Patent It Yourself - PDF Archive

18 | Patent it YOURSELF
Having covered patent law earlier in this chapter, let’s
now wade a little deeper into the other forms of intellectual
property law, all of which are shown and briefly depicted in
Fig. 1C—The Intellectual Property Mandala, below.
* One must obtain a governmental certificate (patent or registration)
to enforce any offensive rights.
‡ Timing is crucial: application must be filed within one year after
public exposure.
Fig. 1C—The Intellectual Property Mandala
Many clients have come to me with an invention or idea,
asking if there were some easier and quicker way to protect
their invention than the seven methods discussed in the IP
mandala, above. Alas, I always have to disappoint them. I
have included in this chapter all of the IP techniques that
exist. There are no additional or secret weapons in the IP
arsenal, so you will have to work with what we have.
O. Trademarks
This is the most familiar branch of intellectual property
law. On a daily basis, everyone sees, uses, and makes many
decisions on the basis of trademarks. For instance, you
probably decided to purchase your car, your appliances, much of
the packaged food in your residence, your magazines, your
computer, and your watch on the basis of their trademarks, at
least to some extent. I believe that trademarks originated in
16th century Britain when silversmiths began putting their
initials on their products. Naturally, disreputable competitors
seeking to capitalize on a well-known silversmith’s reputation
soon came along and counterfeited the “trade mark” on
copycat silverware. Judges were called upon to punish and
stop the counterfeiters of the mark and lo, trademark law
was born!
1. Trademarks Defined
In its most literal meaning, a trademark is any word or
other symbol that is consistently attached to, or forms part
of, a product or its packaging to identify and distinguish
it from others in the marketplace. In other words, a
trademark is a brand name.
An example of a word trademark is Kodak, a brand of
camera. In addition to words, trademarks can be other symbols,
such as designs or logos (the Nike swoosh), sounds (the
NBC chimes), smells, and even colors. For example, the
PTO granted a trademark registration on a specific color
used for a line of dry-cleaning ironing pads. (Qualitex Co.
v. Jacobson Products Co., Inc., 115 S.Ct. 1300 (1995).) The
shape of an object (such as the truncated, contrasting,
conical top of Cross pens) can even be a trademark,
provided (1) the shape doesn’t provide a superior function,
and (2) the shape has become associated in the minds of
the purchasing public with the manufacturer (known in
trademark terms as “secondary meaning”).
Many patented goods or processes are also covered by
trademarks. For example, Xerox photocopiers have many
patents on their internal parts, and also are sold under the
well-known Xerox trademark. Without the patents, people
could copy the internal parts, but Xerox would still have a
monopoly on its valuable and widely recognized trademark.
The term “trademark” is also commonly used to mean
“service marks.” These are marks (words or other symbols)
that are associated with services offered in the marketplace.
Examples of service marks include the letters “NBC”
(broadcast network services), the Blue Cross–Blue Shield
emblem (medical/insurance services), and the words, Café
Gratitude (restaurant services).
Two other types of trademark are: “certification marks,”
the identifying symbols or names used by independent
groups, boards, or commissions that certify the quality of
goods or services—such as the Good Housekeeping Seal
of Approval; and “collective marks,” identifying symbols
or names showing membership in an organization—for
example, the FDIC symbol indicates that a bank is a
member of the government-insured banking network.
An important third category of business identifier that
is often confused with trademarks is called a “trade name.”
In the law, trade name is the word or words under which
a company does business, while a trademark is the word
or other symbol under which a company sells its products
or services. To understand this better, let’s use Procter &
Gamble as an example. The words Procter & Gamble are a