Upload
nextfab
View
215
Download
3
Embed Size (px)
DESCRIPTION
Follow up slides from Penn Law’s Entrepreneurship Legal Clinic at NextFab event. http://nextfab.ticketleap.com/penn-law-entrepreneurial-legal-clinic-at-nextfab/details
Citation preview
intellectual property
BRIANNE POLITO JOSHUA WRIGHT PETER WU
TrademarksTrade
Secrets
Trade Dress
Patents
Copyright
�1
OVERVIEW
Patent Trade Secret Copyright Trademark
!Protect new,
useful, nonobvious inventions
!Protects
economically valuable secret
info
!Protects rights in
original expressive works
!Protects the
source of goods and services in
commerce
!Protection lasts 20 years (from
filing date)
!Protection lasts
as long as it remains secret
!Lasts for life of
author + 70 years
!Lasts for the life
of the mark (until it is
genericized or abandoned)
�2
TrademarksTrade
Secrets
�3
• What is a trade secret? • How to keep it secret • Pros/Cons of trade secret
protection
outline
TrademarksA trade secret is information that is • economically valuable to your
business, • isn’t known to people outside
your business, • and is subject to reasonable
protection from disclosure. !Protection lasts as long as it remains a secret.
Trade Secrets
�4
TRADE SECRETS
PA Uniform Trade Secrets ActTo be considered a trade secret: !(1) Information must be economically valuable because it is not known
to the public/competitors & it isn't easily ascertainable AND
(2) Reasonable efforts are made by the trade secret owner to maintain secrecy
�6
TRADE SECRETS
how to keep it secretTS owners have a duty to use “reasonable measures” to maintain the secrecy of the information. They should implement policies such as: !• For employees
• Non-disclosure agreements and confidentiality clauses • Non-compete clauses • “Confidential” labels • Limit access to documents w/ trade secret info • Include trade secret policies in employee handbooks • Training • Strict electronic communications & social networking policies
!• For third-parties (vendors, suppliers, independent contractors, etc.)
• Require non-disclosure agreements !!
�7
TRADE SECRETS
pros/consPros: !• Low cost • Doesn’t require disclosure/
registration w/ gov’t • No time limit for protection • Immediately effective !!!
Cons: !• Protection is only effective against
improper acquisition & use or disclosure
• Doesn’t provide exclusivity • Independent discovery • Reverse engineering • Protection is lost if secret is publicly
disclosed
�8
Copyright • What is copyright? • What can you copyright? • What rights do you get? • Registration • Ownership
�9
outline
Copyright
Copyright law protects the expression of an idea, but copyright does not protect the idea itself. !Copyright does not protect useful articles or objects with some useful functionality.
�10
Compilations
COPYRIGHT // CATEGORIES
Since facts are considered "ideas" or "discoveries", they are not copyrightable. However, compilations of facts are treated differently.
�18
what rights do you get?COPYRIGHT
To reproduce the work !
To prepare derivative works !
To distribute copies !
To publicly perform the work, !
To publicly display the work
To digitally transmit
�22
COPYRIGHT
Application form !
Deposit a clear rendition of the material being submitted for copyright
!Pay a nonrefundable filing fee
(as little as $35 for a basic claim in an original work of authorship)
how do you register?
�24
COPYRIGHT
The author is usually the initial owner. !
Exceptions: works for hire
works by employees joint works
collective works
who owns the ©?
�26
COPYRIGHT
© Do you need it?Technically, no. Protection is automatic upon creation.
!But you probably should.
!If you don’t register and provide proper notice,
it may limit your ability to collect damages from infringers. !!
�28
COPYRIGHT
transfers of rightsassignment - analogous to a sale of property !exclusive licenses - only the licensee may exercise the granted rights !nonexclusive licenses - allows licenses to other parties !implied licenses - licenses inferred from a conduct and not an explicit agreement
[must be in writing
�29
COPYRIGHT
common questions
�31
Can you copyright the design of a t-shirt pattern? !
Can you copyright a logo design? !
Do you have to re-register every year? !
Do you have to register to use ©?
Trademarks™ • What are trademarks? • What can you trademark? • Types of protection • Federal registration • What to avoid
�32
outline
Trademarks™ Trademarks are source identifiers.
!They protect the source of goods and services in
commerce.
�33
How ™ is different from other forms of IP
• Trademarks don’t require creation of anything new
• Just have to establish an association between the mark and your product in the minds of consumers
• No built in time limitation: You’re in control.
• Scope may broaden over time - can become famous over time.
TRADEMARKS
�34
TRADEMARKS
FancifulInherently distinctive;
automatically qualifies for protection
ArbitraryInherently distinctive;
automatically qualifies for protection
SuggestiveInherently distinctive;
automatically qualifies for protection
Descriptive Must establish secondary meaning to get protection
Generic Asprin No protection
what type of mark do you have?
�45
TRADEMARKS
Limited to geographic area of use
!!• Protected only in the areas
where there is actual use • Cases have also established
protection in a normal territorial zone of expansion or where the mark’s reputation has been established.
common law protection• Comes from the continuous prior use of a mark in commerce.
�48
TRADEMARKS
20052007
common law priorityConcurrent use situations • Each party gets exclusive use in their exclusive geographic
areas. • Where there’s conflict, it’s resolved in
favor of the earliest user in that area.
• One user could be the senior user in one market and a junior user in another.
