 |
Protecting
your intellectual property
A look at the Trademark
By
Matthew B. Harrison, esq.
PhotosAndTheLaw.com
As an arts and entertainment
attorney, I find myself counseling clients with an ongoing mantra consisting
of “protect your intellectual property.” Intellectual property
(IP) refers to a legal entitlement that sometimes attaches to the expressed
form of an idea, or to some other intangible subject matter. The term
IP reflects the idea that the subject matter being protected is the
product of the mind or the intellect, and that IP rights may be protected
at law in the same way as any other form of property (even though the
property may be intangible).
In the case of an artist, intellectual property may be all that they
really have in terms of assets. An artists name as a manner in which
their clients may identify their work, and the copyright protection
that exist in the work, are two types of IP that immediately come to
mind.
Your business probably has some of the same basic type of IP concerns
that these artists do. Your business may have a recognizable brand name
informing customers that your goods or services are of a certain quality
that has been built by years of experience and dedication to excellence.
You may be creating written or visual materials that are distributed
throughout the marketplace. You may have developed a technology or process
that is unique to your business field. All of these are forms of intellectual
property that need to be protected just as you would protect your physical
assets with locks and security.
TYPES OF IP
There are different
types of intellectual property – depending upon the subject matter
being protected – and different subtopics of the law apply to
each. I will provide a brief overview of the three major types of intellectual
property and focus primarily on the last one.
Creative and artistic works such as music, paintings, photographs, books,
movies and software are eligible for copyright protection. A copyright
gives the holder the exclusive right to control reproduction or adaptation
of such works for a certain period of time.
A patent may be granted in relation to a new and useful invention, giving
the patent holder an exclusive right to commercially exploit the invention
for a certain period of time (typically 20 years from the filing date
of a patent application).
A trademark includes any word, name, symbol, or device, or any combination
used, or intended to be used, in commerce to identify and distinguish
the goods of one manufacturer or seller from goods manufactured or sold
by others, and to indicate the source of the goods. In short, a trademark
is a brand name.
The essential function of a trademark is to exclusively identify the
commercial source or origin of products or services. Think of a trademark
serving as a badge of origin of the goods of services. A trademark owner
would want to protect the reputation of the source of the goods or services
by limiting the use of the mark by unauthorized persons. An example,
McDonalds Corporation has Trademark protection in their name and the
“golden arches” symbol. They would not want another restaurant
to come along using the golden arches logo as that may cause customer
confusion and ultimately may injure McDonald’s brand reputation.
It is important to note that terms such as "mark", "brand"
and "logo" are sometimes used interchangeably with "trademark".
However, the term "brand" in not really an IP term but rather
is a term more generally associated with marketing or advertising. It
is also important to note that rights in a trademark generally arise
out of the use and/or registration in connection only with a specific
type or range of products or services. For example, McDonalds corporation
has trademark protection in food related goods and services. The trademark
protection may not extend to the use of the mark by someone involved
in an unrelated business. John McDonald, a bowling ball manufacturer,
may be eligible for trademark protection of McDonalds in connection
with sporting goods.
THE SPECTRUM OF
PROTECTIBILITY
In terms of protecting your brand, common words, phrases, or other signs
can only be protected to the extent that a trademark owner is able to
maintain exclusive rights over that word, phrase, or sign in relation
to certain products or services, assuming there are no other trademark
objections.
To further elaborate on this point, a trademark must have a distinctive
character in addition to its inherent ability to identify the origin
of a good or service. Registrability can be understood as a continuum,
with "inherently distinctive" marks at one end, "generic"
and "descriptive" marks (like “salt” in terms
of sodium chloride products) with no distinctive character at the other
end, and "suggestive" and "arbitrary" (like “Amazon”
in terms of an online retailer of books) marks lying between these two
points.
The more arbitrary or distinctive the mark – the more likely a
successful registration will occur. The best marks are neologisms. A
neologism is a word, term, or phrase that has been created or "coined"
to apply to new concepts, or to reshape older terms in newer language
form. Desani is a prime example of an inherently distinctive mark because
the word had no meaning before it was adopted and used as a trademark
in relation to bottled water.
A generic term is the common name for the products or services in connection
with which it is used, such as "dry ice" when used in connection
with frozen carbon dioxide. This term may be used by anyone –
including other manufacturers – to refer to the product in a manner
that is easy for the consuming public. Because these terms are inherent
to the actual usage or description of the good or service, it does not
distinguish the products or services of a business from the products
or services of other businesses, and therefore cannot be afforded any
legal protection. Furthermore, in this category are trademarks that
have lost their distinctive character, such as heroin (a registered
trademark of Bayer), spandex (a registered trademark of DuPont –
which subsequently registered the name Lycra for the same product),
and Chapstick (a registered trademark of AHRobbins).
Although a trademark that lacks distinctive character may not be initially
registrable, registration may occur if the trademark owner can demonstrate
that the public exclusively associates the proposed mark with a particular
commercial origin or source (“The badge of origin”). In
such cases the mark will be registrable on the basis that this association
evidences the distinctive character of the mark and ultimately furthers
the purpose of trademark protection. Such circumstances are referred
to as “secondary meaning” and in practice sales figures
and promotional expenditures and consumer surveys to show that consumers
chiefly associate an otherwise non-distinctive mark with the trademark
owner and its products or services are valid evidence to show a secondary
meaning to a particular mark.
CONCLUSION
If you are thinking
of protecting your brand name with a trademark or service mark you should
consult with an intellectual property attorney who will be able to assist
you. You can find out more information about trademark/service mark
and patent protection on the US Patent and Trademark website –
www.uspto.gov. Also,
if your small business does business internationally, you should also
visit: stopfakes.org
for more information provided by the USPTO specifically tailored
to your business needs.
Matthew
B. Harrison is an entertainment and media attorney with Harrison Strategies,
LLC The Springfield based talent management group has offices in Massachusetts,
New York and Washington D.C. When not practicing law, Harrison also
is a glamour photographer with FNS
Studios and Silver
Jack Photo located at the Indian Orchard Mills complex. Visit him
on the web at www.photosandthelaw.com
or email him at matthew@matthewharrison.com
Copyright © 2006 Matthew B. Harrison, esq. All
rights reserved. The information contained on this website may not be
published, broadcast, rewritten or redistributed without the prior written
authority of Matthew B. Harrison, esq. One should know better than to
steal intellectual property from an intellectual property attorney. |
