New and Future Developments in Microbial Biotechnology and Bioengineering: From Cellulose to Cellulase: Strategies to Improve Biofuel Production Neha Srivastava (Editor)
To access the appendices, go to http://www.cengagebrain.com and search for the title of this book.
appendix a table of treaties
appendix B State trademark registration Provisions
appendix C resources
appendix D Forms appendix
appendix E Selected Statutes
appendix F the Leahy-Smith america Invents act: Summary and Discussion
Preface xvii
Acknowledgments xxii
Selected Exhibits xxiii
PART I Introduction to Intellectual Property
Chapter 1 Introduction to Intellectual Property Law 3
Chapter Overview 3
Intellectual Property Law Basics 4
Types of Intellectual Property 4
Agencies Responsible for Intellectual Property Registration 8
International Organizations, Agencies, and Treaties 10
The Increasing Importance of Intellectual Property Rights 11
Trivia 12
Chapter Summary 13
Case Illustration—Policies Underlying Intellectual Property Law 13
Case Study and Activities 13
Role of Paralegal 14
Internet Resources 14
Using Internet Resources 15
Discussion Questions 15
Putting It Into Words 16
Chapter Overview 19
Introduction 20
Purpose and Function of Trademarks 21
Types of Marks: Trademarks, Service Marks, Certification Marks, and Collective Marks 21
Acquisition of Trademark Rights 23
Common Law Rights, Federal Registration Under the Lanham Act, Laws and Treaties
Governing Trademarks, and State Trademark Rights 25
Categories of Marks 27
Trade Names and Business Names 29
Protectable Matter 30
Exclusions From Trademark Protection 35
U.S. Patent and Trademark Office 39
Trivia 40
Chapter Summary 40
Case Illustration—Refusal to Register Misdescriptive Mark 41
Case Study and Activities 41
Role of Paralegal 41
Internet Resources 42
Using Internet Resources 42
Discussion Questions 42
Putting It Into Words 43
Chapter 3 Trademark Selection and Searching 44
Chapter Overview 44
Selecting and Evaluating a Mark 45
The Trademark Search 45
Trivia 56
Chapter Summary 56
Case Illustration—Effect of Failure to Perform Trademark Search 56
Case Study and Activities 57
Role of Paralegal 57
Internet Resources 57
Using Internet Resources 57
Discussion Questions 58
Putting It Into Words 58
Chapter 4 The Trademark Registration Process 59
Chapter Overview 59
Preparing the Application 60
Drawing of Mark 67
Filing the Application, Docketing Critical Dates, and Initial Role of the U.S. Patent and Trademark Office 71
The Examination Process 73
Postexamination Procedure 79
Registration 83
The U.S. Patent and Trademark Office’s TSDR Monitoring System 87
Trivia 87
Chapter Summary 88
Case Illustration—De Minimis Use of Mark Does Not Establish Trademark Rights 88
Case Study and Activities 88
Role of Paralegal 89
Internet Resources 89
Using Internet Resources 90
Discussion Questions 90
Putting It Into Words 91
Chapter 5 Postregistration Procedures, Trademark Maintenance, and Transfer of Rights to Marks 92
Chapter Overview 92
The
93
Renewal of Registrations 95
Docketing Requirements 96
Loss of Trademark Rights 97
Trademark Use and Compliance Policies 99
Trademark Policing and Maintenance 101
Use of Marks Owned by Third Parties 102
Transfer of Ownership or Rights in Trademarks 103
Trivia 112
Chapter Summary 112
Case Illustration—“Google” Is Not a Generic Term 113
Case Study and Activities 113
Role of Paralegal 114
Internet Resources 114
Using Internet Resources 115
Discussion Questions 115
Putting It Into Words 115
Chapter 6 Inter Partes Proceedings, Infringement, and Dilution 116
Chapter Overview 116
Inter Partes Proceedings 117
Infringement of Trademarks 123
Dilution of Trademarks 136
Related Trademark Claims 138
Trivia 142
Chapter Summary 142
Case Illustration—Likelihood of Confusion as Test for Trademark Infringement 143
Case Study and Activities 143
Role of Paralegal 144
Internet Resources 144
Using Internet Resources 144
Discussion Questions 145
Putting It Into Words 146
Chapter 7 New Developments in Trademark Law 147
Chapter Overview 147
The Internet 148
Protecting a Domain Name 150
Hyperlinking and the First Amendment 156
Other Cyberspace Trademark Issues 157
Trivia 162
Chapter Summary 162
Case Illustration—Infringement Under ACPA 163
Case Study and Activities 163
Role of Paralegal 163
Internet Resources 164
Using Internet Resources 164
Discussion Questions 164
Putting It Into Words 165
Chapter 8 International Trademark Law 166
Chapter Overview 166
Applications in the United States Based on Foreign Applications and Registrations 167
Securing Trademark Protection in Foreign Countries 170
Effects of New International Agreements (NAFTA, TRIPS, and the Trademark Law Treaty) 179
International Associations 180
Trivia 181
Chapter Summary 181
Case Illustration—Effect of Foreign Registration in United States 182
Case Study and Activities 182
Role of Paralegal 182
Internet Resources 183
