Trademarks, Trade Dress, Copyrights, Trade Secrets and ... · Trade Secrets • Trade secrets:...
Transcript of Trademarks, Trade Dress, Copyrights, Trade Secrets and ... · Trade Secrets • Trade secrets:...
![Page 1: Trademarks, Trade Dress, Copyrights, Trade Secrets and ... · Trade Secrets • Trade secrets: –are not generally known to the public, –are protectable as long as the information](https://reader036.fdocuments.net/reader036/viewer/2022062317/5f0d55917e708231d439d5a3/html5/thumbnails/1.jpg)
© Husch Blackwell LLP
Trademarks, Trade Dress, Copyrights, Trade Secrets
and Patents: The Cornerstones of a
Franchise System
Wade Kerrigan
Kris Kappel
![Page 2: Trademarks, Trade Dress, Copyrights, Trade Secrets and ... · Trade Secrets • Trade secrets: –are not generally known to the public, –are protectable as long as the information](https://reader036.fdocuments.net/reader036/viewer/2022062317/5f0d55917e708231d439d5a3/html5/thumbnails/2.jpg)
IP Law Resources
• Trademarks – www.uspto.gov
• Trade Dress • Copyrights
– www.copyright.gov • Trade Secrets • Patents
– www.uspto.gov – www.google.com/patents
![Page 3: Trademarks, Trade Dress, Copyrights, Trade Secrets and ... · Trade Secrets • Trade secrets: –are not generally known to the public, –are protectable as long as the information](https://reader036.fdocuments.net/reader036/viewer/2022062317/5f0d55917e708231d439d5a3/html5/thumbnails/3.jpg)
A trademark or “brand name” is “anything” that identifies the source of goods or services from those of another when used in commerce.
What is a Trademark?
![Page 4: Trademarks, Trade Dress, Copyrights, Trade Secrets and ... · Trade Secrets • Trade secrets: –are not generally known to the public, –are protectable as long as the information](https://reader036.fdocuments.net/reader036/viewer/2022062317/5f0d55917e708231d439d5a3/html5/thumbnails/4.jpg)
A Trademark Can Be: A Word or Group of Words
• COKE
• CABBAGE PATCH KIDS • DON’T LEAVE HOME WITHOUT IT
![Page 5: Trademarks, Trade Dress, Copyrights, Trade Secrets and ... · Trade Secrets • Trade secrets: –are not generally known to the public, –are protectable as long as the information](https://reader036.fdocuments.net/reader036/viewer/2022062317/5f0d55917e708231d439d5a3/html5/thumbnails/5.jpg)
A Trademark Can Be: A Symbol, Pictorial
Representation or Design • NIKE “Swoosh”
• LACOSTE Alligator
• Olympic rings
![Page 6: Trademarks, Trade Dress, Copyrights, Trade Secrets and ... · Trade Secrets • Trade secrets: –are not generally known to the public, –are protectable as long as the information](https://reader036.fdocuments.net/reader036/viewer/2022062317/5f0d55917e708231d439d5a3/html5/thumbnails/6.jpg)
A Trademark Can Be: A Combination of Word(s) Plus
Symbol, Pictorial Representation or Design
NESTEA
CHURCH’S
![Page 7: Trademarks, Trade Dress, Copyrights, Trade Secrets and ... · Trade Secrets • Trade secrets: –are not generally known to the public, –are protectable as long as the information](https://reader036.fdocuments.net/reader036/viewer/2022062317/5f0d55917e708231d439d5a3/html5/thumbnails/7.jpg)
A Trademark Can Be: Numeral(s), Letter(s) or Combinations Thereof
• 501 Jeans
• IBM computers
• V-8 Juice
![Page 8: Trademarks, Trade Dress, Copyrights, Trade Secrets and ... · Trade Secrets • Trade secrets: –are not generally known to the public, –are protectable as long as the information](https://reader036.fdocuments.net/reader036/viewer/2022062317/5f0d55917e708231d439d5a3/html5/thumbnails/8.jpg)
A Trademark Can Be: A Shape of a Container, Packaging
or Building (“Trade Dress”)
• COKE bottle • Conical top of CROSS pen
• TOBLERONE chocolate packaging
![Page 9: Trademarks, Trade Dress, Copyrights, Trade Secrets and ... · Trade Secrets • Trade secrets: –are not generally known to the public, –are protectable as long as the information](https://reader036.fdocuments.net/reader036/viewer/2022062317/5f0d55917e708231d439d5a3/html5/thumbnails/9.jpg)
A Trademark Can Be: A Color
