There are many levels of protection you may seek for your trademark and it can be confusing at times to know which will be best for your mark or the advantages or one over the other. In this post I review each of the five levels of protection to help you determine what will work best for your mark and business goals. Common-law Rights: Common-law trademark rights are the lowest level of right you may give your trademark. As soon as you start using your mark in commerce it is entitled to common-law rights. In common-law the first to use a mark in commerce has automatic senior rights over subsequent similar marks used in commerce. Advantages of common-law marks include:
However there are some disadvantages such as:
I don't recommend using this level of protection for important marks such as the name of your business, slogan, or key products. State Trademark Rights: The next step above common-law rights are state rights. You may file an application with your state to protect your mark at the state level. This will extend the geographical scope of your mark from the immediate vicinity of your business to the entire state. Advantages of state level marks include:
Disadvantages include:
Just as with common-law rights, I do not recommend filing for a mark at the state level. If you are going to go through the trouble of filing at the state level might as well spend the necessary money and file for a federal mark as there are so many benefits obtained from a federally registered mark. Federal Trademark Rights (Supplemental Register): A federally registered mark that is on the supplemental register gains some important advantages over a state registered marks such as:
Disadvantages include:
Federal Trademark Rights (Principle Register): A federally registered mark that is on the principle register has all of the advantages found with a mark registered on the supplemental register plus the following:
Federal Trademark Rights (Principle Register and Incontestable): This is the highest level of protection you may obtain for your mark. There are requirements that must be met in order to file for incontestable status but once filed the privileges remain with your mark for the life of your mark with a few exceptions. The advantages of an incontestable mark include:
I hope that this has been helpful. Please leave a comment below and I will try my best to respond with an answer.
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One of the best-known designer watches in the world are Rolex watches. They are beautifully crafted quality time pieces with a high price tag that many cannot afford. These desirable watches, along with other high-end brands such as Gucci, Coach, and others, are heavily counterfeited. Although everyone loves a good deal we should not purchase products that we know are counterfeit for two reasons. The first reason is a moral reason. If we were the owners of any of these high-end companies we would not want others to be supporting those who counterfeit our products. The saying in the Bible "Do to others as you would want them to do unto you" is applicable here. When purchasing a counterfeit product, you are helping the counterfeiter to steal money and goodwill from the company who makes the original. You would not want someone to do that to your company if the roles were reversed so don’t do it! The second reason is more sinister and dark. Counterfeiters also go after products that we ingest such as wines, foods, and pharmaceuticals products. Counterfeiters of such products do not use the same ingredients or perform the same level of quality control as the original thus causing harm to those who unknowingly ingest these counterfeit products. The Organization for Economic Co-operation and Development (OECD), headquartered in France, provides a forum in which governments can work together to share experiences and seek solutions to common problems. They (i) work with governments to understand what drives economic, social and environmental change. (ii) measure productivity and global flows of trade and investment. (iii) analyze and compare data to predict future trends. (iv) set international standards on a wide range of things, from agriculture and tax to the safety of chemicals. According to a study conducted by the OECD in 2013, the United States was the country with the largest amount of counterfeit seizures while China was the largest producer of counterfeit goods. There is a lot of research being conducted that are looking into new and novel ways of identifying counterfeit products. The video below shows one approach of using nano sized bio based tags. These tags may contain a variety of information including serial number and other manufacturing information. Also these tags are difficult to create but easily detected making it more difficult for the counterfeit products to enter the USA. So the next time you see a counterfeit product don’t think of how you can now wear that Coach bag for a fraction of the price that the original costs but take the high road and walk away. Not only will you feel good about doing the right thing but you will also help American workers.
Basically a business may hire two types of individuals. These two types of individuals are employees and independent contractors. If you hire an employee here in California, the law favors the employer being the owner of any intellectual property created by the employee, even intellectual property created by the employee while "off the clock" as long as it is related to the work the employee is performing for their employer. However if an employee signs an intellectual property agreement with their employer then the intellectual property agreement will prevail. If you are an engineer or computer programmer, in most cases, when hired you were asked to sign an agreement whereby you agree to release to your employer all intellectual property that was created during the period of your employment. Refusing the sign the agreement will likely not grant you any intellectual property rights as by law you are required to turn over your intellectual property to your employer. However, if you sign an intellectual property agreement that states you may keep any intellectual property you develop during the period of your employment then the agreement will prevail against the law and you will retain your rights to IP that you create. This situation is, for the most part, reversed when it comes to independent contractors. Unless the independent contractors signs an agreement to turn over any intellectual property that is created in the course of working for the company the independent contractors retains all rights to the created intellectual property. There are exceptions to these general rules and you should talk with an attorney to get an answer for your specific case but what sets an independent contractor apart from an employee? The Internal Revenue Service (IRS) states that "The general rule is that an individual is an independent contractor if the payer has the right to control or direct only the result of the work and not what will be done and how it will be done." Here the word "payer" is the company that is paying the individual doing the work. The IRS also provides the following details:
You may get more information from the IRS about independent contractors by clicking here.
