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Fundamentals of Intellectual Property Law
T.J. Romano
Intellectual Property Attorney
Kolisch Hartwell, P.C.
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Overview
• Primary areas of intellectual property law
Trademarks
Patents
Trade Secrets
Copyrights
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TRADEMARKS
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The Banana Bike
Joey Hiprider designs himself a new bike in 2010, forms Shrek Bicycles, Inc. in Oregon, and immediately begins developing a new bike called BANANA BIKE.
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The Banana BikePrior to launching Shrek, Hiprider registered the business name “Shrek
Bicycles” with the Oregon Secretary of State. He also obtained the following internet domain names, none of which were previously owned and all of which are now directed to the new Shrek Bicycles website:
www.shrek.comwww.shrekbicycle.comwww.shrekbicycles.comwww.shrekbike.comwww.shrekbikes.com
Has Hiprider done enough to be reasonably sure that his company will
not run into any problems based on the choice of “Shrek Bicycles” as its brand name?
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The Banana Bike
Answer: NO
Trademark rights are obtained by the first to use a particular mark for goods/services in a particular geographic region.
Therefore, others could easily still have trademark rights in the name “Shrek Bicycles.” For example:
•Another company might be using the exact same name in another part of the country for bicycles.
•Another company could have obtained a federal trademark registration on the exact same name for bicycles.
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What is a Trademark?
Marks distinguish the source of products or services.
• Right to exclude others from using a confusingly similar mark for similar products or services.
• For famous marks, right to exclude others from using a confusingly similar mark potentially for any products or services.
A “trademark” distinguishes products and a “service mark” distinguishes services, though the term “trademark” commonly used for both.
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What Can Serve as a Trademark?
Anything capable of distinguishing the source of products or services.
Words, Names, Slogans Symbols, Logos, Shapes Sounds, Smells Product Configuration Trade Dress, Packaging Any combination of the above
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Examples of Trademarks
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Examples of Trademarks
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Examples of Trademarks
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Examples of Trademarks
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U.S. Trademark Rights – Dual System
Common Law: scope of rights limited to areas of use, and possibly zone of natural expansion based on use.
Federal Registration: confer rights throughout United States, even if use limited to one state or one area of country.
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How to Select a Mark
Two main considerations:• A distinctive element• Cannot cause confusion with
existing marks (so-called “likelihood of confusion” test)
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Distinctiveness Spectrum
Never YesSometimes Yes
Generic Descriptive Suggestive Arbitrary/Fanciful
Trademark?
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Can “Apple” be a Trademark?
No• Common commercial name for
the goods• Does not distinguish goods from
others in marketplace
Yes• Identifies goods• Distinguishes goods from
others in marketplace
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Likelihood of Confusion Factors
1. Similarity of the marks2. Strength of the mark3. Proximity of the goods / services4. Evidence of actual confusion5. Marketing channels6. Degree of care of purchaser7. Defendant's intent in selecting the mark8. Likelihood of expansion of the product linesAMF, Inc v Sleekcraft Boats, 599 F.2d 341 (9th Cir. 1979)
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The Banana Bike
Is this a problem for Shrek Bicycles?
What about this? Or this?
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Trademark Considerations
• Conduct trademark searches Ensure not violating third party rights Determine if can register mark
• File trademark applications early• Present the mark as a mark
Set marks apart from regular text Follow marks with a trademark symbol (TM, ®) Marks always are adjectives, never nouns
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PATENTS
Our inventions mirror our secret wishes.- Lawrence George Durrell
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The Banana Bike
BANANA BIKE uses a banana shaped frame that is more aerodynamic than previous frames, and that has a very distinctive look. It occurs to Hiprider that it would be nice to have a patent on the BANANA BIKE.
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What is a Patent?
A right to exclude others from• making, • using,• selling,• offering to sell, or• importing
a “patented invention.”
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Types of Patents
• Utility Patents Protects how an invention works
• Design Patents Protects how an invention looks
• Plant Patents Protects new varieties of plants
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What can be Patented?• Devices• Compositions of Matter• Processes• Articles of Manufacturing• Methods of Use• Software• Business Methods• Ornamental features (design patents)
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What is a Utility Patent?
