cob 318 chp 8 (.1-.4)

what is a trademark

a distinctive word, symbol, sound, or design that identifies the manufacturer as the source of particular goods and distinguishes its products from those made or sold by others

how do you register for a trademark

a person must file an application with the US patent and trademark office and it can be registered when in use or will be used within 6 months

what is the lanham act of 1946

enacted to protect manufacturers from losing business to rival companies that used confusing similar trademarks and incorporates common law of trademarks to provide remedies

what is a service mark

A trademark that is used to distinguish the service (rather than the product) of one person or company from those of another

what is trademark dilution

the unauthorized use of a distinctive and famous mark in a way that impairs the mark’s distinctiveness or harms its reputation (protects)

to state a claim for trademark dilution, a plaintiff must prove what…

1. The plaintiff owns a famous mark that is distinctive.

2. The defendant has begun using a mark in commerce that allegedly is diluting the famous mark.

3. The similarity between the defendant’s mark and the famous mark gives rise to an association between the marks.

4. the association is likely to impair the distinctiveness of the famous mark or harm its reputation.

what are the 3 levels of a distinctiveness of the mark

• Strong marks → fanciful and arbitrary trademarks receive automatic protection, very unique, never seen before products

• Secondary meaning → certain terms and personal names are not inherently distinctive, they receive protection only when they acquire a secondary meaning

  • Generic terms → refer to an entire class of products receive no protection, even if they acquire secondary meanings 

what is trademark infringement

it’s been used without authorization, intentionally or unintentionally

to succeed in a lawsuit for trademark infringement, the owner must show what,,,

the owner must show that the defendant’s use of the mark created a likelihood of confusion about the origin of the defendant’s goods or services

what is the common granted remedy. for trademark infringement

an injunction to prevent further infringement, can recover actual damages, plus the profits that the infringer wrongfully received from the unauthorized use of the mark (under lanham act)

what is a certification mark

a mark used by one or more persons, other than the owner, to certify the region, materials, mode of manufacture, quality, or other characteristics of specific goods or services

what is a collective mark

a certification mark used by members of a cooperative, association, labor union, or other organization

what is the term, trade dress

refers to the image and overall appearance of a product, can be a broad concept (total or part of image), and subject to the same protections as trademarks

what are counterfeit goods

copy or otherwise imitated trademarked goods that are not genuine, they are illegal to import

what is stop counterfeiting in manufacutred goods act (scmga)

enacted to combat counterfeit goods and made it a crime to intentionally/attempt to traffic in counterfeit goods/services or knowingly use a counterfeit mark

what are the penalties for counterfeiting

scmga can fine up to 2 million or be imprisoned for 10 years (more if repeat)

what is one way the government is combating online sales of counterfeit goods

One effective tool that U.S. officials are using to combat online sales of counterfeit goods is to obtain a court order to close down the domain names of websites that sell such goods.

what is a trade name

refers to part or all of a business’s name and is directly related to a business and its goodwill

what is a license

an agreement permitting the use of a trademark, copyright, patent, or trade secret for certain limited purpose (in writing)

who is the or and ee (license)

licensor → party that owns the intellectual property rights and issues the license
licensee → party obtaining the license

what are the payments for licensing and who pays who

Licensors often receive payments called royalties (payments as part of an agreement) from licensees in return for permission to use the trademarked item.

what is a patent

grant from the government that gives an investor the exclusive right to make, use, and sell an invention for a period of 20 years (patent for designs is 14 years) and almost anything is patentable

what companies are involved in patent lawsuits

patent infringement suits and high tech companies

what must the applicant demonstrate to get a patent

The applicant must demonstrate to the satisfaction of the U.S. Patent and Trademark Office that the invention, discovery, process, or design is novel, useful, and not obvious in current technology (and must be first to file to receive protection)

how do you commit patent infringement

If a firm makes, uses, or sells another’s patented design, product, or process without the patent owner’s permission, it commits a tort

what are remedies for patent infringement

• Seek an injunction against the infringer

• Request damages for royalties and lost profits

• Seek reimbursement for attorneys’ fees and costs 

  • If infringement was willful, amount of damages awarded can be triple

what is a copyright

an intangible property right granted by federal statute to author or originator of certain literary or artistic productions

after what dates are works given copyright

Works created after January 1, 1978 plus 70 years after author death

what are copyright owners are protected against

1. Reproduction of the work.

2. Development of derivative works.

3. Distribution of the work.

4. Public display of the work.

who is a copyright registered with

the US copyright office

what is protected expression and what works go under it

works that are copyrightabl and to be protected the work must be “fixed in a durable medium”

to get protection under the copyright act, a work must fall into these categories,

• Literary worlds(wide range), musical worlds, dramatic works, choreographed works, pictorial art, movies, sound recording, architectural works 

• Source code is entitled to copyright protection (google vs. oracle)

what is an infringement of copyright

Whenever the form or expression of an idea is copied

what is a possible defense for copyright

First sale → the owner of a particular item that is copyrighted can, without the authority of the copyright owner, sell or otherwise dispose of that physical copy

what is the defense of fair use for copyright

• Legitimate use for criticism, comment, news reporting, teaching, scholarship or research

how do courts determine whether a particular use is fair in a case by case basis?

• The purpose and character of the use (for or not for profit?)

• The nature of the work

• The amount of substantiality fo the portion used in relation to the copyrighted work as a whole

• The effect of the use upon the potential market for or value of the copyrighted work 

what is the computer software copyright act

included computer programs in the list of creative works protected by federal copyright law.

what is the law of trade secrets

The law of trade secrets protects some business processes and information that are not or cannot be protected under patent, copyright, or trademark law

what is a trade secret

basically information of commercial value, anything that makes an individual company unique and that would have value to a competitor, and extends to ideas and their expression

what must be proved if someone discloses or uses a trade secret and who enforces it

under section 757 of the restatement of torts, they are held liable if
1. They discovered the secret by improper means.

2. Their disclosure or use constitutes a breach of a duty owed to the other party.

what is the berne convention 1886

Every country has signed the convention must recognize copyrights from the other signatories 

what is the trips agreement 1994

• Established standards for the international protection of intellectual property rights

• *Generally forbids member nations from discriminating against foreign owners of intellectual property rights in the administration, regulation, or adjudication of such rights

• Each member country must have laws on point