How Do I Protect My Idea? Part II: Trademarks and Service Marks

Protect My Idea - Trademark

You have a brilliant idea. With all your might, you are making it grow. You nurture it with your time, your energy, your hopes, your sweat, your dollars and your dreams.

This idea? Its time has arrived.

When you have put so much creativity, time and energy into something, you want to know that it is as well-protected as possible. My job as your attorney is to help you with the “how.” Sometimes, you know what kind of protection will work best for your idea. Sometimes, you don’t, or you aren’t sure which of your options is the best. This four-part series is a brief introduction to the various types of intellectual property. Today’s topic: trademarks and service marks.

A trademark (for products) or a service mark (for services) is something that identifies the source of a product or service. A mark (meaning either a trademark or service mark) may be a word, design, color, scent, or sound. However, it cannot be useful (referred to in trademark lingo as “functional”) in referring to the product or service whose source it is identifying. This is to prevent someone from removing a term or other identifier essential to selling a good or service from the marketplace—for example, you could not register a cylindrical shape as a trademark (trade dress) for a wheel. It would prevent anyone else from competing with you.

Rights in a mark can be obtained merely by using the mark in association with the sale of goods and services—this gives you rights in the mark at common law. You need not do more than this; however, there are many limitations to common law use, not the least of which is that it can be difficult to prove that you have the rights you claim. To show that you have common-law ownership of a mark, it may be necessary to demonstrate advertising over time and to show that consumers associate your company with the mark through surveys in the relevant geographical area. It is much simpler to obtain a registered mark, which grants rights throughout the state of registration or, for federal registration, throughout the United States. Other benefits of federal registration include being allowed to use the ® symbol; having a legal presumption of ownership nationwide; having the exclusive right to use the mark on or in connection with the goods or services set forth in the registration throughout the U.S.; and having your trademark visible in the fully searchable PTO database of registered trademarks, which can often deter would-be infringers.

Marks do require some maintenance. Most importantly, a mark must be used consistently in connection with the product or service that you are selling. If your mark is protected only at common law, this is all that you must do. If your mark is registered in your state, it will need to be renewed periodically; you should consult your state’s registration authority (usually the Secretary of State). If your mark is federally registered with the PTO, a Statement of Use must be filed between the fifth and sixth year following registration, and the mark must be renewed every ten years. There are small fees associated with these actions.

The greatest benefit of having a trademark is that no one else can use your mark (or a confusingly similar mark) for the same or similar goods and services within the protected geographic area. If you have elected to protect your mark only by common law use, that geographic area is limited to the places where the mark is in use and widely enough recognized to be a source identifier. If you have registered your mark with your state, that geographic area is limited to the state of registration. If you have registered your mark federally with the PTO, that geographic area is throughout the U.S. It is also possible to register trademarks in other countries, many of which do not have any common-law use, so if you wish to use and protect a mark in a foreign country, you should speak with an attorney.

The greatest drawback to having a trademark is that if you do not search carefully enough before adopting it, you may find that someone else is already using it and you are an infringer. If you are infringing on someone else’s mark, you may be forced to change your mark and lose any goodwill you have built up in it.

Further Reading

Trademark section of the PTO website:

How Do I Protect My Idea? Part I: Patents

Protect My Idea

You have a brilliant idea. With all your might, you are making it grow. You nurture it with your time, your energy, your hopes, your sweat, your dollars and your dreams.

This idea? Its time has arrived.

When you have put so much creativity, time and energy into something, you want to know that it is as well-protected as possible. My job as your attorney is to help you with the “how.” Sometimes, you know what kind of protection will work best for your idea. Sometimes, you don’t, or you aren’t sure which of your options is the best. This four-part series is a brief introduction to the various types of intellectual property. Today’s topic: patents.

Patents are perhaps the most often-requested type of protection; ironically, they can also be the least practical for most creators. Patents protect only a very limited scope of intellectual property:

Inventions and discoveries that are: 1) novel; 2) non-obvious; and 3) useful.

The only way to obtain patent protection is to apply for federal registration. The U.S. Patent and Trademark Office (PTO) will examine your patent application, and if it is found lacking in any of the three factors listed above, it will not register. Each of the three factors is a term of art. Although you may represent yourself in applying for a patent, an attorney’s guidance is often helpful in determining whether your invention or discovery meets the three-part test. Only a registered patent attorney may act on your behalf in applying for a patent. Obtaining patent protection can be expensive, generally in the neighborhood of $10,000 between PTO fees and attorney fees, and after that, you have to make regular payments to the PTO to maintain it. If you have the right kind of invention or discovery, though, it can be worth every penny to get that registration.

The major benefit of obtaining patent registration is that it grants you a monopoly on “making, using, offering for sale, or selling” the patented item for twenty years, even for personal use and even if the other party independently created it. That is a greater degree of protection, though a much shorter duration, than any other type of intellectual property.

The major drawback of obtaining patent registration is that you must publish your patent, so when your monopoly ends at the 20-year mark, everyone else knows how to make your formerly-patented item. If the patented material is still commercially viable at that point, you will have a lot of competition, though you will have a substantial head-start in the marketplace. If your branding is good, you may be able to continue to dominate for years to come. This brings us to our next type of intellectual property, trademarks.

Further Reading

Patent section of the PTO website:

A Clip Is Worth A Thousand Legal Questions

Intellectual Property - Copyright

In the world of politics, a candidate has to do what a candidate has to do to get ahead. Sometimes, that means taking what are meant to be neutral statements and using them to the advantage of the campaign. Recently, Mitt Romney’s campaign was asked by NBC to stop using an advertisement “that consists almost entirely of old footage of its former news anchor, Tom Brokaw, reporting on Newt Gingrich’s legal troubles.” You can, as of the date of this writing, find the clip on Mr. Romney’s website.

