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Service & Trade Marks
Marks are generally an
identifier of source and quality. Rights generally accrue
under common law upon adoption and use of a mark (name,
symbol, logo, trade dress, style of doing business, etc.)
in connection with a business. Marks may also be adopted
for use in connection with non-profit and organizational
activities, e.g., unions and trade associations.
It is generally recommended
that a trademark clearance search be performed to
determine the availability of a mark prior to its
adoption. Typical client charges for such a search and
related analysis and opinion is $ 450.
A mark may be registered at
the States and Federal level, provided that certain
requirements are satisfied. At the State level, the mark
is simply registered with the Secretary of States and
notice must be provided locally.
At the Federal level,
applications for trademark registration are subject to
substantive examination in an arcane administrative
proceeding that may span 2-4 years, or more. Registering
your trademark in the Federal System would be done hourly
and range from between $1,000-2,000, plus government fees
(filing, publication & registration) of approximately
$ 1000.00 accruing between application filing and mark
registration, depending on the number of different classes
of goods and services for which registration is sought.
Registration at the Federal
level requires actual use or intent to use the mark
"in commerce". Federal registration provides
several desirable benefits, including, among others:
nationwide constructive notice and use; prima facie
evidence of validity, ownership and right of use; Federal
jurisdiction; the right to Customs agency enforcement
barring importation of goods bearing infringing marks;
treble damages, atty. fees and other desirable remedies.
Copyright
Copyright protects original
works of authorship fixed in a tangible medium of
expression. The law generally requires that the work
embody at least a very minimal amount, or modicum, of
creativity, and that the work be conceptually separable
from any utilitarian aspects thereof. Mere compilations,
for example alphabetically arranged directories, have been
refused protection for lack of originality and/or
creativity; Hard work, "sweat of the brow",
alone is insufficient to merit copyright protection.
Statutory works include,
among others, literary works (e.g. poetry, musical lyrics,
writings, software, etc.), pictorial, graphic and
sculptural works (e.g. drawings, photos, blue prints,
computer screen displays associated with software,
buildings, etc.), and choreographic works.
The copyright protection
afforded software is generally not very great, since
software is inherently utilitarian, but exists
nevertheless. In some cases, software inventions may be
eligible for patent protection in addition to that of
copyright, as discussed below.
Original works are
protected upon fixation. Notice, e.g. "© Name, Year,
All Rights Reserved", is not required, but is
recommended. It bars innocent infringement defenses and
may deter some copying. The copyrighted work may also be
registered at the Copyright Office. Registration is
generally required for filing an infringement action and
provides enhanced remedies. Copyright registration is
therefore recommended for works having commercial
significance.
Trade Secrets And Related
Agreements
Trade secret protection is
available for any information having economic value
resulting from its not being known generally, so long as
the information is the subject of reasonable efforts to
maintain its secrecy. State law governs trade secrets.
Patents
Utility patent protection
is generally available for useful inventions that are
novel and non-obvious. Patent protection extends generally
to articles of manufacture, machines, compositions of
matter, and processes.
Recently, Federal courts
have ruled explicitly that software inventions and
business methods or models are not exempt per se from
patent protection, so long as the statutory requirements
for patentability are satisfied. These inventions have
nevertheless been protected for some time under various
other guises.
Design patent protection is
available for ornamental designs for articles of
manufacture, as opposed to the article itself. For
example, surface indicia on the article, a design for the
overall shape or configuration of the article, and
combinations thereof. Design patent protection has been
extended to include computer-generated icons. Designs must
satisfy the novelty and non-obviousness requirements.
Patent protection is the
strongest and arguably the most desirable form of
intellectual property protection, where applicable. For
some inventions, however, for example those where the
commercial life span thereof is not more than a couple of
years, patent protection may not be as great, since
patents take about two years to obtain. There may
nevertheless be advantages to filing patent applications
under these circumstances, since goods marked with
"patent pending" create substantial uncertainty
for competitors. Also, other inventions may be better
protected by trade secret, for example some processes that
may not be reverse engineered by mere inspection of the
article produced thereby.
The total cost for a patent
is not less than $ 7,000 for the simplest of inventions.
For example, the minimum cost for preparation of a simple
mechanical patent specification is about $ 3,500, plus the
costs of formal drawings, about $100 per sheet. For
individuals and small businesses, the government costs
(filing and issue fees) are approximately $ 1,000; the
cost is double for entities with more than 500 employees.
There are also attorney fees associated with the
procurement of the patent, estimated to be approximately $
2,000.
For more information,
please visit: www.nicolosilaw.com
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About
The Author
Rockford
native Paul Nicolosi concentrates his
legal practice in business law and
transactions, and business and estate
planning. He is active on several company
boards and participates in regular company
reviews for consideration by venture
capital firms. |
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