’s issuance and remain available for the registration’s lifetime. The Reexamination Proceeding provides for third party filing of a petition for a reexamination of the trademark registration on the ground that the trademark was not used in US commerce before its relevant date, the relevant date being either the filing date of a use-based application or the statement of use date of an intent-to-use application. A petition for reexamination must be brought within five years of the registration’s issuance.  In both proceedings, the petitioning party must raise relevant arguments, submit supporting proofs, and pay a fee. The USPTO Director will decide whether or not a proceeding will be instituted. The USPTO Director may also commence both proceedings on his or her initiative. If a proceeding is initiated, the registrant may respond with evidence demonstrating the trademark’s use for the subject goods and services or that the non-use is excusable. Restoring Presumption of Irreparable Harm Preliminary injunctions are a valuable tool for trademark owners when combating trademark infringement. The TMA resolves a circuit split as to the standard for issuing preliminary injunctions in trademark infringement, cybersquatting, and false advertising matters. A showing that a trademark owner will suffer irreparable harm is a requirement for preliminary injunctions and other injunctive relief. The TMA restores the presumption that a trademark owner will suffer irreparable harm when either trademark infringement is found or it is shown a likelihood of success of prevailing on the merits in a preliminary injunction context. With this legislation, the TMA has restored a necessary element for trademark owners seeking injunctive relief from infringement of their trademark.

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TEACHING AWAY AND MOTIVATION TO COMBINE

Teaching away and motivation to combine are defenses that may be used to help overcome an obviousness-type rejection of claims in a patent or patent application. In General Electric Company v. Raytheon Technologies Corporation, General Electric (GE) appealed a decision by the Patent and Appeal Board (Board) that a patent for a two-stage turbine engine owned by Raytheon Technologies (Raytheon) was nonobvious. GE argued to the Board that the patent was obvious over the combination of two references, Wendus and Moxon. Wendus teaches a one-stage high-pressure turbine. Moxon teaches that a transition from a two-stage design to a single-stage design is unlikely because of the increased performance demands required to improve a single-stage turbine engine’s fuel efficiency. The Board held that Wendus taught away from a combination with Moxon and that the evidence presented as a whole did not demonstrate a motivation to combine the two references. In its appeal before the Court of Appels (Court), GE challenged the Board’s legal standard for both teaching away and motivation to combine as applied in its nonobvious holding. According to the Board, Wendus taught away from a combination with Moxon because it expressly considered at least some of the tradeoffs between one-stage and two-stage designs and specifically chose the one-stage design. In reviewing the Board’s application of teaching away, the Court stated that “a reference does not teach away if it merely expresses a general preference for an alternative invention but does not criticize, discredit, or otherwise discourage investigation into the invention claimed.” The Court explained that Wendus did not make a single negative statement about the use of a two-stage high-pressure turbine. Rather, Wendus teaches that a one-stage turbine might be lighter and cheaper to manufacture and maintain than a two-stage turbine. However, teaching that a specific design may be optimal or standard for a defined set of criteria does not criticize, discredit, or otherwise discourage investigation into other designs. A such, the Court held that Wendus did not teach away from a combination with Moxon. According to the Board, because Wendus specifically chose a one-stage design, the evidence presented in the proceeding as a whole could not persuasively demonstrate a motivation to modify. The Court noted that its precedent does not require that the motivation to combine be the best option but rather only a suitable option from which the prior art does not teach away. Rather, “any need or problem known in the field of endeavor at the time of invention and addressed by the patent can provide a reason for combining the elements in the manner claimed.” Also, a design preference might have simultaneous advantages and disadvantages which do not necessarily obviate a motivation to combine. As such, the Court held that the Board lacked substantial evidence for its conclusion that GE did not establish a motivation to combine the references. The Court further held that it did not matter that GE did not explain why an artisan would be motivated to use each element disclosed in Wendus. That Wendus treats each of the disclosed elements as desirable was enough to motivate an artisan to combine them with a two-stage turbine, as long as the artisan believed there was a reasonable likelihood that the combination would succeed. In prosecuting a patent application or enforcing an issued patent, it is important to understand how these defenses may be applied effectively against an obviousness-type rejection. Contact John C. Laurence Law Today Why hire a patent attorney? The answer is simple: to help you protect your business. John C. Laurence is experienced in developing, prosecuting, and enforcing patent rights. He understands the patent process, leverages your patent to earn money for you, and protect your patent from infringement. If you have questions about patent rights and how to move forward, contact John C. Laurence Law online or at 917-997-9967 for your free consultation.

