Intellectual Property Law

Copyright

Trademark and unfair business

Patent

Trademarks TM = SM When we talk about trademarks, many times we also mean servicemarks. Unless identified otherwise when using the term trademarks, we also mean service marks. Trademarks identify source of goods. Servicemarks identify source of services. Fx of TM/SM Essential function of a trademark is to exclusively identify the commercial source or origin of products or services, so a trademark, properly called, indicates source or serves as a badge of origin. To qualify as a TM/SM. To serve trademark a mark must be distinctive -- that is, it must be capable of identifying the source of a particular good. In determining whether a mark is distinctive, the courts group marks into four categories, based on the relationship between the mark and the underlying product: (1) arbitrary or fanciful, (2) suggestive, (3) descriptive, or (4) generic. Legal protection afforded a particular trademark will depend upon which category it falls within An arbitrary or fanciful mark is a mark that bears no logical relationship to the underlying product. Arbitrary or fanciful marks are inherently distinctive -- i.e. capable of identifying an underlying product -- and are given a high degree of protection. A suggestive mark is a mark that evokes or suggests a characteristic of the underlying good. Some exercise of imagination is needed to associate the word with the underlying product. At the same time, however, the word is not totally unrelated to the underlying product. Like arbitrary or fanciful marks, suggestive marks are inherently distinctive and are given a high degree of protection. A descriptive mark is a mark that directly describes, rather than suggests, a characteristic or quality of the underlying product (e.g. its color, odor, function, dimensions, or ingredients). They tell us something about the product. Unlike arbitrary or suggestive marks, descriptive marks are not inherently distinctive and are protected only if they have acquired "secondary meaning." Descriptive marks must clear this additional hurdle because they are terms that are useful for describing the underlying product, and giving a particular manufacturer the exclusive right to use the term could confer an unfair advantage. A descriptive mark acquires secondary meaning when the consuming public primarily associates that mark with a particular producer, rather than the underlying product. Thus, for example, the term "Holiday Inn" has acquired secondary meaning because the consuming public associates that term with a particular provider of hotel services, and not with hotel services in general. The public need not be able to identify the specific producer; only that the product or service comes from a single producer. When trying to determine whether a given term has acquired secondary meaning, courts will often look to the following factors: (1) the amount and manner of advertising; (2) the volume of sales; (3) the length and manner of the term's use; (4) results of consumer surveys. Zatarain's, Inc. v. Oak Grove Smokehouse, Inc., 698 F.2d 786 (5th Cir. 1983). A generic mark is a mark that describes the general category to which the underlying product belongs. Generic marks are entitled to no protection under trademark law. Thus, a manufacturer selling "Computer" brand computers (or "Apple" brand apples, etc.) would have no exclusive right to use that term with respect to that product. Generic terms are not protected by trademark law because they are simply too useful for identifying a particular product. Giving a single manufacturer control over use of the term would give that manufacturer too great a competitive advantage. Under some circumstances, terms that are not originally generic can become generic over time (a process called "genericity"), and thus become unprotected. ® the letter "R" surrounded by a circle, for a registered trademark with the USPTO if used trademark owner need not prove defendant had actual notice of registration recover damages profits, registration serves as constructive notice ™ the "trademark symbol", which is the letters "TM" in superscript, for an unregistered trademark, a mark used to promote or brand goods ℠ which is the letters "SM" in superscript, for an unregistered service mark, a mark used to promote or brand services trademark infringement whether the similarity between trademarks is likely to cause confusion in the minds of consumers. IOW, the elements are: if there has been a “use” of the plaintiff’s trademark if the use creates a likelihood of confusion if use does NOTE qualify as a normative fair-use Note that the law stated objective of trademark law is consumer protection trademark infringement Case-by-case basis Court weighs several factors in determining if mark has been infringed including strength, the similarity of parties’ service, geographical proximity, evidence of actual confusion, degree of care likely to be exercised by consumer intent of defendant similarity of marketing channels used; and, in domain name disputes, the similarity of trademark to the domain name in the domain name registrant’s intent in choosing the name normative fair use (defense) three factors the product or service cannot be readily identified without using the trademark the user only uses so much of the mark as is reasonably necessary to identify the product or service the user does nothing to suggest sponsorship or endorsement by the trademark owner Parody (defense) literary or artistic work that imitates the characteristic style of an author or work for comic effect or ridicule a legal parity involves a conveyance of two simultaneous but contradictory messages must be apparent that it is not the original trademark dilution occurs either when unauthorized use of a mark "blurs" the "distinctive nature of the mark" or "tarnishes it." Likelihood of confusion is not required. 