branding for growth: using intellectual property to grow your business

intellectual property

BRIANNE POLITO JOSHUA WRIGHT PETER WU

TrademarksTrade

Secrets

Trade Dress

Patents

Copyright

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OVERVIEW

Patent Trade Secret Copyright Trademark

!Protect new,

useful, nonobvious inventions

!Protects

economically valuable secret

info

!Protects rights in

original expressive works

!Protects the

source of goods and services in

commerce

!Protection lasts 20 years (from

filing date)

!Protection lasts

as long as it remains secret

!Lasts for life of

author + 70 years

!Lasts for the life

of the mark (until it is

genericized or abandoned)

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TrademarksTrade

Secrets

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• What is a trade secret? • How to keep it secret • Pros/Cons of trade secret

protection

outline

TrademarksA trade secret is information that is • economically valuable to your

business, • isn’t known to people outside

your business, • and is subject to reasonable

protection from disclosure. !Protection lasts as long as it remains a secret.

Trade Secrets

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TRADE SECRETS

examples

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TRADE SECRETS

PA Uniform Trade Secrets ActTo be considered a trade secret: !(1) Information must be economically valuable because it is not known

to the public/competitors & it isn't easily ascertainable AND

(2) Reasonable efforts are made by the trade secret owner to maintain secrecy

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TRADE SECRETS

how to keep it secretTS owners have a duty to use “reasonable measures” to maintain the secrecy of the information. They should implement policies such as: !• For employees

• Non-disclosure agreements and confidentiality clauses • Non-compete clauses • “Confidential” labels • Limit access to documents w/ trade secret info • Include trade secret policies in employee handbooks • Training • Strict electronic communications & social networking policies

!• For third-parties (vendors, suppliers, independent contractors, etc.)

• Require non-disclosure agreements !!

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TRADE SECRETS

pros/consPros: !• Low cost • Doesn’t require disclosure/

registration w/ gov’t • No time limit for protection • Immediately effective !!!

Cons: !• Protection is only effective against

improper acquisition & use or disclosure

• Doesn’t provide exclusivity • Independent discovery • Reverse engineering • Protection is lost if secret is publicly

disclosed

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Copyright • What is copyright? • What can you copyright? • What rights do you get? • Registration • Ownership

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outline

Copyright

Copyright law protects the expression of an idea, but copyright does not protect the idea itself. !Copyright does not protect useful articles or objects with some useful functionality.

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COPYRIGHT

what can you ©?

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Literary Works

COPYRIGHT // CATEGORIES

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Literary Works


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Pictorial, Graphic, and sculptural works


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!

Music, Theatrical Performances & Sound Recordings


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Audiovisual Works


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Pantomines & Choreographic Works


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Compilations


Since facts are considered "ideas" or "discoveries", they are not copyrightable. However, compilations of facts are treated differently.

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Architectural Works


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Derivative Works


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COPYRIGHT

what rights do you get?

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what rights do you get?COPYRIGHT

To reproduce the work !

To prepare derivative works !

To distribute copies !

To publicly perform the work, !

To publicly display the work

To digitally transmit

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COPYRIGHT

how do you register?

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COPYRIGHT

Application form !

Deposit a clear rendition of the material being submitted for copyright

!Pay a nonrefundable filing fee

(as little as $35 for a basic claim in an original work of authorship)

how do you register?

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COPYRIGHT

who owns the ©?

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COPYRIGHT

The author is usually the initial owner. !

Exceptions: works for hire

works by employees joint works

collective works

who owns the ©?

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COPYRIGHT

© Do you need it?

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COPYRIGHT

© Do you need it?Technically, no. Protection is automatic upon creation.

!But you probably should.

!If you don’t register and provide proper notice,

it may limit your ability to collect damages from infringers. !!

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COPYRIGHT

transfers of rightsassignment - analogous to a sale of property !exclusive licenses - only the licensee may exercise the granted rights !nonexclusive licenses - allows licenses to other parties !implied licenses - licenses inferred from a conduct and not an explicit agreement

[must be in writing

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COPYRIGHT

case study

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COPYRIGHT

common questions

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Can you copyright the design of a t-shirt pattern? !

