It has been said that a copyright attaches when the “pen hits the paper” (when an original work is created and “fixed” in a particular expression) but that doesn’t mean the analysis of what a copyright is and what it protects ends there. A copyright is a valuable piece of Intellectual Property that protects many types of original works, not just artistic, literary, or musical works. Copyright laws are intended to “feed the artist” and give owners the right to reproduce their works and prevent others from doing so without the owner’s permission. Thomas Edison. Henry Ford. Steve Jobs. These three household names revolutionized modern society through the protections afforded to their intellectual property by U.S. patent laws. A trademark—whether a word, slogan, design, color, color combination, overall look or feel of an item or its packaging, or even a sound —enables customers to identify the source of goods or services. As such, companies should understand the benefits and pitfalls associated with U.S. trademark laws if they ever hope to develop a successful brand. This webinar discusses the so-called “nuts and bolts of copyright law” beginning with what exactly is a copyright, how to protect a copyright, and finally how to enforce a copyright. It also breaks down U.S. patent laws into the nuts and bolts. It discusses the types of inventions that can receive protection, as well as the extent of U.S. patent protection. Finally, this webinar examines how trademarks are created and maintained, various methods of trademark protection, rights conferred by trademark registration, and steps for enforcing trademarks in the U.S. in the brick-and-mortar marketplace and online. Part of the webinar series: INTELLECTUAL PROPERTY 101 - 2022 See more at https://www.financialpoise.com/webinars/

2. 2
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attorneys, accountants, business owners and
executives, and investors.

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4. Disclaimer
The material in this webinar is for informational purposes only. It should not be considered
legal, financial or other professional advice. You should consult with an attorney or other
appropriate professional to determine what may be best for your individual needs. While
Financial Poise™ takes reasonable steps to ensure that information it publishes is accurate,
Financial Poise™ makes no guaranty in this regard.
4

5. Meet the Faculty
MODERATOR:
Dina Blikshteyn- Haynes and Boone LLP
PANELISTS:
Kimberly A. Berger - Miller Canfield
Sanjay Prasad - Appleton Luff
Darren Spielman- The Concept Law Group
5

6. About This Webinar
Copyrights, Patents, & Trademarks...Oh My!
It has been said that a copyright attaches when the “pen hits the paper” (when an original work is created and
“fixed” in a particular expression) but that doesn’t mean the analysis of what a copyright is and what it protects
ends there. A copyright is a valuable piece of Intellectual Property that protects many types of original works, not
just artistic, literary, or musical works. Copyright laws are intended to “feed the artist” and give owners the right
to reproduce their works and prevent others from doing so without the owner’s permission. Thomas Edison.
Henry Ford. Steve Jobs. These three household names revolutionized modern society through the protections
afforded to their intellectual property by U.S. patent laws. A trademark—whether a word, slogan, design, color,
color combination, overall look or feel of an item or its packaging, or even a sound —enables customers to
identify the source of goods or services. As such, companies should understand the benefits and pitfalls
associated with U.S. trademark laws if they ever hope to develop a successful brand. This webinar discusses
the so-called “nuts and bolts of copyright law” beginning with what exactly is a copyright, how to protect a
copyright, and finally how to enforce a copyright. It also breaks down U.S. patent laws into the nuts and bolts. It
discusses the types of inventions that can receive protection, as well as the extent of U.S. patent protection.
Finally, this webinar examines how trademarks are created and maintained, various methods of trademark
protection, rights conferred by trademark registration, and steps for enforcing trademarks in the U.S. in the brick-
and-mortar marketplace and online.
6

7. About This Series
Intellectual Property 101 - 2022
Intellectual property (IP) rights constitute an important asset class. Indeed, the “information
economy” and high tech have made this asset class go from one that few understood and
even fewer invested in to one watched and invested in by millions. IP includes patents,
trademarks, copyrights, and trade secrets. How do you create rights in one of these assets?
How do you protect those rights? How do you transfer them (or have them transferred to
you)? How do they interact with each other? This information-packed webinar series focuses
on the intricacies of IP rights as they relate to the specific areas of brand protection, IP
transactions, internet marketing, and other IP issues that are critical when representing
innovators and inventors.
Each Financial Poise Webinar is delivered in Plain English, understandable to investors, business owners, and
executives without much background in these areas, yet is of primary value to attorneys, accountants, and other
seasoned professionals. Each episode brings you into engaging, sometimes humorous, conversations designed to
entertain as it teaches. Each episode in the series is designed to be viewed independently of the other episodes so that
participants will enhance their knowledge of this area whether they attend one, some, or all episodes.
7

