Principal or Supplemental?

A little known fact about the Trademark Registry: there are actually two registers for marks, the Principal and the Supplemental. As the names imply, one is more desirable than the other. But, how do you know which one to use? It's actually quite simple.

The Principal Register is where most marks are registered because most marks are capable of meeting the requirements to be on the Principal Register. One of those key requirments it that the mark be distinctive of the goods or services upon which it is affixed. Put another way, the mark must be inherently distinctive from the outset to be eligible to be on the Principal Register or it must have acquired enough distinctiveness to function as a mark.

What is distinctiveness? 'Distinctiveness' - also known as secondary meaning - is where the public has come to identify the term or design at issue with the products or services of the provider. For marks that are inherently distinctive, this happens automatically because the marks themselves are either suggestive, arbitrary or fanciful. These are known as the Abercrombie factors, named after the case in which they were established.

For marks that are merely descriptive - or simply they immediately convey an idea of the ingredients, qualities or characteristics of the goods or services - they cannot be inherently distinctive because they lack that ability to identify the source of the goods. For these marks, there is another route to registration: The Supplemental Register.

The Supplemental Register is designed for marks that are merely descriptive and that have not otherwise acquired distinctiveness. A registration on the Supplemental Register does not afford all of the benefits associated with the Principal Register, however, it does afford two very important ones: marks on the Supplemental Register can still use the ® symbol and the marks will show up when others search to determine if a mark is available. The biggest detriment to a Supplemental Registration is that you still have to prove that your mark is capable of functioning as a mark should you decide to sue someone else for infringement or other Lanham Act claims.

Once the mark has been used in commerce for at least five years, there is a presumption that it has acquired distinctiveness and thus can be registered on the Principal Register, but only under Section 2(f) of the Lanham Act. This will be noted on the registration so that others can be made aware that it is not inherently distinctive.

On balance, when choosing between a registration albeit on the Supplemental Register and no federal registration, the benefits still usually outweigh the drawbacks.

A Disturbing Trend

What do you do if the mark that you want to register at the Patent & Trademark Office is already registered by someone else? Conventional wisdom would say to try to buy the mark from them. If that doesn't work, most people give up and find a new mark. There is a disturbing trend, however, of the person who wanted to register the mark going filing to cancel the registration of the current owner.

We have seen several of these kinds of cancellations filed recently, all of which have argued that the registration should be cancelled for abandonment due to non-use or even fraud. Non-use is presumed if a mark has not been used in commerce for two consecutive years. In some cases, there are even allegations that the owner of the mark fraudulently represented in their Section 8 Affidavit of Continued Use to the PTO that they had been using the mark on the goods or services in the registration when in fact, according to the person trying to get the registration cancelled, they had not.

So far, we have not seen any decisions on these types of cases, but they represent a very disturbing trend of aggressive tactics to obtain a registration for a mark. As always, it is critically important for a mark owner to continue to use the mark so that there is no basis for someone else to seek a cancellation of the mark.

There is nothing to stop someone from filing a cancellation petition, but at a bare minimum you can fight it back with definite evidence of use, the ultimate cure.

www.heythatsmymark.com

It is a gross understatement to say that the Internet has revolutionized the way in which we live, from how we communicte to how we work. It has also made it a lot easier for people to infringe on other people's marks.

The first real wave of infringement that was recognized was when people would buy well-known marks as domain names and then sit on them waiting for the owner to pay them handsomely for the right to have their trademark in a domain name. This is known as 'cybersquatting'. A cousin is 'typosquatting' where the user relies on people's typos to find other versions of a trademark name and send them to a competitor's website.

Congress acted relatively quickly to make cybersquatting a civil offense by enacting the Anti-Cybersquatting Consumer Protection Act, which took effect in November 1999. Under the ACCPA, companies and individuals may bring a civil action against an alleged cybersquatter, but must prove, among other things, that the person who registered the domain name did so with a bad faith intent to profit from that registration.

Since its enactment, the ACCPA has been used numerous times by companies and individuals intent on reclaiming their intellectual property from squatters. But, are there other ways to protect your mark when it has been appropriated by a cybersquatter? As it turns out, yes.

