DOCSLIB.ORG

BASICS of INTELLECTUAL PROPERTY 2013 Spring Client Seminar

Total Page：16

File Type：pdf, Size：1020Kb

Download full-text PDF Read full-text
BASICS of INTELLECTUAL PROPERTY 2013 Spring Client Seminar BASICS OF INTELLECTUAL PROPERTY 2013 Spring Client Seminar Presented by: Don Kelly, Member Evans & Dixon LLC 211 North Broadway, Suite 2500 St. Louis, Missouri 63102 314-621-7755; 314-621-3136 Fax www.evans-dixon.com The Basics of Intellectual Property 1. Categories of Intellectual Property a. Trademarks; b. Copyrights; c. Trade Secrets; d. Patents; and e. Celebrity Rights? 2. Patents a. A patent is an exclusionary property right; a patent owner has the right to exclude others from making, using, selling, offering to sell or importing a product covered by the invention. b. So having a patent prevents someone from making, using, selling, offering to sell or importing into the US you invention? i. Wrong! c. What does a patent do? i. Nothing! Having a patent by itself will not stop anyone from practicing the covered invention. ii. The owner’s right to practice the invention does not give the owner the right to make, use or sell the invention. 1. How can this be? d. Sources of patent rights i. United States Constitution; ii. 35 U.S.C. §§1-376; iii. Regulations of the United States Patent & Trademark Office (USPTO); iv. Manual of Patent Examination Procedure (MPEP); and v. Court Decisions. 3. Types of Patents a. Design Patents b. Plant Patents c. Utility Patents i. 35 U.S.C. §101 ii. Processes; iii. Machines; iv. Manufacturers; and v. Composition of matter. 4. Requirements for obtaining a patent a. Novel; i. No patent if: 1. Invention was known or used by others in this country 2. Or patented or described in a printed publication in this or foreign country; 3. Before invention by applicant 4. The invention is patented or described in printed publication in U.S. or foreign country 5. Or is in public use or on sale in this country 6. More than one year prior 7. Date of the application. 8. (Also known as a “statutory bar.”) Does not matter if you can show prior invention. b. Useful; and c. Non-obvious in light of prior art. i. 35 U.S.C. § 103(a) 1. An invention may be obvious in view of a single prior art reference or in view of a combination of those references. 5. How Patents Interrelate with other forms of intellectual property a. Design Patents → Trade Dress b. Trade Secrets → Patents c. Patents kill Trade Secrets 6. Ownership of Patent Rights a. Barring an agreement to the contrary, it is the inventors that own the patent b. Any of the joint owners may make, use, offer to sell, or sell the patented invention without the consent of and without accounting to the other owners. 7. Public Disclosure and Patent Rights a. US Patents Application - must be filed within one year of disclosure b. Foreign Patent Application - must be filed prior to publication 8. Patent Application Process a. Conceive → Prototype/Test? → Search Prior Art? → b. Prepare and File Application → Wait → Receive Office Action → Respond to office Action → c. Receive Final Office Action → Respond/Appeal/File Continuation Application 9. Trademarks a. Definition of a trademark: any word, letter, symbol or design, or combination thereof, which identifies and distinguishes the source of the goods of one entity from those of another entity. b. Types of Trademarks i. Word: Nestle, Busch, Oracle, Marlboro, Nabisco, McDonald’s; ii. Word and Design; iii. Symbol; iv. Slogan 1. Don’t leave home without it; 2. Just do it; 3. Be all that you can be; 4. Think outside the bun. c. Trademarks and Service Marks i. Trademarks serve to distinguish goods ii. Service marks serve to distinguish services 1. Not always conceptually clear e.g. McDonald’s golden arches is a design service mark for restaurant services 2. Trademarks and service marks are often generically referred to as marks or trademarks. d. Non-traditional Trademark i. Trade dress: the overall appearance of a product or its packaging 1. Packaging wrappers or containers 2. Design or shape of product ii. Elements: size, shape, color, color combinations, texture, graphics, sales techniques, theme of a restaurant e. Trade Dress i. Must: 1. Serve as a source indicator ii. Be non-functional (cannot affect cost, quality or ability to effectively compete in a non-reputational way) – Ex. Clear oil bottles iii. Features described in patents – functional f. Trademark rights can also attach to product/packaging design or configuration g. Non-traditional Trademarks i. Sound ii. Color iii. Fragrance iv. Design of a business establishment h. Other kinds of marks i. Collective marks are used in commerce by members of an association or organization to indicate affiliation or membership. ii. Certification marks are used in commerce by a party other than the owner (but with the owner’s permission) to certify a quality of a good or service. E.g., U,L., Good Housekeeping, union labels. 