Three types of property are known.  These are real property, personal property and intellectual property.  That which is owned as real property or personal property can be seen and touched.  What is owned as intellectual property can only be described in words on paper.  For example, a book is an item of personal property that can be owned.  The right to reproduce the book is intellectual property.

Four types of intellectual property are recognized; patents, trademarks (including service marks), copyright and trade secrets.

Patents give coverage to inventions.  In broad terminology, an invention is a new, useful and unobvious article of manufacture or improvement thereto.  Inventions also include composition of matter, method of fabricating a product, methods that are useful in business, ornamental design for article of manufacture and asexually reproduced plants.  Inventions and patents are subject to the laws, rules and regulation set forth in Title 35 of the United States Code and in Title 37 Code of Federal Regulations Chapter I.

Trademarks are used to distinguish the goods of one party from the goods of another.  Service marks distinguish the services of one provider from the services of another provider.  Trademarks and service marks are treated equally under law and commonly referred to as marks.  Marks are subject to the laws, rules and regulations set forth in Title 15 United States Code and in Title 37 Code of Federal Regulations Chapter I.

Copyright covers any original work of authorship or artistry fixed in any tangible medium of expression.  Copyright provides legal protection for musical works, dramatic works, choreographic works, pictorial works, graphic works, sculptural works, motion pictures and sound recordings.  Copyrights are the subject of the laws, rules and regulations set forth in Title 17 United States Code and in Title 37 Code of Federal Regulations Chapter II.

Trade secrets are not subject to the United States Code, nor the Federal Code of Regulations.  A trade secret is a contract between two or more people.  Trade secrets will not be covered in this seminar series.

A brief treatment of trademark and copyright is set forth below in detail.

A trademark is a word, phrase, symbol, design, or a combination of words, phrases symbols or designs that identifies and distinguishes the source of goods (physical commodities) of one party from those of others.  A service mark is the same as a trademark, except it identifies and distinguishes the source of a service (intangible activities) rather than a product.  The terms "trademark" and "mark" refer to both trademarks and service marks.  The trademark laws of the United States provide protection for marks.

OWNERSHIP OF MARK

Only the owner of a mark can file an application for registration.  Generally, the person who uses or controls the use of the mark, and controls the nature and the quality of the goods to which it is affixed, or the services for which it is used, is the owner of the mark.  The mark could have been created by another and assigned to the owner for registration.

EXAMPLES OF MARKS WHICH CAN BE REGISTERED

Below are examples of marks which can be registered.

• Name - an adjective which defines a specific one of a generic item, e.g., Kleenex™ Tissues
• Logo - a fanciful design with or without color.
• Symbol - a graphic design.
• Slogan - a collection of words usually arranged in a phrase, e.g, Best in the West℠
• Color in a Mark - one, two, or more colors arranged in a distinctive pattern.
• Shape - the configuration of the product or the container in which the product is packaged.
• Scent or Smell - a selected or distinctive aroma impregnated into a product.
• Color as a Mark - a color associated with an object or a service and creating a distinctive commercial impression.

MARKS WHICH CANNOT BE REGISTERED

Registration will be refused for the following:

1. the proposed mark consists of or comprises immoral, deceptive or scandalous matter;
   
2. the proposed mark may disparage or falsely suggest a connection with persons (living or dead), institutions, beliefs or national symbols, or bring them into contempt or disrepute;
   
3. the proposed mark consists of or comprises the flag or coat of arms, or other insignia of the United States, or of any State or municipality, or of any foreign nation;
   
4. the proposed mark consists of or comprises a name, portrait or signature identifying a particular living individual, except by that individual's written consent, or the name, signature or portrait of a deceased President of the United States during the life of his widow, if any, except with the written consent of the widow;
   
5. the proposed mark so resembles a mark already registered in the Patent and Trademark Office that use of the mark on applicant's goods or services are likely to cause confusion, mistake or deception;
   
6. the proposed mark is merely generic, descriptive or deceptively misdescriptive of applicant's goods or services;
   
7. the proposed mark is primarily geographically descriptive or deceptively graphically misdescriptive of applicant's goods or services;
   
8. the proposed mark is primarily merely a surname;
   
9. matter that, as a whole, is functional; and
   
10. a naturally occurring scent or smell, such as the result of manufacturing
    perfume is considered to be functional.

As noted above, a proposed mark that is likely to cause confusion, mistake or deception within the same class cannot be registered.  Use of such a mark can also result in litigation initiated by the holder of the registered mark.  Therefore, a search of registered marks should be made prior to adopting and using a mark.  A free search can be conducted at the site web of the Trademark Office.