�49
downsides of common law protection
• No ability to recover: • lost profits
• statutory damages
• attorneys fees
• triple damages for willful infringement
• No national priority
• No right to use ® to give notice of rights in the mark
TRADEMARKS
�50
• Prima facie evidence of validity
• Nationwide priority as of date of registration
• Constructive notice of the registrant’s ownership of the mark
• Access to federal courts
• Broad array of remedies (if registered on the Principal Register)
• Incontestability after 5 years
TRADEMARKS
advantages of federal ®
�51
• Incontestability immunizes a mark against challenges that a mark is descriptive or lacks secondary meaning
• Incontestability does not shield you from challenges on other bases, such as:
• fraud, abandonment, misrepresentation of source, fair use, prior third party rights (e.g. concurrent use), prior registered mark, functionality, or genericism.
TRADEMARKS
what is incontestability?
�52
• Actual use of the mark in interstate commerce
• Bona fide intent to use (ITU) the mark in interstate commerce (if mark is inherently distinctive)
• ™ owner has 6 months (auto-extendable to 1 year or 3 years with good cause) to use and file a Statement of Use
• A claim of priority based on an earlier filed foreign application to register the mark
• Registration of the mark in a foreign applicants country of origin
• Extension of protection of an international registration under the Madrid system.
TRADEMARKS
bases for filing
�54
TRADEMARKS
1. Identify the particular goods or services on or in connection with which it uses or intends to use the mark !
• Be specific and don’t leave descriptions open-ended • Do not list products or services you don't plan on selling. Do not
include products or services that you are not, nor have a real intention of, selling in the future.
• List only goods/services that you are selling to others • Can’t add additional goods/services later; will need new
application. !!
application must
�55
TRADEMARKS
application must2. Submit a drawing of the ™ !
Standard character format - grants protection to the wording itself without regard to font, style, size, or color. Most flexible; broad rights. !
Stylized or design formats covers design elements and/or word(s) and/or letter(s) having a particular stylized appearance.
e.g. Nike
�56
TRADEMARKS
application must3. Submit a specimen of use
(typically photographs) for each class. !
�57
TRADEMARKS
APPLICATION PUBLICATION
OPPOSITIONREVIEW FOR STATUTORY COMPLIANCE
REGISTRATION CERTIFICATE
ISSUED
• Opposer must file opposition or time extension request within 30 days of publication; extendable up to 180 days
• Opposer must have a real interest in the mark for whom registration is sought. • Must be owner or exclusive licensee
of a similar mark • Be in competition with the applicant • Burden of proof is on the challenger
(opposer)
timeline
�58
The USPTO bars the registration of marks that:
• are confusingly similar to an existing mark.
• This is the most common reason registrations are denied
• Looking at likelihood of confusion
TRADEMARKS: STATUTORY BARS
bars to registration
�60
• similarity between the marks as to appearance, sound, connotation, etc
• similarity of the nature of the goods/services • similarity of marketing channels • conditions under which sales are made (“impulse" vs. more
discerning shoppers) • fame of the prior mark. • number and nature of similar marks in use on similar goods. • extent of actual and potential confusion • extent of concurrent use • range of goods for which mark is used
TRADEMARKS: STATUTORY BARS
factors
�61
• are immoral, scandalous, disparaging, deceptive, or cause false associations
• comprise the flag, coat of arms, or insignia of the U.S., any state w/in the union, municipality, or foreign nation
• incorporate a name, portrait, or signature
TRADEMARKS: STATUTORY BARS
bars to registration
�62
• are deceptively misdescriptive.
• are primarily geographically descriptive
• are primarily geographically deceptively misdescriptive
• are primarily merely a surname
TRADEMARKS: STATUTORY BARS
bars to registration
�63
• Generic marks are subject to cancellation! Don’t let your mark go generic!
• Your mark should indicate who you are and not what you are.
!
!
Asprin, Escalator, Heroin, Webster’s Dictionary
TRADEMARKS
genericide
�65
• Don’t abandon your mark!
• If you discontinue use of your mark with intent not to resume, you’ve abandoned your mark and lose ™ protection!
• If you don’t use your mark for 3 consecutive years, there is a rebuttable presumption of abandonment.
• Resumption of use: protection will only cover new uses, not old ones.
TRADEMARKS
abandonment
�66
TRADEMARKS AND DOMAIN NAMES
domain names ≠ ™ While trademarks are source identifiers in the physical world and domain names are source identifiers in the online world…
�68
TRADEMARKS AND DOMAIN NAMES
ACPA claimsThe Anti-Cybersquatting Consumer Protection Act is one mechanism for ™ owners to get domain names. !A ™ owner must show: !• S/he has a valid TM • The mark is distinctive or famous • Defendant’s domain name is identical, confusingly similar to,
or dilutive of plaintiff’s mark • Defendant acted w/ bad faith intent to profit. !
�69
TRADEMARKS AND DOMAIN NAMES
UDRP dispute resolutionICANN (Internet Corporation for the Assigned Names and Numbers) offers a dispute resolution procedure (UDRP) that is global and binding on all domain name registrants. !To win, a ™ owner must: !
• Prove identity or substantial similarity (confusingly similar) between his mark and challenged domain name
• Establish that domain name holder has no legitimate interest in the domain
• Show that domain name was obtained/using it in bad faith. !!!
�70
TrademarksTrade Dress refers to characteristics of the visual appearance of a product or its packaging (or even the design of a building) that signify the source of the product to consumers.
Trade Dress
�73
Trademarks
Covers • Product packaging • Product design !can cover features such as size, shape, color, color combinations, texture, graphics, and scents.
Trade Dress
�74
TRADE DRESS
what is protectable?!must be !• non-functional • distinctive
• must be either inherently distinctive or have acquired secondary meaning
!!!
�76
TRADE DRESS
should you register?Trade dress is typically unregistered, but registration can be advantageous for the same reasons as for trademarks. !!
!!!
�77