Using Internet Resources 183
Discussion Questions 184
Putting It Into Words 184
PART III The Law of Copyrights
Chapter 9 Foundations of Copyright Law 187
Chapter Overview 187
Introduction 188
Common Law Rights and Rights Under the 1976 Copyright Act 189
Amendments to 1976 Copyright Act 190
The U.S. Copyright Office 191
Trivia 192
Chapter Summary 192
Case Illustration—Purpose of Copyright Law 193
Case Study and Activities 193
Role of Paralegal 193
Internet Resources 194
Using Internet Resources 194
Discussion Questions 195
Putting It Into Words 195
Chapter 10 The Subject Matter of Copyright 196
Chapter Overview 196
Introduction 197
Originality of Material 197
Fixation of Material 197
Works of Authorship 198
Exclusions from Copyright Protection 203
Compilations, Collections, and Derivative Works 207
Trivia 209
Chapter Summary 210
Case Illustration—Copyrightability of Characters 210
Case Study and Activities 210
Role of Paralegal 211
Internet Resources 211
Using Internet Resources 211
Discussion Questions 212
Putting It Into Words 212
Chapter 11 The Rights Afforded by Copyright Law 213
Chapter Overview 213
Introduction 214
Rights of Reproduction 214
Rights to Prepare Derivative Works 215
Rights of Distribution and the First Sale Doctrine 216
Rights to Perform the Work Publicly 219
Exception for Sound Recordings 219
Performing Rights Organizations 222
Rights to Display the Work Publicly 223
Other Limitations on Exclusive Rights 224
Moral Rights and the Visual Artists Rights Act 225
Compulsory Licenses 227
Trivia 228
Chapter Summary 229
Case Illustration—Derivative Rights 229
Case Study and Activities 229
Role of Paralegal 230
Internet Resources 230
Using Internet Resources 230
Discussion Questions 231
Putting It Into Words 231
Chapter 12 Copyright Ownership, Transfers, and Duration 232
Chapter Overview 232
Copyright Ownership Issues 233
Joint Works 233
Ownership in Derivative or Collective Works 235
Works Made for Hire 235
Transfers of Copyright 239
Termination of Transfers of Copyright Rights 241
Duration of Copyright 243
Trivia 245
Chapter Summary 246
Case Illustration—Duration of Copyrights 246
Case Study and Activities 247
Role of Paralegal 247
Internet Resources 247
Using Internet Resources 248
Discussion Questions 248
Putting It Into Words 249
Chapter 13 Copyright Registration, Searching Copyright Office Records, and Notice of Copyright 250
Chapter Overview 250
Introduction 251
The Application for Copyright Registration 251 Deposit Materials 255
The Application Process and Registration of Copyright 257
Searching Copyright Office Records 260
Obtaining Copyright Office Records and Deposit Materials 261
Copyright Notice 262
Trivia 266
Chapter Summary 267
Case Illustration—Congress Had Power to Restore Copyrights in Foreign Works 267
Case Study and Activities 267
Role of Paralegal 268
Internet Resources 268
Using Internet Resources 268
Discussion Questions 269
Putting It Into Words 269
Chapter 14 Copyright Infringement 270
Chapter Overview 270
Introduction 271
Elements of Infringement 271
Contributory Infringement and Vicarious Infringement 276
Defenses to Infringement 277
Infringement Actions 283
Trivia 287
Chapter Summary 287
Case Illustration—Fair Use 288
Case Study and Activities 288
Role of Paralegal 289
Inter net Resources 289
Using Inter net Resources 289
Discussion Questions 290
Putting It Into Words 290
Chapter 15 New Developments in Copyright Law and the Semiconductor Chip Protection Act 291
Chapter Overview 291
Introduction 292
Copyright Protection for Computer Programs 293
Copyright Protection for Databases 298
Copyright in the Electronic Age 299
The Digital Millennium Copyright Act 303
Entertainment Notes 307
Recent Developments in Copyright Law 312
Terms of the Trade 315
Vessel Hull Protection 316
Semiconductor Chip Protection 317
Trivia 319
Chapter Summary 319
Case Illustration—Prince, the Dancing Baby, and the Safe Harbor of the DMCA 320
Case Study and Activities 320
Role of Paralegal 320
Inter net Resources 321
Using Inter net Resources 321
Discussion Questions 322
Putting It Into Words 322
Chapter 16 International Copyright Law 323
Chapter Overview 323
Introduction 324
The Berne Convention 324
Treaties Supplementing the Berne Convention: The WIPO Internet Treaties 325
The Uruguay Round Agreements Act 326
The Universal Copyright Convention 327
Trade Aspects of Intellectual Property Law 328
Gray Market Goods 328
Summary of U.S. Relations with Foreign Nations 329
Trivia 329
Chapter Summary 330
Case Illustration—Application of the First Sale Doctrine to Foreign-made Goods 330
Case Study and Activities 331
Role of Paralegal 331
Internet Resources 331
Using Internet Resources 332
Discussion Questions 332
Putting It Into Words 332
PART IV The Law of Patents
Chapter 17 Foundations of Patent Law 335
Chapter Overview 335
Introduction 336
Rights Under Federal Law 336
U.S. Patent and Trademark Office 337
