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Trademarks and Patents

By Francis G. Pennarola, Esq.

 

As promised, this column is devoted to Trademarks and Patents. Since most of you are far more likely to have a need to know about trademarks, most of the ink will be devoted to this topic.

TRADEMARKS:

What is a trademark? A trademark is anything that creates "a separate and distinct commercial impression, which identifies the source of merchandise or services to customers." The Rock and Roll Hall of Fame & Museum, Inc. vs. Gentile Productions, 134 F.3rd 749 (6 cer. 1998). A trademark identifies a particular source, not a particular product. We all expect that the Coca Cola soda we buy today is made by the same company as the Coca Cola we bought last week or last year and that, because the source is the same, it will have the same taste, fizz, etc., as the Coke we bought before.

What types of words or symbols can be trademarks? The Lanham Act (15 U.S.C. § 1051 et seq.) defines a "Trademark" as: any word, name, symbol or device, or a combination thereof--(1) used by a person, or (2) which person has a bona fide intention to use in commerce and applies to register on the principal register established by this Act, to identify and distinguish his or her goods, including a unique product, from those manufactured or sold by others and to indicate the source of the goods, even if that source is unknown.

Words are by far the most common trademarks; e.g. (for example), Nike, Nintendo, Harry Potter. They may also be slogans; e.g. Just do it, The King Of Beers.
Symbols can be trademarks; e.g. the Nike Swoosh, the Shell Oil Shell, McDonald’s Golden Arches, etc.

Many trademarks are combinations of words and devices. NBC and the peacock design and CBS and the eye design are two familiar examples.

Trademarks can be essential to "branding" a product or service. If you provide high quality product or services, or offer extra value, and can associate those qualities with a distinctive symbol, it can greatly simplify the marketing of those goods and services.

How do you get a trademark? A trademark is established by actual use in commerce, or the intent to use a particular mark registered with the U. S. Patent & Trademark Office. The website, www.uspto.gov, contains a wealth of information about trademarks and the registration process. There is also a searchable database of federally registered trademarks. A search of only federal records is not enough, because it will not show Common Law trademark uses. A full search includes Federal, State, Common Law and Internet-Domain names. There are commercial search firms available. Certainly before investing a substantial sum in rolling out a major new product or service, a trademark search is an important step.

Actual use is important to having a protectable trademark. You can’t simply create a logo and store it in your safety deposit box and expect it to be protected. If I come up with the same design and actually start using it in commerce, my rights will be superior to yours.

Actions can be brought to stop trademark infringement or dilution. Infringement is a conflicting use. If I use a logo similar to the Nike Swoosh to sell sneakers or any other sporting goods, I can be stopped. Dilution is a less direct misuse, but a potentially serious one. Dilution occurs when a trademark is used in an inappropriate way. For example, Coca Cola has a strong association in the soft drink industry and is heavily marketed to the youth market. If Coors came out with a new beer and used a logo similar to the Coke logo, that would likely have a negative impact on Coke. A more extreme example might be the use of the Nike trademark, Just Do It, to sell condoms.
Valuable trademarks need to be protected. The time, effort and money spent building a brand is an important business asset.

PATENTS:

A patent for an invention is the grant of a property right to an inventor, issued by the United States Government, to give the inventor exclusive rights to the invention. Historically, patents were issued for tangible things; e.g. drugs and buggy whips. More recently, patents have been issued on business methods; e.g. Amazon.com’s "One Click Shopping." These business method patents have created quite a firestorm, especially in the Internet culture, which flourishes on the free exchange and flow of ideas.

Obtaining a patent is a fairly lengthy and involved process. You can obtain a protectable copyright in a software program by filing an application with the Library of Congress and paying $30.00. A patent application for the software has to be prosecuted in Washington D.C. and can take years and thousands of dollars in legal fees to obtain. Which is better to have? A patent likely has far more value as an asset, but is subject to far greater scrutiny than a copyright filing. People often chose not to pursue either method, but to secure the value of the work though trade secret protection. Given the half life of much software, this is often the best approach.

Intellectual property is an important asset. My next column will focus on methods that businesses and consultants can use to protect themselves.


Francis G. Pennarola is a member of the law firm of Chipman, Mazzucco, Land & Pennarola, LLC in Danbury. He regularly represents clients in the IT, website development and advertising fields.

Copyright 2001 Francis G. Pennarola

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