Sonoma Valley Cheese ConferenceSonoma Valley Cheese ConferenceFebruary 24, 2014February 24, 2014

Richard J. IdellRichard J. IdellYumi NamYumi Nam

Idell & Seitel LLPIdell & Seitel LLP© 2014 Richard J. Idell and Yumi Nam

Trademark Trade Dress Copyright Trade Secret Patent

Intellectual Property Rights

Trademark protects words, phrases, symbols, or designs identifying the source of the goods or services of one party and distinguishing them from those of others

Trade Dress protects the total image or overall appearance of a business or product

Copyright protects original works of authorship

Trade Secrets protect anything that a company or individual owns that they want to keep secret because it gives them or their company value

Patent protects inventions or discoveries

Overview of Intellectual Property

Any word, name, symbol or device, or any combination thereof, that is used by a person to identify and distinguish his or her goods or services from those manufactured, offered or sold by others and to indicate the source of the goods or services

What is a Trademark?

Identify Source: To designate goods or services as the product or services of a particular trader, and to protect that trader’s goodwill against the sale of another’s products as the trader’s own

Primary Function of a Trademark

While your application is still pending, and before registration is granted, you may place a TM (trademark) or SM (service mark) next to the mark

Once a mark has been registered, a notice in one of the following forms should be used instead of the TM or SM: Registered in United States Patent and

Trademark Office Reg. U.S. Pat. & Tm. Office ®

Trademark Notice

Trademark Continuum

Coined/Fanciful/Arbitrary• Kodak (film)• Pepsi (cola)• Apple (computers)• Bicycle (playing cards)• Starbucks (coffee)

Generic• Aspirin• Cellophane• Videotape• Laundromat• Dry Ice• Trampoline•Bond-Ost (Swedish for peasant’s cheese)

Suggestive• 7-Eleven (hours)• Skinvisible (medical tape)• Jaguar (speed)• Coppertone (sunscreen)

Descriptive• Baby Brie (small size cheese)• All Bran (cereal)• Apple Pie (potpourri)•Queso Quesadilla Supreme (Cheese)

A likelihood of confusion exists when consumers are likely to assume that a product or service has a source other than its actual source because of similarities between the two sources’ marks or marketing techniques

Likelihood of Confusion

Merely Descriptive: Immediately conveys to one seeing or hearing it knowledge of the nature, ingredients, quality, characteristic, function, feature, purpose, or use of the specified goods or services

Merely Deceptively Misdescriptive: Merely descriptive of the nature, ingredients, quality, characteristic, function, feature, purpose, or use of the specified goods or services – but factually false when applied to the goods or services

Descriptiveness

Primarily geographically descriptive of

the goods or services

the primary significance of the mark is a generally known geographic location;

the goods or services originate in the place identified in the mark; and

purchasers would be likely to believe that the goods or services originate in the geographic place identified in the mark.

Geographically Descriptive

Primarily geographically deceptively

misdescriptive of the goods or services

the primary significance of the mark is a generally known geographic location;

the goods or services do NOT originate in the place identified in the mark;

purchasers would be likely to believe that the goods or services originate in the geographic place identified in the mark; and

the misrepresentation is a material factor in a significant portion of the relevant consumer’s decision to buy the goods or use the services.

Geographically Deceptively

Misdescriptive

A mark consisting of a foreign word or words is

(generally) translated into English before USPTO protection and/or registration analysis.

The foreign equivalent of a generic, merely descriptive or deceptively misdescriptive English word is no more protectible or registrable than the English word itself.

A foreign word and the English equivalent, or two foreign words, may be held to be confusingly similar.

Doctrine of Foreign Equivalents

A mark that is primarily merely a surname is not registrable on the Principal Register absent a showing of acquired distinctiveness

Surnames

NEVER:

Use in the plural unless the mark itself is plural

Use in the possessive Alter or append the mark in any way: no

hyphens, slashes, prefixes, suffixes, etc. Abbreviate the mark Use the mark with goods/services not covered by

the application or registration Make puns on the mark or portray it in a

negative light Abandon your mark

What Not to Do With Your Trademark

Allows a class of producers of goods to maintain standards and use the mark to collectively advertise an element of the goods

Example:

Certification mark for “processed dairy products -namely, milk, sour cream, cheese, and other cow’s milk dairy products”

Certification Mark

Obtain a comprehensive trademark search

To register: Submit a completed application form Submit a nonrefundable filing fee

$325 per International Class Submit evidence of use in interstate

commerce

Registration of Trademark

Trademark can last forever so long as not abandoned and does not become generic

Periodic maintenance fees and filings required

Duration of Trademark

The total image and overall appearance of a business or product

May include the size, shape, color, texture, graphics or even particular sales techniques

Examples: the shape of the Coca Cola bottle the shape of a Taco Bell restaurant bite-sized, cheese flavored, goldfish

shaped crackers

What is Trade Dress?

Must be distinctive

Inherently distinctive OR

Secondary meaning

Must NOT be functional

Elements for Trade Dress Protection

Original creative works of authorship that are fixed in a tangible medium of expression

Examples: literary, dramatic, musical, and artistic

works, such as poetry, novels, movies, songs, computer software, and architecture

The work must be fixed Copyright protects the expression of ideas, but not the ideas themselves

What is a Copyright?

The author of the work

If joint authors, the coauthors all equally own the work

Work for Hire: works prepared by an employee within the scope and

course of his/her employment) are owned by the employer

works prepared by independent contractor: (1) specifically ordered or commissioned (2) for use in one of 9 statutory categories and (3) must be in writing - owned by hiring party

Who Owns the Copyright?

Copyright does not protect facts, ideas, systems, or methods of operation, although it may protect the way these things are expressed

Does not protect any functional elements

Not Protected by Copyright

Works and short phrases, such as titles and slogans

Mere listing of ingredients or contents (e.g., recipe)

Facts Blank forms, such as time cards, graph paper, order forms, etc.

Mere variations of typographic ornamentation, lettering or coloring

Works consisting entirely of information that is common property and containing no original authorship (e.g., calendars, tape measures)

Examples of Works Not Copyrightable

Copyright vests as soon as you create an

original work and fix it in a tangible form – you do not need to register it for protection. BUT, you cannot sue for infringement if you have not registered

To register: Submit a completed application form Submit a nonrefundable filing fee

$35 if you register online or $50 if you register using paper application

Submit a nonreturnable copy or copies of the work to be registered

Registration of Copyright

In general, copyrights last the life of the original author plus an additional 70 years

For joint works, 70 years from the last surviving author’s death

For corporations, copyrights last 100 years from creation

For anonymous and pseudonymous works, and works for hire, copyrights last 95 years from the work’s first publication, or 120 years from creation, whichever is shorter

Duration of Copyright

Reproduce the copyrighted work Prepare derivative works (a work based on 1 or more existing works)

Distribute the copyrighted work Perform the copyrighted work for the public

Display the copyrighted work to the public

For sound recordings, perform the work by means of digital audio transmission

What Can You Do With a Copyright?

Notice includes:

©, the date of first publication, the name of the owner of the copyright

Example: © 2012 Richard J. Idell and Elizabeth J. Rest

Copyright Notice

Anything that a company or individual owns that is

intellectual property that they don’t want others to have access to and which gives them or their company value

Information, including a formula, pattern, compilation, program, device, method, technique or process that: Derives independent economic value, actual or

potential, from not being generally known to the public or to other persons who can obtain economic value from its disclosure or use and is the subject of reasonable efforts to maintain its secrecy

What is a Trade Secret?

Formulae (e.g., the formula for making Coca Cola)

Business methods Customer Information Client lists

Issue can arise with departing employees and competitors or when working on a joint venture or other business relationship

Use of non-disclosure agreements (“NDA”)

Examples of Trade Secrets

You may use your competitor’s secret process if you discover it by reverse engineering of the finished product and you obtained the finished product lawfully

When Can You Lawfully Use a Trade Secret?

A property right granted to an inventor to exclude

others from making, using, offering for sale, or selling the invention throughout the United States or importing the invention into the United States for a limited time in exchange for public disclosure of the invention when the patent is granted

A process, machine, article of manufacture or composition of matter, or an improvement of any of the foregoing

MUST BE: New / Novel Useful (its utility) Non-obvious Adequately described so someone with ordinary skill in the

art can make or use the patented item/device/process/etc.

What is a Patent?

It is not a monopoly

It prevents others from doing something, but it does not give you the right to do anything, except to prevent others from practicing what is claimed in the patent

What a Patent is Not

Laws of nature Physical phenomena Abstract ideas Literary, dramatic, musical, and artistic works (these can be Copyright protected)

Inventions which are: Not useful; or Offensive to public morality

What Can’t You Patent

For applications filed on or after June 8, 1995,

utility and plant patents are granted for a term which begins with the date of the grant and usually ends 20 years from the date you first applied for the patent subject to the payment of appropriate maintenance fees. Design patents last 14 years from the date you are granted the patent

Note: Patents in force on June 8, 1995, and patents issued thereafter on applications filed prior to June 8, 1995, automatically have a term that is the greater of the 20 year term discussed above or 17 years from the patent grant

Patent Duration

Richard J. Idell

Richard.Idell@idellseitel.com

Yumi NamYumi.Nam@idellseitel.com

IDELL & SEITEL LLPMERCHANTS EXCHANGE BUILDING

465 CALIFORNIA STREET, SUITE 300SAN FRANCISCO, CALIFORNIA 94104

TEL: (415) 986-2400FAX: (415) 392-9259www.idellseitel.com

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