ICANN - the Internet Corporation for Assigned Names and Numbers - has established uniform policies for domain name dispute resolution and certifies several organizations to handle domain name disputes of certin top level domains (TDLs), including WIPO. Other domains may have to be handled by the regional registrar. For example, domain names ending in .uk can only be resolved through Nominet UK, the registrar.

Domain name dispute resolution can offer a less expensive method of obtaining a good resolution, namely the transfer of the domain name to you. You may not be able to obtain damages or other relief like you would in litigation, but it can get the most valuable asset - the domain name - out of the hands of the infringers and back to you as quickly as possible.

image: Rosewithan (through Creative Commons, some rights reserved)
All text © 2008, Hardy, Carey, Chautin & Balkin, LLP. All Rights Reserved.

How To Lose Your Trademark In 4 Easy Steps

Creating a trademark is actually quite easy. Pick a name, a word, a number, a design - or a combination of those things, start using it on the sale of an item or a service, and voila you have your very own trademark. Registration - while extremely adviseable - does not mark the beginning of the life of the mark. A mark comes into being when it is used on the goods or services that are sold. It is literally that simple.

It is also easy to lose your trademark rights - even if you have gone through the expense and time of getting a registration, or litigating the mark. Like grass that gets overgrown without being cut, trademarks that languish without being used will fall into disrepair and inevitably, die.


So, here are the top 4 ways to lose your trademark:

1) Stop using it. It stands to reason that if use gives a mark its life, then failing to use the mark takes that life away. Unlike copyrights that are valid for a fixed period of time regardless of use, trademarks that are not used are considered abandoned - even if there is a valid registration. There is nothing to prevent a competitor who wants to get its hands on your mark from filing a cancellation of your registration based upon abandonment. It is then up to you to prove otherwise.

2) Don't File the Forms: this is more toward the registration of the mark, but a registration is critically important in allowing you to enforce your rights in your mark. So, you can easily kill your registration by failing to file the Section 8 use affidavit at the correct times. For marks that have just been registered, this is between the 5th and 6th year of registration and again at the first renewal. For those marks that have already been renewed, the Section 8 affidavit must be filed upon each successive renewal.

3) Let Others Use It Without Policing: Depending upon how wide-spread your use is, this may or may not be a big issue. For those who regularly license their marks to other for use on goods or services, it is critical to police those licensees to ensure that they are meeting quality control standards such that the product or service that bears your mark lives up to the reputation that you have built. Failure to do this will lead to a weakening of even the strongest marks and will open the door for competitors to come in and declare it abandoned.

4) Don't Go After Infringers: This is a tie-in with No. 3. Part of the obligation of a mark owner to police its mark is to go after those who infringe. Wilfull infringers - or those who pick a mark based upon your success - need to be shut down as soon as possible to prevent the taint of their (usually) inferior use on the strength and goodwill of your mark. This is why handbag manufacturers are so eager to go after counterfeiters.

The key to maintaining your mark - and your registration if you get one - is to use it and to pay attention to how others use it, going after those who infringe.

If you put all of those resources into building a brand, why throw it away?
image: brentdanley (through Creative Commons, some rights reserved)
All text © 2008, Hardy, Carey, Chautin & Balkin, LLP. All Rights Reserved.

Call Signs Can be Trademarked?

Radio and television stations generally do not have much in the way of trademark issues. The main intellectual property issues for these stations are copyright-related, be it the content that is aired, licenses for music, etc. But, trademark law does serve a useful purpose for radio and television stations, if in a limited capacity.

Have you ever considered registering your call sign as a trademark?

Not so long ago, this was a very thorny question, as the FCC exerted a great deal of control on this issue. It has since given up its role as authority over call signs - other than to register them for use on radio and television stations. The Patent & Trademark Office now has sole dominion over registering call signs as marks.

As with all potential registration applications, however, the key question to ask is: are you using the call sign as a mark? To 'use' a mark, means to use it on goods or services as a source identifier. Thus, 'Apple' for computers identifies to consumers that Apple Computers created the product that they are using. At its most basic level, the trademark is designed to allow consumers to make choices based upon reputation and goodwill of the business. This is why counterfeiting of goods is such a problem - it dilutes the goodwill of the brand by using it to sell shoddy merchandise.

