Trade Marks
Law in Trademarks
A trademark is a distinctive sign that identifies certain goods or services as those produced or provided by a specific person or enterprise. A trademark uniquely identifies the source of the product. Companies trademark brand names and then advertise to build familiarity with that name. Steve Steinhilber, Strategic Alliances (Cambridge, MA: Harvard Business School Press, 2008), 98. Consumers come to trust the name and look for other products by that maker.
U.S. trademark protection is accomplished under the Commerce Clause of the U.S. Constitution. Today, trademarks are protected both under the federal registration system, codified as the Lanham Act (Title 15, Chapter 22, of the United States Code) and administered by the USPTO, as well as under state law. Both federally registered and common law trademarks may be protected under the Lanham Act; however, federal registration provides some advantages like shifting the burden of proof on the existence of a protectable mark to the registrant’s favour in a trademark infringement suit. Federal regulations relating to trademarks are located within Title 37 of the Code of Federal Regulations. State laws regarding marks, whether statutory or common law, will vary by state and may be labelled as trademark or unfair competition law.
The USPTO regularly publishes the Trademark Manual of Examining Procedure (TMEP) for use by trademark attorneys and examiners. The TMEP describes all of the federal laws and regulations that must be followed in order to apply for and maintain a registered trademark in the United States. The USPTO also handles trademark registration applications as described in the TMEP. There is no equivalent to a “patent agent” for trademarks, and therefore, a lawyer must be retained for assistance with trademark applications.
U.S. federal law differentiates between trademarks (used to identify a product), service marks (used to identify a service), collective marks (used to identify membership in an group or the goods or services that are produced by a member of the group), and certification marks (used to certify that goods or services meet the characteristics as defined by the owner of the certification mark). Geographical indications may be protected under the above categories, usually as certification marks. The Lanham Act protects all of the above marks as well as domain names, some trade names, and some forms of trade dress.
There is substantial coexistence between federal and state law in trademarks, unlike the other forms of IP. In addition to the federal Lanham Act, every state has a complete trademark law within its boundaries. Most states have statutory law in addition to the common law of “unfair competition”, and many states provide for trademark registration. The most significant aspect of trademark rights in the states is that use without registration is sufficient to create trademark rights.
Registration
The simplest way to register is on the U.S. Patent and Trademark Office’s Web site, www.uspto.gov.
Before completing the online registration form, check the site’s Trademark Electronic Search System (“TESS”) database to make sure another company hasn’t already registered an identical or similar mark for the same categories of goods or services you offer. U.S. trademark protection is granted to the first entity to use a particular mark in the geographic area where it operates, regardless of whether the mark is registered. But if your chosen mark is already registered by another company — even if you used it first — your registration will be rejected and you’ll probably want a lawyer to help you proceed.
Online trademark registration costs between $275 and $325 and requires information such as the categories of goods and services for which the mark will be used, date of the mark’s first use in commerce and whether there’s a design component to the mark you’re seeking. Internet businesses registering their names should generally refrain from registering their Web extension, such as .com or .net, with their name, unless they’re planning to register the mark both with and without. Getting a trademark without the domain extension will help prevent other businesses from registering the same name by just adding a different extension. Don’t designate a specific design of your trademark in order to get the broadest protection.
You should receive a response to your application within six months of filing, according to the U.S. Patent and Trademark Office Web site. There are some scenarios where registering through an intellectual-property attorney — or at least seeking legal advice beforehand — makes sense. If your desired mark is similar to another registered mark, or similar enough to confuse people, there’s a decent chance your registration will be contested.
Owners Protection
Trademark owners usually need to keep close watch over their marks in order to make sure the rights are not infringed, diluted, or lost. You can lose a trademark in a variety of ways.
You can lose a mark through abandonment. A mark will be considered abandoned if you stop using it for three consecutive years and you have no intent to resume its use.
You can also lose a mark through improper licensing or improper assignment. Trademarks can also be lost if you license a trademark without specifying adequate control or supervision, or if you assign a trademark to someone else without also selling that person or entity the corresponding assets
Patents
The most common way to protect an industrial discovery or invention is to patent it. A patent is an inventor’s exclusive right granted by the government for an invention, whether a product or a process, that is industrially applicable (i.e., useful) or new (i.e., novel) or exhibits a sufficient “inventive step” (i.e., be nonobvious) To get a patent, the company must reveal the details of the invention. The rationale for revealing the invention details is so that others can build on the invention and thus promote further innovation. By revealing the invention, companies obtain legal protection and the right to exclusive sales of the invention (or the right to license or sell its use to others). The patent gives the patent owner a monopoly on the invention for a specific number of years.
Patents in the U.S. are permitted by the Patent Clause of the U.S. Constitution. Until recently, the U.S. used a first-to-invent patent system, where competing patents or patent applications determined their priority based on the date of invention. The America Invents Act moved the U.S. in 2013 to the more common first-inventor-to-file system, where priority is based on the date of application. The patent code is contained in Title 35 of the United States Code. Federal regulations relating to patents are located within Title 37 of the Code of Federal Regulations. Patents are exclusively governed by federal law.
The USPTO regularly publishes the Manual of Patent Examining Procedure (MPEP) for use by patent attorneys, agents, and examiners. The MPEP describes all of the laws and regulations that must be followed in the examination of U.S. patent applications and includes citations to relevant case law. The USPTO also handles patent applications as described in the MPEP. Although patent attorneys may be used to assist with the application process, the USPTO has a separate bar examination for patent practitioners. Therefore there are “patent agents,” who are permitted to practice before the USPTO without being a lawyer.
Three types of patents may be granted:
- Utility patents (for any new, useful, and non-obvious process, machine, article of manufacture, or composition of matter, or any further, useful, and nonobvious improvement thereof),
- Design patents (for any new, original, and ornamental design for an article of manufacture), and
- Plant patents (for any distinct and new variety of asexually-reproduced plant, excluding tuber-propagated plants).
The current utility patent term is twenty years from the earliest claimed filing date but can be extended to compensate for delays in the patent office or in obtaining FDA approval under the Drug Price Competition and Patent Term Restoration Act (a.k.a. the Hatch-Waxman Act). The FDCA also has quasi-patent rights, in the form of market exclusivities, for both generic and brand drug manufacturers under certain circumstances. For example, market exclusivity is awarded for orphan drugs that have been developed specifically to treat rare medical conditions under the Orphan Drug Act.
Under limited circumstances, U.S. law provides for a 1-year grace period to apply for a disclosure. In general, the first disclosure must have been by the applicant or by someone who obtained the disclosure from the applicant.
Key international agreements affecting U.S. patent law include:
- Budapest Treaty
- Paris Convention
- Patent Cooperation Treaty
- Patent Law Treaty
- Strasbourg Agreement
- WIPO Convention
- World Trade Organization Agreement on Trade-Related Aspects of Intellectual Property Rights
U.S. law does not provide for utility model protection.
Countless inventors have successfully navigated the patent system on their own. Federal law requires patent examiners at the U.S. Patent and Trademark Office (USPTO) to help individual inventors who apply for patents without a lawyer’s help.
To obtain a patent, you must first ensure that your invention actually qualifies for a patent and second, fill out the patent application. This second step includes being able to describe all aspects of your invention.
Patents have been in the news recently as Apple and other technology companies have used patents to obtain monopoly rights in particular inventions. Although many objects to anyone having a monopoly on an idea or invention, such rights have always been a fundamental part of the patent system. The importance of granting monopolies for new inventions has been recognized in the United States since the adoption of the U.S. Constitution.
