NEEDLE, William H
William H. Needle is the founder of Needle & Rosenberg, P.C., one of the largest intellectual property law firms in the Southeast. He has exclusively practiced patent, trademark, copyright, and trade secret law over his entire 36-year career. Mr. Needle is an adjunct professor of Licensing Law at Emory University School of Law and adjunct professor of Patent Law at Georgia State University College of Law. He serves as a mediator or arbitrator in complex disputes involving intellectual property issues and has been an expert witness in patent, trademark, and copyright infringement actions. On several occasions, he has been appointed to serve as a Special Master by U.S. District Court Judges in patent infringement cases wherein his recommendations on validity, infringement, and damages in two actions were affirmed by the Federal Circuit Court of Appeals.
Mr. Needle has served as a Special Assistant Attorney General for the State of Georgia for intellectual property law issues for over 30 years and is a Fellow of the Lawyers Foundation of the State Bar of Georgia. He is a member of several organizations: the Advisory Board of The Technological Innovation: Generating Economic Results (TI: GER) program, a collaboration between Georgia Tech and Emory Law School that prepares students to commercialize new technologies; the Advisory Board of the School of Biomedical Engineering at the University of Alabama at Birmingham; and the Advisory Board of Georgia Tech’s College of Sciences. In addition, he served on the committee that was tasked with formulating Local Rules regarding patent litigation for the U.S. District Court, Northern District of Georgia.
Mr. Needle’s peers in the legal community voted him one of Georgia Trend magazine’s “Legal Elite” every year from 2003 to 2007 and named him one of the “Top 100 Georgia Super Lawyers” every year from 2004 to 2007. He has also been listed as one of the best intellectual property lawyers in Atlanta for over ten years in The Best Lawyers in America®. Additionally, he is a certified “Memphis in May” barbecue judge.
Mr. Needle graduated with a B.S. in Chemistry from the Georgia Institute of Technology in 1967. He received his J.D. from the Emory University School of Law in 1970.
Abstract
Trademark Primer
Abstract:
Trademarks, in the broadest sense, encompass a range of indicators for goods and/or services, including service marks, collective marks, certification marks, trade names and trade dress. A trademark, which may be a name, symbol, feature, or design, functions as an indicator of source and identifies and distinguishes a good or service, enabling customers to ascertain the quality of the good (or service) based on the trademark. Unlike other forms of intellectual property rights (for example, copyrights and patents), the rights extended by trademarks are not generated from the creative activity of an author or inventor, but rather via their use in commerce, and it is the customer’s association of the trademark with a specific product (or service) that is the key factor in establishing rights. The relative effectiveness of a trademark depends on its degree of distinctiveness. By way of classifying trademarks, a hierarchy based on strength of protection, from fanciful to merely descriptive, has been established. Whereas fanciful trademarks are inherently distinctive because they are terms invented solely for a specific purpose (for example, Kotex), descriptive marks (for example, Chap-Stick) must acquire secondary meaning to become protectable. In the United States, trademarks are protected by both state and federal laws. Although federal trademark registration is not necessary to assert trademark rights, it affords many advantages and benefits to the owner, and hence is by far the preferred means of protection. It is important to remember, however, that trademarks must always be maintained, protected, and correctly used. Their strength, and therefore value, is directly linked to public perception.
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