Archive for the “general” Category

Definitions

Intellectual Property Glossary of Terms

A

Abandonment of Trademark: Occurs when the owner of a trademark or servicemark fails to use the mark in commerce for a certain period of time. Abandonment may also occur when the owner fails to bring a cause of action against an unauthorized user of the mark. If a trademark is considered abandoned, the owner typically loses exclusive rights to the mark.

Arbitrary Mark: Is considered one of the strongest types of marks because it does not typically carry a secondary meaning. They consist of words that are in common linguistic use but, when used to identify particular goods or services, do not suggest or describe a significant ingredient, quality or characteristic of the goods or services. An example of this would be the “Apple” Computer Company.

Author: In copyright law, the person or persons who originally created the work (literary, dramatic, artistic, musical or other pieces of intellectual property).

B

Berne Convention: Refers to the international agreement among numerous nations establishing rules, regulations and standards for literary, scientific and artistic copyrights.

C

©: Is the symbol used to identify that a particular piece is under copyright protection.

Certificate of Registration: The official document issued by the USPTO which shows that a particular trademark has been registered.

Collective Mark: A name, symbol or other device used by members of a group to identify a particular good or service.

Constructive Notice: Is a legal fiction which holds that people are presumed to have knowledge of a fact even though they may not have actual or direct knowledge of it. Registering a trademark gives nationwide constructive notice that the mark is in use.

Common Law: Is the body of law which that is derived from cases decided by the courts.

Common Law Rights: Are the rights derived from the use of an unregistered trademark in commerce. Common law rights are not found in the statutory law but rather from prior decisions of cases.

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authorship” including literary, dramatic, musical, artistic, and certain other intellectual works, both published and unpublished. Even though a particular work or piece does not have a copyright notice it is still protected under the Berne Convention.

D

Design Patent: The protection for the ornamental (decorative) appearance or look of an invention. Design patents do not protect the functionality of an invention.

Domain name: Identifies the name of an Internet site.

G

Generic Mark: Is a word or symbol used in connection with a good or service which is not protectable under trademark law. A generic mark is overly broad and typically cannot be distinguished from other goods or services.

Goods: Are products placed in commerce.

I

Infringement: The unauthorized use or imitation of a mark already used and appropriated by another person. Infringement can occur in copyrights, patents and in trademarks.

Intellectual Property: Property which can be legally protected, which includes copyrights, patents and trademarks.

L

Logo: Is a design, picture or symbol which identifies a company’s good or service.

Lanham Act: Is the Federal Law (Title 15, Chapter 22) which contains the statutes relevant to trademark law.

N

Notice of Publication: A written notice from the USPTO that a mark will be published in the Official Gazette.

O

Official Gazette: Is the weekly publication of the USPTO that includes marks that are published for opposition. This publication is available online.

P

Patent: A property right in an invention issued to the inventor from the USPTO. There are three types of patents issued by the USPTO: (1) utility patents, (2) plant patents and (3) design patents. Among the three different types, utility patents are the most common in the U.S.

Phonorecords: Material objects in which sounds, other than those accompanying a motion picture or audiovisual work, are fixed. Some common examples of a phonorecord are cassette tapes, compact discs and vinyl records.

Plant Patent: A property right given to an inventor who has invented or discovered and asexually reproduced a new variety of plant, mutant or spore.

Prima Facie: “At first sight”. A fact presumed to be true unless disproved by some evidence to the contrary.

R

®: Is the symbol used to identify that a particular item is registered with the USPTS.

S

Secondary Meaning: A trademark takes on a secondary meaning when it becomes an identifiable mark in the minds of consumers. Once a mark receives secondary meaning registration of it is possible.

Servicemark: A word, name, symbol or device that signifies the source of the services which distinguishes it from the services 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 or good.

T

TARR: Acronym for “Trademark Application and Registration Retrieval”. It is an online resource of the USPTO which allows a user to view pending and registered trademarks.

TEAS: Acronym for “Trademark Electronic Application System”. It refers to the electronic method of filing a trademark application online with the USPTO.

TESS: Acronym for “Trademark Electronic Search System”. It is the Federal database that can be used to search trademarks.

