Patents
Patents are legal protections granted for new inventions, giving the inventor exclusive rights to use, sell, and license their creation for a limited time. There are several types of patents including utility, design and plant patents.
Utility and design patents typically last for 15 to 20 years, depending on the type and jurisdiction. Once a patent expires, the invention falls into the public domain.
Trademarks
Trademarks protect the name, brand, logo, slogan and even color or smell of a business. They help consumers identify and choose products or services based on their reputation and brand. They can last indefinitely, provided they are used in commerce and properly maintained.
Copyrights
Copyrights protect any creative work that is in a tangible form. For example, once you have put an idea down, whether it is in written form or there is art you have created, that can be copyrighted. Businesses can also have copyrights. This form of protection extends to the expression of ideas, not the ideas themselves, and lasts for the life of the creator/author plus 70 years.
Trade Dress
Trade dress is a form of trademark protection and can be registered with the USPTO. It is a design, or a pattern, including the packaging. For example, Coach’s pattern on their bag or Apple’s layout of their store is a trade dress.
Trade Secrets
Trade secrets are exactly that, secrets. When we register IP protections such as trademarks, copyrights, or patents, we publicly disclose the details of what we want to protect. In contrast, trade secrets are meant to remain confidential. There is no formal application process for trade secrets, as the goal is to keep that information secret. When you develop a new invention or a recipe, you often face the choice between obtaining a patent, which requires revealing specific details, or maintaining it as a trade secret. A classic example is the Coca-Cola recipe, which has always been kept as a trade secret. The company intentionally chose not to patent it to prevent anyone from discovering its ingredients.
It is advantageous to keep your formula secret versus seeking a patent, in order to avoid generics from emerging after a patent expires, typically 15 to 20 years later. For iconic brands like KFC, or McDonald’s Big Mac sauce, they prefer to keep their formulas secret to avoid copycats. Unlike patents, which eventually expire and allow others to use the information, trade secrets remain confidential indefinitely, provided they are effectively protected.
Disney has recently lost some of the protections it enjoyed for nearly a century, which is quite significant. This loss was due to copyright laws, which provide protection for the life of the author plus 70 years. While this period is quite lengthy, it does eventually come to an end, and that’s what has happened to Disney.
Comparing Patents, Trademarks and Copyright
Trademarks relate to business and are used to identify and protect your brand—such as logos, slogans, and names. Copyright, on the other hand, applies to creative works and does not need to be tied to a business. It protects original creations like artwork, music, or written content. Patents protect inventions and can sometimes overlap with business elements. For example, a logo might be protected by both trademark and copyright if it contains a significant degree of creativity beyond just a simple letter or word.
For a business, it’s crucial to strategically protect all intellectual property as valuable assets. This means ensuring your attorney reviews your entire intellectual property portfolio. They should safeguard not just the invention, but also associated elements like names, packaging, colors, and logos.
Moreover, it’s important to copyright to protect other business assets such as podcasts, presentations, workbooks, or educational materials. Protecting your intellectual property is not only about preventing infringement but also about adding value to your business. When seeking venture capital or considering franchising, investors will want assurance that your IP is thoroughly protected. This ensures that both your business assets are secure and you are not infringing on others’ rights.
Complexity in Intellectual Property Law
Both trademark laws and patent laws can be complex in our current climate. An invention patent covers the more technical specifications. Whereas trademarks, on the other hand, are for a business and anything that identifies that business whether it is your logo, your name, or your brand. For example, we all know and recognize the Nike swoosh mark, and we all recognize a blue box with the white ribbon is from Tiffany’s. A trademark is something that identifies your business and protects your reputation.
Trademarks can be more subjective when the examiner is reviewing them as far as whether your mark is confusingly similar to another. It is not a black and white standard, where you can attach a percentage to it.
A patent, on the other hand, is a little more cut and dry. Either your invention already exists, or it doesn’t. It’s more of a technical standard.
Design vs. Utility Patents
A design patent is the look and the design of your invention. A utility patent is the process, the system and the machinery. They are both registered for 15 years. However, once you patent something, it’s out there in the public, unlike a trade secret, which you’re keeping to yourself.
