Intellectual Property (Trademark, Copyright, Patent)

Holdsworth Law • Serving All of NJ & PA

Intellectual Property Attorney serving New Jersey and Pennsylvania

At Holdsworth Law, we over full service, in regards to all intellectual property matters. Intellectual Property consists of Trademarks, Copyrights, Patents and other common law property rights. While none of our attorneys are Patent Attorneys we do work closely with Bold Patents as outside counsel.

Our attorneys are experienced and competent in all aspects of trademark, copyright law and common law property rights. They also have the proper understanding and legal skills necessary to advise clients of various industries, including:

  • Financial Services
  • Technology
  • Gaming and Sports, Entertainment
  • Hospitality
  • Professional Services
  • Restaurants, Beverages and Foods
  • Fashion, Luxury Goods and Retail
  • Education
  • Consumer Products
  • Medical Devices, Life Sciences, and Pharmaceuticals
  • Art and Music

Trademark and Copyright Attorney serving the United States and Internationally

Trademark and copyright are governed by federal law and international treaty. Therefore any domestic US attorney may prosecute Trademark and Copyrights applications before the appropriate federal agencies with some exception. Patent Law is also governed by federal law and international treaty; however, there are additional requirements in order to prosecute patents before the United States Patent and Trademark Office. This is why we teamed up with Bold IP as outside counsel so that all of your business/intellectual property needs can be performed under one roof. We strive to facilitate convenient communication, all of your trademark, copyright and patent matters can be done easily and quickly over the phone and through email.

What we can do

We provide a full range of copyrights and trademarks services to established businesses as well as entrepreneurs. Our services include:

  • Trademark Clearance Searches
  • Trademark Application Preparation
  • Trademark Monitoring
  • Trademark Portfolio Management
  • Trademark Change of Ownership
  • Office Action Responses
  • Trademark Renewal Filings
  • Trademark Opposition Proceedings
  • Trademark Cancellation Proceedings
  • Copyright Applications
  • Trademark Litigation
  • Draft License Agreements

Read further for a primer on Patent, Trademark and Copyrights and to answer some commonly asked questions.

What Are Trademarks, Servicemarks, Copyrights and Patents

Some people confuse patents, copyrights, and trademarks. Although there may be some similarities among these kinds of intellectual property protection, they are different and serve different purposes.

What Is a Trademark or Servicemark?

A trademark is a word, name, symbol, or device that is used in trade with goods to indicate the source of the goods and to distinguish them from the goods of others. A servicemark is the same as a trademark except that it identifies and distinguishes the source of a service rather than a product. The terms “trademark” and “mark” are commonly used to refer to both trademarks and servicemarks.

Trademark rights may be used to prevent others from using a confusingly similar mark, but not to prevent others from making the same goods or from selling the same goods or services under a clearly different mark. Trademarks that are used in interstate or foreign commerce may be registered with the United States Patent and Trademark Office (USPTO).

  • If you are a foreign domiciled applicant, you must have a U.S.-licensed attorney represent you at the USPTO.
  • If you are an applicant domiciled in the United States, you are not required to have a U.S.-licensed attorney represent you, but it is strongly recommended that you to hire one who specializes in trademark law to guide you through the application process.
  • Foreign attorneys and non-attorneys are not permitted to provide legal advice, help you fill out a form, sign documents for you, or otherwise take action on your application for you.
  • Hiring someone who cannot represent you at the USPTO could delay review of your application and jeopardize the validity of any resulting registration.

Your application must meet many legal requirements before your trademark can be registered

Trademark Law: Protecting Your Business & Choosing a Legally Strong Name You Can Market

I. Trademark Law

A Trademark is an identifier used by a merchant to denote where a particular good originates from.  A Service mark is an identifier used by a service provider to denote where a particular service originates from.  The distinction between trademark and servicemarks is not really legally relevant and the remainder of this essay will simply use the term Trademark. A federally registered Trademark on the Principal Register is a legal presumption that the registered owner owns the mark and was the first to use the mark in commerce. There is also the Supplemental Register, whether or not there is a purpose of filing on the Supplemental Register is arguable (that’s for a different essay). The fact that the Principal Register affords superior protection and rights compared to the Supplemental Register is not in question and this essay will be a discussion of registering Trademarks on the Principal Register.  Trademarks can consist of words, phrases, logos, slogans, packaging, décor, shape, colors, sound, fragrances, trade dress, and web-pages.   See 15 U.S.C. § 1127.  Trademarks are however subject to what is known as the Functionality Doctrine; whereby a product feature that is purely functional will not be awarded Trademark status. See Qualitex Co. v. Jacobsen Products Co., Inc., 514 U.S. 159 (1995). A product feature that is purely functional may be protected under Patent or Trade Secret laws.