The network’s lawyers said that the extensive use of the broadcast, approximately 30 seconds’ worth, constituted copyright infringement and exploited NBC’s and Mr. Brokaw’s journalistic integrity.  The campaign has responded by stating that it believes its use of a 30-second clip out of the entire broadcast constitutes fair use.

Fair use is defined by the Copyright Act’s Section 107. Section 107 states that for certain purposes, including “criticism, comment, news reporting, teaching (including multiple copies for classroom use), scholarship, or research,” copying and making use of other rights granted to copyright holders do not constitute infringement. It sets forth four factors for determining whether a particular use is fair use or not:

(1) the purpose and character of the use, including whether such use is of a commercial nature or is for nonprofit educational purposes;

(2) the nature of the copyrighted work;

(3) the amount and substantiality of the portion used in relation to the copyrighted work as a whole; and

(4) the effect of the use upon the potential market for or value of the copyrighted work.

The federal courts have not ruled on whether or not the use of news clips by political campaigns constitutes fair use, nor have they been willing to commit to a set length or ratio to determine the quantity of copying that would take users out of the realm of fair use. What may be the most interesting question in this situation, however, is how the courts would rule on the fourth factor of the fair use test, the effect of the use on the potential market for or value of the copyrighted work. One of the most important cases addressing this factor was Campbell v. Acuff-Rose Music, 510 U.S. 569 (1994). There, the U.S. Supreme Court stated that the fourth factor “requires courts to consider not only the extent of market harm caused by the particular actions of the alleged infringer, but also ‘whether unrestricted and widespread conduct of the sort engaged in by the defendant . . . would result in a substantially adverse impact on the potential market’ for the original.” The courts have not determined whether harm the reputation of the original work via a non-parody derivative work, which may in turn harm the market for both the original and any subsequent broadcasts, is a cognizable harm in the world of copyright. It may be a poor choice to make it such, as there are other claims a plaintiff could bring in this area, such as trademark dilution or some variety of implied defamation. However, as a media outlet, NBC will likely tread carefully when it comes to trying to place limits on the free speech of others.

What do you think? Does the Romney campaign’s use of the clip constitute fair use?

SOPA and PIPA Post-Mortem: What Would Work?

Intellectual Property - Copyright

The controversial Stop Online Piracy Act (SOPA) and Protect Intellectual Property Act (PIPA) are, it seems, dead. After raising concerns about the effects of the bills on websites of all types and a widespread blackout protest, opponents of the bills successfully convinced legislators to withdraw their support, and ultimately the sponsors withdrew the bills.

The bills’ opponents claimed that they would destroy the internet. They said that it would cause search engines to have to shut down, kill startup businesses that cannot possibly monitor their content as the bills would have required, and that mere linking could get an entire site shut down.

The bill’s proponents are difficult to find this week, but they are furious. They claim that the bills would have protected content creators in unprecedented ways, and that the opponents have business models built on infringement.

What is a content creator to think? On the one hand, most creative entrepreneurs know that they need to protect their intellectual property. Many have had a frustrating run-in with a larger company that infringes on their content and refuses to stop, mainly because of who can afford to pay for legal costs. It would be immensely satisfying to be able to stop those infringers cold by shutting down their entire website. On the other hand, many small businesses rely on the very websites that claimed their existence was threatened by SOPA and PIPA: search engines, aggregation sites, shop hosting sites. It is difficult to build a business around having the top Google results in your area if Google has been taken offline for directing traffic to pirating sites.

What might work instead? Perhaps a SOPA-like system could exist, keeping content creators who believe their works are subject to a great deal of piracy happy, but only in concert with a more rigorous registration system. Under the current copyright regime, copyright exists in a given creative work at the moment it becomes fixed in a tangible medium of expression: when it is written, when it is recorded, when it is hewn into stone. Both nationally and internationally, orphan works  and multiple ownership cause headache after headache, making it very difficult for people to find all owners necessary to give permission for using a particular work. The problems caused by these issues are only amplified in an environment where a company could unknowingly be hosting copyrighted content that was posted in good faith by a user who believed that the work was in the public domain.

However, if content creators were required to register their copyrighted works in a searchable and crawlable database (the Copyright Office’s current searchable database is insufficient, going back only to 1978) to obtain the protections of a bill similar to SOPA, two birds could be killed with one stone: the lack of notice and lack of ability to find owners of copyrights could be dramatically cut back, and content creators could be assured of better protections. And it could spring up an entire cottage industry of bot creation whose sole purpose is to help innovators ensure that the content posted to their sites does not match anything in the Copyright database.

This system would, of course, create some controversy. People and companies who have already registered their works might cry foul for being forced to re-register them to obtain the protections of copyright law. On the other hand, there are orphan works even among registered works: copyright registrations are often not transferred properly at the death of an author whose family may be unaware of, or simply not care about, his copyright works. In other cases, companies are disbanded and their assets are never properly disposed of for one reason or another.

To be fair to both groups (those subject to the SOPA-like regulations and those who create the content), perhaps the best route would be to allow current copyright holders to port their own registrations over to the new system at no charge. For owners of older copyrights that are not in the Copyright Office online database, a small fee could be charged for the expense associated with verification and formatting. For those who have not yet registered copyright, the option to include the new work in the SOPA database could be part of the copyright registration process—for an additional fee.

In a world where technology makes it quick and simple to share, and where changes in the medium far outpace our ability to preserve old media (how many floppy disks do you still have?), copyright law begins to look like a dinosaur. If it is to remain relevant, it must adapt.

What do you think? What is the best way to protect content creators without stifling innovation?