Downloadable "Trademark Basics" Brochure

My "Trademark Basics" series is now available as a single downloadable brochure on my website at http://www.kdtalcott.com/trademark-basics.html.

Trademark Basics -- Vol III

(This is the third and final post in my series on Trademark Basics. The first post can be found here, and the second can be found here. Future "basics" series will discuss patents, copyrights, and trade secrets.)

Let's assume you've decided to take the plunge and register your trademark. We'll also assume you've done your homework – selected a mark that at a minimum is not generic and so is capable of being registered; performed a reasonably comprehensive search to determine whether anyone else is using your mark for the same or similar goods or services (we'll focus on goods going forward, but understand that services are covered as well); defined the goods to which the mark will apply so that the mark can be assigned to one or more of the classes of goods used by the Trademark Office to organize marks.

Filing Your Application With the Trademark Office

With the proper level of preparation, the registration process itself becomes a somewhat straightforward exercise. The application form is actually an interactive set of forms that you or your attorney will complete on the Trademark Office website (http://www.uspto.gov/teas/e-TEAS/index.html). The so-called “TEAS” system will step you through the application process, and while it is far from foolproof, it will alert you to basic missteps such as required fields that are left blank or filled in improperly.

You will need to know who is going to own the mark – for most businesses, it will be the business entity in whose name the application is filed, and so will become the owner of the registered mark. The application then requests the usual sorts of contact information that you might expect it to, all of which becomes part of the public record.

You of course will need to identify the mark. The system allows you to submit the mark in either a word form or, for logos or stylized lettering, an image form (JPG format is the only one accepted). For images, you will also have to provide any word or letters included in the image. Using our “Acme” example, if we are registering a stylized “Acme” logo, we would identify it by the word “Acme.”

There are then a series of statements that the system invites you to make about the mark: whether any parts of the mark are being disclaimed (in our “Acme Hair Gel” example, you might disclaim the generic phrase “Hair Gel” even though you might use it as part of your mark). A “disclaimed” element is one for which you are not claiming to have exclusive rights. You also have the opportunity to claim that the mark has become “distinctive,” meaning that through long use or heavy media exposure, consumers have come to associate the mark with the source of the underlying goods. While the system provides you with some clues as to what will support a claim of distinctiveness, if you're not sure about whether your mark qualifies it might make sense to seek the advice of a trademark lawyer.

Goods and Services

Next you will be asked to identify the goods or services for which the mark is to be registered. The “TEAS Plus” version of the system contains a search tool that is meant to help you identify the appropriate International Class of goods or services to use in the application. The regular “TEAS” application allows you to select your International Class of goods as well as create your own description of what the covered goods or services are. A short description of the differences between the two system versions can be found on the Patent and Trademark Office website at http://www.uspto.gov/teas/teasplus.htm.

While it is important to make sure that your application covers all of the classes for which you might be using your mark, keep in mind that your application cost increases for each class of goods that you select. In addition, while creating your own description of those goods or services can be very effective, it can sometimes create problems with the application if it's not done properly. Here too it can often be helpful to secure the advice of an attorney before selecting your class or classes of goods or services, or your descriptions.

Existing Use or Intent-to-Use?

The next option is to choose whether your application is based on your existing use of the mark (“Section 1(a)”), or whether it is a so-called “intent to use” (“Section 1(b)”) application. You can also indicate whether the application is based on a foreign application or registration, but that is beyond the scope of this article.

You'll be asked for some correspondence information, which is where attorneys would provide their contact information, and then will be provided with the application cost and will sign the form electronically. You'll have the opportunity to review and save the completed form – it's very good practice to do so – and then you will be taken to a payment page where you can input credit card information and submit payment.

Done and Filed!

Once filed, your application is officially “pending.” That means nothing in terms of how you identify your mark to the world – until you have an issued registration, you must use the “TM” designation and not the “®” designation.

After a period of time, you will receive a response from an examiner at the Trademark Office. The response may grant your application, or it may reject it, or it may suggest or request some modification to the application. Whether or not you consult a trademark attorney will depend on the nature of the examiner's response.

Generally speaking, your chances of successfully registering your marks will increase if you take advantage of the services of a competent trademark attorney from the beginning. Many will file the initial application for a fixed fee over and above what the Trademark Office application fee is (currently $275 per class if you use the TEAS Plus system, and $325 per class if you use the TEAS system). There are other Trademark Office fees that may apply as well: if you file an intent-to-use application, for example, you will pay $100 to file your “Statement of Use.”

Once Approved . . . It's Not Over

Assuming your application is eventually approved by the Trademark Examiner, that is not the end of the road. It is then published in the Trademark Gazette, and third parties will have 30 days to file a notice of opposition to your mark (very often, in fact, they will request and receive an extension of this time period). If someone decides to oppose the registration of your mark, they will file an opposition proceeding, and the registration of your mark will be delayed until after that proceeding is resolved.

Finally, if you do secure a registration of your mark, keep in mind that the registration does not last forever. You will be required between the 5th and 6th anniversarys of your mark's registration to file a “Declaration of Use” (along with a fee, of course) that shows that you are still using the mark in commerce. While you can file the Declaration of Use up to six months later (for an additional fee, of course), if you don't file it you are likely to have your registration canceled.

Consider Using Counsel

This has been a summary of some of the main issues that trademark owners need to consider when deciding whether or not to register their trademarks. This field of law can become complicated, particularly in crowded and competitive markets. While many business owners enjoy the challenge of taking on these issues by themselves, it often helps to find qualified trademark counsel who can advise along the way. Don't let your budget stand in the way of asking for help – very often, with a little bit of work, you can find an attorney who is willing to work with you even if your budget is tight.

Trademark Basics – Volume II

(This is the second of a series of posts focusing on Trademark Law. The first can be found here. Future posts will discuss Patent, Copyright, and Trade Secret law.)

Selecting a Mark and Application Types

Let's assume you've decided that you want to register a trademark. It could be your business name, or perhaps the name of a product or a service that your business sells. What kinds of issues can you expect to deal with in the course of registering your mark?

Trademark Availability Search

It can be very difficult if not impossible to secure a trademark registration for a mark that someone else is already using for the same type of product (or service – but for brevity's sake I'll refer only to products going forward). Many applicants prefer to learn about existing marks before they pay to file their own applications. There are a couple of ways to search to see what marks are out there.

One of the quickest and simplest ways is to use a search engine such as Google; simply input the mark you'd like to register and maybe one or two words describing your product and see what comes up. You shouldn't stop there, of course: the Patent and Trademark Office maintains a database of all trademark applications and registrations that you can access at www.uspto.gov (look for the “Search Marks” link).

All of this searching can get complicated – states maintain trademark registration databases as well, and a good search will look for similar marks and not just identical ones. Of course there are services out there that will conduct such a search for you for a fee. Expect to pay from several hundred dollars on up depending on what kind of a search you ask for and who is doing it. Most trademark lawyers have contacts with one or more search providers, and can help produce better search results by providing the searcher with the right information about your mark and how it's going to be used.