For call signs, they can usually meet the requirement of being distinctive enough to function as a source indicator. The real question is whether they actually do function as a source indicator and that is usually dependent upon how the call sign is used.

Most frequently, the mark that is registered is the call sign plus some catch phrase that the station is using, so for example, KXYZ-FM "The Number One" can function as a mark as long as it is used to indicate that the radio services that are being provided come from KXYZ-FM. And, the call sign itself can also be registered assuming that it is used to denote the source of the services.

Registrations of marks are very advantageous - you can use the ® symbol, you have a registration with a presumption of validity when you go into court and, perhaps more importantly, your registration prevents others from registering the same or very similar marks. The costs are relatively low considering that you get a registration for 10 years (although an affidavit must be filed between the 5th and 6th year of registration and has a fee associated with it) and the benefits of that registration.

All in all, it is worthwhile to investigate this option very carefully.
image: Whiskeygonebad (through Creative Commons, some rights reserved)
All text © 2008, Hardy, Carey, Chautin & Balkin, LLP. All Rights Reserved.

Cease and Desist!

There is something about a letter on official lawyer letterhead with the ominous words "cease and desist" that can be very intimidating. "What did I do?", you wonder. "What are they going to do to me?"

A cease and desist letter can be very frightening, especially if it contains language about immediate litigation if you don't do exactly what is requested of you in the time period allotted. So what exactly is a cease and desist and what should you do if you receive one?

A cease and desist letter can take many forms from a fairly friendly reminder that you are using some intellectual property that doesn't belong to you to an outright threat of litigation if demands aren't met in a specific amount of time. Typically, a cease and desist letter falls somewhere in the middle and outlines who the person is who is writing, the interest of their client and what actions you have taken that has apparently infringed on their client's rights. The letter will also include some request for relief such as an outright halt of your allegedly infringing activities. It may also request information behind how you obtained the images (if it is copyright) or how long your alleged infringement has occurred.

The key to remember whenever receiving a cease and desist letter is to not panic. There are quite a few cease and desist letters that are sent that have absolutely no basis in fact (or in law). The best course is to first send the letter to your intellectual property counsel so they can determine what is being alleged. They should then ask for information from you to determine whether there is some factual or legal basis for the claim. Then, with your approval, they should prepare a formal response that addresses the allegations contained in the letter. Some times this could include agreeing to halt the infringing activity to avoid litigation.

Depending upon how thorough the response is and how unfounded the complaint was, you may not hear anything further from the other party. Of course, they may also find your response inadequate and proceed to file suit. Even if this happens, however, you have been given an idea of what they will argue and so it should not be as much of a shock if they actually file suit.

The ideal way to deal with a cease and desist letter is to review it, send it to counsel and make sure that counsel has enough information to make an accurate and thorough response. Good communication, even with someone who is threatening to sue you, is very important in heading off a lawsuit!
image: PearlsofJannah (through Creative Commons, some rights reserved)
All text © 2008, Hardy, Carey, Chautin & Balkin, LLP. All Rights Reserved.

An Idea Ripe for the Taking

image: Tiago Daniel
We all have ideas at one time or another. Some are good, some are bad and most are rather mediocre. And then, there are those few that are brilliant - at least we think so. But, what happens when your brilliant idea shows up as being thought of by someone else? Or worse, they're making money off of it and you're not? What do you do?

It's actually not a very simple question.

While the law is breathtaking in the breadth of areas that it covers, it's not always immediately obvious just where a perceived wrong fits in. Theft of an idea is one of those things that may be an exercise in fitting a square peg in a round hole. Perhaps surpisingly, none of the areas of intellectual property law that our firm practices - trademark or copyright - provides any amount of assistance.

The Copyright Law is very clear that ideas are not protected (and neither are procedures, processes, systems, methods of operation, concepts, principles, or discoveries.) Copyright protects only the expression of that idea. If ideas were covered, no one would be able to paint a picture of a bowl of fruit or write a play about relationships because there would be that one person who had already claimed the copyright in those ideas. The world would be a dull place indeed.

Should someone decide to paint a bowl of fruit, the copyright law will protect the expression of that painting: the manner in which the fruit is arranged, the lighting, the draping used, the style of the painting (abstract? modern? traditional?) and all of the other factors that go into making that particular painting unique. Indeed, the law itself only provides protection to original works of authorship. How can an idea to paint a bowl of fruit be original?

