To protect your invention, you may need a patent, trademark, copyright, trade secrets, trade dress, or some combination of these.
A trademark is a word, phrase, symbol, and/or design that identifies and distinguishes the source of the goods of one party from those of others. A service mark is a word, phrase, symbol, and/or design that identifies and distinguishes the source of a service rather than goods. Some examples may include brand names, slogans, and logos. The term “trademark” is often used in a general sense to refer to both trademarks and service marks.
A trademark is considered “distinctive and capable of being protected” if it “either
(1) is inherently distinctive or
(2) has acquired distinctiveness through secondary meaning.” However, a claim for trademark infringement requires “proof of the likelihood of confusion.”
A mark, such as “road” or “restaurant”, for example, is too descriptive and may not be able to get a trademark. The mark, such as “Google”, or “Nike” is better than descriptive mark, such as “search engine” or “running shoes.”
A patent for an invention is the grant of a property rights to the inventor, issued by the United States Patent and Trademark Office (USPTO).
The rights conferred by the patent grant is, “the right to exclude others from making, using, offering for sale, or selling” the invention in the United States or “importing” the invention into the United States.
What is granted is not the right to make, use, offer for sale, sell or import, but the right to exclude others from making, using, offering for sale, selling or importing the invention. Once a patent is issued, the patentee must enforce the patent without aid of the USPTO.
There are three types of patents – Utility, Design, and Plant.
Utility patents may be granted to anyone who invents or discovers any new and useful process, machine, article of manufacture, or compositions of matters, or any new useful improvement thereof. By far, most patent applications filed at the USPTO are utility patent applications.
Design patents may be granted to anyone who invents a new, original, and ornamental design for an article of manufacture.
In general terms, a “utility patent” protects the way an article is used and works (35 U.S.C. 101), while a “design patent” protects the way an article looks (35 U.S.C. 171). Both design and utility patents may be obtained on an article if invention resides both in its utility and ornamental appearance. While utility and design patents afford legally separate protection, the utility and ornamentality of an article are not easily separable. Articles of manufacture may possess both functional and ornamental characteristics.
As a result, U.S. design patents resulting from applications filed on or after May 13, 2015 have a 15 year term from the date of grant.
Plant patents may be granted to anyone who invents or discovers and asexually reproduces any distinct and new variety of plant. A plant patent is granted by the United States government to an inventor (or the inventor’s heirs or assigns) who has invented or discovered and asexually reproduced a distinct and new variety of plant, other than a tuber propagated plant or a plant found in an uncultivated state.
The grant, which lasts for 20 years from the date of filing the application, protects the patent owner’s right to exclude others from asexually reproducing the plant, and from using, offering for sale, or selling the plant so reproduced, or any of its parts, throughout the United States, or from importing the plant so reproduced, or any part thereof, into the United States.
Copyright, a form of intellectual property law, protects original works of authorship including literary, dramatic, musical, and artistic works, such as poetry, novels, movies, songs, computer software, and architecture.
Copyright is a form of protection grounded in the U.S. Constitution and granted by law for original works of authorship fixed in a tangible medium of expression. Copyright covers both published and unpublished works.
Copyright does not protect facts, ideas, systems, or methods of operation, although it may protect the way these things are expressed.
Copyright is different from patent and trademark. Copyright protects original works of authorship, while a patent protects inventions or discoveries. Ideas and discoveries are not protected by the copyright law, although the way in which they are expressed may be. A trademark protects words, phrases, symbols, or designs identifying the source of the goods or services of one party and distinguishing them from those of others.
Trade dress is a legal term of art and is indeed a fairly exotic legal doctrine under Trademark law. The “Trade Dress” of a given thing is not so easily defined but rather consists of the amalgamation of a series of elements that are used to develop the “overall commercial image” and appearance of a given product/package/label/design.
The trade dress includes the design of a product (i.e., the product shape or configuration), the packaging in which a product is sold (i.e., the “dressing” of a product), the color of a product or of the packaging in which a product is sold, and the flavor of a product.
A mark that consists of product design trade dress is never inherently distinctive and is not registrable on the Principal Register unless the applicant establishes that the mark has acquired distinctiveness under §2(f). Therefore, as a matter of law, product design cannot be considered inherently distinctive and cannot be registered without a showing of secondary meaning. The Supreme Court noted that product design almost invariably serves purposes other than source identification, and that “[c]onsumers are aware . . . that, almost invariably, even the most unusual of product designs — such as a cocktail shaker shaped like a penguin — is intended not to identify the source, but to render the product itself more useful or appealing.”
Understanding the different types of intellectual property and the four categories of intellectual property protections can be confusing, and registering for those protections can be overwhelming. Indeed, businesses often have more to worry about that the particulars of a patent, trademark or other intellectual property protection requirement.
When you call our intellectual property attorneys at our Chicago office, we will handle all of the elements associated with your intellectual property protection, ranging from identifying the type of intellectual property protection you need to be managing all documentation and paperwork to secure that protection.
If you have questions about patents and trademarks I am happy to provide a free 1/2 hour call. Please choose a time on my calendar