Can you copyright a logo design? !

Do you have to re-register every year? !

Do you have to register to use ©?

Trademarks™ • What are trademarks? • What can you trademark? • Types of protection • Federal registration • What to avoid

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outline

Trademarks™ Trademarks are source identifiers.

!They protect the source of goods and services in

commerce.

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How ™ is different from other forms of IP

• Trademarks don’t require creation of anything new

• Just have to establish an association between the mark and your product in the minds of consumers

• No built in time limitation: You’re in control.

• Scope may broaden over time - can become famous over time.

TRADEMARKS

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TRADEMARKS

What can you ™?

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NamesTRADEMARKS // CATEGORIES

Apple�36

SymbolsTRADEMARKS // CATEGORIES

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SlogansTRADEMARKS // CATEGORIES

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SlogansTRADEMARKS // CATEGORIES

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NumbersTRADEMARKS // CATEGORIES

Levi’s 527s

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SoundsTRADEMARKS // CATEGORIES

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SoundsTRADEMARKS // CATEGORIES

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MotionTRADEMARKS // CATEGORIES

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Non-traditional TMs

• Texture

• Hand gestures

• Scents and Flavors

TRADEMARKS // CATEGORIES

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TRADEMARKS

FancifulInherently distinctive;

automatically qualifies for protection

ArbitraryInherently distinctive;


SuggestiveInherently distinctive;


Descriptive Must establish secondary meaning to get protection

Generic Asprin No protection

what type of mark do you have?

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TRADEMARKS

How to get protection?

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TRADEMARKS

Common Law

Federal Registration

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TRADEMARKS

Limited to geographic area of use

!!• Protected only in the areas

where there is actual use • Cases have also established

protection in a normal territorial zone of expansion or where the mark’s reputation has been established.

common law protection• Comes from the continuous prior use of a mark in commerce.

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TRADEMARKS

20052007

common law priorityConcurrent use situations • Each party gets exclusive use in their exclusive geographic

areas. • Where there’s conflict, it’s resolved in

favor of the earliest user in that area.

• One user could be the senior user in one market and a junior user in another.

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downsides of common law protection

• No ability to recover: • lost profits

• statutory damages

• attorneys fees

• triple damages for willful infringement

• No national priority

• No right to use ® to give notice of rights in the mark

TRADEMARKS

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• Prima facie evidence of validity

• Nationwide priority as of date of registration

• Constructive notice of the registrant’s ownership of the mark

• Access to federal courts

• Broad array of remedies (if registered on the Principal Register)

• Incontestability after 5 years

TRADEMARKS

advantages of federal ®

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• Incontestability immunizes a mark against challenges that a mark is descriptive or lacks secondary meaning

• Incontestability does not shield you from challenges on other bases, such as:

• fraud, abandonment, misrepresentation of source, fair use, prior third party rights (e.g. concurrent use), prior registered mark, functionality, or genericism.

TRADEMARKS

what is incontestability?

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TRADEMARKS

Registration

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• Actual use of the mark in interstate commerce

• Bona fide intent to use (ITU) the mark in interstate commerce (if mark is inherently distinctive)

• ™ owner has 6 months (auto-extendable to 1 year or 3 years with good cause) to use and file a Statement of Use

• A claim of priority based on an earlier filed foreign application to register the mark

• Registration of the mark in a foreign applicants country of origin

• Extension of protection of an international registration under the Madrid system.

TRADEMARKS

bases for filing

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TRADEMARKS

1. Identify the particular goods or services on or in connection with which it uses or intends to use the mark !

• Be specific and don’t leave descriptions open-ended • Do not list products or services you don't plan on selling. Do not

include products or services that you are not, nor have a real intention of, selling in the future.

• List only goods/services that you are selling to others • Can’t add additional goods/services later; will need new

application. !!

application must

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TRADEMARKS

application must2. Submit a drawing of the ™ !

Standard character format - grants protection to the wording itself without regard to font, style, size, or color. Most flexible; broad rights. !

