Intellectual Property

Intellectual property is any innovation, commercial or artistic, or any unique name, symbol, logo or design used commercially.  Often known as IP, intellectual property allows people to own their creativity and innovation in the same way that they can own physical property.

FAQs

  1. I am being sued or have received a cease and desist letter. What do I do?  It is important to discuss matters with experienced IP counsel. An experienced IP attorney can find out exactly what IP rights the other side truly holds and can come with up with strategies for your specific situation. In addition, you will want to speak with your insurance carrier to see the range of coverage, which will affect the strategies you will likely pursue. 
  2. How are Trademark, Service Mark or Trade Dress rights acquired?  A rule of priority is based on first-to-use although trademarks can be “reserved” (intent to use) before actual use. 
  3. How are Trademark, Service Mark or Trade Dress rights infringed: Palming off, counterfeiting or any other use which creates a likelihood of confusion.   
  4. How do I avoid infringement for Infomercials, Books/Pamphlets, Products, etc?  Always use proprietary notices (e.g., trademark “™” & “®.”)  Do not use “®” unless your trademark is registered with the U.S. Patent & Trademark Office.  Always use your trademark/service mark as an adjective, not a noun.  For example, Xerox® photocopy, not Xerox, or Kleenex® tissue, not Kleenex.  Always use warnings on proprietary products etc. and advertising.  Follow-up with Cease & Desist letters to potential as well as obvious infringers.  File legal actions against infringers.  Cultivate a Reputation that you jealously protect your intellectual property rights.   
  5. What should I look for?  Unauthorized use or copying of protected Trademark or Service Mark  in domain names and internet web page meta tags or hidden text, advertising text/photographs, sale of counterfeit products, product design, brochures and packaging (trade dress); Unfair Competition and False Advertising by way of false statements (comparisons) and product disparagement, misrepresentation of product source, use of infringed internet domain names, meta tags or hidden text, misrepresentations of source—selling modified and/or repackaged goods including Unauthorized re-packaging/product changes, Misrepresentations that a product contains client’s ingredients/product, Palming Off—sale of infringer’s product using client’s packaging/trademark/trade dress, Reverse Palming Off—sale of client’s product under infringer’s name   

 

Trademarks

A registration has a 10-year term and can be renewed for additional 10-year terms if you prove the mark is still in use for all the goods and/or services stated.  Additionally, between the fifth and sixth anniversary of a mark’s registration, you must file evidence with the PTO showing that you are still using your mark.  If you do not, your registration will be canceled.

Trademarks that have been “federally registered” with the USPTO may use the R-in-a-circle (®) symbol. Trademarks and service marks that have been filed and are awaiting registration from the USPTO may use the TM (TM) and SM (SM) symbols respectively.