A typical search is likely to yield a number of “hits” – instances where others are using the mark you want to register, or a similar mark, for similar products. That doesn't necessarily mean you won't be able to register your mark, but it might affect how you go about doing so. Of course, the search results might also send you back to the trademark drawing board. A lawyer who practices trademark law can review the search results and can help you decide what to do based on those results.

Types of Marks

It's useful to understand that some marks are considered by the Trademark Office to be “stronger” than others. A classification system has been developed over the years that put labels on marks – you might have heard about “descriptive” or “fanciful” marks, for example. The gist of the system is that the closer a mark comes to describing what the product is, the harder it's going to be to register that mark because doing so could prevent others from being able to describe their competing products.

So, for example, you are not going to be able to register the mark “water” for your spring water. That would prevent other spring water companies from using the word to describe their products. You might be able to register the mark “Acme Spring Water” for your spring water product, but the Trademark examiner may require you to “disclaim” the words “spring water,” meaning that others can use those words with their spring water products. The word “water” would be considered a generic mark when used in connection with water.

The word “Acme,” on the other hand, is at the opposite end of the trademark spectrum from “water.” It doesn't call to mind anything in particular, and could be used as a trademark for pretty much anything to the extent no one else was doing so. Xerox and Kodak are two examples of this kind of a so-called “fanciful” mark.

There are other types of marks that use common words, but in a way that does not relate to the definition of the word. Selecting “Water” as a trademark for computers is one example of this. If that sounds odd to you, consider the mark “Apple” for the same type of product. These are examples of “arbitrary” marks.

Sometimes a mark will indirectly relate to the underlying product. Selecting the mark “Flowing” for your spring water product might be an example of such a mark, since it calls to mind the way that water moves. Another example of this kind of a “suggestive” mark is “Microsoft,” which might make you think of software for what used to be known as microcomputers.

Some might argue that “Flowing” when used for water is actually “descriptive” and not “suggestive.” These are the kinds of arguments that Trademark lawyers have all of the time. That is because under US law there is a significant consequence if a mark is “descriptive” – namely, you will need to provide the Trademark Office with evidence that your “descriptive” mark has acquired something called “secondary meaning” before it will be granted a registration.

“Secondary meaning” means that in spite of the descriptiveness of the mark, consumers for your product have come to associate the descriptive mark with your product. There are several ways to establish secondary meaning – such as long-term use, or large amounts spent on publicity – but the details of doing so really go beyond the scope of this piece. What you might need to know is that surnames are usually treated as descriptive marks, and so you may need to establish secondary meaning before you can register yours as a trademark.

Types of Registrations

You don't have to be using a mark yet in order to register it. By filing an “intent-to-use” application, you can basically reserve a mark for future use even if you're not yet using it. You need to have a good faith intent to use that mark for the type of product in question, and you cannot keep an intent-to-use registration alive forever – you'll have 36 months from when the Trademark Office issues its Notice of Allowance to begin using your mark, though every six months during that period you will have to file a request with the Trademark Office to extend your time to file your Statement of Use, and of course will have to pay money for each extension.

If you are already using your mark, you can file a application for registration based on that use. As you might expect, “use” has a particular meaning to the Trademark Office. You need to be using the mark “in commerce,” which means in the ordinary course of trade and not simply on samples or promotional versions of the product. Furthermore, for products, the mark must be displayed on the goods, their container, or the display associated with the goods. For services, the mark must be displayed in the sale or advertising of the services.

The next installment of this series will go into more detail about the trademark application process.

Trademark Basics – Volume I

(This is the first in a series of posts that are going to focus on the basics of Trademark law. I'll have a similar series on Patent, Copyright, and Trade Secret law in the future. These are directed at non-lawyers as well as lawyers who don't practice intellectual property law, and will be consolidated on my website at www.kdtalcott.com.)

So your business is up and running – maybe for a couple of weeks, maybe for years – and one of your friends asks you “Did you trademark it?” Read this before you respond, because you might have 'trademarked it' without even knowing it. And even if you have, you might still want to register it.

What is a Trademark?

People confuse the three main types of intellectual property all the time. Patents, trademarks, and copyrights get conflated in the minds of people who have better things to do than to work in the intellectual property law field. So first, make sure you're clear about what a trademark is.

A trademark is usually a word or a logo that tells you something important about a product or service. (I'm generally going to refer to products from here on out, but understand that a trademark can relate to a service as well.) From a consumer's perspective, a trademark tells the buyer that a particular company is responsible for the product, and the product has certain qualities. Let's run through a a couple of examples.

My spouse will only purchase Tide laundry soap. Her mother always used Tide, she has always used Tide, and our family has always used Tide as a result. The trademark “Tide” on the box or bottle tells her that the laundry soap inside cleans clothes well and is of a type that no one in the family is allergic to. Her loyalty to the Tide brand extends across its product line, to both powder and liquid forms of the product, and to versions of both that add various extra ingredients such as bleach, fabric softener, or fragrance. In the words of trademark law practitioners, the mark “Tide” serves as a “source identifier” for her. To the people who make Tide, she is probably their dream consumer.

Let's talk about beer. In the trademark context, alas. Bass has been brewing beer since 1777. In 1875 its red triangle logo was registered as British trademark number 1. The red triangle is an example of a symbol that consumers, including yours truly, look for to tell them that the product inside came from the Bass brewery. As a result, they expect the beer to have certain characteristics – for the Pale Ale version, a balanced hop-malt taste, mild carbonation, caramel color, and a soft, cream-colored head (these are my tasting notes; yours may differ, but what's important is that it represents what this consumer has come to expect from a bottle of pale ale bearing the red triangle logo). The folks at Bass are very proud of that red triangle logo, and I'm sure work hard to make sure it consistently has the qualities that consumers have come to associate with the product.

That's not to say that every mark has to be unique. Depending on the mark, it's possible to have the same or very similar marks that can coexist because they cover different types of products or services. The mark “United,” for example, has been registered by different companies for shower enclosures, real estate franchise services, lighting ballasts, bicycle accessories, grocery stores, rolling mills, pool cue stick joints, fresh vegetables, transportation of goods by truck, transportation of persons, property, and mail by air, and dozens of other products and services. This is allowed because consumers are able to compartmentalize their perceptions about products and services. Most consumers who are looking for moving van services and see the name “United Van Lines” don't believe that “United Airlines” is provider of those services, and vice-versa. In legal terms, there is little “likelihood of confusion” between those similar “United” marks for those different types of services.

The Trademark Office requires a registrant to declare the types of goods or services that its mark is to cover when it decides whether to grant an application for a registration. We will talk about those “classes” of services and how different types of trademarks can get you broader or narrower protection a bit later. (“United,” you might guess, is on the narrower side of things.)

