Intellectual Property Law
Copyright
Trademark and unfair business
Patent
rademarks
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