Category Archives: Intellectual Property

Why Should I Register My Trademarks?

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TrademarkIn the United States, trademark rights are based on (1) priority (who used the mark first), (2) territory (the geographic area(s) where the mark has been used), and (3) use (whether products or services are actually provided under the mark).

Generally, the first to either use a mark in commerce or file an intent-to-use application with the United States Patent and Trademark Office (USPTO) has the ultimate right to use and registration of the mark.

Common law rights arise when products or services are offered for sale in connection with the mark.  However, common law rights are limited to the trade area in which you actually use the mark and those rights may be limited or even prohibited by prior senior uses of the same or confusingly similar marks.

A trademark owner may also register a mark in one or more individual states through Secretary of State Offices.

Although registering your mark with the USPTO is not required to establish rights in a trademark, there are many important benefits of federal trademark registration with the USPTO.  For example, upon registration of a federal trademark, the registrant obtains rights to the mark throughout the United States retroactive to the date of filing of the application. The registrant also obtains the right to stop junior users from adopting confusingly similar marks in overlapping trade areas or anywhere the registrant has acquired goodwill in such mark.

Here are some of the benefits of registration:

  • Registration provides constructive notice nationwide of the mark owner’s claim in the mark and evidence of ownership of the mark.
  • The mark owner has the exclusive right to use the mark on or in connection with the goods or services set forth in the registration.
  • The mark owner may bring lawsuits for infringement in federal court.
  • The mark owner may be entitled to recover profits, damages and costs of infringement, attorneys’ fees and treble damages.
  • Registration can be used as a basis for obtaining registration in foreign countries.
  • The mark can obtain incontestable status after continuous use for 5 years after the date of registration on the Principal Register (which limits third parties’ rights to contest your mark).
  • Registration may be filed with U.S. Customs Service to prevent importation of infringing foreign goods.

An application for trademark registration requires: (1) a completed application form, (2) a nonrefundable filing fee starting at $350 per class of goods/services, and, for marks already being used in commerce, (3) specimens of the mark showing use of the mark in connection with the applicable goods/services.

Click here for more information about how to select and protect a trademark.

Protect Your Brand: The Duty to Police Trademarks

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So, you’ve found and registered a unique brand.  Congratulations!  That’s a major accomplishment!  However, once you have rights in a brand, you need to make sure you keep those rights in tact to protect the brand.

Although you are not required to prosecute (or even act immediately against) every potential infringer of your brands, you do have a legal duty to protect against infringement and act reasonably in protecting your trademark rights.  If you fail to properly “police” your marks, you risk diminishing the value of your brand, damaging your goodwill, and weakening your mark.police-294107_1280

In extreme cases, failure to police a mark can lead to abandonment of all trademark rights in the mark.  For example, ASPIRIN used to be a brand name owed by Bayer and ESCALATOR used to be owned by Otis Elevator Company…but these marks became so widely used as the name of the underlying products themselves that the marks became generic terms for those products, and both companies eventually lost their trademark rights in the names.  (Unlike a trademark, a generic name consists of the word commonly used to identify a product.  For example, the terms “computer,” “software” and “internet” are generic names and anyone is free to use them.)

To protect your marks and prevent competitors from using confusingly similar marks that could affect your reputation and bottom line, you should implement a plan to monitor your marks and enforce your rights when necessary.

To help you monitor your marks, you may want to sign up for Watch Services that will notify you of potential issues, such as new trademarks filed with the US Patent and Trademark Office (USPTO), Secretary of State Offices or in foreign countries, as well as domain name filings, common law marks and corporate filings.  At the very least, you may want to set up Google Alerts to monitor mentions of your brand or products on the Internet.  If you have licensed any of your marks to third parties, you should monitor your licensees’ use of your marks as well.

In the event you become aware of a potential infringing or confusingly similar mark, you can determine (in consultation with your trademark attorney) what, if any, actions you may want to take to protect your trademark rights.  Depending on the situation, you may decide to send a cease and desist letter to the infringing party, file an Opposition or Cancellation action with the USPTO, file a lawsuit in State or Federal Court, pursue a combination of these options, or decide on a different strategy.

Why Should I Register My Copyrights?

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CopyrightThe moment you create and write down, record, photograph or otherwise “fix” your creative work in “any tangible medium of expression,” you automatically have copyright protection in that work under the United States Copyright Act.  Although filing an application for registration of your work with the U.S. Copyright Office is not required for this protection, the benefits of registration could be substantial.