Patentability 338
Design Patents 347
Plant Patents 349
Double Patenting 351
The Orphan Drug Act 351
Trivia 352
Chapter Summary 352
Case Illustration—Dolly the Sheep Cannot Be Patented 352
Case Study and Activities 353
Role of Paralegal 353
Internet Resources 353
Using Internet Resources 354
Discussion Questions 354
Putting It Into Words 355
Chapter 18 Patent Searches, Applications, and Post-Issuance Proceedings 356
Chapter Overview 356
Patent Searching 357
The Patent Application Process 362
Prosecuting the Application 375
Post-Issuance Actions 389
Patent Challenges Under the AIA and Supplemental Examination 391
Term and Maintenance of Patents 393
Trivia 394
Chapter Summary 395
Case Illustration—Definiteness of Claims 395
Case Study and Activities 395
Role of Paralegal 396
Internet Resources 396
Using Internet Resources 397
Discussion Questions 397
Putting It Into Words 398
Chapter 19 Patent Ownership and Transfer 399
Chapter Overview 399
Ownership Rights 400
Sole and Joint Inventors 400
Disputes over Inventorship 401
Inventions Made by Employees and Independent Contractors 401
Assignment of Patent Rights 402
Licensing of Patent Rights 405
Invention Promoters 406
Trivia 407
Chapter Summary 407
Case Illustration—Spider Man and the Duration of Patent Royalties 408
Case Study and Activities 408
Role of Paralegal 408
Internet Resources 409
Using Internet Resources 409
Discussion Questions 410
Putting It Into Words 410
Chapter 20 Patent Infringement 411
Chapter Overview 411
Direct Infringement, Inducement to Infringe, and Contributory Infringement 412
The First Sale Doctrine 413
Imports 413
Indirect Infringement 414
Infringement Abroad 415
Claims Interpretation 415
Defenses to Infringement 418
Remedies for Infringement 421
Resolving an Infringement Dispute 423
Patent Infringement Litigation 424
Alternatives to Patent Infringement Litigation 427
Trivia 428
Chapter Summary 428
Case Illustration—Award of Attorney’s Fees in Infringement Cases 429
Case Study and Activities 429
Role of Paralegal 429
Internet Resources 430
Using Internet Resources 430
Discussion Questions 430
Putting It Into Words 431
Chapter 21 New Developments and International Patent Law 432
Chapter Overview 432
New Developments in Patent Law 433
Introduction to International Patent Protection 443
The Paris Convention 444
The Patent Cooperation Treaty 445
The European Patent Organization 449
The Patent Prosecution Highway, the IP5, and Global Dossier 450
Agreement on Trade-Related Aspects of Intellectual Property Rights 451
The Patent Law Treaty and the Hague Agreement 451
Foreign Sales and the Exhaustion Doctrine 452
Foreign Filing Licenses 452
Applications for U.S. Patents by Foreign Applicants 453
Trivia 453
Chapter Summary 454
Case Illustration—Patentability of Particular Methods Post-Alice 454
Case Study and Activities 455
Role of Paralegal 455
Internet Resources 455
Using Internet Resources 456
Discussion Questions 456
Putting It Into Words 457
PART V The Law of Trade Secrets and Unfair Competition
Chapter 22 Trade Secret Law 461
Chapter Overview 461
Introduction 462
Determination of Trade Secret Status 465
Liability for Misappropriation of Trade Secrets 466
Misappropriation by Third Parties 467
Employer–Employee Relationships 468
Protection for Submissions 471
Defenses to Trade Secret Misappropriation 473
Remedies for Misappropriation Under State Law 474
Defend Trade Secrets Act of 2016 474
Trade Secret Litigation 475
Trade Secret Protection Programs 476
New and International Developments in Trade Secret Law 479
Trivia 480
Chapter Summary 480
Case Illustration—Scouting Reports Can Constitute Trade Secrets 481
Case Study and Activities 481
Role of Paralegal 481
Internet Resources 482
Using Internet Resources 482
Discussion Questions 482
Putting It Into Words 483
Chapter 23 Unfair Competition 484
Chapter Overview 484
Introduction 485
Passing Off 486
Misappropriation 487
Right of Publicity 488
False Advertising 492
Product Disparagement 495
Dilution 496
Infringement of Trade Dress 496
International Protection Against Unfair Competition 497
Trivia 498
Chapter Summary 498
Case Illustration—Athletes, Video Games, and the Right of Publicity 499
Case Study and Activities 499
Role of Paralegal 499
Internet Resources 500
Using Internet Resources 500
Discussion Questions 500
Putting It Into Words 501
Chapter 24 Intellectual Property Audits and Due Diligence Reviews 502
Chapter Overview 502
Introduction 503
Practical Aspects of Intellectual Property Audits 504
Conducting the Audit 505
Postaudit Activity 505
Trivia 509
Chapter Summary 510
Case Illustration—Value of Intellectual Property 510
Case Study and Activities 510
Role of Paralegal 510
Internet Resources 511
Using Internet Resources 511
Discussion Questions 511
Putting It Into Words 512
Glossary 513
Index 529
To access the appendices, go to www.cengagebrain.com and search for the title of this book.
