Empfohlen
Empfohlen
Weitere ähnliche Inhalte
Was ist angesagt?
Was ist angesagt? (20)
Ähnlich wie Branding for Growth: Using Intellectual Property to Grow Your Business
Ähnlich wie Branding for Growth: Using Intellectual Property to Grow Your Business (20)
Kürzlich hochgeladen
Kürzlich hochgeladen (20)
Branding for Growth: Using Intellectual Property to Grow Your Business
- 1. intellectual property BRIANNE POLITO JOSHUA WRIGHT PETER WU Trademarks Trade Secrets Trade Dress Patents Copyright 1
- 2. OVERVIEW Patent Trade Secret Copyright Trademark ! Protect new, useful, nonobvious inventions ! Protects economically valuable secret info ! Protects rights in original expressive works ! Protects the source of goods and services in commerce ! Protection lasts 20 years (from filing date) ! Protection lasts as long as it remains secret ! Lasts for life of author + 70 years ! Lasts for the life of the mark (until it is genericized or abandoned) 2
- 3. Trademarks Trade Secrets 3 • What is a trade secret? • How to keep it secret • Pros/Cons of trade secret protection outline
- 4. TrademarksA trade secret is information that is • economically valuable to your business, • isn’t known to people outside your business, • and is subject to reasonable protection from disclosure. ! Protection lasts as long as it remains a secret. Trade Secrets 4
- 6. TRADE SECRETS PA Uniform Trade Secrets Act To be considered a trade secret: ! (1) Information must be economically valuable because it is not known to the public/competitors & it isn't easily ascertainable AND (2) Reasonable efforts are made by the trade secret owner to maintain secrecy 6
- 7. TRADE SECRETS how to keep it secret TS owners have a duty to use “reasonable measures” to maintain the secrecy of the information. They should implement policies such as: ! • For employees • Non-disclosure agreements and confidentiality clauses • Non-compete clauses • “Confidential” labels • Limit access to documents w/ trade secret info • Include trade secret policies in employee handbooks • Training • Strict electronic communications & social networking policies ! • For third-parties (vendors, suppliers, independent contractors, etc.) • Require non-disclosure agreements ! 7
- 8. TRADE SECRETS pros/cons Pros: ! • Low cost • Doesn’t require disclosure/ registration w/ gov’t • No time limit for protection • Immediately effective ! ! ! Cons: ! • Protection is only effective against improper acquisition & use or disclosure • Doesn’t provide exclusivity • Independent discovery • Reverse engineering • Protection is lost if secret is publicly disclosed 8
- 9. Copyright • What is copyright? • What can you copyright? • What rights do you get? • Registration • Ownership 9 outline
- 10. Copyright Copyright law protects the expression of an idea, but copyright does not protect the idea itself. ! Copyright does not protect useful articles or objects with some useful functionality. 10
- 11. COPYRIGHT what can you ©? 11
- 14. Pictorial, Graphic, and sculptural works COPYRIGHT // CATEGORIES 14
- 15. ! Music, Theatrical Performances & Sound Recordings COPYRIGHT // CATEGORIES 15
- 17. Pantomines & Choreographic Works COPYRIGHT // CATEGORIES 17
- 18. Compilations COPYRIGHT // CATEGORIES Since facts are considered "ideas" or "discoveries", they are not copyrightable. However, compilations of facts are treated differently. 18
- 19. Architectural Works COPYRIGHT // CATEGORIES 19
- 21. COPYRIGHT what rights do you get? 21
- 22. what rights do you get? COPYRIGHT To reproduce the work ! To prepare derivative works ! To distribute copies ! To publicly perform the work, ! To publicly display the work To digitally transmit 22
- 23. COPYRIGHT how do you register? 23
- 24. COPYRIGHT Application form ! Deposit a clear rendition of the material being submitted for copyright ! Pay a nonrefundable filing fee (as little as $35 for a basic claim in an original work of authorship) how do you register? 24
- 25. COPYRIGHT who owns the ©? 25
- 26. COPYRIGHT The author is usually the initial owner. ! Exceptions: works for hire works by employees joint works collective works who owns the ©? 26
- 27. COPYRIGHT ©Do you need it? 27
- 28. COPYRIGHT © Do you need it? Technically, no. Protection is automatic upon creation. ! But you probably should. ! If you don’t register and provide proper notice, it may limit your ability to collect damages from infringers. ! ! 28
- 29. COPYRIGHT transfers of rights assignment - analogous to a sale of property ! exclusive licenses - only the licensee may exercise the granted rights ! nonexclusive licenses - allows licenses to other parties ! implied licenses - licenses inferred from a conduct and not an explicit agreement [must be in writing 29
- 31. COPYRIGHT common questions 31 Can you copyright the design of a t-shirt pattern? ! Can you copyright a logo design? ! Do you have to re-register every year? ! Do you have to register to use ©?
