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Hey, That's My Name! Trademarks, Copyrights, Patents -- What You Need to Know_copy

09.01.1994

Trademarks and Trade Names
Obtaining Trademark Rights
Sidebar: Trademarks
Trade Secrets
Copyrights
Photocopying
Computer Software
Sidebar: Copyright
Patents
Conclusion
Notes

In today's business world, routine security measures, from a lock on the door to a 24-hour guard, are installed to protect a company's physical, tangible property. Equally vital is the protection of your client's often overlooked intangible, or intellectual property—copyrights, patents, trademarks and trade secrets. Your client's intellectual property may consist of its name or logo, its brand names, client lists, inventions, literary and artistic works, or its specially created software or databases. The value of these assets may be threatened, or stolen outright, if not protected from infringement, piracy and theft.

The importance of protecting intellectual property rights has increased with the mobility of employees, the merging of businesses, and especially with the proliferation and diffusion of technology, such as computer software, on-line databases, photocopy machines, satellite dishes and videocassette recorders. These have made access to intangible property increasingly effortless, and the guarding of intellectual property ever more necessary and difficult. Because of the importance of intellectual property rights to your clients, it is critical for the business lawyer to have a general understanding of what these rights entail, and how they should be treated.

A trademark is a brand name which identifies the source of products or services. Words are the most common form of trademarks: KODAK and LONDON FOG. Slogans can be trademarks, as they also are source-identifiers—think of DON'T LEAVE HOME WITHOUT IT used by American Express. Symbols, abbreviations, and combinations of letters and numbers, such as GE, 747 and V8, are well known trademarks. The company 'logo' can also be a trademark such as the 'Rainbow Apple' on APPLE computers. Trademark protection can also extend to label designs, and to characters such as BARNEY.

A service mark is a type of trademark which identifies the source of services, as opposed to goods, such as THE FOUR SEASONS for restaurant services. 'Trademark' will be used in this article to mean either a trademark or a service mark.

A trade name, on the other hand, is the name used to identify a business. It may be a corporate name, the name of an individual, a d/b/a, etc. A trade name, such as Proctor & Gamble, may be the name of the entire business. That business may own many trademarks which identify the source of particular products of the company, such as TIDE detergent and CREST toothpaste.

Surnames can serve as both trade names and trademarks--think of FORD and McDONALD'S—and so can first names, such as BEN & JERRY'S ice cream. Full names, such as JOHN HANCOCK for insurance services, can also function both as trademarks and as trade names.

Almost anything can be a trademark if it serves to identify a specific source, including what is known as trade dress. Trade dress is most frequently used to describe the packaging of goods, such as the CAMPBELL SOUP label, or the shape of the COCA-COLA bottle. Other recognized trade dress includes the decor of a restaurant or the color and shape of a building: a FOTOMAT kiosk; HOWARD JOHNSON's orange roof; or the distinctive configuration of LE SPORTSAC luggage.

Protection of trademarks and trade names is not limited in duration. Rights in a name or mark begin when an application for federal registration is filed or when the mark is simply used in commerce, and may continue for as long as use of the name or mark continues. However, if a trademark is not protected and advertised carefully as a trademark, marks can become generic, unprotectible terms which identify the product itself rather than its source—that is, the trademark becomes the name of the product. For example, KLEENEX is an invented, proprietary trademark and 'tissues' is the generic term for the product. Examples of terms which were trademarks and have become generic include 'aspirin,' 'cellophane,' and 'escalator.' The danger of a mark becoming generic and losing virtually all of its value to the manufacturer is the reason the owners of such valuable trademarks as TEFLON, KLEENEX and XEROX advertise the proper use of their marks. Misuse and genericizing of trademarks by the public often follows misuse of the term by the manufacturer. (See the Trademark Sidebar below to ensure that your client is using its trademarks correctly).

