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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?
Intellectual property is an intangible (not touchable) form of property or right. The types of legally recognized intellectual property right include: Trade Secrets - Intra-firm information that has economic value, is not commonly known, and is subject to internal measures to protect the information from disclosure. Copyrights - An original, creative work of authorship that is affixed to a tangible medium (printed, recorded, etc.) Trademarks - A distinctive word, symbol, logo, or other mark that is used in commerce to represent a business, its products, or services. Patents - Discoveries, designs, or inventions constituting patentable subject matter that is novel, non-obvious, and useful. Generally, intellectual property rights afford the owner or a holder the right to exclude others from selling, importing, or otherwise commercializing the subject property. For further written and video explanation, discussion and practice questions, see What is "Intellectual Property"?
Purpose of Granting Intellectual Property Rights
Like other forms of tangible property, the rights associated with intellectual property incentivize individual productivity. The exclusive right to use or control property also incentivizes creativity. This belief is captured in Article 1, Section 8 of the US Constitution, which grants Congress the power “to 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.” In furtherance of this purpose, the Federal Government created and extensive statutory and regulatory framework for the recognition and enforcement of intellectual property rights. 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
The requirements for securing intellectual property rights vary depending upon the type. For example, some types of intellectual property may require filing with a government agency. Failure to file or meet a filing deadline could forfeit one’s rights to the “public domain”. Once intellectual property is in the public domain, an individual’s rights in the property are forfeited and cannot be recaptured. This is just one simple example of many separate requirements that may apply when attempting to secure rights in a particular item of intellectual property. The requirements for securing rights in intellectual property are discussed separately. 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”
A trade secret is a form of intellectual property specific to individuals or businesses involved in a trade or industry. More specifically, it is any form of knowledge or information that: 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. Trade secrets may include a broad range of company information, such as project or strategic plans, operational methods, customer lists, designs, and research and development.
Trade secrets are protected under common law and many states have adopted forms of the Uniform Trademark Secrets Act (UTSA). Both provide causes of action against individuals who misappropriate the information kept as a trade secret. The theory behind liability is that an individual who misappropriates the information breaches a duty of loyalty owed to the owner. Trade secret rights never expire, unless the information loses economic value or is no longer kept secret by the company. For further written and video explanation, discussion and practice questions, see What are "Trade Secrets?
Trade secrets are protected under common law and many states have adopted forms of the Uniform Trademark Secrets Act (UTSA). Both provide causes of action against individuals who misappropriate the information kept as a trade secret. The theory behind liability is that an individual who misappropriates the information breaches a duty of loyalty owed to the owner. Trade secret rights never expire, unless the information loses economic value or is no longer kept secret by the company. For further written and video explanation, discussion and practice questions, see What are "Trade Secrets?
What are “Patents’
A patent is a form of intellectual property protection that covers products, processes, designs, and other creations (collectively “invention”). A patent conveys a right to exclude others from making, using, selling, or importing the covered invention. Patent rights are basically rights to exclude others. They protect against copies or unauthorized reproductions of the patented item. Patent rights are the subject of federal law, and states may not grant or otherwise regulate patents. The US Patent and Trademark Office (USPTO) is a federal agency that administers the patent system. It reviews and grants petitions to secure patent rights. 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 trade off for public disclosure of the invention process is protection of limited rights in the property. The effect is to promote or provide an incentive for creation and innovation. The belief is that innovation is a benefit to society. Providing an individual the right to exclude others from reproducing her creation for commercial purposes allows her to capitalize on her creation without competition. Patent rights last for a statutory period of time (14 or 20 years). Contrary to popular belief, patent rights do not confer the right to make, use, or sell a patented creation. 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. For further written and video explanation, discussion and practice questions, see What are patents or patent rights?