The most crucial legal analysis in Trademark Law is that of Distinctiveness. A trademark’s purpose is to allow the consumer to know where a good or service originates from. Any Trademark that closely resembles another mark in commerce or is simply a “mere description” of the good or service provided may not be registered on the Principal Register.

II. Protecting Your Business

Simply, using a trademark that belongs to or closely resembles another business’s Trademark will result in significant legal liabilities. If sued, an injunction could be ordered by the court. This will result in your business being “shut down” until the matter is settled; which of course will take some time especially if the Trademark issue is to be litigated. Further, if you are found to have infringed another Trademark, you will be responsible for the other parties’ attorney fees; will have to pay the actual economic damage incurred by your use of the Trademark or the amount of profits earned while using the Trademark. Additionally, if it is found that you have willfully infringed another Trademark punitive damages may be awarded. Even if you do not wish to register a Trademark, it is imperative that have a proper search done by an attorney to ensure that your business and you are not open to numerous legal liabilities.

Remember a federally registered trademark is a presumption that the owner was the first to use the Trademark in commerce. If you were the first to use the mark and can prove so the Trademark belongs to you. However, if not registered and someone else uses it, they may be allowed to continue to use it in a limited geographic region. Further, if your Trademark is not registered, a competitor who has registered the same trademark will be presumed to be the “incontestable” rightful owner of the Trademark after five years; subject to certain statutory defenses. From the above it should be clear that not registering your trademark can potentially result in the loss of time and money spent on forming goodwill with a reliable consumer base that has come to rely on your trademark. By registering your trademark you will have the power of the US government behind you to protect against infringement. The date the Trademark application is registered will become effective notice nationally to all competitors and they will not be able to claim “Good Faith” in using your mark. Further, the USPTO will be protecting your Trademark for no additional cost by rejecting any Trademark that resembles yours or at a minimum reject any Trademark that resembles yours and is in the same stream of commerce as yours. With registration on the Federal Register you are now entitled to sue other competitors in Federal Court potentially allowing you to gain significant monetary restitution. Registration further grants you the right to use the ® symbol next to your trademark. It has been stated that up to a third of the value of giant multinational corporations worth is due to their easily recognizable trademarks.  Having the ® symbol next to your trademark will greatly increase the money you can receive if you ever wish to license or franchise your business. Upon recording the registration with US Customs and Border Protection, found products that infringe or counterfeit your goods will be blocked from entering the country. Lastly Federal registration will assist in filing foreign trademark applications.

III. Choosing a name you can Protect and Market

As stated above, the crucial analysis in Trademark Law is that of distinctiveness. A “mere description” of the good or service provided may not be registered.  A Federally registered trademark must distinguish the underlying good or service from other competitors. This creates somewhat of a dilemma in creating the right Trademark. As a business owner you want a legally strong trademark but you also want consumers to easily identify the goods or services you are selling. Enter the concept known as the Spectrum of Distinctiveness first articulated in Zatarain’s, Inc. v. Oak Grove Smoke House, Inc., 698 F.2d 786 (5th Cir. 1983) , “ Courts and commentators have traditionally divided potential trademarks into four categories. A potential trademark may be classified as (1) generic, (2) descriptive, (3) suggestive, or (4) arbitrary or fanciful. These categories, like the tones in a spectrum, tend to blur at the edges and merge together. The labels are more advisory than definitional, more like guidelines than pigeonholes. Not surprisingly, they are somewhat difficult to articulate and to apply. Soweco, Inc. v. Shell Oil Co., 617 F.2d 1178, 1183 (5th Cir.1980); Vision Center, 596 F.2d at 115.”

A) Generic/Descriptive

The distinction between Generic and Descriptive marks is one of degree; the shared characteristic is that they both lack distinctiveness. Simply, a generic mark is commonly used word, usually found in a dictionary that simply identifies a thing or a group; while a descriptive mark denotes an aspect of the group or thing. An example of a generic mark would be that of Best Foods. Generic terms can never attain trademark protection. A possible way around this would be to Trademark a logo and simply place the logo next to the desired generic term in marketing. Examples of this are ample in grocery stores aisles.  Misspelling words or using a foreign language is not a valid way to get around the use of Generic terms.

