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Intellectual Property Overview 

Intellectual property is any innovation, commercial or artistic, or any unique name, symbol, logo or design used commercially.  Often known as IP, intellectual property allows people to own their creativity and innovation in the same way that they can own physical property.

Intellectual Property FAQs 

(1)  I am being sued or have received a cease and desist letter. What do I do?

It is important to discuss matters with experienced IP counsel. An experienced IP attorney can find out exactly what IP rights the other side truly holds and can come with up with strategies for your specific situation. In addition, you will want to speak with your insurance carrier to see the range of coverage, which will affect the strategies you will likely pursue. 

 

Trademarks Overview

A registration has a 10-year term and can be renewed for additional 10-year terms if you prove the mark is still in use for all the goods and/or services stated.  Additionally, between the fifth and sixth anniversary of a mark’s registration, you must file evidence with the PTO showing that you are still using your mark.  If you do not, your registration will be canceled.

Trademarks that have been “federally registered” with the USPTO may use the R-in-a-circle (®) symbol. Trademarks and service marks that have been filed and are awaiting registration from the USPTO may use the TM (TM) and SM (SM) symbols respectively.

Trademarks FAQs

        (1)  Do I have to begin using a trademark before I can apply for federal registration?

No. An applicant may apply for federal registration in three principal ways: (1) an applicant who has already commenced using a mark in commerce may file based on that use (a "use" application); (2) an applicant who has not yet used the mark may apply based on a bona fide intention to use the mark in commerce (an "intent-to-use" application).  The applicant will have to lawfully use the mark in commerce and submit an allegation of use to the Trademark Office before the Trademark Office will register the mark; and (3) under certain international agreements, an applicant from outside the United States may file in the United States based on an application or registration in another country.

 

(2) I went online to buy the domain for my name and it was already taken. How can somebody else own my personal name? Do I have any recourse if my name is well known?

Someone else can legally own the domain name for your personal name or your company's name. You may have recourse if your name is well known, especially in California which has expanded rights for likenesses and names of well-known persons. You also may be able to get the domain name transferred to you by negotiating with the domain owner through your attorney.

 

(3) What are trademark licensing agreements?

Trademark licensing agreements are one of the most common IP transactions in the fashion industry. Often a licensor (owner of a trademark) will contract with a licensee (another company) to manufacture and market products using the licensor’s trademark. This benefits a licensor by increasing profits and expanding its brand into new markets, while giving the licensee a pre-existing customer base.

There are many important terms to a licensing agreement, including products covered, exclusivity, specific trademarks, duration and geographic region, compensation, marketing and sales requirements, and quality control. It is important to speak with an experienced IP attorney to find out how to protect your assets.

 

(4) My company never formally trademarked our name, but we’ve been using it for 50 years and everybody knows us by it. Now somebody else trademarked it and is using our reputation to build his business. Do we have any recourse or are we out of luck?

You have acquired rights in the geographic area that your trademark has been used in. For instance, if you've operated David’s Designs in the Los Angeles area, you may be able to prevent someone else from opening a David’s Designs in Hollywood, but not a David’s Designs in New York City. It would be a good idea to file a federal trademark showing the date of your first use. One possibility may be an agreement between the two parties where you cannot expand your business outside of the geographic area that you are in and they agree not to infringe within that area.

 

Copyright FAQs

(1)  Is my copyright good in other countries?

The United States has copyright relations with most countries throughout the world, and as a result of these agreements, each country honors each other's citizens' copyrights. However, the United States does not have such copyright relationships with every country.  For a listing of countries and the nature of their copyright relations with the United States please either contact us or view the U.S. Copyright Office for Circular 38aInternational Copyright Relations of the United States.


(2)  He stole my idea! Can I sue him?

Ideas are not copyrightable. Only the tangible expression of ideas can be copyrighted. For example, the concept of a “unicorn” is not copyrightable, but a unicorn print design for t-shirts is copyrightable.


(3)  Who owns the copyright to something I made at work, my company or me?