Primary Types of Patent
There are three categories of patent, as follows: Utility Patents - This generally covers the creation of a new composition of matter, function, or process. This includes machines, procedures, and chemical compounds. These creations must be a novel (new), non-obvious, and useful. The term of protection is 20 years from the date of filing. Design Patents - This 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. The term of protection is 14 years from date of issue. Plant Patents - This 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. The term of protection is 20 years from date of filing. Utility patents are commonly employed by firms with the objective of creating innovative products or processes. Design patents, on the other hand, are the focus of aesthetic differentiation for new or existing products. Plant patents serve an important role in the development of greater food production methods and genetically modified strains of plant that produce more and better withstand environmental pressures. For further written and video explanation, discussion and practice questions, see What are the primary types of patents?
Requirements for a Valid Patent
The subject of a claimed patent must be eligible for patent protection. Eligible subject matter varies slightly depending upon the type of patent. That is, a design patent must attach to some physical item, while a utility patent has a broader range of potential subject matter. Once determined to be patentable, a specific subject matter must be “novel” and “non-obvious”. These two requirements apply to all types of patents. Utility patents have an additional requirement and must also be “useful”. Novelty - To qualify for patent protection, a creation must be novel. Novelty, in this context, goes beyond the requirement for newness. The subject matter cannot have previously been used, sold, or the subject of patent by another inventor within a year of the patent filing. In summary, this means that the patented item does not currently exist in the claimed form. There are two standards for novelty: 1) the time that the item is disclosed to the public and 2) the time of filing. Time of Disclosure: The subject of the patent cannot be known, used, or printed in a publication in this country prior to its creation in the US. 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. This generally means that if the item was previously known or in use by the public prior to the date of disclosure by the patent filer, it cannot be patented by someone other than the original discloser. Time of Filing Application: The creation cannot have been previously disclosed to the US public more than 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. It cannot have been the subject of a patent application in the US or any other country. Further, it cannot be used or described in any publication prior to the application for patent. Non-Obviousness - The non-obviousness requirement means that someone having ordinary skill in the field would not have a ready knowledge or understanding of the invention. That is, it cannot be readily or commonly understood to the average person in that field or industry. The average person in the field or industry is known as a Person Having Ordinary Skill in The Art (PHOSITA). 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. As such, the USPTO will examine all prior creations (prior art) in that field to see whether the PHOSITA would deem the proposed creation to be non-obvious. Usefulness - Lastly, a utility patent (but not a design or plant patent) must be “useful”. This means that there must be some benefit or operational purpose to the invention. The petitioner must demonstrate that the creation serves an intended purpose. Even if the item is not currently in use and serving a purpose, it must address some theoretical need that could arise in the future. For further written and video explanation, discussion and practice questions, see What are the requirements for a valid patent?
Requirements for a Design Patent
Design patents apply to "the visual ornamental characteristics embodied in, or applied to, an article of manufacture." So, the subject matter of a design patent application must be the ornamental characteristics applied to a physical item. More specifically, the design patent protects non-functional, purely form (shape or configuration) and aesthetic aspects of a patentable subject matter. The item must still meet the subject-matter requirements for a patent, as the design must be inseparable from the item to which it is attached. The design of the creation must also meet “novelty” and “non-obviousness” requirements. The design does not have to have “utility” (usefulness), as the protected creation is ornamental rather than functional in nature. For further written and video explanation, discussion and practice questions, see What are the requirements for a design patent?
Requirements for a Utility Patent
A utility patent protects how something functions or the method in which it is employed. The 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. It may also include improvements on any of these inventions or discoveries that meet the previously-discussed requirements for patentability. The types of patentable subject matter are as follows: Process - This involves a method of carrying out an activity. It may also involve 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. Machine - This is a device or combination of devices that has some function or utility. Manufacture - An article of manufacture is a finished creation that has utility but may not be mechanical or have moving parts. Composition of Matter - Any mixture of ingredients or materials to form a new chemical compound or matter. While novel inventions or discoveries may be susceptible of patent protection, there are several categories that are not capable of being patented: Naturally Occurring Substances - Examples would include naturally occurring minerals or elements. Laws of Nature - Examples include gravity, inertia, or atrophy. Physical Phenomena - Examples may include the northern lights, earthquakes, tornadoes, hurricanes, and plant or animal growth. Abstract ideas - Examples may include scientific hypotheses, such as the big bang theory or human evolution. Fundamental Truths - Examples may include religious or political beliefs innate to a system of belief or governance, such as the ideas that all individuals are created equal. Calculation Methods - Examples of methods of calculating things include Celsius, Fahrenheit, or Jules. Mathematical Formulas - Examples include mathematical formula that demonstrate or explain activity, such as E=MC2. These categories include practically everything made by humans and the processes for making those things. Remember, once the utility patent meets the subject-matter requirement, the application must demonstrate that it is “novel”, “nonobvious”, and “useful”. For further written and video explanation, discussion and practice questions, see What are the requirements for a "utility patent"?