- 32. Trademarks ™ • What are trademarks? • What can you trademark? • Types of protection • Federal registration • What to avoid 32 outline
- 33. Trademarks ™ Trademarks are source identifiers. ! They protect the source of goods and services in commerce. 33
- 34. How ™ is different from other forms of IP • Trademarks don’t require creation of anything new • Just have to establish an association between the mark and your product in the minds of consumers • No built in time limitation: You’re in control. • Scope may broaden over time - can become famous over time. TRADEMARKS 34
- 35. TRADEMARKS What can you ™? 35
- 44. Non-traditional TMs • Texture • Hand gestures • Scents and Flavors TRADEMARKS // CATEGORIES 44
- 45. TRADEMARKS Fanciful Inherently distinctive; automatically qualifies for protection Arbitrary Inherently distinctive; automatically qualifies for protection Suggestive Inherently distinctive; automatically qualifies for protection Descriptive Must establish secondary meaning to get protection Generic Asprin No protection what type of mark do you have? 45
- 46. TRADEMARKS How to get protection? 46
- 48. TRADEMARKS Limited to geographic area of use ! ! • Protected only in the areas where there is actual use • Cases have also established protection in a normal territorial zone of expansion or where the mark’s reputation has been established. common law protection • Comes from the continuous prior use of a mark in commerce. 48
- 49. TRADEMARKS 2005 2007 common law priority Concurrent use situations • Each party gets exclusive use in their exclusive geographic areas. • Where there’s conflict, it’s resolved in favor of the earliest user in that area. • One user could be the senior user in one market and a junior user in another. 49
- 50. downsides of common law protection • No ability to recover: • lost profits • statutory damages • attorneys fees • triple damages for willful infringement • No national priority • No right to use ® to give notice of rights in the mark TRADEMARKS 50
- 51. • Prima facie evidence of validity • Nationwide priority as of date of registration • Constructive notice of the registrant’s ownership of the mark • Access to federal courts • Broad array of remedies (if registered on the Principal Register) • Incontestability after 5 years TRADEMARKS advantages of federal ® 51
- 52. • Incontestability immunizes a mark against challenges that a mark is descriptive or lacks secondary meaning • Incontestability does not shield you from challenges on other bases, such as: • fraud, abandonment, misrepresentation of source, fair use, prior third party rights (e.g. concurrent use), prior registered mark, functionality, or genericism. TRADEMARKS what is incontestability? 52
- 54. • Actual use of the mark in interstate commerce • Bona fide intent to use (ITU) the mark in interstate commerce (if mark is inherently distinctive) • ™ owner has 6 months (auto-extendable to 1 year or 3 years with good cause) to use and file a Statement of Use • A claim of priority based on an earlier filed foreign application to register the mark • Registration of the mark in a foreign applicants country of origin • Extension of protection of an international registration under the Madrid system. TRADEMARKS bases for filing 54
- 55. TRADEMARKS 1. Identify the particular goods or services on or in connection with which it uses or intends to use the mark ! • Be specific and don’t leave descriptions open-ended • Do not list products or services you don't plan on selling. Do not include products or services that you are not, nor have a real intention of, selling in the future. • List only goods/services that you are selling to others • Can’t add additional goods/services later; will need new application. ! ! application must 55
- 56. TRADEMARKS application must 2. Submit a drawing of the ™ ! Standard character format - grants protection to the wording itself without regard to font, style, size, or color. Most flexible; broad rights. ! Stylized or design formats covers design elements and/or word(s) and/or letter(s) having a particular stylized appearance. e.g. Nike 56
- 57. TRADEMARKS application must 3. Submit a specimen of use (typically photographs) for each class. ! 57