Copyright Protection
Copyright protection is one of the most important protections for any business. This could be anything from podcasts, presentations, blogs, art that includes your logo, any art on packaging of your product, a website, and mobile application icons. These are really the things that get to the heart of what a business is and that help identify it.
Trade Dress in Commerce
Trade dress is the look, the feel, the packaging and the design of a property. A few examples include the classic shape of an IHOP building and the outline of a Coca-Cola bottle. Additionally, things like the classic Coach design and the layout of an Apple store would also be considered trade dress.
Trade dress is really just another type of trademark. It includes the shape, color and design and is registered with the USPTO and it goes through the same process as a trademark does.
Disputes and Cross-Jurisdictional Issues
When disputes arise between companies with similar trademarks, sometimes it’s really a race to the courthouse to register. Really it comes down to who has been using it first and who registered it first. Then if the opposing party wants to say they have used it, they either have to file an opposition with the U.S. Patent and Trademark Office through what they call the TTAB, or the Trademark Trial Appeal Board. They can also do a notice of cancellation and go through that process. A case may not start directly in litigation but rather using a cease and desist.
For international issues, companies must navigate various trademark offices, such as the USPTO and WIPO. It’s essential to manage trademark rights in each relevant jurisdiction.
Choosing Between Patent and Trade Secret
Deciding whether to patent an invention or keep it a trade secret depends on the desired level of disclosure and the duration of protection. Patents provide limited-term protection with public disclosure, while trade secrets offer indefinite protection as long as secrecy is maintained.
Importance of Intent to Use
Trademark protection cannot be obtained without the intent to commercially use the name, logo, logan, etc. The process involves a series of steps: you must file the application, submit specimens, and demonstrate that you’re actively using the mark. Ongoing proof of use is also necessary. Additionally, you are required to renew your registration and maintain your trademark. As long as you renew it on time, protection can last indefinitely.
It’s also essential to recognize that protection is confined to specific business categories. For instance, you cannot claim ownership of a name for all types of goods unless you are using it broadly across those categories. You must apply for protection within a specific class. However, this can extend to what is known as a zone of natural expansion. For example, a clothing store might reasonably expect to diversify into jewelry in the future. If a jewelry store later wishes to use the same name as the clothing store, it could create conflicts, even if the trademark is solely registered for clothing. There are certainly gray areas to navigate. Remember, owning a name in one sector does not prevent others from using it in entirely different contexts.
Expanding Your Brand
When a company wants to add additional products under their brand, they can file a separate application for that specific class, even if it’s not within their natural zone of expansion. While it might be unexpected for a clothing company to venture into the restaurant business, they can certainly do so if the name is available in that category.
Take Monster, for instance. They have a clothing line as well as energy drinks and are now introducing an alcoholic beverage. They’re clearly expanding beyond their original category. Moreover, they’ve expanded into toys and other related products. Similarly, consider a car brand like Ferrari. They operate a restaurant and have a clothing line, showcasing their own diverse range of expansions. The opportunities for expansion can continue to grow.
One major thing for a brand is to avoid a generic name. For example, names like Sally’s Nail Salon or Bob’s Best Barbecue are straightforward and overly descriptive. These are some of the worst types of trademarks. It’s better to choose something distinctive that requires a bit of thought to understand what the business offers. For example, our name, SecureMark Legal, combines two terms—Secure and Mark—indicating that we’re focused on securing branding and trademarks. While our name suggests that we handle trademarks, it’s not immediately obvious to everyone.
Conclusion
It’s crucial to understand the distinctions between different types of intellectual property protections. As we discussed broadly, each type—trademarks, patents, and copyrights—protects different aspects of your business. It’s never too early to consult with a trademark, patent, or IP attorney to determine what can and should be protected. Not only should you ensure that others do not infringe on your IP, but you must also avoid unintentionally infringing on others’ rights, as this can be costly. Securing your intellectual property is a fundamental step in building and maintaining your business.
Recognizing the value of IP protections is essential. Don’t take for granted that your copyrighted works or other IP elements are secure from theft or misuse. These assets are central to your business and are critical to protect. Ensuring that your intellectual property is safeguarded is crucial to prevent others from replicating or stealing your unique creations.