15 U.S.C §§ 1127, 1125(c). the Act only applies to famous trademarks test for dilution is: will the strong association the public has between the famous trademark and the plaintiff be diluted? Under the Lanham Act, to prove trademark dilution, the plaintiff must show: ownership of the trademark qualifying as a “distinctive and famous” trademark as measured by the totality of the eight factors listed in the Lanham Act section 43(c)(1), and defendant is making commercial use, in interstate commerce, of a trademark or trade name, and the defendant's use began after the plaintiff's trademark became famous, and the defendant's use causes dilution by lessening the capacity of the plaintiff's trademark to identify and distinguish goods or services. “distinctive and famous” under the Lanham Act provides the following factors may be weighed the degree of inherent or acquired distinctiveness of the mark the duration and extent of use of the trademark in connection with the goods or services with which the trademark is used the duration and extent of advertising and publicity of the trademark the geographical extent of the trading area in which the trademark is used the channels of trade for the goods or services with which the trademark is used the degree of recognition of the mark in the trading areas and channels of trade used by the marks owners and the person against whom the injunction is sought the nature and extent of use of the same or similar trademarks by third parties, and whether the trademark was registered under the act of March 3, 1881 or the Act of February 20, 1905, or on the principal register. Amendment to the Antidilution Act of 2006 - eliminates the requirement of the showing of actual economic harm to the famous remarks economic value under new standard a party is entitled to an injunction against the user of a trademark "likely to cause dilution” the act has been used to force cyber squatters to relinquish domain names to trademark owners theory is dilution occurs when web visitors give up searching for trademark holders goods in frustration after countless encounters with cyber squatters site instead of true mark holder site however the act is only applicable when a famous trademark is at issue holders of non-famous trademarks must seek recourse through the anti-cybersquatting consumer protection act (ACPA) secondary infringement the concept of contributory and vicarious infringement, as similarly applied to copyright infringements, also may apply to trademark normative fair use - wherein no infringement liability merely for using a trademark phrase to describe the actual trademark product one is speaking of or about. Common Trademark Issues on the Internet There are an array of trademark issues on the internet, and new ones will keep arising. Common ones include counterfeit products meta tags linking and hyperlinking cybersquatting cybergriping keyword advertising and search engine results cyberpoaching Personal names as domain names Is a domain name a property right or contractual right? If property right, state law controls. which varies by jurisdiction If contractual right, contractual obligations and remedies controls most jurisdictions view domain names as contractual rights, outside the US. Truth in Domain Names Act criminalizes use of “misleading domain name” with the intent to deceive a person into viewing obscenity or deceives a minor into viewing “material that is harmful to minors” Fraudulent Online Identities Act trademark infringement will be considered willful if person knowingly provided misleading or false contact information in making, maintaining or renewing a domain name’s registration. Anticybersquatting Consumer Protection Act (ACPA) Established a cause of action for registering, trafficking in, or using a domain name confusingly similar to, or dilutive of, a trademark or personal name. Closes loophole to the trademark law requiring “use in commerce” and the loophole where people didn’t create a webpage for the domain name in order to skirt claim of “consumer confusion” Under the ACPA, a trademark owner may bring a cause of action against a domain name registrant who Has a bad faith intent to profit from the mark Registers, traffics in, or uses a domain name that is Identical or confusingly similar to a distinctive mark Identical or confusingly similar to or dilutive of a famous mark Is a trademark protected by 18 U.S.C. § 706 (marks involving the Red Cross) or 36 U.S.C. § 220506 (marks related to the “Olympics”) In determining whether the domain name registrant has a bad faith intent to profit, a court may consider many factors, including nine that are outlined in the statute: Registrant’s trademark or other intellectual property rights in the domain name; Whether the domain name contains the registrant’s legal or common name; Registrant’s prior use of the domain name in connection with the bona fide offering of goods or services; Registrant’s bona fide noncommercial or fair use of the mark in a site accessible by the domain name; Registrant’s intent to divert customers from the mark owner’s online location that could harm the goodwill represented by the mark, for commercial gain or with the intent to tarnish or disparage the mark; Registrant’s offer to transfer, sell, or otherwise assign the domain name to the mark owner or a third party for financial gain, without having used the mark in a legitimate site; Registrant’s providing misleading false contact information when applying for registration of the domain name; Registrant’s registration or acquisition of multiple domain names that are identical or confusingly similar to marks of others; and Extent to which the mark in the domain is distinctive or famous Patents Generally: In US, patents are covered by the Patent Act a patent is a government issued grant conferring on inventor the right to exclude others from making, using, offering for sale, or selling the invention for a period