Process for Securing Patent Rights
Obtaining a patent requires submitting a patent application and filing fee to the United States Patent and Trademark Office (USPTO). There are no common law or state patent protections. A patent attorney at the USPTO will review the application to make certain that the intended patent meets all requirements. Notably, the applicant must file the patent application within one year of publicly disclosing the invention (including presenting or selling it) to meet the novelty requirement.The various elements required in a patent application include the following: Preamble - The preamble contains the Name of Applicant, Title of the Invention/Design, and Description of the Creation. A utility patent may require background information about the invention or creation process. This section contains what is commonly referred to as the specification(s), which describes how the underlying invention or design will be used. In a utility patent, the applicant will give a detailed description of the invention. It should describe the utility of the invention and how it is differentiated with regard to other art in the field. 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. Cross-References - Often a patent builds upon existing art or patented designs. If this is the case, the application should include a citation to any Cross-Referenced Patents. Figure Descriptions - These are descriptions of referenced sections of drawings of the claimed invention or design. Claims - The claim is the claimed aspects of the creation or design that is the subject of the patent application. 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 one claim is allowed. Drawings and Images - A patent application should include detailed drawings of the claimed invention or design. This is very important for the patent examiner to determine whether the claimed invention or design is patentable, as this is what makes it patentable subject matter. The applicant should include as many views (perspective, section, cut away, detail, etc.) of the item as is needed to thoroughly describe each portion of a claim, number each portion of the invention, provide its source (prior patent reference), and provide a brief description of it. Oath or Declaration - Lastly, the application must contain a statement certifying that the petitioner is the claimed inventor or designer, as these are the only individuals who can secure patent protections. The patent application generally requires a filing, search, and examination fee. Once the application and fees are received, the USPTO patent examiner will conduct a search for previously filed patents or applications. The purpose of this search is to determine whether the particular creation exists or has been previously disclosed to the public, as the previous creation or disclosure of the invention may disrupt the ability to secure patent rights. If all conditions are met and the search does not return conflicting patent claims, the USPTO will grant the patent and the patent will be recorded in the federal database. The patent owner must make annual maintenance filings and fees to maintain the patent. For further written and video explanation, discussion and practice questions, see What is the process for securing patent rights?
What is a “Provisional Patent”?
A provisional patent is a utility patent filing that does not necessarily include any claims. Pursuant to patent law, 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. Basically, the provisional patent allows inventors to file and disclose the invention to the rest of the world. If the non-provisional patent is filed within the year, the date of filing of the non-provisional patent is retroactive back to the date of filing of the provisional patent. This allows an inventor one year of protection while she is still developing the attributes of the invention that will later be claimed for patent protection. Benefits - The benefits of completing a provisional patent filing are as follows: Public Disclosure - This disclosure starts the one-year period to file a non-provisional patent. Filing the provisional patent provides for an initial year of protection, as the non-provisional patent application will back date to the filing of the provisional patent; Continued Research & Development - The non-provisional patent provides protection while continuing to develop the product and research the market. The inventor can spend the time developing the claimed elements of the invention to incorporate into the non-provisional application; 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. For further written and video explanation, discussion and practice questions, see What is a "Provisional Patent"?
