Parsonage Vandenack Williams LLC
Attorneys at Law Licensed in Nebraska, Iowa, Michigan,
South Dakota, Texas, Arizona, and Colorado

Protecting Your Intellectual Property

What Is Intellectual Property?

Intellectual property is a general term that refers to creations of the mind and human intelligence. The term intellectual property includes inventions, literary and artistic works, designs, symbols, names, images, product packaging and other elements that are used to in commerce to promote a product or service. Intellectual property can be a manufacturing process, a book, a trade secret for a chemical formula, or plans for a product launch.

Intellectual property is intangible property subject to ownership and other rights pursuant to United States federal and state laws as well as most jurisdictions throughout the world.

What are the Legal Categories of Intellectual Property?

Trademarks and Service Marks. There is a distinction between a trademark and a service mark. In general, trademarks are used with goods while service marks are used with services. Generally, the term trademark may be used to refer to both trademarks and service marks.

A trademark is a recognizable sign, design or expression which identifies products or services as emanating from a particular source. A trademark may be located on product packaging, labels, vouchers, advertisements or directly on a product. Trademarks are used to identify the producer of products or the provider of services through recognizable names, brands, symbols, logos, slogans, colors, sounds, and package designs.

Website domain names can be registered as trademarks if they are used to identify a particular source of goods or services. Trademark rights can be used to cancel or obtain transfer of a domain name registration from another user if the other party's continued use of the domain name infringes the trademark or if the domain name was registered in bad faith.

Those considering registration of a trademark can review the online database maintained by the United States Patent and Trademark Office (USPTO) for potentially conflicting applications or registrations. Domain name registrations can be searched via private domain name registrars.

Copyrights. Copyright protection is given to the authors or original works of authorship. A copyright protects the form of expression of a creator against copying. Literary, dramatic, musical and artistic works are included within the protection of US copyright law. Copyright protection is available for both published and unpublished works.

Copyright categories include books and magazines; business plans and charts; software programs; websites; movies; music; drawings; graphic designs; paintings; sculpture; fashion' architecture; and live performances.

Trade Secrets. A trade secret is confidential business information which provides a competitive edge to its owner. Examples of trade secrets include client lists, marketing plans, pricing structures, software source code, and chemical formulations.

Patents. A patent is a property right for an invention or discovery granted by a government to the inventor. A US patent gives inventors the right to prevent others from making, using, offering for sale, or selling their inventions for a period of time. This right is obtained by disclosing the invention to the USPTO and paying a variety of fees.

There are three types of patents that receive protection in the United States. They are utility patents, which protect useful inventions such as processes, methods, machines, devices, manufactured goods, and chemical or biological compositions of matter; plant patents, which protect distinct and new varieties of plants; and design patents which protect new, original and ornamental designs of manufactured goods.

How Do I Protect My Rights In Intellectual Property?

Trademarks. Trademark owners that have not yet registered their trademarks with the United States Patent and Trademark Office (USPTO) should use trademark and service mark ownership symbols to indicate the status of a trademark and to provide notice of ownership rights claimed in the mark. When used in commerce, unregistered marks should be followed by the "TM" or "SM" symbol accordingly.

In order for a trademark owner to protect its rights in the trademark, it is recommended that trademark registration be considered at the federal and/or state level. A trademark does not need to be registered for the owner to prevent others from using a trademark or from using a confusingly similar mark in which the unregistered trademark is already being used in the same geographic area. Registration does provide certain legal advantages to the owner when enforcing its rights against others, including nationwide protection against infringing use. The registration acts as constructive notice to the public of ownership rights claimed in the trademark and enhanced damages that may be imposed for infringement of a registered trademark.

In order to register a trademark federally, an application must be completed and filed with the USPTO. Applications can be filed on the basis of actual use of the trademark in commerce or on a bona fide intent to use the trademark in connection with goods or services in the immediate future. Once an application passes preliminary review, the proposed trademark will be published in the Trademark Official Gazette by the USPTO. After the mark is published in the Official Gazette, any party who believes it may be damaged by registration of the mark has thirty (30) days from the publication date to file either an opposition to registration or a request to extend the time to oppose. If no opposition is filed or if the opposition is unsuccessful, an application based on actual use will proceed to issuance of a registration certificate, or if the application was based on an intent to use the trademark in the future, the USPTO will issue a notice of allowance of the trademark, and the owner will have six (6) months to file an affidavit confirming current use of the mark and providing an sample of such use. After proof of use of the trademark is provided for an intent to use application, the USPTO will issue a registration certificate for the mark.

Following registration of a trademark, the trademark owner should modify the symbol used following the mark from "TM" or "SM" to the (r) symbol designating that the mark is a federally registered trademark.

A trademark must be renewed five years after registration by filing a declaration of continued use or excusable non-use. If the mark has been used continuously during the five year period, the owner can seek a declaration of incontestability, which provides some advantages in the event of litigation. The term of a trademark is indefinite unless an owner discontinues use of a mark with no intent to resume use, in which case the mark can be deemed abandoned.

To assist owners in protecting marks, there are a variety of "watch" services available to alert owners to conflicting applications or potential infringements.

Copyrights. Ownership of a copyright automatically vests in the author of the work upon creation. If a work is made for hire, the copyright vests in the employer if certain conditions are met. The rights that accompany a copyright include the right to reproduce the work, prepare derivative works, distribute copies of the work, perform the work publicly, and display the work publicly.

In the United States, copyright registrations are controlled by the US Copyright Office. Copyrights may be registered in the Copyright Office, but registration is not required for rights to obtained. Copyright applications may be made by filing a copy of the work with the Copyright Office and paying the requisite fee. Although some owners prefer not to apply for registration in order to avoid public disclosure of the work, the value of registering the copyright is the ability to sue for infringement and to obtain damages.

There are limits on the duration of copyrights. As a general rule, for works created after January 1, 1978, the duration of a copyright is the life of the author plus 70 years. Works are not eligible for renewal registration after expiration of the copyright.

Trade Secrets. Trade secrets are generally protected without registration or procedural formalities. No official registration is required.

To qualify for trade secret protection, a trade secret must be secret and not generally known and have commercial value because the information is not generally known. In addition, the owner must take reasonable steps to keep the information secret. Reasonable efforts include limiting the availability of information to those who need to know, obtaining confidentiality agreements from those to whom information is disclosed, and engaging in security measures with respect to the information within the owner's organization. Trade secret related documents should be marked as "secret" or "confidential".

Owners of trade secrets can bring claims for misappropriation of secrets. Examples of misappropriation would include breach of a valid confidentiality agreement, a current or former employee's misuse of information, or physical or electronic theft of documents. Remedies available for a successful lawsuit include preliminary and permanent injunctions against further use or disclosure of the secret, direct damages or profits, and attorneys' fees.

Patents. A patent is granted after an application is processed by the USTPO. A patent application must disclose the invention in detail and enumerate specific claims to be granted.

The rights of a patent holder include the ability to exclude others from making, using, importing, offering for sale or selling any article or process covered by the claims stated in the patent.

Once a patent is issued, the patent holder must pay maintenance fees. Maintenance of rights under a patent does not require the patent holder to exercise its rights or enforce the patent against infringers. The owner of a patent can bring an infringement action by filing a lawsuit in federal district court or the International Trade Commission.

(c) 2014 Vandenack Weaver LLC

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