San Diego's Premier Law Firm
Intellectual Property
Serving You
Protect your IP with copyrights and trademarks
Our Services
Intellectual property (“IP”) is a term used often to describe a wide variety of creations. It’s a category of property, that includes intangible creations of the mind. This includes copyrights, patents, trademarks, and trade secrets. Because these things are so crucial to a business’ success, IP is often the lifeblood of any business, large or small. You can protect your intellectual property rights in several different ways, from registering your copyright with the U.S. Copyright Office, to applying for a trademark with the U.S. Patent and Trademark Office (USPTO), and if warranted, by filing a patent application with the USPTO. Oftentimes it becomes confusing as to whether a piece of intellectual property is a copyright, trademark, or patent. This is because articles and media unfortunately use the terms interchangeably, when each is a distinct type of intellectual property. Let us help you protect your IP by acquiring the necessary copyrights and trademarks for your business.*
*Our office Pokala Law APC does not currently offer patent filings services and does not practice patent law.
Copyright
A copyright is a type of intellectual property that protects original works of authorship as soon as an author fixes the work in a tangible form of expression. What does “original” mean? Well, that’s been left intentionally murky. The most straightforward way is when the work is independently created without the influence of others, or without directly copying. However, art doesn’t live in a vacuum. As Pablo Picasso once (allegedly) said, “good artists borrow, great artists steal.” Is the work in question inspired by a preexisting piece? Perhaps you’ve taken someone else’s work and expanded or otherwise modified it to give it a new spin. If that’s the case, your work may be what’s called a “derivative work.” Derivative works typically include major copyrightable elements of an original (which is called the “underlying work”) but has been changed to such a degree that it has become its own individual piece.
Determining whether your work is distinctive enough to qualify as copyrightable material is on a case-by-case basis, and will require some research to provide an educated response to. The nature of copyrighted work is intentionally vague because the court systems don’t want to try to define art. There is often no such thing as a “rock solid answer,” and each case is a little different from the last. So long as there is a minimal degree of creativity (which excludes things such as titles, names, short phrases, slogans, etc.) then you may have a copyrightable work on your hands.
Many types of works qualify for federal copyright protections – paintings, photographs, illustrations, musical compositions, sound recordings, computer programs, books, movies, poems, blog posts, and in some cases even handouts made by your business!
The person who creates the original work is the owner. However, the ownership rights can be transferred via assignment or other means. Companies also can be owners of the copyright, most commonly through what is known as “work made for hire,” in which it is assumed that intellectual property made by the employee as part of their job duties is actually owned by the employer.
While copyright exists automatically in an original work of authorship once it is “fixed” (the legal term for your work being made permanent in some manner), registration improves the protections you receive– most notably that registration is necessary to enforce the exclusive rights of copyright through litigation. Registration can take place at any time, but timely registration (which is registration within three months of the work’s publication date OR before any copyright infringement actually occurs) makes it much easier to sue and recover money from infringers. If you have filed in a timely manner, you will be eligible for statutory damages or attorney fees, but if you did not, the court may award you “actual damages and profits.”
The exclusive right to reproduce the work in copies, to prepare derivative works based on the work, distribute copies, perform the work publicly, display the work publicly, etc. It also gives the owner the right to authorize others to exercise these exclusive rights. If the work is made for hire, then the term of copyright protection is 95 years from the date of publican or 120 years from the date of creation, whichever expires first. A work not made for hire is ordinarily protected by copyright law for the life of the author plus 70 years. For more information as to what rights you may have to your copyrighted material, schedule a consultation to speak to one of our attorneys so that we can see if we are the right fit for you.
