Chap 8 LGLS

Trademark Registration

•Trademarks may be registered with the state or with the federal government. •To register for protection under federal trademark law, a person must file an application with the U.S. Patent and Trademark Office in Washington, D.C. •Registration of a trademark with the U.S. Patent and Trademark Office gives notice on a nationwide basis that the trademark belongs exclusively to the registrant. •The symbol ® indicates that a mark has been registered. •Under current law, a mark can be registered: 1.If it is currently in commerce 2.If the applicant intends to put it into commerce within six months•Registration is renewable between the fifth and sixth years after the initial registration and every ten years thereafter (every twenty years for trademarks registered before 1990).

Under current law, a mark can be registered:

1. If it is currently in commerce 2. If the applicant intends to put it into commerce within six months

Generally, copyright owners are protected against the following:

1. Reproduction of the work 2. Development of derivative works 3. Distribution of the work 4. Public display of the work

Trademark Division Dilution Act (TDRA)

1. The plaintiff owns a famous mark that is distinctive. 2. The defendant has begun using a mark in commerce that allegedly is diluting the famous mark. 3 .The similarity between the defendant's mark and the famous mark gives rise to an association between the marks. 4. The association is likely to impair the distinctiveness of the famous mark or harm its reputation.

In 2006, Congress further amended the law on trademark dilution by passing the Trademark Dilution Revision Act (TDRA). Under the TDRA, to state a claim for trademark dilution, a plaintiff must prove the following:

1. The plaintiff owns a famous mark that is distinctive. 2. The defendant has begun using a mark in commerce that allegedly is diluting the famous mark. 3. The similarity between the defendant's mark and the famous mark gives rise to an association between the marks. 4. The association is likely to impair the distinctiveness of the famous mark or harm its reputation.

Under Section 757 of the Restatement of Torts, those who disclose or use another's trade secret, without authorization, are liable to that other party if either of the following is true:

1. They discovered the secret by improper means. 2. Their disclosure or use constitutes a breach of a duty owed to the other party.

License

A contract permitting the use of a trademark, copyright, patent, or trade secret for certain purposes.

Trademark

A distinctive mark, motto, device, or implement that a manufacturer stamps, prints, or otherwise affixes to the goods it produces so that they may be identified on the market and their origins made known.•Once a trademark is established (under the common law or through registration), the owner is entitled to its exclusive use.

Patent

A government grant that gives an inventor the exclusive right or privilege to make, use, or sell his or her invention for a limited time period. •Patents for inventions are given for a twenty-year period. •Patents for designs are given for a fourteen-year period. •The first person to file an application for a patent on a product or process will receive patent protection. •The period of patent protection begins on the date the patent application is filed, rather than when the patent is issued. •After the patent period ends (either fourteen or twenty years later), the product or process enters the public domain, and anyone can make, sell, or use the invention without paying the patent holder.

Collective Mark

A mark used by members of a cooperative, association, or other organization to certify the region, materials, mode of manufacture, quality, or accuracy of the specific goods or services.

Certification Mark

A mark used by one or more persons, other than the owner, to certify the region, materials, mode of manufacture, quality, or accuracy of the owner's goods or services.

Service Mark

A mark used in the sale or the advertising of services, such as to distinguish the services of one person from the services of others. •Titles, character names, and other distinctive features of radio and television programs may be registered as service marks.

Tradename

A term that is used to indicate part or all of a business's name and that is directly related to the business's reputation and goodwill. •Trade names are protected under the common law, but only if they are unusual and fancifully used. •Example: Safeway

Patent Infringements Lawsuits w/ High Tech Companies

Companies that specialize in developing new technology are holders of numerous patents and are frequently involved in patent infringement lawsuits.

Complications of Fact

Copyrightable. A compilation is "a work formed by the collection and assembling of preexisting materials or data that are selected, coordinated, or arranged in such a way that the resulting work as a whole constitutes an original work of authorship."

Strong Marks

Fanciful, arbitrary, or suggestive trademarks are generally considered to be the most distinctive (strongest) trademarks. •Fanciful trademarks use invented words. •Examples: "Google," "Xerox" •Arbitrary trademarks use common words in an uncommon way that is not descriptive of the product. •Example: "Dutch Boy" as the name for paint •Suggestive trademarks indicate something about a product's nature, quality, or characteristics, without describing the product directly. •Example: "Dairy Queen" suggests an association between its products and milk, but it does not directly describe ice cream.

In 1995, Congress amended the Lanham Act by passing the_______________ Act, which allowed trademark owners to bring suits in federal court for trademark dilution.

Federal Trademark Dilution Act Dilution - A doctrine under which distinctive or famous trademarks are protected from certain unauthorized uses regardless of a showing of competition or a likelihood of confusion.