The benefit to your client in protecting and strengthening its trade name and trademarks is clear: the terms identify your client's goods in the marketplace, and distinguish those goods from others. Trademarks also indicate that the goods or services coming from that source are of consistent quality. By identifying a single source, a trademark helps a merchant to advertise and sell its products by describing their quality via a merchandising shortcut.

Unlike many countries in the world, your client need not register a trademark in the United States to gain exclusive rights to use the mark. As trademark rights arise from use of the mark, simply using the mark on the goods, in the ordinary course of business, can automatically create trademark rights in the area in which the mark was used. Federal registration, however, offers many procedural and substantive rights: 

  • Presumptions that the trademark is valid, that the registrant owns the mark and that the registrant has the exclusive right to use the registered mark;
  • Nationwide constructive and possibly conclusive, notice of the registrant's claim of ownership dating back to the date the application was filed if there was no use before then; and 
  • A right to deposit certain registrations with the U.S. Customs Service in order to stop goods bearing an infringing trademark from entering the United States.

Even before using a trademark, your client can apply to register the mark in the U.S. Patent and Trademark Office on a bona fide intent to use a mark in the United States, rather than upon actual use. However, a registration will not issue until the mark has actually been used. The trademark registration process normally takes more than one year and is started by filing a form with a 'drawing' of the month, 3 specimens showing the mark if it is in use, and a $245 filing fee.

Sidebar: Trademarks

Proper Use of Trademark

It is important to use a mark properly.

1. Always differentiate the trademark from the words around it: place the mark in all caps, in bold lettering, within quotation marks, in italics or in some other special form.

2. Use the trademark only as a proper adjective (i.e., modifying the generic term for the product) and not as a noun:

wrong - Buy KLEENEX when you shop next.
correct - Buy KLEENEX tissues when you shop next.

3. Never use a trademark in the possessive form:

wrong - the I.B.M.'s best feature is...
correct - the best feature of the I.B.M. printer is...

4. Never use a trademark in the plural form:

wrong - John Jones wears only ROCKPORTs
correct - John Jones wears only ROCKPORT walking shoes.

5. Identify your mark as a trademark: if the mark is federally registered, use ® or the phrase, 'Registered U.S. Patent and Trademark Office,' which is abbreviated: 'Reg. U.S. Pat. & Tm. Office.' If the mark is not registered, use ™ (or ? for service marks) to show that you claim common law rights in the mark. Although notices of registration are not mandatory, they usually are necessary to obtain damages from an infringer.

Trade Secrets

A trade secret is any information that can be used in the operation of a business or other enterprise which is sufficiently valuable and secret to afford an actual or potential economic advantage over others. Trade secrets can be customer lists, formulas, recipes or computer programs. The formula for COCA-COLA, for example, is a famously well-guarded trade secret.

Like a trademark, a trade secret can endure for an unlimited period of time. But a trade secret is lost when it is disclosed or discovered—that is, when it ceases to be a secret. Thus it is essential to maintain proper safeguards within a corporation, and to require all employees to sign carefully drafted nondisclosure agreements. For, once disclosed, no action may be available against the use of even an exact copy of the material or information. Even if an injunction and sanctions are sought, it may too late to control the damage.

Protection of trade secrets is based solely on state and common law, with most states having adopted some version of the Uniform Trade Secrets Act. Trade secret law only protects against misappropriation. If any party independently discovers the secret, or is able to recreate it through reverse engineering, trade secret law offers no protection.

Copyrights

A copyright is a grant of specific rights exclusively to the author of a work. This may include the corporate author who commissioned the work, but it generally is necessary to get written copyright assignments from freelances. The exclusive rights of the copyright holder are: the right to duplicate (copy) the work; to distribute, publicly perform and display the work; to prepare derivative works based upon a copyrighted work; and to authorize others to do any of these things. Unauthorized copying of a copyrighted work constitutes copyright infringement.