• Orange for THE HOME DEPOT stores
• Pink for Owens-Corning’s insulation
![Page 10: Trademarks, Trade Dress, Copyrights, Trade Secrets and ... · Trade Secrets • Trade secrets: –are not generally known to the public, –are protectable as long as the information](https://reader036.fdocuments.net/reader036/viewer/2022062317/5f0d55917e708231d439d5a3/html5/thumbnails/10.jpg)
A Trademark Can Be: A Sound
∙ MGM Lion Roar ∙ NBC Chimes
![Page 11: Trademarks, Trade Dress, Copyrights, Trade Secrets and ... · Trade Secrets • Trade secrets: –are not generally known to the public, –are protectable as long as the information](https://reader036.fdocuments.net/reader036/viewer/2022062317/5f0d55917e708231d439d5a3/html5/thumbnails/11.jpg)
A Trademark Can Be: A Scent
“The mark consists of a high impact, fresh flower fragrance reminiscent of Plumeria blossoms”
–U.S. Reg. No. 1,639,128
![Page 12: Trademarks, Trade Dress, Copyrights, Trade Secrets and ... · Trade Secrets • Trade secrets: –are not generally known to the public, –are protectable as long as the information](https://reader036.fdocuments.net/reader036/viewer/2022062317/5f0d55917e708231d439d5a3/html5/thumbnails/12.jpg)
Trademarks vs. Service Marks
• Trademarks identify products or goods
• Service marks identify services
![Page 13: Trademarks, Trade Dress, Copyrights, Trade Secrets and ... · Trade Secrets • Trade secrets: –are not generally known to the public, –are protectable as long as the information](https://reader036.fdocuments.net/reader036/viewer/2022062317/5f0d55917e708231d439d5a3/html5/thumbnails/13.jpg)
Trademark Searches
• Make sure you are not infringing third-party marks and the mark is available
• Knock-out search –Quickly determine obvious risks to
using the mark or clear obstacles to registering the mark
![Page 14: Trademarks, Trade Dress, Copyrights, Trade Secrets and ... · Trade Secrets • Trade secrets: –are not generally known to the public, –are protectable as long as the information](https://reader036.fdocuments.net/reader036/viewer/2022062317/5f0d55917e708231d439d5a3/html5/thumbnails/14.jpg)
Trademark Searches • Comprehensive search
– Includes federal trademark registrations and applications, state trademark registrations, public domain, websites, registered domain names, and business entity names
– Knock-out search returns one or more results very close to the mark
– Appears mark is used elsewhere in commerce
• The importance of comprehensive searches for franchisors
![Page 15: Trademarks, Trade Dress, Copyrights, Trade Secrets and ... · Trade Secrets • Trade secrets: –are not generally known to the public, –are protectable as long as the information](https://reader036.fdocuments.net/reader036/viewer/2022062317/5f0d55917e708231d439d5a3/html5/thumbnails/15.jpg)
Trademarks vs. Trade Names
• A trademark is used to identify and distinguish the trademark owner’s goods or services from those manufactured or sold by others and to indicate the source of the goods.
![Page 16: Trademarks, Trade Dress, Copyrights, Trade Secrets and ... · Trade Secrets • Trade secrets: –are not generally known to the public, –are protectable as long as the information](https://reader036.fdocuments.net/reader036/viewer/2022062317/5f0d55917e708231d439d5a3/html5/thumbnails/16.jpg)
Trademarks vs. Trade Names
• A trade name is any name used by a person to identify his or her business or vocation. –Trade Name: Phillip Morris USA –Trademark: Marlboro –Trade Name: The Coca-Cola Company –Trademark: Coke or Coca-Cola
![Page 17: Trademarks, Trade Dress, Copyrights, Trade Secrets and ... · Trade Secrets • Trade secrets: –are not generally known to the public, –are protectable as long as the information](https://reader036.fdocuments.net/reader036/viewer/2022062317/5f0d55917e708231d439d5a3/html5/thumbnails/17.jpg)
Trademarks vs. Trade Names
• Clearing a trade name through the Secretary of State business entity database does not necessarily mean that the trade name is available for use as a trademark.
