Common Questions: What Kind of IP Protection Should I Pursue?

by Christina Frangiosa

We frequently receive questions from business owners asking for intellectual property (“IP”) advice that combine legally unrelated terms, such as asking whether they should “copyright their logo”, or “trademark their idea”, or “get a patent on their design”.*  While it’s possible for IP owners to “layer” their protection – in other words, the same design might be protected under copyright and trademark law, and the same product configuration might be subject to a design patent as well as copyright and/or trademark protection – in many cases, a rights holder may only be exploring one kind of IP protection at a given time. This post is intended to simply define basic terms (particularly under U.S. law) to help foster conversations regarding obtaining the right protections for your IP – but if you need specific advice about what kinds of IP rights apply to your specific circumstances, you should talk with a lawyer who has experience in this area.

* Note that in some circumstances, it is possible to obtain a design patent – so asking to “patent a design” does not necessarily lead to an impossibility or a mismatch between the type of work and the applicable law. However, a mismatch occurs when the question asks whether unique artwork could be patented – where the questioner was really asking about obtaining a utility patent to protect an artistic work that has no functional elements.

Patents

Patent law governs the rights of inventors of new and useful ideas, including a process and/or machine, or an ornamental design, provided that these inventors have applied for – and been granted by the U.S. government (at the U.S. Patent and Trademark Office (USPTO)) – exclusive rights to reduce that invention to practice and exclude others from practicing the invention for a period of time set by statute. That period of time (“duration”) can be changed by Congress under certain situations. As a result, one patent’s duration might be different than another’s.

In addition, the statutory duration of a design patent currently is less than a utility patent, so it is important to consider what kind of patent has been issued before concluding that patent rights may or may not exist at any given time.

In order to obtain a patent, the inventor is required to disclose the new invention with sufficient detail that any other person skilled in this particular art would be able to recreate the invention. However, the benefit of obtaining a patent is the ability to exclude others from practicing the invention during the statutory period of exclusivity. If an inventor decides that it never wants to disclose the invention – but instead wants to protect it as a “trade secret” – then the inventor must take extreme care not to reveal the secret to others, including by publication or other disclosure, without the protections of non-disclosure agreements or security measures designed to keep the secret out of the hands of competitors or the public.

Finally, in order for patent rights to issue, an inventor cannot have already disclosed his invention to the public (with certain exceptions) before filing his application for patent protection – unlike copyrights and trademarks where the Work can have been published or the mark can have been used in commerce in connection with specific goods or services long before the application for registration is filed.

As I am not a patent lawyer, I will simply note that patent rights are not automatic; they must be applied for and granted by the USPTO through an issued patent before they can be enforced against others. Even after issuance, there may be limitations in the scope of a patent. Interested parties should consult with authorized patent practitioners (whether patent attorneys or patent agents) for any specific advice in this area.

Trademarks

Trademarks can be any word, phrase, symbol or design, sound, color or other indicia of source, or a combination of such indicia, that identifies and distinguishes the source of the goods of one party from those of others. A “service mark” performs the same basic function as a “trademark”, but applies to the source of a service rather than of a product (i.e., goods). (For simplicity, this post refers to both trademarks and service marks as “trademarks.”)

Trademarks generally must be unique enough that purchasers or potential purchasers associate them with one particular source’s goods or services – and only that source’s goods and services. While tempting, choosing a mark that describes the goods or services will not create a strong trademark and will not permit purchasers or potential purchasers to distinguish your goods from those of others – particularly if those descriptive words are commonly used by others in your industry.

Trademark rights in the U.S. require “use in commerce” – in other words, using a trademark in connection with particular goods or services offered in interstate commerce offered by a single source. Without that “use in commerce,” such words, phrases or logos/designs would not develop the goodwill associated with a mark or acquire any trademark value. You might have coined an interesting phrase, and maybe you were the first to publish it on the internet, or put it on the front of a t-shirt or on a mug – but unless the mark has been used as an “indicator of source” of particular goods or services offered to the public, then it does not function as a trademark.

