Tuesday, October 27, 2009

The Supplemental Register

The USPTO maintains two trademark registers, the Principal Register and the Supplemental Register. The Principal Register is the place for the traditional, good against the world, marks like Coke and Pepsi. A critical requirement of registration on the Principal Register is uniqueness, either initially or established over time.

The Supplemental Register is for those trademarks which are principally descriptive and won’t qualify for initial registration on the Principal Register. The marks must be capable of distinguishing goods and services (even though they may not actually serve that purpose). An example might be The Brewery, for a business that brews beer. A mark that has been on the Supplemental Register for 5 years has acquired “secondary meaning” and can be transferred to the Principal Register.

Certainly, if a mark can go on the Principal Register, that is the place to go. Many more rights flow from such a registration. Nevertheless, registration on the Supplemental Register is beneficial in that it permits use of the ®, the symbol of federal registration and serves as a deterrent to junior users of the mark.

Caveat: Any mark, whether on the Principal or Supplemental Register, is potentially subject to attack by a superior, common law user.

Wednesday, October 14, 2009

The difference between Trademarks and Copyrights

"I have a great name for a product – can I copyright it?"

"I developed a great software application, can I trademark it?"

As to the first question, the answer is no, but you may be able to trademark it (i.e., obtain a federally registered trademark). The answer to the second question is also no, but the software enjoys copyright protection and may even be patentable.

Copyright Law protects original works of authorship that are fixed in a tangible medium Those original works range from books and songs to paintings and photographs to software code. It is important to note that it is not the idea itself that is copyrightable but the expression of the idea. For example, Ansel Adams, a famous American photographer of the West, took many pictures of Yosemite National Park, the Grand Canyon and the Tetons. Once the image he saw in his camera was fixed on the negative, his copyright in it and the subsequent photographic print was created. If I photocopy one of his prints, I have violated his copyright. If, on the other hand, I manage to stand in the same place he did and capture an identical image, I have not violated his copyright. Rather, I have created my own copyrighted material. It is the expression of ideas that is protected, not the ideas themselves.

Copyrights arise the instant the work is fixed in a tangible medium. Federal registration of copyrights is handled by the Copyright Office, www.copyright.gov, a division of the Library of Congress. There is no need to register a copyright in order to own one but protection is enhanced if you do.

A trademark is commonly referred to as a source indicator. It is intended to identify the source of goods or services and to enable the public to distinguish among goods and services. Two great examples of strong trademarks are "Coke" and "Pepsi". While copyrights arise on creation, trademarks are dependent on use. The phrase "use it or lose it" is apt in the trademark world. Unlike copyright, priority is important in trademark use. In almost every reported case, the first user of a trademark, for a particular good or service, will have priority over a subsequent user of the same trademark, for a similar good or service.

Monday, October 12, 2009

Choosing a Trademark

Trademarks come in three basic flavors. They are, from strongest to weakest, Fanciful/Arbitrary, Suggestive and Descriptive. A fourth category, Generic, consists of those words that are too common to srve as trademarks. An example of a generic mark is aluminum foil. A suggestive mark in the same line would be Reynold's Wrap. It is suggestive because "Wrap" suggests something about the product - in this case, its use to enclose something.

If your slate is clean, an Arbitrary mark is the safest bet. An example might be "Dog" for brand of shoe polish. There is no discernable connection between the name and the product. A Suggestive name for the same product might be "Buff It!" A Descriptive name might be "Murphy's Shoe Polish". The Generic name,is of course: "Shoe Polish".

Assuming there is not a conflicting mark, the Trademark Office should have little difficulty with the Dog mark. Buff It is somewhat weaker, but still a good mark. Murphy's Shoe Polish may require some aging - a chance for the name to be associated with the product, before a registration would issue. Shoe Polish is open to all users - and hence, of little value to anyone, including the consumer.