Presentations

The Alderman Law Office
1629 K Street, N.W.
Suite 300
Washington, DC 20006
Phone: (202) 973-0188
Email: thecontentlawyer@verizon.net

WHAT SOLO AND SMALL FIRM PRACTITIONERS
SHOULD KNOW ABOUT INTELLECTUAL PROPERTY ISSUES

D.C. BAR LAW PRACTICE MANAGEMENT SECTION
JUNE 14, 2001

Intellectual property

Copyright protects the tangible embodiment of an author’s creation (e.g. literary works, computer programs, motion pictures, sound recordings, paintings and sculptures).

Distinguish trademarks, which are appurtenant to a good or service, i.e. trademarks serve as a designation of origin for a particular source producing goods or services. Unlike a copyright, a trademark cannot be transferred independent of the connected good or service. A trademark is probably more appropriately called an industrial or commercial property.

If your client’s business produces goods or services in commerce, then they should investigate trademark protection. Although copyright literally extends to the original expression in most corporate documents and other original creations, there is probably more application of the copyright regime to businesses and individual creators in publishing, computer software, art, sound recordings, motion pictures and other “creative” ventures.

Trademarks

A word, phrase, symbol, design, or combination of these, that distinguishes the goods or services of one source from those of another.

Trademarks help purchasers select goods and services from a known source and assure quality.

Types of marks

Trademarks refer to goods (the familiar symbol ^TM).

Service marks refer to services (the less familiar symbol ^SM).

Generally, marks are referred to generically as trademarks.

Certification Marks: used to certify various facts about particular goods and services --  quality or ingredients or approval by a certifying organization (e.g. UL certifies that certain electrical safety standards have been met).

Collective Marks: identify a cooperative, association, club, union or other group (e.g. National Honor Society, Realtors).

Trade Dress: packaging, labeling and overall appearance of a product.

Trade Name: name of business. Distinguish from name of product or service.

Slogan: phrase used in connection with sale of a product or service.

Domain names: refers to the address (Uniform Resource Locator or “URL”) corresponding to a website on the Internet that is registered with an organization authorized to maintain domain names (e.g. Register.com).

Neither trade names, slogans nor domain names are registrable unless used as marks to identify goods or services.

Acquiring Trademarks

1. Use. Trademarks are acquired by first use or by first state or federal registration. For use-based marks, so called “common law” marks, the scope of the owner’s rights depends upon the extent of the use.
   
   Establishing the scope of the use is a difficult evidentiary burden, so most owners tend to file for a state or federal registration.
   
   An additional shortcoming of a use-based mark is that there are concurrent use situations. For example, a DC user may have rights in adjoining states or the mid-Atlantic, but an owner of an identical or confusingly similar mark in Arizona may have superior rights in the Southwest. If a trademark owner is launching a national campaign for its goods or services, it wants national priority and protection, not a confusing patchwork of rights.
   
   
2. Registration. Trademark registrations are territorial. Domestic registrations are limited to the United States; state registrations are limited to a particular state.
   
   Federal registration with Patent and Trademark Office is optional:
   
   Can file prior to use based on bona fide intent to use or based on use in commerce in U.S. or between U.S. and foreign country. Also, based on application in foreign country within past 6 months.
   
   Government filing fee of $325.00 per class of goods or services. With proper maintenance, trademark can last forever.
   
   
3. Benefits of Registration.
   
   Registration on either Principal Register or Supplemental Register.
   
   Registration on either register provides national protection, subject to preexisting uses.
   
   Standard for Principal Register: mark must, as of date of registration, function as trademark and otherwise qualify for registration.
   
   Standard for Supplemental Register: not inherently distinctive and not yet acquired secondary meaning, but still capable of distinguishing goods or services.
   
   Registration on either Register, provides trademark owner with:
   
   
   1. national protection;
   2. right to use ® symbol;
   3. use of federal forum for infringement suits, with more consistent body of national law;
   4. extends scope of federal jurisdiction, permitting joinder to trademark actions of some state law claims that would otherwise be limited to state courts;
   5. grants a potent arsenal of remedies, including access to infringer’s profits, damages and costs, and, in certain circumstances, tripled damages and attorney’s fees.
      
      
   Important evidentiary benefits, as well:
   
   
   1. prima facie proof of validity of mark, ownership and exclusive right to use;
   2. shows mark has acquired secondary meaning and provides constructive notice of ownership, eliminating defense that user adopted mark and used it in good faith.
   3. for post-11/16/89 applications that become registrations, owner gets constructive use date of application’s filing date;
   4. trademarks become incontestable after 5 years with appropriate affidavit or declaration of continuous use. Incontestability provides conclusive evidence of registrant’s exclusive right to use mark, subject to certain statutory defenses.
      
      

Trademark Selection - Distinctiveness of Marks

Generic marks: generic name of product or service cannot be protected or registered, e.g. the mark PENCIL as applied to that writing instrument.

Descriptive marks: mark describes  purpose, function or characteristic of product or service.

