Frequently Asked Questions

Intellectual Property

  1. I am being sued or have received a cease and desist letter. What do I do?  It is important to discuss matters with experienced IP counsel. An experienced IP attorney can find out exactly what IP rights the other side truly holds and can come with up with strategies for your specific situation. In addition, you will want to speak with your insurance carrier to see the range of coverage, which will affect the strategies you will likely pursue. 

Trademarks

  1. What is trade dress?  Trade dress is the packaging or outer appearance of a product that identifies the source of a product in the eyes of the consumer. Famous examples of trade dress are the Tiffany jewelry box or the Coca-Cola glass bottle.  Trade dress protection is difficult to obtain. It usually requires years of sales, advertising and promotions before the public associates that particular trade dress with the source. Since fashion trends often have short life cycles and competitors often copy each other in the short term, trade dress is hard to establish. If you have a trade dress, you may wish to register it with the PTO, but you will need to prove that customers associate your trade dress with the source of the product and that the trade dress is non-functional.
  2. Someone is selling fake versions of my product. They claim they are within their rights because they have made minor changes to the brand name and look of the product. Do I have a case?  In this scenario, you may raise one or more claims including a claim of trademark infringement. A basis of trademark law is that a mark is used to identify the source of the goods and if someone is using a trademark similar to yours, such that a consumer would be confused as to the source of the goods, you have a cause of action. This can apply to a brand name or a logo or design. For instance, someone selling "Rollex" watches will most likely be considered by the courts to be infringing.  If your trademark is deemed to be "famous" you may have a case for dilution of your trademark regardless of whether there is any likelihood for confusion.
  3. Will my U.S. trademark registration protect me in other countries?  No. Trademark protection is region specific. For each country you wish to enforce your trademark, you will need to apply for a trademark under their laws.
  4. Is it illegal for others to import items into the U.S. with my trademark without my consent?  Yes, it is illegal. Customs will protect trademarks registered in the United States. To obtain protection, a trademark owner must register their trademark with the Customs and Border Protection. Customs may also protect against importation of validly trademarked goods if they were not meant for sale in the United States.  The exception to this is that it is legal for individual users to bring products with your trademark into the United States for their own personal use.

Copyright

  1. Why should I register my copyright?  There are three (3) key reasons why you should get a copyright registration: to establish a public record; to be able to file an infringement lawsuit in federal court; and
  2. Is my copyright good in other countries?  The United States has copyright relations with most countries throughout the world, and as a result of these agreements, each country honors each other's citizens' copyrights. However, the United States does not have such copyright relationships with every country.  For a listing of countries and the nature of their copyright relations with the United States please either contact us or view the U.S. Copyright Office for Circular 38a, International Copyright Relations of the United States.
  3. Who owns the copyright to something I made at work, my company or me?  Although the general rule is that the person who creates the work is its author, there is an exception to that principle; the exception is a “work made for hire”.  Work made for hire is a work prepared by an employee within the scope of his or her employment; or a work specially ordered or commissioned (as opposed to being paid for an already existing piece of work) from an independent contractor. When a work qualifies as a work made for hire, the employer, or commissioning party, is considered to be the author.
  4. If I live outside the United States, can I register my works with the U.S. Copyright Office?  Any work that is protected by U.S. copyright law can be registered. This includes many works of foreign origin. All works that are unpublished, regardless of the nationality of the author, are protected in the United States. Works that are first published in the United States or in a country with which we have a copyright treaty (see Circular 38a for the status of specific countries), or that are created by a citizen or legal resident of a country with which we have a copyright treaty, are also protected and may therefore be registered with the U.S. Copyright Office. 