For example, if you wait until your work has been infringed and the infringement occurs more than 3 months after you first made the work publicly available, then you will not be able to obtain statutory damages or attorney’s fees for the infringement, and you’ll have to prove actual damages instead.  This can make or break your chances of recovering any money from the infringer, as actual damages can be difficult to prove and may not exist in certain situations.

Additionally, before you can bring a lawsuit for copyright infringement, you must have a copyright registration for the work that has been infringed.  This means that you could end up filing a copyright application after the infringement occurs and end up paying a much higher filing fee without the main benefits you would have had had you filed the application before the infringement occurred.

Here’s a list of some of the benefits of registration:

  • If registration is made within 3 months after publication of the work OR prior to an infringement of the work, statutory damages and attorney’s fees will be available to the copyright owner in court actions. Otherwise, only an award of actual damages and profits is available to the copyright owner.
  • Before an infringement suit may be filed in court, registration is necessary for works of U. S. origin.
  • Registration establishes a public record of the copyright claim.
  • If made before or within 5 years of publication, registration will establish prima facie evidence in court of the validity of the copyright and of the facts stated in the certificate.
  • Registration allows the owner of the copyright to record the registration with the U. S. Customs Service for protection against the importation of infringing copies.

Registration may be made at any time within the life of the copyright. An application for copyright registration contains three essential elements: (1) a completed application form, (2) a nonrefundable filing fee (typically $45-$65), and (3) a nonreturnable deposit—that is, a copy or copies of the work being registered and “deposited” with the Copyright Office.

As the U.S. is a member to a number of international treaties related to copyright protection, your U.S. copyright rights will be recognized in most countries throughout the world, and vice versa.

Intellectual Property Audits: Taking Stock of Your Intangibles

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Most companies routinely perform inventory audits of their physical assets…but — even though it’s not always on the radar — performing audits of intangible assets is equally (and perhaps even more) important.

The objective of an IP audit is to identify and protect intellectual property assets that provide you with Audit Rubber Stamp Shows Financial Accounting Examinationa competitive advantage and promote the goodwill of your business.  By creating a process to identify and take steps to protect intellectual property at least once a year (and perhaps more frequently if IP is a major component of your business), you can ensure that valuable assets are not made public, or otherwise lost or compromised, prior to taking the appropriate actions to protect them.  An intellectual property audit and due diligence review should also be performed in connection with mergers and acquisitions and other buy/sell transactions, as well as financing transactions that affect IP assets.

Typical intellectual property assets include product, service and company names and logos (trademarks), website content, written materials, and creative works (copyrights), formulas, processes, product designs and inventions (patents), and proprietary customer lists and other confidential information, such as pricing data and vendor information (trade secrets). Depending on your industry and the types of products and services you offer, there may be other intellectual property assets to consider.  These items should be identified and reviewed on a regular basis.

An audit should include a variety of information, such as:

  • Name/Description of IP – Identification of mark or domain name, title of copyright or patent
  • Subject of IP – List of goods/services, copyrighted material, description of patent
  • Status of IP – Application and registration number(s), intent-to-use or actual use-based mark, upcoming filing deadlines, IP not protected, related litigation or other disputes or issues
  • When/How/Where the IP Has Been Used – Dates of first use/publication, where/how IP used/published, U.S./International use, and any licenses or agreements regarding the IP
  • Chain of Title – IP owner(s), list of all IP transfers, note any transfers that have not been recorded, note any gaps in the record of ownership

Once your intellectual property has been itemized, you should determine whether any additional protections or updates to existing protections are necessary.  You should also review company policies and agreements with employees, independent contractors and licensees regarding the creation, use and protection of your (or third party) IP assets, as well as confidentiality and non-compete protections.  Additionally, your social media, website and insurance policies should be reviewed, as well as your advertising and marketing materials.  You may also consider whether you need to implement systems to monitor unauthorized use of your IP assets by others and address how to approach infringement scenarios.

Internal IP audits are a great start, but you should consider consulting with an IP attorney to ensure all of your IP has been identified and is protected.

 

Music Copyrights

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When you talk about copyrights in the music industry, at least two different copyrights exist.  There is a copyright in the lyrics and/or music of the song [the musical composition], and a separate copyright in the recorded version(s) of the song [the sound recording(s)].  If you record or re-record a song (your own or a cover of someone else’s), the copyright in the lyrics and music would remain the same, but there would be a new copyright in each new sound recording. 

musician shows classical guitar and flower music

Copyright in Music and Lyrics

Under the U.S. Copyright Act, everyone that contributes to the songwriting has a claim to the copyright.  Regardless of how much or how little you contribute, the Copyright Act considers all contributors to the same song to be joint authors (a.k.a. co-authors).  Each joint author owns an indivisible share to the entire copyright, unless there is a written agreement stating otherwise between all of the contributors (or any non-contributors).  Therefore, each co-author can do what he wants with the copyright as long as he pays the other co-author(s) an equal share of the proceeds.  Copyright ownership of a song can be very profitable, as songwriters receive money from publishing.  (Sometimes, songwriters assign their copyrights to music publishers to exploit the songs and administer the rights.)