Even without obtaining a federal registration, a trademark owner can establish exclusive rights to use a particular trademark based on its first use of the trademark in connection with particular goods or services in the marketplace (aka “common law trademark rights”). Relying on common law rights alone, however, may restrict your trademark rights to a particular geographic region in which use actually occurs. You could assert your common law rights against a newcomer who enters your geographic area, offering the same (or similar) goods or services under a confusingly similar mark. However, that newcomer might acquire senior rights in other geographic areas that could prevent the later expansion of your use. (Except in the case of famous marks which may be subject to broader protections in broader geographic regions, even if there is no use in commerce in that region.) Federal registration of one’s marks with the USPTO, while not required in order for trademark rights to exist, offers more comprehensive protection, including a presumption of nationwide use, than reliance upon common law rights alone.

Trademark rights can be perpetual, provided that trademark owners use their marks consistently and continuously in connection with specific goods or services in interstate commerce. If a trademark owner stops using a mark over a long period of time (generally three years or more, depending on the circumstances), with an intent not to resume use, marks can become abandoned, allowing a newcomer to step in later and start using the same mark without creating confusion with the original owner’s prior use. As with many conclusions in trademark law, the determination whether rights have lapsed is a highly fact-based determination and should be discussed with counsel if this is a concern.

Copyrights

Copyright rights exist from the moment of creation of a creative work, upon “fixing the work in a tangible medium of expression.” So, typing up a novel on paper, or saving it to disk or to the hard drive of a computer, would constitute a tangible medium of expression, just as drawing an original illustration on paper or chiseling a statue out of marble would. Copyright law does not protect the idea depicted in the creative work, but just the expression of the idea. See also a prior blog post on Can I Copyright My Knight in Shining Armor Story? (discussing common story themes and the limitation of copyright protection to the expression of the theme) and a series of posts on the copyrightability of fictional characters.

Creation of a copyrightable work entitles the author to several exclusive rights under U.S. law, including rights: (1) to reproduce (or, copy); (2) to prepare derivatives; (3) to distribute copies by sale, other transfer, rental, lease or lending; (4) to perform publicly; (5) to display publicly; and (6) (in the case of sound recordings) to perform by digital audio transmission. 17 U.S.C. § 106. Copyright owners also have the exclusive right to withhold their works from public circulation if they so choose.

Notwithstanding that copyright rights attach upon the moment of fixation of the expression in tangible form, under recent U.S. Supreme Court law, a copyright owner cannot enforce its copyright rights against others unless it is has filed for – and received – registration of its copyright rights with the U.S. Copyright Office. See Fourth Estate Public Benefit Corp. v. Wall-Street.com, LLC, 139 S.Ct. 881 (2019); see also prior posts in this blog explaining the Fourth Estate decision. Importantly, if an author happens to register its rights with the Copyright Office before the alleged infringement begins, then the author is permitted to seek statutory damages (up to $35,000 per work, or up to $150,000 per work if the infringement is found to be willful) instead of having to prove the full scope of actual monetary losses resulting from the infringement. Filing before the infringement occurs also permits the author to seek recovery of its attorney fees from the infringer if it prevails on an infringement claim (and if certain other criteria are met).

An author’s exclusive rights under the Copyright Act last for the life of the author, plus 70 years. 17 U.S.C. § 302. If a work was created as a work made for hire, anonymously or pseudonymously, then copyright protection lasts for 95 years after the date of first publication, or 120 years after the date of creation. Id. As a general rule, therefore, if an author is still living, one should assume that any tangible work created by this author is protected by copyright, and permission in advance would be required before anyone else could copy, display or distribute those works and not infringe the author’s exclusive rights.

Additional Recommended Reading

As mentioned above, the purpose of this post is to provide some guidance on the different terminology used to describe different IP rights. Some additional resources that are relevant to these basic concepts can be found below.