Patents

  1. What is a patent?  Simply put, a patent is a right to exclude others from doing what you invented.  There are, however, a number different types of patents.  There are U.S. patents, and there are foreign patents.  U.S. patents are rights granted by the U.S. government and exclude only actions within the United States.  Likewise, patents issued by a foreign government may be enforced only in that foreign country.  Also, in the United States, there are utility patents, and there are design patents.  When most people think of a patent, typical it is a utility patent that first comes to mind.  Utility patents protect the idea or function of an invention.  In contrast, design patents protect the overall appearance of an invention. Properly written, a utility patent application attempts to describe and claim for the inventor his or her invention as broadly as possible.  Similarly, properly written, a design patent attempts to claim the invented design as broadly as possible. What is the difference between a utility patent and a design patent?  A utility patent covers the functional aspects of an invention. A utility patent expires 20 years from the filing date. In 2006, it took approximately 30 months from filing until an examiner came to a decision. The length of time varies depending on the field and complexity of the patent. Examples of things that can be covered by a utility patent are a newly created fabric or a new clasp for a purse.  A design patent covers the ornamental aspects of an invention. They generally issue 8-20 months after filing and are protected for 14 years from the filing date. Design patents often cover long-term fashion items such as shoes, jewelry, and accessories.
  2. I have a patent on something, and I know somebody else is selling it – what now?  If you find that your patent is being infringed upon, we recommend that you contact a reputable intellectual property attorney immediately. The attorney will typically send out a cease and desist letter asking the infringer to stop selling the product or face legal consequences. He may also need to compare your patent to the infringing device to determine if it does in fact infringe.
  3. What if the infringer is in a foreign country – what laws apply?  Even if the infringer is in a foreign country, the laws of the United States apply if the item is being sold in the United States, such as if it is sold to U.S. customers over the Internet. U.S. sales create "minimum contacts" which allow the United States to exercise jurisdiction over the foreign infringer. If the item which infringes is only being sold in the foreign country, then the laws of that country would apply. A U.S. patent will only protect your rights in the United States. Alternatively, to protect your foreign rights, you could file a Patent Cooperation Treaty ("PCT") application, followed by a "national phase" in designated foreign countries.
  4. My company is expanding and selling our product internationally. Does my U.S. patent protect our rights abroad?  No. You have one year from the time you filed the U.S. utility application to file a PCT application which would generally cover the foreign countries that are members of the World Intellectual Property Organization ("WIPO"). You then have between 20-30 months, depending on the country, to decide if you want to further protect your rights in certain countries by filing individual applications in those countries.  This timeline may be shorter for applications devoted to ornamental features.
  5. My employee invented a new product at work. Does it belong to him or me?  This question goes to the employment relationship. If the nature of your business involves research, development and invention, it is a good idea to have all employees sign agreements stating that anything invented while they are working for you is your property. However, in the absence of such an agreement, the courts look at the type of employment the employee has. For example, if the employee is a garment designer, someone who was hired to invent new athletic wear or who would invent in the course of her work, the patent most likely belongs to the company. If the employee is an independent contractor (someone who provides her own materials for work and does not receive benefits from the company), in the absence of another agreement with respect to patents, she would likely own her invention. Other considerations the court would look at would be if the employee created the invention while on the clock and being paid for the time, or if she used materials or equipment from the job to create the invention. If you believe you may have an issue like this in the future, it is best to consult an attorney to have an agreement drafted that makes it clear that inventions devised at work are the company's property.
  6. Should I first get a patent search?  Yes.  This is almost always advisable before preparing a utility patent.  How broadly you can claim your invention largely depends how much room there is in the field of the invention in light of all of the prior art that proceeded your invention.  I therefore advise my clients to first have me commission a patent availability search.  Additionally, a patent availability search will give you a wealth of information of how others have attempted to solve the problem that you solved with your invention.  It will also allow me to form a preliminary opinion as to whether you might encounter any allegation of patent infringement if you were to market or sell your new product or system.
  7. Should I first get a patent clearance search?  You should almost always obtain a patent clearance search before placing a product (or process or method) on the market.  A patent clearance search will attempt to identify any active patents whose patent claims might prohibit your product, process, or method.  Indeed, clearing your product before a market launch is arguably more important to pursuing your own patent rights. A patent clearance search and report form an important part of your due diligence.  If, God forbid, you are accused of infringement in the future, being able to point to a clearance search and opinion of counsel would be priceless – and any evidence that you did not seek such an opinion could in fact be used against you to suggest that actions were willful.

Trade Secrets

  1. What is the difference between trade secret protection and patent protection?  Both trade secrets and patents are forms of IP that can be used to protect innovation.  Although the overall subject matter that can be protected by trade secrets is broader than that which can be protected by patents. Trade secret protection is available for both technical information and information that does not relate to technical innovations. Non-technical information for which trade secret protection can exist includes: business and marketing plans and customer lists. Patent protection is generally available for technical innovations, including a new and useful process, machine, manufacture or composition of matter. Software and software-implemented business methods have the potential of being protected by both patents and trade secrets.  Another significant difference is that patent protection requires the protected information become available to the public (through the publication of the patent application and/or patent), However, because patents and patent applications are made public, a third party is barred from duplicating and using the invention until the term of the patent is expired.   Additionally, unlike trade secrets, patents can be enforced against someone who independently develops or "reverse engineers" an invention.  A trade secret has its own advantages. One significant advantage is that the term of protection for a trade secret has the potential to last forever - as long as the invention is kept a secret - whereas patents are only protected for a limited number of years (20 years from filing). Also, trade secrets can be less expensive to protect and to enforce.  In sum, the choice between patent protection and trade secret protection requires careful consideration of several factors. In particular, it is important to consider the nature of the subject matter being protected. Questions relevant to this decision include: Can it be independently developed? Can it be reverse engineered? Can it be maintained as a secret?  How long will the subject matter have market value? Does the market value support investment in patent protection/enforcement?
  2. How do I protect my trade secrets?  No special registration of government filing is necessary to create trade secrets.  The critical requirement for trade secret protection lies in maintaining the secret.  Under the Uniform Trade Secret Act (UTSA), information must meet the following three basic criteria to qualify as a trade secret:  1.) the information must not be generally known or readily ascertainable through proper means; 2.) the information must have “independent economical value due to its secrecy”; and 3.) the trade secret holder must use “reasonable measures under the circumstances” to protect the secrecy of the information.  “Reasonable measures” may include:  Have employees, contractors and third parties sign non-disclosure, confidentiality and/or non-compete agreements.  Stamp secret documents “confidential” or “trade secret”.  Enforce physical security. Put up "No Trespassing" signs and put locks on doors and file cabinets.  Use employee and visitor identification badges to control access to your business.  Establish rules requiring people to sign sensitive documents in and out.  Set up passwords. Use them to access computers, copiers, fax machines and other machines that could be used to copy or transmit secrets.  When employees leave, take measures to ensure that secrets don't leave with them.  Collect sensitive materials from the offices of terminated employees before allowing them to return to their desks. And before they go, remind them of the nondisclosure documents they signed and the stiff financial penalties if they are breached.  As you may find it necessary to take additional steps in specific areas, or with respect to specific kinds of information to limit access to a “need to know” basis, you may wish to consult a lawyer in your area for guidance into the types of measures and agreements outlined above.