by Kim, Lahey & Killough Law FirmST BARTH® Prevails in Trademark Opposition Case
Charleston
intellectual property attorney B.C. Killough recently prevailed in a trademark opposition case before the Trademark Trial and Appeal Board in an opinion issued in May of 2023. The Board sustained opposition to the federal trademark registration of Poupette St Barth, which was deemed to be confusingly similar to the trademark ST BARTH®.
Brands are important and valuable assets of companies, even though that value may not appear on a balance sheet. Monitoring brands used by competitors is an important part of an IP portfolio strategy. If a trademark owner believes they would be harmed by federal registration of a similar mark, they can file an opposition to the application for registration within a very limited opposition period. Monitoring of trademark applications at the United States Patent and Trademark Office provides intellectual property attorneys the ability to timely oppose the registration of conflicting marks to protect the client’s brands and prevent consumer confusion.
The Opposer in this case used ST BARTH to identify high-end luxury personal care products and has sold these products throughout the world since 1983. The applicant sought to register Poupette St Barth for personal care products with the United States Patent and Trademark Office.
The Board concluded that the marks are confusingly similar and refused to register Poupette St Barth. The Board stated that “consumers familiar with Opposer’s ST BARTH mark for perfumery, cosmetics, and other personal care products may perceive Applicant’s addition of the term POUPETTE merely as a variant or line extension of Opposer’s ST BARTH mark, with both marks indicating a single source.”
Read the entire case opinion here.
Any results the lawyer or law firm may have achieved on behalf of clients in other matters do not necessarily indicate similar results can be obtained for other clients.
by Kim, Lahey & Killough Law FirmTop 7 Considerations When Buying or Selling Software
By Hunter Freeman – Buying and selling enterprise application software (EAS) can be especially tricky and the consequences of getting it wrong can be colossal. Whether you’re a developer or business owner, it’s likely you will find yourself negotiating a contract involving the use, sale, or license of software. These considerations help protect the rights and interests of both parties and ensure a smooth transaction. Here are some key legal aspects to consider:
- Intellectual Property Rights: Software is typically protected by intellectual property laws, such as copyright and sometimes patents. It is important to establish who owns the intellectual property rights to the software being bought or sold. Sellers should ensure they have the necessary rights to sell the software, while buyers should confirm that they are acquiring the appropriate licenses or ownership rights.
- Licensing Agreements: Software is often licensed rather than sold outright. The license agreement outlines the terms and conditions under which the software can be used. Both parties should carefully review the license agreement to understand the permitted uses, restrictions, and any additional obligations or fees. The agreement should be clear on whether the license is perpetual or time-limited, and any renewal or termination provisions.
- Compliance with Laws and Regulations: Software must comply with applicable laws and regulations, such as data protection and privacy laws. Sellers should ensure that their software meets legal requirements and regulations in the jurisdictions where it will be used. Buyers should verify that the software being purchased complies with relevant laws to avoid potential legal and regulatory issues. If the software involves the collection, processing, or storage of personal data, clear provisions should be included in the purchase agreement regarding data protection obligations, consent requirements, data security measures, and any data transfer restrictions.
- Warranties and Limitations of Liability: Sellers often provide warranties regarding the quality, performance, and functionality of the software. The terms and extent of these warranties should be clearly stated in the purchase agreement. Sellers may also include limitations on liability to protect themselves from certain damages or losses. Buyers should review and negotiate these provisions to ensure they are adequately protected.
- Open Source Software: Open source software has its own set of legal considerations. It is crucial to understand the terms of the open-source licenses that govern the software and any potential obligations or restrictions that come with using or distributing open-source components. Buyers and sellers should ensure compliance with open-source license requirements and understand the implications for their proprietary software.
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Data Protection and Privacy: Software may involve the collection, processing, or storage of personal data. Both buyers and sellers should consider data protection and privacy laws that apply to the software and ensure compliance with those laws. Clear provisions should be included in the purchase agreement regarding data protection obligations, consent requirements, data security measures, and any data transfer restrictions.
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Dispute Resolution and Governing Law: Purchase agreements should often include provisions for resolving disputes between the buyer and seller, including alternative dispute resolution methods like mediation, or arbitration and forum selection clauses dictating where the dispute will be resolved. A choice of governing law provision can help avoid inconsistent interpretations of the agreement. Both parties should carefully consider these provisions to ensure a fair and effective resolution process.