Other things besides words can serve as trademarks: the shape of a product or container (think the classic Coca-Cola bottle); the color of a product (think Owens-Corning's pink building insulation); even sounds (think the NBC television chimes). But ordinarily trademarks are either words (which can be in regular letter form or logo form) or symbols.

How do I get one?

There is a dirty little secret that many trademark lawyers won't tell prospective clients: if you've been using a word or logo in a trademark-y way, you may have already acquired some trademark rights. (And no, the phrase “trademark-y way” is not typical lawyer-speak.) That is because trademarks rights arise under common law, meaning they begin to build up as soon as you start using a mark “in commerce” -- basically, when you begin selling a product and using the mark to identify it.

You're not off the hook, however. There's a reason that so many companies go to the trouble to register their marks with the Trademark Office. The so-called “common law” trademarks only provide limited protection against infringement by others. In particular, the geographic scope of their protection is limited to the area in which the product has been sold. So if my “Acme” (to borrow Wile E. Coyote's favorite brand) hair gel is sold only in the New York metropolitan area, and I have not registered that mark for hair gel, I am protected under common law only in the New York metropolitan area. If I take my product to Los Angeles, and another Acme hair gel is already being sold in that area, the owner of that mark can prevent me from selling my hair gel under that name in that market. And if the Los Angeles Acme has registered its mark with the United States Patent and Trademark Office, and did so before I began selling my Acme hair gel, it might even be able to stop me from selling my product back in New York.

In many cases, however, keeping it local makes sense and the common law rights may be enough. If your market it fixed and you don't intend ever to expand your distribution or geographic scope, then you might be able to rely on your common law rights to protect you. This assumes you haven't picked a name that is already registered by someone else for a similar product (such as “David's Cookies” for your baked goods) or, for really famous products, almost anything (such as “Microsoft” for your line of tiny plush animals). We'll talk about selecting the right mark a bit later. If you think you want to stick with your common law rights, it might make sense for you to consult with an attorney who practices in this area about your particular situation.

So what do I get if I register my mark?

To increase the protection for your mark, you need to register it with the United States Patent and Trademark Office. The registration process is a fairly lengthy one, because each application is examined by the Trademark Office and compared against all of the marks that have already been registered, as well as against common law marks that the trademark examiner is able to find on her own (thank Google for vastly increasing the effectiveness of these common law searches). Registering a mark is not cheap, either. The total cost to register a mark – from application to registration – can easily exceed one or two thousand dollars, with Trademark Office fees accounting for about $500 of that and legal fees the rest.

So why go to the trouble? First, a registered mark can be protected throughout the United States, not just in the area in which it's been used. I once tried to secure a registration for a bakery in New York that was refused because a chain of three bakeries in the San Francisco bay area had registered the same mark for the same type of service. Other benefits of registration include:

• the ability to sue in Federal Court (something you might not be able to do otherwise if your opponent is from the same state as you)
• the ability to seek enhanced damages – up to three times your actual damages, where the infringement is deemed “willful” – plus attorneys' fees (this is rather rare, however)
• the ability to have your mark declared “incontestable” after five years' use (making it harder to attack your mark in court)
• the ability to use the ® symbol next to your mark – unregistered marks should only use the “TM” designation
• the ability to register your mark with US Customs, which can help stop importation of counterfeits
• providing ready notice to others of your mark – the Trademark Office's database is the first place people should look before adopting a mark
• making it more difficult for a cybersquatter to register your mark as a domain name (trademark owners have some benefits when seeking to have the domain name turned over to them)
• when you decide to go global, giving you the ability to use the registered US mark as a basis for securing foreign trademark registrations

So there are real benefits to registration. My next post will discuss the different types of registrations – for example, there is a way to “reserve” a trademark registration even before you begin to use the mark, by way of an “intent-to-use” application – and will go into some detail about how the registration process works.

Do New White House Flickr Image Restrictions Contravene Copyright Law?

This Slashdot post highlights the incongruity between US government copyright policy and the White House's recent restrictions on the uses of images posted to its Flickr photostream.

Government policy states, in part, that "[a] work that is a United States Government work, prepared by an officer or employee of the United States Government as part of that person's official duties, is not subject to copyright in the United States and there are no U.S. copyright restrictions on reproduction, derivative works, distribution, performance, or display of the work." This is consistent with the Copyright Act as well. Images on the White House Flickr photostream, however, now contain this restrictive legend: "This official White House photograph is being made available only for publication by news organizations and/or for personal use printing by the subject(s) of the photograph." (Example here.) It then goes on to prohibit the commercial use of the image in any way that suggests the endorsement of the subject.

Oddly enough, the Flickr page also contains a link to the Government Policy that disclaims a copyright interest in images that are United States Government works -- as most of the White House photostream images are.

Even more oddly, the restrictive legend is not the same for all images. This image of the President meeting with former president George H.W. Bush removes the word "only" from the restrictive legend, which changes its meaning considerably, from a restrictive one to an explanatory one: "This official White House photograph is being made available for publication by news organizations and/or for personal use printing by the subject(s) of the photograph." The lack of an "only" there suggests that others can use the image as well. Perhaps it's a partisan thing.

There is of course a tension between the rights that the creator of an image has in that image (which are addressed by copyright law) and those that the subject of the image has in that same image (which are addressed by publicity laws in most states that give individuals some rights over how their images are used for advertising or other purposes). This was highlighted in a case brought two years ago by the family of a Texas teenager whose picture was taken by a photographer and posted on Flickr with a Creative Commons Attribution License. The family sued when Virgin Mobile used the image in ads for its mobile phone service in Australia. The issue there was really not one of copyright, but of publicity.

The President recently experienced the same sort of situation, when the Weatherproof clothing brand used an image of the President wearing a Weatherproof brand jacket on a billboard ad in Times Square.

Perhaps what the White House means to say is best expressed in the second half of the restrictive legend it now posts with its Flickr images, which states that the images "may not be used in commercial or political materials, advertisements, emails, products, promotions that in any way suggests approval or endorsement of the President, the First Family, or the White House." That legend is grounded in publicity law, not copyright, and is not inconsistent with the government disclaimer of copyright. It would perhaps be the better limitation for the White House to emphasize.

The Annual Super Bowl Copyright Post

Ars Technica had a nice post several days ago about copyright and The Super Bowl; this one focusing on the screen size limitation written into the Copyright Act. Two takeaways from the post, which is worth reading: first, it offers yet another example of how complex this area of the law is, and second, it reminds copyright owners to use common sense when making decisions about enforcement. Just because you can enforce a right doesn't always mean you should.

Federal Circuit Lowers the Bar for Declaratory Judgments

(A version of this article appeared in the December 15, 2009 edition of the New York Law Journal)

A recent decision from the Federal Circuit makes it even more difficult for patent holders seeking to open talks with a potential infringer to avoid becoming the target of a declaratory judgment action. Such is the takeaway from the December 4, 2009 decision of the Federal Circuit in Hewlett-Packard Company vs. Acceleron, LLC.