FAQs

  1. How do I know if a mark is already taken?  Although not a requirement, an applicant may choose to conduct either a preliminary scan or a full U.S. availability search for conflicting marks prior to applying with the USPTO.
  2. Is a trademark search necessary?  A trademark search is recommended to identify potential prior users, so you will not have to incur the time and expense associated with changing a name you have invested time and money in at a later date and to avoid potential liability from a claim of trademark infringement if your mark is the same and/or confusingly similar to another mark.  In addition to having a proper search conducted, it is also wise to obtain a trademark search opinion from a competent trademark attorney. Such an opinion can be used as a defense in a trademark infringement suit, which can potentially shield the subsequent user of a registered mark from liability for "willful infringement" as opposed to "innocent infringement." A finding of willful infringement may result in treble damages (that is three times the awarded amount of actual damages) and an award of attorney fees and costs.
  3. Do I have to begin using a trademark before I can apply for federal registration?  No. An applicant may apply for federal registration in three principal ways: (1) an applicant who has already commenced using a mark in commerce may file based on that use (a "use" application); (2) an applicant who has not yet used the mark may apply based on a bona fide intention to use the mark in commerce (an "intent-to-use" application).  The applicant will have to lawfully use the mark in commerce and submit an allegation of use to the Trademark Office before the Trademark Office will register the mark; and (3) under certain international agreements, an applicant from outside the United States may file in the United States based on an application or registration in another country.
  4. I live outside the United States; can I file for federal registration?  Yes. Applicants not living in the United States must designate in writing the name and address of a domestic representative – i.e., a person residing in the United States "upon whom notices of process may be served for proceedings affecting the mark." This person will receive all communications from the USPTO unless the applicant is represented by an attorney in the United States.
  5. I went online to buy the domain for my name and it was already taken. How can somebody else own my personal name? Do I have any recourse if my name is well known?  Someone else can legally own the domain name for your personal name or your company's name. You may have recourse if your name is well-known, especially in California, which has expanded rights for likenesses and names of well-known persons. You also may be able to get the domain name transferred to you by negotiating with the domain owner through your attorney.
  6. What is trade dress?  Trade dress is the packaging or outer appearance of a product that identifies the source of a product in the eyes of the consumer. Famous examples of trade dress are the Tiffany jewelry box or the Coca-Cola glass bottle.  Trade dress protection is difficult to obtain. It usually requires years of sales, advertising and promotions before the public associates that particular trade dress with the source. Since fashion trends often have short life cycles and competitors often copy each other in the short term, trade dress is hard to establish. If you have a trade dress, you may wish to register it with the PTO, but you will need to prove that customers associate your trade dress with the source of the product and that the trade dress is non-functional.
  7. What are trademark licensing agreements?  Trademark licensing agreements are one of the most common IP transactions in the fashion industry, for example. Often a licensor (owner of a trademark) will contract with a licensee (another company) to manufacture and market products using the licensor’s trademark. This benefits a licensor by increasing profits and expanding its brand into new markets, while giving the licensee a pre-existing customer base.  There are many important terms to a licensing agreement, including products covered, exclusivity, specific trademarks, duration and geographic region, compensation, marketing and sales requirements, and quality control. It is important to speak with an experienced IP attorney to find out how to protect your assets.
  8. Someone is selling fake versions of my product. They claim they are within their rights because they have made minor changes to the brand name and look of the product. Do I have a case?  In this scenario, you may raise one or more claims including a claim of trademark infringement. A basis of trademark law is that a mark is used to identify the source of the goods and if someone is using a trademark similar to yours, such that a consumer would be confused as to the source of the goods, you have a cause of action. This can apply to a brand name or a logo or design. For instance, someone selling "Rollex" watches will most likely be considered by the courts to be infringing.  If your trademark is deemed to be "famous" you may have a case for dilution of your trademark regardless of whether there is any likelihood for confusion.
  9. Someone is infringing my trademark. Is there any danger if I ignore them?  There are several reasons to immediately seek legal counsel regarding infringers. If you wait too long to sue, you may lose your right to sue because your delay will be seen as a contributing factor in increasing the amount of harm. Courts may also find that you abandoned your trademark by not enforcing its use. Delay can also harm your brand by allowing an inferior product damage the reputation of your trademark and to compete with your sales.
  10. Will my U.S. trademark registration protect me in other countries?  No. Trademark protection is region specific. For each country you wish to enforce your trademark, you will need to apply for a trademark under their laws.
  11. Is it illegal for others to import items into the U.S. with my trademark without my consent?  Yes, it is illegal. Customs will protect trademarks registered in the United States. To obtain protection, a trademark owner must register their trademark with the Customs and Border Protection. Customs may also protect against importation of validly trademarked goods if they were not meant for sale in the United States.  The exception to this is that it is legal for individual users to bring products with your trademark into the United States for their own personal use.
  12. My company never formally trademarked our name, but we’ve been using it for 50 years and everybody knows us by it. Now somebody else trademarked it and is using our reputation to build his business. Do we have any recourse or are we out of luck?  You have acquired rights in the geographic area that your trademark has been used in. For instance, if you've operated David’s Designs in the Los Angeles area, you may be able to prevent someone else from opening a David’s Designs in Hollywood, but not a David’s Designs in New York City. It would be a good idea to file a federal trademark showing the date of your first use. One possibility may be an agreement between the two parties where you cannot expand your business outside of the geographic area that you are in and they agree not to infringe within that area.