On the web, go to www.uspto.gov and click on Trademarks.  When the page appears, click on "Main" near the top of the left column to display the home page of the Trademark Office.  First, it is necessary to determine the class in which the goods or services belong.  In the right column, near the bottom, click on FAQ's - questions & answers".  When the page appears, scroll down to "What are the different classes of goods and services" under the heading "Application Process".  Each class of goods and services will be listed with an international class number, i.e., "IC".

Now return to the Trademark home page and, near the top of the right column, click on "Search" to display types of searches.  Select "New User Form Search (Basic)".  Enter the proposed mark in the box that appears and click on "Submit Query".  Do not enter the generic name of the goods or services into the box; only enter the proposed descriptive mark.  This will provide a list of similar marks.  Click on each to determine the IC number.  If a confusingly similar term within the same class or a related class is found, devise another mark.

The absence of a confusingly similar federally registered mark does not necessarily indicate that the proposed mark can be used without restriction.  It may, for example, be registered and in use within a state.  It is also possible that a confusing similar mark is being used without benefit of either federal or state registration.  The user, therefore, has common law rights within the area in which the mark is used and can take action against a confusing similar mark being used within the area.

The search may disclose marks that are labeled as "Dead".  This indicates that the registration of the mark was not renewed as required by law.  However, the mark may still be in use under common law.

A "Full Search" to determine state registration and common law rights, conducted by a trademark attorney, is strongly recommended to determine the availability of a proposed mark.

INITIAL PROTECTION

Rights in a trademark or a service mark can be established based on legitimate use of the mark.  Immediately upon creation, the mark should include the appropriate notation, "TM" for goods and "SM" for services.  Examples of each are shown below.
  STARR℠ Reality Services
  STARR™ Home Building

A trademark and the notation can be placed in any manner on the goods or on containers of the goods or the displays associated with the goods or on tags or labels affixed to the goods.  If the nature of the goods makes such placement impracticable, the trademark can be placed on documents associated with the goods or the sale thereof.

A service mark notation should be used and displayed in the sale of services or the advertising of services.

DATES OF USE

The date of first use anywhere is the date when the goods were first sold or transported or the services were first rendered under the mark, if such use is bona fide and in the ordinary course of trade.  The date of first use can be anywhere and includes local, national, intrastate, interstate or any other type of use including commerce between the United States and a foreign country.

The date of first use in commerce is the date when the goods were first sold or transported, or the services first rendered, under the mark in a type of commerce that may be lawfully regulated by Congress, if such use is bona fide and in the ordinary course of action.  Generally, this means use across a state line.

REGISTRATION

A mark must be currently in use in commerce to obtain a federal trademark registration.

A trademark or service mark can be registered by a company or an individual.  A federal trademark application can be filed online at www.uspto.gov.  A mark can also be registered by use of a paper mail-in form obtainable from the Trademark Office.  Regardless of the method used to file a federal trademark application, it is strongly recommended to use the services of a qualified trademark attorney.  The basic filing procedures are set forth briefly below.

On the Trademark home page, top center, click on "File" near the top of the right hand column.  This will access a page entitled "Trademark Electronic Application System".  Before proceeding with the application process, under the heading This will display a page entitled "TEAS TUTORIAL" which provides instructions for using the TEAS form for filing on line.

Returning to the "Trademark Electronic Application System" page, under "Forms", click on "ELECTRONIC FILING TIPS" for further information concerning filing on-line.

Again returning to the "Trademark Electronic Application System" page, under "Forms", click on "File for a NEW Mark".  This will bring up another page entitled "Trademark Electronic Application System".  The box at the top of the page is entitled "Trademark/Servicemark Application, Principal Register".  Read the instructions in this box and then click on "Trademark/Servicemark Application, Principal Register" at the top of the box.  This will display a page entitled "Selection of Application Type". 

The application can be filed by either the TEAS Form or the TEAS Plus Form.  The filing requirements for the TEAS Plus Form are substantially stricter than the requirements for the TEAS Form and should be used only by a trademark attorney.  Accordingly, it is recommended that an applicant filing his/her own application use the TEAS Form.

To file using the TEAS Form, read the corresponding instructions, check the small box adjacent the title, TEAS Form, and then click on "CONTINUE" at the bottom of the page.  This will display a page entitled "TRADEMARK/SERVICE MARK APPLICATION, PRINCIPLE REGISTER".  Read the instructions at the top of the page.  Fill in the requested information and click "CONTINUE" at the bottom of the page.  This will bring up a page entitled "Trademark/Service Mark Application, Principal Register".

