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

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.

Trademark Modernization Act Signed Into Law

On December 27, 2020, President Trump signed into law the Consolidated Appropriations Act of 2021 (H.R. 133 – as enrolled) which included the full text of the Trademark Modernization Act of 2020 (“TMA”) as modified from the versions originally introduced on March 11, 2020 as H.R. 6196 and S. 3449. See H.R. 133 at 1019-1029; see also H. Rept. 116-645* at 37-57 (Dec. 14, 2020) (report by House Committee on the Judiciary in support of H.R. 6196).

Purpose of the TMA

At its core, the TMA provides some new tools aimed at “decluttering” the trademark Register of those registrations for which a registered mark was either (1) never used in connection with the recited goods or services, or (2) not used as of an operative date (either the filing date of the application if it was submitted based on existing use in commerce, or the date identified on a Statement of Use/Amendment to Allege Use for an intent-to-use application) – thus suggesting that these registrations should never have been issued. The House Judiciary Committee explained that these new proceedings are intended to “clear registrations from the trademark register for which proper use in commerce was not made.” H. Rept. 116-645* at 37 (Dec. 14, 2020).

Legislative history suggests that this Act was aimed at addressing the “recent rise in fraudulent trademark applications,” particularly those from China, that impede legitimate efforts to launch new marks into the marketplace. Id. at 39.  As of September 2018, applications emanating from China had increased by more than 1100% over the prior 6-year period, and investigations revealed that a significant number of these applications “have fraudulent claims of use and/or fake specimens” supporting the registration. Id. Rep. Johnson (one of the co-sponsors of the House Bill) lamented the difficulty small businesses face in obtaining registrations for “strong, commercially viable marks”, especially when “[t]his market-entry problem has been exacerbated by the recent flood of fraudulent trademark registrations from China, many of which rely on doctored photos to demonstrate use of a mark to fraudulently obtain a trademark registration.” One-Page Summary ¶ 3-4. Ideally, these new proceedings will help create a cost-effective mechanism to clear the Register of this narrow set of blocking registrations for which no valid use could be demonstrated.

Provisions of the TMA

Some highlights from the Act (H.R. 133 at 1019-1029):

  • Permits flexible response deadlines for certain Office actions issued by examining attorneys during prosecution of trademark applications – such that some responses would be due between 60 days and 6 months, instead of the standard 6 month deadlines. TMA, Sec. 224. More details about these flexible response deadlines and associated fees to request extensions up to the full 6-month period must be established by regulation within the next year.
  • Creates two new ex parte proceedings to allow for further examination or cancellation of registrations when the registered marks either have never been used in commerce (expungement), or were not used as of a relevant time period (reexamination). TMA, Sec. 225(a) and (c) (creating processes under Section 16A and 16B).
  • Creates an additional ground for cancellation in a proceeding before the Trademark Trial and Appeal Board where a mark covered by a registration was never used in connection with some or all of the goods or services covered by the registration. TMA, Sec. 225(b).
  • Codifies the rebuttable presumption of irreparable harm, resolving a Circuit split involving the standard for proving entitlement to an injunction for violations of the Lanham Act. TMA, Sec. 226.
  • Commissions a study of the effectiveness of this Act – focusing on the time period between 12 months and 30 months after enactment and addressing several targeted areas relating to attempts to reduce inaccurate and false claims of use in commerce of marks registered with the USPTO. TMA, Sec. 227.
  • Confirms the USPTO Director’s authority to “reconsider, modify or set aside” a decision of the Trademark Trial and Appeal Board in interference, opposition, concurrent use or cancellation proceedings in connection with the Principal Register, in connection with ex parte appeals of an examiner’s refusal to register the mark of an application, or the cancellation of registrations on the Supplemental Register. TMA, Sec. 228.

More On Expungements and Reexaminations

Ex Parte Expungement Proceedings

Expungement applies when a registered mark has never been used in commerce in the U.S. in connection with the goods or services covered by the registration. TMA, Sec. 225, Sect. 16A(a). There are some important exceptions for those relatively new registrations that were filed under Section 44(e) (based on a foreign registration) or under Section 66 (requesting an extension of protection from a foreign application filed under the Madrid Protocol) within the statutory period for proving use in the U.S. Id., Sect. 16A(f) (describing showings of excusable non-use).

A petitioner can only seek expungement between the third and tenth years after registration – which takes into account not only the initial three-year period following registration during which Section 44(e) or Section 66 registrations are not subject to cancellation for non-use, but also caps exposure for these ex parte claims to a maximum of ten years following registration. Id., Sect. 16A(i). In essence, expungement proceedings are intended to target those relatively new registrations for which use never occurred, and, theoretically, the registration should never have issued.

(Note that inter partes cancellation proceedings are not estopped by these proceedings; a new grounds for an inter partes proceeding seeking cancellation of registrations for which the registered marks were never used in connection with the recited goods or services was also created by this Act.  Id., Sect. 16A(b).)

