Intellectual Property for Businesses


Intellectual Property
for Businesses
© 2015 David Lizerbram & Associates®

Intellectual Property for Businesses
2
What Is Intellectual Property?
• Products of the mind.
• Ideas can’t be protected.
• Various strategies to protect your business’
interests.
• Strategies may involve more than one form of IP.

3
What’s a Trade Secret?
• A Trade Secret is a piece of information, not generally known or
reasonably ascertainable, that gives a business an economic advantage
over its competitors.
• Trade Secret protection requires reasonable efforts to maintain secrecy.
• Most famous Trade Secrets include:
• Recipes (Coca-Cola)
• Formulas (WD-40)
• Algorithms (Google Search)
• For most businesses – may include customer lists, internal specs and best
practices guides.

4
More About Trade Secrets
• Rights in a Trade Secret only exist as long
as the secret is maintained.
• If you broadcast it to the world, you’re out of luck.
• Trade Secrets are governed by State and
Federal Laws including the Uniform Trade
Secrets Act.
• Theft is punishable.
• However: you can’t prevent others from independently discovering or
reverse engineering your trade secrets.

5
How to Protect Trade Secrets
• Physical Security
• Best Practices: Don’t talk about or publicize
your trade secrets
• Contract: Confidentiality or “Non-Disclosure”
Agreements
• For employees and 3rd
parties
• Exit agreements with departing employees

6
Moving On to Patents
• A Patent for an invention is the grant of property rights to the inventor.
• 1. Right to exclude others from making, using, or selling the invention.
• 2. For US patents, the right to exclude others from importing or exporting.
• Rights for a limited period of time (usually 20 years) in exchange for
teaching the world how to make & use the invention.
• Patents are country-by-country; no worldwide patent
• US rights go to the first to file, not the first to invent.

7
Patentable Subject Matter, or What Can Be Patented?
• Process or Method of Use
• Machine
• Article of Manufacture
• Composition of Matter
• New or Useful Improvement to one of the above

8
What Can’t Be Patented?
• The Laws of Nature
• Naturally Occurring Entities
• Physical Phenomena
• Abstract Ideas
• Algorithms
• Human Organisms
• Tax Strategies

9
What Do “Novelty” and “Non-Obvious” Mean?
• A patentable invention must be novel and non-obvious
• Novel means as compared to prior art
• Non-Obvious relates to a person having ordinary skill in the art

10
OK, so What’s a Trademark?
• A Trademark is anything that identifies and distinguishes the
source of the goods or services of one party from those of others.
• Most trademarks are comprised of words, images, or a
combination of the two, but anything that can identify the source
of goods or services can be a trademark.
• The core purpose of trademark law is to allow consumers to have
confidence in the accuracy of labels and other information that
tells them where goods or services come from. This allows the
market to build trust in the consistent quality of brands.

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Trademarks Continued
• Rights go to the first user of the mark in commerce (the “Senior
User.”)
• But only in connection with particular goods & services.
• US Patent & Trademark Office has an “Intent-to-Use” filing so you can
file before you’re in commerce.
• Goodwill goes with a trademark.
• The tendency or likelihood of a consumer to repurchase goods based
on the name or source.
• Can’t be sold separately from the trademark itself.

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The Trademark Spectrum
• Trademarks are thought of as existing on a spectrum from
weakest to strongest.

13
On the Spectrum: Generic “Trademarks”
• A generic term is the common name for a type of good or service. Examples
include “Pizza Shop” or “Delivery Service.”
• Generic terms cannot be protected as trademarks. Sometimes, it’s not entirely
clear if a term is generic. Avoid choosing a term that might reasonably be
considered generic for your trademark.
 Blau Plumbing, Inc. v. S.O.S. Fix-It, Inc., 781 F.2d 604, 609 (7th
Cir. 1986) (“To allow
a firm to use as a trademark a generic word . . . would make it difficult for
competitors to market their own brands of the same product.”)
 In general, a generic term cannot be appropriated from the public domain and thus
cannot receive trademark protection. Welding Servs., Inc. v. Forman, 509 F.3d
1351; Abercrombie & Fitch Co. v. Hunting World, Inc., 537 F.2d 4, 9 (2d Cir. 1976).

14
On the Spectrum:
Descriptive Marks and Secondary Meaning
• A descriptive mark is an existing word (or words) that is used in
connection with the product or service. “Cheesy” might be descriptive
of pizza. “Speedy” or “Reliable” might be descriptive of delivery
services.
• Descriptive terms are granted little or no protection as trademarks.
The law recognizes that many businesses have to use these words
to describe their goods and services.
• Descriptive terms can gain greater trademark protection when they
acquire “secondary meaning” through “acquired distinctiveness” –
typically by way of extensive use in the marketplace.
• Avoid choosing descriptive terms for your trademark unless you are prepared to invest a
lot of money over a long period of time establishing that you are the sole entity using this
mark in commerce on these goods or services.