8. Episodes in this Series
#1: IP-What Every Lawyer & Every Client Must Understand
Premiere date: 3/22/22
#2: Copyrights, Patents, and Trademarks...Oh My!
Premiere date: 4/19/22
#3: Leveraging & Protecting Trade Secrets in the 21st Century
Premiere date: 5/17/22
8

9. Episode #2
Copyrights, Patents, and Trademarks...Oh My!
9

10. Copyrights
10

11. What is a Copyright?
• A copyright is an intellectual property right that protects original works of authorship fixed
in a tangible medium. For example, copyright protects literary, musical, and dramatic works.
• A copyright protects the expression of ideas, not the underlying ideas of the work. For
example, an idea of a song is not protectable, but the written sheet music is protectable.
11

12. Requirements for Copyright Protection
• A copyright protects a work or expression that is:
✓ Original (also known as the originality requirement)
✓ Fixed in a tangible medium of expression (also known as the fixation requirement)
✓ Authored by one or more persons
12

13. Copyright Requirements: Originality
• Originality is said to be the touchstone and sine qua non of copyright. Originality
in the sense of copyright protection does not mean the work or expression must be
an original or inventive thought.
• To be original:
✓ A work must be independently created;
✓ A work must originate from the author;
✓ A work must possess a modicum of creativity; and
✓ A work must not be copied from another work or expression.
13

14. Copyright Requirements: Originality
• Originality does not mean the work must be novel or entirely new.
✓ A compilation of facts, such as an encyclopedia, or derivative works, such as a
translation of a book, may receive copyright protection as long as there is a modicum
of creativity.
✓ However, when the work lacks creativity – such as a phone book containing
alphabetical listings – Courts have held it cannot be copyrighted.
✓ A small amount of creativity will meet this creativity requirement, even if the
expression is obvious.
14

15. Copyright Requirement: Fixation
• A work is fixed in a tangible medium when the work is sufficiently stable to permit it to be
perceived, reproduced, or otherwise communicated for a period of transitory duration. Ideas
will not be protectable.
✓ Although the work of authorship receives protection, it must be fixed in some
tangible medium. For example, a musical composition (the work of authorship)
receives copyright protection, but it must be fixed in a tangible medium, such as
sheet music, an audiotape, or a computer hard drive, to receive copyright protection.
15

16. Copyright Requirement: Authorship
• A work or expression must have an author.
✓ Authorship is a human endeavor, and authors of a copyrightable work or expression
must be persons.
✓ Corporations are considered “authors” under the Copyright Act, but animals are not
considered “authors.” A court recently held a monkey did not have a copyright to a
“selfie” picture.
16

17. What Types of Work Receive Copyright Protection?
• Section 102 of the Copyright Act lists general categories of subject matter of copyright.
• Examples of copyrightable material include:
✓ Literary works;
✓ Musical works, including any accompanying words;
✓ Dramatic works, including any accompanying music;
✓ Pantomimes and choreographic works;
✓ Pictorial, graphic, and sculptural works;
✓ Sound recordings; and
✓ Architectural works.
17

18. What Types of Works are Excluded?
• Pursuant to Section 102 of the Copyright Act:
✓ In no case does copyright protection for an original work of authorship extend to any
idea, procedure, process, system, method of operation, concept, principle, or
discovery, regardless of the form in which it is described, explained, illustrated, or
embodied in such work.
• Copyright also does not extend to U.S. government works or typefaces.
18

19. Copyright Rights
• A copyright gives its owner the exclusive right to:
✓ Reproduce the work – others cannot reproduce the work without permission.
✓ Prepare derivative works – others cannot create adaptations without permission.
✓ Distribute copies of the work – others cannot distribute copies without permission.
✓ Perform works – others cannot publicly perform certain works.
✓ Display works – others cannot publicly display certain works.
19

20. Copyright Ownership
• Generally, the creator(s) of the work owns the copyright, except for:
✓ “Work Made for Hire”
o A work prepared by an employee within the scope of his or her employment is
owned by the employer.
o Certain works specially ordered or commissioned are not owned by the creator,
if the parties expressly agree in writing that the work is a work made for hire.
✓ Assignment of copyright: an owner of a copyright may transfer interest in each of the
exclusive rights under a copyright.
✓ Sale of the entire copyright.
20

21. Copyright Ownership
• Joint authorship exists where two or more authors contribute to a single work intending
that their contributions be created into an inseparable or interdependent whole.
✓ Inseparable – the contributions have no or little independent meaning standing
alone.
✓ Independent – the contributions have some meaning standing alone, but
achieve significance when combined.
• Each joint author shares equally in the ownership of the work, even if the contributions
were unequally made.
21

