As you are thinking about your personal and business assets this tax season, we wanted to remind you of or introduce you to some assets that many businesses overlook throughout the year – intellectual property. Following is an overview of the three (3) primary types of intellectual property rights in the United States – copyrights, trademarks, and patents. For more information about protecting, licensing, selling, or enforcing your intellectual properties, please contact our office.
COPYRIGHTS
Purpose: To promote the progress of useful arts by granting creators limited but exclusive rights to the resulting works.
What it protects: Original works of authorship, such as drawings, photographs, novels, articles, songs, and recordings, which are fixed in a tangible form. Ideas, thoughts and titles are not protected.
Rights: Exclusive right to reproduce, distribute, create derivatives of, display, perform, and transmit the work.
Registration Required: No, but there are certain benefits: attorneys’ fees and statutory damages for an infringement that occurs after registration. Also, registration is a prerequisite for an infringement action.
Registration Process: Complete an application, provide samples of the work, and pay a nominal filing fee.
Duration: Rights to works created after January 1, 1978 exist for the life of the author plus seventy years. If the work was created by an employee, the company will own the copyright for ninety-five years from first publication of the work.
Scope of Rights: National Notice: No longer required but recommended to inform the public of your rights. The format is usually: © [the year of creation] [owner name].
TRADEMARKS
Purpose: To identify to consumers the source of goods and/or services and assure consumers of the quality of those goods and/or services.
What it protects: Distinctive words, phrases, symbols, designs or devices, or any combination of such (“Mark”), that identify and distinguish the source of the goods and/or services used in commerce. Trademarks can also include sounds, smells, shapes and sometimes even the “look and feel” of a good or service.
Rights: Exclusive right to use the Mark in connection with goods and/or services to designate the source of the same.
Registration Required: No. However, a registration with the United States Patent and Trademark Office (“USPTO”) provides many benefits such as the legal presumption of ownership of the Mark nationwide for the applicable goods and/or services; access to Federal courts for infringement actions; the ability to request the U.S. Customs Service to prevent importation of infringing foreign goods; the ability to use the U.S. registration as a basis to obtain registration of the Mark in foreign countries; and certain additional damages in infringement suits. Registration also helps with enforcement of your trademark rights in domain disputes.
Registration Process: A search prior to adoption of a Mark or filing of a trademark application is advisable. A search identifies prior rights holders who may contribute to business interruption or unreasonableexpense after your adoption of the Mark. An application can be prepared and filed with the USPTO based on either your actual use of the Mark or your “intent to use” the Mark in commerce. The cost of filing an application depends on how many Marks you are seeking to register and for how many types of goods and/or services.
The USPTO will examine the application and, after any issues are resolved, will publish the application for 3rd-party objection. Generally, the registration process takes one to three years. Duration: United States registrations will last for ten years, after which they may be renewed for additional ten year terms, provided that the Mark is in use for the registered goods and/or services and certain formalities to prove such use are met.
Scope of Rights: Depends. Trademark rights are highly territorial and specific to the goods and/or services. Registered Marks have a presumption of nationwide exclusivity as of the filing date of the application with the USPTO.
Notice: Not required in the United States but recommended to inform the public of your rights. Use the “TM” designation with goods and the “SM” designation with services. You may use the federal registration symbol “®” only after the USPTO issues a Certificate of Registration, and only with the goods and services listed in the certificate. Use of the ® in any other manner is a form of false advertising.
PATENTS
Purpose: To promote the progress of useful science by granting inventors limited but exclusive rights to their discoveries and inventions.
What it protects: (1) a new and useful process, machine, article of manufacture, or composition of matter, or any new and useful improvement thereof (utility patent); (2) a new, original, and ornamental design of a manufactured article (design patent); or (3) an asexually reproduced distinct and new variety of plant (plant patent).
Rights: Exclusive right to exclude others from making, using, selling, offering to sell and importing the protected item.
Registration Required: Yes. Generally an application must be filed within one (1) year from the first use or publication of the applicable invention.
Registration Process: It is advisable to perform a search before filing a patent application with the USPTO. A search evaluates whether there are prior existing patents that will bar the issuance of the patent.
An application and illustrations of the invention can be prepared and filed with the USPTO.
The USPTO will examine the application and, after any issues are resolved, will publish the application for 3rd-party objection. The patent registration process can take between fourteen months and four years, depending on the type of technology involved.
Duration: Utility and Plant patents expire twenty years from the filing date of the application, provided maintenance fees are timely paid. Design patents expire fourteen years from the date the patent is issued by the USPTO. Patents may not be renewed.
Scope of Rights: National
Notice: Required to recover damages in an infringement action. The format is usually the word “Patent” or the abbreviation “Pat.” followed by the patent number. Properly marking your product with the correct patent number is very important because mislabeled products could expose the patent owner to monetary damages.