15
On the Spectrum: Suggestive Trademarks
• A suggestive trademark suggests a quality or feature of the product or service, but
doesn’t come right out and say it.
• Famous examples include GREYHOUND for bus services, CHICKEN OF THE SEA
for tuna, and PLAYBOY for men’s magazines.
• As you can see from these examples, a suggestive trademark creates a picture in
your mind or forces you to think (hopefully in a positive fashion) about the product
or service.
• Suggestive marks are among the strongest types of trademarks. However, there
can be a fine line between suggestive and descriptive, so tread carefully.

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On the Spectrum: Arbitrary and Fanciful Marks
• The strongest trademarks are arbitrary and/or fanciful.
• Arbitrary trademarks consist of a word or words
that have nothing to do with the goods or services.
Examples include APPLE for computers or STONE
for beer.
• Fanciful marks are coined words (neologisms) that have
no meaning other than in connection with the trademark.
Most pharmaceutical names are fanciful marks; other
examples include EXXON and VERIZON.
• These marks are, by their nature, inherently distinctive. They are, relative
to other types of marks, easy to register and protect. However, they
sometimes present marketing challenges, as they don’t suggest or
describe anything about the product or service.

17
Types of Trademarks: Word Marks
• Word marks are perhaps the most common type of trademark.
• Word marks can be made up of anything from a single letter or
numeral to a long sequence of words.
• Business Names: FORD, MICROSOFT, MCDONALD’S
• Brand Names: MUSTANG, WINDOWS, BIG MAC
• Slogans: “JUST DO IT.”
• Tip: Word marks are typically expressed in ALL CAPS.

18
Types of Trademarks: Design Marks
• Design marks can be logos, character designs, or any other type of
image that identifies the source of goods or services.
• Some design marks also include text, numerals, or other
characters.

19
Types of Trademarks: Nontraditional Trademarks
• Nontraditional trademarks can be colors, sounds, or anything else that is a source
identifier.
• Color trademarks include UPS’ brown, Tiffany’s blue, and T-Mobile’s magenta –
note that the protection for those colors extends only to similar goods and services;
they do not “own” the colors in any other context.
• Sound trademarks include Yahoo’s “Yodel,” NBC’s “Chimes,” and THX’s “Deep
Note.”
• The mark must not be a functional feature of the good or service. Sometimes it is
difficult to prove non-functionality. For more information on the issue of
“functionality,” go to:
http://lizerbramlaw.com/blog/2012/05/16/hershey-bars-and-functional-trademarks/

20
Trade Dress
• Trade Dress protection attaches to the overall look and feel of a business or product.
• Common examples of trade dress include the distinctive appearance of certain chain
restaurants (McDonald’s) or retail stores (Apple stores). Trade dress can also refer to a
product’s distinctive packaging (although it must be non-functional), or unique elements
associated with the product’s design.
• A claim of trade dress infringement requires the following elements to be proven:
• The trade dress is non-functional – competitors do not need to use the trade dress in
order to compete effectively.
• The trade dress is either inherently distinctive or has acquired distinctiveness over time.
• The alleged infringement creates a likelihood of confusion on the part of customers.

21
What’s the Difference Between a Trademark and a
Service Mark?
• In some cases, the term “service mark” is used to identify and
distinguish the source of a service rather than a product.
• However, the terms “service mark” and “trademark” are often
used interchangeably.
• When in doubt, simply use the word “trademark” when referring to
a product or service.

22
How are Trademark Rights Acquired?
• Trademark rights are acquired through use of the
mark in commerce.
• If you use a mark in commerce to identify your goods
or services, you may acquire common law rights in that mark even
if you never register the mark with any state or Federal agency.
• However, without registration, those rights may be difficult to
prove, or may be limited geographically or in other ways.

23
Trademark Registration
• In the United States, the owner of a trademark used
in interstate commerce has the opportunity to register
the mark with the United States Patent and
Trademark Office (USPTO).
• Owning a federal trademark registration provides several
advantages, including creating a legal record of ownership and the
date of filing, providing the opportunity to protect your rights in
Federal court, and the opportunity to pursue to substantial money
damages in the case of infringement.
• Although most contemporary trademark registrations are Federal,
there are also State trademark offices that are useful in some
circumstances.

24
The ® and ™ Symbols
• ™ is the common law trademark symbol. It can be attached
to any mark where the owner is claiming trademark rights in
good faith.
• ® may only be used when the USPTO has issued an active
Certificate of Registration.
• Use of ® without a registration is fraud under Federal law.

25
How Long Do Trademark Rights Last?
• Once a trademark has been used in commerce, as long as the
owner continues to use it, the legal rights can last forever.
• Some trademarks have been in continuous use for hundreds of
years.
• Trademark rights can be lost or “abandoned” when they are not
used in commerce for a period of time. The common rule of thumb
is that abandonment occurs after three years of nonuse –
however, there are exceptions. Never assume that a mark has
been abandoned (and is therefore free to use) without conducting
thorough due diligence.