- 58. TRADEMARKS APPLICATION PUBLICATION OPPOSITIONREVIEW FOR STATUTORY COMPLIANCE REGISTRATION CERTIFICATE ISSUED • Opposer must file opposition or time extension request within 30 days of publication; extendable up to 180 days • Opposer must have a real interest in the mark for whom registration is sought. • Must be owner or exclusive licensee of a similar mark • Be in competition with the applicant • Burden of proof is on the challenger (opposer) timeline 58
- 60. The USPTO bars the registration of marks that: • are confusingly similar to an existing mark. • This is the most common reason registrations are denied • Looking at likelihood of confusion TRADEMARKS: STATUTORY BARS bars to registration 60
- 61. • similarity between the marks as to appearance, sound, connotation, etc • similarity of the nature of the goods/services • similarity of marketing channels • conditions under which sales are made (“impulse" vs. more discerning shoppers) • fame of the prior mark. • number and nature of similar marks in use on similar goods. • extent of actual and potential confusion • extent of concurrent use • range of goods for which mark is used TRADEMARKS: STATUTORY BARS factors 61
- 62. • are immoral, scandalous, disparaging, deceptive, or cause false associations • comprise the flag, coat of arms, or insignia of the U.S., any state w/in the union, municipality, or foreign nation • incorporate a name, portrait, or signature TRADEMARKS: STATUTORY BARS bars to registration 62
- 63. • are deceptively misdescriptive. • are primarily geographically descriptive • are primarily geographically deceptively misdescriptive • are primarily merely a surname TRADEMARKS: STATUTORY BARS bars to registration 63
- 64. TRADEMARKS How to keep your ™ 64
- 65. • Generic marks are subject to cancellation! Don’t let your mark go generic! • Your mark should indicate who you are and not what you are. ! ! Asprin, Escalator, Heroin, Webster’s Dictionary TRADEMARKS genericide 65
- 66. • Don’t abandon your mark! • If you discontinue use of your mark with intent not to resume, you’ve abandoned your mark and lose ™ protection! • If you don’t use your mark for 3 consecutive years, there is a rebuttable presumption of abandonment. • Resumption of use: protection will only cover new uses, not old ones. TRADEMARKS abandonment 66
- 67. TRADEMARKS AND DOMAIN NAMES Domain Names 67
- 68. TRADEMARKS AND DOMAIN NAMES domain names ≠ ™ While trademarks are source identifiers in the physical world and domain names are source identifiers in the online world… 68
- 69. TRADEMARKS AND DOMAIN NAMES ACPA claims The Anti-Cybersquatting Consumer Protection Act is one mechanism for ™ owners to get domain names. ! A ™ owner must show: ! • S/he has a valid TM • The mark is distinctive or famous • Defendant’s domain name is identical, confusingly similar to, or dilutive of plaintiff’s mark • Defendant acted w/ bad faith intent to profit. ! 69
- 70. TRADEMARKS AND DOMAIN NAMES UDRP dispute resolution ICANN (Internet Corporation for the Assigned Names and Numbers) offers a dispute resolution procedure (UDRP) that is global and binding on all domain name registrants. ! To win, a ™ owner must: ! • Prove identity or substantial similarity (confusingly similar) between his mark and challenged domain name • Establish that domain name holder has no legitimate interest in the domain • Show that domain name was obtained/using it in bad faith. ! ! ! 70
- 71. TRADEMARKS AND DOMAIN NAMES misspelled names? 71
- 72. Trademarks Trade Dress 72 • What is trade dress? • What is protectable? • Registration outline
- 73. Trademarks Trade Dress refers to characteristics of the visual appearance of a product or its packaging (or even the design of a building) that signify the source of the product to consumers. Trade Dress 73
- 74. Trademarks Covers • Product packaging • Product design ! can cover features such as size, shape, color, color combinations, texture, graphics, and scents. Trade Dress 74
- 76. TRADE DRESS what is protectable? ! must be ! • non-functional • distinctive • must be either inherently distinctive or have acquired secondary meaning ! ! ! 76
- 77. TRADE DRESS should you register? Trade dress is typically unregistered, but registration can be advantageous for the same reasons as for trademarks. ! ! ! ! ! 77