© kolisch hartwell 2010 all rights reserved, page 1 fundamentals of intellectual property law t.j....

© Kolisch Hartwell 2010 All Rights Reserved,

Fundamentals of Intellectual Property Law

T.J. Romano

Intellectual Property Attorney

Kolisch Hartwell, P.C.


Overview

• Primary areas of intellectual property law

Trademarks

Patents

Trade Secrets

Copyrights


TRADEMARKS


The Banana Bike

Joey Hiprider designs himself a new bike in 2010, forms Shrek Bicycles, Inc. in Oregon, and immediately begins developing a new bike called BANANA BIKE.


The Banana BikePrior to launching Shrek, Hiprider registered the business name “Shrek

Bicycles” with the Oregon Secretary of State. He also obtained the following internet domain names, none of which were previously owned and all of which are now directed to the new Shrek Bicycles website:

www.shrek.comwww.shrekbicycle.comwww.shrekbicycles.comwww.shrekbike.comwww.shrekbikes.com

Has Hiprider done enough to be reasonably sure that his company will

not run into any problems based on the choice of “Shrek Bicycles” as its brand name?


The Banana Bike

Answer: NO

Trademark rights are obtained by the first to use a particular mark for goods/services in a particular geographic region.

Therefore, others could easily still have trademark rights in the name “Shrek Bicycles.” For example:

•Another company might be using the exact same name in another part of the country for bicycles.

•Another company could have obtained a federal trademark registration on the exact same name for bicycles.


What is a Trademark?

Marks distinguish the source of products or services.

• Right to exclude others from using a confusingly similar mark for similar products or services.

• For famous marks, right to exclude others from using a confusingly similar mark potentially for any products or services.

A “trademark” distinguishes products and a “service mark” distinguishes services, though the term “trademark” commonly used for both.


What Can Serve as a Trademark?

Anything capable of distinguishing the source of products or services.

Words, Names, Slogans Symbols, Logos, Shapes Sounds, Smells Product Configuration Trade Dress, Packaging Any combination of the above


Examples of Trademarks


U.S. Trademark Rights – Dual System

Common Law: scope of rights limited to areas of use, and possibly zone of natural expansion based on use.

Federal Registration: confer rights throughout United States, even if use limited to one state or one area of country.


How to Select a Mark

Two main considerations:• A distinctive element• Cannot cause confusion with

existing marks (so-called “likelihood of confusion” test)


Distinctiveness Spectrum

Never YesSometimes Yes

Generic Descriptive Suggestive Arbitrary/Fanciful

Trademark?


Can “Apple” be a Trademark?

No• Common commercial name for

the goods• Does not distinguish goods from

others in marketplace

Yes• Identifies goods• Distinguishes goods from

others in marketplace


Likelihood of Confusion Factors

1. Similarity of the marks2. Strength of the mark3. Proximity of the goods / services4. Evidence of actual confusion5. Marketing channels6. Degree of care of purchaser7. Defendant's intent in selecting the mark8. Likelihood of expansion of the product linesAMF, Inc v Sleekcraft Boats, 599 F.2d 341 (9th Cir. 1979)


The Banana Bike

Is this a problem for Shrek Bicycles?

What about this? Or this?


Trademark Considerations

• Conduct trademark searches Ensure not violating third party rights Determine if can register mark

• File trademark applications early• Present the mark as a mark

Set marks apart from regular text Follow marks with a trademark symbol (TM, ®) Marks always are adjectives, never nouns


PATENTS

Our inventions mirror our secret wishes.- Lawrence George Durrell


The Banana Bike

BANANA BIKE uses a banana shaped frame that is more aerodynamic than previous frames, and that has a very distinctive look. It occurs to Hiprider that it would be nice to have a patent on the BANANA BIKE.


What is a Patent?

A right to exclude others from• making, • using,• selling,• offering to sell, or• importing

a “patented invention.”


Types of Patents

• Utility Patents Protects how an invention works

• Design Patents Protects how an invention looks

• Plant Patents Protects new varieties of plants


What can be Patented?• Devices• Compositions of Matter• Processes• Articles of Manufacturing• Methods of Use• Software• Business Methods• Ornamental features (design patents)


What is a Utility Patent?


What is a Patented Invention?