Appendix A Table of Treaties
Appendix B State Trademark Registration Provisions
Appendix C Resources
Appendix D Forms Appendix
Form 1 Trademark Application
Form 2 Statement of Use
Form 3 Request for Extension of Time to File a Statement of Use
Form 4 Combined Affidavit Under Sections 8 and 15 of the Lanham Act
Form 5 Application for Renewal of Trademark Registration (Combined with Declaration of Use Under Section 8 of the Lanham Act)
Form 6 Request for Extension of Time to File Notice of Opposition
Form 7 Opposition to Registration of Trademark
Form 8 Consent to Use and Register Agreement
Form 9 Petition to Cancel Trademark Registration
Form 10 Complaint for Trademark Infringement
Form 11 Trademark Settlement Agreement
Form 12 Work for Hire Provisions
Form 13 Copyright Application Form CO
Form 14 Employee Nondisclosure and Noncompetition Agreement
Form 15 Evaluation Agreement
Form 16 Confidentiality Agreement
Appendix E Selected Statutes
Appendix F The Leahy-Smith America Invents Act: Summary and Discussion
PREFACE
The Congress shall have power to promote the progress of science and useful arts, by securing for limited times to authors and inventors the exclusive right to their respective writings and discoveries.
U.S. Const. art. 1, § 8, cl. 8
The field of intellectual property (typically referred to as IP) is one that continues its rapid growth. Until relatively recently, individuals who identified themselves as practitioners in the field of intellectual property were met with blank stares. Now IP professionals are in constant demand, and it is a rare issue of any legal newspaper that does not include advertisements for IP practitioners. Many experts believe this rapid growth can be attributed to the spread of computer and communications technologies throughout the world. Reflecting this, technology-related legislation is continually introduced in Congress. The number of trademark and patent applications filed at the U.S. Patent and Trademark Office continues to grow. Similarly, there is increased emphasis on the need to enhance protection of written materials, including computer software, through copyright or patent registration.
Today’s competitive businesses recognize that more than 80 percent of their value can lie in their intellectual property. With increased technology and global communication come greater challenges to protect intellectual property. Misappropriation or infringement of valuable proprietary information is a keystroke away. Thus, companies and law firms value the expertise of IP professionals who can assist in adopting strategies to ensure IP assets are fully protected.
IP practice groups make extensive use of paralegals. Paralegals are involved in nearly every stage of trademark and patent prosecution and maintenance practice and in the area of copyright registrations and IP audits. The field offers significant opportunities for client contact, challenging issues, and personal and intellectual growth. The specialized nature of IP practice produces highly capable and efficient paralegals whose contributions are valued by both other legal professionals and clients. Expertise in the field is recognized by salaries that are typically higher than those for paralegals in other fields. In addition to law firm IP practice, many paralegals are employed in-house at companies with significant IP assets. These paralegals work closely with in-house counsel to meet the company’s needs. In brief, the field provides significant and rewarding opportunities for career satisfaction.
The recent increased interest in intellectual property, coupled with nearly daily changes in IP law, has caused a relative scarcity in texts that provide both sound, foundational concepts together with the practical advice needed to ensure success for IP paralegals.
This text provides a comprehensive guide to each field within the umbrella of intellectual property, namely, trademarks, copyrights, patents, trade secrets, and unfair competition. The methods by which each is created, procedures to register or protect each, duration of rights, protection from infringement, and new and international developments will be addressed for each of these fields of intellectual property.
Each chapter begins with an introduction to the topics covered therein and concludes with a brief overview of the material presented. Information is arranged in a building-block approach so the reader is presented with comprehensive coverage of each topic. Discussions of each field of intellectual property conclude with a section on the new and emerging issues in that field and then an overview of international implications, such as the methods by which intellectual property can be protected in other countries.
The substantive overview of each topic is complemented by the use of forms, sample agreements, checklists, and other practical guides. References to useful resources and websites are provided in each chapter and online in Appendix C so readers can gather additional information. The specific tasks in which IP professionals are involved are fully addressed. Discussion questions are provided to ensure thorough understanding of each topic. Each chapter presents questions requiring readers to access Internet websites that are of particular interest to IP professionals and requires readers to draft written explanations or descriptions of concepts from the chapter. Key terms are shown in boldface in the text and defined in the margins as well as included in a glossary at the end of the text. Selected trademark, copyright, and patent statutes are provided in Appendix E which is posted on this book’s companion website.
The field of intellectual property is one of the most dynamic and challenging of all legal specialties. Many of the issues are cutting edge: How can a domain name be protected? How can a company ensure its trade secrets are not misappropriated by an employee? What is the best way to protect a computer program that may be obsolete in three years? How can a business be sure its website does not infringe that of a third party? How can intellectual property be protected on social media? How can movies and songs be protected against piracy?
Providing assistance to IP owners thus provides unique opportunities for learning and growth. Moreover, the field of intellectual property is inherently interesting. All of us see and recognize trademarks each day. All of us read books, watch movies, and use inventions. Thus, readers bring a wealth of practical and firsthand knowledge to the study of IP law. This text allows readers to link their experience as consumers with the substantive information presented to ensure IP owners are provided a full range of strategies and methods to protect their valuable assets.