Copyright in Sound Recordings

Technically everyone that contributes to the recording has a claim to the sound recording.  However, usually whomever pays for the recording (usually a record label) owns this copyright through a contract.  The songwriter will own the copyright in the lyrics and music, but the record label will own the copyright in the sound recording.  If the artist pays for the studio time, then the musicians who play on the recording will jointly own the copyright to the sound recording unless this is a written contract to the contrary.  

If the same person or group of people own the copyright in one or more musical compositions as well as the resulting sound recordings, then both copyrights can be protected on one copyright application.  If the owners are different, then separate copyright applications will need to be filed for the musical compositions and sound recordings.

 

Copyright Notices

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To prevent unauthorized use or copying of your works, you should always include a copyright notice on all documents, websites and other creative works.

Although the use of a copyright notice is not required under U.S. law for works published after March 1, 1989, it’s a good way to potentially deter would-be infringers.

You do not need to have filed a copyright application or obtained a copyright registration to use the ©, as copyright protection subsists from the time the work is fixed in any tangible medium of expression (e.g., written down, recorded, etc.)…although there are several benefits to registration.

Use of a copycopyright-98570_1280right notice informs the public that the work is protected by copyright, identifies the copyright owner, and shows the year of first publication. Furthermore, in the event that a work is infringed, if a proper notice of copyright appears on the published copy or copies to which a defendant in a copyright infringement suit had access, then the alleged infringer will not be able to rely on a defense based on innocent infringement in mitigation of actual or statutory damages.

A copyright notice should contain the following:

  1. The symbol © (the letter C in a circle) or the word “Copyright”;
  2. The year of first publication of the work. In the case of compilations or derivative works incorporating previously published material, the year of first publication of the compilation or derivative work is sufficient; and
  3. The name of the owner of copyright in the work, or an abbreviation by which the name can be recognized, or a generally known alternative designation of the owner.

Examples:

© 2022 Danica L. Mathes.  All rights reserved.

© 2022 Bell Nunnally & Martin LLP

Trademark Notices

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Use of the ™ or SM Symbols. Unless and until you obtain a federal trademark registration for your mark(s), you can (and should) use the ™ or SM (for trademark and service mark, respectively) symbol in connection with your marks to indicate to others that you claim rights in the marks.

You do not need to have filed a state or federal trademark application or obtained a trademark registration to use the ™ or SM symbol, as common law trademark protection subsists from the time a mark is first used in commerce…although there are several benefits to registration.

You may also want to include a trademark notice on your documents and website.

 Example: BEHIND EVERY GREAT COMPANY.SM is a service mark of Bell Nunnally & Martin LLP.registered-98574_1280

Use of the Federal Registration Symbol ®.  You cannot use the federal registration symbol ® until you receive a federal registration certificate from the U.S. Patent and Trademark Office (USPTO).

Even if you have a pending trademark application, the registration symbol may not be used before the mark has actually registered. The federal registration symbol should only be used on goods or services that are the subject of the federal trademark registration.

You may also want to include a trademark notice on your documents and website.

Example: I’M WITH THE B(R)AND ® is a registered service mark of Danica L. Mathes.

NOTE:  JUST BECAUSE A MARK IS REGISTERED FOR ONE ITEM DOES NOT MEAN YOU CAN USE THE ® FOR OTHER ITEMS.  If a specific product or service is not listed in the identification of goods/services for a registered mark, then ™ or SM would be the correct notice to use in that case.

Trademark Notices in Other Countries. Some countries have severe civil and criminal penalties for improper use of trademark registration symbols.  Therefore, you should not use ® in countries where your marks have not been registered.  If you are unsure if a trademark is registered in a particular country, you should use the ™ or SM symbol.

Use of Third Party Marks.  You should observe the trademark ownership of others by including the following:

“[Enter trademark name here] is a [registered] trademark of [enter trademark owner’s name].”

If the trademark owner information is unknown, you may want to include the following:

“All trademarks are the property of their respective owners. [Company Name or Your Name] is in no way endorsed, sponsored, approved by, or otherwise affiliated with the owners of such trademarks.”

