1. Intellectual Property Law

Intellectual Property Law

Playlist: 35 Videos: 92 Minutes


Topic Material

Intellectual Property Law (Intro)

Overview of Intellectual Property Law


Topics: Learning Material

Introduction to Intellectual Property Law
Intellectual property, as the name implies, is an intangible form of property right. It establishes rights that extend beyond the possession of a physical item and protects and individual’s ideas, plans, procedures, information, creations (function and design), etc. This chapter introduces the concept of intellectual property, its economic importance, and the four major types - trade secrets, patents, trademarks, and copyrights. It then proceeds to explain the nature of each form of intellectual property right and the process for securing those rights. It also provides the extent of protection afforded the holder of intellectual property rights and the method or manner of enforcing those rights against infringers. For further written and video explanation, discussion and practice questions, see Intellectual Property Law (Intro)

What is Intellectual Property?
  • Intangible (not touchable) form of a property or right.

Trade Secrets

Copyrights

Trademarks

Patents

For further written and video explanation, discussion and practice questions, see What is "Intellectual Property"?

Purpose of Granting Intellectual Property Rights
  • Incentive for greater productivity.
  • Create new things and new ways of doing things.
  • Article 1, Section 8 of the US Constitution,

For further written and video explanation, discussion and practice questions, see What is the purpose in granting intellectual property rights?

Capture or Secure Intellectual Property
  • Nature of subject-matter
  • Filing, use, disclosure, time periods

For further written and video explanation, discussion and practice questions, see What is required to capture or secure intellectual property rights?

What are “Trade Secrets”
  • Internal information

⁃ Has economic value

⁃ Not readily known or ascertainable

⁃ Reasonable efforts by the owner to maintain secrecy.

  • Cannot misappropriate

For further written and video explanation, discussion and practice questions, see What are "Trade Secrets?

What are “Patents’
  • Covers products, processes, designs, and other creations (collective “invention”).
  • Exclude others from making, using, selling, or importing the covered invention.
  • Federal - US Patent and Trademark Office (USPTO).
  • Do not confer the right to make, use, or sell a patented creation.

For further written and video explanation, discussion and practice questions, see What are patents or patent rights?

Primary Types of Patent
  • Utility Patents
  • Design Patents
  • Plant Patents

For further written and video explanation, discussion and practice questions, see What are the primary types of patents?

Requirements for a Valid Patent
  • Novelty

Time of Creation

Time of Filing Application

  • Non-Obviousness
  • Usefulness

For further written and video explanation, discussion and practice questions, see What are the requirements for a valid patent?

Requirements for a Design Patent
  • "the visual ornamental characteristics embodied in, or applied to, an article of manufacture."
  • Must also meet “novelty” and “nonobviousness” requirements.
  • Does not have to have “utility” (usefulness)

For further written and video explanation, discussion and practice questions, see What are the requirements for a design patent?

Requirements for a Utility Patent
  • Subject-matter of a utility patent is any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof.
  • Type of patentable subject matter:

Process

Machine

Manufacture

Composition of Matter

  • NOT capable of being patented:

Naturally Occurring Substances

Laws of Nature

Physical Phenomena

Abstract ideas

Fundamental Truths

Calculation Methods

Mathematical Formulas

For further written and video explanation, discussion and practice questions, see What are the requirements for a "utility patent"?

Process for Securing Patent Rights
  • Patent application and filing fee to the USPTO.
  • Elements required in a patent application:

Preamble

Cross-References

Figure Descriptions

Claims

Drawings and Images

Oath or Declaration

For further written and video explanation, discussion and practice questions, see What is the process for securing patent rights?

What is a “Provisional Patent”?
  • Utility patent filing - preliminary, usually without any claims.
  • Complete non-provisional patent within one year of the first public use or disclosure.
  • Date of filing of the full patent is retroactive back to the date of filing of the provisional patent.
  • Benefits

Public Disclosure

Continued Research & Development

Pre-marketing

Public Notice

Confidentiality

Multiple Filings

For further written and video explanation, discussion and practice questions, see What is a "Provisional Patent"?

Enforcing One’s Patent Rights
  • Federal lawsuit
  • Prevent further use and to seek any damages suffered as a result of the infringement.
  • Award all profits , plus all costs and fees the holder incurred in exercising her rights.

For further written and video explanation, discussion and practice questions, see What is the process for enforcing patent rights?

What is a “Trademark”?
  • Any word, phrase, sign, symbol, logo, color, sound, design, shape, decor, or other distinctive element (collectively known as a “mark”)
  • Represents a business, brand, or commercial activity (sale of product or services).
  • Two objectives:

Business Protection

Consumer Confusion

For further written and video explanation, discussion and practice questions, see What is a "Trademark"?

Types of Trademark
  • Trademark
  • Service Mark
  • Certification Mark
  • Collective Mark
  • Trade Dress

For further written and video explanation, discussion and practice questions, see What are types of trademark"?

What is Required to Capture Trademark Rights
  • “distinctive” from other marks.
  • “state-law protection”.

⁃ statutory protections

⁃ common-law protection

  • “federal protection” -

⁃ File with US Patent and Trademark Office

⁃ Use the mark in interstate commerce.

For further written and video explanation, discussion and practice questions, see What is required to capture trademark rights?

What is “Distinctiveness” of a Trademark
  • Low likelihood of confusion
  • Classification of Distinctiveness

Arbitrary and Fanciful terms

Suggestive Marks

Descriptive Marks

Generic Marks

For further written and video explanation, discussion and practice questions, see What is the "Distinctiveness" requirement for a Trademark?

Process for Determining Distinctiveness
  • Secondary meaning
  • Is the mark descriptive of the product or service?

Dictionary Test

Imagination Test

Competitor Need or Use

  • Achieved secondary meaning
  • “in the minds of the public, the primary significance of the symbol is to identify the source of the product rather than identifying the product itself.”