10. Functions of a Trademark a. Indicates source or origin of goods or services; b. Assures consumers of the quality of goods bearing the mark; and c. Creates business goodwill and brand awareness. 11. Trademark vs. Trade Name a. Trade name: identifies a company or business; for example, Kraft b. Trademark: identifies the goods or services of that company c. Selecting a trade name or trademark A critical decision for: i. New businesses and their lenders; and ii. Existing businesses d. It’s all about i. Reducing risk ii. Protecting good will/customer relationships iii. Finding and preserving business value e. Be aware: i. Trade names can infringe upon other similar trade names ii. Trade names can infringe upon similar marks iii. Marks can infringe upon similar trade names iv. Domain names can infringe trade names and trademarks f. Process of Selecting a Trade Name or Trademark i. Just because the secretary of state's office advises that a corporate name is available, that does NOT mean that the same name is available as a trademark or service mark. ii. In fact, in Missouri, more than one company can use the same fictitious name. iii. New businesses are fragile 1. Cannot afford to engage in trademark disputes- even when they are right. 2. It is expensive to change advertising, signs, letterhead, etc. 3. It is costly to lose good will or overcome confusion among customers due change of name. 4. Consider insurance covering IP 12. Process of Selecting a Trademark a. Brainstorming b. Registrability c. Availability d. Registration i. First area of concern: Strength of mark (Initial Protectability) ii. Second area of concern: Registrability or right to use 13. Mark Strength a. Not all marks are created equal. b. Some marks are considered stronger than others based upon uniqueness. c. Some marks are considered weaker because they merely describe the relevant goods or services. d. The weaker the mark, the more likely others will also be allowed to use the mark or portions of it i. Strengths of Marks 1. Generic 2. Descriptive 3. Suggestive 4. Arbitrary 5. Fanciful ii. Descriptive vs. Suggestive 1. Suggestive marks are automatically protectable and registrable. 2. Descriptive marks may be protected and registered only upon a showing of secondary meaning. iii. Mark Strength 1. Highest level of protection is for “fanciful” aka “coined” or “inherently distinctive” 2. Surnames/Descriptive marks/Geographically descriptive marks – may acquire distinctiveness over time. 3. Geographically misdescriptive – not registrable iv. Generic Marks – never protectable e. Mark Strength and the Internet i. Choosing a domain name: ii. Protectability v. Search Engine Optimization iii. A domain name by itself is merely an address iv. Domain name may become a trademark - the PTO does not easily grant registrations for domain names 14. Selecting an Appropriate Trademark a. Two Common Errors i. Selecting weak marks for adoption and use ii. Failing to “clear” marks for adoption and use 15. Right to Use/Registrability a. Trademark Searches – a way to find out what’s out there i. Goal is to reduce risk of having to lose or change mark later ii. The search firm cost of a search is inexpensive ~ $775/ with a design $1,500 iii. Searches can be done quickly 1-3 days. iv. Attorneys’ fees for reviewing a search: v. ~ $500 -$1,000. vi. If client wants written opinion as to availability or non-availability of mark, then cost will run from low thousands on up. vii. The overall costs are peanuts in comparison to a dispute of costs to change signs, labels, letterhead, etc. b. International screening search c. Country-specific search i. Trademark registers (federal and state) ii. Common-law uses iii. Internet, domain names iv. Corporate name d. Trademark Availability i. A trademark is not available if: 1. The mark or a confusingly similar mark is already federally registered or is the subject of a pending federal registration (assuming that the application is ultimately accepted); or 2. The mark or a confusingly similar mark is already being used in the same market in connection with similar goods or services. 16. How are Trademark Rights Obtained? a. In the US rights to a mark are obtained either: i. By use; and ii. Enhanced by registration. 17. Protection of Trademarks a. Trademarks are subject to both state and federal law i. Compare to other types of intellectual property b. Common Law i. Bound by the geographic area in which the product or service is marketed. ii. Can have two or more entities using same mark! iii. Internet vs. geographic boundaries (increased chance of TM dispute) iv. Protection generally begins only after the product or service is actually available for sale on the market. v. Rights can be lost after deciding on a mark and before bringing a product to market if someone begins commercial sales first.