NOTE: IN MANY INSTANCES, YOU WILL LIKELY NEED PERMISSION FROM THE OWNER OF A MARK IN ORDER TO USE THAT PARTY’S MARK…especially if use of a third party mark is likely to lead consumers to believe that there is an affiliation, connection or association with the third party mark or that the owner of the third party mark sponsors, approves or originates your products, services or commercial activities.

Protecting Your Marks Outside of the United States: Foreign Trademark Priority Filings

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Trademark protection is geographic in scope…meaning that a trademark is only protected in the geographic area(s) (state/region/country) in which the mark is used or registered.

earth globeA United States trademark application or registration with the United States Patent and Trademark Office (“USPTO”) does not protect a trademark in any foreign country.  However, U.S. trademark applications and registrations can be used to obtain trademark protection in other countries and vice versa.

Six-Month Priority Foreign Filings

If the foreign trademark application is filed within six months of the U.S. application, the foreign application can claim “convention priority.”  This means that the foreign application will be treated as if it was filed on the same day as the U.S. application.  Nearly all countries are members of the Paris Convention, which put this rule in place.

“Claiming priority” in this six month window can prove to be a major advantage by providing you with the earliest possible filing date for your mark.  If other applicants file similar marks after that priority date, they will be rejected or suspended. In other words, your application will receive priority over applications filed after not only your actual filing date, but also over applications filed between your actual filing date and your priority date.

Taking advantage of priority foreign filings also allows you the opportunity to spread out the costs associated with trademark filings over a six-month period and gives you time to assess your international brand protection strategy without sacrificing any protection…which can be significant, especially for a new venture or brand.

Foreign trademark applications filed after this six-month “priority” date take the actual dates on which they are filed.

Other Cost-Saving Measures and Strategies

In many cases, there are mechanisms available that provide efficient and cost-effective ways of obtaining protection for your brand simultaneously in multiple countries.  For example, the Madrid Protocol allows a trademark owner to seek protection in any of the almost 100 member countries by filing one application and designating as many member countries as it chooses.  It is also possible to file a single European Union Trade Mark (“EUTM”) application for a trademark covering all of the countries in the European Union.  You can designate the EU/CTM in your Madrid Protocol application.

Intent to Use Trademark Applications: Reserve Your Brand Today!

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Although actual use of a mark in commerce is usually required to protect a trademark, Intent-to-Use (“ITU”) Trademark Applications extend potential protection to a mark before it is used in interstate commerce.  One of the main benefits is that, once the application matures into a registration, you can claim the filing date as your constructive date of first use of the mark, even though you didn’t actually use the mark until after you filed. (In other words, filing an ITU application provides nationwide priority over others, with the exception of parties who had used the mark before your filing date, parties who had filed before you, or parties who are entitled to an earlier priority filing date based upon the filing of a foreign application). You will also be able to establish some priority in a mark and determine whether your mark is registrable before you invest large sums of money for advertising, printing, etc.

Bona Fide Intent.  Before you file an application with the U.S. Patent and Trademark Office (“USPTO”), you must have a good faith or bona fide intention to use the mark in commerce. I recommend that your intent be bolstered by verifiable documents (corporate minutes, reports, plans, contracts, evidence of R&D, market research, manufacturing activities, steps to acquire distributors or obtain required governmental approval, or other similar activities).

Goods and Services.  A trademark application must list the specific goods/services that will be provided in connection with the mark. (Goods are products; services are activities performed for the benefit of someone else.) The description of goods/services should use clear, concise terms that are easily understood by the general public. Once an application is filed, you can clarify or delete certain goods/services, but you must file a new application to add additional goods/services. As ITU applications are often filed before final decisions have been made, it is usually best to be broad and over-inclusive with respect to the goods/services you reasonably intend to offer.

Allowed Applications. Once your mark clears the initial evaluation and publication process, the USPTO will issue a Notice of Allowance. Your Allowed application will not mature into a Registration unless and until you file an Allegation of Use indicating that you have begun use of the mark in commerce.  You have six (6) months from the date the application is Allowed to file an Allegation of Use. However, you may file up to five (5) six-month Extensions, which allows you to “reserve” the mark for up to three (3) years before actual use of the mark in commerce is required. If an Allegation of Use is not filed within 36 months of the date the application was Allowed, the application will abandon. The USPTO filing fees are currently $150 per Class of goods/services for each Extension, and $100 per Class of goods/services to file an Allegation of Use.

Establishing Use. In order to prepare an Allegation of Use, you will need the following for each Class of goods/services: (1) Date of First Use Anywhere (MM/DD/YY); (2) Date of First Use in Commerce (MM/DD/YY); and (3) a Specimen of Use.