• Secretary of State’s offices will allow very similar names to be registered.
![Page 18: Trademarks, Trade Dress, Copyrights, Trade Secrets and ... · Trade Secrets • Trade secrets: –are not generally known to the public, –are protectable as long as the information](https://reader036.fdocuments.net/reader036/viewer/2022062317/5f0d55917e708231d439d5a3/html5/thumbnails/18.jpg)
• For Registered Marks:
“®” or “Registered in the U.S. Patent and
Trademark Office” or “Reg. U.S. Pat. TM. Off.” • For Unregistered Marks:
“TM” “SM” or an asterisk indicating “A
trademark/service mark of XYZ Corporation.”
Proper Marking
![Page 19: Trademarks, Trade Dress, Copyrights, Trade Secrets and ... · Trade Secrets • Trade secrets: –are not generally known to the public, –are protectable as long as the information](https://reader036.fdocuments.net/reader036/viewer/2022062317/5f0d55917e708231d439d5a3/html5/thumbnails/19.jpg)
• There is no such thing as an “international trademark”
• File in each country • May file under Madrid Protocol
which allows you to file in multiple countries for less
International Trademark
![Page 20: Trademarks, Trade Dress, Copyrights, Trade Secrets and ... · Trade Secrets • Trade secrets: –are not generally known to the public, –are protectable as long as the information](https://reader036.fdocuments.net/reader036/viewer/2022062317/5f0d55917e708231d439d5a3/html5/thumbnails/20.jpg)
Copyrights
• In the U.S.: –Copyright exists automatically upon
creation of a copyrightable work (fixed in a tangible medium)
– Federal registration is not required –However, you cannot sue for
infringement without a federal copyright registration
![Page 21: Trademarks, Trade Dress, Copyrights, Trade Secrets and ... · Trade Secrets • Trade secrets: –are not generally known to the public, –are protectable as long as the information](https://reader036.fdocuments.net/reader036/viewer/2022062317/5f0d55917e708231d439d5a3/html5/thumbnails/21.jpg)
International Copyrights • There is no such thing as an “international
copyright” that will automatically protect an author’s writings throughout the world.
• Protection against unauthorized use in a particular country basically depends on the national laws of that country.
• However, most countries offer protection to foreign works under certain conditions that have been greatly simplified by international copyright treaties and conventions.
![Page 22: Trademarks, Trade Dress, Copyrights, Trade Secrets and ... · Trade Secrets • Trade secrets: –are not generally known to the public, –are protectable as long as the information](https://reader036.fdocuments.net/reader036/viewer/2022062317/5f0d55917e708231d439d5a3/html5/thumbnails/22.jpg)
Copyright Notice
© [year of creation] [owner] © 2012 Husch Blackwell Sanders LLP
or
Copyright [year of creation] [owner] Copyright 2012 Husch Blackwell Sanders LLP
![Page 23: Trademarks, Trade Dress, Copyrights, Trade Secrets and ... · Trade Secrets • Trade secrets: –are not generally known to the public, –are protectable as long as the information](https://reader036.fdocuments.net/reader036/viewer/2022062317/5f0d55917e708231d439d5a3/html5/thumbnails/23.jpg)
Who Owns the Copyright?
• You hire a programmer who creates software or a website for your business.
• Who owns the copyright in the software?
• Who owns the copyright in the content?
![Page 24: Trademarks, Trade Dress, Copyrights, Trade Secrets and ... · Trade Secrets • Trade secrets: –are not generally known to the public, –are protectable as long as the information](https://reader036.fdocuments.net/reader036/viewer/2022062317/5f0d55917e708231d439d5a3/html5/thumbnails/24.jpg)
Work for Hire
A work prepared by an employee within the scope of his/her employment (i.e., it was part of the job duties of the creator to create the work).
![Page 25: Trademarks, Trade Dress, Copyrights, Trade Secrets and ... · Trade Secrets • Trade secrets: –are not generally known to the public, –are protectable as long as the information](https://reader036.fdocuments.net/reader036/viewer/2022062317/5f0d55917e708231d439d5a3/html5/thumbnails/25.jpg)
Work for Hire • A Work for Hire is NOT hiring an
independent contractor and paying her to create a copyrightable work for you.