Load more

Recommended publications
  • NYU School of Law Outline: Trademarks, Barton Beebe
    NYU School of Law Outline: Trademarks, Barton Beebe Will Frank (Class of 2011) Fall Semester, 2009 Contents 1 Introduction to Trademark and Unfair Competition Law 3 1.1 Sources and Nature of Rights . 4 1.2 The Nature of Unfair Competition Law . 4 1.3 Purposes of Trademark Law . 4 1.4 The Lanham Act . 5 2 Distinctiveness 6 2.1 The Spectrum of Distinctiveness . 7 2.2 Descriptiveness and Secondary Meaning . 7 2.3 Generic Terms . 8 2.4 Distinctiveness of Nonverbal Identifiers (Logos, Packages, Prod- uct Design, Colors) . 9 2.4.1 Different Tests/Standards? . 9 2.4.2 Expanding the Types of Nonverbal Marks . 9 2.4.3 The Design/Packaging Distinction . 10 2.4.4 Trade Dress Protection After Wal-Mart . 10 2.5 The Edge of Protection: Subject Matter Exclusions? . 12 2.5.1 Exotic Source-Identifiers . 12 2.6 Review . 12 3 Functionality 13 3.1 The Concept . 14 3.2 The Scope of the Doctrine . 15 3.3 The Modern Approach . 15 3.4 Post-TrafFix Devices Applications . 17 4 Use 18 4.1 As a Jurisdictional Prerequisite . 18 4.2 As a Prerequisite for Acquiring Rights . 18 4.2.1 Actual Use . 18 4.2.2 Constructive Use . 19 1 4.3 \Surrogate" Uses . 20 4.3.1 By Affiliates . 20 4.4 The Public as Surrogate . 20 4.5 Loss of Rights . 21 4.5.1 Abandonment Through Non-Use . 21 4.5.2 Abandonment Through Failure to Control Use . 21 5 Registration 22 5.1 The Registration Process . 22 5.1.1 Overview .
    [Show full text]
  • Protecting Folklore Under Modern Intellectual Property Regimes
    American University Law Review Volume 48 | Issue 4 Article 2 1999 Protecting Folklore Under Modern Intellectual Property Regimes: A Reappraisal of the Tensions Between Individual and Communal Rights in Africa and the United States Paul Kuruk Follow this and additional works at: http://digitalcommons.wcl.american.edu/aulr Part of the Intellectual Property Commons, and the International Law Commons Recommended Citation Kuruk, Paul. “ Protecting Folklore Under Modern Intellectual Property Regimes: A Reappraisal of the Tensions Between Individual and Communal Rights in Africa and the United States.” American University Law Review 48, no.4 (April, 1999): 769-843. This Article is brought to you for free and open access by the Washington College of Law Journals & Law Reviews at Digital Commons @ American University Washington College of Law. It has been accepted for inclusion in American University Law Review by an authorized administrator of Digital Commons @ American University Washington College of Law. For more information, please contact [email protected]. Protecting Folklore Under Modern Intellectual Property Regimes: A Reappraisal of the Tensions Between Individual and Communal Rights in Africa and the United States Keywords Folklore, Intellectual Property Law, Regional Arrangements This article is available in American University Law Review: http://digitalcommons.wcl.american.edu/aulr/vol48/iss4/2 PROTECTING FOLKLORE UNDER MODERN INTELLECTUAL PROPERTY REGIMES: A REAPPRAISAL OF THE TENSIONS BETWEEN INDIVIDUAL AND COMMUNAL RIGHTS IN AFRICA AND THE UNITED STATES * PAUL KURUK TABLE OF CONTENTS Introduction.............................................................................................. I. Folklore Under Traditional Systems........................................ 776 A. Nature of Folklore ............................................................. 776 B. Protection Under Customary Law .................................... 780 1. Social groups and rights in folklore ...........................