It is highly recommended to consult with legal professionals experienced in software transactions to ensure all legal considerations are appropriately addressed and the interests of both parties are protected. And if your company routinely sells or licenses software, it is a good idea to consult an attorney to ensure that your legal strategy for that software will advance your business goals. Whether that consultation is to determine how best to protect your software or to prepare a stock agreement that the company uses when negotiating transactions involving its software, a law firm with technical know-how, business acumen, and a client-centric approach can be an asset.
by Kim, Lahey & Killough Law FirmAFF Group Honored with Export Achievement Award
The Kim, Lahey & Killough Law Firm congratulates the AFF Group, formerly known as the American Foam & Fabric Company, for being honored with the Export Achievement Award from the U.S. Department of Commerce. This prestigious award recognizes the outstanding achievements of U.S. companies in the international market and their contributions to expanding U.S. exports.
The announcement was made in April during the International Trade Administration U.S. Commercial Service’s Building Bridges to Global Markets event in Greer, SC. This regional event included included the South Carolina District Export Council and special guest Arun Venkataraman, who is the Assistant Secretary of Commerce for Global Markets, and Director General of the U.S. and Foreign Commercial Service.
Kim Lahey & Killough’s founding attorney Doug Kim serves on the SC District Export Council. He remarked, “It’s a pleasure to see clients recognized for their success. This well-deserved recognition is a testament to AFF’s efforts to expand their market and business reach internationally.”
The AFF Group has been a leading provider of high-quality foam and fabric products for over 60 years. The company operates several manufacturing facilities in the United States, including its headquarters in Lyman. Over the years, the company has developed a reputation for excellence in product quality and customer service.
In recent years, AFF Group has expanded its business into international markets, exporting its products to countries all over the world. The company’s success in the international market is a testament to its commitment to innovation, quality, and customer satisfaction.
AFF Group CEO Ben Leinster commented, “We are incredibly honored to be recognized by the U.S. Department of Commerce for the Export Achievement Award. Whether deciding which foreign markets to pursue or coordinating logistics of a trip, we are grateful for the assistance of the partnership with the U.S. Department of Commerce and the SC District Export Council.”
In addition to AFF, Greenville-based IT company Blue Eye Soft was also recognized with an Export Achievement Award. The U.S. Department of Commerce’s International Trade Administration (ITA) presents the Export Achievement Award to companies that have demonstrated a commitment to exporting and increasing their international sales. The award recognizes companies that have shown exceptional progress in expanding their exports or penetrating new markets.
The ITA plays an important role in promoting U.S. exports and supporting U.S. companies in the international market. The agency works with U.S. businesses to identify new export opportunities, provide market intelligence, and develop export strategies. The ITA also provides technical assistance and funding to help companies expand their international sales.
by Kim, Lahey & Killough Law FirmKim, Lahey & Killough 2023 SC Super Lawyers
Kim, Lahey & Killough attorneys listed in
2023 South Carolina Super Lawyers
Kim, Lahey & Killough attorneys Doug Kim, Seann Lahey, and B.C. Killough have been named in the 2023 South Carolina Super Lawyers list as top-rated intellectual property attorneys and Casey Martens has been named in the 2023 South Carolina Rising Stars list as a top-rated employment and labor attorney in the Greenville and Charleston markets.
Each year, no more than five percent of the lawyers in the state are selected by the research team at Super Lawyers to receive the honor of inclusion on the Super Lawyers list and no more than 2.5 percent of the lawyers in the state are selected to be listed as Rising Stars.
Greenville patent attorney Doug Kim, founder of Kim, Lahey & Killough, has been included in the South Carolina Super Lawyers list annually since 2017. Kim concentrates his law practice in the areas of brand protection, invention protection, licensing, contracts, company formation, Internet and domain name, data security and privacy, patents, trademarks, copyright, technology transfer, IP litigation, trade secrets, Internet & domain name pursuits, business disputes & resolutions. In addition to Super Lawyers, Doug Kim has previously been named the to the Greenville, SC Best Lawyers® list, named the Trademark Lawyer of The Year, the Best Lawyers® Patent Lawyer of The Year, an IP Star by Managing Intellectual Property magazine and a Legal Elite of the Upstate by Greenville Business Magazine.
