Patents Trademarks and Copyrights

All entrepreneurs want to and frequently need to protect their innovations.  The questions then become can you and do you need to?  You need to consider patents trademarks and copyrights.

Clearly, it is hard to protect a fitness center, except for the name.  You do need to protect many technological innovations.  You also need to understand the limits of protection, especially if your idea is not really new.  Similarly, products like apparel are simple to copy and change and thus, difficult to protect.

There are a number of different mechanisms available to protect your innovations:

PATENT

A limited duration property right relating to an invention, granted by the United States Patent and Trademark Office in exchange for public disclosure of the invention.

TRADEMARK

A word, phrase, symbol, and/or design that identifies and distinguishes the source of the goods of one party from those of others.  A service mark is a word, phrase, symbol, and/or design that identifies and distinguishes the source of a service rather than goods.  The term “trademark” is often used to refer to both trademarks and service marks.

COPYRIGHT

Protects works of authorship, such as writings, music, and works of art that have been tangibly expressed.

While simple and government are seldom used in the same sentence, the United States Government’s Patent and Trademark website (www.uspto.gov) actually has useful, straight forward information both to explain the issues regarding patents trademarks and copyrights, and provides forms to help guide you through the process.  This guide simply tries to explain the nature, process and potential of these protection mechanisms.

PATENTS

Every once in a while, people will toss around ideas for potential inventions.  Like my son’s ultimate alarm clock, which wakes you up, tells you the weather, and makes tea and toast.  Few of us have ever gotten past the talking phase.  But, a lot of other people have.  Last year, the United States Patent and Trademark Office reported that 1.5 million patent applications were pending, compared with around 269,000 in 1992.  The office issued around 270,000 patents in 2012, about 160,000 more than two decades previously.  A large and growing percentage of patents are from major corporations.

Types of Patents

There are three types of patents.

UTILITY

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.

DESIGN

May be issued to anyone who invents a new, original, and ornamental design for an article of manufacture.

PLANT

May be granted to anyone who invents or discovers and asexually reproduces any distinct and new variety of plant.

Getting a patent can be beneficial but is not the end all. You still need a great product, marketing and operations to support it.

It’s very easy to believe that a multimillion-dollar invention is just a twist of a screwdriver away.  There are clear steps in researching, getting, and enforcing a patent.

Research Related to Obtaining a Patent

In considering a patent, make sure to do some preliminary research.  Google, for example, allows you to research patents at www.google.com/patents.  You can also look at the United States Patent and Trademark Office site to see if your crazy idea has already been patented.

Determining Whether to File a Provisional Patent Application

After you research to determine whether your idea has not yet been patented and it looks as if you have a unique product, one inexpensive option in the early stage is to file a provisional patent application with the patent office.  A provisional patent typically costs $65 to $260, depending on how many pages your patent needs.  Most people can do it themselves, but an attorney can make it simpler and can provide a structure for future success.

A provisional patent application is good for only one year and essentially protects you from someone else claiming your invention.  Thus, you have time to develop and see if there’s a market for it before going through the more onerous full patenting process.  The application process can also have a favorable consequence of simply discouraging firms from entering the business.  An added benefit to a provisional patent is it gives you time to consider whether the idea is so significant that you should also be filing for patent protection worldwide.  If so, a patent attorney will be essential and the costs will be higher.

Executing the Patent Process

It typically takes about 1-2 years to get a patent processed at a cost of $10,000 to $30,000 for a U.S. patent.  Your patent is reviewed and then faces questions from the patent office and potential competitors.

Enforcing the Patent

After you receive the patent, enforcing it is the next step.  This can sometimes be easily accomplished by sending simple letters or just discouraging competitors.  If that fails, you need to consider the cost and potential of litigation.  Litigation can produce huge settlements or decisions.  However, it can also cost tens of thousands of dollars and far more, take a few years and you can lose.  Remember, your competition may have at least convinced themselves that their product is different than yours.  Or, your competition may have large financial pockets and a willingness to fight despite the potential litigation costs.

Finally, getting a patent can be beneficial but is not the end all.  You still need a great product, marketing, and operations to support it.

TRADEMARKS

A trademark or service mark includes any word, name, symbol, device, or any combination, used or intended to be used to identify and distinguish the goods/services of one seller or provider from those of others, and to indicate the source of the goods/services.

Although federal registration of a mark is not mandatory, it has several advantages:

• notice to the public of the registrant’s claim of ownership of the mark;
• legal presumption of ownership nationwide; and
• exclusive right to use the mark on or in connection with the goods/services listed in the registration.