    [Show full text]
  • Basics Track: Franchisor's Intellectual Property and How to Protect It
    International Franchise Association 52nd Annual Legal Symposium May 5-7, 2019 Washington, DC Basics Track: Franchisor’s Intellectual Property and How to Protect It Christopher Kelly Partner, Wiley Rein LLP Washington, D.C. Vincent Frantz Attorney, Cheng Cohen LLC Chicago, Illinois 1 Table of Contents I. The Four Primary Types of Intellectual Property ....................................................... 4 A. Trademarks ........................................................................................................... 4 1. Selecting a Protectable Mark ............................................................................. 5 2. Common Law Trademarks ................................................................................. 7 3. Domestic Trademark Registration ...................................................................... 8 4. International Trademark Protection .................................................................. 11 5. Proper Use of Trademarks ............................................................................... 12 6. Enforcement of Rights/Trademark Infringement ............................................... 13 B. Trade Secrets ...................................................................................................... 14 1. Elements of a Trade Secret.............................................................................. 15 2. Misappropriation of Trade Secrets ................................................................... 16 3. Federal Protection for Trade Secrets
    [Show full text]
  • Introduction to Trademark Law and Practice
    WORLD INTELLECTUAL PROPERTY ORGANIZATION INTRODUCTION TO TRADEMARK LAW & PRACTICE THE BASIC CONCEPTS A WIPO TRAINING MANUAL GENEVA 1993 (Second Edition) ( ( WIPO PUBLICATION No 653 (El ISBN 92-805-0167-4 WIPO 1993 PREFACE The present publication is the second edition of a volume of the same title that was published by the World Intellectual Property Organization (WIPO) in 1987 and reprinted in 1990. The first edition was written by Mr. Douglas Myall, former Assistant Registrar of Trade Marks, United Kingdom. The present revised edition of the publication has been prepared by Mr. Gerd Kunze, Vevey, Switzerland, and reflects his extensive expertise and experience in the administration of the trademark operations of a large international corporation, Nestle S. A., as well as his intensive involvement, as a leading representative of several international non-governmental organizations, in international meetings convened by WIPO. This publication is intended to provide a practical introduction to trademark administration for those with little or no experience of the subject but who may have to deal with it in an official or business capacity. Throughout the text, the reader is invited to answer questions relating to the text. Those questions are numbered to correspond to the answers that are given, with a short commentary, in Appendix I. Arpad Bogsch Director General World Intellectual Property Organization February 1993 ( ( LIST OF CONTENTS CHAPTER 1. TRADEMARKS AND OTHER SIGNS: A GENERAL SURVEY 7 1.1 Use of trademarks in commerce . 9 1.2 What is a trademark?. .. .. .. .. .. .. .. .. .. .. .. .. .. .. .. .. .. 9 1.3 Need for legal protection .. .. .. .. .. .. .. .. .. .. .. .. .. .. .. .. .. .. .. .. .. .. 10 1.4 How can a trademark be protected? .
    [Show full text]
  • ANNEX 2 Provisions of the Convention for the Protection of Industrial Property (1967) Referred to in the TRIPS Agreement* TABLE
    ANNEX 2 Provisions of the Convention for the Protection of Industrial Property (1967) referred to in the TRIPS Agreement TABLE OF CONTENTS Article 1 Establishment of the Union; Scope of Industrial Property Article 2 National Treatment for Nationals of Countries of the Union Article 3 Same Treatment for Certain Categories of Persons as for Nationals of Countries of the Union Article 4 A to I. Patents, Utility Models, Industrial Designs, Marks, Inventors’ Certificates: Right of Priority - G. Patents: Division of the Application Article 4bis Patents: Independence of Patents Obtained for the Same Invention in Different Countries Article 4ter Patents: Mention of the Inventor in the Patent Article 4quater Patents: Patentability in Case of Restrictions of Sale by Law Article 5 A. Patents: Importation of Articles; Failure to Work or Insufficient Working; Compulsory Licences. B. Industrial Designs: Failure to Work; Importation of Articles C. Marks: Failure to Use; Different Forms; Use by Co-proprietors D. Patents, Utility Models, Marks, Industrial Designs: Marking Article 5bis All Industrial Property Rights: Period of Grace for the Payment of Fees for the Maintenance of Rights; Patents: Restoration Article 5ter Patents: Patented Devices Forming Part of Vessels, Aircraft, or Land Vehicles [WTO Secretariat note] The provisions reproduced herein are referred to in Article 2.1 and in other provisions of the TRIPS Agreement. This volume uses the titles that the International Bureau of WIPO has given to them to facilitate their identification. The Table of Contents is added for the convenience of the reader. Neither the titles nor the Table of Contents appear in the signed (French) text.