The mark, if a name or slogan, should be registered in plain block type.  The owner of the mark can then use the mark in any stylized form.  It is important that the owner of the mark secure rights to the mark, and not limited to any particular style.  Therefore, click the box entitled "Standard Characters" and type the words in the box provided.

A drawing of the mark and a specimen are required to accompany the application if the mark is a logo, symbol or includes color.  For submission of a stylized, design or color mark, refer to "TEAS Electronic Filing Tips".  Complete the form and then click on "Validate Form" at the bottom of the page.  The Trademark Office provides for filing on line.  Read the instructions concerning "electronic signature" and sending payment.

After the Certificate of Registration is received, replace "TM" or "SM" with ®.

INTENT TO USE

Marks that are currently in use in interstate commerce can be the subject of a "Principle Register" application filed with the USPTO.  If the mark is not currently in use in interstate commerce, but it is contemplated that the mark will be used in the future, the mark can be the subject of an "Intent to Use" application filed with the USPTO.  This will reserve the mark for a specified time.

To file an "Intent to Use" application, follow the instructions above.  On the TEAS Form noted above, check on "Intent to Use".  A drawing must be submitted.  A "Statement of Use" must be filed within a specified time.  Under "Basic Facts About Trademarks", click on "Additional Requirements For 'Intent to Use' Applications".

The Trademark Office requires a filing fee to accompany an Intent to Use application.  Later, a fee is required to file a Statement of Use.

BENEFITS OF REGISTRATION

The specific benefits accorded a mark registered with the USPTO are:

1. constructive notice to the public of the registrant's claim of ownership of the mark;
   
2. a legal presumption of the registrant's ownership of the mark and the registrant's exclusive right to use the mark nationwide on or in connection with the goods and/or services listed in the registration;
   
3. jurisdiction of the federal courts to uphold the registrant's claim to the mark;
   
4. registration can be used as a basis for obtaining registration in foreign countries; and ability to file the registration with U. S. Customs and Border Protection to prevent importation of infringing foreign material.

To protect a mark after registration, several important guidelines should be followed when using the mark in advertising, literature, displays and signs, product packaging, labels, business documents and correspondence.  The following are general guidelines:

1. Use the mark consistently, as each deviation may create a new, different mark.
   
2. Use the mark continuously and do not abandon the mark.  File Notice of Continued Use at required times. 
      www.uspto.gov/teas/eTEASpageC.htm
   
3. Prevent others from using your mark improperly.
   
4. Prevent others from using and registering confusingly similar marks.  File a Notice of Opposition. 
      tess2.uspto.gov/tmdb/tmep/1500.htm#_T1503
   
5. Maintain your mark by filing, at the appropriate time, "Affidavits of Continued Use" or "Excusable Nonuse".  On the Trademark Office home page, center column under "Keep a Trademark Registration...", click on "Maintaining a registration" for information. 
      www.uspto.gov/teas/eTEASpageC.htm
   
6. Register the mark with the U.S. Customs & Border Protection to prevent importation of infringing products.  Instructions are set forth at the end of this paper under the heading "United States Government".

AUTHORSHIP

Only the author or those deriving their rights through the author can rightfully claim copyright.  The author may be the creator of the work.  In the case of works for hire, the employer and not the employee is considered the author.  Copyright law defines a work for hire as:

1. a work prepared by an employee within the scope of his or her employment; or
2. a work specially ordered or commissioned.

Copyright protection subsists in original works of authorship fixed in any tangible medium of expression which can be perceived, reproduced or otherwise communicated. Works of authorship include the following categories:

1. literary works, including computer programs;
2. musical works, including any accompanying words;
3. dramatic works, including any accompanying music;
4. pantomimes and choreographic works;
5. pictorial, graphic and sculptural works;
6. motion pictures and other audiovisual works;
7. sound recordings;
8. architectural works; and
9. vessel hull design works.

Several categories of material are generally not eligible for federal copyright protection. These include:

1. works that have not been fixed in a tangible form of expression (for example, choreographic works that have not been noted or recorded, improvisational speeches or performances that have not been written or recorded)
2. titles, names, short phrases and slogans; familiar symbols or designs; mere variations of typographic ornamentation, lettering or coloring; mere lists of ingredients or contents;
3. ideas, procedures, methods, systems, processes, concepts, principles, discoveries or devices as distinguished from a description, explanation or illustration; and
4. works consisting entirely of information that is common property and containing no original authorship (for example, standard calendars, height and weight charts, tape measures and rulers and lists or tables taken from public documents or other common sources).