Enforcing One’s Patent Rights
If anyone infringes upon a patent holder’s valid patent, the holder may bring a federal lawsuit to prevent further use and to seek recovery of damages suffered as a result of the infringement. The patent holder must file a legal action in the federal district court with jurisdiction over the defendant. At the time of filing, the patent holder will state the grounds for the action and request a preliminary injunction against infringement during the pendency of the hearing. The court will review the circumstances to determine whether an injunction is warranted. The grounds for the action must demonstrate one of the following types of infringement: 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. For further written and video explanation, discussion and practice questions, see What is the process for enforcing patent rights?
What is a “Trademark”?
A trademark 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). The trademark allows a consumer to identify the business or commercial activity associated with the mark. That is, trademark rights come about from use of the mark in association with goods or services. Trademark law has two objectives: 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. Businesses seek to secure trademark rights to protect their company, brand, or image. They do not want other companies to benefit from their branding efforts by creating customer confusion as to the source of a given good or service. Even if a customer is not confused, very similar marks can destroy the distinctiveness of a company’s mark, thereby making it less recognizable by customers. As such, enforcing trademark rights is an important tool in securing and expanding a business’s brand. Without trademark protection, competitors could easily detriment a competing brand by mimicking that brand’s mark. For further written and video explanation, discussion and practice questions, see What is a "Trademark"?
What are the Types of Trademark?
The term trademark is commonly used to refer to a broad range of protected marks, including: Trademark – Any mark, word, picture, or design that attaches to goods to indicate their source. Service Mark – A mark associated with a service. Certification Mark – A mark used by someone other than the owner to certify the quality, point of origin, or other characteristics of goods or services. Collective Mark – A mark representing membership in a certain organization or association. Trade Dress - Trade dress 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. Business names or trade names may be the subject of trademark protection. The name must represent the business, product, or brand. For further written and video explanation, discussion and practice questions, see What are types of trademark"?
What is Required to Capture Trademark Rights
Trademark law requires that a mark be “used in commerce” and “distinctive” from other marks. If a mark is used in commerce and sufficiently distinctive, there are two primary methods of securing trademark protection. The first method is “state-law protection”. State-law protection may include both statutory protection and common-law protection of the trademark rights within a particular state’s borders. The trademark is subject to protection if it meets all of the qualifications for protection and is used to identify a good or service sold within the state. The second method is “federal protection” resulting from registering the mark with the US Patent and Trademark Office and using the mark in interstate commerce. Each of these requirements and methods of establishing trademark rights is discussed separately. For further written and video explanation, discussion and practice questions, see What is required to capture trademark rights?
What is “Distinctiveness” of a Trademark
A proposed trademark must be “distinctive”. 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. If it is confusing to the consumer, the USPTO will reject the application for registration. So, the likelihood of confusion is partially based upon the mark and partially related to the nature of the product or service that it represents. To determine if a similar mark is being used in commerce, the USPTO trademark attorney will search for registered marks and unregistered marks with common law protection. The attorney will then examine whether the commercial activity represented by any similar marks is related to the commercial activity to be represented by the proposed trademark. If there is a high degree of similarity for both of these factors, it is more likely that the mark will be confusing to consumers. If the mark conflicts with a mark that was registered prior to the proposed mark, the USPTO will reject the registration. If the mark conflicts with another proposed mark that was filed before it, the USPTO will suspend its review and notify the applicant of the conflict. Classification of Distinctiveness - A proposed mark may have varying degrees of distinctiveness. The higher the degree of distinction, the less likely it is to confuse customers about the brand or entity that it represents. If a mark is less distinctive, it may require an applicant to demonstrate public perception or recognition of the mark in order for it to be capable of trademark protection. The following are degrees of trademark distinctiveness: Arbitrary and Fanciful terms - A “fanciful mark” has no other meaning. It is created to represent the commercial activity claiming trademark rights. An “arbitrary mark” is the association of an existing word or symbol with a commercial activity that has no relation or logical connection to that mark. If a proposed trademark falls under either of these categories and is not already used by another business, it is automatically recognized as inherently distinctive. Suggestive Marks - A suggestive mark 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. Descriptive Marks - A descriptive mark, as the name implies, 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. To qualify for trademark protection, the owner must demonstrate that the mark has achieved “secondary meaning” beyond the literal definition of the mark. Secondary meaning is when consumers associate the mark directly with the brand or business rather than simply a general description of the brand or company’s primary commercial activity. This requirement ensures that there is no confusion between the literal meaning and the brand or commercial activity. Generic Marks - A generic mark 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.). A valid mark may become generic if the mark begins to describe every product or service of that type. That is, it no longer makes the specific product or service distinctive. For further written and video explanation, discussion and practice questions, see What is the "Distinctiveness" requirement for a Trademark?
