Intellectual Property

Intellectual property (IP) is field of law designed to encourage innovation, development, investment in creations of the human mind. There are a number of types of legally protectable intellectual property including trademarks, service marks, trade names, domain names, confidential information, trade secrets, provisional patents, utility patents, design patents, and copyrights.   Basic descriptions, protection procedures, distinguishing feature,and relative advantages are set out in the comparison chart. This chart is not intended as legal advice and you should seek advice of counsel to apply these tools to your particular situation.

Intellectual property counseling can effectively include a survey and discussion of the client’s portfolio of existing IP, business operations where IP may be involved, IP protection procedures, IP creation development and protections strategies to enhance the value of IP, and the goals and objectives for the business.  Areas of IP protection that are important to the client may be identified and considered for for formulating a comprehensive IP business strategy.

patents

Non-provisional patents (sometimes referred to a utility patents) protect new, novel, non-obviousness, and adequately disclosed useful machines, compositions of matter, articles of manufacture, and improvements.  Provisional patent applications may be filed to preserve rights to pursue a non-provisional patent up to one year after the original filing. Basic requirements for obtaining a non-provisional patent in the U.S. include patentable subject matter, novelty, non-obviousness, and adequate disclosure sufficient for one of ordinary skill in the art to make and use the invention and also a disclosure of the best known mode of practicing the invention.  Legal interpretation and application of these requirements to a particular invention is complex and consultation with a Registered U.S. Patent Attorney or a Registered U.S. Patent Agent is recommended.

Trademarks and service mark

Trademarks and service marks are words, symbols, and devices used to distinguish goods of the authorized trademark user from similar goods. Service marks are generally the same except for differences resulting from use of the mark to distinguish the services of the owner from service of others.  Both are typically referred to as a “trademark.” A trademark application is filed and prosecuted in the Trademark Office.

A registered trademark must be able to distinguish the goods/services of the applicant from the goods and services of others, it must not cause likelihood of confusion with any prior registered, applied for, or commercially used  trademark. Successful, applications are typically filed after an availability search shows that the proposed trademark used on the proposed goods or services will not cause a likelihood of confusion with prior existing trademarks of other. Trademark rights are referred to as “exclusive “ rights because they allow the owner to exclude others from using confusingly similar marks for the same or similar services.
Trademark registration rights have territorial limitations. Federal trademark registration, provides rights throughout the U.S., state trademark registrations extend rights within the state, and other country registrations grants rights in the country of registration.   

Trade Secrets and Know-how

Trade secret rights may protect valuable business information, customer lists, supplier lists,  business plans, methods of doing business, formulas, technology, undisclosed inventions, etc.  that are kept secret. Know-how that is used in a business and kept secret from others might qualify for trade secret protections. Each state may have specific variations of the definition of a trade secret or the requirements for protectability. Typically trade secret information is used in a trade or business and provides a business advantage over others who do not use it. The owner must keep the information secret or at least must use reasonable efforts to keep the information secret.

Trade Names, Domain Names, Branding

Trade names are the name of a business, either the name of a formally formed entity ( e.g., a corporation, Limited Liability company, partnership) or a business name or d/b/a under which an individual or other entity does business. When a trade name only identifies the entity it is not technically a trademark.  In the U.S., each state will have a process for forming entities and each entity needs to adopt a trade name that is unique among other entities formed in the state. This does not establish any trademark rights. However, when a trade name is also used to identify a product or a service, it may be considered a trademark for the product or service.

Domain names are Internet addresses that are licensed for use  to direct internet access to the the Licensee’s unique internet address.  The registration of a domain name, by itself, does not establish trademark rights. Use of the domain name in commerce on or in connection with goods or services, or registration of the domain name as a trademark, can establish trademark rights in the domain name.

Branding is the process of developing name recognition and goodwill among the public in connection with a particular entity.  A trademark may effectively capture the goodwill associated with the use of the trademark among the purchasing public for covered goods and services. Trademark protection may be an important integral part of a successful branding program.   

Copyrights

Copyrights protect originally created works of authorship such as writings, text, music, recordings, video, artistic, graphic, sculptural, architectural, and computer programs. Copyrights protect expression of ideas, but does not protect the ideas themselves. A copyright exist when a qualifying work of authorship is originally created; however, it can only be enforce in the U.S. based upon seeking and obtaining a copyright registration in the U.S. Copyright Office. Basic requirements for obtaining a Copyright Registration includes an original (not copied) work of authorship, a minimum level of creativity, and the work must be captured in a fixed medium of expression