Not protected without acquiring secondary meaning (association with owner’s goods or services in mind of public, e.g. RAISIN BRAN for raisin and bran cereal.

Shown by: 1) long, continuous use of mark and/or 2) significant advertising.

Suggestive marks: suggest  quality or characteristic of product or service (e.g. ROACH MOTEL for insect traps).

Usually inherently distinctive and registrable.

Arbitrary marks: marks comprised of words or symbols in common language that do not suggest or describe a quality or characteristic of the good or service, e.g. APPLE as applied to computers.

Protectable and registrable as inherently distinctive marks.

Fanciful marks: marks that have been invented or are out of common usage (e.g. CLOROX for bleach).

Inherently distinctive and, thus, protectable and registrable.

Scope of Protection

Protects against use or registration of marks that are confusingly similar or would dilute value of mark.

Transfer of Trademark

Distinguish license (less than the entire interest) from assignment (transfer of entire trademark). 

Choosing a Mark

Fanciful and arbitrary marks are best marks because inherently distinctive (not related to goods or services other than as established by owner). Most easily registered (e.g. XEROX®, NIKE® and KODAK®).

Suggestive marks also inherently distinctive and registrable, but weaker and sometimes difficult to enforce.

Descriptive marks not inherently distinctive and require secondary meaning.

Try to use fanciful and arbitrary marks, and avoid suggestive, descriptive and generic.

Pitfalls

Avoid:

Marks that have specific meaning in the relevant industry, which may make them descriptive or suggestive.

Marks, which create a negative impression in the relevant market (e.g. General Motors’ trademark NOVA means “won’t go” in Spanish).

Common terms in relevant market (e.g. AMERICAN, NATIONAL and GENERAL in the United States).

Trademark Searches

To avoid infringement problems, all marks should be searched for availability prior to use or filing a registration application.

A preliminary search can be done on PTO database. More thorough, commercial searches are also available and strongly encouraged.

The search results should be vetted by trademark counsel to provide a use and registrability opinion.

Rules of Trademark Usage

Trademarks should be used as adjectives, never nouns or verbs. (e.g. Xerox® photocopiers, not Xeroxing documents).

Federally registered marks are identified by the symbol ®; unregistered marks are either TM or SM.

For text marks, use bold, capital letters or a special typeface to set the mark apart from surrounding text.

Use the mark consistently: same color, style, font, typeface, etc.

Continually search competitors’ marks for similarity to your client’s marks.

Copyrights

Protects original works of authorship fixed in a tangible medium of expression.

Fixation as dividing line between federal statutory protection and NO protection. Unlike with trademark, there is an exclusive federal regime for copyright protection (exception for pre-1972 sound recordings). Under predecessor, Copyright Act of 1909, there was a bifurcated system of federal and common law rights. With 1976 Act, equivalent common law rights are preempted.

The Owner of Copyright

The creator of a work is the initial owner.

Exception—Works Made for Hire:

Employer is considered author of works created within the scope of an employment relationship.

Alternatively, also work for hire if specially ordered or commissioned as a:

If parties expressly agree in mutually signed writing that work shall be considered made for hire.

Authors of a joint work are co-owners of copyright unless agreement to contrary.

Types of copyrightable works

Copyright extends to:

Categories are construed broadly (e.g. computer programs are literary works).

Works excluded from copyright

Unfixed works (e.g. unrecorded live dance performance or speeches);

  Titles, names, short phrases and slogans; familiar symbols or designs; variations of lettering or coloring; lists of ingredients or contents.

Ideas, procedures, methods, systems, processes, concepts, principles, discoveries or devices (contrast protection for descriptions, explanations and illustrations);

Common information containing no original authorship.

Exclusive rights

Extends to published and unpublished works.

Copyright owner has exclusive right to do or authorize others to do the following:

Limitations on Rights

The exclusive rights are limited by users’ rights of fair use and compulsory licenses  (user meets statutory criteria and payment of royalties and is granted certain rights without the copyright owner’s permission).

Publication

Publication no longer has significance of separating common law from statutory copyright protection as under 1909 Act. Publication is important, though, for several reasons:

Duration

Individuals: life of author + 70 years. Joint works: 70 years after death of last surviving author.

Works made for hire (anonymous and pseudonymous): 95 years from publication or 120 years from creation.

Transfers

Exclusive transfer of copyright, or portion of rights, requires written instrument.   Nonexclusive transfer does not require writing.

Grant of rights may be terminated after 35 years under certain conditions upon written notice to transferee.

Registration

Registration in optional, but highly recommended. Cheap ($30/application). Provides significant benefits:

Registration effective when Copyright Office receives required elements in acceptable form.

International Protection

Copyright is territorial (i.e. U.S. law applies only within U.S. borders), but, unlike trademark protection, well-established, standardized international regime.

U.S. is party to, among other treaties, Universal Copyright Convention and Berne Convention.

By joining Berne, countries guarantee a high level of minimum protection for their own and foreign nationals of other Berne countries. Linchpin of Berne is national treatment (i.e. the law of the place of infringement applies and country must consistently apply its law to nationals and Berne foreigners).