Process for Determining Distinctiveness
A descriptive mark must acquire a secondary meaning in order to be sufficiently distinctive to be protected by trademark law. Arbitrary, fanciful, and suggestive terms do not require that the mark have a secondary meaning, as they are sufficiently distinctive by their nature. The first step in the analysis is to determine whether the mark is indeed descriptive of the product or service. 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). Dictionary Test – This test seeks to determine the ordinary significance and meaning of the word as demonstrated by a dictionary. This provides evidence of how the general public would encounter the mark. 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. If a high degree of cognition is required, the mark is likely suggestive rather than descriptive. 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. If so, this is evidence of descriptiveness of the term, and the strong presence of secondary meaning for the specific business can make it an enforceable mark. This can also indicate that the mark is generic in nature and not capable of protection. The next step is to determine whether the trademark has achieved secondary meaning that is separate from its descriptive nature. Secondary meaning requires that the mark draw reference to the business, rather than the product or service itself. Specifically, secondary meaning is present when, “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.” A court may use various forms of evidence to determine whether secondary meaning exists: 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. 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
Federal registration of a trademark is the process for filing for federal protection of a mark representing a business or commercial activity. The federal statutes governing the registration of trademarks are found in 15 USC, sections 1051-1127. This group of laws is known as the “Lanham Act”. The registration process is managed by the US Patent and Trademark Office, a federal administrative agency. The USPTO issues regulations and rules that govern the trademark registration and maintenance process. Federal courts addressing trademark law create law (“common law”) that also guides or controls the body of trademark law. The common law generally applies to disputes as to ownership and enforceability of trademark rights. Federal Registration - Federal registration requires that a trademark application meet the aforementioned requirements and be used in “interstate commerce”. This generally means that the mark is used in a manner that is not solely limited to in-state activity. If a business is not currently using the mark in commerce, it may file an “intent-to-use” application along with a filing fee. This allows an 18-month period to begin using the mark in commerce. The filing requirement arises every 10 years following the initial filing. The holder will have to file an “affidavit of use” five years after the date of filing to certify that the mark is still in use. Unless a mark was previously used and abandoned, only the original user of a mark in interstate commerce may register the mark with the USPTO. Benefits of Federal Registration - Federal registration affords the trademark user additional protections beyond the statutory and common law protections afforded under state law. Some of the major advantages of federal registration of a trademark are as follows: 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.The benefits of federal registration are not exclusive. An individual with federal trademark rights may also secure state-law protections. For further written and video explanation, discussion and practice questions, see What is "Federal Trademark Registration"?
State Law Trademark Protections
States often pass statutes or provide administrative procedures allowing the public to file or register trademarks that are used in commerce within the state. These states will also provide statutory protections and causes of action against those who infringe upon an individual’s state-recognized, trademark rights. In addition to the statutory protections provided by some states, every state provides for common-law protection of trademark rights. That is, an individual has the ability to legally enforce her rights in a trademark via state, common-law remedies. State common-law protection of trademark rights arises when 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. Limits on State Trademark Protection - State trademark protections have significant limitations. First, the mark is not protected in areas outside of the state. As such, a business may acquire statutory or common law protection only in the states in which it carries on commercial activity. If someone infringes upon the mark by employing a confusingly similar mark within the trademark holders area of commercial activity, the trademark owner may bring an action to halt use. If, however, someone uses a confusingly similar mark in an area where the firm has not registered or does not carry on commercial activity, no remedy is available. As such, the individual using the infringing mark in another state may effectively lock out the original user of the mark from employing the mark within that jurisdiction. It comes down to a system of first to register or first to use the trademark in commerce in that jurisdiction. 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
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: 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. 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: 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. For further written and video explanation, discussion and practice questions, see What are the primary reasons for rejecting a trademark application"?
