Intellectual Property: The Law of Trademarks, Copyrights, Patents, and Trade Secrets

720 Pages·2012·2.2 MB·English

by  Deborah E. Bouchoux

INTELLECTUAL PROPERTY OVERVIEW
TRADEMARKS COPYRIGHTS PATENTS TRADE SECRETS
DEFINITION A word, name, symbol, or Protection granted to authors Grant of right to exclude Any valuable business
device used to indicate origin, of original works of authorship, another from making, information that, if known by
quality, and ownership of a fixed in a tangible form. using, selling, or importing a competitor, would afford the
product or service. a patented invention or competitor some benefit or
discovery. advantage.
WHAT IS A trademark is used in the Copyright protects original Utility patents protect any Any information can be
PROTECTABLE advertising and marketing of works of authorship, including new and useful process, protected as long as it has
a product; a service mark is literary, dramatic, musical, machine, or composition of commercial value, it is not
used in the advertising and artistic, choreographic, pictorial, matter that is nonobvious; in the public domain, and its
marketing of a service. sculptural, and other original design patents protect new, owner has made reasonable
works, including motion pictures, original, and ornamental attempts to maintain its
sound recordings, computer designs for articles of secrecy. Information may
programs, and architectural manufacture; plant patents include customer lists,
works, allowing the owner protect distinct and new plant marketing plans, financial
the right to prepare derivative varieties that are asexually information, takeover targets,
works based on the work and to reproduced. and business methods.
reproduce, distribute, perform,
and display the work.
HOW RIGHTS Rights arise from first use of Copyright protection arises Rights arise only upon Rights arise as soon as the
ARISE the mark; registration is not from the time the work issuance of the patent by the trade secret comes into
necessary. is created in fixed form; U.S. Patent and Trademark existence. No registration or
registration is not necessary. Office (USPTO) to first to other formalities are required.
invent (before 3/16/2013) or to
first inventor to file application
(after 3/16/2013).
DURATION OF Marks are protected as long Works are protected during the Patent protection exists for Trade secrets may exist
PROTECTION as they are in use and do not author’s life (or last surviving 20 years from the date of filing perpetually as long as they
become generic. For registered author) and for 70 years an application for utility and are properly protected or not
marks, the registrant must thereafter. If work is made for plant patents; and for 14 years independently discovered.
prove use to USPTO between hire, copyright lasts for 95 years from the date of grant of a
years five and six and every from publication or 120 years design patent. Maintenance
10 years after registration. from creation, whichever is fees are required for utility
Registration lasts for 10 years shorter. patents at 31/2, 71/2, and
and is renewable. 111/2 years after issuance date.
COSTS AND If federal registration is sought, If federal registration is sought, Application for patent must be No application or registration
FORMALITIES application must be filed with application must be filed with filed with USPTO. Application process; however, there
USPTO; electronic application U.S. Copyright Office; electronic filing fee for utility patent is may be costs involved in
filing fee is $325 per class. application filing fee is $35. $1,250 ($625 for small entities). implementing measures
Application process takes Application process takes from Application process takes three to protect secrecy of trade
about one year. Preapplication three to four months for e-filing. years or more. Search should be secrets.
search should be conducted. No need for preapplication search. conducted prior to application.
INFRINGEMENT Is there a likelihood of Have any of the exclusive rights Does the accused invention Has a trade secret been
TEST confusion between the of the copyright owner been fall within the claims misappropriated?
marks? violated by impermissible copying language of the patent or is it
or unauthorized use of the work? substantially equivalent?
MARKING Marking is not required but Marking is not required but Marking is not required but Marking is not required but
REQUIREMENTS is recommended. Registered is recommended. Notice: is recommended. Notice is recommended. Documents
marks are displayed with ® © symbol (or similar indication), consists of word patent (or should be marked with
symbol. year of first publication, and its abbreviation) and patent confidentiality legends or
owner’s name. number. Marking may be other notices.
“virtual” (on the Internet).
GOVERNING 15 U.S.C. §§ 1051 et seq. 17 U.S.C. §§ 101 et seq. 35 U.S.C. §§ 100 et seq. Various state statutes, cases,
LAW and private agreements.
Copyright 2012 Cengage Learning. All Rights Reserved. May not be copied, scanned, or duplicated, in whole or in part. Due to electronic rights, some third party content may be suppressed from the eBook and/or eChapter(s). Editorial review has
deemed that any suppressed content does not materially affect the overall learning experience. Cengage Learning reserves the right to remove additional content at any time if subsequent rights restrictions require it.
Intellectual ProPerty
the law of trademarks,
copyrights, Patents, and
trade Secrets
Fourth edItIon
Copyright 2012 Cengage Learning. All Rights Reserved. May not be copied, scanned, or duplicated, in whole or in part. Due to electronic rights, some third party content may be suppressed from the eBook and/or eChapter(s). Editorial review has
deemed that any suppressed content does not materially affect the overall learning experience. Cengage Learning reserves the right to remove additional content at any time if subsequent rights restrictions require it.