Direct Evidence

Indirect Evidence

Exclusivity

Advertisement

Market Presence

Competitor Use

For further written and video explanation, discussion and practice questions, see What is the process for determining whether a trademark is sufficient distinctive?

Federal Trademark Registration
  • Filing for federal protection of a mark with USPTO
  • Appropriate and distinctive to consumers.
  • Must be used in “interstate commerce”.

⁃ Intent to Use

⁃ “Affidavit of Use”

  • Benefits of Federal Registration

⁃ Protection in every jurisdiction across the United States;

⁃ Presumption that the registration is valid

⁃ Notice to third-parties that the mark is in use;

⁃ Federal cause of action against an infringer

⁃ Aids in the process of international registration; and

⁃ Allows registration with the US Border and Customs Administration.

For further written and video explanation, discussion and practice questions, see What is "Federal Trademark Registration"?

State Law Trademark Protections
  • Statutory protections
  • Common law protection - First to use a particular mark in business or commerce within the state
  • Limits on State Trademark Protection

⁃ Not protected in areas outside of the state.

⁃ Only where carries on commercial activity.

For further written and video explanation, discussion and practice questions, see What protections exist for trademark rights under state law?

Reasons for Rejecting Trademark Application
  • The same or similar to another mark currently used on similar related goods,
  • The mark merely describes a product or service.
  • The mark is generic and represents a product or service, or
  • The mark contains certain prohibited or reserved names or designs.

Certain characteristics of marks that cannot be registered.

For further written and video explanation, discussion and practice questions, see What are the primary reasons for rejecting a trademark application"?

Common Trademark Designations
  • (“TM”) or ™
  • ®

For further written and video explanation, discussion and practice questions, see What are the common trademark designations?

Process for Filing Federal Trademark
  • Petitioner Information
  • Mark
  • Nature of Business
  • Filing Fee

For further written and video explanation, discussion and practice questions, see What is the process for filing for federal trademark registration?

What is “Trademark Infringement”?
  • Unauthorized use
  • Represent a business, brand, goods, or services
  • A strong likelihood of confusion for consumers
  • “Dilution”

⁃ Unauthorized use

⁃ Non-similar goods

⁃ Dilute the brand value of trademark

⁃ Elements:

⁃ Famous mark,

⁃ used in commerce,

⁃ association between trademark,

⁃ impairs distinctiveness.

For further written and video explanation, discussion and practice questions, see What is trademark infringement?

Enforcing Trademark Rights
  • State Law Rights
  • Federal Registration

For further written and video explanation, discussion and practice questions, see How does one enforce trademark rights?

Demonstrate Trademark Infringement
  • Mark causes a high “likelihood of confusion” for the general public

Mark

Business

Market or Industry

Notoriety

Intent or Purpose

Public

For further written and video explanation, discussion and practice questions, see How does a trademark holder demonstrate infringement of a trademark?

What is a “Copyright”?
  • Applicable to original expressions by the creator.
  • Unique method of expressing ideas or facts

For further written and video explanation, discussion and practice questions, see What is a copyright?

Rights of a Holder of a Copyright
  • Reproduce
  • Derivative Works
  • Distribution
  • Performance
  • Public Display

For further written and video explanation, discussion and practice questions, see What are the rights of a holder of a copyright?

Requirements to Establish Copyrights
  • Original Work
  • Affixed to a Tangible Medium
  • Creative Expression

For further written and video explanation, discussion and practice questions, see What are the requirements for establishing copyrights?

Period of Copyright Protection
  • When the copyright was created,
  • The length of the author’s life, and
  • Whether the creator was an individual or a firm.
  • 1998 or after
  • 1997 and before

⁃ Created, but not published

⁃ Copyrighted

For further written and video explanation, discussion and practice questions, see How long is the period of copyright protection?

Registering a Copyright
  • Not required unless bringing an infringement action
  • File with US Copyright Office.
  • Issue a certificate of copyright.

For further written and video explanation, discussion and practice questions, see What is the process for registering a copyright?

Claim and Secure Copyright Protections
  • Co-Creators of a Work
  • Jointly Owned Copyrights
  • Employees and Work for Hire
  • Work Agreements and Default Rules
  • Transfer and Licensing

For further written and video explanation, discussion and practice questions, see Who may claim and secure copyright protection?

Infringement and Enforcing Copyrights
  • Federal court action.
  • Must register her copyright prior to bringing a court action.
  • Provides a public record for the copyrighted work at the time of filing.
  • Seek an injunction from further infringement and any monetary damages suffered
  • Statutory damages

For further written and video explanation, discussion and practice questions, see What is infringement and the process for enforcing a copyright?

Defense to Copyright Infringement
  • Invalidity
  • License
  • Public Domain
  • Statute of Limitations
  • Accident
  • Fair Use Doctrine

⁃ Review of the material (such as critique or criticism);

⁃ Academic use (such as teaching the material or research);

⁃ Satire or other parody of the work; and

⁃ News or public commentary.

For further written and video explanation, discussion and practice questions, see What are the defenses available against a claim of copyright infringement?

What is “Fair Use”?
  • Not used to diminish the value of the copyright to the rightful holder.

Purpose of the Use

Nature of the Work

Extent of the Use

Economic or Market Impact

For further written and video explanation, discussion and practice questions, see What is "Fair Use" of a copyright?

What is the “First Sale Doctrine”?
  • Section 109 of the Copyright Act
  • provides a purchaser of a copyrighted item the ability to sell or otherwise dispose of the item without the permission of the copyright holder.

For further written and video explanation, discussion and practice questions, see What is the "First Sale Doctrine?

