California Intellectual Property Attorney
Robert J. Schaap

Frequently Asked Questions

The following information includes frequently asked intellectual property law questions. The answers stated are general in nature and are not intended to apply to every situation. Each case is different and carries its own set of circumstances which must be taken into consideration by competent legal counsel. By contacting Attorney Robert Schaap at 866-738-5070, you can receive a personal consultation regarding your specific legal claim.

What is the definition of intellectual property law?
Our legal system provides certain rights and protections for owners of property. The kind of property that results from the use of the mind in developing new ideas and products is called intellectual property.

Intellectual property law is the area of the law that includes patent law, copyright law, trademark law and trade secret law. In addition, some aspects of other branches of the law, such as licensing and unfair competition are included within the area of intellectual property.

Rights and protections for owners of intellectual property are based on federal patent, trademark and copyright laws and state trade secret laws. In general, patents protect inventions of tangible things, copyrights protect various forms of written and artistic expression, and trademarks protect a name or symbol that identifies the source of goods or services. The various intellectual property law specialties are related, often overlap and are frequently practiced together.

What is a copyright?
Copyright is a form of protection provided to the authors of original works of authorship including literary, dramatic, musical, artistic, and certain other intellectual works, both published and unpublished. The 1976 Copyright Act generally gives the owner of copyright the exclusive right to reproduce the copyrighted work, to prepare derivative works, to distribute copies or phonorecords of the copyrighted work, to perform the copyrighted work publicly, or to display the copyrighted work publicly. The copyright protects the form of expression rather than the subject matter of the writing. For example, a description of a machine could be copyrighted, but this would only prevent others from copying the description; it would not prevent others from writing a description of their own or from making and using the machine. The Copyright Office of the Library of Congress registers copyrights.

What is a trademark?
A trademark is a type of mark. Traditionally the term "trademark" described only marks designating products, or "goods" (as opposed to services). However, the word is increasingly being used to describe any type of mark, not just traditional "trademarks." These other marks are service marks and trade dress.

Trademarks are generally defined as distinctive symbols, pictures, or words that sellers affix to distinguish and identify the origin of their products. Trademark status may also be granted to distinctive and unique packaging, color combinations, building designs, product styles and overall presentations. It is also possible to receive trademark status for identification that is not on its face distinct or unique but which has developed a secondary meaning over time that identifies it with the product or seller.

The owner of a trademark has exclusive right to use it on the product it was intended to identify and often on related products. The primary purpose of trademarks is to prevent consumers from becoming confused about the source or origin of a product or service.

In the United States trademarks may be protected by both Federal statute under the Lanham Act and states' statutory and/or common laws. Congress enacted the Lanham Act under its Constitutional grant of authority to regulate interstate and foreign commerce. A trademark registered under the Lanham Act has nationwide protection.

Under state common law, trademarks are protected as part of the law of unfair competition. Registration is not required. States' statutory provisions on trademarks differ but most have adopted a version of the Model Trademark Bill (MTB) or the Uniform Deceptive Trade Practices Act (UDTPA). The MTB provides for registration of trademarks while the UDTPA does not. The Tariff Act of 1930 provides further protection of trademarks.

What are the legal requirements for registering a trademark?
There are four basic requirements for filing a trademark with the United States Patent and Trademark Office (USPTO).

1. The mark must be filed under the name of the actual owner of the mark. The owner of the mark is the person who controls the nature and the quality of the goods sold or the services rendered under the mark. The owner does not have to be an individual; the owner can be a partnership, a corporation or an association. If the owner is a corporation, then the applicant's name is the name of the corporation.
2. The applicant must specify what type of entity it is (individual, corporation, etc.) and its national citizenship. It is not required that the applicant has U.S. citizenship.
3. The application must be based on an actual use or on a real intention to use the mark in business. For the application to be based on an actual use, the applicant should indicate what products he or she has actually placed the mark on and sold for business. When you are filing an intent-to-use application, it is sufficient that you make a statement in good faith that you plan to use the mark in commerce. However, you will have to actually use the mark before it can actually be registered. The USPTO will first issue the Notice of Allowance, which gives you six months to either use the mark in commerce or file for an extension. Once the Statement of Use is filed, the USPTO will issue the registration certificate.
4. You must submit a drawing of the mark and a specimen of the mark when the application is based on actual use. Labels, tags, or containers for the goods are considered to be acceptable specimens of use for a trademark. A drawing is a page that depicts the mark you seek to register. In an application based on actual use, the drawing must show the mark as it is actually used (i.e., as shown by the specimens). In the case of an application based on a real intention to use, the drawing must show the mark as the applicant intends to use it. A drawing is necessary even when a specimen is submitted.

