Chpater 11 - Intellectual Property

Intellectual Property

products of the human intellect that have commercial value

Trademarks

words, phrases, symbols, designs, sounds, smells, colors, product configurations, groups of letters/numbers, or any combination of those elements adopted by an organization to identify its product/services and to distinguish theres from others

marks on a product that represent sources of goods/services

tells the consumer they are buying the real thing

Trademark Guidelines

mark must be distinctive to be protects as a trademark

Distinctiveness

capability of a trademark to identify the certain good from others

Trademark Law

how businesses protect their name/logo

Ownership

first to use in commerce

may register with the patent and trademark office (PTO) after using it “in commerce that Congress may regulate”

Registration Cannot:

cannot be too similar to another registered product

cannot contain prohibited/reserved names or designs

cannot merele describe a product/service

cannot be generic

cannot be a name

Registration Gives Owner

exclusive nationwide rights to use the mark

mark’s validitity

ownership

*if not registered, its regionally protected

Trademark Term

potentially unlimited if continue use

after 6 years, notify PTO of continued use (renew every 10 years)

Lanham Act of 1946

puts in place trademark terms

protects service mark, trade dress, certification mark, collective mark, and trademark

Service Mark

mark associated with a service

Ex: google, linked, youtube

Certification Mark

a particular good/product has met industry products to be certified

Ex: certifed gluten free, dairy free, grass-fed

Collective Mark

symbol, word, label, phrase that indicates membership

Ex: NCAA, SEC

Trade Dress

refers to color or shapes associated with product/service

inherently distinctive and use would cause confusion

Ex: Coke shaped bottle, Tiffany Box, Happy Meal Box

Trademark Enforcement/Infringement

occurs when someone uses a trademark without permission that could confusion, deception, or mislead consumers

manufacturing and trafficking counterfeit trademark products is a crime

Examples of Trademark Infringement

unauthorized use of a mark or similar variations

competitors launching similar brands/products

Defenses to Trademark Infringement

use of mark is not confusing

protected mark is not distinctive (generic and should not have been trademarked in the first place)

Trademark Dilution Act of 1995

prohibits the usage of a mark the same or similar to another’s trademark to dilute its significant, reputation, and goodwill

Blurring

when usage of a mark blurs distinctiveness of a famous mark

Tarnishment

usage of a mark creates a negative impression about a famous company

Moseley v. Victoria Secret Catalogue

Victoria Secret sued a small lingerie store named “Victor’s Little Secrets”

was deemed not blurring

Victoria Secret has no proof of sale loss or hurting Victoria Secret’s industry

McDonald’s Corporation v. McBagels

Ken opens McBagels in NY and McDonalds sued for trademark infringement for “Mc”

Court ordered to rename the store

Trade Secrets

protects confidential information that gives a business a competitive edge

has economic value that is not readily known to others

owner has taken reasonable steps to keep secret

Ex: Coke recipe, procedure for SpaceX

Establishing a Trade Secret

conduct a trade secret audit to identify confidential knowledge-based resources

preserve secrecy

Demonstrating Misappropriation

occurs when someone improperly acquires secret informaiton

also can occur when secret information is improperly disclosed that was properly acquired

How to Protect Trade Secrets (SILENT)

security protocols

identify trade secrets

limit access

educate employees

non-disclosure agreements

talk carefully

Patents

gives the right to the holder to exclude others from making, using, selling, or importing the covered invention

limited in time

creates a monopoly

Utility Patent

useful, functional inventions

must be a new process, machine, manufacture, composition of matter, or improvement of an idea

expired after 20 years from filing date

Design Patents

new design for an article of manufacture that does not change functionality

expires after 15 years from issue date

Plant Patents

new variety of plant that produce asexually

How do you get a Patent?

file an application. MUST BE FIRST TO FILE because many people can be working on the same invention at once

get a patent attorney

must prove your invention is new and not a variant of an existing invention

applicant must be an inventor

time consuming and expensive

To get a patent, must show…

novelty, non-obvious, utility

Novelty

invention must be something new and different from prior art

Non-Obvious

invention must be not obvious to a person with ordinary skill in the field at the time of the invention

ability to produce surprising/unexpected results

Utility

must do something useful

can be entertainment or fun

Copyright Law

protects original expressions within the field of the arts

literature, music, art, graphics, choreography, etc

What can be copyrighted?

must be original and fixed in a tangible way

*does not protect ideas or facts but only the unique way ideas and facts are expressed

How to copyright?

reduce expression to a tangible medium

automatic

no registration with the US copyright office required

Terms of Copyright

authors’ life + 70 years

for a company: 95 years from publication or 120 years from creation (whichever comes first)

after term expires, work goes into public domain

Rights of Copyright/Infringement

Gives owner right to:

• reproduce the work

• prepare derivative works

• distribute copies of work

• publicly perform the work

• publicly display the work

Fair Use

exempt from infringement on a case by case basis

• press and reporting

• school/academics

• commentary

• criticism