26
Next: What Is a Copyright?
 The U.S. Copyright Office defines copyright as “a form of protection grounded in
the U.S. Constitution and granted by law for original works of authorship fixed in a
tangible medium of expression.”
 Copyright can be understood as the right to control who makes copies of your
work.
 The Copyright Clause of the U.S. Constitution (Article I,
Section 8, Clause 8) empowers Congress “To promote the
Progress of Science and useful Arts, by securing for limited
Times to Authors and Inventors the exclusive Right to their
respective Writings and Discoveries.”
 Congress created several copyright laws. As of January 1, 1978, copyright law in
the U.S. is governed by the Copyright Act of 1976, as amended.

27
What Types of Things are Covered by Copyright Law?
Under Section 102 of the Copyright Act, the following 8 categories of works are
covered:
1. Literary works,
2. Musical works, including any accompanying words,
3. Dramatic works, including any accompanying music,
4. Pantomimes and choreographic works,
5. Pictorial, graphic, and sculptural works,
6. Motion pictures and other audiovisual works,
7. Sound recordings, and
8. Architectural works (as of 1990).

28
What is Not Protected by Copyright?
• The big one: Ideas
• Facts
• Things not fixed in a tangible form – ideas in your head or things
spoken out loud and not recorded.
• Titles, names, short phrases, slogans.
• Listings of ingredients, recipes.
• Works of common information with no original authorship
• Inventions

29
What Rights Are Included in a Copyright?
 The Copyright Act grants six exclusive rights to the holder of a copyright:
1. The right to produce copies or reproductions of the work and to sell those
copies (including, typically, electronic copies).
2. The right to import or export the work.
3. The right to create derivative works (works that adapt the original work).
4. The right to perform or display the work publicly.
5. The right to sell or assign these rights to others.
6. The right to transmit or display the work by radio or video.
 Only the copyright holder (or holders) enjoy those rights. They can
therefore prevent others from doing anything on that list without
permission.

30
How and When Is a Copyright Acquired?
 Copyright applies the moment a copyrightable work “is created and fixed
in a tangible form that it is perceptible either directly or with the aid of a
machine or device.”
 That means that as soon as you create something that’s copyrightable –
and it’s in a form that someone else could perceive (i.e. it’s out of your
head) – you own the copyright.
 Technically, no further steps need to be taken. However, as we’ll see
shortly, copyright registration allows one to take advantage of the rights
embodied in copyright and grants certain additional privileges.

31
Copyright Registration
 The US Copyright Office allows for the registration of works subject to copyright.
This provides public notice of your copyright claim.
 Several advantages encourage copyright owners to register their copyrightable
works, including:
 Registration establishes a public record of the copyright claim.
 Registration allows you to file a copyright infringement lawsuit.
 Registration may establish prima facie evidence in court of the validity of the copyright
and of the facts stated in the certificate.
 Statutory damages and attorney’s fees may be available to the registered copyright owner
in court actions. Only actual damages and profits are available to the copyright owner who
doesn’t register.
 Registration allows the owner of the copyright to record the registration with the U.S.
Customs Service for protection against importation of infringing copies.

32
How Long Does Copyright Last?
 Unlike trademarks, copyrights don’t last forever.
 For works created by individuals, the current term
is the life of the author plus 70 years.
 For works created by corporations, the term can
be either 95 or 120 years, depending on when the
work is published.
 Once the term has expired, the copyrightable work
is in the public domain.

33
The Public Domain? What’s That?
 The public domain refers to works that are not subject
to any copyright protection. Generally speaking, a work
in the public domain is available for anyone to use.
 Careful: It can be very difficult to determine if a work is
in the public domain; lengthy and expensive court cases often deal with
this very issue.
 Another word of caution – a work in the public domain may still contain
protected trademarks. So if an old Mickey Mouse cartoon was to fall into
the public domain, you may be able to make a copy of that cartoon, but
you would not necessarily be able to reproduce the Disney logo.

34
How Do I Use the © Symbol & the Date?
 You don’t need a Federal Copyright Registration to use the
© copyright symbol.
 Any time you believe in good faith that you own the
copyright in a work – for example, if you created it or
acquired the rights through a license, assignment, or other
means – you can use the symbol.
 The preferred format is:
© Date Your Name/Name of Your Company

35
Pulling it All Together
 Apply for patents to protect functional elements
and ornamental design.
 Apply for trademarks to protect branding.
 Register copyrights to protect written copy,
artwork, advertising.
 Leverage trade secret law to protect things that
can’t be patented (or you haven’t patented yet.)
 Take advantage of contract law to protect all of the above.

36
Prepared and Presented by:
David Lizerbram, Esq.
David Lizerbram & Associates®
David@LizerbramLaw.com
www.LizerbramLaw.com
Twitter: @LizerbramLaw
3180 University Avenue, Suite 260
San Diego, California 92104

37
FINAL NOTE: THIS PRESENTATION IS NOT LEGAL ADVICE
I am not your attorney. Nothing in this presentation should be
taken as legal advice. This is simply general information that
may be helpful. Consult an attorney if you have any specific
questions or concerns.

Intellectual Property for Businesses

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