What Is a patent?
A patent for an invention is the grant of a property right to the inventor, issued by the Patent and Trademark Office. The term of a new patent is 20 years from the date on which the application for the patent was filed in the United States or, in special cases, from the date an earlier related application was filed, subject to the payment of maintenance fees. U.S. patent grants are effective only within the U.S., U.S. territories and U.S. possessions.

The right conferred by the patent grant is, in the language of the statute and of the grant itself, the right to exclude others from making, using, offering for sale or selling the invention in the United States or importing the invention into the United States. What is granted is not the right to make, use, offer for sale, sell or import, but the right to exclude others from making, using, offering for sale, selling or importing the invention.

What is a trade secret?
A trade secret can be any information that derives independent economic value from not being generally known or readily ascertainable. Among the things that can be trade secrets are a formula, pattern, compilation, program, device, method, technique or process.

Among things courts have found to be "trade secrets" are machining processes, blueprints, and stock-picking formulae, customer lists, pricing information and non-public financial data. Even information such as overhead rates and profit margins that help define a price could potentially be found to be a trade secret even if the price itself is known.

Today, the value of a company's intangible assets exceed those of its tangible assets. Good will is established and managed by the company's public relations and customer service organizations. Branding is accomplished and maintained by the company's marketing communications and advertising departments. The intellectual property -- patents, trademarks, copyrights and trade secrets -- is managed by the company's legal department. Of these, patents, trademarks and copyrights are obtained through application to government agencies in the United States and other countries and defended by lawsuits against infringers.

Trade secrets are different from the other forms of intellectual property, in that the protection of trade secrets requires establishment and maintenance. In this way, trade secrets are more like good will and branding. Trade secrets require continuous effort in order to allow defense by lawsuits against infringers at a later time, rather than a single application and grant by a federal agency. It is no wonder, then, that the management of trade secrets is often poorly understood and poorly performed even in the best of companies. However, trade secret protection offers much broader scope than patents, trademarks or copyright. Trade secrets are eternal. They need not conform to any definition of patentable subject matter. They require no disclosure. They need not be novel or non-obvious, only useful. They protect the content as well as the expression. The only requirement is that trade secrets be kept secret.

How do I protect my trade secret?
Here are just a few of the procedures that you can use to protect the trade secrets in your business:

• Identify them with a stamp! It is important to clearly identify information on your trade secrets with a stamp or sticker.
• Insist that no one disclose your secrets! Everyone who comes in contact with your trade secrets need to be informed in writing that they should not disclose any information, or allow your trade secrets to be used for anyone else`s benefit without your written permission.
• Confidentiality and non-disclosure agreements provide a good way to impress upon others the need for confidentiality. These agreements should be used with everyone who is privy to your trade secret information including employees, vendors and others.
• Written policies to employees regarding the sensitivity of trade secrets is important. This can be of particular importance with sales people or anyone who presents company information to individuals on the outside. This should include specific guidelines on what information may or may not be disclosed at trade shows, professional meetings or any other speaking situations.
• Written policies restricting access! There should be restrictions, in writing, placed on employees and visitors who do not have an absolute need for access to your trade secrets. These policies should also address possible restricted access to entire areas of the business where trade secrets are kept, as well as the hours that these restrictions are in effect.
• Procedures for signing in & out! Along with restrictions on access, security can extend to implementing procedures for signing in & out of restricted areas, as well as checking out trade secret materials. Records of all sign-ins should be maintained for personnel accessing sensitive areas and for the materials they checkout. In addition, it may be in your best interest to maintain records on the users of copiers & computers, and restrict access by using passwords.
• Employee and visitor ID badges! In addition to restricting access to the trade secret materials themselves, their places of storage and their areas within the business, you can monitor all who inter the business itself by using employee and visitor ID badges and sign-in/sign-out procedures.
• Electronic security procedures offer additional protection with the use of door alarms, door lock timers and video cameras.