THE BASICS - UNDERSTANDING INTELLECTUAL PROPERTY ("IP")
Intellectual Property ("IP") is a creation of the mind or the product of an abstraction susceptible of legal protection. IP laws allow creators, or owners, of patents, trademarks or copyrighted works to benefit from their own work or investment in a creation.
IP includes trademarks, copyrights, patents, industrial designs, indications of origin and trade secrets. Other disciplines may overlap depending on the nature of the IP and the transaction. IP is eminently intangible and are fundamental drivers of success for fastest-growing clients, whether they are individuals, start-ups or established businesses and, in all likelihood, one of their most precious assets. Just like real property and personal property, IP can be transferred, licensed, liened and used as collateral for financial transactions.
What is a TRADEMARK?
A trademark is composed of a word, phrase, symbol, and/or design that identifies and distinguishes the source of the goods of one party from those of competitors. A service mark is a word, phrase, symbol, and/or design that identifies and distinguishes the source of a service. The term “trademark” is often used to refer indistinctively to both trademarks and service marks. Under international treaties, goods and services are classified in “classes,” which allows an applicant to register a trademark and limit the scope of protection. Famous marks and well-known marks, instead, have differential treatment pursuant to treaties. Each country has implemented individual rules and criteria for these marks.
The United States and a few other countries are common law jurisdictions, meaning that rights are acquired upon use, not upon filing an application as in the vast majority of countries where marks can be registered without being used. A federal registration, however, will grant broader protection to a mark owner who eventually will be able to seek more money damages and remedies as opposed to a mark owner without federal registration. Once a US mark registers in the United States for 10 years, it requires maintenance between the 5th. and 6th. years after registered, and then every 10 years after the first renewal.
There are five generally recognized types of trademarks: generic, descriptive, suggestive, arbitrary and fanciful.
Generic: This mark is usually a common description of the goods that the mark identifies or a mark that refers to, or is understood to be referring to, the genus of which the particular product is a species. Simply put, these marks are not protectable.
Descriptive: This mark describes the qualities or features with which a product is used. These are weak marks and are hard to enforce. In some cases, they might be protected if they acquire secondary meaning through use for a period of years.
Descriptive: This mark describes the qualities or features with which a product is used. These are weak marks and are hard.
Suggestive: This mark evokes, infers, implies, or suggests features or characteristics of a product or service, requiring the target audience to use intuition, imagination, and perception to understand the nature, characteristics, and features of those goods or services without directly describing them.
Arbitrary: This type of mark is composed of existing words that are used to identify goods or services that have no relationship with the term used in connection with them.
Fanciful: This mark involves made-up words that do not have any meaning in any language. Their only purpose is functioning as a mark.
Marks that are arbitrary, fanciful, or suggestive are inherently distinctive and usually are granted registration without major issues. By contrast, descriptive marks can be registered and protected if they have acquired distinctiveness (or secondary meaning) through use over a period of years. Generic marks, instead, are never entitled to trademark registration or protection. A trademark’s strength is rooted on its level of distinctiveness and its capacity to indicate its source of origin.
Once a trademark application is filed, it is assigned to an examining attorney to conduct a ‘registrability’ test. For example, marks that are scandalous, derogatory, immoral, etc., are not registrable as a matter of public policy. Marks that create likelihood of confusion with other pre-existing trademark owners' marks are not registrable as a way to protect not only those mark owners, but also the public.
At Brandia, we help individuals, start-ups and established businesses search, clear, select, register and protect their brands and trademarks in the United States and internationally with the support of a network of IP experts. A US licensed Attorney will work with you to prepare and file your trademark application until completion and to implement strategies that reflect your business' presence, goals and expansion plans.
Copyrights are original works that range from literary, dramatic, sculptural, musical, cartographic, and choreographic works to pantomimic, architectural, graphic, pictorial, and audiovisual creations. Under US law, works of authorship need to be original and susceptible to being fixed in a tangible means of expression. Copyright is more than the mere right to control whether a work of authorship is copied. It is a bundle of rights that empower copyright owners to allow or prohibit reproduction in various forms, including public performances, public displays, broadcasting, and adaptation of their work. This bundle of rights also gives copyright owners the right to enforce their works of authorship against infringement from others.
While copyright protects original works of authorship, a patent protects inventions or discoveries. Ideas and discoveries are not protected by the copyright law but the way in which they are expressed could be. A trademark protects words, phrases, symbols, or designs that identify the source of the goods or services of one party while distinguishing them from those of other parties and competitors.
An original work of authorship exists from the moment it is created. It has copyright protection from moment it is created and fixed in a tangible form that it is perceptible either directly or through a machine or device. However, it has to be registered to claim copyright infringement.
A patent is an exclusive right granted for an invention, which is a product or a process that provides, in general, a new way of doing something, or offers a new technical solution to a problem. To obtain patent protection, technical information must be disclosed to the public about the invention.
A patent is the exclusive right of limited duration over an invention that is disclosed to the public. Ownership, protection and enforcement are granted in exchange of disclosure of the invention. In general, patents provide either an innovative way of doing something, or offer a new technical solution to a problem.
Patent owners can prevent or stop others from commercially exploiting, making, using, distributing, importing or selling the invention.
An industrial design constitutes the ornamental or aesthetic aspect of an article. A design may consist of three-dimensional features, such as the shape or surface of an article, or of two-dimensional features, such as patterns, lines or color.
Industrial designs are applied to a wide variety of products of industry and handicraft items: from packages and containers to furnishing and household goods, from lighting equipment to jewelry, and from electronic devices and textiles. Industrial designs may also be relevant to graphic symbols, graphical user interfaces and logos.
Design plays a crucial role in the success of a company's line of products. According to WIPO (World Intellectual Property Organization - the leading global IP regulatory body), 25 of the world's best known brands generate over a billion dollars in annual sales, each.
To be protected, an industrial design must be new or original, or that does not significantly differ from known designs or combinations of known design features. Designs that are essentially originated as a result of technical or functional considerations do not need to be protected. Inventions that are new, original, and ornamental design for an article of manufacture may obtain protection.
GEOGRAPHICAL INDICATIONS OF ORIGIN
Geographical indications and appellations of origin are signs used on goods that have a specific geographical origin and possess qualities, a reputation or characteristics that are essentially attributable to that place of origin. Most commonly, a geographical indication includes the name of the place of origin of the goods. Since the qualities depend on the geographical place of production, there is a clear link between the product and its original place of production.
Geographical indications are typically used for agricultural products, foodstuffs, wine and spirit drinks, handicrafts, and industrial products.
Geographical indications can be viewed as a subset of trademarks. Geographical indications serve the same functions as trademarks, because like trademarks, they are: 1) identifiers of source of goods or services; 2) guarantees of quality; and 3) valuable business interests.
In the United States, geographical indications also are protected through common law trademark law without being registered by the USPTO.
Trade secret can consist of any confidential information or knowledge that gives a competitive advantage to a business or individual over other competitors, such as client lists, providers lists, prices, formulas, technological advances, research and development programs, manufacturing processes, etc., with a commercial value to its owner or competitors. As opposed to trademarks, copyright, patents or patent designs where a good amount of information is disclosed to the public, with trade secrets the subject matter protected may or may not necessarily be protected under those four types of intellectual property.
The inherent lack of disclosure of trade secrets requires the implementation and strict enforcement of a corporate policy aimed to preserve, retain and protect such competitive advantage from access by unauthorized persons, limit access only to a few and preserve confidentiality after authorized persons leave the company. If breached, it would be enforced under unfair competition rules, tort law and under contract law, depending on each case, but not under intellectual property rules.