Legal work for your business with Richard Idell at the 2014 Sonoma Valley Cheese Conference

1. Sonoma Valley Cheese ConferenceSonoma Valley Cheese Conference
February 24, 2014February 24, 2014
Richard J. IdellRichard J. Idell
Yumi NamYumi Nam
Idell & Seitel LLPIdell & Seitel LLP
© 2014 Richard J. Idell and Yumi Nam

2. 
 Trademark
 Trade Dress
 Copyright
 Trade Secret
 Patent
Intellectual Property Rights

3. 
 Trademark protects words, phrases, symbols, or
designs identifying the source of the goods or
services of one party and distinguishing them from
those of others
 Trade Dress protects the total image or overall
appearance of a business or product
 Copyright protects original works of authorship
 Trade Secrets protect anything that a company or
individual owns that they want to keep secret
because it gives them or their company value
 Patent protects inventions or discoveries
Overview of Intellectual
Property

4. 
 Any word, name, symbol or device, or
any combination thereof, that is used
by a person to identify and distinguish
his or her goods or services from those
manufactured, offered or sold by others
and to indicate the source of the goods
or services
What is a Trademark?

5. 
 Identify Source: To designate
goods or services as the product or
services of a particular trader, and
to protect that trader’s goodwill
against the sale of another’s
products as the trader’s own
Primary Function of a
Trademark

6. 
 While your application is still pending, and before
registration is granted, you may place a TM
(trademark) or SM (service mark) next to the mark
 Once a mark has been registered, a notice in one of
the following forms should be used instead of the TM
or SM:
 Registered in United States Patent and Trademark
Office
 Reg. U.S. Pat. & Tm. Office
 ®
Trademark Notice

7. 
Trademark Continuum
Coined/Fanciful/
Arbitrary
• Kodak (film)
• Pepsi (cola)
• Apple (computers)
• Bicycle (playing cards)
• Starbucks (coffee)
Generic
• Aspirin
• Cellophane
• Videotape
• Laundromat
• Dry Ice
• Trampoline
•Bond-Ost
(Swedish for
peasant’s
cheese)
Suggestive
• 7-Eleven (hours)
• Skinvisible (medical tape)
• Jaguar (speed)
• Coppertone (sunscreen)
Descriptive
• Baby Brie (small
size cheese)
• All Bran (cereal)
• Apple Pie
(potpourri)
•Queso Quesadilla
Supreme (Cheese)

8. 
 A likelihood of confusion exists
when consumers are likely to
assume that a product or service
has a source other than its actual
source because of similarities
between the two sources’ marks or
marketing techniques
Likelihood of Confusion

9. 
 Merely Descriptive: Immediately conveys to one
seeing or hearing it knowledge of the nature,
ingredients, quality, characteristic, function, feature,
purpose, or use of the specified goods or services
 Merely Deceptively Misdescriptive: Merely
descriptive of the nature, ingredients, quality,
characteristic, function, feature, purpose, or use of
the specified goods or services – but factually false
when applied to the goods or services
Descriptiveness

10. 
 Primarily geographically descriptive of the goods or
services
 the primary significance of the mark is a generally known
geographic location;
 the goods or services originate in the place identified in the
mark; and
 purchasers would be likely to believe that the goods or
services originate in the geographic place identified in the
mark.
Geographically Descriptive

11. 
 Primarily geographically deceptively misdescriptive of
the goods or services
 the primary significance of the mark is a generally known
geographic location;
 the goods or services do NOT originate in the place
identified in the mark;
 purchasers would be likely to believe that the goods or
services originate in the geographic place identified in the
mark; and
 the misrepresentation is a material factor in a significant
portion of the relevant consumer’s decision to buy the
goods or use the services.
Geographically Deceptively
Misdescriptive

12. 
 A mark consisting of a foreign word or words is
(generally) translated into English before USPTO
protection and/or registration analysis.
 The foreign equivalent of a generic, merely descriptive or
deceptively misdescriptive English word is no more
protectible or registrable than the English word itself.
 A foreign word and the English equivalent, or two foreign
words, may be held to be confusingly similar.
Doctrine of Foreign
Equivalents

13. 
 A mark that is primarily merely a
surname is not registrable on the
Principal Register absent a showing of
acquired distinctiveness
Surnames

14. 
 NEVER:
 Use in the plural unless the mark itself is plural
 Use in the possessive
 Alter or append the mark in any way: no hyphens, slashes,
prefixes, suffixes, etc.
 Abbreviate the mark
 Use the mark with goods/services not covered by the
application or registration
 Make puns on the mark or portray it in a negative light
 Abandon your mark
What Not to Do With Your
Trademark

15. 
 Allows a class of producers of goods to maintain
standards and use the mark to collectively advertise
an element of the goods
 Example:
 Certification mark for “processed dairy products
-namely, milk, sour cream, cheese, and other cow’s
milk dairy products”
Certification Mark

16. 
 Obtain a comprehensive trademark search
 To register:
 Submit a completed application form
 Submit a nonrefundable filing fee
 $325 per International Class
 Submit evidence of use in interstate commerce
Registration of Trademark

17. 
 Trademark can last forever so long
as not abandoned and does not
become generic
 Periodic maintenance fees and
filings required
Duration of Trademark

18. 
 The total image and overall appearance of a business
or product
 May include the size, shape, color, texture, graphics
or even particular sales techniques
 Examples:
 the shape of the Coca Cola bottle
 the shape of a Taco Bell restaurant
 bite-sized, cheese flavored, goldfish shaped crackers
What is Trade Dress?