• ALWAYS get a written agreement
from the author, photographer, programmer, etc. that assigns their copyright rights and interests in the work to you.
![Page 26: Trademarks, Trade Dress, Copyrights, Trade Secrets and ... · Trade Secrets • Trade secrets: –are not generally known to the public, –are protectable as long as the information](https://reader036.fdocuments.net/reader036/viewer/2022062317/5f0d55917e708231d439d5a3/html5/thumbnails/26.jpg)
Duration of Copyright
• Life of the author plus 70 years. • If work for hire: shorter of 95
years from publication or 100 years from creation.
![Page 27: Trademarks, Trade Dress, Copyrights, Trade Secrets and ... · Trade Secrets • Trade secrets: –are not generally known to the public, –are protectable as long as the information](https://reader036.fdocuments.net/reader036/viewer/2022062317/5f0d55917e708231d439d5a3/html5/thumbnails/27.jpg)
Web Site and Software Issues for Franchisors
• Franchise Agreement Restrictions
on Web Sites • Software for the franchise system • Data Security
![Page 28: Trademarks, Trade Dress, Copyrights, Trade Secrets and ... · Trade Secrets • Trade secrets: –are not generally known to the public, –are protectable as long as the information](https://reader036.fdocuments.net/reader036/viewer/2022062317/5f0d55917e708231d439d5a3/html5/thumbnails/28.jpg)
IP Policy • Developments • Inventions • Confidentiality • Trade Secret Protection • Ownership Issues • Social Media • Software Compliance
![Page 29: Trademarks, Trade Dress, Copyrights, Trade Secrets and ... · Trade Secrets • Trade secrets: –are not generally known to the public, –are protectable as long as the information](https://reader036.fdocuments.net/reader036/viewer/2022062317/5f0d55917e708231d439d5a3/html5/thumbnails/29.jpg)
Trade Secrets
• Trade secrets: –are not generally known to the public, – are protectable as long as the
information remains secret, and –have been the subject of reasonable
efforts to maintain confidentiality.
![Page 30: Trademarks, Trade Dress, Copyrights, Trade Secrets and ... · Trade Secrets • Trade secrets: –are not generally known to the public, –are protectable as long as the information](https://reader036.fdocuments.net/reader036/viewer/2022062317/5f0d55917e708231d439d5a3/html5/thumbnails/30.jpg)
Trade Secrets • Confidentiality measures must be
reasonable under the circumstances: –Non-disclosure or confidentiality
agreements –Advising employees that information
is trade secret –Marking documents “confidential” –Employment agreements
![Page 31: Trademarks, Trade Dress, Copyrights, Trade Secrets and ... · Trade Secrets • Trade secrets: –are not generally known to the public, –are protectable as long as the information](https://reader036.fdocuments.net/reader036/viewer/2022062317/5f0d55917e708231d439d5a3/html5/thumbnails/31.jpg)
Trade Secrets
• Examples - –recipe for a certain type of food
or drink (Coca-Cola or KFC) –customer list –techniques/processes for a
special method of making known composition or device
![Page 32: Trademarks, Trade Dress, Copyrights, Trade Secrets and ... · Trade Secrets • Trade secrets: –are not generally known to the public, –are protectable as long as the information](https://reader036.fdocuments.net/reader036/viewer/2022062317/5f0d55917e708231d439d5a3/html5/thumbnails/32.jpg)
Patents • What is Patentable?
