By: Kennington Groff
At the heart of any business is its distinctive brand and the ideas behind it that set it apart. Intellectual Property affects all individuals and businesses from entrepreneurs, start-ups, national and international companies in a variety of industries including technology, financial services, computer hardware and software, pharmaceutical, manufacturing, marketing, fashion and entertainment to name a few. No matter what stage your business is at, the most important thing is protecting your brand and ideas.
So you’ve heard the term Intellectual Property before, but what does it actually mean? The law defines Intellectual Property as “any product of the human intellect that the law protects from unauthorized use by others.” In simpler terms, it is defined online as “a work or invention that is the result of creativity….to which one has rights.” There are 4 types of Intellectual Property: (1) Trademark, (2) Copyright, (3) Patent and (4) Trade Secret.
How do you know which type of protection you need? Check out the below descriptions of each form to help you distinguish the protection that is best suited for you or your business.
The United States Patent and Trademark Office defines a trademark as “a word, phrase, symbol, and/or design that identifies and distinguishes the source of the goods of one party from those of others.” The main goal of a trademark is to (1) prevent consumer confusion and (2) be a source identifier to allow a customer to quickly identify your goods/services. This helps businesses and inventors protect their reputations and investment so that consumers are not misled.
One of the biggest ways to protect your goods and/or services is to register your trademark with the United States Patent and Trademark Office. This puts infringers on notice that your brand is registered and allows you to include the registered trademark symbol, which is: ®
For example, the McDonalds golden arches, the Nike swoosh, Coca-Cola’s glass bottle and Apple’s apple logo are all examples of design trademarks aka logos and brands. These are all examples of excellent logos that have become so distinguishable that they don’t require words to be identifiable by a consumer. Further, when we hear words like Starbucks, FedEx, Mercedes-Benz, and Google to name a few, a logo or a description of the goods/services offered by these companies is not required because we immediately associate the word with the goods/services.
Now, you might be thinking what about brands that have the same name like “Delta” for planes and “Delta” for faucets? If two business operate in completely different market spaces, then they may have the same trademark. This is because ultimately the goal of trademarks is to prevent brand confusion, and consumers are not going to confuse an airplane with a faucet. Consumers are not going to mistakenly go to buy faucets at the airport.
Unlike copyrights and patents, trademark rights can potentially last indefinitely. Trademark rights are based on actual “use” so as long as a trademark owner continues to use its mark in commerce to identify its goods/services, the rights in that mark can last forever. However, in order to maintain a trademark owner’s exclusive rights to use its mark in connection with its goods/services, the owner is required to “police” its mark. This means that the trademark owner needs to take steps to stop others who are using the mark or a similar mark in connection with related goods or services. If you are aware of infringers you should contact an attorney to reach out to the potential infringer. Failing to take action to protect your mark could cause your trademark rights to be weakened or lost.
Copyright is a form of protection that extends to “original works of authorship fixed in a tangible medium of expression.” Copyrights protect works including “literary, dramatic, musical, and artistic works,” such as poetry, novels, stage productions, movies, songs, sculptures, photographs, sheet music, and elements of fashion design and architecture.” Copyright protection even extends to digital material such as computer software, video games, online videos, website content, and even social media content. Things such as ideas, facts and methods of operation are not copyrightable, but the expression of ideas are, which includes both published and unpublished works.
In order to be afforded copyright protection, the work of authorship must (1) meet the requisite levels of creativity and originality and (2) be “fixed in a tangible medium” that can be “perceived, reproduced, or otherwise communicated, either directly or with the aid of a machine or device” for more than a transitionary period of time.
The owner of a copyright has the right to reproduce the work, prepare derivative works, distribute, display and perform it, and license the work for a period generally extending for the life of the author plus 70 years after the authors death.
There is a common misconception that copyright registration isn’t really all that important since certain works are protected by copyright law once they’ve been created in a tangible form; however, you will not be able to enforce your rights in that work unless you have registered your work with the United States Copyright Office – or at least proven that you tried and were refused. Further, if you register your work after infringement has occurred, your recoverable damages will be limited.
Copyright protection is robust, but there is an important exception to copyright infringement that is known as “fair use.” Fair use allows someone to use copyrighted materials without the owner’s permission as long as the use is “fair.” Generally, examples of qualifying fair use include criticism, comment, news reporting, teaching, scholarship, and research. Under Section 107 of the Copyright Act fair use is evaluated through a four factor analysis: (1) purpose and character of the use, including whether the use is of a commercial nature or is for nonprofit educational purposes, (2) nature of the copyrighted work, (3) amount and substantiality of what was taken, and (4) effect of the use upon the potential market for or value of the copyrighted work.
Overall, the main thing to remember for copyright protection is to make sure to register your work and do so early.
A patent is defined as “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.” In simpler terms, a patent is the exclusive rights granted in an invention. It prevents or excludes others from making, using, offering for sale, selling or importing the invention, instead of granting the inventor the right to make, use, offer for sale, sell or import the invention.
There are three types of patents: (1) utility, (2) design and (3) plant. Utility patents may be granted to inventors who invent new or useful processes, machines, methods of manufacture or composition of matter, or new and useful improvements thereof. Design patents may be granted to inventors who invent a new, original, and ornamental design for an article of manufacture. Specifically, design patents are based on a product’s decorative, non-functional features. Lastly, plant patents may be granted to inventors who invent or discover and asexually reproduce any distinct and new variety of plant.
There are five basic requirements for patent eligibility. (1) The invention must be “patentable subject matter” which is broadly defined as “any process, machine, manufacture, or composition of matter, or improvement thereof.” (2) The invention must be useful (specific requirement only for utility patents). (3) The invention must be novel or new. (4) The invention must be non-obvious meaning its use must be sufficiently different from something that is considered the next logical step in a prior patent or from what has been used before to a person having ordinary skill in the area of technology related to the invention. (5) The invention must not have been disclosed to the public less than one year before the patent application was filed.
Generally, the term of a patent is 20 years from the date the application for the patent was filed with the United States Patent and Trademark Office. An inventor has the right to license or sell its patent to other parties until the patent expires. Once a patent expires, the invention enters the public domain and can be exploited for commercial use without infringing on the rights of the patent holder.
In addition to trademarks, copyrights, and patents, the fourth and final type of intellectual property is trade secrets. A trade secret is defined as any business information which is intended to be kept secret. In order to qualify as a trade secret, that information must have economic value such that the business would be harmed if the information became public. Trade secrets are generally not known to the public and a reasonable effort must be made to ensure their confidentiality and secrecy.
Trade secrets protect certain information such as formulas, patterns, compilations, programs, devices, methods, techniques and processes that are not known to the public. The different types of trade secrets are very broad. For example, a trade secret can be a recipe, design, advertising strategy, client lists and sales methods to name a few. One of the most recognized and most valuable trade secrets is the formula for Coca-Cola.
As long as the trade secret provides economic value and remains a secret to the public, trade secrets can last indefinitely. Also, unlike the other forms of intellectual property, there is no procedure for registering a trade secret. It remains with the holder(s) of the secret.
As you can see from the above, each type of intellectual property serves a different purpose. While some items only qualify for one type of protection, some items will qualify for more than one.
To learn more about what type of intellectual property protection you need, please contact Lilenfeld PC at (404) 201-2520.