22. Benefits of Registration
• Copyright registration is not necessary for protection, a copyright technically exists when
the work is created.
• However, registration provides certain benefits to owners.
22

23. Benefits of Registration
• Benefits to obtaining copyright registration include:
✓ Registration is required to commence a lawsuit.
✓ Timely registration permits a copyright owner to seek statutory damages, which can
help force prompt settlement.
✓ Timely registration makes a copyright owner eligible for an award of attorneys’ fees
in a successful infringement lawsuit.
✓ Registration within 5 years of publication carries with it a presumption of the validity
of the copyright and of the facts stated in the certificate.
✓ Registration permits the copyright owner to seek the assistance of the U.S. Customs
and Border Protection.
✓ Registration provides contact information for interested parties to obtain a license.
23

24. Benefits of Notice
• Copyright notice is no longer required for a work to be protected under the federal
Copyright Act. Benefits to providing notification include:
✓ Notice informs the public the work is protected, deterring infringement and facilitating
licensing.
✓ Notice prevents an “innocent infringer” defense, which acts as a defense to actual or
statutory damages.
• Notice should include symbol/word/©, year of publication, and name of owner.
24

25. Limitations on Copyright
• Merger: If an idea can only be expressed in one way, the idea and expression “merge”
and no protection can be afforded.
✓ For example, the Ninth Circuit held that a copyright on a jeweled bee pin merged,
because it was the only way to create a bee pin using a small number of jewels.
• Scenes a Faire: Indispensable elements of a work are protected only against nearly
identical copying.
✓ The United States Court of Appeals for the Second Circuit interpreted the scenes a
faire doctrine expansively to hold that a motion picture about the South Bronx would need
to feature drunks, prostitutes, vermin, and derelict cars to be perceived as realistic.
25

26. Limitations on Copyright
• Functionality: Functional or useful features of a work only receive copyright protection to
the extent the features can exist independently.
✓ Think industrial designs, however the recent Supreme Court case, Star Athletica,
LLC v. Varsity Brands Inc. is challenging the limits of functionality
26

27. Functionality Limitations
• Star Athletica, LLC v. Varsity Brands Inc., 137 S. Ct. 1002 (2017)
✓ Case involved cheerleader uniforms designed by Varsity Brands, the market leader,
and copied by Star Athletica. The legal problem is whether copyright protection,
which extends naturally not only to works of music and literature, but also to
“pictorial, graphic, or sculptural” works, protects the particular combination of
chevrons, zigzags and stripes that characterizes Varsity’s uniforms. Varsity argued
their designs were copyrightable and Star Athletica argued this kind of “industrial”
design, largely influenced by utilitarian considerations, does not warrant copyright
protection, which is best reserved for wholly aesthetic creations
27

28. Functionality Limitations
• Court ruled in Varsity Brands’ favor holding the designs like chevorns, zigzags and
stripes can be protected if they can be separated from their “utilitarian function.” The
ultimate question is whether a particular design “would have been eligible for copyright
protection … had it originally been fixed in some tangible medium other than a useful
article before being applied to a useful article.”
28

29. Limitations on Copyright
• Fair Use: Reproduction of a work for criticism, for purposes such as parody, comment,
news reporting, scholarship or research is a complete defense to copyright infringement if it is
fair use.
✓ Courts apply the following four non-exhaustive statutory factors to determine “fair
use”:
o The purpose and character of the use;
o The nature of the copyrighted work;
o The amount and substantiality of the work used; and
o The effect the use has on the work’s value.
29

30. Limitations on Copyright
• Fair Use Has Its Limits - Fox News v. TVEyes
✓ TVEyes, a media monitoring service, recorded programming 24/7 from over
1,400 television and radio stations and compiled the recorded programs into text-
searchable databases. Subscribers could search the database by keyword or date
and time and could then watch, archive, download, and email the ten-minute-long
clips contained in the search results. In 2013, Fox sued TVEyes for copyright
infringement in the Southern District of New York.
30

31. Limitations on Copyright
• Fair Use Has Its Limits - Fox News v. TVEyes (Cont).
✓ Two years later, the District Court held, in part, that the function in TVEyes’
service that enabled subscribers to search for videos and clips using keywords
(“Search Function”) and the functions that allowed subscribers to watch, archive, and
share relevant clips with others (“Watch Function”) were both allowed under the fair
use exception. Fox appealed to the Second Circuit Court of Appeals, arguing the
Watch Function was not fair use.
The Second Circuit agreed with Fox, and reversed the District Court’s finding of fair
use on the Watch Functions and concluded that in this case TVEyes exceeded the
bounds of fair use.
31