The right to exclude is defined by the patent claims:

U.S. utility patents remain in force up to 20 years after application filing date.


What is a Design Patent?

The term is 14 years from the date the patent is granted.


Requirements for Patents

• Useful

• Novel (New)

• Nonobvious

• Invented by you


Is it Useful, Novel, and Nonobvious?

+ = ?


Patent Infringement

• Obtaining a patent grants only a right to exclude and not a right to use

• A patented article may infringe another’s patent

Client Patent Claim: “a chair with wheels.”Their Patent Claim: “a chair.”

Client selling its “patented” chair with wheels infringes Their Patent.


Patent Considerations

• Conduct patentability searches• Consider conducting clearance searches

Entering new technology area Concerned with particular competitor

• File patent application before public disclosure One year grace period in North America No or limited grace periods in most other countries

• No patent rights without a patent


Patent Considerations – Patent Marking

• Tension between marking and not marking. Must mark patented products or lose right to

infringement damages. But liability for marking “unpatented” articles for

purposes of deceiving the public. Products marked with expired numbers are “unpatented.”

• Law changed in 2009, liability for false marking now $500 per article.

• 100’s of qui tam relator false marking suits filed in 2010.• Congress may act to change law to stem lawsuits.


Patent Considerations – Patent MarkingHerengracht Group LLC v. WM. Wrigley Jr. Co., 1:10-cv-21784-ASG (S.D. Florida)

If liable, damages up to $500 for each pack of falsely marked gum.

Expired patent number


The Banana Bike

Ideas about what is patentable?


TRADE SECRETS

SHREK BICYCLES, INC.

CORPORATE PLANS

CONFIDENTIAL


What is a Trade Secret?

• Economically valuable because it is secret Not generally known Not easy to figure out

• Protected by reasonable efforts Nondisclosure agreements / exit interviews Limited access to unauthorized persons


What is a Trade Secret?

Protects against acquisition or disclosure by “improper means”

• Theft• Bribery• Misrepresentation• Breach of a duty to maintain secrecy• Espionage


Examples of Trade Secrets

• Drawings• Cost Data• Customer Lists• Compositions• Patterns• Compilations

• Programs• Devices• Techniques• Processes• Methods of

Assembly• Other Methods


Trade Secrets – Specific Examples

KFC’s 11 Secret Herbs and Spices

Coca-Cola’s Secret Soft Drink Formula


Trade Secrets Considerations

• May last forever but all value may be lost at any time Reverse engineering Accidental disclosure Independent development

• Consider patent protection if available


COPYRIGHTS


What is a Copyright?

A right to exclude others from “copying” an “original work of authorship”


Original Works of Authorship

• Literary works• Pictorial, Graphic, and Sculptural works• Audiovisual works• Musical works• Dramatic works• Sound recordings• Architectural works• Choreographic works


Original Works of Authorship

Business-related examples:• Software• Product manuals and brochures• Website design and content• Training videos• Presentations


Types of Copyrights

• Automatic Rights Original work of authorship Fixed on a tangible medium

• Registered Rights Registered with a government entity

- U.S. Copyright Office Life of author plus 70 years Statutory damages


How is a Copyright Infringed?

• Reproducing the copyrighted work• Preparing derivative works• Distributing copies• Performing the copyrighted work publicly• Displaying the copyrighted work publicly


Copyright Considerations

• File copyright applications early• Use copyright notice• Have employees and contractors sign

agreements that cover IP Independent contractors own copyrights in their work

unless have agreement to the contrary


FOREIGN IP RIGHTS

• Think Global!• U.S. rights are limited to the United States• Each country has its own system for

protecting intellectual property• Selected International IP Treaties:

Patent Cooperation Treaty (PCT) Paris Convention and Madrid Protocol for Trademarks Berne Convention for Copyrights


T.J. Romano Intellectual Property Attorney

Kolisch Hartwell, P.C.

520 SW Yamhill Street, Suite 200

Portland, Oregon 97204

(503) 224–6655

[email protected]

© kolisch hartwell 2010 all rights reserved, page 1 fundamentals of intellectual property law t.j....

Documents

scope of rights

examples of trademarks

forms shrek bicycles

choice of shrek bicycles

new bike

term trademark

new shrek bicycles website

similar products