of 20 years, measured from the filing date of the patent application. What is a patent? “any new and useful process, machine, manufacture, or composition of matter, or any new useful improvement thereof" may be patented. "process" is defined as "process, art, or method" and includes a new use of a known process, machine, manufacture, composition of matter, or material. Abstract ideas, laws of nature, and physical phenomena are not patentable patents protect inventions, not ideas there must be some embodiment of the idea before there can be identifiable intellectual property protection Patents v Trade Secrets patents are, in one respect, the opposite of trade secrets, another form of intellectual property the inventor must make a full disclosure of invention to obtain a patent, i.e. not secret like trade secrets in exchange for patent rights the patent becomes public information the formula for Coca-Cola is a trade secret but may be patentable if chosen to be open and public patent rights are exclusionary holder does not necessarily have the right to use the invention, but has right to exclude others from making, using, selling, or offering for sale the invention. owner of patent can stop owners from using it, or license his patent in exchange for royalties. Economics of a patent a patent’s true value comes from licensing revenue or preventing a competitor’s use a license can be one of three types exclusive license to a single licensee nonexclusive license to multiple licensees, or license within a limited field of use There are three types of patents utility patent (most common) applies to inventions that have use and protects functionality design patent protects an object’s appearance plant patents protects the appearance and color of plants Length of protection most patents expire after 20 years except for design patents which expire after 14 years different for patent registrations from other countries to obtain a patent, invention must be: novel (1/3) not known or used by others, or patented, or described in a printed publication, or in public use, or on sale more than a year prior to the patent application. NB - telling friends and family about the invention may toll the one-year grace period inventor must file for patent protection within that one year grace period or lose all rights to patent protection. Non-obvious (2/3) not obvious to a person having ordinary skill in the pertinent art as it existed when the invention was made patent examiner will compare the invention with prior art (everything publicly known before the invention as shown in earlier patents and other published material) and judge whether differences between the prior art and the invention would have been "obvious to a person having ordinary skill in the pertinent art as it existed when the invention was made” useful (3/3) it must have current, significant, and beneficial use as a process, machine, manufacture, composition of matter, or improvements to one of these compositions of matter - relates to chemical compositions and may include mixtures of ingredients as well as new chemical compounds also note if the machine, it must also perform its intended purpose to be patentable, otherwise it is not considered useful also note; unlike copyrights and trademarks patents do not arise from use filing the patent application before filing a search for prior art must be made always use a patent attorney with knowledge and experience in patent law who has passed a special exam and is registered to practice before the USPTO nonlawyers who act as patent agents and can prepare patent applications but not practice law are also registered with the USPTO. Once application is filed reviewed by patent examiner which might take 9 to 18 months - similar to trademark process obtaining a patent can be expensive and time-consuming beyond that there are both filing fees and issue fees and in some cases periodic maintenance fees the patent application itself the petition - formal request for a patent the abstract - a short technical summary of the invention with a statement of its use specification - a detailed description of the inventions features claims section - a brief statement in precisely the language of what is being patented, written primarily to show the examiner how the invention differs from prior art drawings section - graphical representation of the invention who is a patent holder? In US, prior to 2011 United States have the “first to patent” system as opposed to most other countries which had the “first file system” this changed in 2011 with the America Invents Act which established a “first to file” standard for patent approval and created a post-grant review system to weed out bad patents. This law affects applications filed on or after March 16, 2013 Joint inventors if two inventors worked jointly on invention they should file as joint inventors one who is a financial backer may not file as a joint inventor In US, patents are filed in the inventors name unlike the rest the world which allows for companies to file for patent ownership. many times companies require a written contract obligating the employee or independent contractor to transfer patent ownership to the company. Most firms routinely include a patent rights assignments clause in the employment contracts. Under the new act (America Invents Act), assignees may apply for the patent Three scenarios where an employer might have patent rights: employment agreement hired to invent Shop right - a common-law right granting a nonexclusive and nontransferable license to the employer allowing use of an invention created during the course of employment by its employee. The nonexclusive nature of this right means the employee could simultaneously license the invention to his employers competitor. Normally arises only where the employee has used the employer's resources to create invention On the Internet Generally speaking we see