Trademark law also is no help. It is only interested in the mark that you use to sell your idea. It could care less what the item actually is. (Patent law, of course, would be mentioned as a possible contender. However, that is for a blog other than ours.)

Perhaps ideas can have no owners and instead be recognized by society as open to all for their use and expression. Now that is a novel idea.

What is My Picture Doing On Your Website?

We live in a click and save world. It is astonishingly easy to save a picture that you find on the internet onto your hard drive simply by right-clicking on your mouse and choosing "save". And that is the beginning of a minor nightmare for many owners of iconic images or important pictures.

For many businesses, the investment in good photography is essential. You need appetizing pictures of your entrees, beautiful pictures of your necklaces or sleek images of happy people enjoying your restaurant to entice customers. Many businesses turn to a professional photographer to get just the right look and then use those pictures universally in print ads, on the internet and at the point of sale to reach customers.
image: Tal Bright
But what happens when you see your photograph that you spent a great deal of money on being used to advertise someone else's entrees or jewelry or restaurant? Besides seeing red, you would wonder how they got their hands on it and what you can do about it. The first question isn't nearly as important as the second question.

When you find yourself staring at your photograph being used to promote someone else's business, the best thing to do is contact your intellectual property counsel with as much detail as possible about where you saw the picture being used. Copies of the use are particularly helpful. Also be able to answer questions such as how did you find it, where was it featured, who published it and was there any contact information. The more information you can provide on the front end, the easier it will be for your counsel to track down the person who is using the photograph.

What will your counsel do? I cannot speak for other firms, but our firm typically evaluates the issue and determines what kind of problems are present. If a picture was stolen, then it is probably a copyright infringement issue. If the logo for the entity is also there, then it can also present a trademark infringement or dilution issue. Once we have evaluated what types of issues are involved, then we determine the appropriate response.

Usually, our opening salvo is a cease and desist letter pointing out the problem and demanding immediate correction, normally removal of the picture and destruction of it. In some cases, the copying is so blatant and so malicious, that a cease and desist letter may not be useful and we determine that it would be better simply to file suit for infringement. Your intellectual property counsel will determine based upon their usual course and the facts at hand what course is best in your situation.

Once contact with the infringer is established, then it is useful to find out how the person got their hands on the picture in the first place. If they got it from someone else, for example an ad agency, there may be a need to go to the ad agency as well. Often times, the person may have gotten it simply by right-clicking on the picture on your website. Regardless of what they were thinking when they did this, it illustrates how easy it is for others to hijack the intellectual property of someone when it is not properly protected. The best way to do that is to disable the right-click feature for pictures. This will not deter all people who want to use your picture, but it will make it much less attractive to those seeking an opportunity.

When you pay a lot of money to have professional photographs taken for your business, there is not much that is more discouraging than to find someone else using them without having paid for them. The good news is that you can prevent this with a simple disabling of the right-click mechanism and you can help your counsel identify and go after the person who does manage to steal your pictures.

Streaming Right Into Trouble - Part II

This is the second in a two-part series on internet streaming and the copyright issues that go with it. This part will discuss the application of the new streaming rules. The first part discussed the history behind the new streaming rules.

Part Two

The decision of whether or not to stream a broadcast of music or any music at all on the Internet is actually quite complicated. There are costs associated with the software used, licensing of the musical works (the lyrics and composition) through the "performing rights societies" BMI, ASCAP and SESAC and, of course, the licensing of the sound recordings (the actual recording that is played). On top of the costs, there are reporting requirements as well. And, then, there are the minimal statutory requirements that must be met before you even begin streaming. For many broadcasters, the decision tree ends pretty much where it began after the costs in time, resources and money are added up.
image: tizianoj

For those who decide to continue on despite this, the process can be broken down into several steps.

1) Find the right software. Ideally, the software should be able to keep track of a lot of data including the number of listeners at any given time and what tracks were played when. If it has the ability to generate reports, that is even better. The right software will make life much easier and help with No. 2.

2) Meet the statutory requirements. The Digital Millenium Copyright Act ("DMCA") was set up in such a way that broadcasters who stream music get a statutory license to do so - which eliminates the need to go to each and every music owner to get a license for all of the music that is played- but only if the broadcaster meets all of the requirements.

3) File a notice with the Copyright Office. It's still not time to flip the switch just yet. The broadcaster must now have to file a Notice of Use of Sound Recordings Under Statutory License with the Copyright Office (and pay a $20 fee). The good news is that this is a one-time filing, unless you have information that changes in which case, an amended version would need to be filed (with a new fee, of course).

4) File a Statement of Account with SoundExchange. SoundExchange is the clearinghouse organization that was appointed by the U.S. Copyright Office to collect royalties from the internet streaming of music, among other things, and distribute those royalties to the artists who own the copyrights in the sound recordings that are being played.


The good news is that the Statement of Account can be filed with SoundExchange after the broadcaster starts streaming. The bad news is that the minimum payment must be included with it.

Once the software is in place, the statutory license requirements are met, the notice is filed with the Copyright Office and the Statement of Account is filed with SoundExchange, the broadcaster is started down the road. But, maintenance is required.

Under new rules promulgated by the Copyright Royalty Board (which was given authority to do this by the Copyright Office), broadcasters who stream must file quarterly reports with SoundExchange detailing at least two weeks' worth of programming so that SoundExchange can know how to divvy up the royalties that it receives.

The annual fee that is paid also varies wildly depending upon the number of performances that were made, the nature of the internet stream (commercial vs. non-commercial) and several other factors.

I have just outlined the very basics of streaming and the regulations that must be followed and this listing should by no means be used or interpreted as the only things that must be considered. As always, anyone wishing to begin streaming on the internet should consult a qualified attorney with background in copyright and specifically streaming so that they can evaluate the specifics of the situation.

Streaming is here to stay, and despite predictions of its sky falling down, so far it has managed to hang on. It is also likely that SoundExchange and the regulation of streaming will stick around, too. So, knowledge of the rules and an understanding of the nature of the issue is a must.

Streaming Right Into Trouble - Part I

This is the first in a two-part series on internet streaming and the copyright issues that go with it. This part will discuss the history behind the new streaming rules. The second part will discuss their application.

Part One

Twenty years ago, it was unthinkable that most people would have a personal computer let alone that they could listen to their favorite radio station - from anywhere in the world - live on their computer. The ability to do this is solely the gift of (or fault of) the Internet. The Internet is also what allows those stations to stream their feeds live to millions of new listeners who would never have heard the station unless they were driving through the area.
image: davidking
As with most things involving technological advances, though, the technology got far ahead of the law, in particular, the Copyright law. Broadcasters began streaming their feeds on-line well before Congress got around to trying to regulate it. But, regulate it did, mostly at the behest of the recording industry.

With the rise of the Internet as the premiere way to obtain new music or share music, the recording industry saw its CD sales decline. Prior to this era, the recording industry and the broadcasters had a mutually beneficial détente of sorts: the recording industry did not collect royalties from the broadcasters for the play of their songs (known as sound recordings in the Copyright Act) but reaped the benefits of increased record sales based upon radio play. When the Internet came along and people were able to download their favorite music or just listen to it on their computer, CD sales began to slide. So, one avenue the recording industry pursued to staunch the tide of lost profits was to turn to Congress .

The industry's concerns were partly addressed with the Digital Millennium Copyright Act which added the right to perform a sound recording via a digital audio transmission to the list of exclusive rights that are given to the owners of copyrights. What this meant is that someone, other than the owner of the rights in the sound recording - which is usually the record company - could not legally play a sound recording via a digital audio transmission unless they had a license to do so from the owner. The DMCA does provide a statutory license that automatically covers the broadcaster, but only when they can meet certain statutory requirements.

Congress gave the final authority to promulgate the regulations to implement this legislation to the Copyright Office. The Copyright Office, in turn, decided that on-line streams of broadcasts were digital audio transmissions under the DMCA and that the DMCA required these broadcasters to pay royalties to the copyright owners of the sound recordings that they play. Not surprisingly, this was an unpopular decision with broadcasters who sued the Copyright Office to obtain a different result. The courts sided with the Copyright Office, though, and the regulations remain today.

Next week: how the regulations work and the landscape for the future.

The Venn Diagram of Copyright and Trademark

I often field questions on how copyright and trademark fit together, because they do compliment each other. To be sure, they have different offices that register them - the Copyright Office (which is part of the Library of Congress) and the Patent & Trademark Office (which is part of the Department of Commerce). They have different symbols - the distinctive © for copyright and ® for trademark. They even have different statutes that establish them - 17 U.S.C. § 101 et seq for Copyright and 15 U.S.C. § 1051 et seq.
image: Rich Renomeron
For all of their differences, however, there is some overlap - much like the Venn Diagrams we all had to do in school. Copyright has its own circle and trademark has its circle - but they can still come together and meet in the middle.

To fully understand how these two work on their own and overlap, it's necessary to briefly discuss what each covers. Copyright protection extends to works of original authorship in eight distinct categories: literary works (e.g. books); musical works (lyrics and melody of your favorite song); dramatic works (e.g. plays); pictorial, graphic and sculptural works (pretty self-explanatory); pantomimes and choreographical works (again pretty self-explanatory); motion pictures and other audiovisual works (e.g. movies and TV); sound recordings (what you hear on your CD of your favorite song); and architectural works (e.g. plans, drawings, etc). The protection starts from the moment the work is fixed in a "tangible medium of expression" which means when it can be read, processed, viewed or otherwise translated into useable material.

Trademark protection, on the other hand, is solely concerned with marks that when used on certain goods or services act as source indicators for consumers to know that the particular item or service comes from that mark owner. A mark is not just the words, design, color or numbers that make up what you see - it must be paired with the goods or services on which it is used to fully function as a trademark. Thus, UNITED by itself doesn't mean much. But, for airline services it is United Airlines, and for moving services, its United Van Lines.

While there are significant differences in the ground that these two areas cover, there is also overlap. The overlap usually occurs with respect to things that would appear to fit into both groups. A good example is logos. Companies sometimes have very distinctive and creative designs that they use to distinguish their products. To the extent that copyright protection is given to works of the visual arts, it would be tempting to think that a logo can function both as a trademark and still claim copyright protection. Whether this actually works, however, depends upon the actual item since it could very well run up against the copyright law's ban on protection for functional designs. A good rule of thumb, however, is that the more detailed, distinctive and overly intricate the design, the more likely it is to be able to claim copyright protection because these factors would tend to indicate a larger degree of originality. And, originality is the hallmark of copyright protection.

Slogans and phrases, on the other hand, are pretty much categorically excluded from copyright protection. One would think that since they are textual, they would get protection. This is in fact, not the case because they most likely lack that minimum amount of originality. The good news is that they are (for the most part) registrable at the PTO as long as they are used to indicate the source of goods or services.

Thus, while these two areas of intellectual property law usually are useful in vastly different areas, there are situations where you can obtain maximum protection for your intellectual property through both the copyright and trademark laws.

Madrid Isn't Just a City in Spain

Madrid is famous for many things including the fact that it is the capital of Spain, the seat of the Spanish monarchy, and can trace its history back to the Roman Empire. It also has some gorgeous architecture, as seen in the Royal Palace below.


In the world of intellectual property, however, it is well known because, in 1989, it happened to play host to the signing of an international treaty between a wide variety of countries that produced what is known simply as the Madrid Protocol. The Protocol is a system that allows a trademark owner in a country that is a signatory to seek protection for that trademark in any other country that is also a signatory to the agreement. The processing of applications filed through this agreement is handled by the World Intellectual Property Organization (or "WIPO") in Geneva, Switzerland.

The main goal of the Protocol was to streamline the process whereby a trademark owner could obtain protection for his or her mark in foreign countries - all without having to hire counsel in each country and file a separate application. The potential cost savings alone on this basis is enormous.

The process is fairly simple: the trademark owner must have either an application pending to register their mark or a valid registration with their home intellectual property authority to be able to file anything under Madrid. The owner then files an application for an international registration of that mark with their home authority - so for example, in the United States, it would be with the US Patent & Trademark Office - which then sends the application to WIPO in Geneva.

If the application is approved by WIPO, it will issue an international registration that is valid for a period of 10 years. The owner can seek subsequent designations of protection for that registration in any country that is a party to the Protocol. As of November 2007, an amazing 74 countries have signed on to the Protocol, representing all corners of the world from Albania to Zambia.

Unfortunately, the United States was fairly late getting to the Madrid table - it wasn't until 2003 that the Protocol took effect here. In the five years since it has taken effect, however, the PTO has worked out most of the kinks in the system. All Madrid applications can now be filed electronically and - perhaps even more importantly - all fees are paid in U.S. dollars (although the official currency of WIPO is the Euro; any fees are automatically converted when you make the payment). The PTO does charge an additional fee for processing the applications at its office since it must review them to ensure that the minimum requirements have been met. The rest of the fees are set by WIPO and vary depending upon which countries you want to apply in.

Despite the amazing convenience and simplicity of the system, there are still some pitfalls. For example, even though you have obtained an international registration from WIPO, that does not guarantee that you will get the registration in the other country. This is because the other countries will still evaluate the application under the same standards that they apply to every application that is filed. It is very possible that you will get a notice from WIPO indicating that the office of the country has refused your application based upon their particular rules or laws. In that case, you have no real alternative but to hire counsel to get things straightened out. Since avoiding hiring expensive outside counsel was a major draw of the Protocol, this can be disappointing to say the least. Still, when the process works and there are no objections from the home country in which you are trying to register your mark, it is a relatively inexpensive and convenient alternative.

The Protocol is particularly suited to those mark owners who wish to obtain protection in numerous countries since, in the long run, the initial cost of obtaining the international registration and then subsequent designations in other countries is spread out over that many more registrations. It may not make as much economical sense if the mark owner wishes only to seek protection in one or two countries. However, the international registration upon which all other applications is based is valid for a period of ten years - should market forces change and the mark owner decides to begin to expand into other countries, that international registration can form the basis of numerous subsequent designations at any point during that ten-year period.

Ultimately, the decision as to whether to seek an international registration under the Protocol is best made in consultation with your intellectual property counsel. There are different factors at work and they will best be able to advise a mark owner of the potential benefits and drawbacks for that owner's situation. But, the Protocol is certainly worth a good look.

image: cuellar
All text © 2008, Hardy, Carey, Chautin & Balkin, LLP. All Rights Reserved.

When a Work Is Not Your Own

It may come as a bit of surprise to learn that none of the words that I write on this blog belong to me. Yet, it is absolutely true.
image: Gonzalo Barrientos
The natural inclination is to assume that whatever we create belongs to us. After all, doesn't the Constitution grant to Congress the power to "promote the Progress of .... useful Arts, by securing for limited Times to Authors ... the exclusive Right to their respective Writings ...."? And, hasn't Congress exercised that power since at least 1790 to help authors retain those rights? However, as with most things in the law, there are some notable exceptions.

The exception that renders these writings the property of our firm comes in the form of the "work-made-for-hire" doctrine. This doctrine, first codified in the 1909 Copyright Act and defined in the current Copyright Act, states that the author of a work made by an employee within the scope of his or her employment, is the employer. The employer is the automatic owner of the work, and all of the exclusive rights that come with the work, and can register the work, assign its rights and take any other action that it wishes to with respect to the work.

At first blush, this may seem unfair. In reality, it makes perfect - and economic - sense. Under the current Copyright Act, which was enacted in 1976 and took effect on January 1, 1978, all original works of authorship are vested with copyright from the moment they are fixed in a tangible medium of expression - so, the book when it is written (or typed) down, the painting when it is painted, the photograph when it is affixed to the negative. If employees who create those works for their employer still have all of the rights in them, the employer would have to seek an assignment from the employee for everything that they create from the moment that the works are created and before the employer could legally use or exploit the work. This would be extremely inefficient, not to mention a possible sore point if there are negotiations to be had over the value of the work.

Also, the vast majority of the time, the employee will have no personal use for the work that they create since the employee is making it for their employer. When I write a brief, it's of little use to me personally, but it is of every use to my employer. The elegant work-made-for-hire solution allows the employer to have automatic ownership of that which they have hired the employee to produce and the employee has no extra work to deal with assigning over to their employer the copyrights in a work that they probably have no personal use in anyway .