32. Limitations on Copyright
• First Sale or Exhaustion: The owner of a copy of a work is entitled to sell or dispose of
that copy without the copyright owner’s consent. In Kirtsaeng v. John Wiley & Sons, Inc., the
Supreme Court held that the “first sale” doctrine applies to copies of works lawfully made
abroad.
• Statute of Limitations: A claim for copyright infringement must be brought within three
years from the date of accrual. A “separate-accrual” rule applies, which allows the statute of
limitations to run separately for each act of infringement.
32

33. Copyright Infringement
• Copyright infringement occurs when a party exercises an exclusive right afforded to the
copyright owner without the owner’s permission.
• A party that knowingly induces, causes, or materially contributes to copyright
infringement, may be held liable as a contributory infringer even if the party has not committed
or participated in the infringing acts.
33

34. Copyright Remedies
• Copyright remedies include:
✓ Injunctive Relief – requires a showing of irreparable harm.
✓ Monetary Damages – a party may recover damages incurred as a result of the
infringement, including an infringer’s profits to the extent the profits do not exceed
the owner’s losses.
✓ Statutory Damages – range from $750 to $30,000, and a court may increase
damages to $150,000 for willful infringement.
34

35. Patents
35

36. Presentation Overview
• What is a patent?
✓ Types of patents
✓ Patent eligibility
✓ Limitations of patents
• Patent Prosecution – The process of obtaining a patent from the USPTO.
• Patent Litigation – Enforcing patents against infringers.
36

37. What is a Patent?
• A patent is a right granted by the U.S. government to an inventor for a limited time to
exclude others from:
✓ Making, using, offering to sell, or selling the patented invention; or
✓ Importing the patented invention into the United States.
• Patents protect inventions and discoveries, including new and useful processes,
machines, products, compositions, or manufactures. Types of patents include design, utility,
and plant patents.
37

38. Types of Patents
• Utility Patent
✓ A utility patent is the most common type of patent that people seek. This type of
patent covers processes, compositions of matter, machines, and manufactures that
are new and useful.
• Design Patent
✓ A design is defined as the "surface ornamentation" of an object, include the shape or
configuration of an object and the design must be inseparable from the object.
✓ A design patent with only protect the object's appearance, not its functionality.
38

39. Types of Patents
• Plant Patent
✓ A plant patent is granted to one who has invented or discovered and asexually
reproduced a distinct and new variety of plant, other than a tuber propagated plant
(i.e., potato) or a plant found in an uncultivated state.
✓ The plant can be asexually reproduced, meaning that instead of being reproduced
with a seed, the plant is reproduced by grafting or cutting the plant. Plant patents
require asexual reproduction because it's proof that the patent applicant can
reproduce the plant.
39

40. Patent Eligibility Requirements
• For an invention to be patentable, the invention must fall within a category of patentable
subject matter; must be useful, new, and non-obvious; and must contain an adequate
disclosure of the invention.
✓ Patentable subject matter
✓ Usefulness or utility
✓ New or novelty
✓ Non-obviousness
✓ Adequate disclosure
40

41. Patent Eligibility: Patentable Subject Matter
• A utility patent must claim patentable subject matter, and the claims of the patent must fall
within one of the following broad categories:
✓ Process (e.g., methods of manufacturing a product)
✓ Machine (e.g., mechanical devices)
✓ Manufacture (e.g., tools or ceramics)
✓ Composition of Matter (e.g., chemical compounds or mechanical mixtures)
41

42. Patent Eligibility: Patentable Subject Matter
• Courts have identified the following limited exceptions to the categories of patentable
subject matter:
✓ Abstract ideas (e.g., hedging risk)
✓ Laws of nature (e.g., gravity)
✓ Natural phenomena (e.g., a naturally occurring gene)
42

43. Patent Eligibility: Patentable Subject Matter
• The boundaries of patentable subject matter is ever changing. Recently, there have been
three key Supreme Court decisions that have changed the landscape of what is considered
patentable subject matter.
✓ Mayo v. Prometheus (2012)
✓ Association for Molecular Pathology v. Myriad Genetics Inc. (2013)
✓ Alice Corp. Pty. Ltd. v. CLS Bank International (2014)
• N.B. New district court and Federal Circuit decisions are constantly refining the analysis
provided in the above three Supreme Court decisions. However, sometimes these decisions
add even more confusion to the matter.
43