 

Copyright 

FAQs

  1. Why should I register my copyright?  There are three (3) key reasons why you should get a copyright registration: to establish a public record; to be able to file an infringement lawsuit in federal court; and to simplify enforcing your copyright and obtaining higher damages.
  2. He stole my idea! Can I sue him?  Ideas are not copyrightable. Only the tangible expression of ideas can be copyrighted. For example, the concept of a “unicorn” is not copyrightable, but a unicorn print design for t-shirts is copyrightable.
  3. Is my copyright good in other countries?  The United States has copyright relations with most countries throughout the world, and as a result of these agreements, each country honors each other's citizens' copyrights. However, the United States does not have such copyright relationships with every country.  For a listing of countries and the nature of their copyright relations with the United States please either contact us or view the U.S. Copyright Office for Circular 38a, International Copyright Relations of the United States.
  4. Who owns the copyright to something I made at work, my company or me?  Although the general rule is that the person who creates the work is its author, there is an exception to that principle; the exception is a “work made for hire”.  Work made for hire is a work prepared by an employee within the scope of his or her employment; or a work specially ordered or commissioned (as opposed to being paid for an already existing piece of work) from an independent contractor. When a work qualifies as a work made for hire, the employer, or commissioning party, is considered to be the author.
  5. If I live outside the United States, can I register my works with the U.S. Copyright Office?  Any work that is protected by U.S. copyright law can be registered. This includes many works of foreign origin. All works that are unpublished, regardless of the nationality of the author, are protected in the United States. Works that are first published in the United States or in a country with which we have a copyright treaty (see Circular 38a for the status of specific countries), or that are created by a citizen or legal resident of a country with which we have a copyright treaty, are also protected and may therefore be registered with the U.S. Copyright Office. 

 

Patents 

Simply put, a patent is a right to exclude others from doing what you invented. There are, however, a number different types of patents.  There are U.S. patents, and there are foreign patents.  U.S. patents are rights granted by the U.S. government and exclude only actions within the United States.  Likewise, patents issued by a foreign government may be enforced only in that foreign country.

Also, in the United States, there are utility patents, and there are design patents.  When most people think of a patent, typical it is a utility patent that first comes to mind.  Utility patents protect the idea or function of an invention.  In contrast, design patents protect the overall appearance of an invention. Properly written, a utility patent application attempts to describe and claim for the inventor his or her invention as broadly as possible.  Similarly, properly written, a design patent attempts to claim the invented design as broadly as possible. What is the difference between a utility patent and a design patent?

A utility patent covers the functional aspects of an invention. A utility patent expires 20 years from the filing date. In 2006, it took approximately 30 months from filing until an examiner came to a decision. The length of time varies depending on the field and complexity of the patent. Examples of things that can be covered by a utility patent are a newly created fabric or a new clasp for a purse.

A design patent covers the ornamental aspects of an invention. They generally issue 8-20 months after filing and are protected for 14 years from the filing date. Design patents often cover long-term fashion items such as shoes, jewelry, and accessories.