    [Show full text]
  • International Trademark Association (INTA) Business Name/Trademark Differences Information
    International Trademark Association (INTA) Business Name/Trademark Differences Information FAQs Is a business name the same as a trademark? No. What is the difference between a business name and a trademark? A business name is the name under which a company does business. A trademark is any word, symbol, or design that identifies and distinguishes the source of one party’s goods or services from those of others. How do I find out if I can use my business name for my business or company? It is recommended that you conduct a so-called clearance search before starting use of your business name. Clearance searches are used to verify whether there are any potentially similar or conflicting prior rights in the marketplace. There are databases available for clearance searches (some publicly accessible, some for a fee) to assess if another person/business is using a name or mark similar to your business name, for similar products or services. If I record my business name with the Secretary of State, do I have the right to use it in connection with my business? Not necessarily. Registering a business name with the Secretary of State is required to be able to do business under a particular name within the state, but this registration does not give any assurance that the registered business name is not in conflict with the trademark rights of other parties. Other parties may already be using similar names or trademarks in the marketplace which may take precedence over your rights to use a particular business name. For this reason, it is recommended that you conduct clearance searches before registering and using a business name.
    [Show full text]
  • Intellectual Property Rights and Native American Tribes Richard A
    American Indian Law Review Volume 20 | Number 1 1-1-1995 Intellectual Property Rights and Native American Tribes Richard A. Guest Follow this and additional works at: https://digitalcommons.law.ou.edu/ailr Part of the Indian and Aboriginal Law Commons, and the Intellectual Property Law Commons Recommended Citation Richard A. Guest, Intellectual Property Rights and Native American Tribes, 20 Am. Indian L. Rev. 111 (1995), https://digitalcommons.law.ou.edu/ailr/vol20/iss1/4 This Article is brought to you for free and open access by University of Oklahoma College of Law Digital Commons. It has been accepted for inclusion in American Indian Law Review by an authorized editor of University of Oklahoma College of Law Digital Commons. For more information, please contact [email protected]. INTELLECTUAL PROPERTY RIGHTS AND NATIVE AMERICAN TRIBES Richard A. Guest* [AIll Property is Theft.' Introduction In recent years, several Native American tribes have begun a journey into the unfamiliar terrain of intellectual property rights as a means to assert their self-determination, secure economic independence, and protect their cultural identities. Although "ideas about property have played a central role in shaping the American legal order,"2 in the prevailing legal literature of intellectual property law in the United States, the protection of Native American intellectual property rights is rarely an issue of consideration. Suzan Shown Harjo, in her article, Native Peoples' Cultural and Human Rights: An Unfinished Agenda, writes: "The cultural and intellectual property rights of Native Peoples are worthy of being addressed during this time of increased appropriation of Native national names, religious symbology, and cultural images."3 In contrast, within the realm of international law, the topic of intellectual property is a high priority, uniting the concerns for self-determination and economic independence.
