Business Law - Ch 11

fanciful mark

A coined term having no prior meaning until used as a trademark in connection with a particular product.

work made for hire

A copyrightable work created by an employee within the scope of his or her employment, or a work in one of nine listed categories that is specially commissioned through a signed writing that states that the work is a "work made for hire."

secondary meaning

A descriptive trademark becomes protectable by acquiring secondary meaning, or sufficient consumer recognition through sufficient use and/or advertising of the goods under the mark.

inevitable disclosure doctrine

A doctrine that permits a former employer to prevent an employee from working for a competitor when the new position will require the employee to disclose or use the trade secrets of the former employer.

Patent

A government-granted right to exclude others for a stated period of time (usually 20 years) from making, using, or selling within the government's jurisdiction an invention that is the subject of the patent.

service mark

A legally protected identifying mark connected with services.

trade dress

A manifestation of trademark law, the concept of trade dress is to protect the overall look of a product as opposed to just a particular design.

certification mark

A mark placed on a product or used in connection with a service that indicates that the product or service in question has met the standards of safety or quality that have been created and advertised by the certifier.

inducement to infringe

A party's active encouragement of another party to infringe a patent or copyright. Applies to those who supply a product or service that has substantial non-infringing uses if the supplier also encourages that product or service to be used in an infringing fashion.

plant patent

A patent issued for new strains of asexually reproducing plants.

design patent

A patent that protects any novel, original, and ornamental design for an article of manufacture.

utility patent

A patent that protects any novel, useful, and nonobvious process, machine, manufacture, or composition of matter; or any novel, useful, and nonobvious improvement of such process, machine, manufacture, or composition of matter.

arbitrary mark

A real word whose ordinary meaning has nothing to do with the trademarked product.

counterfeit mark

A spurious trademark (1) that is used in combination with trafficking in goods or services, (2) that is identical to, or substantially indistinguishable from, a registered trademark, and (3) the use of which is likely to cause confusion or mistake or to deceive; or a spurious designation that is identical with, or substantially indistinguishable from, the holder of the right to use the designation.

trade name

A trade name or a corporate name identifies and symbolizes a business as a whole, as opposed to a trademark, which is used to identify and distinguish the various products and services sold by the business.

suggestive mark

A trademark that suggests something about a product without directly describing it.

Trademark

A word or symbol used on goods or with services that indicates their origin.

first sale doctrine (patents)

An authorized sale of patented articles exhausts the patent holder's exclusive rights as to that article, to the extent that the article embodies the invention. The patent holder is then precluded from obtaining any further royalties or imposing any further restrictions on the article or its subsequent sale or transfer.

novel (patents)

An invention is novel if it was not anticipated; i.e., if it was not previously known or used by others in the United States and was not previously patented or described in a printed publication in any country.

statutory bar

An inventor is denied patent protection in the event that prior to one year before the inventor's filing, the invention was (1) patented; (2) publicly used or sold in the United States; or (3) described in a printed publication in the United States or a foreign country.

intellectual property

Any product or result of a mental process that is given legal protection against unauthorized use.

know-how

Detailed information on how to make or do something.

prior art

Developments or pre-existing art that relates to a claimed invention.

Blurring

Dilution of a famous trademark that occurs when a non-famous mark reduces the strong association between the owner of the famous mark and its products.

Tarnishment

Dilution of a famous trademark that occurs when use of the famous mark in connection with a particular category of goods or goods of an inferior quality reduces the positive image associated with the products bearing the famous mark.

best mode

The best way the inventor knows of making an invention at the time of filing the patent application.

Cybersquatting

The registration of a domain name that is confusingly similar or identical to a protected trademark, where the person registering the domain name has no legitimate interest in that particular domain name and registers and uses it in bad faith.

derivative works

Works based upon a copyrighted work.

registered mask work

Highly detailed transparencies that represent the topological layout of semiconductor chips.

first sale doctrine (copyrights)

Codified in Section 109(a) of the Copyright Act, a copyright owner has exhausted its statutory right to control distribution of a copyrighted item once the owner sells the item and thereby puts it in the stream of commerce. As a result, once the copyright owner sells a copyrighted product, it cannot prevent its resale or transfer to others.

patent misuse

In a patent dispute, a defense asserting that although the defendant has infringed a valid patent, the patent holder has abused its patent rights and therefore has lost, at least temporarily, its right to enforce them.

Noninfringement

In a patent dispute, the defense of noninfringement asserts that the allegedly infringing matter does not fall within the claims of the issued patent.

contributory copyright infringement

Inducing, causing, or materially contributing to the infringing conduct of another with knowledge of the infringing activity.

trade secret

Information that derives independent economic value from not being generally known and that is subject to reasonable efforts to maintain its secrecy.

show-how

Nonsecret information used to teach someone how to make or do something; generally not legally protectable.

direct copyright infringement

Occurs when one party is alleged to have violated at least one of the five exclusive rights of the copyright holder by its own actions.

contributory patent infringement

One party knowingly sells an item that has one specific use that will result in the infringement of another's patent.

indirect patent infringement

One party's active inducement of another party to infringe a patent.

Specifications

The description of an invention in a patent application in its best mode and the manner and process of making and using the invention so that a person skilled in the relevant field may make and use the invention.

claims (under patent law)

The description of those elements of an invention that will be protected by the patent.

doctrine of equivalents

The doctrine that holds that a direct infringement of a patent has occurred when a patent is not literally copied, but is replicated to the extent that the infringer has created a product or process that works in substantially the same way and accomplishes substantially the same result as the patented invention.

useful article doctrine

The doctrine that holds that copyrightable pictorial, graphic, and sculptural works include works of artistic craftsmanship insofar as their form but not their mechanical or utilitarian aspects are concerned.

file-wrapper estoppels

The doctrine that prevents a patent owner involved in infringement from introducing any evidence at odds with the information contained in the owner's application on file with the U.S. Patent and Trademark Office.

fair use doctrine

The doctrine that protects from liability a defendant who has infringed a copyright owner's exclusive rights when countervailing public policies predominate. Activities such as literary criticism, social comment, news reporting, educational activities, scholarship, or research are traditional fair use domains.

Abandonment

The failure to use a mark after acquiring legal protection may result in the loss of rights, and such loss is known as abandonment.

descriptive mark

The identifying marks that directly describe (size, color, use of) the goods sold under the mark.

vicarious liability

The imposition of civil or criminal liability on one party (e.g., an employer) for the wrongful acts of another (e.g., an employee). Also called imputed liability.

Copyright

The legal right to prevent others from copying the expression embodied in a protected work.

direct patent infringement

The making, use, or sale of any patented invention in the jurisdiction where it is patented during the term of the patent.

protected expression

The part of a work that is subject to copyright protection.

domain name

The unique name that identifies an Internet site. Domain names always have two or more parts, separated by dots. The part on the left is the most specific, and the part on the right is the most general.

Genericism

The use of a trademark as a generic name for the product, for example, "a Kleenex" for "tissue."