ADDITIONS AND ENHANCEMENTS TO THE FIFTH EDITION
Each chapter includes the following enhanced and new features:
• Trivia. A “fun” section pointing out interesting and new IP facts, statistics, and trivia; for example, one of the chapters discusses the copyright registration for the Statue of Liberty
• Case Illustration. A short “brief” of a case— usually either a seminal case or ground-breaking one—that illustrates a principle discussed in that chapter
• Case Study and Activities. A factual scenario involving a fictional company, Fit Forever, Inc., requiring students to identify various IP problems Fit Forever is encountering and suggest strategies to solve those problems; as an operator of fitness centers, Fit Forever has a host of trademarks, copyrighted materials, and patented inventions
• Internet Resources. A short section given at the end of each chapter with websites specific to the information previously discussed in that chapter
• Ethics Edge. A short ethics tip or pointer relevant to one of the topics discussed in that chapter
• Using Internet Resources. A section requiring readers to access numerous websites and answer questions that are typical of those that occur in real-life IP practice
• Putting It Into Words. A new section requiring students to write letters or draft explanations of concepts discussed in that chapter
This edition also includes several new features and discussion of the following new topics:
• Numerous calendaring, docketing, and fee calculation questions
• Discussion of new trademark issues such as trademark bullying and the registrability of hashtags
• Discussion of the liability of service providers such as eBay for selling counterfeit or infringing goods
• Implementation of hundreds of new domain names by ICANN and the Uniform Rapid Suspension System, which is the new ICANN resolution process to protect gTLDs
• Expanded discussion of the fair use defense in copyright infringement cases
• Enhanced discussion of the Digital Millennium Copyright Act and recent cases interpreting when Internet service providers such as YouTube are entitled to its safe harbor protections
• Discussion of copyrightability of new forms of writings such as tattoos and social media postings
• List of common copyright infringements committed by students
• Change from the U.S. Patent Classification System to the Cooperative Patent Classification System and implementation of reduced fees for micro entities
• Review of the USPTO’s Seven Step Patent Search Strategy
• New term for design patents
• Updated coverage of patentability of software and proposals for patent reform to curb infringement actions brought by “trolls”
• Enhanced discussion of challenges to patents brought at the Patent Trial and Appeal Board, such as inter partes review and post-grant review
• Discussion of the new Defend Trade Secrets Act of 2016, signed into law in May 2016
• Discussion of the effect of Brexit on European and United Kingdom IP rights
Readers will also find new information on enhanced systems at the U.S. Patent and Trademark Office and Copyright Office for streamlining trademark, patent, and copyright applications, and discussion of new and pending IP-related legislation.
Finally, this fifth edition contains discussions of cutting-edge IP issues such as trademark and copyright protection for hashtags and social media postings, whether 3-D printing infringes copyright and patent rights, jailbreaking of iPhones, the Copyright Office’s Fair Use Index, defensive patenting, and ground-breaking new cases such as In re Tam (holding that the Trademark Act’s prohibition against disparaging marks violates the First Amendment’s guarantee of free speech); Authors Guild v. Google (allowing Google’s book scanning project as a fair use of copyrighted works); Petrella v. Metro-Goldwyn-Mayer, Inc. (holding that the laches defense cannot be used in copyright infringement cases); Myriad Genetics (holding that naturally occurring DNA segments are not patentable); and Alice Corp. v. CLS Bank International (tightening the ability of inventors to obtain software patents).
General notes to readers
Throughout this text, helpful websites, fees, and addresses are given. Due to the transitory nature of some websites and frequent changes in fees and other similar information, it is possible that such information may not be current at the time you read this text. The website
of the U.S. Patent and Trademark Office (USPTO), www.uspto.gov, provides current fee and address information. Similarly, the website of the Copyright Office, www.copyright. gov, provides up-to-date information for frequently changing topics and fees. Note that figures and statistics given in the text for USPTO and Copyright Office workloads are for fiscal years (rather than calendar years), which end on September 30.
Note to readers regarding Putting It Into Words Assignments
Although the Putting It Into Words section in each chapter requires students to draft explanations, letters, and portions of letters, any document that provides legal advice must be signed by an attorney. Thus, the Putting It Into Words assignments often anticipate that students will be preparing the first drafts of certain letters and documents, which will then be signed by supervising attorneys.
Note to readers regarding the America Invents Act (AIA)
The most significant change to patent law was enacted on September 16, 2011. The Leahy-Smith America Invents Act changed numerous patent laws, processes, and fees. Readers should thus review the USPTO website for changes in regulations, fees, and so on under the AIA, which may change over time.
Note to readers regarding the use of terms for natural persons, corporate entities, and the like
Pursuant to 1 U.S.C. § 1, as well as other federal statutes, including the Trademark Act, 15 U.S.C. § 1127, the word “person” in any applicable usage and context in this book includes not only natural persons but also “juristic persons,” such as corporations and other entities. Thus, throughout this text, when references are made to “persons” and “individuals” filing various documents, such as trademark, copyright, and patent applications, those references include entities as well (and vice versa).
SUPPLEMENTAL TEACHING AND LEARNING MATERIALS
Instructor Companion Site
The online Instructor Companion Site provides the following resources:
Instructor’s Manual with Test Bank
Written by the author of the text, the Instructor’s Manual contains suggested syllabi, lecture notes, answers to all text discussion and Internet questions, useful websites, and a test bank with more than 650 suggested test questions.