44. Patent Eligibility: Utility
• The claimed invention must have “utility,” or in other words, the claimed invention must be
“useful.”
• Utility is a low threshold requirement. The invention must have some real-world
application and not have an immoral purpose.
44

45. Patent Eligibility: Novelty
• The claimed invention must be “new.”
✓ First to Invent vs. First to File (The U.S. Patent system is now a “first to invent”
system).
✓ A single prior art reference (e.g., patents or printed publications) may “anticipate” the
claimed invention, thus making the invention not novel.
✓ There is a one year grace period to file a patent application after disclosure.
45

46. Patent Eligibility: Non-Obviousness
• The claimed invention must be “non-obvious.”
✓ An invention may be obvious where all of the limitations of the claimed invention are
present in the prior art, but not in a single reference.
✓ There must be some motivation to combine the prior art references to achieve the
claimed invention, and a reasonable expectation of success in doing so.
✓ The invention must be non-obvious to a person of ordinary skill in the art.
46

47. Patent Eligibility: Adequate Disclosure
• A patent application through its specification must adequately disclose the claimed
invention. This disclosure must meet the following separate requirements:
✓ Written Description – The specification must sufficiently describe the claimed
invention.
✓ Enablement – The specification must describe how to make and use the invention.
✓ Best Mode – The specification must state the best way contemplated for carrying out
the invention.
✓ Definiteness – The specification’s claims must particularly point out and distinctly
claim the invention.
47

48. Patent Prosecution and Ownership
• To obtain a patent on an invention, an inventor, patent agent, or patent attorney must file a
patent application with the USPTO. The process of filing a patent application and negotiating
the patent application with the USPTO is known as patent prosecution.
• A patent application is made in an inventor’s name, and the inventor is presumed to
initially own rights in the invention. An inventor may assign (or may be required to assign) the
patent application or patent to another party (e.g., her/his employer).
48

49. Parts of a Patent
• A patent application and issued patent typically comprise of a specification and one or
more independent and dependent claims.
• Specification – The specification supports and defines the claimed invention, including the
manner and process of making and using it. The specification generally includes the
following:
✓ The title of the invention.
✓ An abstract that summarizes the disclosure.
✓ Background on the prior art and the invention.
✓ Brief summary of the invention.
✓ Brief description of the drawings.
✓ Drawings.
✓ Detailed description of the invention.
✓ Claims.
49

50. Parts of a Patent
• N.B. The claims of the invention are considered part of the patent’s specification, but
patent practitioners often refer to the “claims” and the “specification” as separate parts of the
patent.
50

51. Parts of a Patent
• Claims – The claims of a patent define the scope of the invention and the extent of the
protection conferred by the patent. The claims must be supported by specification. A
claim generally includes the following:
✓ Preamble
✓ Transitional phrase
✓ Limitations of the claim.
For example, a patent claiming an ordinary shovel may recite:
A wagon comprising: a platform; two axles attached to the platform; and wheels on each axle.
In the example above, the term “a wagon” is the preamble, and the term “comprising” is the
transitional phrase. The phrases “a platform,” “two axles attached to the platform,” and
“wheels on each axel” are each limitations or elements of the claim.
51

52. Limitations of Patent Protection
• Term – A patent typically lasts 20 years from the date of filing.
• Territory – A U.S. patent only give its owner the right to exclude others in the U.S.
• Exhaustion – Once a patented article is sold without restriction, the rights in the article
are exhausted.
• Reasonable Repair – Although the owner of a patented article may not reconstruct the
article, the owner may repair the article without consent of the patent owner.
52

53. Limitations of Patent Protection
• Statute of Limitations (SOL) – There is no strict SOL, but a patentee may not recover
damages for infringement that occurred more than 6 years before filing suit. An
unreasonable delay in bringing suit, laches, may also bar recovery of damages.
• Inequitable Conduct – Where a patent applicant misrepresents information to the USPTO
during prosecution, the patent may be deemed unenforceable.
• Equitable Estoppel – Reasonable reliance that the patentee did not intend to enforce the
patent against a party.
• Misuse – An unlawful extension of the patent beyond its lawful scope (e.g., demanding
royalties after the expiration of the patent).
53

54. Patent Infringement
• A party that practices an invention claimed in a patent without a license from the owner
infringes the patent.
✓ Direct Infringement
o Literal Infringement - The infringing article contains each and every limitation of
the patent claim.
o Doctrine of Equivalents – If every element is not literally present, the differences
between the elements and article must be insubstantial or interchangeable,
according to a person of ordinary skill in the art.
54