Ex Parte Reexamination

Reexamination applies when a mark was not in use in U.S. commerce in connection with some or all of the goods or services recited in the challenged registration as of a relevant date.  For use-based applications, the “relevant date” is the date of filing of the initial application. For intent-to-use applications, the “relevant date” is the date on which a Statement of Use or Amendment to Allege Use is filed, or when all approved extension to file these have expired. TMA Sec. 225, Sect. 16B(b).

A petitioner can only seek reexamination within the first five years after a registration issues. Id. Sect. 16B(i). This provision aligns with the current time periods under 15 U.S.C. § 1064 for cancellation of a registration on all available grounds, given that some grounds for cancellation are not available after this initial five-year anniversary.

Features Common to These New Ex Parte Proceedings

In both cases, there are certain protections built into the process against misuse of the proceedings by bad actors, such as competitors seeking to tie up a legitimate user by maliciously invoking these proceedings. First, while any third-party can file a petition seeking expungement or reexamination, every petitioner must submit documentary evidence supporting the claim – and the Director has discretion not to institute a proceeding if the Director finds that the evidence is insufficient. The statute requires the Director to promulgate regulations within the next year defining the specific procedures, types of and volume of evidence required to support a prima facie case justifying the institution of proceedings and the requisite filing fees. TMA, Sec. 223 & Sec. 225, 16A(c) & 16B(c).

Registrants have an opportunity to submit counter evidence to prove that their marks are in use in connection with the applicable goods and/or services. Once registrants meet their burden to prove such use, no further ex parte proceedings under this section will be permitted against the same goods and services of this registration and estoppel will apply – regardless of who the petitioner is. TMA Sec. 225, 16A(j) & 16B(j).

The Director also has the discretion (1) to decline to institute proceedings, notwithstanding any evidence submitted by a petitioner, (2) to institute proceedings on the Director’s own initiative based on evidence that he or she discovers independently, and (3) to reconsider, modify or overrule a decision of the TTAB in these cases. This discretion may act as an appropriate check and balance against a potential misuse of these proceedings.

Availability of These Proceedings

Before either of these new proceedings will be available, the USPTO will have to engage in rulemaking within the next year to establish specific evidentiary requirements, procedures to challenge applicable registrations and respond to petitions filed, and the requisite filing fees. As a result, these proceedings are not scheduled to be available to interested parties until December 2021.

Potential Impact of TMA on Trademark Registrants with Legitimate Use in the U.S.

Unfortunately, while the legislative history makes clear that the sponsors intended this Act to target a narrow type of fraudulent activity by foreign actors, as written this Act has a potentially broader impact. Even registrants who can demonstrate legitimate use in the U.S. may also find themselves defending proceedings under this Act.

Accordingly, registrants should be proactive and prepare to defend such challenges by, among other steps:

  • Keeping records documenting use in the U.S. of their registered marks in connection with the goods and services recited in the registration, to be produced on demand quickly and without significant operational expenses at the time the challenge is made;
  • Carefully identifying the correct “dates of first use” on their applications to avoid exposing the resulting registrations to potential reexamination (and cancellation) if their dates prove to have been (fatally) inaccurate;
  • Regularly reviewing their portfolios and confirming that their marks remain in use in the U.S. in connection with all of the goods or services claimed in their registrations – particularly when they are required to submit Declarations of Continued Use during the maintenance periods; and
  • Any time there is no use of the registered mark in connection with specific goods or services recited in the registration, making written records of the registrant’s intent to resume use and documenting steps taken to resume use.

In light of COVID-related business interruptions, many trademark owners may have seen related supply chain interruptions that impact whether or not they can distribute goods bearing their relevant marks in the marketplace in order to preserve their trademark rights. In some instances, these kinds of interruptions might qualify for “excusable non-use” that might avoid a cancellation, but a careful evaluation of the registrant’s portfolio or pending maintenance deadlines might be in order to determine whether these exceptions might apply in a particular case.

Summary

The purpose of all of these new provisions is to strengthen the Register of marks in the USPTO’s system. It is possible that these new proceedings could be a welcome tool for trademark owners seeking cost-effective ways to clear away marks that managed to reach registration despite the registrant’s failure to properly use the marks in U.S. commerce.  In particular, these new ex parte proceedings could help clear some deadwood from the Register, since many registrants would not attempt to defend registration for marks not in use.

The U.S. registration system does not permit registrants to merely reserve rights in marks to be used at a later time in order to prevent others from using them in connection with their own goods or services – but once an application matures to registration, it becomes more difficult (and expensive) to challenge these registrations on an inter partes basis, even if there were proof of fraud.  Once the effective date for these new proceedings occurs, and following the implementation of sufficient regulations regarding the process and evidentiary requirements, these tools could prove valuable to U.S. trademark holders as cost-effective ways to clear the way for registration of their own marks.