  • Date of First Use Anywhere. The date the mark was first used in commerce anywhere (which may be earlier than, or the same as, the date of the first use of the mark in commerce).
  • Date of First Use in Interstate Commerce. For goods (Classes 1-34), “interstate commerce” involves sending the goods across state (or country) lines with the mark displayed on the goods or packaging for the goods. With services (Classes 35-45), “interstate commerce” involves using or displaying the mark in connection with selling, advertising or offering a service to those in another state (or country) or rendering a service which affects interstate commerce (e.g., restaurants, gas stations, hotels). “Use in commerce” must be bona fide use in the ordinary course of trade, not “token” use simply made to reserve rights in the mark.
  • Specimen of Use. A specimen is a real-world example of how the mark is actually used on the goods or in the offer of services. Specimens for goods (Classes 1-34) may take the form of labels, tags, packaging, or containers for the goods, a display associated with the goods, or a photograph of the goods that shows use of the mark on the goods. Specimens for services (Classes 35-45) should include some reference to the type of services rendered and may take the form of website screenshots, magazine advertisements, brochures, a sign, a business card or stationery, or a photograph showing the mark as used in rendering or advertising the services.

URGENT REMINDER: 2017 DMCA Agent Designation – Previous Designated Agents Must Re-Register Online Before December 31, 2017

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do-it-now-1432945_1920If you operate, manage, or host a website, mobile app, blog or other digital service  that allows users (aka third parties) to post comments or upload media, such as pictures, videos or audio files, then you need to be taking advantage of the Digital Millennium Copyright Act (“DMCA”)  Safe Harbor to protect yourself from copyright infringement liability for infringing materials posted on your site by users of your service.

Last year, the U.S. Copyright Office introduced a new online DMCA Agent Directory and registration process to replace the prior paper-based system and directory for DMCA Designated Agents, which became effective on December 1, 2016.  Designating a DMCA Agent with the Copyright Office is part of the process to protect you from copyright infringement liability for third party posts (aka user-posted content) on your app/blog/website and corresponds to the DMCA Takedown Notice Procedures that should be included in the Terms of Use on your website/blog/app.  If you do not register (or re-register) a DMCA designated agent, you risk losing the safe harbor protections of Section 512 of the DMCA, leaving you potentially vulnerable to certain types of claims of copyright infringement.

 register-1627729_1280NOTE: Even if you previously designated an agent with the Copyright Office prior to December 1, 2016 (via a paper form), you will need to submit a new designation electronically using the online registration system by December 31, 2017, or your prior designation will expire and become invalid.

In order to register, you will need to create an account.  You will need to include a primary contact (with the option to include a secondary contact) when you register, and then an email will be sent to the primary contact with instructions on how to active the account.  Once the account is activated, you will be able to complete the DMCA designed agent registration process.

You will need to register the following information:

  • Full Legal Name of Service Provider (legal entity name) and related contact information
  • Alternative Name(s) of Service Provider (including all names under which the service provider is doing business, such as domain name(s), blog or mobile app name(s), assumed/trade name(s), etc.)
    • NOTE: Separate legal entities are not considered alternate names. Related or affiliated service providers that are separate legal entities (e.g., corporate parents and subsidiaries) are considered separate service providers, and each must have its own separate designation.
  • Name of Agent Designated to Receive Notification of Claimed Infringement (which can be the name of an individual or a specific position or title [e.g., Copyright Manager, VP Legal Affairs, or General Counsel] or a specific department [e.g., Copyright Compliance Department] or third-party entity [e.g., ACME Takedown Service] rather than an individually named person as the agent…which may be preferable to avoid having to update the form if the named individual should ever leave the company) and related contact information
  • Pay the Fee (the current registration fee to designate an agent, or amend or resubmit a designation is $6.00 per service provider, with no additional fee for any alternate names)

In addition to registering a designated agent, you will also need to post copyright infringement notice provisions on your site and comply with the DMCA takedown and notice procedures. Click on the following links for more information about the DMCA Safe Harbors and what you need to do to benefit from them, as well as DMCA Designated Agent FAQs.

Renewal Requirements. In an attempt to ensure that the DMCA Agent Directory contains accurate and up-to-date information, your agent designation will expire and become invalid three years after it is registered (or last amended) with the U.S. Copyright Office, unless you renew it prior to the expiration for another three-year period. The online system will send renewal reminders to the primary and secondary contacts, service provider, and designated agent listed in your account 90 days, 60 days, 30 days, and 7 days prior to your renewal deadline.