Common Trademark Designations
The traditional trademark designation is (“TM”) or ™. Anyone who uses a distinctive mark may employ this symbol to put others on notice of the trademark claim. If a trademark is registered with the USPTO, the trademark owner can use the symbol ®. For further written and video explanation, discussion and practice questions, see What are the common trademark designations?
Process for Filing Federal Trademark
The application for federal trademark protection follows a standard process. The following information is required for every trademark application: 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. This will include an indication of whether the mark is made up of standard characters or whether it is dependent upon a particular design of the characters. 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. Upon receipt of a completed application, the USPTO will assign a serial number to the application and return a receipt of filing to the filer. The trademark attorneys at the USPTO may have additional questions or require additional information of the filer. The proposed mark does not receive federal trademark protection until it is approved by the USPTO. The mark holder may use the trademark symbol (“TM”), but may not use the registered trademark symbol ("®") until the filing process is complete. 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”?
Trademark infringement 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. The use of the mark must create a strong likelihood of confusion for consumers as to the origin of the goods or services. This generally means that the mark must be used to represent competitor business, brands, goods or services. The most common form of trademark infringement is through the production and sale of counterfeit goods. Dilution - Another form of infringement is known as “dilution”. Dilution 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. The idea is that use of the trademark may dilute the brand value of the federal trademark holder. Using a derivation of a company’s logo for a non-related product may reduce the notoriety or public recognition of the logo with the brand of the trademark holder. Dilution can occur through use of the protected mark or a confusingly similar mark. Pursuant to the Federal Trademark Dilution Act of 1995 and Trademark Dilution Revision Act, dilution of a trademark occurs when: 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. In an infringement action, a party will generally request an injunction against further infringement along with recovery of any damages suffered as a result of the infringement. The Lanham Act allows for the recovery of any profits generated by the infringer as a result of the infringement. For further written and video explanation, discussion and practice questions, see What is trademark infringement?
Enforcing Trademark Rights
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. State Law Rights - States that allow for trademark registration often establish procedures and causes of action for enforcing trademark rights against infringers. In the absence of a state statute, common law rights in a mark can be enforced within the jurisdictions in which it is actively used. If the businesses are geographically separated, it may provide a buffer of protection against infringement. Recall, a business may use a mark in a jurisdiction where the similar mark is not used in commerce. In the event of an conflict in the same jurisdiction, the cause of action may be pursuant to a state conversion or equitable remedy. A court may award damages or an injunction against further infringement. To recover damages, a plaintiff must demonstrate actual damages. These actions are filed in state trial courts and are entitled to the same procedural rights as other state-law actions. Federal Registration - A federally registered mark can be enforced throughout the United States. Enforcement of a trademark generally begins with a “cease and desist” letter. This letter 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. If the user of the infringing mark fails to comply with the demand, the next option is to either file a state or federal court action seeking to enjoin the infringement. The complaint will allege a violation of federal law. The plaintiff may request any damages she has suffered as a result of the infringement. Federal infringement actions involving a registered mark allow for the recovery of attorney’s fees incurred in enforcing the trademark. For further written and video explanation, discussion and practice questions, see How does one enforce trademark rights?
Demonstrate Trademark Infringement
Proving trademark infringement requires a showing that the plaintiff has valid trademark rights and that someone is using another mark that is confusingly similar to the public. That is, the business claiming infringement must show that the other business’s use of the mark causes a high “likelihood of confusion” for the general public regard to the business, product, or service represented by the mark. In determining whether a mark is confusingly similar, the court will review several aspects of the protected and infringing mark. Some of the primary considerations are as follows: Mark - How similar in appearance or language are the marks? The court may also look to how the mark sounds when spoken aloud. 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? 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”?