The background to the Acceleron case is a familiar one to patent litigators: Acceleron, a patent holding company, acquired a patent and several months later sent a letter to Hewlett-Packard about it, noting that the patent related to blade servers. As “demand” letters go, it was relatively mild, asking HP for “an opportunity to discuss this patent with you.” It also included a request: that HP agree that all of the information the parties were to exchange “will not be used for any litigation purposes whatsoever, including but not limited to any claim that Acceleron has assserted any rights against any of your ongoing or planned activities, or otherwise created any actual case or controversy regarding the enclosed patent.”

Acceleron asked HP to respond by two weeks from the date of the letter, stating that if HP had not done so by then, Acceleron would “assume you have no interest in discussing this patent.”

HP's response indicated its interest in learning more about the patent, and proposed that the parties agree to a 120-day “mutual standstill,” during which time neither company would sue the other. Acceleron demurred, contending that HP did not have “any basis for filing a declaratory judgment action,” and extending for another two weeks the time for HP to return a signed copy of the original Acceleron letter, agreeing to the discussion terms proposed therein.

Shortly thereafter, HP filed a declaratory judgment suit in Delaware, where Acceleron was incorporated, rather than in the Eastern District of Texas, where Acceleron maintained its principal place of business. Acceleron moved to dismiss for lack of subject matter jurisdiction, and the District Court granted the motion, reasoning that at the time HP filed the suit, litigation was “too speculative a prospect to support declaratory judgment jurisdiction.” HP appealed, and the Federal Circuit reversed.

The Federal Circuit reviewed the District Court's grant of Acceleron's motion to dismiss de novo, and its underlying findings of fact for clear error. It noted that while the Supreme Court's 2007 ruling in Medimmune may have "lowered the bar for determining declaratory judgment jurisdiction" in patent lawsuits, "a lowered bar does not mean no bar at all."

The court quoted Medimmune when it explained that a declaratory judgment plaintiff needs to show a "definite and concrete" dispute that touches the "legal relations of parties having adverse legal interests.' The court noted that the plaintiff also needs to show that the dispute is "real and substantial and admit of specific relief." In particular, "a communication from a patent owner to another party, merely identifying its patent and the other party's product line, without more, cannot establish adverse legal interests between the parties."

That last sentence would appear to offer the recipe for patent holders interested in communicating with potential infringers without attracting a declaratory judgment lawsuit: first, identify your patent; second, identify the other party's product line. While of course the conventions of social discourse will require that there be more to initial contact letters than just these two points, the Acceleron case shows that not too much more in the way of back-and-forth can generate a dispute that is "real and substantial" enough to survive a jurisdictional challenge.

While Acceleron argued that it had not threatened to sue HP in any of its correspondence, the Federal Circuit looked to how Acceleron's letters could be interpreted and disagreed, noting that "[t]he purpose of a declaratory judgment action cannot be defeated simply by the stratagem of a correspondence that avoids the magic words such as 'litigation' or 'infringement.'" In particular, the Federal Circuit pointed to Acceleron's assertion of its patent as "relevant" to HP's blade servers; its imposition of a short response deadline; its request that HP not use the information exchanged in any lawsuit; and its status as a non-competitor patent holding company, all as support for a finding of jurisdiction.

The court found further support in Acceleron's refusal of HP's request to enter into a mutual standstill, a refusal that derived added significance in the court's eyes from the fact that "Acceleron is solely a licensing entity, and without enforcement it derives no benefits from its patents."

It was thus the "totality of the circumstances" that the Federal Circuit said made it "not unreasonable for HP to interpret Acceleron's letters as implicitly asserting its rights" under the patent. In sum, "conduct that can be reasonably inferred as demonstrating intent to enforce a patent can create declaratory judgment jurisdiction."

If anything, this case -- which the Federal Circuit acknowledges "marks a shift from past declaratory judgment cases" -- highlights how little it takes before declaratory judgment jurisdiction can attach to discussions between a patent holder and a potential target defendant. While Acceleron appears to have taken some pains to avoid making things appear as though litigation were a possibility, the Federal Circuit seems to be telling courts to go beyond the surface and to look to "conduct that can be reasonably inferred" when evaluating whether an "intent to enforce a patent" exists.

Patent holders, then, must now look not only to what their words say when they bring their patents to the attention of possible infringers, but also to how those words may be interpreted by some unknown court. For licensing entitites in particular, it is likely that almost any discussion of litigation whatsoever risks providing the potential target with ammunition enough to support declaratory judgment jurisdiction. Companies on the receiving end of patent notice letters, of course, will now find it easier than ever to invoke declaratory judgment jurisdiction.

When is an Inventor not an Inventor?

In Nartron Corp. v. Schukra U.S.A., Inc., the Federal Circuit considered the standards for adding an alleged co-inventor to an existing patent. The case serves as a reminder that the simple fact that more than one person contributes to a development project does not mean that every member of the project should be a named inventor on patents that issue as a result.

Schukra makes lumbar support systems for automobile seats. Schukra contracted with Nartron for Nartron to design a control system that would allow existing car seats to massage undoubtedly grateful passengers. A Schukra employee, one Benson, provided the Nartron project team with the idea of an "extender for a lumbar support adjustor" that eventually found its way in to a third-level dependent claim in US Patent 6,049,748. Benson was not one of the named inventors on the patent.

Nartron designed the control system, secured the '748 patent, and eventually sued Schukra and a Schukra supplier for patent infringement. The supplier co-defendant raised the issue of whether Benson was an inventor who should have been named on the patent and also joined as a plaintiff to the infringement suit; since Benson was a Schukra employee and contributed to the invention as such, this would have made it difficult for Nartron to sue Schukra (as well as the supplier).

The district court agreed with the co-defendant, and granted its motion to dismiss, holding that Benson was a co-inventor of the '748 patent based on his conception of the "extender element" of that patent's multi-dependent claim 11. Nartron appealed.

The Federal Circuit reviewed Benson's contribution to the invention disclosed in the '748 patent, and reversed, concluding that "[a]ny contribution Benson made to the invention in claim 11 by contributing an extender was insignificant and therefore prevents Benson from attaining the status of a co-inventor."

Several things contributed to this finding. First, Benson's contribution of "the extender for a lumbar support adjustor" was "insignificant when measured against the full dimension of the invention of claim 11," not only because it was in the prior art, but also because it was already part of existing car seats. In that sense, Benson's suggestion "amounted to the exercise of ordinary skill in the art."

Second, the focus of the '748 patent was not so much on the structure of the seat (of which Benson's extender was a physical part), but on the control module that operates the seat.

