Archive for December, 2019

When is the Proper Time to File for Patent, Trademark, Copyright Protection?

Monday, December 30th, 2019

Trademarks are privy to a certain level of common law protection. This protection is generated through actual use in commerce and is afforded to the first user of the mark in commerce within the geographic area in which it is used. Filing for a trademark registration on either the state or national level is not required but can expand and enhance the common law protections granted to the first user of the mark. A state trademark registration will provide protection within the specific state. A federal trademark registration will protect goods or services sold in interstate commerce, or between the United States and another country. A federal registration provides exclusive rights to the mark throughout the U.S., as to any mark first used after the filing of the registration. This prevents latecomers from using a similar trade or service mark on similar goods or services anywhere in the U.S.

Similar to trademarks, copyrights are afforded protection under common law.  Copyright automatically vests in the author of an original work at the time the work is expressed in a tangible medium. However, a copyright infringement case cannot be filed in federal court until the user has registered his/her mark. Moreover, an author may not seek statutory damages if the registration is filed after the infringement begins.

A patent registration must be applied for within one year of any of the following: 1) any public use of the invention by the inventor, a sale of the invention, an offer of sale, or public use of the invention in the United States, or 2) any description of the invention by the inventor in a published document in any country.  Failure to timely file a patent application results in the invention becoming part of the public domain.  Unlike trademarks and copyrights, there is no common law protection for inventions or methods of use. The exclusive rights afforded by a patent are purely statutory and do not exist without formality.

What is the Difference Between Protection Under the Patent, Trademark and Copyright Statutes?

Monday, December 30th, 2019

Often, the three terms are heard interchangeably in casual conversation. However, each of the three statutes has different functions, protections and symbols.

A trademark can be a word, name, symbol or device that is used in commerce to indicate the source of the goods and to distinguish them from the goods of others. Names, phrases or slogans, the way a word is presented, logos and packaging details can all function as trademarks. The purpose of trademark protection is to inform consumers of the source of goods or services. The source becomes synonymous with the quality and characteristics of the goods or services. In this way, a trademark becomes a shortcut for consumers in selecting between products or services. Trademark rights can be used to prevent others from using a confusingly similar mark which could potentially create a likelihood of confusion with the original mark. In the United States, trademark rights are generated by the actual use of marks in commerce. Wherever actual use occurs, the first user of the mark develops common law rights within the geographic scope of use.  Common law rights are denoted by either a TM for trademarks or an SM for service marks. These marks show claim, but not official USPTO registration. Common law rights can be extended and enhanced by registering a trademark, either in a particular state or on a national level. A registered trademark enjoys the use of the encircled R.

Something that is original, creative, artistic or literary can be copyrighted. Copyrights protect “original works of authorship.” A copyright provides protection for the original and creative expression of an idea that is embodied in a tangible medium. In this instance, originality means that the work has “more than a de minimus level of creativity.” Copyright owners can prevent others from doing the following: reproducing the work, preparing derivative works, distributing copies, performing the work publicly, displaying the work publicly, and digitally transmitting the audio of the sound recordings. Registration is not required to acquire copyright; it exists upon the moment of creation. However, in order to pursue a copyright infringement action in court, the owner must have a federal copyright registration. Federal copyright registration is prima facia evidence of the author’s ownership of the copyrighted material. The fact that a work is subject to copyright protection is evidenced by the encircled C.  Full notice includes three components: the encircled C, the year of publication and the author’s name.

Utility patent protection applies to machines, methods, processes, articles of manufacture or composition of matter, and/or improvements thereto, ornamental designs for articles of manufacture. In order to ascertain patent protection, an invention or method of use, at minimum, must be novel, useful and not obvious. In this instance, not obvious refers to what existed previously, and if a skilled professional in the specific field would not have found the invention or method of use an obvious extension or combination.  The proper notice for a patent is the word “patent,” or, the abbreviation “pat.” combined with the number of the patent. If the notice cannot be put on the article, the word “patent” or the combination of “pat.” and the patent number can be affixed to the owner’s packaging or other advertising materials; such as labels if the package contains more than one article. The words “patent pending” serve as fair notice that a patent registration has been applied for. Once the registration has been approved, the word “Patent” shows full ownership.


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