PowerPoint Presentations
Customizable Microsoft PowerPoint® Presentations focus on key points for each chapter. (Microsoft PowerPoint® is a registered trademark of the Microsoft Corporation.)
Cengage Learning Testing Powered by Cognero is a flexible, online system that allows you to:
• Author, edit, and manage test bank content from multiple Cengage Learning solutions
• Create multiple test versions in an instant
• Deliver tests from your LMS, your classroom or wherever you want
Start right away!
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• Simplicity at every step. A desktop-inspired interface features drop-down menus and familiar, intuitive tools that take you through content creation and management with ease.
• Full-featured test generator. Create ideal assessments with your choice of 15 question types (including true/false, multiple choice, opinion scale/Likert, and essay). Multi-language support, an equation editor and unlimited metadata help ensure your tests are complete and compliant.
• Cross-compatible capability. Import and export content into other systems.
To access additional course materials, please go to login.cengage.com, then use your SSO (single sign on) login to access the materials.
New: MindTap (available for separate purchase)
MindTap Paralegal for Intellectual Property: The Law of Trademarks, Copyrights, Patents and Trade Secrets, 5th edition is a personalized teaching experience with relevant assignments that guide students to analyze, apply, and improve thinking, allowing instructors to measure skills and outcomes with ease.
• Personalize Teaching. Personalize teaching with a Learning Path that is built with key student objectives. Instructors control what students see and when they see it. Instructors can use the Learning Path as-is or match to the syllabus exactly—hiding, rearranging, adding, and creating content.
• Guide Students. A unique learning path of relevant readings, multimedia and other activities that moves students up the learning taxonomy from basic knowledge and comprehension to analysis and application.
• Promote Better Outcomes. Empower instructors and motivate students with analytics and reports that provide a snapshot of class progress, time in course, engagement and completion rates.
Student Companion Site
The online Student Companion Site, which includes the Appendices to the text, can be accessed via www.cengagebrain.com.
ACKNOWLEDGMENTS
No text is the product solely of its author. Many individuals contributed significantly to the development of this text. As always, my first thoughts go to Susan M. Sullivan, former Program Director of the Paralegal Program at the University of San Diego. Sue gave me my first opportunity to teach and has always provided support and encouragement. She is a respected colleague and valued friend.
My current Program Director, Corey Brooks of the Paralegal Studies Program at Georgetown University in Washington, D.C., continually displays enthusiasm and passion for education and the paralegal profession. He has been of invaluable assistance and a tremendous source of encouragement.
Special thanks to the reviewers who evaluated the manuscript on behalf of the publisher and provided clear and concise analysis. Their comments and suggestions were of great assistance.
W. Bruce Davis
University of Cincinnati, Clermont College Cincinnati, OH
Marion Tuttle
New Jersey Institute of Technology Newark, NJ
Michelle Miller
Quinnipiac University Hamden, CT
Finally, my most sincere appreciation goes to the following individuals at Cengage Learning, who provided guidance and support throughout the development of this text: Matt Seeley, Erin Brennan, Katie McGuire, Melissa Riveglia, Anne Orgren, and Betty Dickson. Thank you also to Aravinda Kulasekar Doss and her team at Lumina Datamatics Ltd. for its publishing services. Last, but of course, not least, deepest thanks and love go to my husband, Don, and our children, Meaghan, Elizabeth, Patrick, and Robert, for their amazing patience and understanding while I worked on this text.
Much of the basic information in this text relating to trademarks, copyrights, and patents is from the websites of the U.S. Patent and Trademark Office and the U.S. Copyright Office, and the author wishes to acknowledge these agencies. No copyright is claimed in any of the materials or forms of these agencies, including but not limited to Exhibits 2–3, 3–4, 4–1, 4–2, 4–3, 4–4, 4–5, 4–6, 4–8, 4–9, 5–4, 6–1, 8–1, 13–3, 18–1, 18–2, 18–3, 18–4, 18–6, 18–7, 19–2, Appendix D: Forms1 through 7, 9 and 13, and Exhibit E.
SELECTED EXHIBITS
EXHIBIT 2–3 History of Trademarks 20
EXHIBIT 2–6 Types of Marks 23
EXHIBIT 2–7 Timeline for Intent-to-Use Applications 24
EXHIBIT 2–9 Categories of Marks 30
EXHIBIT 2–10 Protectable Matter 34
EXHIBIT 2–13 Matter Excluded from Protection 39
EXHIBIT 2–14 Helpful USPTO Telephone Numbers 39
EXHIBIT 3–2 Trademark Data Sheet (U.S. Applicant) 46
EXHIBIT 3–4 USPTO Trademark Search Strategy 51
EXHIBIT 4–1 List of International Classes 63
EXHIBIT 4–2 Samples of Identifications of Goods and Services 66
EXHIBIT 4–3 Declaration for Trademark Application 69
EXHIBIT 4–4 Schedule of USPTO Filing Fees (trademark matters) as of October 1, 2015 72
EXHIBIT 4–5 Comparison of Marks Alleged to be Confusingly Similar and Action Taken by USPTO and Courts 77
EXHIBIT 4–6 Trademark Official Gazette 80
EXHIBIT 4–7 Timeline for ITU Application 82
EXHIBIT 4–8 Trademark Application Checklist 83
EXHIBIT 4–9 Trademark Registration Certificate 85
EXHIBIT 4–10 Trademark Prosecution Flowchart 86
EXHIBIT 5–1 Dates for Maintenance of Trademarks 96
After reading this chapter, you should be able to:
• Identify the four types of intellectual property.
