IP IQ

Intellectual Property refers to a number of distinct types of creations of the mind.
Nice definition, but what does all that mean? We try to answer the questions that are frequently asked.

As with all areas of the law, we see the same questions pop up time after time and thought it might be helpful to provide answers to the trademark questions in one convenient and easy to find spot. If you have any additional questions you would like to see referenced on this page, please feel free to drop us an email. We always appreciate feedback and input.

What is the difference between trademarks, patents, and copyrights?

Trademarks protect brands such as company or product names, logos, and distinctive coloring. Patents, on the other hand, protect inventions such as machines, processes, products and chemical compositions that are used to make or comprise a part of the product. Copyrights protect original works of authorship such as writings, computer programs, and works of art.
Let’s think of this in terms of an example – M&M’s® candies. Trademarks protect the M&M’s® brand name. Patents, on the other hand, protect the machine that can print images on M&M’S® candies and copyrights protect the written and graphic content on the M&M’s® website, such as the artwork for the M&M’s® characters.

For more discussion about the differences between each of these types of intellectual property, please see this PHOSITA post.

How can a trademark attorney help my company?

A trademark attorney can assist your efforts in selecting a trademark by researching and analyzing similar trademarks in order to reduce the risk of adopting a mark that is in use by someone else. A trademark attorney can also assist in the legal steps necessary to obtain state, federal, and international trademark registrations for your company’s name, logos, product names, slogans, and the like. Management and oversight of your trademark portfolio is necessary in order to “police” your mark against infringers. Setting up trademark monitoring services is an important first step. Once an infringer is found, a trademark attorney can facilitate the enforcement of your trademark rights by sending cease and desist letters and, in some instances, filing lawsuits against third parties to stop their use of the mark and collect damages.

I am starting a new business and recently came up with a name for my business. What should I know about trademarks before I use this name?

Rights in a name are generally established by being the first to use the name in connection with a product or service. As such, it is a good rule of thumb to “test the water before jumping in.” Before you invest too much in marketing and branding for your business, it is recommended that a trademark search be conducted by an attorney to determine whether your proposed name is fit to enter the marketplace.
A thorough trademark search involves an extensive search of a variety of resources, including United States Patent and Trademark Office records, industry directories, trade journals, the Internet, and domain name databases. With the results of the trademark search in hand, you may make an informed decision as to whether your proposed name is available for your use. Without the information provided by a trademark search, you risk adopting a trademark that is susceptible to a claim of infringement, and all that comes along with such a claim, including the possibility of having to change your name after having already invested a significant amount of time and money.

Can your company benefit from an intellectual property strategy, including trademark protection?

Nearly all companies have intellectual property assets of some form, whether they know it or not. Such intellectual property assets may include patents, trademarks, copyrights and trade secrets. Although patents themselves, for example, remain a boring and dry subject, (read one and see for yourself) by protecting innovations and by giving patent owners the exclusive right to practice the invention, patents can be of great importance and value to any company. Nevertheless, many companies have not used the inherent wealth producing potential of intellectual property effectively due to the fact that much of the value of intellectual property is often simply ignored or forgotten. Intellectual property is an asset, and can often be a valuable one, but companies must have a strategy in place for properly utilizing it. Given the diversity of types of intellectual property, and the varied circumstances surrounding its creation, an intellectual property audit is often a beneficial first step in any intellectual property strategy, allowing companies to identify and utilize forgotten assets.

Do you have any tips for selecting a trademark?

Absolutely. Generally, it is a good idea to select a mark that is different from other marks in your industry. For example, APPEL as a mark for computer accessories would be a poor choice because it is similar to and would likely be confused with APPLE® computers.
Start by generating a list of several marks. Write down every mark that comes to mind. Try to think of a few that are completely unrelated to your products or services, for example, BLUE DIAMOND® for nuts or XEROX® for photocopiers. After narrowing your list down to a select few, it is recommended that you consult an attorney to conduct a trademark search to determine whether your proposed marks are available for use in the marketplace.

Do I have to register my trademark to protect it?

To prevent others from using your trademark anywhere in the United States, you should federally register your trademark. Although “common law” trademark rights are created just by using a mark, these rights are generally limited to the geographic areas in which the mark is being used.

Consider this example. Robert opens up a hot dog stand in Oklahoma City called HOT DIGGITY DOGS™. Carrie later opens up a hot dog stand in Edmond called HOT DIGGITY DAWGS™. Since both hot dog stands are in the same geographic area, Robert could sue Carrie for trademark infringement if consumers are likely to confuse HOT DIGGITY DOGS™ with HOT DIGGITY DAWGS™. Without a federal trademark registration, however, Robert may not be able to prevent someone from using a similar mark in a market he has not yet entered, such as Dallas or New York City. Thus, Robert should obtain a federal registration to obtain priority to the trademark throughout the United States.

What is the value of a unique trademark?

