Intellectual Property Basics for Business Owners
David recently gave a presentation to Chicago business owners on the basics of intellectual property, at ServCorpâ€™s Chicago Business Shorts meeting.Â 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.Â 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 theÂ invention have been conferred to the patentâ€™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.Â 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.Â Trademarks: Generally, a trademark is any word, name, symbol, figure,Â 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.Â Exclusive Rights of Copyright Holders
- Reproduction of Copyrighted Work(s)
- Preparation of Derivative Works
- Â 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
- Â Licensing Power
- Acknowledgment for Intellectual Contributions
- Right to Bring Suit for Infringement
Part III Advantages and Rights of Trademark Use
A.Â General Common Law rights for any trademark:
- General rights that arise simply through use of trademark in connection with oneâ€™s goods or services are commonly referred to as â€œcommon law rightsâ€
- 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 â€œTMâ€ or â€œSMâ€ symbol to designate as a trademark
B.Â 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 Attorneyâ€™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
- Â Listing in the United States Patent and Trademark Officeâ€™s Online Database
- Use of the Â® 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
- 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 â€œtokenâ€ use in effort to preserve rights
- Â 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.
- Â Finally, Register the Trademark with the USPTO if the rights and benefits associated therewith are desired
- Continue to use mark in commerce as designated by the registration
- Within one-year of the registrationâ€™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 brandâ€™s trademark is important refer to our previously published article onÂ â€œProtecting your Trademark, Protecting your Brandâ€.Â If you have any questions about intellectual property and your business, please contact our office at email@example.com.