Copyright is a form of protection provided by Title 37 of the United States Code to the authors of original works of authorship or artistry.  This protection is available to both published and unpublished works.  The original author can transfer the rights of ownership to another.  The owner of copyright has the exclusive right to do and to authorize others to do the following:

1. to reproduce the work in copies or phonorecords;
2. to prepare derivative works based upon the work;
3. to distribute copies or phonorecords of the work by sale or other transfer of ownership, or by rental, lease or lending;
4. to perform the work publicly;
5. to display the copyrighted work publicly; and
6. in the case of sound recordings, to perform the work publicly by means of a digital audio transmission. 

MARKING

The creator of a work has vested interest in the work, automatically, upon creation of the work.  Neither publication nor registration is required.  The absence of marking or registration does not compromise the protection.  However, it is advisable to register a work as soon as possible, and to give notice to the public by affixing the copyright notice to the work immediately upon completion of the work.

Although not required, the notice for visually perceptible copies should contain all the following three elements:

1. the symbol © (the letter C inside a circle), or the word "Copyright" or the abbreviation "Copr";
   
2. the year of first publication; and
   
3. the name of the owner of the work.

If the work is subsequently updated or revised, the date of the last revision should also be included.  Intermediate revision dates are not to be included.

A phonorecord is the physical object in which works of authorship are embodied.  The word phonorecord includes cassette tapes, CDs, LPs, 45 rpm disks, and other similar formats.  The notice for phonorecords embodying a sound recording should contain all the following three elements:

1. the symbol $#8471; (the letter P inside a circle)
2. the first year of publication; and
3. the name of the owner of the copyright.

REGISTRATION

Registration of a work is a relatively simple procedure which can accomplished by the owner.  The Copyright Office home page provides links to several informative pages which should be reviewed prior to beginning the registration process.

The Copyright Office is an entity of the Library of Congress.  The Copyright Office is accessed by going to www.loc.gov and then clicking on "Copyright Office" to display the home page.  At the top of the page are several bars providing links to various subjects.  On this bar, click on "Publications" to access a page which, in the upper left column, displays the headings "Circulars and Brochures" and "Forms".  First click on "Circulars and Brochures" to bring up more than five dozen titles, each addressing many related subjects.  After obtaining any necessary information, return to the preceding page and click on "Forms".

Several application forms are available on line.  Each form is dedicated to a specific type of work.  The several forms and the corresponding type of work relevant to each are set forth below.

• Form TX - literary works including fiction, nonfiction, poetry, reference works, directories, catalogs, advertising copy, compilations of information and computer programs.
• Form PA - performing arts, whether preformed live or recorded, including musical works, dramatic works, pantomimes, choreographs, motion pictures and other audiovisual works.
  
• Form SR - sound recordings including music, spoken or other sounds and the underlying musical, dramatic or literary work embodied in the recording.
  
• Form VA - two or three dimensional works of art including fine, graphic and applied art, photographs, prints, art reproduction, maps, globes, charts, technical drawings, diagrams, models and architectural works.
  
• Form SE - serial works and periodicals including newspapers, magazines, newsletters, annuals and journals.
  
• Form MW - patterns or integrated circuits fixed on a computer chip.
  
• Form D-VH - vessel hull designs.

At the top of the first page of instructions are several headings which provide helpful information.  The first heading, "When to Use This Form", lists all material that can be registered with the selected form.  The Copyright Office is very user friendly and lists contacts under the heading "For Further Information".  Other useful information is located under the respective titles.

Next are the detailed instructions for completing the form.  Each instruction is set forth in detail under a heading.  The first heading, for example, is designated "SPACE 1: Title".  The first entry of the form is entitled "Read the instruction and then enter the data in the appropriate space".

An application for copyright must be accompanied by a deposit consisting of copies or phonorecords representing the entire work for which registration is to be made.  Special deposit requirements exist for some types of works.  The following are examples of exceptions to the general deposit requirements.

A motion picture deposit requirement is one complete copy of the motion picture and a separate description of the contents.  A literary work, dramatic or musical work published only on a phonorecord, the requirement is a complete phonorecord.  Computer program requirement is a visually perceptible in source code of the first 25 pages and the last 25 pages of the code.  CD-ROM format requires one complete copy of the material, that is the CD-ROM, the operating software and any manuals accompanying it.  Works reproduced in three-dimensional copies, identifying material such as photographs or drawings are required.

If confusion exists concerning the deposit requirement for a work, write or call the Copyright Office and provide a description of the work to be registered.