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What is a Patented Invention?
The right to exclude is defined by the patent claims:
U.S. utility patents remain in force up to 20 years after application filing date.
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What is a Design Patent?
The term is 14 years from the date the patent is granted.
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Requirements for Patents
• Useful
• Novel (New)
• Nonobvious
• Invented by you
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Is it Useful, Novel, and Nonobvious?
+ = ?
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Patent Infringement
• Obtaining a patent grants only a right to exclude and not a right to use
• A patented article may infringe another’s patent
Client Patent Claim: “a chair with wheels.”Their Patent Claim: “a chair.”
Client selling its “patented” chair with wheels infringes Their Patent.
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Patent Considerations
• Conduct patentability searches• Consider conducting clearance searches
Entering new technology area Concerned with particular competitor
• File patent application before public disclosure One year grace period in North America No or limited grace periods in most other countries
• No patent rights without a patent
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Patent Considerations – Patent Marking
• Tension between marking and not marking. Must mark patented products or lose right to
infringement damages. But liability for marking “unpatented” articles for
purposes of deceiving the public. Products marked with expired numbers are “unpatented.”
• Law changed in 2009, liability for false marking now $500 per article.
• 100’s of qui tam relator false marking suits filed in 2010.• Congress may act to change law to stem lawsuits.
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Patent Considerations – Patent MarkingHerengracht Group LLC v. WM. Wrigley Jr. Co., 1:10-cv-21784-ASG (S.D. Florida)
If liable, damages up to $500 for each pack of falsely marked gum.
Expired patent number
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The Banana Bike
Ideas about what is patentable?
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TRADE SECRETS
SHREK BICYCLES, INC.
CORPORATE PLANS
CONFIDENTIAL
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What is a Trade Secret?
• Economically valuable because it is secret Not generally known Not easy to figure out
• Protected by reasonable efforts Nondisclosure agreements / exit interviews Limited access to unauthorized persons
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What is a Trade Secret?
Protects against acquisition or disclosure by “improper means”
• Theft• Bribery• Misrepresentation• Breach of a duty to maintain secrecy• Espionage
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Examples of Trade Secrets
• Drawings• Cost Data• Customer Lists• Compositions• Patterns• Compilations
• Programs• Devices• Techniques• Processes• Methods of
Assembly• Other Methods
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Trade Secrets – Specific Examples
KFC’s 11 Secret Herbs and Spices
Coca-Cola’s Secret Soft Drink Formula
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Trade Secrets Considerations
• May last forever but all value may be lost at any time Reverse engineering Accidental disclosure Independent development
• Consider patent protection if available
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COPYRIGHTS
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What is a Copyright?
A right to exclude others from “copying” an “original work of authorship”
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Original Works of Authorship
• Literary works• Pictorial, Graphic, and Sculptural works• Audiovisual works• Musical works• Dramatic works• Sound recordings• Architectural works• Choreographic works
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Original Works of Authorship
Business-related examples:• Software• Product manuals and brochures• Website design and content• Training videos• Presentations
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Types of Copyrights
• Automatic Rights Original work of authorship Fixed on a tangible medium
• Registered Rights Registered with a government entity
- U.S. Copyright Office Life of author plus 70 years Statutory damages
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How is a Copyright Infringed?
• Reproducing the copyrighted work• Preparing derivative works• Distributing copies• Performing the copyrighted work publicly• Displaying the copyrighted work publicly
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Copyright Considerations
• File copyright applications early• Use copyright notice• Have employees and contractors sign
agreements that cover IP Independent contractors own copyrights in their work
unless have agreement to the contrary
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FOREIGN IP RIGHTS
• Think Global!• U.S. rights are limited to the United States• Each country has its own system for
protecting intellectual property• Selected International IP Treaties:
Patent Cooperation Treaty (PCT) Paris Convention and Madrid Protocol for Trademarks Berne Convention for Copyrights
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T.J. Romano Intellectual Property Attorney
Kolisch Hartwell, P.C.
520 SW Yamhill Street, Suite 200
Portland, Oregon 97204
(503) 224–6655