    [Show full text]
  • ATTRI Institutional and Policy Issues Assessment Summary Report February 16, 2017
    Accessible Transportation Technologies Research Initiative (ATTRI) Institutional and Policy Issues Assessment Task 6: Summary Report www.its.dot.gov/index.htm Final Report — February 16, 2017 FHWA-JPO-17-506 1.1.1.1.1.1 Produced by Booz Allen Hamilton U.S. Department of Transportation Federal Highway Administration (FHWA) Notice This document is disseminated under the sponsorship of the Department of Transportation in the interest of information exchange. The United States Government assumes no liability for its contents or use thereof. The U.S. Government is not endorsing any manufacturers, products, or services cited herein and any trade name that may appear in the work has been included only because it is essential to the contents of the work. Technical Report Documentation Page 1. Report No. 2. Government Accession No. 3. Recipient’s Catalog No. FHWA-JPO-17-506 4. Title and Subtitle 5. Report Date ATTRI Institutional and Policy Issues Assessment Summary Report February 16, 2017 6. Performing Organization Code 7. Author(s) 8. Performing Organization Report No. Scott Baker, Viktor Zhong, Jerry Hsu, Patricia Macchi, Shawn Kimmel, Lindsay Gladysz, Mohammed Yousuf, Candace Groudine, Kenneth Wood 9. Performing Organization Name And Address 10. Work Unit No. (TRAIS) Booz Allen Hamilton 20M Street, SE, Suite 1000 Washington, DC 20003 11. Contract or Grant No. AECOM 3101 Wilson Blvd, Suite 900 Arlington, VA 22201 12. Sponsoring Agency Name and Address 13. Type of Report and Period Covered Intelligent Transportation Systems Joint Program Office U.S. Department of Transportation 1200 New Jersey Avenue, SE 14. Sponsoring Agency Code Washington, DC 20590 15.
    [Show full text]
  • Making Sense of Georgia's State Law Protections for Trademarks and Trade Secrets Elizabeth R
    Journal of Intellectual Property Law Volume 5 | Issue 1 Article 7 October 1997 Making Sense of Georgia's State Law Protections for Trademarks and Trade Secrets Elizabeth R. Calhoun Follow this and additional works at: https://digitalcommons.law.uga.edu/jipl Part of the Intellectual Property Law Commons Recommended Citation Elizabeth R. Calhoun, Making Sense of Georgia's State Law Protections for Trademarks and Trade Secrets, 5 J. Intell. Prop. L. 307 (1997). Available at: https://digitalcommons.law.uga.edu/jipl/vol5/iss1/7 This Notes is brought to you for free and open access by Digital Commons @ Georgia Law. It has been accepted for inclusion in Journal of Intellectual Property Law by an authorized editor of Digital Commons @ Georgia Law. Please share how you have benefited from this access For more information, please contact [email protected]. Calhoun: Making Sense of Georgia's State Law Protections for Trademarks an NOTES MAKING SENSE OF GEORGIA'S STATE LAW PROTECTIONS FOR TRADEMARKS AND TRADE SECRETS I. INTRODUCTION Which law applies? What kind of claim should I bring? What approach will be the most likely to rectify the wrong I am suffer- ing? In the realm of trademark law in the state of Georgia, several avenues may be taken to try to stop someone from utilizing your idea or mark. Separate state laws govern unfair competition and deceptive trade practices as well as trade secrets. Compounding the confusion are the federal laws on the subject which may or may not be utilized to effectuate a remedy. This Note attempts to explain the differences among the governing laws of Georgia, to identify which remedies are available to plaintiffs who believe that their trademark or trade name is being infringed, and to clarify what is required to succeed in claims alleging trademark infringe- ment, violation of anti-dilution provisions, violation of the Georgia Uniform Deceptive Trade Practices Act or violations of the Georgia Trade Secrets Act.