International Intellectual Property Protections
  • Trade-Related Aspects of Intellectual Property Rights (TRIPS)
  • World Intellectual Property Organization (WIPO)
  • Paris Convention for the Protection of Industrial Property of 1883 (Paris Convention)
  • Berne Convention for the Protection of Literary and Artistic Works (Berne Convention)
  • WIPO Copyright Treaty (WCT)
  • Madrid Protocol
  • Patent Copyright Treaty (PCT)
  • The Patent Law Treaty of 2000 (PLT)
  • Budapest Treaty on the International Recognition of the Deposit of Microorganisms for the Purpose of Patent Procedure (Budapest Treaty)
  • Anti-Counterfeiting Trade Agreement (ACTA)

For further written and video explanation of these Treaties, discussion and practice questions, see What international protections exist for intellectual property rights?


Flashcard - Study Practice

Q1
____________ is an intangible (not touchable) form of property or right.

Q2
The types of legally recognized intellectual property right include:

A2
Trade Secret; Copyright; Trademark; Patents

Resource Video: https://thebusinessprofessor.com/what-is-intellectual-property/

Q3
____________ Is Intra-firm information that has economic value, is not commonly known, and is subject to internal measures to protect the information from disclosure.

Q4
_____________ Is an original, creative work of authorship that is affixed to a tangible medium (printed, recorded, etc.)

Q5
____________ Is a distinctive word, symbol, logo, or other mark that is used in commerce to represent a business, its products, or services.

Q6
____________ are discoveries, designs, or inventions constituting patentable subject matter that is novel, non-obvious, and useful.

Q7
Generally, intellectual property rights afford the owner or a holder the right to ______________.

A7
exclude others from selling, importing, or otherwise commercializing the subject property.

Resource Video: https://thebusinessprofessor.com/what-is-intellectual-property/

Q8
The exclusive right to use or control property incentivizes ________________.

Q9
Intellectual Property rights are captured in Article 1, Section 8 of the US Constitution, which grants Congress the power to _____________.

A9
“promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries.”

Resource Video: https://thebusinessprofessor.com/justification-for-intellectual-property-rights/

Q10
_______________ created and extensive statutory and regulatory framework for the recognition and enforcement of intellectual property rights.

Q11
The requirements for securing intellectual property rights vary depending upon the type. Failure to file or meet a filing deadline could forfeit one’s rights to _______________.

Q12
Once intellectual property is in the public domain, an individual’s rights in the property are forfeited and cannot be recaptured. True of False.

Q13
The requirements for a trade secret includes business information that:

A13
has economic value from not being generally known to, or readily ascertainable by proper means by, others; and has been the subject of reasonable efforts by the owner to maintain secrecy.

Resource Videos: https://thebusinessprofessor.com/what-are-trade-secrets/

Q14
Trade secrets may include a broad range of company information, such as ______________.

A14
project or strategic plans, operational methods, customer lists, designs, and research and development.

Resource Videos: https://thebusinessprofessor.com/what-are-trade-secrets/

Q15
Trade secrets are protected under _____________ and many states have adopted forms of the _____________.

A15
common law; Uniform Trademark Secrets Act (UTSA).

Resource Videos: https://thebusinessprofessor.com/what-are-trade-secrets/

Q16
The theory behind liability is that an individual who misappropriates the information _______________.

A16
breaches a duty of loyalty owed to the owner.

Resource Videos: https://thebusinessprofessor.com/what-are-trade-secrets/

Q17
Trade secret rights never expire, unless the information loses economic value or is no longer kept secret by the company. True or False.

Q18
A patent is a form of intellectual property protection that covers ___________________ (collectively “invention”).

A18
products, processes, designs, and other creations

Resource Videos: https://thebusinessprofessor.com/overview-of-patents/

Q19
A patent conveys a right to exclude others from _______________.

A19
making, using, selling, or importing the covered invention. Patent rights are basically rights to exclude others.

Resource Videos: https://thebusinessprofessor.com/overview-of-patents/

Q20
Patent rights are the subject of federal law, and states may not grant or otherwise regulate patents. True of False.

Q21
The _______________ is a federal agency that administers the patent system. It reviews and grants petitions to secure patent rights.

A21
US Patent and Trademark Office (USPTO)

Resource Videos: https://thebusinessprofessor.com/overview-of-patents/

Q22
Consistent with other forms of intellectual property, the purpose or objectives of the patent system is to record and disclose patents to the public. The effect is to promote or provide an incentive for ______________.

A22
creation and innovation.

Resource Videos: https://thebusinessprofessor.com/overview-of-patents/

Q23
Patent rights do not confer the right to make, use, or sell a patented creation. True of False.

A23
True. These rights are subject to any laws, regulations, ordinances, etc., that pertain to and may limit rights to use this type of creation (such as environmental regulations, licensing, antitrust rules, consumer regulations, private contracts, etc.). Further, the patent holder may not use her patent in a manner that infringes on the rights of others.

Resource Videos: https://thebusinessprofessor.com/overview-of-patents/

Q24
There are three categories of patent, as follows:

A24
Utility patent, Design patent, Plant Patent

Resource Video: https://thebusinessprofessor.com/what-are-the-types-of-patent/

Q25
This type of patent generally covers the creation of a new composition of matter, function, or process. This includes machines, procedures, and chemical compounds.

Q26
This type of patent covers the pattern, design, or overall appearance (including ornamentation) of a product. It generally includes new, original, and ornamental or aesthetic design for an article of manufacture. It concerns appearance and is not related to function.

Q27
This type of patent covers the development of a new plant species through genetic engineering. This may include hybrid species of crops or a new variety of plant that can be reproduced asexually.

Q28
The subject of a claimed patent must be eligible for patent protection. Once determined to be patentable, a specific subject matter must be

A28
“novel” and “non-obvious”. Utility patents have an additional requirement and must also be “useful”.

Resource Video: https://thebusinessprofessor.com/requirements-of-a-valid-patent/

Q29
Novelty, in the context of a patent, means that the subject matter _____________________.

A29
cannot have previously been used, sold, or the subject of patent by another inventor within a year of the patent filing.

Resource Video: https://thebusinessprofessor.com/requirements-of-a-valid-patent/

Q30
There are two standards for novelty: ____________.

A30
1) the time that the item is disclosed to the public and 2) the time of filing.

