Chapter 24: Intellectual Property Flashcards

Vocabulary flashcards covering trade secrets, trademarks, copyrights, and patents from Chapter 24: Intellectual Property.

Trade Secret

Secret processes, formulas, methods, procedures, and lists that provide a business firm with an economic advantage in its trade.

Uniform Trade Secrets Act (UTSA)

A state statutory framework defining a trade secret as a formula, pattern, compilation, program, device, method, technique, or process that derives independent economic value from not being generally known and is subject to reasonable efforts to maintain secrecy.

Misappropriation

Under the UTSA, the acquisition of a trade secret by improper means, or any disclosure or use of a trade secret of another without express or implied consent.

Economic Espionage Act

A federal statute enacted by Congress in 1996 that provides criminal penalties for domestic and foreign theft of trade secrets.

Trademark

A nonfunctional distinctive word, name, shape, symbol, phrase, or combination thereof that helps consumers distinguish one product from another.

Service Mark

A mark used by businesses to identify and distinguish business services rather than tangible products.

Lanham Act

The federal statute that protects an owner's registered trademark from unauthorized use and prevents business competitors from getting a free ride on a famous brand.

Trade Dress

Beyond-the-mark features extending trademark protection to the shape, design, or packaging color scheme of a product that provides an exclusive link to the source in the consumer's mind.

Hershey Chocolate Bar Trade Dress Registration

A product design configuration consisting of twelve (12) equally-sized recessed rectangular panels arranged in a four panel by three panel format with each panel having its own raised border, registered as trade dress due to acquired secondary meaning.

Arbitrary Mark

A trademark that uses a real word having no direct connection to the word's literal meaning (e.g., Apple, Uber, Amazon).

Fanciful Mark

A trademark centered upon a word made up with the intention of being used as a distinctive term with no obvious connection to the product or service (e.g., Spotify).

Suggestive Mark

A mark that suggests aspects of a product or service without literally describing it, requiring imagination, thought, and perception to connect it to the product (e.g., Under Armour, Netflix, Coppertone).

Descriptive Mark

A mark that makes specific reference to features, qualities, or characteristics of a product or service without requiring a leap of imagination; it requires secondary meaning for Lanham Act protection.

Secondary Meaning

A consumer association created when the consuming public primarily associates a mark with a particular product or source rather than its ordinary literal meaning.

Genericide

The loss of trademark protection when a mark becomes so synonymous with a general class of product or service that the public uses the term as a general noun or verb rather than a brand adjective.

Anticybersquatting Consumer Protection Act (ACPA)

A federal statute providing statutory remedies to trademark owners to recover trademark-related domain names from users who register them in bad faith.

Bad Faith (in Cybersquatting)

A dishonesty of belief or purpose satisfied when a domain registrant has no legitimate reason to use the domain name or uses it to profit or confuse consumers.

Section 2a of the Lanham Act

A statutory provision allowing the USPTO to reject marks deemed immoral, deceptive, scandalous, or disparaging, which was declared unconstitutional by the Supreme Court in Matal v. Tam.

Cocaine Soft Drink Mark

A trademark application for a highly caffeinated soft drink that was rejected by the USPTO under Section 2a of the Lanham Act prior to being struck down as unconstitutional.

Matal v. Tam

A 2017 landmark Supreme Court case holding that Section 2a of the Lanham Act's ban on disparaging trademarks was unconstitutional under the First Amendment.

Likelihood of Confusion Standard

The burden of proof in a trademark infringement suit under the Lanham Act requiring the mark holder to show that unauthorized use would likely cause confusion among reasonable consumers.

Polaroid Test

An eight-factor balancing test established in Polaroid Corp. v. Polarad Electronics Corp. used by courts to determine if a likelihood of consumer confusion exists in trademark infringement cases.

Bridging the Gap

A factor in trademark infringement analysis evaluating evidence that a mark holder may be preparing to launch a product for sale in the market of the alleged infringer's product.

