Intellectual Property (IP)

What is a trademark?

A trademark is a unique word, phrase, symbol, or design that’s affiliated with a particular brand. Trademarks are the reason that every fast food chain in the country isn’t called McDonald’s, or that every athletic clothing brand doesn’t tell you to “Just Do It.”

Do trademarks need to be registered?

While a trademark can be registered—and registering a trademark increases your legal standing—it does not have to be. Using an original logo or name in a particular geographical area may provide some trademark protection on its own. This is called common law ownership.

Common law ownership can be further established by placing ™ (for goods) or ℠ (for services) after the name or logo. But, this doesn’t guarantee nationwide trademark rights. Federal protection only comes after federal trademark registration, and can be indicated by using Ⓡ.

How do I register a trademark?

Before submitting your Trademark Application to the U.S. Patent and Trademark Office (USPTO), use the Trademark Electronic Search System to make sure a similar trademark doesn’t already exist. If the phrase or symbol is available, you can submit your application to the USPTO. Keep in mind that only phrases or symbols currently (or soon-to-be) used for business purposes can be trademarked. And, the name must be unique and distinct—so no trademarking your name, John Smith, or your locally famous Chocolate Chip Cookies.

Trademarks can also be registered at the state level. To do so, you’ll need to submit an application in the state where you seek registration.

How long does a trademark last?

Theoretically, a trademark can last forever as long as you maintain the proper paperwork trail.

To maintain your trademark, a Declaration of Use and/or Excusable Nonuse under section 8 must be filed after five years of registration. Between the ninth and tenth years after registration, you must file the Declaration and an Application for Renewal under sections 8 and 9. (The USPTO combines these forms for this submission.) Every 10 years after that, another renewal is due.

There is no limit on the number of possible federal trademark renewals.

Are trademark rights really enforced?

Yes. That said, how rigorously those rights are defended depends on the organization. While some organizations may have a more laid back enforcement approach, others will go to great lengths to protect their brand image and associations.

The United States Olympic Committee is well known for its unyielding enforcement of its trademarks—there are many—including the word “Olympic.” In 2014, Portland, Oregon meat and restaurant brand, then known as Olympic Provisions, received a cease-and-desist letter from the USOC. The brand had grown from a regional operation to a national one. As such, the USOC’s wide-reaching trademark rights had been infringed upon. The company was forced to rebrand on their own dime, changing just one letter, and is now called Olympia Provisions.

What is a copyright?

A copyright applies to original creative work such as music, movies, visual art, choreography, literary works, and software. In order to receive copyright protection, the work must be in a fixed, tangible form (ideas and concepts don’t apply), though it does not necessarily have to be distributed or published.

Is copyright registration necessary?

Creative work does not necessarily have to be registered with the U.S. Copyright Office in order to receive copyright protection. But, registration must be obtained before a copyright infringement lawsuit can be filed. So, if someone swipes your unpublished and unregistered novel off your laptop and publishes it under their name, your legal battle is going to be a tough one even though the copyright to the original work is technically yours.

How do I register a copyright?

To register your work for a copyright, you need to submit an application to the U.S. Copyright Office. You can register up to 10 unpublished works in the same application.

How long does a copyright last?

Copyright lifetimes vary. For work created after 1978, copyrights last the life of the author, plus 70 years. Anonymous work receives copyright protection for 95 years after publication, or 120 years after creation, whichever comes first. Work published prior to 1978 receives copyright protection for 95 years.

What happens when a copyright expires?

Every January 1, creative works with expired copyrights enter the public domain, meaning they can be reprinted, used, and adapted without permission or payment.

In January 2021, literary classics like F. Scott Fitzgerald’s The Great Gatsby and Virginia Woolf’s Mrs. Dalloway—both published in 1925—entered the public domain. This means they can now be reprinted, re-envisioned, and recreated in ways that would previously have been impossible or come with a hefty fee. (Maybe you’ve heard that a Gatsby-meets-zombie movie is now in the works?)

What is a patent?

A patent grants inventors property rights and protection over their invention. For the duration of the patent, only the patent owner can grant permission to others to make, use, or sell the invention.

Patents were granted for many once-upon-a-time inventions that today are commonplace, including iPhones, light bulbs, GPS, solar panels, and internal combustion engines.

There are three types of patents:

• Utility patents apply to discoveries of processes, machines, or chemicals.
• Design patents protect the unique design of manufactured objects.
• Plant patents are granted for the invention of new plant varieties, discovered through asexual reproduction.

Of course, having a patent doesn’t guarantee your intellectual property rights won’t be infringed upon. In one of the most lengthy and consequential patent cases, Polaroid and Kodak fought for instant camera film rights. Polaroid held the rights to numerous instant film technology patents, and Kodak claimed the system was being gamed. They argued that Polaroid illegally extended the life of its patents by filing nearly identical patents year after year. Polaroid v. Kodak spanned more than a decade and reached the Supreme Court. The court sided with Polaroid—Kodak was forced to pull its instant film cameras off the shelves and pay nearly $1 billion in damages.

How do I get a patent?

To obtain a patent, the inventor must apply for one from the U.S. Patent and Trademark Office. Obtaining a patent can be a rigorous process, generally involving thousands of dollars and several years.

For an invention to be patentable, it must be both novel and non-obvious. This means it must be unique (different from similar inventions in at least one part) and reasonably surprising to a person who is skilled in the invention’s field. In the patent application, the invention must be described and disclosed.

In most cases, patent details are publicly accessible. So, while your competitors won’t be able to legally sell products that infringe upon your patent rights, they will be able to review the specific details of your invention.

What is a provisional patent?

A provisional patent essentially holds your place in the patent line. Good for 12 months, provisional patents can give you time to continue researching your invention—testing the marketplace, trying new techniques, sourcing manufacturers—all while your stake in the game has been claimed.

Patents grant rights to whoever was the first to file, not the first to invent. Filing a provisional patent application ensures that someone else doesn’t swoop in to claim the rights of a similar invention while you’re busy working out the details.

Upon filing a provisional patent application, the phrase “Patent Pending” must accompany your invention.

How long does a patent last?

How long a patent lasts depends on the type of patent. Utility and plant patents last for 20 years from the date of filing, while design patents last for 14 years.

What happens when a patent expires?

Once a patent expires, it enters the public domain and is up for grabs. Anyone can make, use, or sell the invention without permission of the patent owner. This is why generic versions of Benadryl exist, or why Polaroid isn’t the only brand making instant film cameras today.

What is a trade secret?

A trade secret is information that is not known outside of a specific business or individual. The secret must provide a competitive advantage and be kept confidential through reasonable efforts.

A trade secret can be many things, including an invention, design, formula, method, recipe, or algorithm. Examples of trade secrets include the Coca-Cola formula, Google’s search algorithm, The New York Times’ Best-Seller List, and WD-40.

How are trade secrets protected?

Trade secrets receive protections differently than other types of intellectual property. They are not registered or applied for, and few protections exist if the secret becomes public knowledge through negligence or outside discovery.

But, protections can be obtained if the secret-holder requests that other parties sign non-disclosure agreements prior to learning the secret. Once such an agreement is signed, legal action can be taken if the secret is later disclosed. Trade secrets may be protected through other restrictive contracts as well, such as confidentiality agreements.

Can a trade secret be patented?

A trade secret can be patented, though the process will remove its trade secret status, since patent applications require the disclosure of an invention’s design, inner-workings, and/or process.

So, asking whether a trade secret can be patented isn’t quite the right question. The question is whether you want the legal protections a trade secret offers, or the protection granted by a patent.