• Explain the rationale for the protection of intellectual property.
• Understand how rights to intellectual property arise.
• Identify the roles of the USPTO and Copyright Office.
• Understand the functions of international organizations such as INTA and WIPO and identify the treaties that protect intellectual property.
Chapter Overview
Intellectual property law protects the results of human creative endeavor. Intellectual property is generally thought to comprise four separate fields of law: trademarks, copyrights, patents, and trade secrets. A trademark is a word, name, symbol, or device used to identify and distinguish one’s goods or services and to indicate their source. Rights in trademarks are created by use of a mark; registration with the U.S. Patent and Trademark Office (USPTO) is not required, although it offers certain advantages. Copyright protects original works of authorship, including literary, musical, dramatic, artistic, and other works. Just as trademarks are protected from the moment of their first public use, copyright exists from the moment of creation of a work in fixed form; registration of a copyright with the U.S. Copyright Office, while affording certain benefits, is not required. A patent is a grant from the U.S. government that permits its owner to exclude others from making, selling,
using, or importing an invention. Patents exist only upon issuance by the USPTO. A trade secret is any information that derives economic value from not being known to others and is the subject of reasonable efforts to maintain its secrecy. No registration or other formalities are required to create a trade secret, and trade secrets endure as long as reasonable efforts are made to protect their secrecy.
INTELLECTUAL PROPERTY LAW BASICS
Intellectual Property Defined
Real property
Refers to land or real estate
Personal property
Refers to specific items and things that can be identified, such as jewelry, cars, and artwork
Intellectual property (IP)
The result or product of human creativity, including trademarks, copyrights, and inventions; generally, intellectual property consists of the fields of trademarks, copyrights, patents, and trade secrets
There are three distinct types of property that individuals and companies can own: real property refers to land or real estate; personal property refers to specific items and things that can be identified, such as jewelry, cars, and artwork; and intellectual property refers to the fruits or product of human creativity, including literature (i.e., anything in written form, from books to blogs), advertising slogans, songs, or new inventions. Thus, property that is the result of thought, namely, intellectual activity, is called intellectual property (IP). In some foreign countries, intellectual property (especially patents and trademarks) is referred to as industrial property.
Many of the rights of ownership common to real and personal property are also common to intellectual property. Intellectual property can be bought, sold, and licensed. Similarly, it can be protected against theft or infringement by others. Nevertheless, there are some restrictions on use. For example, if you were to purchase the latest bestseller by John Grisham, you would be entitled to read the book, sell it to another, or give it away. You would not, however, be entitled to make photocopies of the book and then distribute and sell those copies to others. Those rights are retained by the author of the work and are protected by copyright law.
Industrial property
The term used in some foreign countries to refer to intellectual property, especially trademarks and patents
The Rationale for Protection of Intellectual Property
Intellectual property is a field of law that aims at protecting the knowledge created through human effort in order to stimulate and promote further creativity. Authors who write books and musicians who compose songs would be unlikely to engage in further creative effort unless they could realize profit from their endeavors. If their work could be misappropriated and sold by others, they would have no incentive to create further works. Pharmaceutical companies would not invest millions of dollars into research and development of new drugs unless they could be assured that their inventions would enable them to recover these costs and develop additional drugs. Thus, not only the creators of intellectual property but the public as well benefit from protecting intellectual property.
On the other hand, if the owner of intellectual property is given complete and perpetual rights to his or her invention or work, the owner would have a monopoly and be able to charge excessive prices for the invention or work, which would harm the public. Intellectual property law attempts to resolve these conflicting goals so that owners’ rights to reap the rewards of their efforts are balanced against the public need for a competitive marketplace. Thus, for example, under federal law, a patent for a useful invention will last for only 20 years from the date an application for the patent is filed with the USPTO. After that period of time, the patent expires, and anyone is free to produce and sell the product.
TYPES OF INTELLECTUAL PROPERTY
The term intellectual property is usually thought of as comprising four separate, but often overlapping, legal fields: trademarks, copyrights, patents, and trade secrets. Although each of these areas will be discussed in detail in the chapters that follow, a brief introduction to
A word, logo, phrase, or device used to indicate the source, quality, and ownership of a product or service; technically, trademark refers to a mark that identifies a product, while service mark refers to a mark that identifies services
A word, name, symbol, or device used to indicate the source, quality, and ownership of a service
each discipline is helpful. (See chart on inside front and back covers of text comparing and contrasting the various types of intellectual property.)
Trademarks and Service Marks
What Is Protectable. A trademark or service mark is a word, name, symbol, or device used to indicate the source, quality, and ownership of a product or service. A trademark is used in the marketing of a product (such as REEBOK® for shoes), while a service mark typically identifies a service (such as STARBUCKS ® for retail store services, Exhibit 1–1). A trademark or service mark identifies and distinguishes the products or services of one person from those of another.