Resource Video: https://thebusinessprofessor.com/requirements-of-a-valid-patent/

Q31
The subject of the patent cannot be ______________ prior to its creation in the US.

A31
known, used, or printed in a publication in this country. The creation may be known or used in a foreign country, but it cannot be in a printed publication in a foreign country before it is created in the US.

Resource Video: https://thebusinessprofessor.com/requirements-of-a-valid-patent/

Q32
The creation cannot have been previously disclosed to the US public more than ________________.

A32
one year prior to the filing of the patent application. This means that the item cannot be advertised or in use by the general public, the subject of a patent application in the US or any other country, or described in any publication prior to the application for patent.

Resource Video: https://thebusinessprofessor.com/requirements-of-a-valid-patent/

Q33
The non-obviousness requirement means that _____________.

A33
someone having ordinary skill in the field would not have a ready knowledge or understanding of the invention. Basically, if a creation is a logical embodiment of existing knowledge (items of creation already exposed to the world) it will not be eligible for patent protection.

Resource Video: https://thebusinessprofessor.com/requirements-of-a-valid-patent/

Q34
The average person in the field or industry is known as a ___________________.

A34
Person Having Ordinary Skill in The Art (PHOSITA).

Resource Video: https://thebusinessprofessor.com/requirements-of-a-valid-patent/

Q35
A utility patent (but not a design or plant patent) must be “useful”. This means that there must be ________________.

A35
some benefit or operational purpose to the invention. The petitioner must demonstrate that the creation serves an intended purpose.

Resource Video: https://thebusinessprofessor.com/requirements-of-a-valid-patent/

Q36
Design patents apply to ________________.

A36
”the visual ornamental characteristics embodied in, or applied to, an article of manufacture." More specifically, the design patent protects non-functional, purely form (shape or configuration) and aesthetic aspects of a patentable subject matter.

Resource Video: https://thebusinessprofessor.com/requirements-for-a-design-patent/

Q37
The design patent does not have to have “utility” (usefulness), as the protected creation is ornamental rather than functional in nature. True of False.

Q38
For a utility patent, the types of patentable subject matter are as follows:

A38
Process, Machine, Manufacture, Composition of Matter

Resource Video: https://thebusinessprofessor.com/patentable-subject-matter-for-a-utility-patent/

Q39
_____________ involves a method of carrying out an activity, the effort exerted to effectuate a change in a physical material that alters its character. This includes methods of communicating information, processes or methods (unique sequences of steps) in addressing a business objective.

Q40
_________ is a device or combination of devices that has some function or utility.

Q41
___________ is a finished creation that has utility but may not be mechanical or have moving parts.

Q42
___________ Is any mixture of ingredients or materials to form a new chemical compound or matter.

Q43
While novel inventions or discoveries may be susceptible of patent protection, there are several categories that are not capable of being patented:

A43
Naturally Occurring Substances; Laws of Nature; Physical Phenomena; Abstract ideas; Fundamental Truths; Calculation Methods; Mathematical Formulas

Resource Video: https://thebusinessprofessor.com/patentable-subject-matter-for-a-utility-patent/

Q44
Obtaining a patent requires submitting a patent application and filing fee to ________________.

A44
the United States Patent and Trademark Office (USPTO).

Resource Video: https://thebusinessprofessor.com/process-for-filing-for-patent-protection/

Q45
The various elements required in a patent application include the following:

A45
Preamble; Specification; Cross-references; Figure Descriptions; Claims; Drawings and Images; Oath or Declaration.

Resource Video: https://thebusinessprofessor.com/process-for-filing-for-patent-protection/

Q46
The preamble contains ________________.

A46
the Name of Applicant, Title of the Invention/Design, and Description of the Creation.

Resource Video: https://thebusinessprofessor.com/process-for-filing-for-patent-protection/

Q47
A utility patent contains what is commonly referred to as the ____________ , which describes how the underlying invention or design will be used.The applicant will also describe the “best mode” of production of the invention. This section may also include references to or elaborate upon the description of the individual portions of the drawings.

Q48
Often a patent builds upon existing art or patented designs. If this is the case, the application should include a citation to ___________.

Q49
The __________ is the claimed aspects of the creation or design that is the subject of the patent application.

Q50
Utility patents will generally contain multiple claims targeting specific aspects of the invention. In a design patent application, because the entire design (including all individual components) is considered in the design application, only ______ claim is allowed.

Q51
The application must contain an Oath or Declaration statement certifying that the petitioner is ____________.

A51
the claimed inventor or designer, as these are the only individuals who can secure patent protections.

Resource Video: https://thebusinessprofessor.com/process-for-filing-for-patent-protection/

Q52
A __________ is a utility patent filing that does not necessarily include any claims that the filer can file a complete provisional patent within one year of the first public use or offer for sale of the invention. This then allows the filer one year from the date of disclosure to file for a non-provisional, utility patent.

A52
provisional patent. Basically, the provisional patent allows inventors to file and disclose the invention, and the date of filing of the non-provisional patent is retroactive back to the date of filing of the provisional patent.

Resource Video: https://thebusinessprofessor.com/what-is-a-provisional-patent/

Q53
The benefits of completing a provisional patent filing are as follows:

A53
Public Disclosure - This disclosure starts the one-year period to file a non-provisional patent. Continued Research & Development - The non-provisional patent provides protection while continuing to develop the product and research the market. Pre-marketing - Filing the provisional application allows the inventor to market the product with a degree of protection while the non-provisional patent application is in the works; Public Notice - The filing provides notice to the world that the creation (to the extent disclosed) is or will be subject to intellectual property rights (i.e., “patent pending”) and should not be copied for commercial purposes; Confidentiality - Leaving off the claimed attributes keeps elements of the patent confidential (as it is not yet fully disclosed to the public); and Multiple Filings - The filer can file multiple provisional patents and later incorporate them all into a single, non-provisional patent application.