If you have hired someone that fits the IRS rules for an independent contractor then very likely that individual is an independent contractor and they will generally own any intellectual property that they create unless they sign an agreement giving you rights to their intellectual property. So be careful and when in doubt have your new person sign an intellectual property agreement to transfer those rights to you. If you need help contact me and I can draft that agreement for you. If you have hired someone that fits the IRS rules for an independent contractor then very likely that individual is an independent contractor and they will generally own any intellectual property that they create unless they sign an agreement giving you rights to their intellectual property. So be careful and when in doubt have your new person sign an intellectual property agreement to transfer those rights to you. If you need help contact me and I can draft that agreement for you. There are many considerations to take into account when licensing your intellectual property. Adding to the complexity of the agreement is that each type of intellectual property, whether it be patents, trademarks, or copyrights, have different concerns and problems that you need to pay attention to. For example with trademarks you will want to pay attention as to how your mark will be treated by the licensee. How will they be displaying your mark? What sort of training will they provide their employees? However here are some general guidelines for you to consider when licensing your intellectual property.
Trademark scams range from offers to file renewal and maintenance documents, to offers to record marks with U.S. Customs and Border Protection, to monitoring services, to recordation in useless databases. Some of the scammers take consumers’ money and deliver nothing. For instance, during the roundtable, the American Intellectual Property Law Association cited an example of a restaurant that mistakenly paid a scammer to file maintenance documents for a registration. The restaurant relied on the assumption that the filing would be made. Only when the restaurant sought legal counsel about enforcement against an infringer did it learn that the scammer filed nothing and the registration had been cancelled. Others scammers actually perform work but at exorbitant prices. One speaker at the roundtable had filed three civil law suits against different scammers. When I file a trademark application or mail to a client a certificate received from the USPTO I always warn them of these fraudulent solicitations. The USPTO has a web page dedicated to this problem and has even produced an 8 minute video describing the problem and giving examples that you may watch below. I would also like to add that patent owners face the same problem with scams as do trademark owners. Always be careful with companies that promise to promote your invention! If you have received a solicitation for any trademark or patent related service you should consider it suspect even if the service appears to be legitimate. At the least contact me before paying for the service being solicited or call the USPTO Trademark Assistance Center at 800-786-9199 or the FTC Help Line at 877-FTC-HELP. You may also visit the following websites: Another excellent bulletin from the INTA. The INTA is a global association of trademark owners and professionals dedicated to supporting trademarks and related intellectual property in order to protect consumers and to promote fair and effective commerce. The Association's member organizations represent some 30,000 trademark professionals and include brand owners from major corporations as well as small- and medium-sized enterprises, law firms and nonprofits. There are also government agency members as well as individual professor and student members. To visit their website click here or their logo. This bulletin, titled "Are Hashtags Capable of Trademark Protection under U.S. Law?" reviews the findings of a federal district court in Eksouzian v. Albanese where the court held that hashtags are “merely descriptive devices, not trademarks, unitary or otherwise.” and that a hashtag is “a functional tool to direct the location of Plaintiffs’ promotion so that it is viewed by a group of consumers, not an actual trademark.". Another federal district court is dealing with similar issues in the case, Fraternity Collection, LLC v. Fargnoli. However this case is ongoing and no decision has been made. No appeal has yet been filed for Eksouzian v. Albanese but it is clear that the value of a hashtag trademark is under fire. To read the bulletin click here. The International Trademark Association (INTA) is a global association of trademark owners and professionals dedicated to supporting trademarks and related intellectual property in order to protect consumers and to promote fair and effective commerce. The Association's member organizations represent some 30,000 trademark professionals and include brand owners from major corporations as well as small- and medium-sized enterprises, law firms and nonprofits. There are also government agency members as well as individual professor and student members. To visit their website click here or their logo. From time to time the INTA issues bulletins on various topics all related in some way to trademarks. This bulletin, titled "The U.S. Trademark Registers: Supplemental vs. Principal" and written by Daniel M. Gurfinkel of Dennemeyer & Associates, reviews the differences between the two registers and the advantages of registration on the supplemental register. If you are dealing with with a USPTO Office Action on your application where the examiner is asking you to amend the application for registration in the supplemental register this bulletin will provide you with useful information to help you in making this decision. To read the bulletin click here. Let me introduce you to Edith Clarke. Born in a family of eight children in 1883 she was the first woman to graduate from MIT's Electrical Engineering department, first woman to be employed as an Electrical Engineer at General Electric, and the first woman to give a technical presentation at a conference sponsored by the IEEE. Her field of expertise was the transmission of electrical power over cables and has to her name a patent for a calculator to help in the design of power lines. See her patent by clicking here or click the USPTO video below to see her story. You see them on TV advertising services to promote and protect your new idea so that you can leave you current place of employment and move to Tahiti. Remember that these firms do not hold any ethical duty to you as patent attorneys do. If a patent attorney breaches their ethical duty to you it may mean a loss of their license and their income. It takes years of study to become a patent attorney and to lose it all over unethical dealings is just not worth it. However it is a far different story for Invention Promotion Firms and their craftily worded contracts that you will be signing. Click here to see a great article at the Federal Trade Commission's website providing some guidance when dealing with these firms. Click here to see more articles on this topic here on my website. How many patents were filed worldwide in 2014? What country received most patent applications? Who are the world’s top innovators? Key facts and figures on global patent activity in 2014 from WIPO’s 2015 World Intellectual Property Indicators (WIPI). |
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