Presented by: PAMELA C. GAVIN

Intellectual Property Protection: Perils &

Pitfalls

4.19.2013

A trademark or service mark is any distinctive word, name, symbol or device, used by a person or entity to indicate a single source of goods or services, even if that source is unknown.

WHAT IS A TRADEMARK?

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• “Use” of a “Mark” in “Interstate Commerce”• In Connection with Certain

Goods/Services– Common Law Rights – Federal Registration

How to Establish Rights in a Mark?

EXAMPLES OF TRADITIONAL MARKS

GAVIN LAW OFFICES ™

Burberry Plaid

Examples of Nontraditional Marks

• MGM Lion’s Roar

• The Color Pink

• “Sweet Georgia Brown”

• Scent of Plumeria

NOTICE OF RIGHTS

A trademark may be designated by the following symbols:

This is an example text. Go ahead and replace it

TM

®SM(R) (for a registered trademark or service mark

TM (for an unregistered trademark, i.e., one used on goods)

SM (for an registered service mark, i.e., one used with services)

.

Marks can become generic through failure to protect/police

• Aspirin - Still a Bayer trademark name in about 80 countries, but declared generic in the U.S.

• Cellophane - Still registered trademark in Europe. Originally a trademark of Dupont.

• Escalator - Originally a trademark of Otis Elevator Company.

• Heroin- Trademarked by Friedrich Bayer & Co in 1898.

WHY PROTECTION IS IMPORTANT

Intellectual Property Rights are Territorial

What is Infringement?

• Examples:• Arrow Air-O• Citibank City

Bank• Ho Ho’s Yo

Yo’s• Seiko

Seycos• Steinway Steinweg

• Use of a mark by a latecomer to the marketplace where such use is ‘confusingly similar’ to the protectable interest of a senior user.

• U.S. companies expanding abroad must protect marks internationally– Foreign national registrations– International treaties– Use of local counsel – Use of WIPO and local courts

International Protections

• Subject matter– Literary works– Musical works– Pantomines/choreography– Pictorial/graphic/sculptural– Audiovisual/sound recordings– Architectural works

COPYRIGHT PROTECTION

Creative authorship is

protected (with certain

exceptions)

NATURE OF COPYRIGHT PROTECTION

Ideas cannot be copyrighted

Idea

Creative Expression

• Original creation• Fixation• Tangible medium of expression

Protection Arises How?

• Work for Hire– Scope of Employment– Independent Contractor

• Joint Works• Public Domain• Written Agreement

– Assignment of Rights– License

Copyright Ownership -Who is the “author”?

• Not mandatory• Inexpensive• Registration may confer benefits

– Statutory damages– Attorneys’ fees

Copyright Registration

Confidential, valuable

informationUse NDA’s,

Policies, Agreements

Other Types of Intellectual Property

Covers inventions

-new-useful

-nonobvious

PatentsTrade Secrets

• Top level domains (e.g., .com, .biz, .net)• UDRP v. Court Actions• Not necessarily, but sometimes are the

same as “trademarks”

Domain Name Perils

• Written agreement that governs terms and conditions of third party use.– Who, where, when, cost, – How

License Agreement

Any Questions?

THE END