Resource Video: https://thebusinessprofessor.com/what-is-a-provisional-patent/

Q54
If anyone infringes upon a patent holder’s valid patent, the holder may _____________.

A54
bring a federal lawsuit to prevent further use and to seek recovery of damages suffered as a result of the infringement.

Resource Video: https://thebusinessprofessor.com/process-for-enforcing-patent-rights/

Q55
The grounds for a patent infringement action must demonstrate one of the following types of infringement:

A55
Direct Infringement - This means the direct production and sale of a product protected by patent.

Indirect Infringement - This means inducing or encouraging an infringer.

Contributory Infringement - This means assisting in the infringement process - such as producing parts or elements of an invention that are known will be assembled into a patent-infringing product.

Literal Infringement - This means that the infringing product or process directly infringes some of the stated terms in the patent filing.

Doctrine of Equivalents - A creation that does not literally infringe upon an invention as written in the patent may still be an infringement if it functions the same manner to achieve the same function. This doctrine is commonly employed in mechanical devices and computer software.

Resource Video: https://thebusinessprofessor.com/process-for-enforcing-patent-rights/

Q56
A ____________ is a form of intellectual property right dedicated to any word, phrase, sign, symbol, logo, color, sound, design, shape, decor, or other distinctive element (collectively known as a “mark”) that represents a business, brand, or commercial activity (sale of the product or services).

Q57
Trademark law has two objectives:

A57
Business Protection - It allows the owner of the trademark to prevent others from infringing upon that business’s identity; and Consumer Confusion - It protects consumers from confusion regarding the business or commercial activity represented by the mark.

Resource Video: https://thebusinessprofessor.com/overview-of-trademarks/

Q58
____________ Is any mark, word, picture, or design that attaches to goods to indicate their source.

Q59
_____________ Is a mark associated with a service.

Q60
____________ Is a mark used by someone other than the owner to certify the quality, point of origin, or other characteristics of goods or services.

A60
Certification Mark

Resource Video: https://thebusinessprofessor.com/types-of-trademark/

Q61
______________ Is a mark representing membership in a certain organization or association.

A61

Q62
______________ Is broader than a single mark. It protects the overall appearance of a business, product, or service. It may include colors or shapes, architectural design, distinctive store decorating motifs or package shapes and colors. It encompasses the “total image and overall appearance” of a business.

Q63
Trademark law requires that a mark be _______________ and _______________ to be capable of protection.

A63
“used in commerce” and “distinctive” from other marks.

Resource Video: https://thebusinessprofessor.com/capturing-trademark-rights/

Q64
There are two primary methods of securing trademark protection, including:

A64
“state-law protection” and “federal protection”

Resource Video: https://thebusinessprofessor.com/capturing-trademark-rights/

Q65
A proposed trademark must be _____________. This means that the mark cannot be so similar to another mark that it causes consumers to confuse the brand or entity associated with that mark.

Q66
The following are degrees of trademark distinctiveness:

A66
Fanciful, Arbitrary, Suggestive, Descriptive, and Generic.

Resource Video: https://thebusinessprofessor.com/distinctiveness-requirement-for-trademark/

Q67
A ____________ has no other meaning. It is created to represent the commercial activity claiming trademark rights.

Q68
An ____________ is the association of an existing word or symbol with a commercial activity that has no relation or logical connection to that mark.

Q69
A __________ somehow suggests the underlying business or entity represented by the mark. It does not describe the entity, or its product or service, but something about the mark somehow relates to or helps the consumer understand the brand or entity that the mark represents. It generally requires a certain level of cognition, creativity, or imagination in how the product is perceived.

Q70
A __________ describes in some way the product or service represented. This can include information about or allude to the nature, characteristics, geography, or qualities of the product or service.

Q71
For a descriptive mark to qualify for trademark protection, the owner must demonstrate that the mark has achieved ____________.

A71
“secondary meaning” beyond the literal definition of the mark.

Resource Video: https://thebusinessprofessor.com/distinctiveness-requirement-for-trademark/

Q72
A ___________ is not capable of trademark protection. Generally, the mark is not distinctive because it represents a type or class of commercial activity (product, service, etc.).

Q73
The trademark office or a court will use several tests to determine whether a mark is descriptive (as apposed to arbitrary and fanciful, suggestive, or generic).

A73
Dictionary Test – This test seeks to determine the ordinary significance and meaning of the word as demonstrated by a dictionary.

Imagination Test – This examines whether the meaning of the mark is obvious, or whether it requires some level of imagination or thought to determine the represented good or service.

Competitor Need or Use – Do competitors need to actively use the claimed mark for their customers to recognize or understand what their product or service does.

Resource Video: https://thebusinessprofessor.com/secondary-meaning-for-descriptive-marks/

Q74
Secondary meaning is present when, _____________.

A74
“in the minds of the public, the primary significance of the symbol is to identify the source of the product rather than identifying the product itself.”

Resource Video: https://thebusinessprofessor.com/secondary-meaning-for-descriptive-marks/

Q75
A court may use various forms of evidence to determine whether secondary meaning exists:

A75
Direct Evidence - Direct input from customers, such as through testimony or surveys. Indirect Evidence - Indirect evidence may include: Exclusivity - Whether the business exclusively uses the mark, or how it is used in the market and for how long; Advertisement - To what extent does or has the business advertised the mark as a representation of the business; Market Presence - What presence does the mark have in the market (market percentage or market awareness of the brand as a result of the mark); and Competitor Use - Proof that other businesses intentionally copy the mark to achieve market awareness of their business.

Resource Video: https://thebusinessprofessor.com/secondary-meaning-for-descriptive-marks/

Q76
_______________ is the process for filing for federal protection of a mark representing a business or commercial activity.

A76
Federal registration of a trademark

Resource Video: https://thebusinessprofessor.com/federal-registration-of-a-trademark/

Q77
The federal statutes governing the registration of trademarks are found in ________________. This group of laws is known as the “Lanham Act”.

A77
The US Code of Statutes, 15 USC, sections 1051-1127.