Copyright 2012 Cengage Learning. All Rights Reserved. May not be copied, scanned, or duplicated, in whole or in part. Due to electronic rights, some third party content may be suppressed from the eBook and/or eChapter(s). Editorial review has
deemed that any suppressed content does not materially affect the overall learning experience. Cengage Learning reserves the right to remove additional content at any time if subsequent rights restrictions require it.
Intellectual
ProPerty
the law of trademarks,
copyrights, Patents,
and trade Secrets
Fourth edItIon
Deborah E. Bouchoux, Esq.
Georgetown University
Australia • Brazil • Japan • Korea • Mexico • Singapore • Spain • United Kingdom • United States
Copyright 2012 Cengage Learning. All Rights Reserved. May not be copied, scanned, or duplicated, in whole or in part. Due to electronic rights, some third party content may be suppressed from the eBook and/or eChapter(s). Editorial review has
deemed that any suppressed content does not materially affect the overall learning experience. Cengage Learning reserves the right to remove additional content at any time if subsequent rights restrictions require it.
This is an electronic version of the print textbook. Due to electronic rights restrictions, some third party content may be suppressed. Editorial
review has deemed that any suppressed content does not materially affect the overall learning experience. The publisher reserves the right to
remove content from this title at any time if subsequent rights restrictions require it. For valuable information on pricing, previous
editions, changes to current editions, and alternate formats, please visit www.cengage.com/highered to search by
ISBN#, author, title, or keyword for materials in your areas of interest.
Copyright 2012 Cengage Learning. All Rights Reserved. May not be copied, scanned, or duplicated, in whole or in part. Due to electronic rights, some third party content may be suppressed from the eBook and/or eChapter(s). Editorial review has
deemed that any suppressed content does not materially affect the overall learning experience. Cengage Learning reserves the right to remove additional content at any time if subsequent rights restrictions require it.
Intellectual Property: The Law of © 2013, 2009, 2005, 2000 Delmar, Cengage Learning
Trademarks, Copyrights, Patents,
ALL RIGHTS RESERVED. No part of this work covered by the copyright
and Trade Secrets, Fourth Edition
herein may be reproduced, transmitted, stored, or used in any form
Deborah E. Bouchoux
or by any means graphic, electronic, or mechanical, including but not
Vice President, Careers & Computing: limited to photocopying, recording, scanning, digitizing, taping, Web
Dave Garza distribution, information networks, or information storage and retrieval
systems, except as permitted under Section 107 or 108 of the 1976
Director of Learning Solutions: Sandy Clark
United States Copyright Act, without the prior written permission of
Senior Acquisitions Editor: Shelley Esposito the publisher.
Managing Editor: Larry Main
Editorial Assistant: Diane Chrysler For product information and technology assistance, contact us at
Cengage Learning Customer & Sales Support, 1-800-354-9706
Vice President, Marketing: Jennifer Baker
For permission to use material from this text or product,
Marketing Director: Deborah Yarnell submit all requests online at www.cengage.com/permissions.
Senior Marketing Manager: Mark Linton Further permissions questions can be e-mailed to
[email protected].
Marketing Coordinator: Erin DeAngelo
Senior Production Director: Wendy Troeger
Library of Congress Control Number: 2012931915
Production Manager: Mark Bernard
ISBN-13: 978-1-111-64857-2
Content Project Manager: Betty L. Dickson
Art Director: Riezebos Holzbaur Group ISBN-10: 1-111-64857-3
Senior Technology Project Manager:
Joe Pliss Delmar
Media Editor: Deborah Bordeaux 5 Maxwell Drive
Clifton Park, NY 12065-2919
USA
Cengage Learning is a leading provider of customized learning solutions
with office locations around the globe, including Singapore, the United
Kingdom, Australia, Mexico, Brazil, and Japan. Locate your local office at:
international.cengage.com/region
Cengage Learning products are represented in Canada
by Nelson Education, Ltd.
To learn more about Delmar, visit www.cengage.com/delmar
Purchase any of our products at your local college store or at our
preferred online store www.cengagebrain.com
Notice to the Reader
Publisher does not warrant or guarantee any of the products described herein or perform any independent analysis in connection with any of the product information con-
tained herein. Publisher does not assume, and expressly disclaims, any obligation to obtain and include information other than that provided to it by the manufacturer. The
reader is expressly warned to consider and adopt all safety precautions that might be indicated by the activities described herein and to avoid all potential hazards. By follow-
ing the instructions contained herein, the reader willingly assumes all risks in connection with such instructions. The publisher makes no representations or warranties of any
kind, including but not limited to, the warranties of fitness for particular purpose or merchantability, nor are any such representations implied with respect to the material set
forth herein, and the publisher takes no responsibility with respect to such material. The publisher shall not be liable for any special, consequential, or exemplary damages
resulting, in whole or part, from the readers’ use of, or reliance upon, this material. Certain trademarks are used throughout this text as illustrative of the content. Such trade-
marks are the property of their respective owners and their use herein shall not be deemed to imply the endorsement or sponsorship of this product by any such owner.