55. Patent Infringement
✓ Indirect Infringement:
o Contributory Infringement – A party must show the infringer knew the
combination of articles was patented and infringing, and that the articles had no
substantial noninfringing use.
o Induced Infringement – A party must show the alleged infringer knowingly
induced infringement and possessed specific intent.
• N.B. A party alleging indirect infringement must show direct infringement as well.
55

56. Patent Infringement
• Claim Construction:
✓ The interpretation of a patent’s claims is a matter of law. A court construes the key
words in a patent claim at a pre-trial hearing, known as a “Markman hearing.” The
construction of key claim terms directly impacts whether an accused article infringes
the asserted patent claim.
• Intrinsic evidence vs. Extrinsic evidence
o Intrinsic evidence, including the claims, specification, and prosecution history,
serves as the principal source for construing the claim terms.
o Extrinsic evidence (e.g., dictionary definitions) may be considered. But, it must
be considered in light of the intrinsic evidence and is less reliable than intrinsic
evidence.
56

57. Patent Infringement
• Remedies:
✓ Preliminary Injunction
✓ Permanent Injunction
✓ Monetary Damages:
o Lost Profits – Requires a showing that “but for” the infringer’s acts, the patentee
would have had greater sales, charged higher prices, or incurred lower
expenses.
o Reasonable Royalty – A court engages in a hypothetical situation and
determines the amount that a willing patent owner and willing licensee would
negotiate for use of the patent. A patentee is entitled to at least a reasonable
royalty for damages.
✓ Enhanced Damages – A court may increase patent damages up to three times for
willful infringement.
57

58. Patent Litigation Trends
The chart below illustrates the growth in patent litigation since 2008. As seen in the chart, the
number of patent cases in both district courts and the Federal Circuit has experienced
significant growth. Additionally, since its introduction in 2012, the Patent Trial and Appeal
Board (PTAB) has seen steady growth in its docket.
58
2008 2009 2010 2011 2012 2013 2014 2015 2016 2017 2018 est
Patent Trial and Appeal Board 0 0 0 0 111 792 1677 1798 1758 1799 1742
International Trade Commission 36 30 56 71 45 47 37 38 55 64 46
Federal Circuit 13 26 84 264 500 526 665 884 994 949 1036
U.S. District Courts 2605 2561 3349 3902 5453 6094 5010 5789 4655 4522 4382
2,654 2,617
3,489
7,459
6,109
7,389 7,462
8,509
7,334 7,206
4,237
urce: Docket Navigator

59. Trademarks
59

60. What is a Trademark?
• A trademark identifies the source of a good or service used in commerce.
✓ Names, brands, words, or phrases (e.g., APPLE®, Apple’s iPod, or McDonald’s
slogan I’m Lovin’ It)
✓ Symbols or shapes (e.g., Nike’s Swoosh or GEICO’s Gecko)
✓ Trade-dress or product, package, or store design (e.g., 7-Eleven store design)
✓ Sounds, scents, or textures (e.g., NBC chimes or Aunt Annie’s scent)
• People may use the term “service mark” to refer to a mark that identifies a service and the
term “trademark” to refer to a mark that identifies a good. We use “trademark” in this
presentation to refer to a mark that identifies either a good or service.
60

61. Purpose of Trademarks
• Trademarks promote a consumer’s ability to identify a business’s goods or services.
• Trademarks protect a business’s goodwill, reputation, and brand identity.
• Trademark law prohibits a person or business from using the same or a confusingly
similar mark, preventing consumer confusion.
61

62. Trademark Requirements
• A trademark must be used in commerce and be distinctive to receive protection. A
hierarchy of distinctiveness exists to determine the strength of a mark.
✓ Fanciful (e.g., EXXON)
✓ Arbitrary (e.g., APPLE, WINDOWS)
✓ Suggestive (e.g., MICROSOFT)
✓ Descriptive (e.g., SHARP for TVs)
✓ Generic (e.g., ASPIRIN and CELLOPHANE)
62

63. Trademark Requirements:
Distinctiveness Continuum
• At one extreme are marks that, when used in relation to the goods or services are
completely arbitrary or fanciful.
✓ Fanciful marks are words or terms that have been made-up or invented for the sole
purpose of functioning as a trademark. Such marks comprise words that are either
unknown (e.g., EXXON, KODAK, PEPSI) or are completely out of common usage
(e.g., FLIVVER).
63