Trade Dress: Describes a product’s distinctive design, packaging, color or other appearance which makes it unique from other products or goods. Trade dress of a particular product or good is protected under trademark law.

Trademark: It is a word, symbol, name or device which is used in trade with goods to indicate the source of the goods and to distinguish them from the goods of others.

Trade Name: Is also referred to as a business name that is used in the course of business.

TM: Acronym for “Trademark”.

U

USC: Acronym for “United States Code”.

USPTO: Acronym for “United States Patent & Trademark Office”.

Use in Commerce: In order for a trademark to qualify for registration, the goods or services must be used in the stream of trade or business.

Utility Patent: Is the protection of an invention in terms of its function or the way it works. Utility patents generally fall under three types: (1) chemical, (2) mechanical and (3) electrical.

Trademarks, Copyrights, and Patents

Some people confuse patents, copyrights, and trademarks. Although there may be some similarities among these kinds of intellectual property protection, they are different and serve different purposes. The simple explanation is:

– Patents are for inventions.
– Copyrights are for authors such as music, books and movies.
– Trademarks are for brand names.

What Is a Patent?

A patent for an invention is the grant of a property right to the inventor, issued by the Patent and Trademark Office. The term of a new patent is 20 years from the date on which the application for the patent was 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 U.S., U.S. territories, and U.S. possessions.

The right conferred by the patent grant is, in the language of the statute and of the grant itself, “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.

The U.S. issues three types of patents: (1) utility patents, (2) plant patents and (3) design patents. A utility patent covers any new and useful machine, manufactures and compositions of matter. Utility patents are the most common and cover the broadest scope of inventions.  On the other hand, a plant patent covers asexually reproduced plants, which includes newly found seedlings, hybrids, cultivated spores and mutants.  Finally, a design patent covers an ornamental design for an article of manufacture.  A design patent covers only the appearance of an article, not the functionality of it.

What Is a Trademark or Servicemark?

A trademark is a word, name, symbol or device which 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.  A good example of a servicemark is the McDonald’s “Golden Arches”.  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, but not to prevent others from making the same goods or from selling the same goods or services under a clearly different mark.  Trademarks which are used in interstate or foreign commerce may be registered with the Patent and Trademark Office.
One final thought for trademarks: it is possible to have Federal protection rights for an unregistered trademark that is used in commerce.  Under Section 43(a) of the Lanham Act (15 U.S.C. § 1125(a)), a owner of an unregistered trademark may file a civil cause of action for infringement when:  (1) the plaintiff/owner is the senior user (first user) of the trademark and has attained market penetration in a particular area; (2) the trademark is inherently distinctive; and (3) the defendant’s use of the trademark would likely create confusion in the marketplace or public.  Caution: this does not mean you should not register your trademark.  Filing a lawsuit and proving the elements for trademark infringement is difficult and expensive. Bottom line: play it safe, do it right and register your trademark.

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.  Copyright comes from the U.S. Constitution, which states: “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 addition, the 1976 Copyright Act generally gives the owner of a copyright the exclusive right to reproduce the copyrighted work, to prepare derivative works, to distribute copies or phonorecords of the copyrighted work, to perform the copyrighted work publicly, or to display the copyrighted work publicly.  The following are some important amendments to the Act:

1.    The Computer Software Act of 1980, which applies protection to computer software.
2.    The Digital Millennium Act of 1998, which attempted to reconcile copyright and the Internet.

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 this would only prevent others from copying the description; it would not prevent others 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.

Choosing a Trademark

Choosing a trademark can be complicated.  Unlike patents, preferential treatment normally goes to the first to use the trademark in commerce, not the one who has the idea first.  Additionally, maintaining confidentiality and securing a domain name before releasing any information to a third party is absolutely crucial.  This video game was compelled to go through a name change because the company released the name too early.

Beware, Internet searches on available domain names are sometimes captured by web sites and they can register the domain before you and then, in turn, charge a high fee to release it.  “Network Solutions” was sued over this.  In addition, there are other ways information can be inadvertently released.  For instance, when new movies apply for a rating the applications are scanned for domain registration ideas.

Use in commerce” can also be complicated.  For instance, just naming a business does not automatically convey trademark rights.  There are numerous statutory requirements and they are often complicated and are often dependent on the specific facts of each case.  If your application is rejected, the USPTO will not refund your filing fees.