Patent Infringements and Foreign Sales

Foreign firms can apply for and obtain U.S. patent protection on items that they sell within the United States, and U.S. firms can obtain protection in foreign nations where they sell goods.

Trademark Dilution Act

In 1995, Congress amended the Lanham Act by passing the Federal Trademark Dilution Act, which allowed trademark owners to bring suits in federal court for trademark dilution.

Trade Secret

Information or a process that gives a business an advantage over competitors who do not know the information or process. Trade secrets include, but are not limited to, the following: •Customer lists•Plans•Research and development •Pricing information •Marketing methods •Production techniques •Protection of trade secrets extends to both ideas and their expression. •There are no registration or filing requirements for trade secrets. •Businesses generally attempt to protect their trade secrets by having all employees who use a protected process or information agree in their contracts, or in confidentiality agreements, never to divulge it.

Whenever a trademark is copied to a substantial degree or used in its entirety by another, intentionally or unintentionally, the trademark has been:

Infringed

Statutory protection of trademarks and related property is provided at the federal level by the _________ Act of _____

Lanham Act of 1946. The Act incorporates the common law of trademarks and provides remedies for owners of trademarks who wish to enforce their claims in federal court.

Intellectual Property

Property resulting from intellectual, creative processes. •Examples: Patents, trademarks, copyrights, trade secrets

Uniform Trade Secrets Act

Protects employers from having former employees take trade secrets to new employer

Descriptive terms, geographic terms, and personal names are not inherently distinctive and do not receive protection under the law until they acquire a:

Secondary Meaning

Lanham Act of 19466

Statutory protection of trademarks and related property is provided at the federal level. -The Act incorporates the common law of trademarks and provides remedies for owners of trademarks who wish to enforce their claims in federal court.

Copyright

The exclusive right of authors to publish, print, or sell an intellectual production for a statutory period of time. •A copyright has the same monopolistic nature as a patent or trademark, but it differs in that it applies exclusively to works of art, literature, computer programs, and other works of authorship.

Trade Dress

The image and overall appearance of a product. •Example: The distinctive décor, menu, layout, and style of service of a particular restaurant•Basically, trade dress is subject to the same protection as trademarks.

Licensee

The party obtaining the license. •The licensee generally pays fees, or royalties, for the privilege of using the intellectual property. •A license grants only the rights expressly described in the license agreement.

Licensor

The party that owns the intellectual property rights and issues the license.

If a patent is infringed, the patent holder may sue for relief in federal court:

The patent holder can: •Seek an injunction against the infringer •Request damages for royalties and lost profits •If the court determines that the infringement was willful, the court can triple the amount of damages awarded (treble damages). •Seek reimbursement for attorneys' fees and costs

First Sale Doctrine

Under the first sale doctrine, the owner of a particular item that is copyrighted can, without the authority of the copyright owner, sell or otherwise dispose of it. •Once a copyright owner sells or gives away a particular copy of a work, the copyright owner no longer has the right to control the distribution of that copy.

Trademark Infringement

When a trademark has been infringed, the owner of the mark has a cause of action against the infringer. •To succeed in a trademark infringement action, the owner must show that the defendant's use of the mark created a likelihood of confusion about the origin of the defendant's goods or services. •The most commonly granted remedy for trademark infringement is an injunction to prevent further infringement. •A trademark owner that successfully proves infringement can recover: -Actual damages -The profits that the infringer wrongfully received from the unauthorized use of the mark•Attorneys' fees

Economic Espionage Act

makes the theft of trade secrets a federal crime. •Stealing confidential business data by industrial espionage, such as by tapping into a competitor's computer, is a theft of trade secrets without any contractual violation and is actionable in itself.

Generic Terms

that refer to an entire class of products receive no protection, even if they acquire secondary meaning.

Fair Use Exception

•Criticism and comment •News reporting •Teaching •Scholarship •Research

Remedies for Copyright Infringement

•Those who infringe copyrights may be liable for damages or criminal penalties. •Actual damages are based on the harm caused to the copyright holder by the infringement. •Statutory damages, not to exceed $150,000, are provided for under the Copyright Act. •Criminal proceedings may result in fines and/or imprisonment. •A court can also issue a permanent injunction against a defendant when the court deems it necessary to prevent future copyright infringement.

Copyright Act of 1976

•Works created after January 1, 1978, are automatically given statutory copyright protection for the life of the author plus 70 years. •For copyrights owned by publishing houses, the copyright expires 95 years from the date of publication or 120 years from the date of creation, whichever comes first. •For works by more than one author, the copyright expires 70 years after the death of the last surviving author. •When copyright protection ends, works enter into the public domain.