Finally, the complete invention of claim 11 included all of the features of claims 1, 5, and 6, from which that claim depended. The court noted that Benson would not necessarily achieve the status of co-inventor simply by contributing the idea expressed in claim 11 if he did not contribute to any of claims 1, 5, or 6.

The takeaway: Take a careful look at who contributed to the invention that is to be patented and what their respective contributions were; not every project team member is necessarily an inventor. Those who merely suggest obivious applications for the team's inventions may not be entitled to be co-inventors.

My Twitter Piece for Law.com

I write a bi-monthly column for the New York Law Journal's "Technology Today" feature.  It sometimes gets picked up by one or more affiliated websites or publications.  While the title is maybe a little too cute (I do have editors), here is "Tools and Tactics to Tweet Well on Twitter."  

This is a Twitter 101 for lawyers.  

Patent Infringement Finding Does Not Equal Lanham Act Violation

A recent Federal Circuit case highlights the contrast between claims of patent infringement and violation of the Lanham Act.

In Baden Sports, Inc. v. Molten USA, Inc., Baden Sports patented a padded basketball that it marketed as containing “cushion control technology.” It sued Molten USA in the Western District of Washington for patent infringement arising out of Molten’s sales of basketballs containing “dual-cushion technology.”

Baden later amended its complaint to add claims that Molten’s advertising of its dual-cushion basketballs violated Section 43 of the Lanham Act, in particular because Molten’s ads for its basketballs had used the terms “proprietary,” “exclusive,” and “innovative.” The district court granted Baden's motion for summary judgment on its patent infringement claims.

The district court dismissed Baden’s Section 43 claims relating to Molten’s use of “proprietary” and “exclusive” because those terms suggested that Molten had invented the technology and were precluded by the Supreme Court’s decision in Dastar Corp. v. Twentieth Century Fox Film Corp. It allowed the claims concerning Molten's use of the term “innovative” to go to trial, however, reasoning that it could relate to the “nature, characteristics, or qualities of the basketballs themselves.”

At trial, the jury found in Baden’s favor on the false advertising claim. It awarded Baden a relatively modest $38,031 for patent infringement and a whopping $8,054,579 for intentional false advertising. Molten moved for a JMOL and a new trial; both were denied.

Because this was a patent case, the Federal Circuit caught the appeal, but applied the law of the 9th Circuit on non-patent issues. It analyzed the Section 43(a) issues in two stages, and concluded that “Section 43(a) of the Lanham Act does not create liability from Molten’s advertisements because those advertisements do not concern the ‘origin of goods,’ to which section 43(a)(1)(A) is directed, nor do they concern the ‘nature, characteristics, [or] qualities’ of the goods, which is what Ninth Circuit law has interpreted Section 43(a)(1)(B) to address.”

The Federal Circuit pointed out that there was nothing in the record to show that Molten’s advertising suggested that Molten was not the source of the infringing basketballs that it was marketing. Accordingly, there was no claim under Section 43(a)(1)(A).

As for Molten’s claim that its basketballs were “innovative,” the Federal Circuit noted that “[n]o physical or functional attributes of the basketballs are implied by Molten’s advertisements. ‘Innovative’ only indicates, at most, that is manufacturer created something new, or that the product is new, irrespective of who created it.” Accordingly, there was no claim under Section 43(a)(1)(B) either.

The court noted that there were a number of other arguments that could have been advanced in support of Baden’s false advertising claims, but that the arguments had not been pursued at trial.

Takeaway: Be careful how you present Lanham Act claims arising out of patent infringement allegations. An patent infringer is not automatically liable for Lanham Act false advertising; such a finding will require its own set of carefully-developed proofs.

Jones Day Settles Linking Suit with Blockshopper

In what the ABA Journal characterizes as a "Fig Leaf" settlement, Jones Day and Blockshopper have settled the lawsuit that Jones Day brought when Blockshopper had the temerity to link to the bios of two Jones Day attorneys when it reported on (public) real estate transactions involving the two lawyers.

I blogged about this case back in the fall.

In the settlement, Blockshopper agrees that while it will not use any "Embedded Links" to the Jones Day website in the future, it may use "Deep Links" to the site. Blockshopper must also make some sort of statement indicating that the reference individual is employed by Jones Day, and that more information about the person can be obtained at http://www.jonesday.com/, adding the appropriate internal reference to the web address.

So what would formerly have read as follows:

Embedded (bad): Steve Brogan, Jones Day's managing partner, recruited me when I was a law student at Notre Dame.

Now must read thus:

Deep (good): Steve Brogan, who is employed by Jones Day as its managing partner, recruited me when I was a law student at Notre Dame. More information about Steve Brogan can be obtained at http://www.jonesday.com/sjbrogan/.

Hugh Whiting signed the settlement on behalf of Jones Day.

I have to admit that I hadn't heard of the term "fig leaf" settlement; I looked it up, but all I could find were other blogs and newsletters that referenced the Jones Day/Blockshopper case. Wikipedia, in addition to teaching me about a turn-of-the-last-century bodybuilder named Eugen Sandow who used to pose nude save for the protective covering of a fig leaf, provided some information that I think pretty much covers (pun intended) the settlement:

"The expression fig leaf has a perjorative metaphorical sense meaning a cover for any thing or behaviour that might be considered shameful, with the implication that the cover is only a token gesture and the truth is obvious to all who choose to see it."

Are Recession's Roots in September 2001?

This blog is nominally devoted to IP and Technology law, but anyone who knows me well has had to put up with my frequent rants over the increasingly-intrusive nature of our government’s efforts to secure our country against future attacks of the type we endured in September 2001.

My views are that much of what passes for security is nonsense, or “security theater.” (Yes, I read and like much of what Bruce Schneier has to say on security measures, but I’m not going to presume that he would agree with anything I might do with that information.) Efforts such as random bag checks and heavily-armored patrols in subways, virtual strip-searching and shoe-scanning by TSA personnel in airports, attempted bans on photographing plainly-visible infrastructure such as bridges and trains, and mass information capture and data mining by the NSA do little to help make us more secure, but much to erode our individual Constitutional rights.

One thing I understand is that many of these efforts have been justified as evils that are necessary in our continuing War on Terror. I also understand that many, many people are satisfied with that explanation, and are willing to part with a little bit of their liberty in exchange for feeling a little bit safer. That willingness implies as well that many, many people trust our government to do the right thing, and not to abuse its power even as it intrudes further into our personal lives. For more that seven years, people have been conditioned to leave much of their personal security, and some of their personal rights, freedom, and information, in our government’s hands.

Two columns in today’s New York Times about our current economic crisis have caused me to wonder whether the government’s increasingly-intrusive security measures on behalf of the War on Terror may have contributed to the crisis of confidence that a number of commentators seem to believe is at the root of this recession.