If you are an employee and you create an original work of authorship in the scope of your employment, under Section 101 of the Copyright Act (title 17 of the U.S. Code), the employer, not the employee is considered the author even though the employee created the work. A work can also be considered work for hire if this agreed upon in a written contract, but be careful: if a work for hire provision is included in a contract with an independent contractor, California may consider the independent contractor to be an employee, leading to substantial employer-side liability that the employer may not have considered. A work-around is having the copyright to the work assigned via contract, rather than being classified as work for hire, but that adds another wrinkle – if an assignment takes place, the author or the author’s heirs may terminate any assignment at any time during the five-year period beginning at the end of the thirty-fifth year after the transfer under 17 U.S.C. §203. And this right to terminate cannot be contracted away or waived in advance. While many people would not think of what will happen in 35 years, if the work for hire becomes immensely profitable, a company runs the risk of losing ownership of the copyright that has become valuable.
Oftentimes copyright litigation involves infringement in the form of unauthorized use of copyrighted photos, videos, and music. But there are also defenses to copyright infringement, most notably the Fair Use Doctrine. Other defenses include a claim that the copyright is invalid (either it has expired or that the work was not original when filed). If you believe that someone has infringed upon your original work, or if you have been accused of infringing upon someone’s original work, please schedule a consultation with our team so that we can see if we are the right fit for you.
Trademark
At its heart, a trademark is nothing more than something identifiable that allows you to easily link a good or service to person that creates it. A trademark can be a word, a phrase, a symbol, a design, a color, a sound, a smell, or a combination of these things that identifies your good or services.
While there are overlaps between all three, the difference essentially boils down to this: (1) a patent is for a novel invention. It can be any number of things, such as a machine, a process to create/refine something, or even a strain of a genetically modified organism! Unlike trademarks and copyrights, patents must be registered with the USPTO to have its protections; (2) a trademark is something readily identifiable that clearly shows the creator of the goods or services in question; (3) a copyright is an original or derivative work that has some level of natural artistic (or creative) value.
There are plenty of times where the lines between trademarks and copyrights blur. Starbucks, for example, has a logo that qualifies as both a way to easily identify the company making the product that is also an artistic design. Each form of intellectual property has its own “shelf life” and has different ways to determine them. To determine which kinds of protection might be right for you, please schedule a consultation to discuss with one of our qualified attorneys. Please note that Pokala Law APC does not practice patent law at this time.
The short answer is “no.” The longer answer is “no, but you should consider doing so.” Using a business name can give you what’s called “common law” protections in the state your mark is being used. However, While there is no legal requirement to register your trademark, a registered trademark with the USPTO provides you with two substantial benefits: 1) it allows you to continue using the name across state lines 2) it allows you to force other businesses that begin using your business name after you have filed for your trademark to stop using the name, if the use of the name promotes customer confusion. There is an added benefit that you can file a trademark application before you begin using it. This has you file as a 1(b) rather than a 1(a) and lets you reserve the mark for future use. If you are afraid that competitors might use your brand, you can get the legal protection by filing a 1(b) trademark application before you are ready to use it in commerce. Another benefit is that, generally speaking, it is easier to recover damages in the event of infringement when your mark has been registered.
As stated above, it helps prevent confusion with customers. It makes the brand name more valuable and helps define the company’s identity. It prevents others from using the same or similar business name within your industry and allows you to take legal action to prevent others from using it after you get the trademark. It will not force others using the business name prior to your filing, but it may prevent them from expanding to other states. Filing a federal trademark also gives you the basis to file in other countries, most commonly under something called the “Madrid Protocol.” It can also allow you to stop forgeries and otherwise unauthorized imports.
The biggest benefit is that registering with the state means that your mark will be listed in the state of California’s list and can be a major deterrent from others using your mark. It’s also significantly cheaper and more straightforward to get a state trademark than it is with the federal system. However federal marks take precedence over state ones, and a state trademark is unnecessary if you already have a filed trademark. It may be cost-effective if you never plan on operating your business outside of California.
Usually, the process can take between 12 to 18 months. It usually takes between 4-6 months to review the application and then the USPTO will issue an Official Office Action, which explains what the issues are, if any, with the filing, and allows the applicant to amend the application to address those issues. Each Office Action provides the applicant with a six-month time period to respond. It is quite common to receive at least one Office Action, but it’s not unheard of to have two or three.