Printed in the United States of America
1 2 3 4 5 6 7 16 15 14 13 12
Copyright 2012 Cengage Learning. All Rights Reserved. May not be copied, scanned, or duplicated, in whole or in part. Due to electronic rights, some third party content may be suppressed from the eBook and/or eChapter(s). Editorial review has
deemed that any suppressed content does not materially affect the overall learning experience. Cengage Learning reserves the right to remove additional content at any time if subsequent rights restrictions require it.
table oF
contentS
xviii Preface
xxii Acknowledgments
xxiii List of Exhibits
P a r t
IntroductIon to Intellectual ProPerty
o n e
02 chaPter 1 Introduction to Intellectual Property law
Chapter Overview • 2
Intellectual Property Law Basics • 3
Types of Intellectual Property • 3
Agencies Responsible for Intellectual Property Registration • 7
International Organizations, Agencies, and Treaties • 9
The Increasing Importance of Intellectual Property Rights • 10
Trivia • 11
Chapter Summary • 12
Case Illustration—Policies Underlying Intellectual Property Law • 12
Case Study and Activities • 13
Role of Paralegal • 13
Internet Resources • 14
Discussion Questions • 14
Using Internet Resources • 15
v
Copyright 2012 Cengage Learning. All Rights Reserved. May not be copied, scanned, or duplicated, in whole or in part. Due to electronic rights, some third party content may be suppressed from the eBook and/or eChapter(s). Editorial review has
deemed that any suppressed content does not materially affect the overall learning experience. Cengage Learning reserves the right to remove additional content at any time if subsequent rights restrictions require it.
vi
contentS
P a r t
the law oF trademarkS
t w o
18 chaPter 2 Foundations of trademark law
Chapter Overview • 18
Introduction • 19
Purpose and Function of Trademarks • 19
Types of Marks: Trademarks, Service Marks, Certification Marks,
and Collective Marks • 20
Acquisition of Trademark Rights • 22
Common Law Rights, Federal Registration under the Lanham Act, Laws
and Treaties Governing Trademarks, and State Trademark Rights • 23
Categories of Marks • 26
Trade Names and Business Names • 28
Protectable Matter • 29
Exclusions from Trademark Protection • 33
U.S. Patent and Trademark Office • 36
Trivia • 37
Chapter Summary • 37
Case Illustration—Refusal to Register Disparaging Mark • 38
Case Study and Activities • 38
Role of Paralegal • 38
Internet Resources • 39
Discussion Questions • 39
Using Internet Resources • 40
41 chaPter 3 trademark Selection and Searching
Chapter Overview • 41
Selecting and Evaluating a Mark • 42
The Trademark Search • 42
Trivia • 52
Chapter Summary • 53
Case Illustration—Effect of Failure to Perform Trademark Search • 53
Case Study and Activities • 54
Role of Paralegal • 54
Internet Resources • 54
Discussion Questions • 55
Using Internet Resources • 55
Copyright 2012 Cengage Learning. All Rights Reserved. May not be copied, scanned, or duplicated, in whole or in part. Due to electronic rights, some third party content may be suppressed from the eBook and/or eChapter(s). Editorial review has
deemed that any suppressed content does not materially affect the overall learning experience. Cengage Learning reserves the right to remove additional content at any time if subsequent rights restrictions require it.
vii
contentS
56 chaPter 4 the trademark registration Process
Chapter Overview • 56
Preparing the Application • 57
Drawing of Mark • 64
Filing the Application, Docketing Critical Dates, and Initial Role of the
U.S. Patent and Trademark Office • 68
The Examination Process • 70
Postexamination Procedure • 75
Registration • 80
The U.S. Patent and Trademark Office’s TARR
Monitoring System • 84
Trivia • 84
Chapter Summary • 84
Case Illustration—Bona Fide Intent to Use • 85
Case Study and Activities • 86
Role of Paralegal • 86
Internet Resources • 87
Discussion Questions • 87
Using Internet Resources • 87
89 chaPter 5 Postregistration Procedures, trademark
maintenance, and transfer of rights to marks
Chapter Overview • 89
The Affidavit of Use • 90
The Affidavit of Incontestability • 91
Renewal of Registrations • 92
Docketing Requirements • 93
Loss of Trademark Rights • 94
Trademark Use and Compliance Policies • 96
Trademark Policing and Maintenance • 98
Use of Marks Owned by Third Parties • 99
Transfer of Ownership or Rights in Trademarks • 99
Trivia • 109
Chapter Summary • 110
Case Illustration—Standard for Cancellation of Registrations for Fraud • 111
Case Study and Activities • 111
Role of Paralegal • 111
Internet Resources • 112
Discussion Questions • 112
Using Internet Resources • 113
vii
Copyright 2012 Cengage Learning. All Rights Reserved. May not be copied, scanned, or duplicated, in whole or in part. Due to electronic rights, some third party content may be suppressed from the eBook and/or eChapter(s). Editorial review has
deemed that any suppressed content does not materially affect the overall learning experience. Cengage Learning reserves the right to remove additional content at any time if subsequent rights restrictions require it.