Chapter 8

Statutory Protection of Trademarks

The Lanham Act of 1946 was enacted to protect manufacturers from losing business to rival companies that use similar trademarks.

Trademark

A distinctive word, symbol, sound, or design that identifies the manufacturer as the source of particular goods and distinguishes its products from those made or sold by others. A business could lead consumers to believe that it's goods were made by the other company.

Patents

A patent gives an inventor the exclusive right to make, use, and sell a product for 20 years. o Patents for designs are for 14 years. o The America Invents Acts. The first person to file an application receives protection. There is a 9 month limit for challenging a patent.

Intellectual Property

A property that results from the intellectual and creative process. Although ideas are intangible, they are some of the most important assets of companies and therefore need to be protected.

Trade Names

A tradename is a name that a business uses to identify itself and its brand. A trade name that is the same as the company's trademarked product is protected. Unique trade names are protected under the common law.

Licensing

An agreement by the owner of intellectual property to permit another to use a trademark, copyright, patent, or trade secret for certain limited purposes. The party that owns the intellectual property rights and issues the license is the licensor. The party obtaining the license is the licensee.

Madrid Protocol

An international treaty signed by 68 countries. A trademark is recognized by all member nations.

Patentable

An invention must be novel, useful, and not obvious in light of current technology. Almost anything is patentable, except the laws of nature, natural phenomena, and abstract ideas.

TRIPS Agreement

Forbids member countries from discriminating against foreign owners' intellectual rights claims.

Distinctiveness of the Mark

Only those trademarks that are deemed sufficiently distinctive from all competing trademarks will be protected. o Fanciful, arbitrary, or suggestive trademarks are generally considered to be the most distinctive (strongest) o Generic terms receive no protection. A trademark may not be derogatory to a person, institution, belief, or national symbol.

Patent Infringement

Making, using or selling another's patented product without permission. May also occur even though not all parts of an invention are copied. No infringement occurs under U.S law when a patented product is made and sold in another country. Remedies: Injunctions and damages

Anti-Counterfeiting Trade Agreement (ACTA)

Member nations are required to have border measures to prevent the import and export of counterfeit goods.

Trademark dilution

Occurs when someone owns a famous distinctive mark, the defendant uses a similar mark that leads to an association between

Copyright Infringement

Occurs whenever the form or expression of an idea is copied. The reproduction does not have to be exactly the same as the original. If a substantial part of the original is reproduced, infringement has occurred. Remedies- Damages and/or criminal penalties.

Valid Contract's 5 steps

Offer, acceptance, consideration, exchange of value, doing something legal, and valid capacity.

The First Sale Doctrine

Once a copyright owner sells or gives away a copy of a work, the owner no longer control of that copy

Protected Expression

Protection is automatic Categories o Literary Works, Musical works and accompanying words, Dramatic works and accompanying music, pantomimes and choreographic works...

Berne Convention

Recognizes book copyright protection across all countries that participate (163)

Trademark Registration

Registered with the government. Can be registered if currently in commerce or will be within 6 months (extendable to 30 months). The registrant is also allowed to use the symbol @R to indicate that the mark has been registered

Copyright Protection for Software

The Computer Software Copyright Act (1980) o The code, the overall structure, sequence, and organization of a program are protected. o The "look and feel" of programs are generally not protected.

Searchable Patent Databases

The U.S and European patent offices provide searchable databases for locating patents. Because patents are valuable assets, businesses may need to perform searches to list assets. Patent searches can also study trends in an industry.

Counterfeit Goods

The U.S cannot prosecute foreign counterfeiters since our laws do not apply. The Stop Counterfeiting in Manufactured Goods Act (SCMGA) o Makes it a crime to traffic in counterfeit goods or services. o Penalties include fines and/or imprisonment

Collective mark

Used by members of an organization to certify the goods or services.

Certification Mark

Used by persons other than the owner to certify the region, materials, mode of manufacture, quality, or other characteristic of specific goods or services.

Service Mark

Used to distinguish the services (rather than the products) of one person or company from those of another.

Trademark Infringement

Whenever someone else uses a trademark in its entirety or copies it to a substantial degree, intentionally or unintentionally, the trademark has been infringed. The remedy most commonly granted for trademark infringement is an injunction to prevent further infringement.

copyright

a property right granted to the author or originator of certain literary or artistic productions. o Works created after January 1, 1978, are given protection for the life of the author plus 70 years. o Copyrights owned by publishing companies expire 95 years from the date of publication or 120 years from the date of creation whichever is first.

Trade Secret

is a formula, device, idea, process, or other information used in a business that gives the owner a competitive advantage in the marketplace. Extends to both the idea and the expression (unlike copyrights and trademarks)

Copyright owners are protected against

o Reproduction of the work o Development of derivative works o Distribution of the work o Public display of the work

Trade Dress

refers to the image and overall appearance of a product. Protected to the same degree as a trademark