The current fee associated with each application form can be found by clicking on "Copyright Fees" under the heading "Circular and Brochures".  The fee must be in the form of a check or money order.  Credit cards are accepted only if the application is filed in person in the Copyright Office.

The three elements of the application, completed form, copy of work and fee, must be sent in one envelope.  At the moment, the application cannot be filed online.  Online registration is among the goals of the reengineering program of the Copyright Office.

The time the Copyright Office requires to process an application varies, depending on the amount of material the Office is receiving.  If the application is in order, the certificate of registration will be received approximately 4 months after submission.

The requirements for registration are:

1. a completed application form;
   
2. a deposit, a copy of the work; and
   
3. the current filing fee.

PROTECTION AFTER REGISTRATION

In general, copyright registration is a legal formality intended to make a public record of the basic facts of a particular copyright.  Copyright law provides several inducements or advantages to encourage copyright owners to make registration.  Among the advantages are the following:

1. registration establishes a public record of the copyright claim;
2. before an infringement suit may be filed in court, registration is necessary;
3. if made before or within 5 years of publication, registration will establish prima facie evidence in court of the validity of the copyright and of the facts set forth in the certificate;
4. if registration is made within 3 months after publication of the work or prior to an infringement of the work, statutory damages and attorney's fees will be available to the copyright owner in court actions, also the infringement is considered a criminal offense with court imposed penalties; and
5. registration allows the owner of the copyright to record the registration with the United States Customs & Border Protection for protection against importation of infringing copies.  Refer to "United States Government" at the end of this paper.

Copyright law has adopted the basic life-plus-seventy system, which is in effect in most other countries.  A work that is created (fixed in tangible form) is automatically protected from the moment of creation and is given a term lasting for the author's life plus an additional 70 years after the author's death.  In the case of a joint work prepared by two or more authors who did not work for hire, the term lasts for 70 years after the last surviving author's death.  For works made fore hire, and for anonymous and pseudonymous works (unless the author's identity is revealed in Copyright Office records) the duration of copyright will be 95 years from first publication or 120 years from creation, which ever is shorter.

FAIR USE EXCLUSION

One of the rights accorded to the owner of copyright is the right to reproduce or to authorize others to reproduce the work.  However, under certain circumstances, the work can be used without the consent of the owner.  This right is subject to certain limitations known as the doctrine of "fair use".  The list of the various purposes for which the reproduction of a particular work may be considered "fair use" includes criticism, news reporting, teaching, scholarship and research. 

Four factors to be considered in determining whether or not a particular use is considered "fair use" are:

1. the purpose and character of the use, including whether such use is of commercial nature or is for nonprofit educational purposes;
   
2. the nature of the copyrighted work;
   
3. the amount and substantiality of the portion used in relation to the copyrighted work as a whole; and
   
4. the effect of the use upon the potential market for or value of the copyrighted work.

PROTECTION AGAINST IMPORTATION OF INFRNGING MATERIAL

The United States Federal government provides protection against importation of material that would infringe a registered trademark, service mark or copyright.  To obtain this protection, after the certificate of registration is received, the owner should register with the United States Customs and Border Protection (CBP).  The United States currently has 327 ports of entry.  The CBP inspects all incoming shipments.

For this protection, go to www.cbp.gov..  When the home page of the CBP appears, enter "Intellectual Property" into the search box near the top of the page and click on "GO" to display a page of links.  Click on "U.S. Customs and Border Protection - Import" to display a page entitled "Intellectual Property Rights".  When the page appears, click on "Intellectual Property Rights e-Recordation (IPRR) Online System" to access a page entitled "CBP IPR Enforcement".  Read the instructions and at the bottom of the page select either "TRADEMARK" or "COPYRIGHT".  The registration number is required to proceed.

PUBLICATIONS

The federal government has printed many publications containing useful information concerning intellectual property.  All are available to the public.  Some are free and many can be read online.

United States Patent and Trademark Office.  On the web, go to www.uspto.gov to access the Patent and Trademark Office home page.  At the top of the page, click on Site Index.  When the list appears, scroll down and click on "Products and Services Catalog".  On this page are links to three informative pages.  The links, which appear in the upper left side are: "Catalog Index", "Trademark Products", and "Trademark Services".

United States Copyright Office.  On the web go to www.loc.gov and click on Copyright Office.  When the Copyright Office home page appears click on "Publications" at the top of the page to display a page entitled "Publications from the U.S. Copyright Office" and then click on "Circulars and Brochures".  Then click on "Information Circulars and Factsheets".  This will display a list of titles of informative brochures.  Click on any title for the complete brochure.