    [Show full text]
  • Unfair Competition: Trade Secret and Trademark Law
    UNFAIR COMPETITION: TRADE SECRET AND TRADEMARK LAW UNFAIR COMPETITION LAW GENERALLY Restatement (Third) of the Law, Unfair Competition (1995) § 1 General Principles. One who causes harm to the commercial relations of another by engaging in a business or trade is not subject to liability to the other for such harm unless: (a) the harm results from acts or practices of the actor actionable by the other under the rules of this Restatement relating to: (1) deceptive marketing . (2) infringement of trademarks and other indicia of identification . (3) appropriation of intangible trade values including trade secrets and the right of publicity . (b) the acts or practices of the actor are actionable by the other under federal or state statutes, international agreements, or general principles of common law apart from those considered in this Restatement. * * * TRADE SECRET LAW Oxford History: 273 What Qualifies as a Trade Secret? BUFFETS, INC. v. KLINKE 73 F.3d 965 (7th Cir. 1996) D.W. NELSON, Circuit Judge: [Buffets Inc., doing business as Old Country Buffets (“OCB”), brought this action against the Klinkes for misappropriation of trade secrets. OCB alleged that the Klinkes had misappropriated its recipes and its job training manuals, both of which it claimed as trade secrets, in order to open their own buffet restaurant. While the means employed by the Klinkes to obtain the desired information (including considerable subterfuge and dealings with former OCB employees) were indeed questionable, the district court ultimately judgment in favor of
    [Show full text]
  • Príloha Č. 3: RESTATEMENT (THIRD) of UNFAIR COMPETITION - Pravidlá
    Príloha č. 3: RESTATEMENT (THIRD) OF UNFAIR COMPETITION - Pravidlá RESTATEMENT (THIRD) OF UNFAIR § 4. Misrepresentations Relating To Source: Passing COMPETITION Off One is subject to liability to another under the rule Current through June 2009 stated in § 2 if, in connection with the marketing of © 1995-2010 by the American Law Institute goods or services, the actor makes a representation likely to deceive or mislead prospective purchasers by causing the mistaken belief that the actor's business is CHAPTER 1. THE FREEDOM TO COMPETE the business of the other, or that the actor is the agent, affiliate, or associate of the other, or that the goods or services that the actor markets are produced, sponsored, § 1. General Principles or approved by the other. One who causes harm to the commercial relations of § 5. Misrepresentations Relating To Source: Reverse another by engaging in a business or trade is not subject Passing Off to liability to the other for such harm unless: One is subject to liability to another under the rule (a) the harm results from acts or practices of the actor stated in § 2 if, in marketing goods or services actionable by the other under the rules of this manufactured, produced, or supplied by the other, the Restatement relating to: actor makes a representation likely to deceive or (1) deceptive marketing, as specified in Chapter Two; mislead prospective purchasers by causing the mistaken (2) infringement of trademarks and other indicia of belief that the actor or a third person is the identification, as specified in Chapter Three; manufacturer, producer, or supplier of the goods or services if the representation is to the likely commercial (3) appropriation of intangible trade values including detriment of the other under the rule stated in § 3.
    [Show full text]
  • Trademark Basics for Nonprofits | July 2009
    PUBLIC COUNSEL | COMMUNITY DEVELOPMENT PROJECT | TRADEMARK BASICS FOR NONPROFITS | JULY 2009 Trademark Basics for Nonprofits Public Counsel’s Community Development Project strengthens the foundation for healthy, vibrant and economically stable neighborhoods through its comprehensive legal and capacity building support of community-based nonprofit organizations. Nonprofit organizations increasingly recognize the importance of name recognition in their fundraising endeavors, and we are often asked for legal assistance with respect to trademarks, service marks, trade names and logos. We have compiled this collection of frequently asked trademark questions and answers, and have divided them into the following categories: FAQ 1-3 Trademark Definitions FAQ 4-10 How to Establish a Trademark FAQ 11-15 Proper Use of a Trademark FAQ 16-18 Protecting a Trademark from Infringement We hope you will find this resource to be a useful preliminary guide for determining how to establish, maintain and protect these valuable corporate assets. ●●● This publication should not be construed as legal advice. These frequently asked questions and answers are provided for informational purposes only and do not constitute legal advice. While this information can help you understand the basic procedures for obtaining legal protection for your trademarks, it is very important that you obtain the advice of a qualified attorney. Public Counsel’s Community Development Project provides free legal assistance to qualifying nonprofit organizations that share our mission of serving low-income communities and addressing issues of poverty within Los Angeles County. If your organization needs legal assistance, visit www.publiccounsel.org/practice_areas/community_development or call (213) 385-2977, extension 200. 610 SOUTH ARDMORE AVENUE, LOS ANGELES, CA 90005 | TEL: 213.385.2977 | FAX: 213.385.9089 | WWW.PUBLICCOUNSEL.ORG TRADEMARK DEFINITIONS 1.
    [Show full text]