Stylized or design formats covers design elements and/or word(s) and/or letter(s) having a particular stylized appearance.

e.g. Nike

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TRADEMARKS

application must3. Submit a specimen of use

(typically photographs) for each class. !

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TRADEMARKS

APPLICATION PUBLICATION

OPPOSITIONREVIEW FOR STATUTORY COMPLIANCE

REGISTRATION CERTIFICATE

ISSUED

• Opposer must file opposition or time extension request within 30 days of publication; extendable up to 180 days

• Opposer must have a real interest in the mark for whom registration is sought. • Must be owner or exclusive licensee

of a similar mark • Be in competition with the applicant • Burden of proof is on the challenger

(opposer)

timeline

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TRADEMARKS

bars to registration

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The USPTO bars the registration of marks that:

• are confusingly similar to an existing mark.

• This is the most common reason registrations are denied

• Looking at likelihood of confusion

TRADEMARKS: STATUTORY BARS


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• similarity between the marks as to appearance, sound, connotation, etc

• similarity of the nature of the goods/services • similarity of marketing channels • conditions under which sales are made (“impulse" vs. more

discerning shoppers) • fame of the prior mark. • number and nature of similar marks in use on similar goods. • extent of actual and potential confusion • extent of concurrent use • range of goods for which mark is used


factors

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• are immoral, scandalous, disparaging, deceptive, or cause false associations

• comprise the flag, coat of arms, or insignia of the U.S., any state w/in the union, municipality, or foreign nation

• incorporate a name, portrait, or signature



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• are deceptively misdescriptive.

• are primarily geographically descriptive

• are primarily geographically deceptively misdescriptive

• are primarily merely a surname



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TRADEMARKS

How to keep your ™

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• Generic marks are subject to cancellation! Don’t let your mark go generic!

• Your mark should indicate who you are and not what you are.

!

!

Asprin, Escalator, Heroin, Webster’s Dictionary

TRADEMARKS

genericide

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• Don’t abandon your mark!

• If you discontinue use of your mark with intent not to resume, you’ve abandoned your mark and lose ™ protection!

• If you don’t use your mark for 3 consecutive years, there is a rebuttable presumption of abandonment.

• Resumption of use: protection will only cover new uses, not old ones.

TRADEMARKS

abandonment

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TRADEMARKS AND DOMAIN NAMES

Domain Names

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domain names ≠ ™ While trademarks are source identifiers in the physical world and domain names are source identifiers in the online world…

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ACPA claimsThe Anti-Cybersquatting Consumer Protection Act is one mechanism for ™ owners to get domain names. !A ™ owner must show: !• S/he has a valid TM • The mark is distinctive or famous • Defendant’s domain name is identical, confusingly similar to,

or dilutive of plaintiff’s mark • Defendant acted w/ bad faith intent to profit. !

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UDRP dispute resolutionICANN (Internet Corporation for the Assigned Names and Numbers) offers a dispute resolution procedure (UDRP) that is global and binding on all domain name registrants. !To win, a ™ owner must: !

• Prove identity or substantial similarity (confusingly similar) between his mark and challenged domain name

• Establish that domain name holder has no legitimate interest in the domain

• Show that domain name was obtained/using it in bad faith. !!!

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misspelled names?

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Trademarks

Trade Dress

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• What is trade dress? • What is protectable? • Registration

outline

TrademarksTrade Dress refers to characteristics of the visual appearance of a product or its packaging (or even the design of a building) that signify the source of the product to consumers.

Trade Dress

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Trademarks

Covers • Product packaging • Product design !can cover features such as size, shape, color, color combinations, texture, graphics, and scents.

Trade Dress

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TRADE DRESS

examples�75

TRADE DRESS

what is protectable?!must be !• non-functional • distinctive

• must be either inherently distinctive or have acquired secondary meaning

!!!

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TRADE DRESS

should you register?Trade dress is typically unregistered, but registration can be advantageous for the same reasons as for trademarks. !!

!!!

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TrademarksTrade

Secrets

Trade Dress

Patents

Copyright

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