Although the general rule is that the person who creates the work is its author, there is an exception to that principle; the exception is a “work made for hire”.  Work made for hire is a work prepared by an employee within the scope of his or her employment; or a work specially ordered or commissioned (as opposed to being paid for an already existing piece of work) from an independent contractor. When a work qualifies as a work made for hire, the employer, or commissioning party, is considered to be the author.


(4)  If I live outside the United States, can I register my works with the U.S. Copyright Office?

Any work that is protected by U.S. copyright law can be registered. This includes many works of foreign origin. All works that are unpublished, regardless of the nationality of the author, are protected in the United States. Works that are first published in the United States or in a country with which we have a copyright treaty (see Circular 38a for the status of specific countries), or that are created by a citizen or legal resident of a country with which we have a copyright treaty, are also protected and may therefore be registered with the U.S. Copyright Office. 


(5)  Why should I register my copyright?

There are three (3) key reasons why you should get a copyright registration:

    1. to establish a public record;
    2. to be able to file an infringement lawsuit in federal court; and
    3. to simplify enforcing your copyright and obtaining higher damages.

 

Patents FAQs 

(1)  What is a patent?

Simply put, a patent is a right to exclude others from doing what you invented. 

There are, however, a number different types of patents.

There are U.S. patents, and there are foreign patents.  U.S. patents are rights granted by the U.S. government and exclude only actions within the United States.  Likewise, patents issued by a foreign government may be enforced only in that foreign country.

Also, in the United States, there are utility patents, and there are design patents.  When most people think of a patent, typical it is a utility patent that first comes to mind.  Utility patents protect the idea or function of an invention.  In contrast, design patents protect the overall appearance of an invention. Properly written, a utility patent application attempts to describe and claim for the inventor his or her invention as broadly as possible.  Similarly, properly written, a design patent attempts to claim the invented design as broadly as possible. What is the difference between a utility patent and a design patent?

A utility patent covers the functional aspects of an invention. A utility patent expires 20 years from the filing date. In 2006, it took approximately 30 months from filing until an examiner came to a decision. The length of time varies depending on the field and complexity of the patent. Examples of things that can be covered by a utility patent are a newly created fabric or a new clasp for a purse.

A design patent covers the ornamental aspects of an invention. They generally issue 8-20 months after filing and are protected for 14 years from the filing date. Design patents often cover long-term fashion items such as shoes, jewelry, and accessories.


(2)  What is the difference between a utility patent and a design patent?

A utility patent protects the idea or function of an invention.  In contrast, a design patent protects the overall ornamental appearance of an innovative design of a product.  The utility patent is, generally speaking, what most people think of as a patent, and a design patent instead affords its owner rights that can often fill an important gap in and around his or her trade dress rights and copyrights in a commercial product. 

 

(3)  Should I apply for a design patent?

Design patents are growing in prominence and effect across many fields of commercial goods.  A design patent, wisely drafted, can be a very effective way to protect an inventor’s innovation – not just the ornamental design itself.  That is, carefully drafted, a design patent can be very difficult for a competitor to design around, possibly leaving the competitor with no real way to put a competing product on the market.


(4)  What is a design patent anyway?

A design patent is primarily a series of drawings that disclose and claim a new, ornamental design of a portion of a product.  Here is an example of a series of drawings for a design patent that I prosecuted for one or my sports and entertainment industry clients. 

You will notice the these drawings have some solid lines and some broken lines.  This is a way you can claim only a part of your design and thereby be very specific as to which combination of design features you are protecting as your own innovation.  In this case, it does not matter whether a competitor uses a different guitar neck, etc.  If the guitar body is substantially the same such that an ordinary purchaser could puchase a guitar having the competitior's guitar body design thinking that it was my client's design, the competitor's guitar body likely infringes this design patent.

 

Trade Secret Overview

In broad terms, a trade secret is information which gives a business an advantage over its competitors.  Trade secrets include such things as customer identities and preferences, vendors, marketing strategies, manufacturing processes, formulas and other competitively valuable information.  An example trade secret would be a hair salon’s secret process in applying hair dye to make the color stay longer.

