June 2024

SCORE (Service Corps of Retired Executives) offers innovators a wealth of useful information and advice: mentors (specialized or general, local or from across the country, in-person or remote), events (live or recorded; in-person or online), courses (live or recorded), and business document templates.  Dave Zedonis (president, Indiana Inventors Association) shared one of SCORE’S webinars with us: IP Types and Infringement by patent attorney Michael Steel.

Success of a business often depends on its tangible ideas: inventions, symbols that communicate the company to its customers, and creative expressions.  Naturally, business owners want to protect this competitive edge.  So they enlist the help of the government by getting patents, trademarks, and copyrights, which are enforced by court systems.

Patents

Patents are available for useful things (utility patents), for ornamentation (design patents [important for 3-D printing]), and for biological plants (plant patents).

A patent gives its owner the right to exclude others from benefitting from a specific invention during a specific time.  If others want to benefit from the invention during that time, the patent owner might sell or rent the patent to them.

Importantly, a patent does not give its owner the right to use the invention.  For example, one invention (eg, a triode) might be a specialized form of a second, more general, invention (eg, a diode).  To use his invention, the owner of the specialized patent must get permission (usually in exchange for a fee) from the owner of the general patent.

Trademarks

A trademark is available for a symbol (appearance, sound, smell, touch, word or phrase) that represents a company.  For example, a company’s name, slogan, logo, or how its product looks and feels.  The primary purpose of a trademark is to protect the customer by letting him know about the quality of a product or service.  The secondary purpose is to protect the company from its competitors by distinguishing it from them.  A trademark lets the owner exclude other from using that trademark.

Whether one trademark infringes another trademark is decided by answering questions like:

• Are customers likely to be confused by the potentially infringing trademark?

• Does the potentially infringing trademark injure the other company’s reputation?

• Does the potentially infringing trademark decrease the business opportunities of the other company?

The strength of protection a trademark provides to its owner comes from using the trademark, not from registering it with the government.  The more people who know about a trademark, the stronger it is.

Registering a trademark with the U.S. government is not needed for the trademark to be effective, but registering the trademark strengthens it in court.  A registered trademark provides national instead of local protection and the owner may sue infringers in a federal court.  U.S. Customs will stop infringing products at the national border.  A registered trademark is evidence in court that the owner has the exclusive right to use the trademark in commerce.  It’s a good idea to register a trademark if you let contractors / 3^rd parties use it because registration lets you control what they do with the trademark.  The minimum cost to register a trademark with the help of an attorney is about $1,000.

TM or SM (for a service mark) printed on a product in superscript next to the trademark indicates a free, unregistered, common law trademark.  ® superscript indicates a federally registered trademark.

Copyrights

A copyright is the exclusive right to copy an authored work (eg, book, film, software, art, song, podcast, concert).  A common law copyright automatically exists for a work the moment it is fixed in material format.  Registering a copyright with the government lets the owner sue infringers in court and notify U.S. Customs to prevent infringing imports from entering the country.  A copyright for a book is indicated by ©, that for a sound recording by an encircled P.

One copyright infringes another if it is substantially similar.  Noncommercial use of a copyrighted work is allowed if it does not decrease the copyright owner’s ability to profit from the work.

The copyright of a job-related work created by an employee belongs to the employer, not to the employee.  But the copyright of a job-related work created by a contractor belongs to the contractor, not to the employer.  The contractor may (usually for a fee) assign the copyright to the employer.

Trade Secrets

A trade secret is exclusive secret knowledge (eg, the formula for Coca Cola) that is commercially valuable to its owner.  Unlike with other forms of intellectual property, the government does not protect a trade secret and does not grant or register one.

Taking steps to reasonably protect the knowledge from disclosure lets the owner sue someone who discloses the knowledge.  But once the knowledge is disclosed, anyone may freely use it.

Thank you, Mr. Zedonis, for letting us know about this very helpful resource.