Resource Video: https://thebusinessprofessor.com/federal-registration-of-a-trademark/

Q78
Federal registration requires that a trademark application meet the aforementioned requirements and be used in ____________.

A78
“interstate commerce”. This generally means that the mark is used in a manner that is not solely limited to in-state activity.

Resource Video: https://thebusinessprofessor.com/federal-registration-of-a-trademark/

Q79
If a business is not currently using the mark in commerce, it may file an __________ application along with a filing fee.

A79
“intent-to-use”. This allows an 18-month period to begin using the mark in commerce.

Resource Video: https://thebusinessprofessor.com/federal-registration-of-a-trademark/

Q80
The filing requirement arises every ________ years following the initial filing. The holder will have to file an “affidavit of use” _______ years after the date of filing to certify that the mark is still in use.

Q81
Some of the major advantages of federal registration of a trademark are as follows:

A81
Protection in every jurisdiction across the United States; Creates a presumption that the registration is valid in the event of a dispute over trademark rights; Provides notice to third-parties that the mark is in use; Allows for a federal cause of action against an infringer (and there is a presumption of willful infringement); Aids in the process of international registration; and Allows for the mark to be registered with the US Border and Customs Administration to prevent the importation of counterfeit goods.

Resource Video: https://thebusinessprofessor.com/federal-registration-of-a-trademark/

Q82
States often pass statutes or provide administrative procedures allowing the public to file or register trademarks that are used in commerce within the state. In addition to the statutory protections provided by some states, every state provides for ________ protection of trademark rights.

A82
common-law. That is, an individual has the ability to legally enforce her rights in a trademark via state, common-law remedies.

Resource Video: https://thebusinessprofessor.com/state-protection-for-trademarks/

Q83
State common-law protection of trademark rights arises when ____________.

A83
an individual or business is the first to use a particular mark in business or commerce within the state and no other business has federal trademark protection.

Resource Video: https://thebusinessprofessor.com/state-protection-for-trademarks/

Q84
State trademark protections have significant limitations, including:

A84
the mark is not protected in areas outside of the state.

Resource Video: https://thebusinessprofessor.com/state-protection-for-trademarks/

Q85
Whether pursuant to common law, state or federal registration, there are several common reasons for denying trademark protection of a prospective mark. Some of the more common reasons are as follows:

A85
the mark is the same or similar to a mark currently used on similar related goods; the mark merely describes a product or service; the mark is generic and represents a product or service; or the mark contains certain prohibited or reserved names or designs.

Resource Videos: https://thebusinessprofessor.com/reasons-for-rejecting-a-trademark/

Q86
Pursuant to the USPTO examination guide, there are certain characteristics of marks that cannot be registered. The following is a non-exclusive list of several major types of these marks:

A86
contains the US Flag; coats of arm; insignia of the United States, any state or municipality, foreign nation, or any simulation thereof; are in some way immoral, deceptive, or scandalous; trade names (that are not used to identify the goods or services); trade dress that has functionality or lacks distinctiveness; purely ornamental or decorative marks; color marks that are not distinctive; universal symbols used incorrectly; immoral or scandalous matter; deceptive matter; matter that may disparage; matter that may falsely suggest a connection (with persons, institutions, beliefs, or national symbols; matter that may bring someone into contempt or disrepute; contain the name, likeness or signature of living persons without their consent; and are too similar to existing trademarks registered with the USPTO

Resource Videos: https://thebusinessprofessor.com/reasons-for-rejecting-a-trademark/

Q87
The traditional trademark designation is (“TM”) or ™. Anyone who uses a distinctive mark may employ this symbol to __________.

A87
put others on notice of the trademark claim.

Q88
If a trademark is registered with the USPTO, the trademark owner can use the symbol _______.

A88
®

Q89
The following information is required for every trademark application:

A89
Petitioner Information - Name of applicant; address for correspondence (may be name and address of agent). Mark - The petition must provide a demonstration of the mark, such as a rendering, photo, or computer image. Nature of Business - The petition must designate of class of or actual product(s) or service(s) represented by the mark. Filing Fee - The application must accompany the corresponding filing fee.

Resource Video: https://thebusinessprofessor.com/process-for-filing-a-federal-trademark/

Q90
________________ involves the unauthorized use of the protected mark or a similar mark to represent a business, brand, goods, or services, other than those of the trademark holder.

Q91
The most common form of trademark infringement is through _____________.

A91
the production and sale of counterfeit goods.

Resource Video: https://thebusinessprofessor.com/what-is-trademark-infringement/

Q92
Another form of infringement is known as ____________, which concerns the harm to a famous mark caused by unauthorized use with non-similar goods in a manner that is not likely to cause confusion. That is, the law prevents use of certain trademarks (well-known or famous marks) by anyone other than the holder, even if there is no risk of consumer confusion.

A92
Dilution. The idea is that use of the trademark may dilute the brand value of the federal trademark holder.

Resource Video: https://thebusinessprofessor.com/what-is-trademark-infringement/

Q93
Pursuant to the Federal Trademark Dilution Act of 1995 and Trademark Dilution Revision Act, dilution of a trademark occurs when:

A93
A trademark becomes so commonly known by the public that it considered “famous”; A third party (alleged infringer) is using a mark in commerce that causes the trademark to lose its distinctiveness in the market; The similarity between the defendant’s mark and the famous mark gives rise to association between the marks; and The association between the marks is likely to impair the distinctiveness of the famous mark or harm its reputation.

Resource Video: https://thebusinessprofessor.com/what-is-trademark-infringement/

Q94
If a claimed trademark (that is in commercial use) conflicts with another, the method or ability to enforce the trademark will vary depending on the rights associated with the mark. In the absence of a state statute, common law rights in a mark can be enforced within ___________.

A94
the jurisdictions in which it is actively used.