Copyright is a form of intellectual property protection applicable to original expressions by the creator. The primary federal law governing copyrights is the Copyright Act of 1976. An “original expression”, for purposes of copyright law, is a very broad term. Section 102 of the Copyright Act identifies several categories of protectable subject matter, as follows: literary, musical, dramatic, pictorial, graphic, sculptural, audiovisual, and architectural works. Section 102 also excludes several categories: facts, page numbers, mathematical equations, ideas, procedures, processes, systems, methods of operation, concepts, principle, or discovery. While ideas and facts are not protectable, copyright protects the unique method of expressing ideas or facts. Section 103 specifically identifies compilations of fact that constitute original works as protectable. The facts must be arranged or presented in an original way. For further written and video explanation, discussion and practice questions, see What is a copyright?
Rights of a Holder of a Copyright
Copyrights, as do other forms of intellectual property, allow the holder to exclude others from using or copying the protected work. A copyright holder has exclusive rights to the following: Reproduce - The holder of a copyright has the ability reproduce and distribute the protected work. For example, the holder of the copyright may distribute copies of the work or license the work for reproduction in any format. Derivative Works - The holder may prepare derivative works based on the original work. For example, the holder may employ images, characters, words, or notes from the original work or adopting your work in other formats. Distribution - The holder may distribute copies or reproductions of the work by sale, lease or other transfer of ownership. This generally includes the right to commercially publish the protected work and distribute it through any medium or method of commerce. Performance - The holder may publicly perform the work. For example the holder of a copyright in a song may perform the song in public. Public Display - The holder may publicly display the work. In summary, the owner of the copyright may sell, assign, or otherwise transfer her copyright. She may also license any of these rights to third parties. A license is any transfer of rights that are less than complete ownership of the copyright. 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
Federal law governs the creation of copyrights. Unlike some other forms of intellectual property, there is no need to file or register the copyright. Copyright protection arises when an expression meets the following requirements: Original Work - The expression must be the original work or creation of the author. That is, it must be sufficiently distinct from existing works so as to demonstrate some level of uniqueness in the content or organization of the content. This means that the work must be created and not copied. Affixed to a Tangible Medium - The creative expression must be affixed to a tangible medium. This means that the copyrighted work must be recorded in a tangible format. A tangible format may include recording the work on paper, canvas, hard surface, digital device (such as a camera, hard drive, or video recorder), etc. If a expression is made without recording it to any form of tangible medium, it does not receive copyright protection. In fact, if the expression is communicated to the public prior to being recorded, it may find itself in the public domain and incapable of copyright protection. Creative Expression - The expression must show some aspects of creativity. The expression cannot be entirely obvious or commonly understood. Logical arrangements of facts lack the required creativity. Forms that simply record information are generally not considered to be creative expressions. As stated above, pursuant to the Copyright Act of 1976, an expression that meets the requirements for copyright receive automatic protection. Federal registration of the copyright is available and does offer unique advantages to the holder of the copyright. Registration puts the world on notice of the copyright. Whether registered or not, the owner of a copyrighted work may use the symbol “© ” to indicate her claimed rights in the work. No form of public notice, such as use of the copyright symbol, is required for protection. For further written and video explanation, discussion and practice questions, see What are the requirements for establishing copyrights?
Period of Copyright Protection
The length of time of copyright protection depends upon three factors: When the copyright was created; The length of the author’s life, and Whether the creator was an individual or a firm. Generally, a work created after January 1, 1978 is automatically protected for a period of 70 years past the life of the last living creator. Works created by entities (by employees or works for hire) are protected for the lesser of 95 years from the date of publication or 120 years from the date of creation. A complicated set of rules applies for calculating the length of protection of a copyrighted work created prior to 1978. In summary, if a work was created, but not published or subject to copyright, similar rules apply as for a work created after 1977. The difference is that a copyright is only guaranteed a minimum of 25 years of protection based the date of creation - until 2002. If the copyright is subsequently published during this 25-year window, the 25-year period is extended to 70 years. If the pre-1978 copyright was subject to copyright protection, the 1909 Act applies to the work. In this case, the work receives 28 years of protection from the date of creation. The protections can be extended for an additional 28 years upon application during the 28th year. For further written and video explanation, discussion and practice questions, see How long is the period of copyright protection?