A descriptive trademark may not be registered on the Principal Federal Register unless it has acquired secondary meaning in the minds of the consumer. Secondary meaning comes about from extensive marketing or other exposure whereby the consumer may identify where the goods or services originate from. Descriptive terms may be placed on the federal supplemental register and may attain principal trademark protection after (5) five years. Even still competitors may be allowed to use the descriptive term in their marketing and if the mark is found in litigation a court may still invalidate the mark. Surnames are analyzed using the same analysis as descriptive terms and will not be afforded trademark protection unless secondary meaning can be shown. It is best to avoid generic and descriptive marks all together if one seeks the highest level of trademark protection.

B) Suggestive

Suggestive marks are the favorite of advertisers and are considered trademarkable in their own right. Of course the difference between a descriptive mark and a distinctive mark is one of degree. “A suggestive term suggests, rather than describes, some particular characteristic of the goods or services to which it applies and requires the consumer to exercise the imagination in order to draw a conclusion as to the nature of the goods and services. Soweco, 617 F.2d at 1184; Vision Center, 596 F.2d at 115-16. A suggestive mark is protected without the necessity for proof of secondary meaning. The term “Coppertone” has been held suggestive in regard to sun tanning products. See Douglas Laboratories, Inc. v. Copper Tan, Inc., 210 F.2d 453 (2d Cir.1954).” Other examples of suggestive marks include Sunkist, Chicken of the Sea, and 7-Eleven.

C) Arbitrary or Fanciful

Arbitrary or fanciful terms bear no relationship to the products or services to which they are applied and are considered the most legally strong trademarks. The marks with the strongest protection are known as coined trademarks. They are made up words such Kodak, Exxon, Tylenol, and Reebok. These marks are distinct in themselves, and cannot be used in any commercial context by another party; whereas other types of marks can be used by another party as long as consumers are not confused to the source of the goods or services (stream of commerce). Arbitrary marks consist of words that have no relation to the goods or service and thus are considered distinctive. Such trademarks consist of Apple Computers, Domino Sugar, Penguin Books, Camel Cigarettes, and Diesel for a name of a book store chain. Of course Arbitrary or Fanciful names are the most challenging to initially market as they do not specifically mention or allude to the good or serve being marketed. However, as in the case of simply adding a logo next to a generic term, one could simply Trademark an Arbitrary or Fanciful term and list the product sold underneath it.

What is a Copyright?

Copyright is a form of protection provided to the authors of “original works of authorship” including literary, dramatic, musical, artistic, and certain other intellectual works, both published and unpublished. The 1976 Copyright Act generally gives the owner of copyright the exclusive right to reproduce the copyrighted work, to prepare derivative works, to distribute copies or phonorecords of the copyrighted work, to perform the copyrighted work publicly, or to display the copyrighted work publicly.

The copyright protects the form of expression rather than the subject matter of the writing. For example, a description of a machine could be copyrighted, but this would only prevent others from copying the description; it would not prevent others from writing a description of their own or from making and using the machine. Copyrights are registered by the Copyright Office of the Library of Congress.

When is the work protected?

Your work is under copyright protection the moment it is created and fixed in a tangible form that it is perceptible either directly or with the aid of a machine or device.

Do I have to register to be protected?

No. In general, registration is voluntary. Copyright exists from the moment the work is created. You will have to register, however, if you wish to bring a lawsuit for infringement of a U.S. work.

Why should I register my work if copyright protection is automatic?

Registration is recommended for a number of reasons. Many choose to register their works because they wish to have the facts of their copyright on the public record and have a certificate of registration. Registered works may be eligible for statutory damages and attorney’s fees in successful litigation. Finally, if registration occurs within five years of publication, it is considered prima facie evidence in a court of law.

Is the copyright good in other countries?

The United States has copyright relations with most countries throughout the world, and as a result of these agreements, we honor each other’s citizens’ copyrights. However, the United States does not have such copyright relationships with every country.

What is a Patent?

A patent for an invention is the grant of a property right to the inventor, issued by the United States Patent and Trademark Office. Generally, the term of a new patent is 20 years from the date on which the application for the patent was filed in the United States or, in special cases, from the date an earlier related application was filed, subject to the payment of maintenance fees. U.S. patent grants are effective only within the United States, U.S. territories, and U.S. possessions. Under certain circumstances, patent term extensions or adjustments may be available.

The right conferred by the patent grant is, in the language of the statute and of the grant itself, “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:

  1. Utility patents may be granted to anyone who invents or discovers any new and useful process, machine, article of manufacture, or composition of matter, or any new and useful improvement thereof;
  2. Design patents may be granted to anyone who invents a new, original, and ornamental design for an article of manufacture; and
  3. Plant patents may be granted to anyone who invents or discovers and asexually reproduces any distinct and new variety of plant.