Resource Video: https://thebusinessprofessor.com/enforcing-trademark-rights-2/

Q95
A federally registered mark can be enforced throughout the United States. Enforcement of a trademark generally begins with a __________, which is a communication sent by the owner of a mark to the user of an allegedly conflicting mark demanding the user stop using that conflicting mark or stop using it in the current manner.

A95
“Cease and desist” letter

Resource Video: https://thebusinessprofessor.com/enforcing-trademark-rights-2/

Q96
Proving trademark infringement requires a showing the other business’s use of the mark causes ____________.

A96
a high “likelihood of confusion” for the general public regarding the business, product, or service represented by the mark.

Resource Video: https://thebusinessprofessor.com/infringing-upon-a-protected-trademark/

Q97
In determining whether a mark is confusingly similar, some of the primary considerations are as follows:

A97
Mark - How similar in appearance or language are the marks?

Business - How similar are the goods or services represented by the mark? What are the differences? Is the mark used on several types of product or service?

Market or Industry - Are the businesses competitors? Same target markets? Same geography? Same stores? Same type of customer? What is the competitive differences (any differentiation or cost differences)? How are they advertised (similar marketing practices)? What is the economic significance of the mark to each party?

Notoriety - How well known is each mark? How long has each mark been in use? What do customer surveys say about mark and brand association?

Intent or Purpose - Was the alleged infringer aware of the mark before employing her mark? This goes to determining whether the infringement is intentional or inadvertent.

Public - What is the extent of potential confusion to the customer? Will a customer mistake the company or brand behind a product as a result of the mark? Will the customer believe that the placement of the conflicting mark is an endorsement by the owner of the valid trademark?

Resource Video: https://thebusinessprofessor.com/infringing-upon-a-protected-trademark/

Q98
___________ is a form of intellectual property protection applicable to original expressions by the creator.

Q99
The primary federal law governing copyrights is ________________.

A99
the Copyright Act of 1976.

Resource Video: https://thebusinessprofessor.com/overview-of-copyrights/

Q100
Section 102 of the Copyright Act identifies several categories of protectable subject matter, “original expression”, as follows:

A100
literary, musical, dramatic, pictorial, graphic, sculptural, audiovisual, and architectural works.

Resource Video: https://thebusinessprofessor.com/overview-of-copyrights/

Q101
Section 102 also excludes several categories:

A101
facts, page numbers, mathematical equations, ideas, procedures, processes, systems, methods of operation, concepts, principle, or discovery.

Resource Video: https://thebusinessprofessor.com/overview-of-copyrights/

Q102
A copyright holder has exclusive rights to the following:

A102
Reproduce - The holder of a copyright has the ability reproduce and distribute the protected work.

Derivative Works - The holder may prepare derivative works based on the original work.

Distribution - The holder may distribute copies or reproductions of the work by sale, lease or other transfer of ownership.

Performance - The holder may publicly perform the work.

Public Display - The holder may publicly display the work.

Resource Video: https://thebusinessprofessor.com/rights-of-holder-of-a-copyright/

Q103
Copyright protection arises when an expression meets the following requirements:

A103
Original Work - The expression must be the original work or creation of the author. Affixed to a Tangible Medium - The creative expression must be affixed to a tangible medium. Creative Expression - The expression must show some aspects of creativity.

Resource Videos: https://thebusinessprofessor.com/elements-of-a-copyright/

Q104
Pursuant to the ____________, an expression that meets the requirements for copyright receive automatic protection.

A104
Copyright Act of 1976

Resource Videos: https://thebusinessprofessor.com/elements-of-a-copyright/

Q105
Whether registered or not, the owner of a copyrighted work may use the symbol “© ” to indicate her claimed rights in the work. True or False.

Q106
The length of time of copyright protection depends upon three factors:

A106
When the copyright was created; The length of the author’s life; and Whether the creator was an individual or a firm.

Resource Video: https://thebusinessprofessor.com/time-period-for-copyright-protection/

Q107
Generally, a work created after January 1, 1978 is automatically protected for a period of ______ past the life of the last living creator.

Q108
Works created by entities (by employees or works for hire) are protected for the lesser of ___________.

A108
95 years from the date of publication or 120 years from the date of creation.

Resource Video: https://thebusinessprofessor.com/time-period-for-copyright-protection/

Q109
if a work was created prior after 1977 and before 2002, but not published or subject to copyright, the copyright is guaranteed a minimum of ______ years of protection based the date of creation. If the copyright is subsequently published during this window, the period is extended to ___ years.

A109
Twenty-five (25); Seventy (70)

Resource Video: https://thebusinessprofessor.com/time-period-for-copyright-protection/

Q110
If the pre-1978 copyright was subject to copyright protection, the 1909 Act applies to the work. In this case, the work receives _____ years of protection from the date of creation. The protections can be extended for an additional ________ years upon application during the last year.

A110
Twenty-eight (28); Twenty-eight (28)

Resource Video: https://thebusinessprofessor.com/time-period-for-copyright-protection/

Q111
Copyright registration is done by filing in the _____________.

A111

Q112
Only the creator of the work (or individual contracting for the creation of the work) may secure copyright protection. True of False.

A112
True - The copyright may later be licensed or assigned, but the original creator must originally secure those rights.

Resource Video: https://thebusinessprofessor.com/who-can-claim-copyright-protection/

Q113
Co-Creators of a Work - When more than one creator takes part in the creation of the work, there is a presumption that each party ____________.

A113
owns the work (and attached copyright) equally. Of course, the parties can enter into a contract establishing ownership rights in the creation.

Resource Video: https://thebusinessprofessor.com/who-can-claim-copyright-protection/

Q114
An individual or firm may own a copyright created by ___________.

A114
a third party if the third party is an employee or independent contractor hired for the purpose of creating such a work.

Resource Video: https://thebusinessprofessor.com/who-can-claim-copyright-protection/

Q115
Work made for an employer by an employee or independent contractor generally belongs to the employer if it was created ______________.

A115
within the scope of employment.

