FAQs

A good trademark is one that the public will easily remember and associate with goods of a given company, as opposed to other goods of the same generic kind. A trademark should be readily distinguishable from the generic or common name of the goods. Cute variations of generic names usually do not make for good trademarks. Trademarks should be different from the marks of competitors and should neither sound the same nor look the same. The strongest trademarks are those having no dictionary meaning, such as EXXON or XEROX. When a tentative trademark has been selected, a search should be done to find out whether anyone else is using a similar trademark for similar goods. Often the process of selecting tentative trademarks and searching for conflicting use must be repeated several times before a suitable trademark is found.

A trademark is a source identifier, which means that it identifies the company from which products or services emanate. The value of a company’s good will is solely associated with its trademarks. Failing to protect your company’s trademarks can create problems if you seek to sell your company or grant a license. While it is often second nature to file a patent application for a company’s invention or file a copyright application for a musical score, protecting a company’s trademark is frequently overlooked.

A trademark is a source identifier and identifies the company from which products or services emanate. The value of a company’s good will is solely associated with its trademarks. Failing to protect your company’s trademarks can create problems when you seek to sell your company or grant a license.While it is often second nature to file a patent application on a company’s invention or file a copyright application on a musical score, protecting a company’s trademark is often overlooked.

With more and more E-commerce being done on the Internet, and with companies posting product informational sites, it is not unusual for a company to be doing business or at least advertising its products internationally, even though their focus might only be the New York tri-state area. For this reason, companies need to plan for expansion and think two steps ahead in protecting their trademarks. Trademarks are mostly protected on a country by country basis. For example, if you register your company’s trademark in the U.S., it doesn’t keep someone from registering your trademark in Mexico, Japan, Canada or Germany, for instance. Such registrations may preclude your company from expanding into such countries. Companies often stumble in disbelief when they learn that a third-party registered their trademark in a foreign country. However, such conduct happens every day, especially to marks that are just gaining popularity in the U.S.

While trademarks are mostly registered on a country by country basis, there are a number of mechanisms to file one application for numerous countries. Your trademark attorney can give you more specifics, but filing one European Trade Mark (“EUTM”) Application allows you to seek a registration in all of the 28 cooperating countries of Europe (excluding Switzerland and Norway). Furthermore, companies that are resident in one of the countries that are signatories to the Madrid Treaty (the United States is a signatory) may file International Applications that designate an extensive list of countries in which a company seeks protection. Often, Madrid Treaty filings are more cost effective for protecting a trademark in a number of countries.

A patent gives a benefit to an inventor and a benefit to the public:

Once issued, and subject to the payment of government fees, a patent gives an inventor the right to exclude others from making, using or selling the patented invention for 20 years from the filing date. The patent gives the public a set of illustrated instructions that explains how the invention works. Anyone is free to use these teachings for inspiration and reference when making new contributions, so long as the results do not infringe the patent while it remains in force.

One cannot have the first benefit without offering the second. In order to get a benefit (the right to exclude others) the inventor has to give a benefit (teaching others how the invention works). This is how Congress has chosen to carry out the Constitutional objective of patents — “to promote the progress of science and useful arts.”

A patent grants only the right to exclude others. A patent does not grant absolute right to make or sell the invention. Other impediments, such as someone else’s patent that covers a key component of the invention, may stand in the way.

To be patentable, an invention must fall within as least one of the following categories:

• An article of manufacture;
• A machine;
• A process;
• A composition of matter (a chemical compound);
• An improvement of any of the above; or
• A ornamental design of an article of manufacture; or
• An asexually reproduced plant.

Additionally, patentable inventions must be:

• New;
• Useful; and
• Non-obvious.

Abstract ideas and scientific principles cannot be patented. They must first be embodied in a device or process that falls into one of the above classes. Software can be patented if it can be described as an embodiment of such a device or process.

An invention is “new” unless:

• It was first invented by someone else;
• It was first described in a publication anywhere in the world more than one year before a patent application was filed; or
• It was put in public use or on sale in the United States more than one year before a patent application was filed.

An invention is “useful” if it accomplishes its intended purpose-that is, if it works. Most inventions (except perpetual motion machines!) pass this test without difficulty.

An invention is “non-obvious” if the differences between the invention and the earlier work of others are such that the invention would not have been obvious to a person with ordinary skill in the art (“art” means the technology to which the invention relates).

Unlike a patent, which must be applied for and which may or may not be granted, a copyright exists automatically from the moment a authorship is created. Additional rights can be obtained from the Registrar of Copyrights.

A “Work of authorship”, when fixed in a tangible medium, includes the following:

Literary works (including computer software),
Music works,
Dramatic works,
Pantomimes and choreographic works,
Pictorial, graphic and sculptural works,
Movies and other audiovisual works; and
Sound recordings.

A “tangible medium” is any material object in which a work is fixed. Some examples include paper, film, records, compact discs and magnetic tape. Some works do not meet the definition of a work of authorship and are not copyrightable. Examples of such works include:

• Impromptu speeches which are not fixed in a tangible medium,
• Titles and other short phrases; and
• Ideas, methods and concepts.

A work is “created” when it is fixed in a tangible medium from which the work can be perceived either directly or by means of a machine, such as a record player, a computer, or a movie projector.

For copyright purposes, the most important type of work of authorship to the corporate manager is literary work.

“Literary works” include works as diverse as books, poems, magazine articles, computer programs and telephone directories.

“Pictorial, graphic and sculptural works” include work such as paintings, photographs, maps, statues, blueprints, toys, and jewelry.

A “sound recording” is a recorded rendition of a work as contrasted to the underlying work, which itself may also be the subject of a copyright.

A copyright belongs to the author of the work except in the case of a “work for hire,” in which case the owner is the employer. A work for hire is a work created by an employee in the course and scope of employment. Many employers include works of authorship, as well as inventions, in their employee invention assignment agreements. In the strictest sense, a contractor owns the rights to the work created for a business unless it is made clear that the work is done for hire.

A copyright gives its owner a “bundle” of exclusive rights including:

The right to make copies,
The right to distribute copies,
The right to prepare derivative works,
The right to public performance, and
The right of public display.

A copyright lasts for the lifetime of the author, plus 75 years. In the case of an anonymous work or a work for hire the term is 125 years from creation or 75 years from publication, whichever expires first.