Registering a Copyright
Copyright registration is done through the US Copyright Office (USCO). It can be completed either electronically or through the mail. The process requires the completion of the specific forms applicable to the type or category of copyrightable work. These forms lay out the required material for each type of copyright. Once all required material is delivered, the USCO will review it and, if acceptable, 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
Only the creator of the work (or individual contracting for the creation of the work) may secure copyright protection. The copyright may later be licensed or assigned, but the original creator must originally secure those rights. Companies can be authors under copyright law. The following rules apply to creation of the work: 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 owns the work (and attached copyright) equally. Of course, the parties can enter into a contract establishing ownership rights in the creation. Jointly Owned Copyrights - Co-creation or co-ownership of a copyright entitles each owner to full use and enjoyment of the copyrighted work. Absent a contract stating otherwise, however, any income derived from the copyright is split equally among copyright owners. Employees and Work for Hire - An individual or firm may own a copyright created by a third party if the third party is an employee or independent contractor hired for the purpose of creating such a work. Work made for an employer by an employee generally belongs to the employer if it was created within the scope of employment. Likewise, works created by an independent contractor generally belong to the contracting party if the work is in the scope of the contracted work. Work Agreements and Default Rules - The employment agreement or work-for-hire agreement (independent contractor agreement) will generally specifically address the issue of intellectual property created by the worker. Absent an agreement, default rules regarding the status of an individual as employee or independent contractor may vest ownership of any creation in the employer or contracting party. The work created must be within the scope of the copyrighted material. Examples of creation within the scope of a contracted relationship include: 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. Transfer and Licensing - The owner of a copyright may transfer the copyright or license its use to any third-party individual or firm. These are common methods of monetizing copyrights beyond personal production and distribution of the copyrighted work. Copyrights exist independently of the original work itself in tangible form. Owning an original of the copyrighted work does not equate to ownership of the copyright. For further written and video explanation, discussion and practice questions, see Who may claim and secure copyright protection?
Infringement and Enforcing Copyrights
Copyright infringement occurs when a copyrighted work or some portion of the work is reproduced, distributed, performed, or displayed without authority. Authority must be obtained from the copyright holder. A copyright is enforceable through a federal court action. That is, the copyright holder can bring a federal lawsuit against someone infringing upon the copyright. While copyrights attach without registration, the copyright holder must register her copyright prior to bringing a federal court action. Aside from allowing for litigation, a registered copyright provides a public record for the copyrighted work at the time of filing. Once in court, the copyright holder will seek an injunction from further infringement and any monetary damages suffered as a result of the infringement. The registered copyright is presumed valid if the registration occurs within 5 years of creation. This means that any infringing party has to overcome this presumption in court. The federal statute providing for copyrights allows for statutory damages (up to $150,000) and attorney’s fees (if the registration took place within 3 months of publication of the work). 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
The following doctrines or laws provide a defense for an alleged copyright infringer: 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. This is not generally an available defense for commercial use of a copyrighted work. 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. Examples of fair use may include the following uses: 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”?
The most disputed affirmative defense to copyright infringement is likely the “fair use” of the copyrighted work. To constitute fair use, the use of the work generally must not be extensive and not cause a negative impact on the copyright holder. The doctrine does not protect activity that is used to diminish the value of the copyright to the rightful 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. These factors include: 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. Likewise, a work made for entertainment or a fictional work, may afford greater protection than a fact-based work. 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. Also, if the work was used as collaboration or as part of a larger project, it may be transformative in nature. A work that sufficiently transforms the original work may be 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. 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. 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. For further written and video explanation, discussion and practice questions, see What is the "First Sale Doctrine?
International Intellectual Property Protections
International intellectual property law is the subject of treaties between nations throughout the world. The United States is a signatory to numerous international agreements respecting intellectual property rights. Some of the primary agreements are as follows: 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
Flashcard – Study Practice