FAQs 

  1. I have a patent on something, and I know somebody else is selling it – what now?  If you find that your patent is being infringed upon, we recommend that you contact a reputable intellectual property attorney immediately. The attorney will typically send out a cease and desist letter asking the infringer to stop selling the product or face legal consequences. He may also need to compare your patent to the infringing device to determine if it does in fact infringe.
  2. What if the infringer is in a foreign country – what laws apply?  Even if the infringer is in a foreign country, the laws of the United States apply if the item is being sold in the United States, such as if it is sold to U.S. customers over the Internet. U.S. sales create "minimum contacts" which allow the United States to exercise jurisdiction over the foreign infringer. If the item which infringes is only being sold in the foreign country, then the laws of that country would apply. A U.S. patent will only protect your rights in the United States. Alternatively, to protect your foreign rights, you could file a Patent Cooperation Treaty ("PCT") application, followed by a "national phase" in designated foreign countries.
  3. My company is expanding and selling our product internationally. Does my U.S. patent protect our rights abroad?  No. You have one year from the time you filed the U.S. utility application to file a PCT application which would generally cover the foreign countries that are members of the World Intellectual Property Organization ("WIPO"). You then have between 20-30 months, depending on the country, to decide if you want to further protect your rights in certain countries by filing individual applications in those countries.  This timeline may be shorter for applications devoted to ornamental features.
  4. My employee invented a new product at work. Does it belong to him or me?  This question goes to the employment relationship. If the nature of your business involves research, development and invention, it is a good idea to have all employees sign agreements stating that anything invented while they are working for you is your property. However, in the absence of such an agreement, the courts look at the type of employment the employee has. For example, if the employee is a garment designer, someone who was hired to invent new athletic wear or who would invent in the course of her work, the patent most likely belongs to the company. If the employee is an independent contractor (someone who provides her own materials for work and does not receive benefits from the company), in the absence of another agreement with respect to patents, she would likely own her invention. Other considerations the court would look at would be if the employee created the invention while on the clock and being paid for the time, or if she used materials or equipment from the job to create the invention. If you believe you may have an issue like this in the future, it is best to consult an attorney to have an agreement drafted that makes it clear that inventions devised at work are the company's property.
  5. Should I first get a patent search?  Yes.  This is almost always advisable before preparing a utility patent.  How broadly you can claim your invention largely depends how much room there is in the field of the invention in light of all of the prior art that proceeded your invention.  I therefore advise my clients to first have me commission a patent availability search.  Additionally, a patent availability search will give you a wealth of information of how others have attempted to solve the problem that you solved with your invention.  It will also allow me to form a preliminary opinion as to whether you might encounter any allegation of patent infringement if you were to market or sell your new product or system.
  6. Should I first get a patent clearance search?  You should almost always obtain a patent clearance search before placing a product (or process or method) on the market.  A patent clearance search will attempt to identify any active patents whose patent claims might prohibit your product, process, or method.  Indeed, clearing your product before a market launch is arguably more important to pursuing your own patent rights. A patent clearance search and report form an important part of your due diligence.  If, God forbid, you are accused of infringement in the future, being able to point to a clearance search and opinion of counsel would be priceless – and any evidence that you did not seek such an opinion could in fact be used against you to suggest that actions were willful.
  7. What is the difference between a utility patent and a design patent?  A utility patent protects the idea or function of an invention.  In contrast, a design patent protects the overall ornamental appearance of an innovative design of a product.  The utility patent is, generally speaking, what most people think of as a patent, and a design patent instead affords its owner rights that can often fill an important gap in and around his or her trade dress rights and copyrights in a commercial product. 
  8. Should I apply for a design patent?  Design patents are growing in prominence and effect across many fields of commercial goods.  A design patent, wisely drafted, can be a very effective way to protect an inventor’s innovation – not just the ornamental design itself.  That is, carefully drafted, a design patent can be very difficult for a competitor to design around, possibly leaving the competitor with no real way to put a competing product on the market.
  9. What is a design patent anyway?  A design patent is primarily a series of drawings that disclose and claim a new, ornamental design of a portion of a product.  Here is an example of a series of drawings for a design patent that I prosecuted for one or my sports and entertainment industry clients.  You will notice the these drawings have some solid lines and some broken lines.  This is a way you can claim only a part of your design and thereby be very specific as to which combination of design features you are protecting as your own innovation.  In this case, it does not matter whether a competitor uses a different guitar neck, etc.  If the guitar body is substantially the same such that an ordinary purchaser could purchase a guitar having the competitor's guitar body design thinking that it was my client's design, the competitor's guitar body likely infringes this design patent.
  10. How does the Patenting Process work?  The patent process may or may not begin with a patentability search.  In other words, conducting a search is optional.  However, a patentability search will give the inventor an idea of what is already out in the public domain (the prior art).  At the very least, it gives the inventor an idea of the state of the art in the technological field of interest.  With knowledge of the state of the art, the patent application can be drafted and tailored to avoid the prior art.  Once the application is finished it is filed with the United States Patent and Trademark Office (USPTO).  The application is then examined for form and content.  After examination, an Examiner issues an Office Action or a Notice of Allowance.  The Office Action indicates the Examiner's reasons for not allowing a patent to issue (rejections).  The Notice of Allowance indicates that the patent application meets the criteria for patentability and will issue in due course.  If an office action is received, the Applicant has a chance to respond to the Examiner's assertions by amending the application or arguing against the the Examiner's assertions.  If the Examiner is persuaded by the response, a Notice of Allowance is issued and the patent issues in due course.  If the Examiner is not persuaded by the response a Final Office Action is issued stating the reasons why the amendments and/or arguments were not sufficient to overcome the Examiner's rejections.  If the Applicant still feels the Examiner is wrong, the Applicant can file a Request for Continued Examination to continue to argue with the Examiner with additional amendments and/or arguments and the examination process continues on.  Alternatively, the Applicant may file a continuation-in-part application and add new features that may overcome the Examiner's rejections.  Finally, the Applicant may appeal the decision of the Examiner to the Board of Patent Appeals and Interferences.

