Intellectual Property

Intellectual property rights protect creations of the mind. There are various types of intellectual property and some common misconceptions, the first being the extent to which ideas are protected. While ideas, in and of themselves, are generally not protected (they can be to the extent reduced to a process, as explained further below in the description of patents), there are important intellectual property rights that can be absolutely critical to a business's success. Similarly, carelessness in handling intellectual property, failing to protect one's intellectual property, or breaching another party's intellectual property can be perilous to a business. As always, it is important to seek experienced counsel in this area.

What is a Patent?

A patent protects inventions and grants exclusive property rights to the inventor for a limited period. Patents are issued by the United States Patent and Trademark Office and generally the term of a new patent is 20 years from the date the application is filed in the United States or, in special cases, from the date an earlier related application was filed, subject to the payment of maintenance fees. U.S. patent grants are effective only within the United States, U.S. territories, and U.S. possessions. Under certain circumstances, patent term extensions or adjustments may be available. Patents confer “the right to exclude others from making, using, offering for sale, or selling” the invention in the United States or “importing” the invention into the United States. What is granted is not the right to make, use, offer for sale, sell or import, but the right to exclude others from making, using, offering for sale, selling or importing the invention. Once a patent is issued, the patent holder must enforce the patent without aid of the USPTO.

There are three types of patents: (1) utility patents, which may be granted to anyone who invents or discovers any new and useful process, machine, article of manufacture, or composition of matter, or any new and useful improvement thereof; (2) design patents, which may be granted to anyone who invents a new, original, and ornamental design for an article of manufacture; and (3) plant patents, which may be granted to anyone who invents or discovers and asexually reproduces any distinct and new variety of plant.

What Is a Trademark or Servicemark?

A trademark is a word, name, symbol, or device that is used in trade with goods to indicate the source of the goods and to distinguish them from the goods of others. A servicemark is the same as a trademark except that it identifies and distinguishes the source of a service rather than a product. The terms “trademark” and “mark” are commonly used to refer to both trademarks and servicemarks. Trademark rights may be used to prevent others from using a confusingly similar mark. While trademarks and servicemarks cannot be used to prevent others from making the same goods or from selling the same goods or services under a clearly different mark, trademarks can be extremely valuable to a business, as they protect the brand value that businesses often establish in the marketplace. They can also be used to protect a business's identifiable products (such as the color pink used by Owens-Corning for its brand of fiberglass insulation) its identifying characters or logos (such as the Pillsbury doughboy), or its identifying sounds (such NBC’s three-tone sound mark).

Similarly, trade dress refers to the total image and overall appearance of a product or service, or the totality of the elements, and may include features such as size, shape, color or color combinations, texture, and graphics. Items typically eligible for trade dress protection are product designs, product packaging, and the appearance and decor of a service business. For trade dress to be protectable under trademark law, the design must be non-functional, distinctive, and identify the source of the goods or services. A design is functional if it is essential to the use or purpose of the article or if it affects the cost or quality of the article. The functionality doctrine acts as safeguard against the impermissible extension of patent monopoly by invoking trademark protection. Additionally, trade dress must be distinctive to identify the source of the good or service. Trade dress can be inherently distinctive or acquire distinctiveness through secondary meaning. Examples of trade dress include the shape of the Coca-Cola bottle, the design of Apple’s iPhone, the red dripping wax of the Maker’s Mark bottle, the color brown for UPS.

Rights in a trademark are acquired and maintained only by use. However, registration may be sought before making use of the mark in commerce. Common law trademark rights will continue for as long as the trademark is used in commerce and the owner adequately polices the mark. There is no expiration period for common law trademark rights but trademark registration will only remain valid if the owner files the proper renewal documents and continues to use the marks (a trademark owner is permitted brief periods of non-use without relinquishing his trademark rights). Abandonment of a particular mark occurs when its use has been discontinued with intent not to resume such use. Intent not to resume may be inferred from circumstances. Non-use for three consecutive years is prima facie evidence of abandonment. However, the trademark owner can rebut the presumption by producing evidence of his intent to resume use “within the reasonably foreseeable future.” “Use” of a mark means the bona fide use of such mark made in the ordinary course of trade, and not made merely to reserve a right in a mark. Token and sporadic use of the mark will not be sufficient to meet the requirement of "use in commerce.”

While trademarks and servicemarks protect the owners of the marks, they also indicate the origin of goods or services and enable consumers to identify products and service-providers so they can either look for them again or avoid them. In this way, a trademark represents the quality and uniformity of the goods bearing the mark.

The owner must defend the trademark from infringers to maintain the trademark’s status as a source indicator. If too many people enter the marketplace with the same trademark, the mark will no longer identify a single source and the loss in distinctiveness will erode any trademark protection the mark once enjoyed.

Inherently distinctive marks acquire common law rights upon actual use, whereas non-inherently distinctive marks require proof of secondary meaning to receive trademark rights. Secondary meaning is established when the owner has established that, in the mind of the consuming public, the primary significance of the term is to identify the source of the product rather than the product itself. In other words, a mark has achieved secondary meaning when the consuming public perceives that the product or service emanates from a single source. Courts classify marks into five separate categories: (1) fanciful, (2) arbitrary, and (3) suggestive marks, all of which are inherently distinctive; (4) descriptive marks, which are NOT inherently distinctive and require proof of secondary meaning for trademark protection; and (5) generic marks, which are not eligible for trademark protection.

Although Trademark registration is not required to receive common law trademark protection, an unregistered trademark does not enjoy many benefits provided to registered marks, including public notice of the claim of ownership of the mark, the legal presumption of ownership of the mark and your exclusive right to use the mark nationwide on or in connection with the goods/services listed in the registration, the ability to bring an action concerning the mark in federal court, the right to seek incontestable status after five years of continuous use on the principal register, the use of the U.S. registration as a basis to obtain registration in foreign countries, the ability to record the U.S. registration with the U.S. Customs and Border Protection (CBP) Service to prevent importation of infringing foreign goods, the right to use the federal registration ® symbol, and listing in the United States Patent and Trademark Office’s online databases.

What is a Copyright?

Copyright is a form of protection provided to the authors of “original works of authorship” including literary, dramatic, musical, artistic, and certain other intellectual works, both published and unpublished. The 1976 Copyright Act generally gives the owners of copyright the exclusive right to reproduce the copyrighted work, to prepare derivative works, to distribute copies of the copyrighted work, to perform the copyrighted work publicly, or to display the copyrighted work publicly. The copyright protects the form of expression rather than the subject matter of the writing. For example, a description of a machine could be copyrighted, but the right would only prevent others from copying the description, not from writing a description of their own or from making and using the machine. Copyrights are registered by the Copyright Office of the Library of Congress. Creators of original works obtain common law copyrights as soon as they reduce a work to tangible form. However, it can be extremely important to register a copyright in the event it becomes necessary for a copyright holder to sue another party that is infringing.