It has been estimated that the average resident of the United States encounters approximately 1,500 different trademarks each day and 30,000 after a visit to the supermarket. Just imagine how many trademarks the average resident encounters during the holiday season as the level of shopping and advertising increases – these numbers could double or even triple!

This is why selecting and protecting a unique trademark is so important. A unique trademark helps consumers recognize and distinguish your brand from thousands of others.

So, while you are out finishing up some last minute holiday shopping, try counting the number of trademarks you see. You might be surprised to find out just how many you encounter. Take note of the trademarks to which you are drawn to the most. Are they unique?

Why should I federally register my trademark?

A federal trademark registration is one of the cornerstones of brand protection. A federal trademark registration provides several benefits that can be invaluable in a competitive marketplace. For example, a federal trademark registration (unlike a state registration) provides nationwide protection, even if you are not using a trademark everywhere in the United States. In addition, a federal trademark registration provides notice to the public of your claim of ownership in a trademark, allows a lawsuit for trademark infringement to be brought in federal court, and provides means for preventing infringing and counterfeit goods from being imported into the United States.

What steps should I take to protect my trademark?

Two basic steps that should be taken to protect your trademark rights are (1) use your trademark properly and (2) instruct third parties how to properly use your trademark. Proper trademark usage is essential to maintaining trademark rights and in acquiring new trademark rights. Proper trademark usage includes the use of appropriate markings (e.g., ® or TM) and proper grammatical usage of the trademark (e.g., use as adjective, not as noun). Also, trademark owners have an obligation to police the use of their trademarks to ensure their trademarks are used appropriately. Policing your trademarks may include educating third parties as to proper trademark usage and correcting third parties (such as the news media) who may incorrectly use your trademarks.

Someone recently started a business with a name that is similar to my company’s name. How can I tell if this is trademark infringement?

Receiving phone calls or e-mails from individuals who have confused your company with the other company is a good indication that trademark infringement exists. Generally, trademark infringement arises when one person or company uses a name for its product or service that is identical or very similar to another. For example, after the recent storms in the metro area, an out of town roofing company came to this market and used the same name as an existing Oklahoma roofing company. Those affected by the storms were unable to distinguish the two roofing companies. The company recognized the problem and contacted an attorney and the matter was resolved shortly thereafter.

Your company’s reputation is vital to its success. If your company’s reputation is affected by the actions of another company, consider contacting an attorney specializing in trademark law to discuss your potential remedies.

Is it legal to copy the works of others?

No, if the work is protected by intellectual property rights, e.g., patent, trademark, copyright, or trade secret. However, works not protected by intellectual property rights are part of the public domain and are free to be copied.

Determining whether something is protected by intellectual property rights is not always simple. For example, products purported to be protected by a patent may not actually be covered by a patent, or if a product is covered by a patent, the protection may be very narrow in scope. Trademarks you may want to use, even though similar to someone else’s marks might be allowable if the goods and/or services provided under the two marks are sufficiently unrelated (e.g. DELTA faucets and DELTA airlines). On the other hand, certain works are protected by very broad intellectual property rights to the point that attempting to copy these works will inevitably subject you to a lawsuit for infringement.

In the end, an experienced intellectual property attorney can help you create defensive strategies to avoid illegally copying works that are protected by intellectual property rights, as well as offensive strategies to protect your own intellectual property rights.

If I obtain a copyright for my wine cork necklaces, what keeps someone from copying them and what are the consequences or procedures to keep that from happening. Also, do I need to be an established business or may I obtain a copyright for this hobbY?

United States Copyright law protects “original works of authorship,” which is to say that it protects the original and creative work of makers and creators, jewelry designers included. Generally, the moment an original work is created, copyright protection vests in that work. In other words, the moment you create an original piece of jewelry or jewelry design, you own the copyright to that piece of jewelry and/or design. As the owner of a copyrighted work, you have the right to:

• Reproduce the work;
• claim rights to similar works based off your work;
• distribute copies of the work;
• sell copies of the work;
• transfer ownership of the work; and
• display the work publicly.

Because copyright vests upon creation, individuals, as well as businesses, are eligible for copyright protection in their original work. There is no requirement that a creator must be associated with a formal business entity to claim a copyright to his/her original work.

A U.S. Copyright registration does not earn a copyright owner rights in and of itself. A registration will however, enhance copyright rights by giving the copyright owner access to federal courts and enhanced damages, as well provide a clear cut document to prove ownership.

Effective enforcement of copyright is largely up to the copyright owner. A strong deterrent to potential copycats is to put the public on notice of your copyright rights. Copyright owners can do this by listing a copyright disclaimer on their websites and marketing materials. If you suspect someone has copied your work, however, it is best to seek the counsel of a copyright attorney before reaching out to the potential copycat. Depending on the circumstances surrounding the copying there are various levels of action that can be taken to approach and amend the problem.