You may have a revolutionary invention, a stunning literary work, or unique branding for a business, but how do you know which vehicle is needed to protect those creations? This legal briefing outlines the various protections intellectual property law provides, when each is applicable, and what type of coverage each protection gives.
TRADEMARK
Trademarks (and service marks) are symbols, words, or phrases that identify the origin of goods or services. Company logos, slogans, products, and service names can all be protected by trademarks or service marks. Similar to copyright, once a mark is created and used in commerce, trademark protection automatically attaches. Common law trademark, as it is colloquially known, provides the owner with legal protection against infringement. However, the benefits of common law trademark are generally only felt after the mark holder has litigated their trademark rights in court.
To receive federal and more useful protection, trademarks must be applied for and registered with the US Patent and Trademark Office (“USPTO”). Once registered, protection may last as long as the trademark is actively used (in interstate commerce). Approximately every ten years, the owner of a trademark must also validate with the USTPO that the trademark is in active commercial and interstate use in order to retain the registered trademark status until the next renewal period.
When selecting a business, product name, or applying for a trademark registration, it can be challenging to make sure your trademark does not infringe on an existing trademark; this is something that a trademark attorney can assist with by performing a “Knockout Search”. Not only do marks have to pass the test of not being confusingly similar to other marks, but they also have to pass a Trademark Examiner’s strength of mark evaluation at the USPTO level. It is important to understand the several different types of marks that may be evaluated, including:
Generic marks such as “bottle” or “license plate” cannot be registered as it would exclude others from referring to a product or service by its common name.
Descriptive marks describe the product or service in question, such as the terms “hot” and “creamy” for soup. Descriptive marks cannot be registered unless they have been distinctively used in a commercial setting for a number of years and gained secondary meaning but even then, it is hard to pass the rigors of the USPTO examination process for descriptive marks.
Suggestive and Arbitrary marks are those that are unique and have either vague or no relation to the product or service, “Netflix” and “Zyrtec” are examples of these.
Fanciful marks are the strongest and easiest to register mark where terms or components of the mark are fabricated by the mark holder, such as “Kodak” or “Google”.
By consulting with an experienced trademark attorney while you are in the planning stages or forming your business, before the mark is used, you can determine the strength of your mark and avoid costly rebranding down the road.
COPYRIGHT
Copyright protection, according to the US Copyright Office, is afforded and available “for original works of authorship fixed in a tangible medium of expression.” This includes works such as writings, videos, songs, software, websites, and other artistic creations. The work must be fixed in a tangible medium of expression in order to be protected by copyright law, meaning that it is recorded (whether written) or captured in some lasting form (audio or video format).
While a copyright automatically attaches to a work upon creation, registration with the US Copyright Office is necessary for protection in cases of infringement. Generally, US copyright protection lasts throughout the life of the author plus 70 years (to be managed by their estate or assignees). Works older than this period of protection or those that were made prior to copyright protections are considered to be of the public domain and may be used freely by anyone. A copyright prohibits anyone else from copying, distributing, or creating derivative works from the copyrighted material. With the current changes to the copyright system coming, (see our legal briefing on the CASE ACT) it is more important than ever to register your creative works proactively.
PATENT
Patents are the third major type of intellectual property protection, that are typically designated for new inventions or discoveries. They provide protection against copying or other unauthorized use, similar to copyright and trademark protection. In general, patents expire twenty years after their approval at the USPTO. In order for a patent to be approved, the invention or discovery in question must not be publicly disclosed. As such, a search for similar existing patents should be conducted by a qualified patent attorney or agent, due to the complexity of the process.
There are three main categories of patents:
Utility patents protect new inventions, processes, or innovations and are by far the most common type of patent.
Design patents protect new and unique decorative, nonfunctional designs and are the less commonly issued patent.
Plant patents protect newly created plant species. These are incredibly rare.
Key Takeaways: A trademark protects the use of a name, brand, or logo used in connection with goods and services. A copyright protects written or recorded literary works of expression, generally art. Patents protect inventions and discoveries including machines, devices, and even plants. Generally, the right time to protect your work, product, or brand is as soon as you create it or intend to create it. Waiting until your work has been used in public may be too late.
Our firm can help you with questions or inquiries regarding intellectual property registration, renewal, or on enforcement in cases of infringement. If you have questions, please contact any member of our firm via our website or call us at 585-730-4773. Please note that any embedded links to other documents may expire in the future.
This Legal Briefing is intended for general informational and educational purposes only and should not be considered legal advice or counsel. The substance of this Legal Briefing is not intended to cover all legal issues or developments regarding the matter. Please consult with an attorney to ascertain how these new developments may relate to you or your business. © 2021 Law Offices of Pullano & Farrow PLLC
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