two categories of patents Business methodologies Software Business method patent discloses and claims new methods of doing business an example of business method patent granted to Internet firms are Priceline.com “reverse auction” and amazon.com “one-click” Software patents An evolving field of law there is a recent trend by courts disavowing software as patent-eligible. The Alice/Mayo framework is the decisional approach adopted by the United States Supreme Court for determining whether a patent claim exhibits, such as software patent claims, embody patent eligible subject matter. The Alice/Mayo framework requires the decision maker, whether a patent examiner, administrative tribunal or reviewing court to ask and answer a series of questions before determining whether the patent claim in question constitutes patent eligible subject matter. For more info: http://www.ipwatchdog.com/software-patents/ Patent infringement infringement is determined by comparing the claims language with the actual product the patent application "claims" section contains a set of claims defining what inventor seeks to patent with his patent for patent to be infringed upon the product must match the definition given in at least one claim to infringe, each and every element of that claim must be present in the infringing product. If an element is missing, then the product does not infringe patents are presumed valid and burden of proof is on accused infringer to prove that it is invalid and should not have been granted, and may use the following: prior art not previously considered insufficient disclosure of the invention fraud Enforceability in various jurisdictions US patents are only enforceable in the United States and its territories - separate patent systems exist in most countries patent protection usually must be sought in each individual country in which it is desired Many countries require that the patented product be manufactured in that country within a specified timeframe (often three years) failure to meet this working requirement will void the patent in some countries, but others grant compulsory licenses to any applicant International patents protection: Paris Convention for the Protection of Industrial Property of 1883 protects industrial property (patents, utility models, industrial designs, trademarks, service marks, and trade names assures signatory nations will grant the same patent and trademark rights to citizens of other signatories as they have their own citizens if an inventor subsequently filed patent applications for the same invention in other member countries within a year after filing the first one, later applications receive a fictional filing date equal to the first one’s filing date aka convention priority supervised by the world intellectual property organization (WIPO) International patents protection: Patent Cooperation Treaty Of 1970 lets an inventor seek patent protection simultaneously in many countries throughout a single application. There are 137 signatories to this treaty including the US, most of the European Community, and Japan process begins with filing in international patent application in one of the country’s “receiving office” an international patent search is conducted for prior art, and an opinion regarding patentability is issued along with an international search report. Eventually both the report and the application are published. International patents protection: Convention On The Grant Of European Patents Of 1973 (European Patent Convention or EPC) set up the European Patent organization and legal framework for granting European patents. Trade Secrets Overall, in re trade secrets: confidential practices, methods, processes, designs, or other information used by company to compete with other businesses Restatement of Torts (2nd.) § 757 comment b “consist[ing] of any formula, pattern, device, or, compilation of information which is used in business and which gives [the business] an opportunity to obtain an advantage over competitors who do not know or use it. Elements: information not generally publicly known information conferring on its holder an economic benefit derived from its secrecy information that is the subject of reasonable efforts to maintain that secrecy examples of trade secrets inventions, formulas, recipes, designs, software designs, manufacturing processes, instructional methods, document tracking processes, and customer or supplier lists. subject to state law, not federal law 46 states have adopted a model statute known as the Uniform Trade Secrets Act (UTSA) prior to UTSA – common law or other state law. internationally, must apply local national law Trade secret protection may be lost if owner fails to take reasonable measures to protect it reasonable efforts include requiring employees to sign nondisclosure agreements and restricting access to need to know basis they even lose protection if disclosed accidentally or inadvertently limited disclosure may not destroy trade secrets depending on circumstances -- e.g if owner disclose information to its licensees, vendors, or third parties for limited purposes. Misappropriation of trade secrets In most states a claim for misappropriation must show: information incorporates a trade secret plaintiff took reasonable steps to preserve the secrecy of the trade secret, and; defendant misappropriated the trade secret or used improper means, in breach of confidential relationship, to acquire Economic Espionage Act of 1996 makes misappropriation or theft of trade secrets a federal offense the act defines a trade secret in § 1839(3) the first part of the act deals with theft of trade secrets to benefit foreign governments but the second part focuses on theft or misappropriation in the corporate environment the act also punishes whomever receives buys or possesses trade secrets knowing to have been stolen or misappropriated, obtained, or converted without authorization