Law Office of Carrie Hedayati

Trademark law in the U.S. comes from a consumer protection angle. It is designed to protect brand identity & goodwill while preventing consumer confusion.

Think brands & logos. It can be any symbol, word, or phrase that distinguishes your product or service from other similar products or services in the market. A trademark can also be a sound, scent, color, or shape of a product or product packaging.

Copyright law is designed to protect creators’ blood, sweat & tears. It can cover all kinds of works ranging from jewelry designs, song lyrics, fabric patterns to computer code.

Patent protection safeguards inventions and processes, ensuring inventors can benefit from their ingenuity. A design patent can cover the shape of a perfume bottle, a utility patent can cover the function of a safety system in a bike helmet, and a method patent can protect a unique method of manufacturing.

And, a trade secret is information that has either actual or potential independent economic value because it isn’t generally known, has value to others who cannot legitimately obtain the information, and reasonable measures are in place to maintain its secrecy. All three things are required.

Trade secrets may include formulas, client lists, and processes and methods. The recipe for Coca-Cola and Dr. Pepper are classic examples of trade secrets.

Maybe yes, maybe no. If you’ve taken these steps, you may ALSO have started to generate some common law trademark rights for yourself, but intellectual property rights are created by doing these things on their own.

A domain - without other steps - is just an address for your business on the web. A social media account handle is similar - an address for you or your business for that particular social site.

Forming an entity like a corporation or limited liability company or filing a d/b/a provides notice that you are doing business under that name - it doesn’t create rights to exclude others from using that name. State and county registrars don’t search outside your geographic area or industry.

It is important to secure domains and social handles as part of your business branding & protection strategy, along with trademark and or other intellectual property protection.

Think of domains and social media as securing your digital real estate, while trademarks protect your brand rights in the marketplace. Each serves a different purpose in building a strong and defensible presence.

Registering a trademark in the US provides expanded legal protections and exclusive rights. Many other countries are first-to-file jurisdictions, meaning obtaining trademark registration is vital to establishing your trademark rights, and frequently does not require prior use of the mark in that country. In all jurisdictions, registering a mark provides stronger legal protections.

While a copyright comes into effect as soon as you ‘capture your creative expression in tangible expression’ - meaning you writing it down, record it, draw it, etc., obtaining registration will allow you to prove ownership and additional ways to assert your rights.

Patents must be registered to obtain the rights associated with patent law. In many countries, the application must be field before an invention is exposed to the public or the opportunity to protect the invention is lost.

Trademark registrations can remain valid indefinitely, as long as they are renewed in a timely manner and the mark is being used. Initial registration terms typically range from 5 to 10 years, depending on the country.

U.S. Copyrights have different terms depending on who the author is and are not renewable. For an individual author, the term is the life of the author + 70 years. For corporate authors or work made for hire - the term is either 95 years from publication or 120 years from creation.

The term of a patent can vary from 15-20 years based on the type of patent and other factors.

There is no limit to amount of time a trade secret can be protected, as long as it still has economic value, is secret, and steps are in place to keep it that way.

Yes, unlike patent and copyright which are rights granted in the U.S. Constitution and exclusively regulated by the Federal Government, there a 3 kinds of trademark rights in the U.S. - common law rights, state rights, and federal rights. Trademark rights are particular to the place where you register.

Common law trademark rights are created naturally by being the first user of a mark in connection with goods or services. Common law rights are generally limited to the exact goods and geographic areas where the mark is actually used.

Each state has its own trademark registration system, typically run through the Secretary of State's office. Your trademark protection only extends within that specific state's borders. Typically, you must be actively using your trademark to file an application for a state trademark.

Federal trademark registration with the United States Patent and Trademark Office (USPTO) offers additional benefits, including a legal presumption of ownership and nationwide priority.

The "®" symbol is reserved for federally or other national registrations, while "™" signifies an unregistered trademark, or trademark used outside of an area where it is registered.

No, in the U.S. there are 2 types of federal applications.

An application based on "use in commerce" is filed when you are already using the trademark in connection with the goods or services in “interstate commerce”. This is a legal requirement meaning, essentially, sales between the state where your business is located and another state or country. This requirement can be met in a variety of ways, but is essential for securing Federal Registration.

You must be able to provide examples showing actual use of the mark. This could be a label, tag, packaging, or other examples of the mark's use on the goods or in connection with the services.

An application filed on the basis of "intent to use" (ITU) can be filed when you have a bona fide intent to use the mark, but haven't started using it, or haven’t had a qualifying sale in interstate commerce.

There are additional steps to obtain registration if you file an ITU application. You will need to have qualifying sales, and file a "Statement of Use" with evidence of use in interstate commerce within a certain amount of time after an application is approved.

Any change to the way you are using your IP may mean it is not covered by your existing application. This means you may not be able to complete registration in the case of a trademark, or that your new use may not be covered by your copyright or patent application.

For a trademark, making changes to a logo (such as changing the arrangement of elements, adding or removing colors, changing the fonts or the elements of a design) may require filing a new application. Minor changes, such as color adjustments, may be acceptable without filing a new application.

However, trademark offices generally examine the mark drawing against the proof of use for any difference and may reject proof of use (denying registration or a renewal) if they are not identical to the mark as it was filed.

Yes, IP rights are like any other major asset. Like if you are selling a car - you conduct negotiations for purchase price and terms of the sale, and then also need to transfer title.

For example, trademarks can be transferred or sold to another party through an asset purchase agreement as part of the sale of a business. In addition to the purchase agreement, a trademark assignment must be completed and recorded with the USPTO.

You! (*with some help)

The USPTO & U.S. Copyright Office are not enforcement agencies. While they may reject or suspend an application for being to similar to an earlier filed application or existing registration, they do not proactively take action against infringements.

It is necessary for trademark owners to monitor for infringement of their rights. Each infringement situation is unique and should be assessed with us to create a specific plan of action, but here are some common proactive measures IP rights holders can take:

• Monitoring publications and trade shows in your industry can be helpful to identifying potential infringements early on.

• Trademark monitoring services identify applications which may be concerning to you - providing the opportunity to act before they are approved for registration.

• Registration of your trademark or copyright with Customs & Border Patrol allows them to check inspected shipments for goods that may be infringing your IP & seize infringing goods.

• Online brand protection services monitor selected e-marketplaces, websites and social media platforms for infringing content and can automate sending of takedown notices.

Other types of legal action can be taken if someone is using your IP without your permission depending on the type of infringement.

Some examples of enforcement actions include: sending cease-and-desist letters, filing a UDRP complaint to reclaim a URL using your trademark without permission, filing cancellation or opposition action against a trademark registration or application with the Trademark Trial & Appeal Board, or filing a lawsuit in federal or state court.

Depending on the structure of a business and what type of assets are owned by that business, the following may need to be done:

• File entity name change with the state

• Update EIN records with IRS

• Amend operating agreement or corporate bylaws

• File a new DBA/fictitious name registration

• File trademark assignment with USPTO to change ownership

• File new trademark application if the name change affects trademark protection