In addition to words, trademarks can also consist of slogans (such as I’M LOVIN’ IT® for McDonald’s food products, Exhibit 1–2), designs (such as the familiar “swoosh” that identifies Nike products), or sounds (such as the distinctive giggle of the Pillsbury Doughboy).
Trademarks provide guarantees of quality and consistency of the product or service they identify. Thus, upon encountering the golden arches that identify a McDonald’s restaurant, consumers understand the “Big Mac” they purchase in Chicago will be the same quality as one purchased in Seattle.
Companies expend a great deal of time, effort, and money in establishing consumer recognition of and confidence in their marks. Yet not all words, phrases, or symbols are entitled to protection as trademarks. A chain of stores that sells clothing could not obtain a registered trademark for “Clothing Goods” inasmuch as the name is generic, yet GAP ® is a nationally recognized mark for the retail sale of clothing. Marks may not be protectable if they are generic in nature or merely descriptive of the type of products or services they identify. Generally, marks that are protectable are those that are coined (such as KODAK®), arbitrary (such as SHELL® for gasoline), or suggestive (such as STAPLES® for office supplies).
Federal Registration of Trademarks. Interstate use of trademarks is governed by federal law, namely, the U.S. Trademark Act (also called the Lanham Act), found at 15 U.S.C. §§ 1051 et seq. (See Appendix E.) Additionally, trademarks are provided for in all 50 states so that marks that cannot be federally registered with the USPTO because they are not used in interstate commerce can be registered in the state in which they are used.
In the United States, trademarks are generally protected from their date of first public use. Registration of a mark is not required to secure protection for a mark, although it offers numerous advantages, such as allowing the registrant to bring an action in federal court for infringement of the mark. Applications for federal registration of trademarks are made with the USPTO. Registration is a fairly lengthy process, generally taking anywhere from 10 to 24 months or possibly longer. The filing fee is $225 per mark per class of goods or services covered by the mark if the application is filed electronically and certain other requirements are met.
EXHIBIT 1–1 Starbucks mark
Source: Starbucks.
EXHIBIT 1–2 McDonald’s mark
Source: McDonald’s Corporation.
Service mark
A trademark registration is valid for 10 years and may be renewed for additional 10-year periods thereafter as long as the mark is in use in interstate commerce. Additionally, registrants are required to file an affidavit with the USPTO between the fifth and sixth years after registration and every 10 years to verify the mark is in continued use. Marks not in use are then available to others.
Trademarks are among the most visible items of intellectual property, and it has been estimated that the average person in the United States encounters approximately 1,500 different trademarks each day and 30,000 if one visits a supermarket. A properly selected, registered, and protected mark can be of great value to a company or individual desiring to establish and expand market share. There is perhaps no better way to maintain a strong position in the marketplace than to build goodwill and consumer recognition in the identity selected for products and services and then to protect that identity under federal trademark law.
Copyrights
Copyright
Right protecting original works of authorship, including literary, musical, dramatic, artistic, and other works, from unauthorized reproduction, sale, performance, distribution, or display
What Is Protectable. Copyright is a form of protection governed exclusively by federal law (17 U.S.C. §§ 101 et seq.) granted to the authors of original works of authorship, including literary, dramatic, musical, artistic, and certain other works. (See Appendix E.) Thus, books, songs, plays, jewelry, movies, sculptures, paintings, and choreographic works are all protectable. Computer software is also protectable by copyright.
Copyright protection is available for more than merely serious works of fiction or art. Marketing materials, advertising copy, and cartoons are also protectable. Copyright is available for original works; no judgment is made about their literary or artistic quality. Nevertheless, certain works are not protectable by copyright, such as titles, names, short phrases, or lists of ingredients. Similarly, ideas, methods, and processes are not protectable by copyright, although the expression of those ideas is.
Copyright protection exists automatically from the time a work is created in fixed form. Thus, similar to trademark law, securing a registration for a work (with the U.S. Copyright Office) is not required for a work to be protected, although registration does provide significant advantages, such as establishing a public record of the copyright claim and providing a basis upon which an infringement suit may be brought in federal court and in which statutory damages and attorneys’ fees may be recovered.
The owner of a copyright has the right to reproduce the work, prepare derivative works based on the original work (such as a sequel to the original), distribute copies of the work, and to perform and display the work. Generally, violations of such rights are protectable by infringement actions. Nevertheless, some uses of copyrighted works are considered “fair use” and do not constitute infringement, such as use of an insignificant portion of a work for noncommercial purposes or parody of a copyrighted work.
Federal Registration of Copyrights. Neither publication nor registration of a work is required for copyright protection, inasmuch as works are protected under federal copyright law from the time of their creation in a fixed form. Registration, however, is inexpensive, requiring only a $35 filing fee (for applications filed electronically), and the process is expeditious. In most cases, the Copyright Office processes electronically filed applications in about three to eight months.
Generally, copyrighted works are automatically protected from the moment of their creation for a term enduring for the author’s life plus an additional 70 years after the author’s death. After that time, the work will fall into the public domain and may be reproduced, distributed, or performed by anyone. The policy underlying the long period of copyright protection is that it may take several years for a painting, book, or opera to achieve its true value, and, thus, authors should receive a length of protection that will enable the work to appreciate to its greatest extent.