 

Trade Secrets

In broad terms, a trade secret is information which gives a business an advantage over its competitors.  Trade secrets include such things as customer identities and preferences, vendors, marketing strategies, manufacturing processes, formulas and other competitively valuable information.  An example trade secret would be a hair salon’s secret process in applying hair dye to make the color stay longer.

Trade secrets are not registered and can last as long as the invention is kept a secret.

FAQs

 

  1. Can multiple people have trade secret rights to the same information?  Yes, two (or more) individuals or entities can claim rights to the same trade secret on the same technology if both independently developed that technology and both keep it a secret, as long as the technology is not "generally known.”
  2. What is the difference between trade secret protection and patent protection?  Both trade secrets and patents are forms of IP that can be used to protect innovation.  Although the overall subject matter that can be protected by trade secrets is broader than that which can be protected by patents. Trade secret protection is available for both technical information and information that does not relate to technical innovations. Non-technical information for which trade secret protection can exist includes: business and marketing plans and customer lists. Patent protection is generally available for technical innovations, including a new and useful process, machine, manufacture or composition of matter. Software and software-implemented business methods have the potential of being protected by both patents and trade secrets.  Another significant difference is that patent protection requires the protected information become available to the public (through the publication of the patent application and/or patent), However, because patents and patent applications are made public, a third party is barred from duplicating and using the invention until the term of the patent is expired.   Additionally, unlike trade secrets, patents can be enforced against someone who independently develops or "reverse engineers" an invention.  A trade secret has its own advantages. One significant advantage is that the term of protection for a trade secret has the potential to last forever - as long as the invention is kept a secret - whereas patents are only protected for a limited number of years (20 years from filing). Also, trade secrets can be less expensive to protect and to enforce.  In sum, the choice between patent protection and trade secret protection requires careful consideration of several factors. In particular, it is important to consider the nature of the subject matter being protected. Questions relevant to this decision include: Can it be independently developed? Can it be reverse engineered? Can it be maintained as a secret?  How long will the subject matter have market value? Does the market value support investment in patent protection/enforcement?
  3. How long does trade secret protection last?  Contrary to other types of IP, trade secrets are protected by non-disclosure; the information must be kept confidential.  Thus, an advantage of trade secrets is that they can be protected for an unlimited amount of time.  However, trade secrets also have their disadvantages over other forms of IP protection. Unlike patents and copyrights, which grant a monopoly for a fixed period of time, there is no guaranteed monopoly for trade secrets.
  4. How do I protect my trade secrets?  No special registration of government filing is necessary to create trade secrets.  The critical requirement for trade secret protection lies in maintaining the secret.  Under the Uniform Trade Secret Act (UTSA), information must meet the following three basic criteria to qualify as a trade secret:  1.) the information must not be generally known or readily ascertainable through proper means; 2.) the information must have “independent economical value due to its secrecy”; and 3.) the trade secret holder must use “reasonable measures under the circumstances” to protect the secrecy of the information.  “Reasonable measures” may include: Have employees, contractors and third parties sign non-disclosure, confidentiality and/or non-compete agreements; Stamp secret documents “confidential” or “trade secret”; Enforce physical security. Put up "No Trespassing" signs and put locks on doors and file cabinets; Use employee and visitor identification badges to control access to your business; Establish rules requiring people to sign sensitive documents in and out; Set up passwords. Use them to access computers, copiers, fax machines and other machines that could be used to copy or transmit secrets; When employees leave, take measures to ensure that secrets don't leave with them; Collect sensitive materials from the offices of terminated employees before allowing them to return to their desks. And before they go, remind them of the nondisclosure documents they signed and the stiff financial penalties if they are breached; As you may find it necessary to take additional steps in specific areas, or with respect to specific kinds of information to limit access to a “need to know” basis, you may wish to consult a lawyer in your area for guidance into the types of measures and agreements outlined above.
  5. Can I sell or license my trade secrets?  Yes. As long as all parties maintain the secrecy of the invention, trade secrets can be sold or licensed. You may wish to consult an IP lawyer for guidance in writing the agreements in licensing or selling any trade secrets.