Federal trademarks last 10 years from the date of registration, with 10-year renewal terms. Between the fifth and sixth years after the registration date, the registrant must file an affidavit to state that the mark is still in use. Trademarks can potentially last forever, as long as it is timely renewed and still being used in commerce.
Well, you will still able to prevent other parties from using your mark, but it is going to be a lot more difficult to do. And if a competitor registers the mark themselves, they may end up preventing you from expanding your use of the mark, even though you had used it before they did.
A common law trademark is a trademark established solely through use in commerce in a specific geographic area. While this will give the mark owner the right to use the mark in commerce within a specific geographic area, it does not give the owner the right to expand the use of the mark outside of the specific geographic area, and it does not give the common law trademark holder the right to prevent others from using the mark.
“Trade dress” usually refers to the packaging of the item that you’re selling. Trade dress requires the packaging to be distinct enough that a shopper would instantly associate the product with your company. One famous example of a trade dress success story, is Tiffany & Co.’s blue boxes that all Tiffany & Co. products come in.
Yes, you can! Remember, the idea behind a trademark is to be able to clearly and easily identify the maker of a good or service. To that end, a trademark doesn’t have to be limited to a name or a sign — there are many other ways to distinguish your brand! Companies have trademarked sounds (such as NBC’s three-chime of G, E, C), colors (such as the famous red-soled shoes of Louboutin), textures, and even scents! For example, Play-Doh has trademarked their scent to be a “combination of a sweet, slightly musky, vanilla-like fragrance, with slight overtones of cherry, and the natural smell of a salted, wheat-based dough.” There are many famous examples of trade dress, such as the shape of Coca-Cola’s classic glass bottles, or the iconic robin’s-egg blue hue every piece of Tiffany & Co. jewelry is packaged in. Through consistent use and branding, each company listed has carefully crafted a deep association in the customer’s mind with between the product and the producer.
If you have any questions whether filing for trade dress might be right for you, please don’t hesitate to give us a call and schedule a consultation with our team.
In a manner of speaking, yes, as a company’s name becomes associated with a product or service. The best way to do so is through consistent and comprehensive branding. The next time you go to a grocery store, you’ll see that every Heinz product has the same name, in the same font, at the same location on every product they sell. This is intentional, and an important step in creating that association in the minds of your buyers.
You certainly can, but whether or not you should file a trademark before you do business comes down to your individual circumstances. One advantage to filing with the USPTO before you begin is that it can help to secure your mark on a national level by creating an earlier filing date.
Absolutely! A crucial step in creating any new business is determining whether someone else out there is already using the name you want in the space you plan to use it.
While it is important to note that a cease and desist letter is not a legal proceeding, it is used as a warning that a lawsuit may be coming your way if you are infringing upon someone else’s mark. If you have received a cease and desist letter, please schedule a consultation with one of our qualified attorneys so we may see if we are a good fit to help you.
In addition to adding the little ® to your logo, you now have a much stronger claim to protect your mark from others that infringe or otherwise damage your reputation in the marketplace.
This is a much longer question to answer than you might think. The short version is that infringement occurs whenever there is confusion in the marketplace over the maker of a product or the endorsement of a product. For example, if you see a shirt at the mall with Disney’s iconic Mickey Mouse ears, the average person would assume that Disney authorized that shirt to be made. While there are many different circumstances wherein you can make an infringement claim, ultimately confusion about who is behind the product is the most important part.
Trade Secret
Trade secrets, unlike copyrights and trademarks, are a type of intellectual property that is not disclosed publicly. This includes, as a famous example, the Coca-Cola formula, but also includes practices, processes, designs, instruments, and patterns that have inherent economic value because they are not generally known and that the owner takes reasonable measures. Determining whether a piece of proprietary information is a trade secret (and determining whether you have done enough to sufficiently protect the information) happens on a case-by-case basis. If you have questions about whether you have a trade secret and how to protect it, please schedule a consultation to meet with one of our qualified attorneys.
Contact Us Today
Are you ready to protect your business with top-quality legal services at affordable rates? Get in touch today, and learn how we can help your small business succeed!