Choosing a Trademark. Be creative and unique.  Remember, a trademark is a word, symbol, phrase or design (or a combination of them) that is unique to a company’s good or service.  Importantly, the trademark has to be distinguishable from other trademarks and cannot be misleading or contrary to community morals or decency.  The trademark cannot also be overly broad or generic.

Research your Trademark.  A good trademark search of similar goods or services will avoid costly development, marketing, advertising expenses and potential legal fees if it is later determined that you infringed on another company’s trademark.  There are countless companies and law firms that offer trademark searches.  However, if you choose to do it alone you must search not only the Federal database, but should also search the common law and trademark databases of all 50 States.  A comprehensive search can be time consuming and tedious, but it is well worth it.  Use the Trademark Electronic Search System (TESS) to search through the Federal database.

Filing a Trademark

US Patent and Trademark OfficeThe Internet has increased the importance of protecting trademarks and intellectual property.  Filing and registering a trademark can be a complicated process and it is essential to be familiar with Federal or State Law before filing any trademark.  Specifically, any business trademark can be registered under State Law; however, registering under Federal Law has many advantages.  For instance, a trademark that is registered under Federal Law provides a nationwide “constructive notice” to other businesses that the trademark is currently claimed or under ownership.  Moreover, Federal registration provides prima facie evidence that the trademark is under the exclusive ownership and control of its owner.  All fifty States have statutes (laws) that allow filing and registration of a trademark.

Rejected and abandoned applications are common and are a big waste of money.  The most common reasons for a trademark application rejection are:

•    Similarities in sound, appearance, and meaning to an existing trademark.  Words that sound the same, although spelled differently may be rejected, especially if they apply to a similar product with a similar use.
•    Similarities in use and marketing
•    Merely descriptive or misdescriptive.  Avoid terms either commonly used to describe the qualities/characteristics of the product or service or that would contradict those qualities/characteristics.
•    When a trademark is used in connection with a good or service of the applicant and is primarily geographically descriptive or deceptively misdescriptive.
•    Surnames (last names).

Filing Information for US:

There are two ways to file a trademark application with the U.S. Patent and Trademark Office (USPTO), either electronically via the Internet or by mail.  According to the USPTO, an electronic filing of a trademark application is the preferred and best method.  Electronic filing is cheaper, more efficient and the processing time is much faster.

To file electronically go to:  http://www.uspto.gov/teas/

To file a trademark by mail, call 1-800-786-9199 to request an application form.  Once the application is completed, send to the following address:

Commissioner for Trademarks
P.O. Box 1451
Alexandria, VA 22313-1451

Steps to Filing a Trademark:

It is imperative to know what you are doing before you attempt to file your trademark.  The following is an overview (not inclusive) of steps to properly file your trademark:

1.  Choosing a Trademark:  Be creative and unique.  Remember, a trademark is a word, symbol, phrase or design (or a combination of them) that is unique to a company’s good or service.  Importantly, the trademark has to be distinguishable from other trademarks and cannot be misleading or contrary to community morals or decency.  The trademark cannot also be overly broad or generic.  If your application is rejected, the USPTO will not refund your filing fees.

2.  Research your Trademark:  Do your homework.  A good trademark search of similar goods or services will avoid costly development, marketing, advertising expenses and potential legal fees if it is later determined that you infringed on another company’s trademark.  There are countless companies and law firms that offer trademark searches.  However, if you choose to do it alone you must search not only the Federal database, but should also search the common law and trademark databases of all 50 States.  A comprehensive search can be time consuming and tedious, but it is well worth it.  Use the Trademark Electronic Search System (TESS) to search through the Federal database.

3.  Determine International Trademark Class:  To know the Class is to know your filing fees.  Typically, trademarks fall under one Class but there are some instances where a good or service will cross over into more than one classification.  If your trademark is in more than one Class, you pay more in filing fees.  You can find the Class listing here.

4.  Trademark Application:  Be thorough and accurate in the trademark application.  A carefully filled out application will ensure a more efficient and quicker processing of it.
In addition, in order to qualify for registration your trademark must be in commercial use.  Finally, the application process typically takes about 10 months so be patient and periodically check the status of your application online (if you filed electronically).