Ownership of Mark

Only the owner of a mark can file an application for registration.  Generally, the person who uses or controls the use of the mark, and controls the nature and the quality of the goods to which it is affixed, or the services for which it is used, is the owner of the mark.  The mark could have been created by another and assigned to the owner for registration.

Examples of Marks that can be Registered

• Name – an adjective which defines a generic item, e.g., Kleenex™ Tissues.
• Logo – a fanciful design with or without color.
• Symbol – a graphic design.
• Slogan – a collection of words usually arranged in a phrase, e.g., Best in the West℠
• Color in a Mark – one, two, or more colors arranged in a distinctive pattern.
• Shape – configuration of the product or container in which the product is packaged.
• Scent or Smell – a selected or distinctive aroma impregnated into a product.
• Color as a Mark – a color associated with an object or a service and creating a distinctive commercial impression.

  When considering protecting intellectual property make sure you are making the proper filing decision at the outset of the filing process.

Scent, Color as a Mark and Sound can be registered as a mark, but the evidence to establish register-ability is substantial.  In this particular circumstance, the services of a trademark attorney are strongly recommended.

Must all marks be registered?

No, but federal registration has several advantages:

• notice to the public of the registrant’s claim of ownership of the mark;
• legal presumption of ownership nationwide; and
• exclusive right to use the mark on or in connection with the goods or services set forth in the registration.

There are certain marks, however, which cannot be registered such as government logos, immoral materials, people’s names, etc.

Essential Fact of Intellectual Property

It is important to understand whether you should file for a trademark/service mark, a patent, and/or a copyright.  While all are types of intellectual property, each protects something very specific.  Please study how trademarks, patents, and copyrights differ to ensure you are making the proper filing decision at the outset of the filing process.

Initial Protection

Rights in a trademark or a service mark can be established based on legitimate use of the mark.  Immediately upon creation, the mark should include the appropriate notation, “TM” for goods and “SM” for services.  Examples are shown below:

• STARR℠ Reality Services
• STARR™ Home Building

A trademark and the notation can be placed in any manner on the goods or on containers of the goods or the displays associated with the goods or on tags or labels affixed to the goods.  If the nature of the goods makes such placement impracticable, the trademark can be placed on documents associated with the goods or the sale thereof.

A service mark notation should be used and displayed in the sale of services or the advertising of services.

Registration

A mark must be currently in use in commerce to obtain a federal trademark registration.

A trademark or service mark can be registered by a company or an individual.  A federal trademark application can be filed online at (www.uspto.gov).  A mark can also be registered by use of a paper mail-in form obtainable from the Trademark Office.  Regardless of the method used to file a federal trademark application, it is strongly recommended to use the services of a qualified trademark attorney.  The basic filing procedures are set forth briefly below.

A drawing of the mark and a specimen are required to accompany the application if the mark is a logo, symbol or includes color.  For submission of a stylized, design or color mark, refer to “TEAS Electronic Filing Tips.”  Complete the form and then click on “Validate Form” at the bottom of the page.  The Trademark Office provides for filing on line.  Read the instructions concerning “electronic signature” and sending payment.

After the Certificate of Registration is received, replace “TM” or “SM” with ®.

Benefits of Registration

The specific benefits accorded a mark registered with the USPTO are:

1. Constructive notice to the public of the registrant’s claim of ownership of the mark;
2. A legal presumption of the registrant’s ownership of the mark and the registrant’s exclusive right to use the mark nationwide on or in connection with the goods and/or services listed in the registration;
3. Jurisdiction of the federal courts to uphold the registrant’s claim to the mark;
4. Registration can be used as a basis for obtaining registration in foreign countries; and the ability to file the registration with U. S. Customs and Border Protection to prevent importation of infringing foreign material.

Protecting a Mark After Registration

To protect a mark after registration, several important guidelines should be followed when using the mark in advertising, literature, displays and signs, product packaging, labels, business documents and correspondence.

The following are general guidelines:

1. Use the mark consistently, as each deviation may create a new, different mark.
2. Use the mark continuously and do not abandon the mark. This includes filing regular notices of continued use.
3. Prevent others from using and registering confusingly similar marks.
4. Register the mark with the U.S. Customs & Border Protection to prevent importation of infringing products.

COPYRIGHTS

Copyright is a form of protection provided by the laws of the United States for original works of authorship or artistry including literary, musical, architectural, cartographic, choreographic, pantomimic, pictorial, graphic, sculptural and audiovisual creations.  “Copyright” literally means the right to copy.  This protection is available to both published and unpublished works.

