Intellectual Property in the USA

An Expert's View about Trademark Protection in the United States

Posted on: 2 Jun 2010

Intellectual Property in the USA

By Aaron N. Wise, Attorney at Law © 2009


Patents: A U.S. patent confers an exclusive right upon its owner to use the patented invention and prevent anyone else from using it for the patent’s duration. The invention must be a new, novel and non-obvious product (manufactured article), process, machine, chemical composition or a distinct, new variety of plant. The patent’s term is generally 20 years from the U.S. application filing date or, in special cases, from the filing date of an earlier related U.S. application. A design patent, valid for 14 years, applies to a new, non-obvious ornamental design of a manufactured article, not its structural or functional features. A foreign (non-U.S.) patent does not protect the patented invention in the USA or in any country other than the one that granted it. Under U.S. law, a patentee that makes or sells patented articles, or its licensee, must mark the articles with the word “Patent” and the patent number. Not doing that precludes the patentee or its licensee from recovering damages from an infringer unless the infringer was duly notified of the infringement and continued to infringe after the notice. Some types of computer software can qualify for U.S. patent protection, and where that applies, the protection will usually be stronger than by copyright. You may wish to explore that potential option.


Trademarks: A U.S. federal trademark registration is an exclusive right of the owner to use a specific word or words, name, design or logo, or other designation of source of origin, or combination thereof, in connection with specified goods and/or services. It is valid for 10 years, and is renewable if certain requirements are met. Trademark rights can be used to prevent others from using a confusingly similar mark. Certain trademark rights may accrue to the holder of an “unregistered mark” used commercially in the USA (a “common law trademark”) but they are normally less extensive and more tenuous than those conferred by a U.S. federal trademark registration. A federal trademark applies throughout the USA. U.S. states have their own separate trademark system, thus, a trademark can, upon meeting the requirements, be registered in one or more particular states. It is possible for the owner to obtain both a U.S. federal and one or more state registrations for the same mark. A foreign registered trademark does not confer trademark protection upon its owner in the USA or in any other country than the one in which it is registered.


Domain names: A registered domain name confers upon the registrant the exclusive right to use it for its website and on the Internet. It is not to be confused with a registered U.S. federal or state trademark. In fact, it is possible that use of your domain name may infringe the trademark rights of a third party; or, that a third party’s domain name use can infringe your trademark rights. Also, often there are a number of domain names that are very similar or even identical, except for, e.g., its TLD (.com, .org, .biz, .edu, etc.), so that the scope of domain name exclusivity is narrowly circumscribed. There are great number of domain name registrars, which are accredited by The Internet Corporation for Assigned Names and Numbers (“ICANN” or “InterNIC”). It is possible to lose one’s domain name to another holding a federally registered trademark or superior rights to the mark. Holding a federally registered U.S. trademark for the same name as your domain name is typically the best solution for you (the foreign company or business person).


• Copyrights. A copyright under U.S. law provides protection to an author of an original, copyrightable work of authorship, including literary, dramatic, musical, artistic, architectural, and a broad range of other works, both published and unpublished. The work must be fixed in a tangible medium of expression. It confers on the owner the exclusive right to reproduce the work, to prepare derivative works, to distribute copies or phonorecords of the work, to perform it and display it publicly. Copyright protects the work’s form of expression rather than the subject matter. For example, an original description of a machine could be copyrighted, but that would only prevent others from copying that description; it would not preclude others from writing their own description or making or using the machine. Under U.S. law, a copyright’s duration depends on, e.g., when the work was created, published and /or registered with the U.S. Copyright Office; and on whether it was created by an individual, more than one individual, or an employee or at the direction of another person or company; and if the work was created before or after January 1, 1978. Those rules are too complicated to explain here. While copyright arises upon creation of the original work (when it is fixed in a copy or a phonorecord for the first time), filing with the U.S. Copyright Office is necessary to properly protect the owner. Regarding that last point and others, see the section below, “Filing with the U.S. Copyright Office (Copyright Applications)”.


• "Trade secrets" are well protected in the USA. A "trade secret" can be, broadly speaking, any type of information of an industrial, technical or commercial nature known to one or a limited number of enterprises or interested persons, which has some value to the holder and which the holder treats as being secret or proprietary. Examples of trade secrets include: a secret process, method, formula, device, manufacturing procedure, method of construction, or a customer list. If "know-how" (which has no precise, legal definition) is secret, it can be protected in the USA as a trade secret.


“Right of Publicity” and “Right of Privacy”. There are certain other “rights” that might be considered to fall with the general scope of intellectual property, for example, “rights of publicity” and “rights of privacy”. Generally and loosely speaking, the former protects an individual’s right against unauthorized use of his persona, personal image, personal characteristics etc.; and the latter, against unauthorized invasions of his or her right of privacy. These are matters of U.S. state law, and the extent to which one or the other or both are recognized, and the scope of protection, varies from state to state. Some states have specific statutes dealing with one or the other (e.g., New York State and California). In some states, a common law right, particularly of privacy, may also apply.