– Anything under the sun made by man
• What is not Patentable? – Natural Phenomena
• Snow, Leaves – Mathematical formulas
• Pythagorean Theorem – Laws of Nature
• Even Sir Isaac Newton loses out – Abstract Ideas
• A cure for cancer would be nice
![Page 33: Trademarks, Trade Dress, Copyrights, Trade Secrets and ... · Trade Secrets • Trade secrets: –are not generally known to the public, –are protectable as long as the information](https://reader036.fdocuments.net/reader036/viewer/2022062317/5f0d55917e708231d439d5a3/html5/thumbnails/33.jpg)
Patent Term • Utility Patent (Non-provisional) -
20 year patent term – any new and useful process, machine,
article of manufacture, composition of matter, or any new and useful improvement thereof
• Design Patent- 14 year patent term – any new, original and ornamental design for
an article of manufacture • Plant Patent - 20 year patent term
– a distinct and new variety of asexually produced plant
![Page 34: Trademarks, Trade Dress, Copyrights, Trade Secrets and ... · Trade Secrets • Trade secrets: –are not generally known to the public, –are protectable as long as the information](https://reader036.fdocuments.net/reader036/viewer/2022062317/5f0d55917e708231d439d5a3/html5/thumbnails/34.jpg)
Patent Reform Act • Enacted September 16, 2011 • Change from First-to-Invent system to
First-to-File system • New Prior Act Rules • New Prior Use Rights • New Administrative Review Process
– including expanded rules for third party involvement in the patenting process
• New Litigation Rules • Prioritized Examination
– ($4,800 ruling within 1 year)
![Page 35: Trademarks, Trade Dress, Copyrights, Trade Secrets and ... · Trade Secrets • Trade secrets: –are not generally known to the public, –are protectable as long as the information](https://reader036.fdocuments.net/reader036/viewer/2022062317/5f0d55917e708231d439d5a3/html5/thumbnails/35.jpg)
First-to-File vs. First-to-Invent Scenario
• Senior inventor who conceived of an invention first, but did not immediately file an application
vs. • Junior inventor who made the first
patent filing for the invention, but who conceived of the invention after the senior inventor
![Page 36: Trademarks, Trade Dress, Copyrights, Trade Secrets and ... · Trade Secrets • Trade secrets: –are not generally known to the public, –are protectable as long as the information](https://reader036.fdocuments.net/reader036/viewer/2022062317/5f0d55917e708231d439d5a3/html5/thumbnails/36.jpg)
Patents
• Provisional Patent Applications –Preliminary (informal) application –Advantages
• Secure an early filing date • “Patent pending” • Test marketability of products • Less expensive
–Disadvantages
• Only lasts 12 months – then must file a non-provisional application or it is abandoned
• Never examined • Never issues as a patent
![Page 37: Trademarks, Trade Dress, Copyrights, Trade Secrets and ... · Trade Secrets • Trade secrets: –are not generally known to the public, –are protectable as long as the information](https://reader036.fdocuments.net/reader036/viewer/2022062317/5f0d55917e708231d439d5a3/html5/thumbnails/37.jpg)
Patents • Unchanged by enacted of Patent
Reform Act
• Patents grant their owner the right to “exclude others from”: – Making the invention
– Using the invention
– Selling the invention
– Offering the invention for sale
– Importing the invention
![Page 38: Trademarks, Trade Dress, Copyrights, Trade Secrets and ... · Trade Secrets • Trade secrets: –are not generally known to the public, –are protectable as long as the information](https://reader036.fdocuments.net/reader036/viewer/2022062317/5f0d55917e708231d439d5a3/html5/thumbnails/38.jpg)
Patents
• U.S. patent covers only the United States.
• Separate patent necessary in each country – no one patent covers the world. There is no such thing as an “international patent”.
![Page 39: Trademarks, Trade Dress, Copyrights, Trade Secrets and ... · Trade Secrets • Trade secrets: –are not generally known to the public, –are protectable as long as the information](https://reader036.fdocuments.net/reader036/viewer/2022062317/5f0d55917e708231d439d5a3/html5/thumbnails/39.jpg)
Prior Art – The New System
• Anything worldwide which, before the filing date of the application, was: – Patented – Published – Used publicly – On Sale – Otherwise available to the public – Disclosed in an application filed prior to the
filing date of the application
![Page 40: Trademarks, Trade Dress, Copyrights, Trade Secrets and ... · Trade Secrets • Trade secrets: –are not generally known to the public, –are protectable as long as the information](https://reader036.fdocuments.net/reader036/viewer/2022062317/5f0d55917e708231d439d5a3/html5/thumbnails/40.jpg)
Disclosure
• Do not inadvertently disclose technology that may be patentable by: – Posting technology/pictures on website – Submit an article for publication – Offer to sell or licenses technology (no
tradeshows) – Distribute samples – Conduct consumer tests – Distribute advertising – Demonstrate a prototype to public group
![Page 41: Trademarks, Trade Dress, Copyrights, Trade Secrets and ... · Trade Secrets • Trade secrets: –are not generally known to the public, –are protectable as long as the information](https://reader036.fdocuments.net/reader036/viewer/2022062317/5f0d55917e708231d439d5a3/html5/thumbnails/41.jpg)
Questions?