19. 
 Must be distinctive
 Inherently distinctive
 OR
 Secondary meaning
 Must NOT be functional
Elements for Trade Dress
Protection

20. 
 Original creative works of authorship that are fixed
in a tangible medium of expression
 Examples:
 literary, dramatic, musical, and artistic works, such as
poetry, novels, movies, songs, computer software, and
architecture
 The work must be fixed
 Copyright protects the expression of ideas, but not
the ideas themselves
What is a Copyright?

21. 
 The author of the work
 If joint authors, the coauthors all equally own the work
 Work for Hire:
 works prepared by an employee within the scope and course of
his/her employment) are owned by the employer
 works prepared by independent contractor: (1) specifically ordered or
commissioned (2) for use in one of 9 statutory categories and (3) must
be in writing - owned by hiring party
Who Owns the Copyright?

22. 
 Copyright does not protect facts,
ideas, systems, or methods of
operation, although it may protect
the way these things are expressed
 Does not protect any functional
elements
Not Protected by Copyright

23. 
 Works and short phrases, such as titles and slogans
 Mere listing of ingredients or contents (e.g., recipe)
 Facts
 Blank forms, such as time cards, graph paper, order
forms, etc.
 Mere variations of typographic ornamentation,
lettering or coloring
 Works consisting entirely of information that is
common property and containing no original
authorship (e.g., calendars, tape measures)
Examples of Works Not
Copyrightable

24. 
 Copyright vests as soon as you create an original work
and fix it in a tangible form – you do not need to register
it for protection. BUT, you cannot sue for infringement if
you have not registered
 To register:
 Submit a completed application form
 Submit a nonrefundable filing fee
 $35 if you register online or
 $50 if you register using paper application
 Submit a nonreturnable copy or copies of the work to be
registered
Registration of Copyright

25. 
 In general, copyrights last the life of the original
author plus an additional 70 years
 For joint works, 70 years from the last surviving
author’s death
 For corporations, copyrights last 100 years from
creation
 For anonymous and pseudonymous works, and
works for hire, copyrights last 95 years from the
work’s first publication, or 120 years from creation,
whichever is shorter
Duration of Copyright

26. 
 Reproduce the copyrighted work
 Prepare derivative works (a work based on 1 or more
existing works)
 Distribute the copyrighted work
 Perform the copyrighted work for the public
 Display the copyrighted work to the public
 For sound recordings, perform the work by means of
digital audio transmission
What Can You Do With a
Copyright?

27. 
 Notice includes:
 ©, the date of first publication, the name of the owner
of the copyright
 Example: © 2012 Richard J. Idell and Elizabeth J. Rest
Copyright Notice

28. 
 Anything that a company or individual owns that is intellectual
property that they don’t want others to have access to and
which gives them or their company value
 Information, including a formula, pattern, compilation,
program, device, method, technique or process that:
 Derives independent economic value, actual or potential,
from not being generally known to the public or to other
persons who can obtain economic value from its disclosure
or use and is the subject of reasonable efforts to maintain its
secrecy
What is a Trade Secret?

29. 
 Formulae (e.g., the formula for making Coca Cola)
 Business methods
 Customer Information
 Client lists
 Issue can arise with departing employees and
competitors or when working on a joint venture or
other business relationship
 Use of non-disclosure agreements (“NDA”)
Examples of Trade Secrets

30. 
 You may use your competitor’s secret
process if you discover it by reverse
engineering of the finished product and
you obtained the finished product
lawfully
When Can You Lawfully Use
a Trade Secret?

31.  A property right granted to an inventor to exclude others from making,
using, offering for sale, or selling the invention throughout the United
States or importing the invention into the United States for a limited time
in exchange for public disclosure of the invention when the patent is
granted
 A process, machine, article of manufacture or composition of matter, or an
improvement of any of the foregoing
 MUST BE:
 New / Novel
 Useful (its utility)
 Non-obvious
 Adequately described so someone with ordinary skill in the art can make or use
the patented item/device/process/etc.
What is a Patent?

32. 
 It is not a monopoly
 It prevents others from doing
something, but it does not give you the
right to do anything, except to prevent
others from practicing what is claimed
in the patent
What a Patent is Not

33. 
 Laws of nature
 Physical phenomena
 Abstract ideas
 Literary, dramatic, musical, and artistic works (these
can be Copyright protected)
 Inventions which are:
 Not useful; or
 Offensive to public morality
What Can’t You Patent

34. 
 For applications filed on or after June 8, 1995, utility and
plant patents are granted for a term which begins with the
date of the grant and usually ends 20 years from the date
you first applied for the patent subject to the payment of
appropriate maintenance fees. Design patents last 14 years
from the date you are granted the patent
 Note: Patents in force on June 8, 1995, and patents issued
thereafter on applications filed prior to June 8, 1995,
automatically have a term that is the greater of the 20 year
term discussed above or 17 years from the patent grant
Patent Duration

35. 
Richard J. Idell
Richard.Idell@idellseitel.com
Yumi Nam
Yumi.Nam@idellseitel.com
IDELL & SEITEL LLP
MERCHANTS EXCHANGE BUILDING
465 CALIFORNIA STREET, SUITE 300
SAN FRANCISCO, CALIFORNIA 94104
TEL: (415) 986-2400
FAX: (415) 392-9259
www.idellseitel.com
THANK YOU!