Overlapping Your Boundaries: Layering copyrights, patents, and trade dress to bolster brand protection
Purpose of IP Protection
- Intellectual property laws, and specifically patent and copyright protection, exist to incentivize the creation of new works to promote the progress of society.
What is a COPYRIGHT?
Original work of authorship fixed in a tangible medium of expression
- literary, music, dramatic, pictorial, graphic, sculptural works
- protects expression
- covers nonfunctional features
- term: life + 70
- rights attach upon fixation
- infringement: substantial similarity
What is a Design Patent?
Design
- New, original, ornamental features of Article of Manufacture
- Term: 15 years from grant
- Rights granted based on examination
- Covers nonfunctional features
- infringement: ordinary observer test in view of the prior art
What is a TRADEMARK?
Source indicator
- Identify and distinguish source of goods/services of one from those of another
- Word, phrase, symbol, trade dress , device, sound, smell, color …
- Covers nonfunctional design attributes
- Indefinite
- Rights attach upon use
- Infringement: likelihood of confusion
EVOLUTION OF IP LAWS LED TO ONE DESIGN HAVING MANY DIFFERENT PROTECTIONS
Deciding which Protection to Choose
Why Double up the Protection
- Build a Defensible IP Portfolio
- Access to capital
- Venture
- Security for loans
- Licensing
- Protecting Market Niche
- Defending Against Infringement and other Misappropriation
Strategy: How to strategically layer IP protections to grow an IP portfolio
- Determine how the product or service is to be sold, marketed or used
- Assess the value of design
- Essential
- Variable
- Assess the various types of protection available
- Copyright -separability
- Trade Dress –Inherent v. Acquired Distinctiveness
- Design Patent –Ornamental but not functional
- Benefit v. Cost Analysis
EXAMPLES A
WHEN
TIMING
- Design Patents
- Pre-filing Public Disclosure or Sale
- 1 year Grace
- Trade Dress -Acquired Distinctiveness
- Packaging v. Product
- 15 U.S.C. 1052(f)
- Copyright
- Registration
- Enforcement
USE
EXAMPLES B
WHAT IP PROTECTIONS ARE AVAILABLE FOR THESE PRODUCTS?
Copyright, Design Patent and Trademark
- Product design element logo
-Must be distinctive and not merely ornamental
– Source Indicating
– Original work of authorship fixed in a tangible medium of expression
– Useful Article Doctrine
-New, Ornamental and Nonobvious design for an article of manufacture
- Functionality
EXAMPLES C
WHAT IP PROTECTIONS ARE AVAILABLE FOR THESE PRODUCTS?
Copyright/Design Patent/Trademark Example
Prints and patterns
– Must be distinctive and not merely ornamental
– Common prints and patterns (e.g., checkers, polka dots, hounds-tooth) harder to protect as a trademark
APPLICATION FOR TRADEMARKS ONLY
Considerations
- Is the trademark the name of the business?
- Will this business name be used on all of products or services?
- Is the trademark the name of key products or services?
- Number of products/services
- Where will products/services be sold or rendered?
- What are the key trademarks associated with the service
- Assess whether common law protection for secondary marks
Body + Soul
- International Cosmetics Company
- Foreign trade likely (manufacturing, selling, etc.)
- Foreign registrations (translations)
- Distinctiveness of the trademarks
- House Mark and also the business name –Body + Soul
- Product Name –Formula One Facial Scrub
- Packaging Design
- Costs
Planning
- Develop Strategic Plan
- Designs
- Functional features
- Value to Branding/Marketing
- Possible conflicts as to design and function