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Protecting Your Intellectual Property: an Introduction

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Protecting Your Intellectual Property: an Introduction Protecting Your Intellectual Property: An Introduction Cynthia E. Kernick Protection is the driver for creativity. THE CREATIVE NATURE of mankind drives not only the economy but also the quality of life. Whether the creativity manifests itself in the development of useful ar- ticles (such as machinery to produce new goods) or it adds beauty in the nature of art and books, it must be protected in order to be encouraged. Without protection, there is no economic driver to support creativity and invention. There are four critical ways to protect creative develop- ments: patent, trademarks, copyright, and trade secrets. The selection of the appropriate methodology depends upon the subject of what is being protected. In this age of high technology, sophisticated business enterprises ex- Cynthia E. Kernick is a partner of Reed Smith LLP in its Pittsburgh pend great sums to acquire, develop, and protect new and office. She graduated, cum laude, from innovative methods to enhance their competitive position, Duquesne University School of Law in as well they should. But many smaller companies do not 1985, received the Order of the Barrister, and was Article Editor of the Duquesne have a good grasp of what should or should not be done Law Review. Ms. Kernick concentrates her to protect their investments. This article provides a brief practice in patent litigation and other types overview of the vehicles available to use as protection. of intellectual property litigation, and speaks and writes frequently on patent issues. She also is an Adjunct Professor at the University of TRADEMARK RIGHTS • A trademark is, by defini- Pittsburgh School of Law, where she teaches tion, used to protect a name, logo, or other indicator of Patent Litigation. This article is based on a paper the author prepared for a seminar the source or origin of goods. 15 U.S.C. §1127. In similar sponsored by the ABA’s Tort Trial & Insurance fashion, service marks are used to protect a name, logo or Practice Section. She can be reached at other indicator of the source or origin of services. Id. This [email protected]. is the only significant distinction and rules related to pro- tection and enforcement are the same for both. Indeed, a The Practical Lawyer | 49 50 | The Practical Lawyer April 2007 given “name, logo, or other indicator” frequently is • Is constructive notice of the registrant’s claim used by its owner as both a trademark and a service to ownership of the mark for those products or mark. The two are commonly referred together as services; and “trademarks” and this convention is adopted in this • Renders the mark incontestable after five article. Each is protected by federal statutory law― years. 15 U.S.C. §1051 et seq. (known as the “Lanham 15 U.S.C. §1057(b), §1072, §1065 (respectively). Act”)―as well as common law and state law. Each When a mark becomes “incontestable,” it is enti- state of the United States has its own trademark tled to an enhanced level of protection, including, laws and trademark registration procedure that re- e.g., that it may no longer be challenged as being lates to intrastate use of a trademark in each state. “merely descriptive.” Those laws and procedures are not addressed here- Despite the fact that trademark rights are based in because federal protection is generally preferable on use, it is possible to file a federal trademark ap- and relates to use of a mark in interstate commerce plication based only upon a bona fide intent to use a and results in protection in all 50 states. This article mark in interstate commerce, without actual use at focuses instead on the federal protection of trade- the time the application is filed. 15 U.S.C. §1051(b). Once the application has been allowed by the PTO, marks. the applicant must later submit evidence of actual The scope of what can serve as an indicator of use to complete the registration. The applicant has a source or origin is extremely broad. A trademark may six-month period in which to file proof of actual use be any “word, name, symbol, or device, or any com- of the mark. 37 C.F.R. §2.88(a). The applicant may bination thereof.” 15 U.S.C. §1127. Color may be ask for additional six-month periods of time, not to registered as a trademark, as can sounds, scents, and exceed a total of 24 months. 37 C.F.R. §2.89(c). other “non-traditional” symbols. Qualitex v. Jacobson Prods., 514 U.S. 159 (1995); In re Clarke, 17 U.S.P.Q. What Is Protectable? 