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When You Should Consider Hiring A Trademark Attorney

If you are an inventor or business owner, you probably take great pride in your invention or business. But merely having an invention or a company isn’t all it takes to have a successful business. Building your brand is crucial to the future growth and success of your business. Thus, it is important to start thinking about what you can do to build and protect your brand. But how do you go about doing that? One great way to do so is to begin the process of registering a trademark. A trademark is a fantastic way to set yourself apart from other competing companies. By registering a trademark, you can help potential consumers distinguish your company from the rest. This, in turn, will allow you to more effectively further the success of your business. If you have not yet registered a trademark for your company, it may be time to hire a trademark attorney. Even though you can technically complete a trademark application on your own, the process of registration is not always simple. The benefits of having a trademark lawyer to help guide you through the complexities of the registration process cannot be overstated. If you want to know more about the trademark registration process and how a trademark attorney can help you, contact John C. Laurence Law, PLLC, today. Trademark attorney John C. Laurence has dedicated his practice to helping businesses protect their brands, and he will fight to do the same for you. What Is a Trademark? The United States Patent and Trademark Office (USPTO) defines a trademark as a word, phrase, symbol, and/or design that identifies and distinguishes the source of the goods of one party from those of another party. Common examples of things you can trademark include: Logos, Slogans, Product names, and Brand names. If you want to set your invention or brand apart from others on the market, a trademark is a great place to start. Benefits of Registering Your Trademark You can actually acquire a trademark automatically by using the mark in “commerce” in connection with your goods or services. However, taking the steps to register your trademark with your state or the USPTO also provides you with additional advantages. Some of these advantages include: Presumed ownership of the mark in the event a dispute arises; Notice to other parties that you own the mark; Exclusive right to use the mark statewide and nationwide; Rights to prevent others from using the mark; and Enforcement rights against others who do use the mark. A trademark does more than just set your brand apart. A properly registered trademark can help you protect and expand the reach of your brand. Are Trademarks Different from Patents or Copyrights? Yes, definitely. Patents, trademarks, and copyrights all fall under the general umbrella of intellectual property (IP). However, each one protects separate and distinct rights.  Another distinction between these types of IP is the duration of protection. Unlike patents and copyrights, trademark rights last forever as long as you continue to use the trademark in commerce, make required periodic filings, and pay the requisite fees. Why Hire a Trademark Attorney? So if you can file a trademark application on your own, you might be wondering, Why hire a trademark attorney at all? It might seem tempting to go ahead and file on your own in an attempt to save money on hiring an attorney. However, hiring an experienced trademark attorney can be a great benefit that can actually save you time and money in the long run. Assistance with Pre-Registration Trademark Clearance Search Before you register a trademark, it is important to do a preliminary check for other marks that already exist that may be similar to the one you’re considering. Otherwise, you risk applying for a mark that could potentially be blocked from registration due to similarities to an existing mark. A trademark attorney can conduct a comprehensive clearance search for trademarks in the USPTO database that may conflict with yours. These types of precursory searches can prevent costly litigation down the line arising out of disputes where another company alleges your trademark is so similar to their own that you are creating confusion within the marketplace. Application Process After confirming there are no similar marks already registered, a trademark attorney can help prepare your trademark application. The USPTO has complex requirements that must be met before your trademark application can be accepted. In some cases, the USPTO may issue  an “office action” with questions, requests for clarifications, or a rejection of  your proposed mark. An attorney can prepare responses to an office action to address any potential issues that are raised by the examiner. Trademark attorneys are used to going through this application process and can help you ensure that you take all of the appropriate steps to  maximize the possibility of your nark being registered. Post-Registration After you register your trademark, this is not the end of the road for your brand. It is your responsibility to monitor the use of your trademark in the marketplace. Understandably, most business owners are more concerned about operating their business than monitoring whether other people are using their trademark. However, this is still important to ensuring that others are not diluting the strength of the brand you’ve built. This is another function that  a trademark attorney can help with. A trademark attorney can monitor new filings with the USPTO, keep track of any unauthorized use of your trademark by other entities, and advise you on the best ways to enforce your trademark rights and prevent further infringement by the other  parties. Additionally, the USPTO requires you to renew your trademark registration after the fifth from registration and every 10 years after that . A trademark attorney can ensure that all the required documents are filed accurately and in a timely manner so your trademark registration will not lapse. Instead of policing the use of your trademark and keeping up with these periodic filings, let an attorney take these things […]

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