Now I am not an economist, and frankly am a bit mystified (if not terrified) at the strongly-held, often completely divergent solutions economists of differing ideological stripes are advocating as “the way” to pull us out of this recession. But if there is a common theme that runs through any of the pieces I’ve read, it’s that nothing positive is going to happen until consumers begin to believe in whatever solution is implemented, open their wallets, and begin spending again.

In “The Worst-Case Scenario,” David Brooks looks back from a hypothetical future and analyzes what made the recovery efforts fail:

“The crisis was labeled an economic crisis, but it was really a psychological crisis. . . . Essentially, Americans had migrated from one society to another – from a society of high trust to a society of low trust, from a society of optimisim to a society of foreboding, from a society in which certain financial habits applied to a society in which they did not.”

Did that social migration begin with the September 2001 attacks? Just look at how we reacted: after a brief period of collective patriotism, mourning, and general flailing about, we settled in to a steady state of government-sponsored security warnings, threat-levels, illegal surveillance, and all manner of terror-driven searches and seizures. We started and have continued two wars, and have interred and detained thousands of people in the furtherance of the War on Terror. Against all of that, how could we not have moved from a “society of high trust to a society of low trust,” and become a “society of foreboding?”

Our government has repeatedly justified its efforts as necessary, if perhaps unpleasant, if we wanted to defeat our widely-dispersed enemies and assure our national security. We were asked to trust that the little intrusions as well as major incursions were in our collective self-interest. And the economy? Well, that was the least of our worries, of course. The economy was humming along more or less nicely, and could pretty much take care of itself. Those pesky terrorists, on the other hand . . . that’s where our attention should be focused.

So while we were waging this War on Terror, the economy didn’t take care of itself. In fact, it turned out that nobody had really been minding the store, and here we are scrambling. Who could blame consumers for their current lack of trust? Consumers had been set up.

Moving across the Times’s editorial page, Paul Krugman in “Failure to Rise” says that he has “a sick feeling in the pit of my stomach – a feeling that America just isn’t rising to the greatest economic challenge in 70 years. The best may not lack conviction, but they seem willing to settle for half-measures. And the worst are, as ever, full of passionate intensity, oblivious to the grotesque failure of their doctrine in practice.”

Layer that statement over the way that we responded following the September 2001 attacks. We didn’t rise to that challenge either. Instead of embracing the principles of freedom and liberty that built this country and made it great, we showed a lack of conviction. We chose safety and security over our rights and liberties; we settled for the illusion of protection as a band-aid applied over the government-induced wound of a potential future terror attack. We forgot that with freedom comes responsibility and risk; we were unwilling to assume the risk, and preferred instead to yield our freedom. We settled, and got used to doing so. And we may be doing so again.

LegalTech Panel: Adopting Web 2.0 Capabilities Into Your Web Presence

This was a lively panel consisting of the following:

Maia Benson – Director of Search Enging Marketing, Lexis/Nexis

Roland Goss – Jorden Burt law firm. Reinsurance and arbitration blog.

Brian Green – Edwards Angell Palmer & Dodge LLP; An insurance/reinsurance law blog.

Rees Morrison - LawDepartmentManagementblog.com blog

David Gottlieb – Baker Sanders, etc. in Newark. No-fault and CPLR blogs

Roy Mura – Insurance coverage and fraud blog

This was essentially a panel on starting and maintaining a blog. It was well-run, spirited, and informative – even for existing bloggers. Moderator Maia Benson kept the five-person panel on-topic, asking key questions, allowing a reasonable amount of discussion, and moving things along to the next point.

Starting from the beginning, the panel discussed their reasons for blogging and why they selected their particular blogging platform. There are a number of different blogging platforms – Blogger, Wordpress, and MoveableType are several popular ones. For a survey article discussing popular blog platforms, check here.

The panelists each agreed that their blogs consumed more time than they initially thought they would. The general consensus among individual bloggers was that their blogs consumed more than an hour a day on average. Two of the blogs were law firm projects, with teams of attorneys assigned to creating content and editing posts.

The next point was what the panelists considered the value of their blogs to be.

Roland Goss pointed out that the question of value was more properly stated as “value to whom?” His view was that blog value in the firm context can sometimes be a hard sell. Blogs have a connotation to some people as being a loose form of communications. While it is difficult to measure client generations as a result of a blog, his point was that institutional clients are looking for their law firms to provide them value. If you are trying to reach that audience, your blog should target their perceived needs. If you do a good job of identifing your audience, you’ll hit the mark.

In the case of the Jorden Burt firm, when Goss was considering developing a blog, he noted that there did not appear to be a one-stop place for information on reinsurance arbitration. So he built one. In the course of running the blog, analytical tools helped him see that readers were gravitating to law review articles on insurance and reinsurance, so he made that more prominent and easy to find. It helps for people to know that you have timely and deep knowledge in your area.

The next question focused on audience; who is your audience? What value are you trying to give?

Rees Morrison, in a bit of a tangent, made a strong argument on several points: make your header clear; keep your posts “short and sweet;” identify your sources; and back-reference your content. While not strictly responsive to the question, they were good points and are worth keeping in mind.

Brian Green pointed out one dilemma that his firm’s blog faced: whether to write about news developments that affected the client’s industry. He noted that the audience was reading those news posts, so the coverage shifted slightly to include the news. (I will note that Brian and I each work for the same firm, but I have no involvement in the operation of the blog.)

David Gottlieb’s audience consists of attorneys he sees in court. He finds that their feedback is helpful. In addition to legal posts, he includes more personal, perhaps somewhat off-topic posts such as family pictures and workplace commentary – one of his more popular posts was a seating chart showing where the “regulars” tended to sit in one of the courtrooms he frequents. This point echoes one raised in Tuesday’s Twitter panel – to develop a relationship with your readers don’t make your posts completely business. Inject some personality into your blog. (This obviously makes more sense with individually-authored blogs than group or firm efforts, though there is no reason why a firm blog could not include the occasional personal note as well.)

Roy Mura said that he believes that he as several categories of readers, ranging from individual clients to “everyone.”

The next question asked what kinds of feedback or anecdotes the panelists were hearing as a result of the their blogs.

David Gottlieb said that almost everyone who practices in his area reads it, including judges, clerks, and other attorneys. He noted, as a result, that this meant that he had some control over what that audience saw. He warned against using the blog as an advertisement. The goal is to provide value.

Roy Mura could count one discrete matter resulting from his blog.

Roland Goss pointed out that blogs aren’t only about getting new clients. He believes that his firm’s blog provides a lot of value as a cross-selling tool, a good way to show existing clients in other areas what else you can do. The blog is also a good way to increase the knowledge base of your attorney writers – a point that applies both to team-written blogs and single-author efforts.

Rees Morrison pointed out that an active blog is a good resource for creating articles. It becomes easy to put together an article on a particular topic by combinging and editing related blog posts.
The topic then turned to metrics – how the bloggers used various tools to learn more about their audience. Rees Morrison jumped up and ran through a nice set of screens that identified some of the tools he uses to help him with his blogs. These include:

SiteMeter – details re: every visit, can drill down to individual visitor

TypePad – gives some stats for its blogs. Also gives you what search led to view.