Authorship

Only the author or those deriving their rights through the author can rightfully claim copyright.  The author may be the creator of the work.  In the case of works for hire, the employer, and not the employee, is considered the author.

Copyright law defines a work for hire as:

1. a work prepared by an employee within the scope of his or her employment; or
2. A work specially ordered or commissioned.

Works Protected by Copyright

Copyright protection subsists in original works of authorship fixed in any tangible medium of expression which can be perceived, reproduced or otherwise communicated. 

Works of authorship include the following categories:

1. literary works, including computer programs;
2. musical works, including any accompanying words;
3. dramatic works, including any accompanying music;
4. pantomimes and choreographic works;
5. pictorial, graphic and sculptural works;
6. motion pictures and other audiovisual works;
7. sound recordings;
8. architectural works; and
9. vessel hull design works.

Initial Protection

Copyright is a form of protection provided by Title 37 of the United States Code to the authors of original works of authorship or artistry.  This protection is available to both published and unpublished works.  The original author can transfer the rights of ownership to another.  The owner of copyright has the exclusive right to do and to authorize others to do the following:

1. to reproduce the work in copies or phonorecords;
2. to prepare derivative works based upon the work;
3. to distribute copies or phonorecords of the work by sale or other transfer of ownership, or by rental, lease or lending;
4. to perform the work publicly;
5. to display the copyrighted work publicly; and
6. In the case of sound recordings, to perform the work publicly by means of a digital audio transmission.

To do any of the above without permission of the owner is an infringement of the rights of the owner and is subject to litigation.  It is permissible, however, to record any material received by a television set.  The material thus recorded cannot be duplicated, sold, rented nor given to another.

MARKING

The creator of a work has vested interest in the work, automatically, upon creation of the work.  Neither publication nor registration is required.  The absence of marking or registration does not compromise the protection.  However, it is advisable to register a work as soon as possible, and to give notice to the public by affixing the copyright notice to the work immediately upon completion of the work.

Although not required, the notice for visually perceptible copies should contain all the following three elements:

1. the symbol © (the letter C inside a circle), or the word “Copyright” or the abbreviation “Copr”;
2. the year of first publication; and
3. the name of the owner of the work.

Example: 2006 © John Doe

If the work is subsequently updated or revised, the date of the last revision should also be included.  Intermediate revision dates are not to be included.

Example: 2006, 2007 © John Doe

A phonorecord is the physical object in which works of authorship are embodied.  The word phonorecord includes cassette tapes, CDs, LPs, 45 rpm disks, and other similar formats.  The notice for phonorecords embodying a sound recording should contain all the following three elements:

1. the symbol ℗ (the letter P inside a circle);
2. the first year of publication; and
3. the name of the owner of the copyright.

Example: ℗ 2002 ABC Records

Registration

Registration of a work is a relatively simple procedure which can easily be accomplished by the owner.  The Copyright Office home page provides links to several informative pages which should be reviewed prior to beginning the registration process.  Several application forms are available online.  Each form is dedicated to a specific type of work.  Some of the forms and the corresponding type of work relevant to each are set forth below:

• Form TX — literary works including fiction, nonfiction, poetry, reference works, directories, catalogs, advertising copy, and compilations of information and computer programs.
• Form PA — performing arts, whether performed live or recorded, including musical works, dramatic works, pantomimes, choreographs, motion pictures, and other audiovisual works.
• Form SR — sound recordings including music, spoken, or other sounds and the underlying musical, dramatic, or literary work embodied in the recording.
• Form VA — two or three dimensional works of art including fine, graphic and applied art, photographs, prints, art reproduction, maps, globes, charts, technical drawings, diagrams, models, and architectural works.
• Form SE — serial works and periodicals including newspapers, magazines, newsletters, annuals, and journals.
• Form MW — patterns or integrated circuits fixed on a computer chip.
• Form D-VH — vessel hull designs.

The three elements of the application, completed form, copy of work and fee, must be sent in one envelope.  The time the Copyright Office requires to process an application varies, depending on the amount of material the Office is receiving.  If the application is in order, the certificate of registration will be received approximately 4 months after submission.

The requirements for registration are:

1. a completed application form;
2. a deposit, a copy of the work; and
3. the current filing fee.

SUMMARY

Patents copyrights and trademarks need to be understood and utilized to protect your proprietary innovations and reputation.  However, you need to evaluate the costs and benefits of obtaining that protection as well as the probability of achieving it.  The process of getting patents trademarks and copyrights is also complex and time consuming and has long term implications.  Thus, having an attorney is highly recommended, despite the annoying cost.