Patent Laws

The Constitution of the United States gives Congress the power to enact laws relating to patents, in Article I, section 8, which reads “Congress shall have power . . . to promote the progress of science and useful arts, by securing for limited times to authors and inventors the exclusive right to their respective writings and discoveries.” Under this power Congress has from time to time enacted various laws relating to patents. The first patent law was enacted in 1790. The patent laws underwent a general revision which was enacted July 19, 1952, and which came into effect January 1, 1953. It is codified in Title 35, United States Code. Additionally, on November 29, 1999, Congress enacted the American Inventors Protection Act of 1999 (AIPA), which further revised the patent laws. See Public Law 106-113, 113 Stat. 1501 (1999).
The patent law specifies the subject matter for which a patent may be obtained and the conditions for patentability. The law establishes the United States Patent and Trademark Office to administer the law relating to the granting of patents and contains various other provisions relating to patents.

What Can Be Patented

The patent law specifies the general field of subject matter that can be patented and the conditions under which a patent may be obtained.

In the language of the statute, any person who “invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent,” subject to the conditions and requirements of the law. The word “process” is defined by law as a process, act, or method, and primarily includes industrial or technical processes. The term “machine” used in the statute needs no explanation. The term “manufacture” refers to articles that are made, and includes all manufactured articles. The term “composition of matter” relates to chemical compositions and may include mixtures of ingredients as well as new chemical compounds. These classes of subject matter taken together include practically everything that is made by man and the processes for making the products.

The Atomic Energy Act of 1954 excludes the patenting of inventions useful solely in the utilization of special nuclear material or atomic energy in an atomic weapon. See 42 U.S.C. 2181(a).

The patent law specifies that the subject matter must be “useful.” The term “useful” in this connection refers to the condition that the subject matter has a useful purpose and also includes operativeness, that is, a machine which will not operate to perform the intended purpose would not be called useful, and therefore would not be granted a patent.

Interpretations of the statute by the courts have defined the limits of the field of subject matter that can be patented, thus it has been held that the laws of nature, physical phenomena, and abstract ideas are not patentable subject matter.

A patent cannot be obtained upon a mere idea or suggestion. The patent is granted upon the new machine, manufacture, etc., as has been said, and not upon the idea or suggestion of the new machine. A complete description of the actual machine or other subject matter for which a patent is sought is required.

Novelty And Non-Obviousness, Conditions For Obtaining A Patent

In order for an invention to be patentable it must be new as defined in the patent law, which provides that an invention cannot be patented if:

“(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention” or

“(2) the claimed invention was described in a patent issued [by the U.S.] or in an application for patent published or deemed published [by the U.S.], in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.”

There are certain limited patent law exceptions to patent prohibitions (1) and (2) above. Notably, an exception may apply to a “disclosure made 1 year or less before the effective filing date of the claimed invention,” but only if “the disclosure was made by the inventor or joint inventor or by another who obtained the subject matter disclosed… from the inventor or a joint inventor.”

In patent prohibition (1), the term “otherwise available to the public” refers to other types of disclosures of the claimed invention such as, for example, an oral presentation at a scientific meeting, a demonstration at a trade show, a lecture or speech, a statement made on a radio talk show, a YouTube™ video, or a website or other on-line material.

Effective filing date of the claimed invention: This term appears in patent prohibitions (1) and (2). For a U.S. nonprovisional patent application that is the first application containing the claimed subject matter, the term “effective filing date of the claimed invention” means the actual filing date of the U.S. nonprovisional patent application. For a U.S. nonprovisional application that claims the benefit of a corresponding prior-filed U.S. provisional application, “effective filing date of the claimed invention” can be the filing date of the prior-filed provisional application provided the provisional application sufficiently describes the claimed invention. Similarly, for a U.S. nonprovisional application that is a continuation or division of a prior-filed U.S. nonprovisional application, “effective filing date of the claimed invention” can be the filing date of the prior filed nonprovisional application that sufficiently describes the claimed invention. Finally, “effective filing date of the claimed invention” may be the filing date of a prior-filed foreign patent application to which foreign priority is claimed provided the foreign patent application sufficiently describes the claimed invention.

Even if the subject matter sought to be patented is not exactly shown by the prior art, and involves one or more differences over the most nearly similar thing already known, a patent may still be refused if the differences would be obvious. The subject matter sought to be patented must be sufficiently different from what has been used or described before that it may be said to be non-obvious to a person having ordinary skill in the area of technology related to the invention. For example, the substitution of one color for another, or changes in size, are ordinarily not patentable.

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