Federal copyright protection automatically extends to any original work the moment at is fixed in a tangible form. 'Original' simply means that the work was independently created; only a mere modicum of originality is required. 'Fixed in a tangible form' generally means the work was written down or recorded on tape, etc. All literary and artistic works, including advertising, labels, computer programs, motion pictures and audiovisual works, and compilations of works, are copyrightable—as are fabric patterns, charts, graphs, maps, pantomimes and dance choreography. As of December 1990, the Copyright Act was amended explicitly to protect architectural works and coin-operated electronic games.

Copyright never protects the facts, or ideas contained in a work; these may be freely copied. Copyright also does not protect against the 'independent creation' of a work—that is, a work that was separately developed and not copied or based upon a copyrighted work.

While the material protected under copyright law is broad, the protection it affords under the U.S. Constitution is only 'for limited times.' The policy grounds for limiting the term of copyright protection is clear: the copyright monopoly and the payment of royalties to the copyright holder during the copyright term encourage authors to create original works, while society benefits when the works eventually enter the public domain and become free for anyone to use.

The duration of copyright protection is fairly long—for works created after January 1, 1978, copyright protection lasts for the life of the author plus 50 years. If there is more than one creator, protection lasts for the life of the longest surviving author plus 50 years. For a work made for hire, or a corporate or anonymous work, copyright lasts 75 years from publication or 100 years from creation, whichever expires first. Different duration rules apply to older works.

Registration of the the copyright in a work with the U.S. Copyright Office, which can be done at any time after the work is created, is not required, although registration is a prerequisite to suing an infringer and to recovering statutory damages or attorney's fees for infringement. Copyright registration, which requires completing a short form and depositing one or two copies of the work with a twenty dollar fee with the Copyright Office, is simple, inexpensive, and generally advisable, if only to establish the information concerning when the work was created and by whom.

Copyright notice is no longer required under U.S. law. But it is still advisable to place a copyright notice on your client's material: © or Copyr., the copyright owner's name, and the year of first publication. This cuts off any 'innocent infringer' defense if the work is copied or used without authorization. Remind your clients that because notice is no longer required, they cannot assume that if a copyright notice is absent from a product, catalog or advertisement, that the material is in the public domain and can be freely copied.

Your client should be advised that recent court decisions in the following areas may require increased attention:

Photocopying 

  • Making photocopies of entire newsletters or periodicals in lieu of taking out an additional subscription is copyright infringement. Publishers are enforcing their rights vigorously. Systematic photocopying by corporate libraries is likely to be deemed copyright infringement. If your client does a great deal of photocopying of published articles, it may be worthwhile to apply for a photocopy license from the Copyright Clearance Center (CCC), where over a million titles and 8600 publishers are registered, by writing them at 27 Congress Street, Salem, MA 01970; Tel.: 508-750-8400; Fax: 508-750-8400.
  • If your client regularly photocopies or otherwise reproduces (e.g., copies electronically into a database) articles in order to keep employees up-to-date, permissions or licenses are required from the CCC or from the publisher.
  • For articles which mention your client, it is a fair use (not a copyright infringement) for your client to copy and internally distribute the article. It is likely to be considered a fair use to externally distribute (to customers, as part of a press release, etc.) a portion of an article which mentions your client, but permission should be obtained for more extensive use.
  • It is generally less risky to use or quote from articles in newspapers than from subscription newsletters. For articles of interest to your client (e.g., involving its industry), some internal use can safely be made. Salient points can be paraphrased, and the article may be quoted if there is a very limited number of ways to express certain facts. (E.g., 'Whiggit Corp. acquired all outstanding stock of Whoha, Inc.'). The facts in the article (rather than the way those facts are expressed) are not protected by copyright.

Computer Software

Computer software is copyrightable subject matter. Unless your client owns the copyright, or has a proper license in place, it cannot make copies of software by installing the program on a hard disk or network. If a computer program has been especially created for your client, it is better to own the copyright in the software (or at least the copyright in the particular version created for the client) because your client may be able to market that software to others or may wish to make it unavailable to others.