2d (BNA) 1238 (T.T.A.B. 1990) (holding that scented To gain trademark protection, the word, sym- fragrance can serve as a trademark for yarn). bol, or other chosen indicator must be used in Trademarks can, but are not required to be, interstate commerce “to identify and distinguish registered with the United States Patent and Trade- [the trademark owner’s] goods, including a unique mark Office (“PTO”). If registered, as discussed product, from those manufactured or sold by oth- below, the breadth and ease of protection afforded ers and to indicate the source of the goods, even if to the mark is somewhat greater than for non-reg- that source is unknown.” 15 U.S.C. §1127. (In the istered marks. case of a service mark, the mark must be used in Trademark rights are acquired through actual the sale or advertising of services “to identify and use, 15 U.S.C. §1051, in interstate commerce. The distinguish the services of one person, including PTO confirms trademark rights through registra- a unique service, from the services of others and tion, 15 U.S.C. §1052, which also gives the trade- to indicate the source of the services, even if that mark owner certain procedural and substantive ad- source is unknown.” 15 U.S.C. §1127.) vantages. Registration of a mark with the PTO Company names used merely to identify busi- • Is prima facie evidence of the exclusive right nesses (as opposed to goods and services) gener- to use the mark throughout the United States ally are not considered trademarks because they in connection with certain products and ser- typically do not serve the requisite source-identify- vices; ing function in connection with a particular good Protecting Intellectual Property | 51 or service. Company names are often protected • Those that have acquired secondary meaning. through state incorporation laws or through the Inwood Laboratories v. Ives Laboratories, 456 U.S. unfair competition provision of section 43(a) of the 844, 851, n.11 (1982) (explaining that a mark Lanham Act, 15 U.S.C. §1125(a), if they do not acquires secondary meaning when, “in the otherwise qualify for trademark protection. minds of the public, the primary significance of [the mark] is to identify the source of the Standards For Protection product rather than the product itself ”); or Under the Lanham Act, not all trademarks are • Those that are generic. E.g., King-Seeley Thermos entitled to the same degree of protection under Co. v. Aladdin Industries, Inc., 321 F.2d 577 (2d the law. Although protection may be extended to Cir. 1963). marks capable of identifying and distinguishing a Generic terms are never protectable as marks. Ab- product’s source, not all trademarks perform this ercrombie, supra, 537 F.2d at 9 (stating that not only function to the same degree. More distinctive and will the PTO deny registration for a generic mark, unique trademarks provide better source-identifying but also that the Lanham Act provides for a previ- information to consumers and are easier to protect. ously registered mark to be cancelled at any time Novice trademark owners often mistakenly believe if it becomes generic. 15 U.S.C. §1064(3)). Thus, in direct contrast to what many trademark owners that consumers more easily relate to and recognize believe, the more descriptive a mark is, the less pro- a more descriptive trademark. This is based on the tection it is afforded. assumption that a name that provides information “Inherently distinctive” marks can further be about a product’s characteristics will be easier for subdivided into marks that are “arbitrary or fanci- consumers to remember. This is a false premise. ful” or marks that are “suggestive” marks. Abercrom- Consumers merely relate a descriptive mark to the bie, supra, 537 F.2d at 9. The former are the stron- identification of the goods or services and not to gest and include either coined words or words that the origin of those goods and services. Descriptive are not typically associated with the product. Such marks are not much more than mere names of the marks are strong because they tend not to describe goods and, in such circumstances, would not be en- the product, but rather to serve as an indicator of titled to protection. the source of the goods. Well known examples in- The more distinctive (and non-descriptive) a clude “Kodak” for photographic supplies, “Apple” mark is, the greater its ability to identify the source for computers, and “Exxon” for oil and gas prod- of the goods or services. This distinctiveness is thus ucts. associated with the “strength” of the mark. Aber- “Suggestive” marks are not quite as strong as crombie & Fitch Co. v. Hunting World, Inc., 537 F.2d arbitrary or fanciful marks. These suggest a quality 4 (2d Cir. 1976) (announcing a spectrum of dis- or attribute of the product for which the mark is tinctiveness). A mark or name’s strength is divided used. For example, “Coppertone,” when used for into three broad groups in descending order of suntan oil, is suggestive of a dark tan, presumably strength: the goal of consumers using the product.
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