Feedburner – tells you how many RSS subscribers you have, how many came directly, how many from searches, how many from another site.

Technorati – how many other blogs are referring to you – find out who is writing about you.

Google Analytics – combines some other data, gives you great info.

Bloglines – helps manage subscribers.

Blogpulse – as a percent of ALL blog posts, what did I account for.

Google Groups – more analytical tools.

Roy Mura said that he uses Feedblitz for subscriptions – a vehicle by which readers can subscribe and get an email summary to new posts. Monday night to Tuesday morning is when most people seem to read.

Maia Benson recommended putting a phone number on your blog because it’s tracked. If someone calls you because of the blog, you’ll know it.

One set of concerns – and an area of polite difference – related to whether blogs should accommodate comments.

Brian Green said that his blog does not allow comments because of concerns regarding attorney-client relationships and inadvertent disclosure of confidential information. In the event a dialog takes place, there is a concern that the give-and-take will lead to an inadvertent attorney-client relationship.

Roland Goss’s firm’s blog also does not accept comments, for same reasons. As a firm-authored blog, he pointed out that not having to deal with comments also helps reduce the time associated with managing the blog.

Roy Mura’s blog originally accepted comments without requiring each comment to be moderated. He said that he thought that comments would be an academic exercise, until a completely unacceptable comment was psoted. He now moderates comments, as do David Gottlieb and Rees Morrison.

This panel provided a great overview of issues related to starting and maintaining blogs. It was an extremely worthwhile presentation, and I’m afraid that this post does not do it justice.

LegalTech Panel: Best Practices for Online Networking

I will keep this short.

The best thing about this panel was its moderator, Bob Ambrogi, who made several polite but ultimately unsuccessful attempts to steer the panelists somewhere in the vicinity of their panel's promised subject matter.

Here is what was promised in the LegalTech brochure:

- Opportunities in online networking for attorneys

- Re-energize the traditional, valuable art of networking with tightened budgets, time and resources

- Growth areas, benefits and challenges of online networking

- Best practices on selecting a network

- Gaining the strategic advantage of an online network

Here is what was delivered:

- Martindale-Hubbell Connected, a "gated community" attorney networking system currently in private beta, with features that are yet to be finalized, is going to be the best way ever for private practice lawyers to network and for in-house counsel to get free information.

- Other kinds of networking - the ones where you aren't in a "gated community," apparently - present all sorts of dangers to lawyers, who might inadvertently disclose confidential client information or create surprise attorney-client relationships as a result of said networking.

I had the "if you can't say anything nice, then don't say anything at all" refrain drilled into me as a child, so I won't post the names of the panelists here.

In sum, the panel was a disappointment.

LegalTech Panel: "Five Things Every Practice Should Know About Web 2.0 Technology"

This was an information-packed session presented by Mary Abraham (lawyer and “knowledge manager”) and Lee Bryant (director at Headshift, London). The focus of this presentation was on tools used within the enterprise.

The presentation began on an ironic note – with a wifi signal freely available, no password codes were available for those hoping to live blog. This was not an auspicious start for the first of a set of three presentations focusing on “Web 2.0 Technology.” That said, once the presentation was underway, passwords were distributed to those who were blogging. That said, I couldn’t get my connection going. Perhaps I digress (but please, in the future give all LegalTech conference attendees a strong, free Wifi signal.)

If this session suffered from anything it was information overload. I was very impressed with both panelists; they kept things moving quickly, and each had a lot of information to share.
Some of the points they made follow.

-- Web 2.0 makes sense in a downturn

The recession provides perfect conditions to move forward with these tools and strategies. We have to demonstrate value quickly; but that doesn’t mean a retreat into existing projects or a failure to start new projects. Adding a “social layer” to existing enterprise tools can rejuvinate old, unloved systems. Existing systems can do the heavy lifting well – the data management. What they don’t do too well is the last mile – connecting the information and the users. The new tools should build on the existing systems.

-- There are several levels of collaboration tools. These were presented in the form of a “social stack”:

-- at the base level, these consist of public feeds and flows; RSS feeds, and email;

-- the next level includes bookmarks and tags that create “signals of relevance” for users to share and comment. Clay Shirkey talks about information overload; bookmarks and tags help users filter information for each other.

-- the third level includes blogs and networks, with items or topics shared within networks or discussed in blogs. This information can come from the bookmarks and tags. Professional bloggers typically self-filter this information; they will take in many news feeds, tagging some of them (for later review, in my experience), and then will blog about a lesser number. (Consider the “old” way of doing this, where someone in the firm would circulate an email with some piece of relevant information).

-- the fourth level involves group collaboration – groups or teams that organize knowledge in wikis and group systems, with features such as reviews and voting. The hard part here is getting things started, getting that first draft down. This is becoming popular, with in-firm wikis being managed within groups or subgroups of firms.

Michael Idinopolous says that it’s best to leave knowledge workers “in the flow” of the information to make it easier for them to share useful information. We shouldn’t workers to step “out of the flow” if we want them to share. Our systems should try to make it easy for people to share, and to see what’s been shared. Asking people to share day-to-day just for the heck of it is not going to work.

-- the fifth level: personal tools allow people to organize their own information by tags, or a portal, or a newsreader (for example).

(I wonder whether the fourth and fifth levels should switch places. It seems to me that group collaboration is some higher order byproduct of the use of Web 2.0 tools, sort of the ultimate goal here, the most focused result of the use of the other tools.)

There are many tools available for this. Reading, writing, collaborating, messaging, sharing, and some all-in-one.

-- How to make the business case.

The fact that the tools are relatively cheap and easy to roll out make it easier to sell. They can replace expensive systems (for example, the typical “intranet project” or CRM tool can sometimes be replaced with cheaper, more effective tools).

The key is to select the right tools – many of which are open source. Mallesons in Sydney is an example of a firm that has done very interesting things using social networking tools. There were failures, but they used cheap tools, rolled them out quickly, integrated user feedback, and worked fast.

-- Some examples are as follows:

-- Internal wikis allow multiple users to view, comment, and modify the same document: using something called “Confluences” – seeing hundreds of edits a day to wikis, 1000 page views.

-- Social tools are not about personal blogs, what you’ve had for lunch, etc. Often a group blog is adopted. Freshfields has adopted groups of wikis; only certain people have permission to edit. Trusted editors are a premise behind much social software. You have to trust people to act in a responsible manner. Many existing systems are built on a platform of distrust.

Lawyers don’t seem to be so worried about sharing knowledge; it’s more like projecting ego. It does depend on the context – internal sharing is going to see much more sharing than external.

There was additional discussion of some of the tools available to help implement these projects. Frankly, this moved a bit quickly for my notes. Suffice to say there are more than a few layers of collaboration tools available to those seeking to increase the level of internal collaboration.
This was an excellent session, with more information presented than your humble narrator was able to repeat. My takeaway point: it is past time to begin thinking about ways to manage information flow. The technology is now at the point where it is feasible to start implementing some of those “gee, wouldn’t it be nice if . . .” projects from the past.

LegalTech Panel Report: "What is Twitter and How Can I Use It?"

I attended an excellent LegalTech panel discussion yesterday titled “What is Twitter and How Can I Use it?” Bob Ambrogi introduced the panel (each introduction done in 140 characters or less), which consisted of Kevin O’Keefe (@kevinokeefe), Matthew W. Homann (@matthoman), Chris Winfield (@chriswinfield), and Monica Bay (@commonscold).

Monica, who is the editor-in-chief of Law Technology News, moderated the panel and opened by noting that she was a very reluctant social networker who finally gave up (particularly when she took the post at Law Technology News), and was instantly hooked. She is actively participating on a number of social networking sites, and has three Twitter accounts. She offered an example of using Twitter to troll for story pitches for her publication, and was impressed with how quickly she received substantive proposals from contributors.

Chris Winfield, president of 10e20, a social media marketing consultancy, spoke next. He provided a thorough overview of what Twitter is, starting with the signup page and moving through the various user features that the basic Twitter site offers.

He noted that Twitter is essentially a communications tool – it’s about talking and communicating. I think that this is a great point that is sometimes lost in the back-and-forth questioning of what Twitter is. Just as the telephone can be used to deliver messages ranging from the most trivial to the most important, so can Twitter. It’s up to the user to decide whether and how to use Twitter.

Chris highlighted Twitter’s search function – which has improved over the past couple of months – to highlight how flexible it is. Users can search for specific terms within tweets, or for specific user names.

As a demonstration of Twitter’s utility, Chris showed how he used it to help him create his presentation. A few days before the panel discussion, he tweeted three questions for the presentation and in short order received 135 responses, saving him a lot of work. The questions, and my favorite responses, follow:

- How would you explain Twitter in 140 characters or less? “A social conversation tool that allows people to connect within communities.”

- What is your MUST have Twitter tool? Answers ranged, but included the search feature; Tweetdeck; the Twitterfon application for iPhone; and EasyTweets.

- How could a lawyer or someone in the legal field use Twitter effectively? Answers included using it for education; to answer client or potential client questions; for personal branding; to help with relationship building; to interact with a community; to make connections, to keep up with people in a particular field or industry; to gain insight by using polls.

Matt Homann is the founder of LexThink LLC and writes the [non]billable hour blog. His experience with Twitter is similar to mine, in that he had been on Twitter for a couple of years, but only started using it regularly during last 6 months. He made the following excellent points about the Twitter tool:

- Twitter is easy to learn to use.

- It can be hard to understand why Twitter should be used– why do I want to follow people, why would they follow me?

- Twitter is a “kool-aid technology;” once you get it, you can’t stop telling other people about it.

- Twitter’s greatest value comes from knowing what people are thinking (not what they’re doing). It’s a form of “instant anthropology,” allowing you to plug in to what people are discussing all over the world. He highlighted the “Trending Topics” posted on the Twitter search page as an indication of what Twitter users were talking about at any given point in time. This can provide Twitter users with faster news, particularly about breaking stories.

- To effectively use Twitter in a work context, it’s important to be yourself. Use your name, or your company’s name, if you want to build relationships.

- If you fear that Twitter will interfere with your ability to get your work done, you’re not afraid of Twitter, you’re afraid of doing your work. He made an excellent point that you don’t have to use Twitter all the time, but can “dip in” to the Twitter “stream” whenever you have the time to do so. This makes most sense when you use enhanced search tools such as those available on Tweetdeck that allow you to view multiple search results on one screen.

- To use Twitter most effectively, you should integrate it with you phone. This doesn’t necessarily mean tweeting from your phone; it means bridging the gap between communicating with people via Twitter and then picking up the phone and calling them in person. This is the best way to use Twitter to build client and personal relationships. The successful Twitter user is one who turn Twitter friends into real-life friends.

- Matt described Twitter as being like a networking meeting on steroids – though the conversation’s better and there’s a lot fewer insurance salesmen in the room. From my perspective, the unfiltered feeds can sometimes resemble an Internet chat room, with multiple cross-conversations going on simultaneously. This is why effective use of search tools is so important.

- Finally, Matt noted that the number of followers you have is far less important than the number of followers you deserve. You should always work to deserve more, by contributing to the conversation and building your community.

Kevin O’Keefe is the CEO of LexBlog, Inc., and the author of Real Lawyers Have Blogs. His points were as follows:

- From a big picture perspective, Twitter is a great tool, but sometimes dangerous.

- Kevin provided a number of examples of ways that he could trace new business to his use of Twitter. What I liked about these examples is that they each involved a personal tweet – a comment about a ball game, or a poll-type question about whether a golfer was going to make a putt – that connected with a client or potential client and generated a follow-up. The takeaway from this – and it was a point that Matt raised as well – is that at least some of your tweets should reflect your personality.

- Kevin firmly believes that social media, such as Twitter, is more important than maximizing the hits on your blog or website. Twitter is a tool that allows your message to spread not only to those who follow you directly, but virally as well. People who re-tweet messages help spread your word beyond your immediate network.

- Twitter is not a kids’ tool; its demographics are strong. There are a lot of well-educated, forward-thinking adults using Twitter.

- In Kevin’s personal experience, nothing has had the impact on his company LexBlog quite like Twitter. He’s seen this happen just in past six months. He quoted Guy Kawasaki: Twitter is the single biggest branding tool since TV. Kevin is convinced that Twitter is here to stay.

- He suggests using Twitter to discover people you’d like to get to know and would like to have a conversation with.

- Kevin tweets things that his target audience is interested in; he tries to make his tweets relevant to his target audience, and includes some personal items (within reason).

- He pointed out how his company is helping law firms use Twitter to develop micro-blogging site pages that show what firm lawyers are doing or have to say on a particular topic.

There were a number of questions after the presentations; one that stuck with me was about fair use copyright issues. Presumably this relates to re-tweeting of tweets. My immediate take on this is that one of the things you consent to when you submit a tweet via Twitter is to the re-tweeting of that tweet. While I could see there being an issue if someone were to aggregate multiple tweets in a book or article. I’ve commented on this in the blog post context elsewhere.

Takeaway points:

1. Take advantage of Twitter's search features, particularly those available on Tweetdeck, to receive up-to-date news and information on topics that matter to you from people all over the world.

2. Contribute some of your personality to your tweets. Don't be a corporate drone all the time; occasionally reveal your interests and show that you are a real person.

3. Twitter relationships are a start. It's up to you to take them to the next level.