Trade secrets are not registered and can last as long as the invention is kept a secret.

Trade Secret FAQs

(1)  Can multiple people have trade secret rights to the same information?

Yes, two (or more) individuals or entities can claim rights to the same trade secret on the same technology if both independently developed that technology and both keep it a secret, as long as the technology is not "generally known."


(2)  What is the difference between trade secret protection and patent protection?

Both trade secrets and patents are forms of IP that can be used to protect innovation.  Although the overall subject matter that can be protected by trade secrets is broader than that which can be protected by patents. Trade secret protection is available for both technical information and information that does not relate to technical innovations. Non-technical information for which trade secret protection can exist includes: business and marketing plans and customer lists. Patent protection is generally available for technical innovations, including a new and useful process, machine, manufacture or composition of matter. Software and software-implemented business methods have the potential of being protected by both patents and trade secrets.

Another significant difference is that patent protection requires the protected information become available to the public (through the publication of the patent application and/or patent), However, because patents and patent applications are made public, a third party is barred from duplicating and using the invention until the term of the patent is expired.   Additionally, unlike trade secrets, patents can be enforced against someone who independently develops or "reverse engineers" an invention.

A trade secret has its own advantages. One significant advantage is that the term of protection for a trade secret has the potential to last forever - as long as the invention is kept a secret - whereas patents are only protected for a limited number of years (20 years from filing). Also, trade secrets can be less expensive to protect and to enforce.

In sum, the choice between patent protection and trade secret protection requires careful consideration of several factors. In particular, it is important to consider the nature of the subject matter being protected. Questions relevant to this decision include: Can it be independently developed? Can it be reverse engineered? Can it be maintained as a secret?  How long will the subject matter have market value? Does the market value support investment in patent protection/enforcement?


(3)  How long does trade secret protection last?

Contrary to other types of IP, trade secrets are protected by non-disclosure; the information must be kept confidential.  Thus, an advantage of trade secrets is that they can be protected for an unlimited amount of time.  However, trade secrets also have their disadvantages over other forms of IP protection. Unlike patents and copyrights, which grant a monopoly for a fixed period of time, there is no guaranteed monopoly for trade secrets.

 

(4)  How do I protect my trade secrets?

No special registration of government filing is necessary to create trade secrets.  The critical requirement for trade secret protection lies in maintaining the secret.  Under the Uniform Trade Secret Act (UTSA), information must meet the following three basic criteria to qualify as a trade secret:  1.) the information must not be generally known or readily ascertainable through proper means; 2.) the information must have “independent economical value due to its secrecy”; and 3.) the trade secret holder must use “reasonable measures under the circumstances” to protect the secrecy of the information.

“Reasonable measures” may include:

  • Have employees, contractors and third parties sign non-disclosure, confidentiality and/or non-compete agreements.
  • Stamp secret documents “confidential” or “trade secret”.
  • Enforce physical security. Put up "No Trespassing" signs and put locks on doors and file cabinets.
  • Use employee and visitor identification badges to control access to your business.
  • Establish rules requiring people to sign sensitive documents in and out.
  • Set up passwords. Use them to access computers, copiers, fax machines and other machines that could be used to copy or transmit secrets.
  • When employees leave, take measures to ensure that secrets don't leave with them.
  • Collect sensitive materials from the offices of terminated employees before allowing them to return to their desks. And before they go, remind them of the nondisclosure documents they signed and the stiff financial penalties if they are breached.

As you may find it necessary to take additional steps in specific areas, or with respect to specific kinds of information to limit access to a “need to know” basis, you may wish to consult a lawyer in your area for guidance into the types of measures and agreements outlined above.


(5)  Can I sell or license my trade secrets?

Yes. As long as all parties maintain the secrecy of the invention, trade secrets can be sold or licensed. You may wish to consult an IP lawyer for guidance in writing the agreements in licensing or selling any trade secrets.