Sidebar: Copyright

Where Copyright Protection May Not Be Enough

- Protecting Databases

In a recent Supreme Court decision, Feist v. Rural Telephone, the Court rejected any copyright protection for telephone directories, because facts—and the effort it takes to compile facts—are not copyrightable. However, there are still methods of protecting the facts in databases. 

  • If proprietary data is made available to third parties via contract, the contract can limit what use can be made of the data (e.g., a mailing list can only be used one time and only for a pre-approved mailing) which may not be accomplished through copyright. 
  • It may be advisable to lease valuable information under contract, rather than to sell limited edition directories or CD ROM's. Depending on the type of data and its means of distribution, methods may need to be developed to insure compliance with the contractual limitations on use, e.g., seeding mailing lists.
  • Amend existing contracts to reflect that limitations on the use of released data are based on contract (and possibly trade secret law) and not just on copyright law.
  • With the lessening of copyright protection for databases, trade secret protection may fill the gap. Take the following precautions:
  • Advise your client to maintain its database (or limited circulation directory) as confidential, trade secret information. 
  • Adopt proper safeguards within the corporation to limit employee access to the database, and emphasize that the database is valuable property belonging to the company. Both old and new employees should sign nondisclosure agreements.  
  • Do not allow customers to have access to the entirety of your client's database.

Your client should be made aware that data supplied to it by third parties may carry similar contract or trade secret restrictions as to use by your client.

Patents

A patent is a grant from the federal government which allows the patent holder to exclude others from making, using, or selling an invention. A utility patent, which normally lasts for 17 years from issuance, may be obtained for new and useful inventions; a design patent, which lasts 14 years, protects a new, original and ornamental design for a man-made product; and a plant patent is granted for 17 years to protect new varieties of plants.2

Unlike a trade secret, which loses its protection when it is disclosed, an invention must be disclosed in order to secure an absolute patent monopoly in the invention for a limited time. Again, the societal benefit is perceived as rewarding inventors for their creations, but at the same time making the invention free for public use in the future.

A patentee's invention is defined in the one or more numbered paragraphs, or 'claims,' which appear at the end of a patent. A patent is obtained by filing a patent application, multiple drawings and a lengthy technical statement, with the Patent and Trademark Office, where it is examined by an Examiner who compares the invention with known references, or prior art, to determine whether the invention is novel and 'unobvious.' This process can take several years and is quite expensive.

When a patent application is filed, your client may use the notice 'Patent Pending' on the article and on its advertising when the patent issues, the notice should consist of the word 'Patent' or 'Pat.' and the number of the patent. Notice is not mandatory but it provides constructive notice that may increase damages in case of infringement.

Trademarks and copyrights become effective immediately upon use or creation, and last for many years; a patent, on the other hand, is effective only after the patent issues, and normally lasts only for a relatively short period. However, the protection afforded by a patent is very strong: a patent prohibits any unauthorized manufacture, use or sale of devices or processes embodying the invention—even if innocently infringed, independently invented or discovered by reverse engineering.

Conclusion

Shielding intellectual property is becoming increasingly common and formality free. If your client's intellectual property is protectible under copyright, trademark, trade secret or patent law. You should make same that the proper steps are being taken to preserve those rights. Unless your client protects its intellectual property with the vigilance it uses to guard its physical property, little may prevent a competitor from marketing similar products or services—or even exact copies of a work or invention—under a confusingly similar name, and to the same customers. One of the wisest investments your client can make is to seek competent legal advice to ensure that its valuable intellectual property is fully defended against infringement or theft.

NOTES

1 This article was originally published in Business Law Today, the magazine of the American Bar Associations's Section of Business Law, in the September/October 1994 issues, Vol. 4, No. 1.

2 With the implementation of legislation required by GATT, the general term of patents will soon become 20 years from filing.

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