Charleston patent attorney B.C. Killough adds his ninth year as a named attorney to the South Carolina Super Lawyers list in the area of intellectual property law. Killough’s practice areas include brand protection, invention protection, licensing, contracts, company formation, Internet and domain name, data security and privacy, patents, trademarks, copyright, technology transfer, IP litigation, trade secrets, Internet & domain name pursuits, business disputes & resolutions, commercial transactions, and mediations of intellectual property and commercial disputes. Killough has been honored as a Senior Fellow by the Litigation Counsel of America, holds an AV preeminent rating with Martindale-Hubbell, was previously named the Best Lawyers Corporate Lawyer of the Year for the Charleston market and has been recognized by Charleston Business Magazine as a Legal Elite in the area of Intellectual Property and Innovation.
Greenville patent attorney Seann Lahey joins colleagues Doug Kim and B.C. Killough on the Super Lawyers list for their work in intellectual property matters. Seann Lahey’s intellectual property law practice regularly includes work in trademarks, copyrights, trade secrets licensing matters, and he has extensive experience dealing with international and U.S. patent prosecution. He has also been recognized by Greenville Business Magazine as a Legal Elite of the Upstate for his work in intellectual property law.
Super Lawyers South Carolina Rising Star Casey Martens practices employment and business law in both the Greenville SC and Brevard NC offices of Kim, Lahey & Killough. Her law practice focuses in the areas of business disputes and litigation, state and federal employment law, corporate formation, drafting and enforcement of contracts, business disputes involving interference with client relations, individual and business defamation, collections, and enforcement of non-compete agreements. She has also been previously recognized by Greenville Business Magazine as a Legal Elite of the Upstate.
About Super Lawyers
Super Lawyers, part of Thomson Reuters, is a rating service of outstanding lawyers from more than 70 practice areas who have attained a high degree of peer recognition and professional achievement. The annual selections are made using a patented multiphase process that includes a statewide survey of lawyers, an independent research evaluation of candidates and peer reviews by practice area.
About Kim, Lahey & Killough
With offices in Greenville and Charleston, SC and Brevard, NC, the Kim, Lahey & Killough Law Firm is devoted to helping clients establish, enforce, and leverage their intellectual property rights from the Upstate, to the Lowcountry to across the globe.
by Kim, Lahey & Killough Law FirmHunter Freeman joins Kim, Lahey & Killough
Patent Attorney Hunter Freeman joins longtime colleagues at
Kim, Lahey & Killough
Kim, Lahey & Killough Law Firm is pleased to announce the addition of patent attorney Hunter Freeman to the firm’s Greenville, SC, office. Freeman’s law practice focuses primarily in the areas of patents, trademarks, trade secrets, contracts, licensing, copyrights, litigation and mediation.
Previously, Freeman worked with firm co-founders Doug Kim and Seann Lahey for 15 years at a large South Carolina firm. Since those early years, each has grown in knowledge, experience and emphasis on the intellectual property needs of South Carolina. Additionally, the number of tech companies in the state has grown by more than 250% during those years, and the need for legal strategies that empower businesses of all sizes to succeed has increased accordingly. “I am excited for the future as we work together to address the growing number of tech innovations born out of South Carolina,” commented Freeman. “I am eager to work alongside my friends again, and with the rest of the firm, to build, expand, develop, and advance the future of business in South Carolina and beyond.”
Freeman has experience in a myriad of industries to include medical devices, manufacturing, aerospace, software and tech, marketing, food beverage and hospitality, consumer products, startups and entrepreneurs, among others.
“As our clients’ needs continue to grow and evolve, we understand the importance of having another trusted colleague in our firm who can navigate the complex world of intellectual property protection and enforcement. With the addition of Hunter Freeman we now have five IP attorneys and are well suited to handle the growing needs of businesses and corporations across South and North Carolina,” observed Doug Kim. “And for those seeking to avoid litigation, we now have two intellectual property mediators in Hunter Freeman and Bill Killough.”
Freeman shares the client-centric philosophy of Kim, Lahey & Killough and enjoys sharing his knowledge to help strengthen and support South Carolina’s entrepreneur ecosystems. He routinely speaks at entrepreneurial workshops and his articles have been published in IP WatchDog, Intellectual Property & Technology Law Journal, South Carolina Lawyers Weekly, and UpState Business Journal. Hunter Freeman has been recognized for his work by his peers and the business community as he is listed in The Best Lawyers in America®, South Carolina Super Lawyers, and in Greenville Business Magazine, as a Legal Elite of the Upstate.
Freeman earned a Bachelor of Science in physics at Rhodes College, and his Juris Doctor from the University of South Carolina School of Law. He is admitted to practice before all state and federal courts within South Carolina Courts, as well as the United States Court of Appeals for the Fourth Circuit, and the United States Patent and Trademark Office.