Other USPTO Programs Designed to Combat Fraudulent Filings

  • Mandating that foreign filers must engage U.S. counsel in order to prosecute an application and requiring mandatory electronic filing for all applications and TTAB proceedings – see “USPTO Published New Exam Guide on Mandatory Electronic Filing,” Privacy and IP Law Blog (Feb. 7, 2020) (includes links to the exam guides and proposed/final Mandatory US Counsel and Mandatory Electronic Filing rules).
  • Procedures to examine questionable or fraudulent specimens – seeUSPTO’s Recently Announced Pilot Program on Fraudulent Specimens,” Privacy and IP Law Blog (June 12, 2018).
  • Developing and testing automated systems to check the validity of specimens submitted in connection with applications, called the “Automated Specimen Analysis Project” – see discussion in TPAC’s Annual Report 2020 at 14 (Nov. 3, 2020).
  • Heightened verification of declarations and specimens submitted with post-registration renewal applications through a post-registration audit program – seeUSPTO Expands Random Audit Program,” Privacy and IP Law Blog (Aug. 11, 2019).

Additional Resources regarding the TMA

* As this article went to publication, the link to House Rept. 116-645 as stored on Congress.gov did not work.  However, this link was provided in the listing of actions take in connection with H.R. 6196, a prior version of this bill.  It is hoped that the broken link to the official copy will be fixed soon.   

New Trademark Fees in Effect on Jan. 2, 2021

On January 2, 2021, the USPTO’s new trademark filing fees went into effect, applicable to trademark application prosecution matters, as well as proceedings before the Trademark Trial and Appeal Board. See prior post, entitled “USPTO Issues Notice of Proposed Rulemaking on Revised Trademark Filing Fees,” Privacy and IP Law Blog (June 19, 2020).

Among the notable changes (for electronic filing only*) are the following:

Application Filing Fees

Description Prior Fees New Fees (eff. Jan. 2, 2021)
TEAS Standard Application, per class $ 275 $ 350
TEAS Plus Application (37 C.F.R. §2.22), per class $ 225 $ 250
Application under the Madrid Protocol [15 U.S.C. § 1141f, or “Section 66(a) of the Act”], per class $ 400 $ 500

Maintenance Filing Fees

Description Prior Fees New Fees (eff. Jan. 2, 2021)
§ 8 or § 71 declaration (through TEAS), per class $ 125 $ 225
[NEW] Deleting Goods or Services [or classes] from a registration after submitting a § 8 or § 71 declaration, but before the declaration has been accepted [filing through TEAS, per class] N/A $ 250
[NEW] § 7 amendment before filing a § 8 or § 71 declaration, and only deleting goods, services or classes N/A $ 0 fee
§ 7 Amendment (at any time – for any reason other than simply deleting goods or services or classes) $ 100 $ 100

Trademark Trial and Appeal Board Fees

Description Prior Fees New Fees (eff. Jan. 2, 2021)
Initial 30-day Request for Extension of Time to File a Notice of Opposition, through ESTAA, per class $ 0 $ 0
Initial 90-day or the Second 60-day Request for Extension of Time to File a Notice of Opposition, through ESTAA, per class $ 100 $ 200
Final 60-day Request for Extension of Time to File a Notice of Opposition, through ESTAA, per class $ 200 $ 400
Notice of Opposition through ESTTA, per class $ 400 $ 600
Petition for Cancellation through ESTTA, per class $ 400 $ 600
Ex Parte Appeal to the TTAB through ESTTA, per class $ 200 $ 225
[NEW] Filing a Brief in an Ex Parte Appeal to the TTAB through ESTTA, per class N/A $ 200
[NEW] Initial Request for Extension of Time to File an Appeal Brief in ex parte appeal cases, per class N/A $ 0
[NEW] Second and Subsequent Requests for Extension of Time to File an Appeal Brief in ex parte appeal cases, per class N/A $200
[NEW] Requests for oral hearings, per proceeding N/A $ 500

Miscellaneous Fees

Description Prior Fees New Fees (eff. Jan. 2, 2021)
Petition to the Director under 37 C.F.R. § 2.146 or § 2.147 $ 100 $ 250
[NEW] Petition to the Director under 37 C.F.R. § 2.66 (to revive an abandoned application) N/A $ 150
[NEW] Letter of Protest under 37 C.F.R. § 2.149, per subject application N/A $ 50

* Technically, there are still fees posted for paper filings, but given that the USPTO now mandates electronic filing in all instances (see prior posts), there will only be very narrow instances where these might apply. In the interests of brevity for purposes of this post, we have omitted the paper-filing fees in the charts above. If these are relevant to your situation, you can find the comparison here: https://www.uspto.gov/sites/default/files/documents/Trademark-Fees-Current-Final-Unit-Cost-2020.xlsx.

Note also that the list above is not a comprehensive recitation of all of the applicable filing fees for trademark filings with the USPTO or proceedings before the Trademark Trial and Appeal Board. For a complete list, see the USPTO’s Current Trademark Fee Table.

Sources for Additional Information: