Merchant & Gould makes its mark in intellectual property law

July 13, 2014

Star Tribune
by David Phelps • 612-673-7269

As Merchant & Gould approaches its 115th anniversary next year, the Minneapolis firm specializing in patents, trademarks and copyright law has quietly become a leader in the field of intellectual property.

It has 115 lawyers and other professionals, including patent agents and technical experts, on its staff. It has offices in seven cities outside its Minneapolis headquarters: Atlanta, Denver, Knoxville, Madison, New York, Seattle and Washington, D.C.

Its client list is a Who’s Who of some of the region’s largest and most stable corporate players: 3M, Toro, Ecolab, Andersen Windows and Donaldson

In recent years it successfully defended Lawson Software in a patent infringement case, won a domain name battle for Polaris Industries, won a patent infringement case against toymaker giant Hasbro for an inventor of a new type of gaming dice, and helped a former college classmate of President Obama copyright a series of photos she shot of Obama in college to protect them from unauthorized use by third parties.

Last week, Merchant & Gould was named one of seven “standout intellectual property boutiques” in a survey of in-house attorneys at Fortune 1000 companies and was also cited as being one of 12 firms that can be classified as “one-stop-shopping” destinations for clients in patent prosecution, litigation and licensing.

“We want to be a full-service IP shop,” said Brian Batzli, the firm’s CEO and managing director.

Batzli sat down with the Star Tribune last week to discuss recent events in IP law.

Q: Earlier this year, the U.S. Patent Office rescinded the trademark of the Washington Redskins. Can you explain the implications from that ruling?

A: Trademarks rest on two levels: common law and federal registration. Rights to a trademark are gained by use in commerce — common law — and they also can be gained by federal registration. A number of groups over the years have tried to cancel the Redskins mark because it is considered offensive. You have to prove disparagement and that the mark was disparaging at the time of issue. I think the Washington Redskins will appeal. Evidence of disparagement may not be strong enough to survive an appeal.

Q: How unusual is it to rescind a trademark?                    

A: It doesn’t happen very often, especially in an instance with this high of a profile. The patent office won’t cancel the marks until all the appeals are exhausted. The Redskins can still use the mark. They still have the common law right to do that.

Q: The electric car manufacturer Tesla recently announced that it is making its patents available to potential competitors in hopes of stimulating production of more green vehicles. How unusual is that?

A: This is fairly unusual. They suggested that people can use their technology. The good thing out of this would be coming up with standard technology so different cars don’t need different electric chargers. There’s a time to open up a patent portfolio to advance technology and Tesla has nice technology that would really help the electric car industry. Tesla is really investing in charging stations to increase the distance cars can go between charges. It’s probably not all altruistic; it’s going to help them advance the industry and sell more cars.

Q: What is patent trolling and why is there concern about it?

A: Patent trolling is kind of a misnomer. There are groups that don’t practice their inventions and spent a lot of resources on their patent technology but don’t use it to produce anything. That’s opposed to someone who buys a patent portfolio from an out-of-business company or from people not using their patents and then uses those patents to financially target end users for use of that technology. A patent is the right to exclude others from using that technology. But for some, [patent trolling] is a business model in which that is all they do. It is not an historical model of how people use patents. For whatever reason, as patents became more valuable and people saw that there were patents out there that could be enforced, they came up with this business model.

Q: What are the new, cutting-edge areas of IP law?

A: The Internet of things is an emerging technology. You have lights that can switch on and appliances that can be talked to over a smartphone. There’s still a lot of investigation into the area of nano technology. The bio area will see an increase. Another big area will be patentable subject matter in software.

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