With offices in Greenville and Charleston, SC, and Brevard, NC, the Kim, Lahey & Killough Law Firm is devoted to helping clients establish, enforce and leverage their intellectual property rights from the Upstate to the Lowcountry and across the globe.
by Kim, Lahey & Killough Law FirmPatent Attorney Robert Merting joins Kim, Lahey & Killough Law Firm
Kim, Lahey & Killough Law Firm is pleased to announce the addition of Robert Merting as an attorney in the firm’s Greenville, SC, office. Mr. Merting’s primary focus will be the firm’s intellectual property practice, corporate law, and regulatory compliance. He will also provide legal services directed to patent application preparation, contract and licenses, trademarks, non-disclosure agreements, and litigation.
A native of South Carolina, Mr. Merting worked in the research lab at Milliken and Company while attending Wofford College. It was at Milliken and Company that he gained a deep understanding of the creation process while working in research and development, following strict corporate guidelines for developing and documenting intellectual property. “Today, I leverage the lessons from those R&D challenges while helping clients document and protect their own intellectual property. It is always a joy telling a client their patent will issue,” says Merting.
In addition to his intellectual property practice, Mr. Merting brings more than ten years of legal experience in the areas of corporate law, wills and trusts, estate planning, and firearms law. “We welcome Robert and are delighted to have him at Kim, Lahey & Killough,” commented founding attorney Doug Kim. “Our firm has doubled in size this past year as we grow to meet the legal needs of South Carolina businesses. Robert brings a unique skillset to our firm by combining his business experience while working at a major Upstate manufacturing company, his in-house counsel experience with a Department of Defense contractor, and his private practice experience to assist us in continuing to provide excellent legal services to our clients and meet their growing needs.”
Robert Merting earned a Bachelor of Science in computer science, a Bachelor of Arts in business economics from Wofford College, and his Juris Doctor from Washington and Lee University. He is admitted to practice before all South Carolina Courts, the South Carolina Supreme Court, the United States District Court for the District of South Carolina, and the United States Patent and Trademark Office.
With offices in Greenville and Charleston, SC, and Brevard, NC, the Kim, Lahey & Killough Law Firm is devoted to helping clients establish, enforce, and leverage their intellectual property rights from the Upstate to the Lowcountry and across the globe.
by Kim, Lahey & Killough Law FirmKim, Lahey & Killough Listed in 2023 Best Law Firms
Kim, Lahey & Killough Law Firm has been named in the 2023 U.S. News – Best Lawyers® “Best Law Firms” list in Greenville for the fourth consecutive year. Firms included in the 2023 “Best Law Firms” list are recognized for professional excellence with consistently impressive ratings from clients and peers.
Ranked firms, presented in three tiers, are listed on a national and regional-based scale. Firms that received a tier designation reflect the highest level of respect a firm can earn among other leading lawyers and clients in the same communities and practice areas.
Kim, Lahey & Killough is recognized as a Tier 1 law firm in the area of Patent Law and a Tier 3 law firm in the area of Trademark Law in Greenville.
With offices in Greenville and Charleston, SC and Brevard, NC, Kim, Lahey & Killough Law Firm is devoted to helping clients establish, enforce, and leverage their intellectual property rights from the Upstate, to the Lowcountry to across the globe. The firm serves the manufacturing, software, energy, finance, hospitality, tourism, and technology industries. Key practice areas include intellectual property, business and commercial litigation, mediation, employment, corporate and business matters, mergers and acquisitions, contracts, and cybersecurity.
by Kim, Lahey & Killough Law FirmKim, Lahey & Killough attorneys recognized by Best Lawyers®
The Kim, Lahey & Killough Law Firm is pleased to announce several of its attorneys are recognized by Best Lawyers® for 2023.
Founding member, Doug Kim, is recognized in the 29th edition of The Best Lawyers in America® in the practice areas of patent law and trademark law. He has been recognized in both areas previously as Greenville’s Trademark Lawyer of the Year, 2022, and Patent Lawyer of the Year, 2019. This is the eighth time he has been recognized by Best Lawyers.
In our Charleston office, B.C. Killough is also listed in The Best Lawyers in America in the practice areas of patent law and trademark law, as well as corporate law and intellectual property litigation. Killough has been recognized annually in Best Lawyers since 2010 for his work in these areas. In 2015, he was listed as The Corporate Law Lawyer of the Year for the Charleston metro.