Federal Trademark Dilution Act

A federal law (as amended by the Trademark Dilution Revision Act of 2006) allowing holders of famous marks to enforce rights against dilution without needing to prove consumer confusion.

Dilution by Blurring

An impairment of the distinctive quality of a famous mark through its identification with goods or services that are not alike.

Dilution by Tarnishment

Harm to the reputation of a famous mark arising from similarity with a mark or trade name that consumers might find objectionable or unflattering.

Copyright

An intangible right granted by the Copyright Act of 1976 giving authors or originators exclusive rights to copy, distribute, display, or perform original literary or artistic works for a defined period.

Work Made for Hire

A work created by an employee as part of their job, where the employer—not the employee—is considered the legal owner of the copyright.

Direct Infringement (Copyright)

Copyright infringement where the owner proves ownership and that the infringer copied the work without permission under the substantial similarity standard.

Indirect Infringement (Contributory Infringement)

Copyright infringement involving a facilitator who has direct or imputed knowledge of infringement and contributes to the infringement in a material way.

Vicarious Infringement

Copyright liability imposed on a principal or employer when an agent or employee acts with authority and commits copyright infringement that benefits the principal.

No Electronic Theft (NET) Act of 1997

A federal law imposing criminal liability, including maximum fines of $250,000 and potential incarceration, for copyright infringement valued over $1,000.

First Sale Doctrine

A copyright defense enabling a lawful purchaser of a copyrighted work to resell, transfer, or gift their specific copy without permission from the copyright owner.

Fair Use Test

A codified copyright defense evaluated using four statutory factors: purpose/nature of use, nature of work, amount used, and effect on the market.

Transformative Factor

The first fair use factor analyzing whether a new work adds new expression, meaning, aesthetics, or insights to the copyrighted original.

Digital Millennium Copyright Act (DMCA)

A 1998 statute modernizing copyright law by creating a notice and takedown procedure for policing online copyrights and offering safe harbor immunity to compliant ISPs.

Patent

A statutorily created monopoly right allowing an inventor exclusive rights to make, use, license, and sell an invention for a limited period.

Provisional Patent Application

An initial filing with the USPTO that discloses an invention generally and protects it for 12 months before a full nonprovisional application must be filed.

Utility Patent

A broad patent category covering new and useful processes, machines, articles of manufacture, or compositions of matter (lasting 20 years from filing).

Design Patent

A patent covering new, original, and ornamental designs for an article of manufacture, protecting how a product looks rather than functions (lasting 14 years).

Dark Knight Head Dress Patent

Design Patent No. D329,321 protecting the ornamental appearance of a Batman cowl and headpiece.

First Inventor-to-File Rule

The U.S. priority rule granting patent rights to the first inventor who files a patent application for an invention rather than the first to discover it.

Public Use Test

The first prong of the patent novelty standard requiring that an invention or process must not already be in public use prior to filing.

Wright Brothers Flying Machine Patent

Patent No. 821,393 issued May 22, 1906, for a flying machine, illustrating novelty and patentable utility in global commerce.

Nonobviousness Standard

A patentability requirement stating that an invention must be something more than what would be obvious to someone skilled in the relevant field based on prior art.

Patentable Subject Matter Standard

A rule barring laws of nature, natural phenomena, mathematical algorithms, materials common to nature, and unapplied abstract ideas from patent eligibility.

Business Method Patent

A subcategory of utility patents covering business processes and methods that achieve something practically useful in a novel and nonobvious way.

Rule of Exactness

A literal patent infringement rule applying when an infringer makes, uses, or sells an invention identical to the patent holder's claims.

Rule of Addition

A literal patent infringement rule applying when an infringing device performs all claims of a patented invention plus additional features.

Rule of Omission

A principle stating that patent infringement has NOT occurred if an alleged infringing device lacks an essential element of the patent claims.

Doctrine of Equivalence

A legal rule allowing courts to find patent infringement if an invention performs substantially the same function in substantially the same way to achieve the same result.