• The Trademark Application Process in the USA. The process of getting a trademark registered in the USA can be complicated and time consuming. First, your lawyer has to do a “trademark search” to determine whether there are existing, third party registrations, pending applications, common law marks etc. that might present a problem. That can be done in two ways: ordering from a search company and analyzing a formal search report; or by searching the US Patent & Trademark Office (“USPTO”) website. The former is the more comprehensive, safest way. Assume that the search reveals no significant problems, and that the decision is made to apply for trademark protection---to prepare and file an application.


The US and many foreign countries are parties to an international trademark Protocol (Madrid Protocol). If the foreign party’s country is a party to it and has a home country trademark registration for the mark it wishes to protect in the USA covering the same general types of goods and services it wishes to protect there, it can use that registration to generate an “international application” and file that in the USA. Generally speaking, that is not advisable, at least if the “international application” is not reviewed and “sanitized” by U.S. counsel before filing. The typical foreign country registration will set forth the goods and services in a very broad way, and the USPTO examiner will not accept that. The USPTO requires that the goods and services be very specifically described. Also, sometimes, goods and services that appear in a foreign registration under one or the other Class, will not correspond to the same Class in the USA. The result, often enough (and this author has experienced a number of cases of this type), is a tedious and expensive procedure to adapt the goods and services description to one that the USPTO examiner will accept. Additionally, it typically takes a longer time for an “international application” to reach the USPTO and an examiner than a traditional U.S. application. The point is: either have your U.S. lawyer prepare the U.S. trademark application (not using an “international application” at all); or, if the decision is to proceed with an “international application”, then have your U.S. lawyer review and adapt it before it is filed with the USPTO to one that the assigned USPTO examiner is more likely to find acceptable.


The reader should bear in mind that the USA is a “use country”: a U.S. trademark registration will not be granted unless and until the applicant states and presents evidence to the USPTO that it has used the mark commercially in U.S. interstate or international commerce, for at least one item shown in the particular trademark class concerned. The U.S. application will either be based on such “actual use” having been made, for the particular class or class concerned; or, for the classes in the application in which that use has not yet been made, based on “future intent to use”, and at a later point in the process, the applicant will have to file a declaration and evidence of the “actual use” to obtain a registration for that class. The “international application” mentioned above offers the advantage that one does not have to claim and demonstrate “actual use” at any point in order to obtain a U.S. registration. However, that “advantage” should not fool you into thinking that the “international application” is the way to proceed----your U.S. lawyer should evaluate that and help you decide.


In passing, the trademark application process in Canada, also a “use country”, is also rather complicated and quite similar though not identical to the U.S. model. But more complicated and tedious than that of most European countries. Two key differences: Canada does not use “trademark classes”(which can make for complications); and the “international application” discussed above cannot be used in Canada as that country has not adopted the Madrid Protocol.


The trademark application process in Mexico is rather simple, similar to that in many European countries. Mexico is not a “use country” in the sense mentioned above for the USA and Canada. It has a “wrinkle” or two, such as that for each trademark class in which one applies, a separate application must be filed.


The main reason for mentioning Canada and Mexico is that commonly, a company will want to search and, if that goes well, apply for trademark protection in the USA and in both of those other countries, or at least in Canada.


This author normally advises clients that the trademark work is among the very first things they should undertake. Likewise for the patent and copyright work.


Filing with the U.S. Copyright Office (Copyright Applications). While nearly universally copyright arises on creation of a copyrightable work, the USA is the only country known to this author that requires registration of the work with the U.S. Copyright Office to obtain the full scope of protection and legal remedies against infringers. Among other benefits, registration


? is necessary before a copyright infringement suit can be filed in a U.S. court for works of U.S. origin.


? if done within 3 months after publication of the work or before an infringement of the work, enables the copyright owner to claim “statutory damages” and an award or its attorney fees in court actions. Otherwise, only an award of actual damages and profits is available to the owner.


? allows the copyright owner to record that document with the U.S Customs Service to protect against the importation of infringing copies of the work. See above regarding a general description of copyrightable items. More particularly, among the types of items that can typically be protected and filed include: (i) computer software; (ii) designs, specifications, and descriptions of a machine, product, or the like; (iii) publications and manuals; and (iv) your website text. A proper copyright notice should be put on your copyrighted items. As already mentioned, certain types of computer software may qualify for U.S. patent protection, and that should be explored since patent protection may offer greater benefits. In short, if you have copyrightable items, you should have your U.S, lawyer file copyright applications for them with the U.S. Copyright Office. This too should be a priority item.



Posted: 02 June 2010

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