February, 2012

David recently gave a presentation to Chicago business owners on the basics of intellectual property, at ServCorp’s Chicago Business Shorts meeting.  We have highlighted the important points of the presentation that every business owner should know about intellectual property.

Part I: Difference Between Patents, Copyrights, and Trademarks

A.  Patents: A patent is an official document or certificate issued by the federal government that describes a new invention and signifies that the exclusive rights to the  invention have been conferred to the patent’s owner. Gives the patent holder the sole right to reproduce for a limited time in order to make a profit on the invention.

B.  Copyrights: A copyright is the statutory right of an author to control the reproduction, adaptation, distribution, performance, and display of any original works of authorship.

C.  Trademarks: Generally, a trademark is any word, name, symbol, figure,  letter, or device used by a manufacturer, merchant or businessperson to identify and distinguish its products or services from those of others.

Part II: Advantages and Rights of Copyright Holders

A.  Exclusive Rights of Copyright Holders

• Reproduction of Copyrighted Work(s)
• Preparation of Derivative Works
•  Distribution of Copies of Copyrighted Work to the Public, by Sale, Transfer, Rental, Lease, or Lending
• Public Performance of Copyrighted Work
• Public Display of Copyrighted Work

B.  Advantages/Benefits

• Royalties
•  Licensing Power
• Acknowledgment for Intellectual Contributions
• Right to Bring Suit for Infringement

Part III Advantages and Rights of Trademark Use

A.  General Common Law rights for any trademark:

• General rights that arise simply through use of trademark in connection with one’s goods or services are commonly referred to as “common law rights”
• No Registration costs, but fewer and limited rights
• Examples of Common Law Rights: Protect mark owner against infringement within same geographical area/market, even by a federally registered trademark; Right to use the “TM” or “SM” symbol to designate as a trademark

B.  Advantages and Rights of Owning Federally Registered Trademarks

• Public Notice of Claim of Mark Ownership
• Legal Presumption of Ownership of Mark and Exclusive Right to Use Mark Nationwide, and Priority as of Application Date
• Ability to Bring Action Concerning the Mark in Federal Court, Including Opportunity to Recover Damages and Attorney’s Fees
• Use of U.S.Registration as Basis for International Registration
• Ability to Record with U.S. Customs and Border Protection Service to prevent importation of infringing foreign goods
•   Listing in the United States Patent and Trademark Office’s Online Database
• Use of the ® symbol.
• Right to have mark become incontestable after continuous use of registered mark for five consecutive years

Part IV: How to Maintain and Protect Trademark Rights

A.  Creation

• First, create a strong trademark (i.e. distinctive and unique) and determine its availability through a search

• If necessary, create a new and available mark

• Next, begin continuous use of mark in connection with goods or services as soon as practicable
• Alternatively, create the trademark and file an Intent-t0-Use Application, while still starting use ASAP
• Use of trademark must be legitimate and real in commerce, not just “token” use in effort to preserve rights
•  Use mark(s) on: product itself; tags or labels; containers, packaging, or displays; documents closely associated with the goods or services, including instruction manuals and advertising materials.

•  Finally, Register the Trademark with the USPTO if the rights and benefits associated therewith are desired

B.  Maintenance

• Continue to use mark in commerce as designated by the registration
• Within one-year of the registration’s sixth anniversary, file an affidavit attesting to continued use of mark.
• Must show that the mark is still in use as specified or that any periods of nonuse are due to special circumstances

• File declaration for incontestability status at any time after the five-year anniversary of the registration date
• Renew registration of mark every ten years by filing a declaration of use and notice of renewal.

For a refresher as to why your brand’s trademark is important refer to our previously published article on  “Protecting your Trademark, Protecting your Brand”.  If you have any questions about intellectual property and your business, please contact our office at firm@lynamlaw.com.

You are cordially invited to attend our presentation on Intellectual Property Basics at ServCorp, a Sydney based, world-wide provider of technology and office solutions.      

ServCorp’s Chicago Business Shorts provides an informational seminar and a local networking opportunity for like-minded business professionals. Guest speakers covering a range of business domains are invited to share their business knowledge, advice, and helpful commercial information.  Please join as we present:

Copyright and Trademark Protection, Intellectual Property Basics for Business Owners

by David J. Lynam of Lynam & Associates

Join us on Wednesday, February 22nd at 8:30am for breakfast with the presentation starting at 9:00am and concluding at 10:00am, at 155 North Wacker Drive, Suite 4250, Chicago, IL 60606.

If you would like to join, please contact Lynam & Associates at firm@lynamlaw.com to RSVP.

You may need to soon find space for another poster in your employee break room, bulletin board or internal website.  By April 30^th of this year, the National Labor Relations Board is set to require almost all employers to have a new poster displayed enumerating organizing rights for its employees.  We first reported on this requirement in a post  when announced in December 2010.  The measure has seen opposition since that time both with the government and from challenges in court.  Nearly every employer of a given size, which is dependent on the industry, is covered.

The current litigation is over the NLRB’s authority to enact such a requirement.  The litigation inWashingtonis a consolidation of several suits filed by business organizations such as the National Association of Manufacturers, the National Federation of Independent Business (“NFIB”) and the U.S. Chamber of Commerce.   The NFIB has since added additional complaints to its suit regarding President Obama’s controversial “recess appointments” to the NLRB in early January.  This litigation is politically fueled, and while many commentators believe the NLRB will prevail in enforcing this posting requirement because their grant of power is so broad, the case has passed all early stages of litigation and has reached oral arguments, indicating these business organizations may stand a chance.

The NLRB penalties for not complying with the posting requirements are harsh.  If a company were not to post this, the standard six month statute of limitations for any employee with an NLRA complaint would not apply at all, giving employees, former employees and union organizers an unlimited time to proceed. And, if the lack of notice is found to be willful, there could be further damages as the NLRB could use that as evidence of the company’s unlawful motive of an unfair labor practice.

The poster may be downloaded at http://www.nlrb.gov/poster.  To protect yourself, go to the above website, print the poster, and be prepared to place this alongside all other employee notices on April 30^th.  If the litigation prevails, these requirements will likely be either changed or removed.

If you have any employment law issues, do not hesitate to contact Lynam & Associates at firm@lynamlaw.com.