64. Trademark Requirements:
Distinctiveness Continuum
• At one extreme are marks that, when used in relation to the goods or services are
completely arbitrary or fanciful.
✓ Arbitrary marks comprise words that are in common linguistic use but, when used to
identify particular goods or services, do not suggest or describe a significant
ingredient, quality, or characteristic of the goods or services (e.g., APPLE for
computers; OLD CROW for whiskey; BUMBLE for a dating application).
64

65. Trademark Requirements:
Distinctiveness Continuum
• Next on the continuum are suggestive marks:
✓ Suggestive marks are those that, when applied to the goods or services at issue,
require imagination, thought, or perception to reach a conclusion as to the nature of
those goods or service.
✓ Suggestive marks, like fanciful and arbitrary marks, are registrable without proof of
secondary meaning. Secondary meaning is proof that a mark has become distinctive
as applied to the applicant’s goods or services in commerce.
65

66. Trademark Requirements: Distinctiveness
Continuum
• Next on the continuum are merely descriptive marks:
✓ Marks are refused registration if the mark is merely descriptive. A mark is merely
descriptive if it describes an ingredient, quality, characteristic, function, feature, purpose, or
use of the specified goods or services. (e.g., BED & BREAKFAST REGISTRY is merely
descriptive of lodging reservations services).
✓ The determination of whether a mark is merely descriptive must be made in relation to
the good or services for which registration is sought, not in the abstract.
66

67. Trademark Requirements: Distinctiveness
Continuum
• Finally, generic terms for goods or services are at the opposite end of the continuum from
arbitrary or fanciful marks.
✓ Generic terms are terms that the purchasing public understands primarily as the
common or class name for the goods or services.
✓ Generic terms are incapable of functioning as registrable trademarks denoting
source, and are not registrable.
67

68. Trade Dress
• Trade dress includes the packaging, dressing, or design of a product.
• Trade dress is typically defined as the total image and overall appearance of a product, or
the totality of the elements, including features such as size, shape, color or color
combinations, texture, and graphics.
• Trade dress also includes the unique layout and design of retail stores and restaurants
(i.e. Apple retail stores, Taco Cabana Mexican restaurants)
68

69. Trade Dress
• Trade Dress Functionality Doctrine:
✓ A feature that is essential to the use or purpose of the article or that affects the cost
or quality of the article is a functional feature, which cannot serve as a trademark /
trade dress.
✓ This doctrine is intended to encourage legitimate competition by striking a balance
between trademark law and patent law.
69

70. Limitations on Trademarks
• First Sale Doctrine: A business may resell and distribute a trademarked good without
infringing because the article that bears a trademark does not deceive consumers. However,
the resold goods must not be materially different from those purchased from the trademark
owner.
• Acquiescence: An affirmative defense to trademark infringement. An owner represents
that a party can use the mark; the party relies on that representation; and the party would
suffer prejudice if it were not permitted to use the mark.
• Descriptive Fair Use: A good faith use by a party of a trademark to describe its goods or
services does not constitute infringement.
• Nominative Fair Use: A party’s use of a trademark to refer to a manner that is not
deceptive or likely to cause confusion.
70

71. Trademark Ownership and Registration
• Trademark rights and ownership are acquired through actual use of the mark in
commerce. The first person to use the mark in commerce has priority to use the mark.
• Tacking Doctrine:
✓ An trademark owner that adopts a legally equivalent new mark that is similar to
its earlier mark such that consumers regard the two marks as essentially the
same. The owner may relate or tack the date of its first use of the earlier mark
to the new mark.
• Registration of a trademark is not necessary, but registration provides benefits to the
owner.
✓ Nation-wide notice and constructive use. A registered mark is deemed to have been
in use throughout the United States as of the application filing date such that it will
have priority over a confusingly similar mark.
71

72. Trademark Ownership and Registration
• Benefits of registration (continued):
✓ Right to use the registered trademark symbol ®.
✓ Discourage others from using the trademark.
✓ Allows the U.S. government to block knock-offs and imports that unlawfully use the
mark.
✓ Provides benefits related to foreign registration.
✓ Validity of ownership, heightened protection after five years, and a possibility of the
mark becoming “incontestable.”
✓ Right to obtain enhanced damages and attorneys’ fees in some cases.
✓ Provides the ability to obtain statutory damages in counterfeiting cases.
72

73. Trademark Infringement
• The Lanham Act governs actions related to trademarks.
• Trademark infringement occurs when a party uses a mark, without authorization, in
connection with goods or services that is likely to cause confusion, deception, or mistake
about the source of the goods or services.
• The determination of a likelihood of confusion is dependent on a number of factors (e.g.,
the strength of the mark, the proximity of the products, the degree of similarity between the
marks, the quality of the defendant’s product, and the sophistication of the buyers).
73