Attorney Casey Martin is named in Best Lawyers: Ones to Watch in America™ in the practice areas of employment law for employees, employment law for managers, and employment law litigation. This recognition highlights the legal talent of lawyers who have been in practice for less than 10 years.
The Best Lawyers in America recognizes only the top 5.3% of elite lawyers in the nation across 150 practice areas. More than 12 million evaluations were considered in this purely peer-review to identify this year’s exclusive group of Best Lawyers honorees.
With offices in Greenville and Charleston, SC, and Brevard, NC, the Kim, Lahey & Killough Law Firm is devoted to helping clients establish, enforce, and leverage their intellectual property rights from the Upstate, to the Lowcountry to across the globe.
by Kim, Lahey & Killough Law FirmUpcoming Webinar – Protecting IP Overseas: USPTO Trade Attaché Program
Did you know the U.S. Patent & Trademark Office (USPTO) offers services and information to U.S. companies entering foreign markets or conducting business abroad?
Join Upstate SC Alliance and Kim & Lahey Law Firm to hear from USPTO representatives Elizabeth Dougherty, Cynthia Henderson, and Dominic Keating. Dominic will provide an overview of the USPTO IP Attaché Program including the history of the program, locations, and services provided. Cynthia will discuss her work in Mexico City and the issues she encounters in the region, including how she assists U.S. companies on specific intellectual property issues, her training and outreach programs to raise awareness, and her experience raising issues with foreign government officials throughout the region.
Following their presentations, attendees can participate in a discussion moderated by Kim & Lahey Law Firm Founder & Attorney Doug Kim.
When: Wednesday, November 10, 2021 | 10:00 – 11:00 a.m.
Where: Anywhere you’d like! Check your confirmation email for the Zoom link.
Register Here
Please RSVP by Monday, November 8th to save your spot.
by Kim, Lahey & Killough Law FirmTrademark Renewal Scams: A Growing Problem. Don’t be Fooled.
Anyone who has registered or applied for a trademark knows it eventually must be renewed. Unfortunately, bad actors know this too and are trying to rip you off. According to the US Patent and Trademark Office (USPTO), trademark renewal scams are on the rise. They’re becoming so sophisticated that the USPTO has filed several trademark applications to increase protection for its own brand.
Being on a national trademark register is one of the many benefits of have a federally registered trademark. It allows others to search and find your registration. When other companies are trying to determine if a name is “available,” one of the first places they look is the USPTO database of trademark registrations and pending applications. To keep a trademark registration enforceable, it must be renewed periodically. Generally, the first renewal is five years from registration. The next one in five more years and then every 10 years after that. Unfortunately, bad actors are also looking at the public database. The USPTO says they’re seeing an increasing number of misleading solicitations and trademark filing scams.
The USPTO has also stated that it is “seeing more sophisticated enterprises entering the space” with some scams even impersonating the US Patent and Trademark Office. I know first hand. I received a fraudulent text regarding my trademark just last year. The USPTO has taken steps in the past to curb this misleading and sometimes illegal behavior, including providing scam alerts, working with law enforcement and sanctioning filers who violate the US Patent and Trademark Office rules.
On August 4, 2021, the Department of Commerce (the agency under which the USPTO sits), filed several applications for the federal registration of USPTO marks. The USPTO hopes with a federal registration, it can improve its ability to stop these scams and protect the USPTO brand from improper use by those trying to impersonate or falsely claim affiliation with the USPTO. In appreciation of the potential conflict of filing an application in its own office (because the application would be examined by the USPTO) the Department of Commerce is the actual applicant.
As we see more and more activity online and with more and more access to information, we can expect these scams to continue. If you receive a notification from a party you do not know (for example, not your law firm) take caution. Some of the known violators call themselves names like:
“Patent and Trademark Office”
“Patent & Trademark Office”
“Patent and Trademark Agency”
“Patent and Trademark Bureau”
“Trademark Compliance Center”
“Trademark Compliance Office”
“Trademark Office LTD”
“United States Trademark Registration Office”
One company in Belize went so far as to attempt to register the mark PATENT & TRADEMARK AGENCY. In response, the USPTO stated, “Registration is refused because the applied-for mark PATENT & TRADEMARK AGENCY consists of or includes matter which may falsely suggest a connection with a US government agency, specifically, the US Patent and Trademark Office.”
If you have any doubt as to the authenticity, truthfulness or honesty of any communication you receive concerning your trademark registration or application, contact an experienced trademark attorney for assistance.