To be sure, there will always be cases where there is a conflict. What if the employee makes something in their personal time that is beneficial to their employer? Is it still a work-made-for-hire or is it outside the scope? There have also been questions involving independent contractors and whether they are considered employees such that what they create would automatically belong to the person who hired them. The Supreme Court's influential decision in Community for Creative Non-Violence v. Reid, gives a great deal of guidance on when an independent contractor can be considered an employee for purposes of the work-made-for-hire doctrine and has been extremely helpful in the almost 20 years since it was issued, in answering this question.

The biggest area where confusion about the work-made-for-hire doctrine arises is with respect to independent contractors and work that they provide. There is a misconception that just by paying the vendor for whatever they have created that should mean that the payment covers all of the rights as well. The Copyright Act requires a little more than that for their to be a transfer of ownership of the rights in the work - even if the physical thing has already changed hands or the services have been rendered. The Act requires that all assignments of rights be in writing and this does not include a mere bill of sale showing the purchase of an item or service. The actual language to be used depends upon the circumstances involved and your IP counsel should be able to advise you as to what language is appropriate.

With respect to this blog, it is pretty clear that it is a work-made-for-hire and the author for purposes of copyright is my firm. Hence, this notice:

All text © 2008, Hardy, Carey, Chautin & Balkin, LLP. All Rights Reserved.

Welcome!

With this inaugural post on the HCCB Intellectual Property Law Blog, I'd like to welcome you and thank you for taking the time to check us out. This blog is designed to provide information and commentary on issues arising out of trademark and copyright law. I hope to cover a wide range of topics from registration, litigation, IP management and everything else dealing with these two fascinating areas of the law.

This blog will be updated every Friday and as always, you can contact me during the rest of the week at estubbe@hardycarey.com.
_______________________________________________

Topic of the Day: The Benefits of State and Federal Trademark Registration

It may seem redundant to have a registration for the same mark at both the federal and state levels, but each has a unique role to play in the protection of your intellectual property. As you would imagine, a federal registration is the ticket to nation-wide enforceable protection against infringers who would seek to use your mark on the same or similar goods and/or services.
image: greefus groinks
The benefits of a federal registration include the prima facie (or on its face) presumption that your mark is distinctive and worthy of protection. Additionally, third parties who seek to register the same or similar marks on the same or similar goods at the Patent & Trademark Office will face the scrutiny of the Examining Attorneys who may reject the proposed application on the grounds that it is likely to confuse the consuming public with your mark. Another benefit to the federal registration is that you can sue in federal court (remember you can sue in federal court without a federal registration, but your burden of proof is much higher because you have to make the prima facie showing that the mark is worthy of protection before you can even get to the question of infringement).

So how does a state registration help when you get so much in a federal registration? Well, it is true that a state registration's "reach" is limited to the state in which it is issued and it is also true that you would be limited to whatever causes of action and remedies are available under that particular state's laws if you were to litigate over infringement of dilution of your mark. However, by far the best beneft of a state registration is to prevent others from registering the same or similar marks in that state.

Typically, the vast majority of people who start a business or develop a brand do not have the resources or the time to go to the PTO's website and search to see if someone has either registered or filed an application to register the mark that they are thinking of using. The most that many people do is file for a name reservation at their state's Secretary's office (note - some states process their trademark applications and registrations through departments other than the Secretary of State). If you have a registration already for your mark in that particular state, that registration should have the effect of barring the other person's name reservation or mark application. At the very least, it educates that person that you are using the mark and they go and find another one.

So, the benefit of a state registration is primarily to protect your registration from being inadvertenly infringed upon by others who haven't taken the time or don't know how to find out if there are users who have already registered that particular mark. A secondary, but still important benefit, is that if you do end up litigating the federal registration in federal court, you should be able to add the state-law claim based on the state registration as well.

State registrations are typically fairly inexpensive and most states (although not all - Virginia being an excellent example) look only to see if the mark is going to infringe upon someone else's mark that has already been registered rather than look to substantive issues such as descriptiveness. The small investment in a state registration is more than made up for in the ability to have a means to prevent a lot of confusion and heartache in the future.

text © 2008 Hardy, Carey, Chautin & Balkin, LLP. All Rights Reserved.