74. About the Faculty
74

75. About The Faculty
Dina Blikshteyn- Dina.Blikshteyn@haynesboone.com
Dina Blikshteyn is a counsel in the Intellectual Property Practice Group in the New York office of Haynes and Boone. Dina’s
practice focuses on post grant proceedings before the U.S. Patent and Trademark Office, preparing and prosecuting domestic
and international patent applications, as well as handling trademark and other IP disciplines. Dina is a co-chair of the artificial
intelligence practice at Haynes and Boone.
Dina focuses her patent practice on technology areas. Illustrative areas include artificial intelligence and machine learning, cloud
computing, cyber security, web applications, map and navigation applications, point-of-sale systems, computer graphics, data
structures, algorithms, distributed systems, client-server applications, CPU/GPU processor design, operating systems, mobile
technologies, databases, database optimization, multimedia and video streaming, financial trading products, banking software,
computerized auction software, healthcare systems, Internet systems, advertising software, wireless communication systems and
applications, telecommunications systems, marketing applications, industrial control systems (ICS), cable systems, and smart grid
and micro grid technologies.
In addition to her patent work, Dina is a member of Haynes and Boone’s trademark group, and Dina’s trademark practice
encompasses a wide variety of worldwide trademark searching, clearance, prosecution, and related counseling matters in a
diverse number of industries. Prior to becoming a lawyer, Dina developed high-frequency trading systems that traded financial
instruments on domestic and international exchanges.
75

76. About The Faculty
Kimberly A. Berger - berger@millercanfield.com
Kimberly A. Berger is a principal at Miller Canfield in its Detroit office. She specializes in
domestic and international trademark prosecution and intellectual property litigation, including
domain name disputes, trade secrets, unfair competition, false advertising, and trademark
and copyright infringement. Her practice includes managing domestic and international
trademark portfolios; trademark selection, clearance and prosecution; negotiating use
agreements; U.S. Patent and Trademark Office proceedings, including opposition and
cancellation actions; and intellectual property litigation in both state and federal courts. Kim is
a member of the council of the Intellectual Property Law Section (IPLS) of the State Bar of
Michigan and currently serves on the Internet Committee of the International Trademark
Association (INTA). She has been recognized as a Michigan Super Lawyer since 2010 and
as a Top Lawyer in intellectual property by “dbusiness” in 2013 and 2018.
76

77. About The Faculty
Sanjay Prasad - prasad@appletonluff.com
Sanjay Prasad draws from over twenty-five years of practice at the forefront of technology and intellectual
property. He has extensive experience in advising entities on patent strategy including developing
corporate patent strategy, advising on infringement matters, developing patent filing programs, patent
acquisition and sales programs and patent and technology licensing, particularly in the high-tech sector
including semiconductors, software, computer systems, internet, telecommunications and medical
devices.
77

78. About The Faculty
Darren Spielman - DSpielman@ConceptLaw.com
Darren Spielman is a Partner of The Concept Law Group, P.A. He concentrates his practice in the field of
intellectual property, with an emphasis on trademarks, trade secrets, domain name disputes, copyrights, first
amendment law including slander, libel and defamation. Darren has a Bachelor of Science in Public Relations
from University of Florida. He also earned a Masters in Mass Communications degree from the University of
Florida, as part of a joint degree with the University of Florida Levin College of Law. Darren is admitted to
practice in front of the U.S. District Court for the Northern District of Florida, Southern District of Florida, and
Middle District of Florida and the Eleventh Circuit Court of Appeals. Darren is a member of the Intellectual
Property Committee, the past chair of the E-discovery Committee and the Computer Law and Technology
Committee of the Business Law Section of the Florida Bar. He is also an officer of the Board of the Federal Bar
Association Broward Chapter. Darren is a member of the Intellectual Property Law Association of Florida, the
First Amendment Lawyers Association and the Broward County Bar Association. Awards & Accolades: Darren
has been honored as AV Rated with Martindale Hubble, Super Lawyers, Top Attorneys Florida Outstanding
Young Lawyers Award, America’s Most Honored Professionals Top 1%. Darren is also a frequent presenter and
public speaker on Intellectual Property and First Amendment topics.
78

79. Questions or Comments?
If you have any questions about this webinar that you did not get to ask during the live
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IMPORTANT NOTE: The material in this presentation is for general educational purposes
only. It has been prepared primarily for attorneys and accountants for use in the pursuit of
their continuing legal education and continuing professional education.
79

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