Resource Video: https://thebusinessprofessor.com/who-can-claim-copyright-protection/

Q116
Employers should use an ________________ to address the issue of ownership of intellectual property created by the worker.

A116
employment agreement or work-for-hire agreement (independent contractor agreement)

Resource Video: https://thebusinessprofessor.com/who-can-claim-copyright-protection/

Q117
Examples of creation within the scope of a contracted relationship include:

A117
a new creation that is the subject of the work relationship; any addition to or modification of an existing work product (except for entries to magazines, blogs, encyclopedias, or other collaborative works with open entry); any material constituting a part of a larger contracted work; translations of an existing work; compilations of multiple parts of a work product; and designs or planning material giving rise to the work product.

Resource Video: https://thebusinessprofessor.com/who-can-claim-copyright-protection/

Q118
The owner of a copyright may transfer the copyright or license its use to any third-party individual or firm. True of False.

Q119
____________ occurs when a copyrighted work or some portion of the work is reproduced, distributed, performed, or displayed without authority.

Q120
A copyright holder can bring a federal lawsuit against someone infringing upon the copyright. To do so, the copyright holder must first ________________ prior to bringing the action.

A120
register her copyright prior to bringing a federal court action.

Resource Video: https://thebusinessprofessor.com/what-is-the-process-for-enforcing-a-copyright/

Q121
A registered copyright is presumed valid if the copyright is registered within ____ years of creation.

Q122
The following doctrines or laws provide a defense for an alleged copyright infringer:

A122
Invalidity - The defendant may show that the owner’s copyright is invalid.

License - The defendant may demonstrate that she has a valid license.

Public Domain - The defendant may successfully argue that the work is in the public domain.

Statute of Limitations - The defendant may argue that the statute of limitations for enforcement of an infringement action has run.

Accident - The defendant may claim unknowing or innocent infringement.

Fair Use Doctrine - The fair use doctrine claims that there is a valid an legal use of the copyrighted work that does not infringe upon the holder’s rights.

Resource Video: https://thebusinessprofessor.com/defenses-to-a-claim-of-copyright-infringement/

Q123
Examples of types of use of a copyrighted work constituting fair use include:

A123
review of the material (such as critique or criticism); academic use (such as teaching the material or research); satire or other parody of the work; and news or public commentary.

Resource Video: https://thebusinessprofessor.com/defenses-to-a-claim-of-copyright-infringement/

Q124
To constitute fair use, the use of the work generally must not be extensive and not cause a negative impact on the copyright holder. In determining whether use of a copyright constitutes fair use, a court will employ several factors in examining the nature and extent of the use, including:

A124
Purpose of the Use - If the purpose of the use was for a non-profit purpose, it is more likely to be protected as a fair use than a commercial activity.

Nature of the Work - What type of copyright is claimed. If the work was created for a commercial purpose, it may demand higher protection.

Extent of the Use - If the use was incidental or a very small portion of the work was used, it is more likely to be a fair use.

Economic or Market Impact - If the use of the copyrighted work causes a negative market or economic impact on the use or value of the original work, it is less likely to be fair use.

Resource Video: https://thebusinessprofessor.com/what-is-fair-use-of-a-copyright/

Q125
Section 109 of the Copyright Act provides a purchaser of a copyrighted item the ability to sell or otherwise dispose of the item without the permission of the copyright holder.

A125
This is known as the “first-sale doctrine”. It stands for the proposition that a copyright holder cannot control a copyrighted item after it has been sold or transferred.

Resource Video: https://thebusinessprofessor.com/what-is-the-first-sale-doctrine/

Q126
_____________ is a model agreement promulgated and administered with the World Trade Organization (WTO) that includes standards for recognition and protection of intellectual property rights.

A126
Trade-Related Aspects of Intellectual Property Rights (TRIPS)

Resource Video: https://thebusinessprofessor.com/international-protection-of-intellectual-property/

Q127
_____________ is an agency of the United Nations charged specifically with promoting economic development through the facilitation of intellectual property recognition and protection among member countries.

A127
World Intellectual Property Organization (WIPO)

Resource Video: https://thebusinessprofessor.com/international-protection-of-intellectual-property/

Q128
_____________ was one of the first treaties focusing on the recognition and protection of intellectual property rights. It is administered by the WTO.

A128
Paris Convention for the Protection of Industrial Property of 1883 (Paris Convention)

Resource Video: https://thebusinessprofessor.com/international-protection-of-intellectual-property/

Q129
___________ is an intergovernmental treaty administered by WTO that focuses on protecting copyrights among signatory nations.

A129
Berne Convention for the Protection of Literary and Artistic Works (Berne Convention)

Resource Video: https://thebusinessprofessor.com/international-protection-of-intellectual-property/

Q130
___________ is a WIPO administered treaty focusing on copyright protection among signatory nations. It focuses on the copyright protection of information technology, computer software, and program design.

Q131
_____________ is an amendment to the Madrid system for International Registration of Marks that allows for the multi-jurisdictional registration of trademarks throughout signatory countries.

Q132
_____________ is a treaty among WTO countries concerning the recognition and protection of patent rights. It provides a uniform system for filing for patent protections within signatory countries, known as the “international Patent Cooperation Union”.

Q133
_______________ is a treaty among 59 countries establishing uniform procedures in the patent filing process. It seeks to resolve issues unresolved under the PCT.

A133

Q134
_______________ is a WIPO administered international treaty and for states that are a party to the Paris Convention. It provides an international patent procedure for microorganisms.

A134
Budapest Treaty on the International Recognition of the Deposit of Microorganisms for the Purpose of Patent Procedure (Budapest Treaty)

Resource Video: https://thebusinessprofessor.com/international-protection-of-intellectual-property/

Q135
____________ is an international treaty focusing on intellectual property protection and enforcement by preventing counterfeit goods and copyright infringement.

A135
Anti-Counterfeiting Trade Agreement (ACTA)

Resource Video: https://thebusinessprofessor.com/international-protection-of-intellectual-property/


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