Trademark fair use is the use of another's trademark or service mark in manner that does not constitute trademark use. Trademark fair use is a defense to a claim of trademark infringement. Fair use does not qualify as infringement and is lawful. There are two main types: classic fair use and nominative fair use. This article explains trademark fair use and provides examples.
Trademark fair use is a legal principle that allows individuals or businesses to use another’s trademark without infringing the trademark owner’s rights, where the trademark is not used in the nature of a source identifier. There are two primary categories of trademark fair use. These are classic fair use and nominative fair use. Classic fair use occurs when a trademark is used descriptively, without implying that the trademark owner endorses or is affiliated with the user. Nominative fair use, on the other hand, permits the use of a trademark to identify the goods or services of the trademark owner when there is no other practical way to do so.
The Lanham Act forms the legal foundation for the fair use of trademarks, setting guidelines to prevent confusion about the source of goods or services while allowing certain uses of trademarks. Factors influencing fair use determinations include good faith, necessity of description, and potential consumer confusion. Trademark fair use is essential for fostering competition and innovation. It allows businesses to accurately describe their products, compare them to others, and provide consumers with valuable information. Without this doctrine, the marketplace would be stifled, and consumers would be deprived of critical information needed to make informed decisions.
Businesses should have a good understanding trademark fair use, as misunderstanding this concept can lead to legal missteps and litigation. The trademark fair use doctrine is not just a legal shield but a facilitator of free expression and informative commercial communications. The doctrine allows businesses engage in comparative advertising, and contribute to news stories without overstepping legal protections.
Trademark fair use is a legal doctrine that allows certain uses of trademarks without permission to prevent confusion about the source of goods or services. Classic fair use applies when a trademark is used descriptively, meaning it describes the user’s own products rather than indicating their source. This type of use is also known as descriptive fair use and is crucial for businesses to describe their goods or services accurately.
Nominative fair use permits the use of a trademark. This occurs when it is essential to identify the goods or services of the trademark owner. This type of fair use is particularly important when there is no other practical way to refer to a product or service without using the trademark. For example, using the term “iPhone” to describe a compatible accessory is often deemed nominative fair use.
Factors influencing fair use determinations include the necessity to describe goods, the potential for consumer confusion, and the good faith of the user. Understanding these factors helps businesses and individuals make informed decisions about the use of trademarks and navigate potential legal challenges.
Trademark fair use encompasses two primary categories: descriptive fair use and nominative fair use. Each type serves a unique purpose and has specific conditions under which it applies.
Understanding these types is essential for navigating the legal landscape and ensuring compliance with trademark law.
Descriptive fair use allows the use of a trademark to describe a user’s own products rather than indicating the source. This type of fair use is particularly relevant for descriptive trademarks, which include terms that describe a characteristic of the goods or services. For instance, the term “American Airlines” is descriptive of an airline service. Descriptive fair use permits the application of these terms to describe an airline providing service in America: Delta airlines is an American airline. The defense of descriptive fair use allows businesses to describe their products accurately without implying endorsement, thus providing a descriptive meaning to the terms used.
In King-Seeley Thermos Co. v. Aladdin Industries, Inc. (2d Cir. 1963), the term "thermos" to describe vacuum-insulated bottles. The court found that while "thermos" was originally a trademark, it had become genericized due to widespread public use. However, the court also recognized that consumers still associated the term with the original manufacturer, King-Seeley. To balance these interests, the court allowed competitors to use "thermos" descriptively, but only in lowercase and with modifiers to distinguish their products from the original Thermos brand. This case established the principle that trademarks can lose their exclusive status if they become generic, but that some limited descriptive use may still be permissible.
However, descriptive fair use comes with limitations. If the use of a descriptive term causes confusion among the public, fair use would no longer apply. Therefore, it is crucial for businesses to ensure that their use of descriptive trademarks does not mislead consumers about the source of the products. This balance is essential to maintain the integrity of the trademark while allowing descriptive use.
Moreover, descriptive fair use generally involves descriptive, geographically descriptive, and personal names. Fanciful and arbitrarily suggestive trademarks, which are inherently distinctive, do not fall under descriptive fair use and are protected against such uses.
Nominative fair use allows the use of another’s trademark. This is permissible when referring to the trademark owner’s goods and services under certain conditions. This type of fair use is particularly relevant when there is no other practical way to identify the product or service without using the trademark. For example, using the term “Lexus” to refer to a Lexus car in a review or advertisement is considered nominative fair use.
Nominative fair use qualifies if the use of the trademark meets certain criteria. Firstly, the product or service must not be readily identifiable without the use of the trademark. Secondly, only as much of the trademark as necessary should be used to identify the goods or services. Lastly, the use should not imply sponsorship or endorsement by the trademark holder or the trademark owner.
In New Kids on the Block v. News America Publishing, Inc. (9th Cir. 1992), News America Publishing conducting polling about the musical group News Kids on the Block (NKOTB). NKOTB sued for trademark infringement for the use of their name in the poll. The court found "nominative fair use", which allows the use of a trademark to identify a person, place, or thing in a factual manner without the use for trademark purposes. The court held that using the band's name in a poll about the band was permissible because there was no other way to refer to the band without using its trademarked name . This case is significant because it recognizes that some uses of trademarks are necessary for communication and should not be considered infringement.
Nominative fair use enables businesses and individuals to engage in comparative advertising, product reviews, reporting and journalism, and other forms of commentary without infringing on trademark rights. It helps maintain a balance between protecting trademark owners and allowing necessary uses of trademarks for identification and communication, including the nominative fair use defense.
Trademark fair use is relevant in various practical contexts, such as comparative advertising, product reviews, and parodies. These applications demonstrate how the principles of fair use support free speech, competition, and important consumer information.
Comparative advertising is a common example of trademark fair use. It allows businesses to use another’s trademark to compare products and highlight differences, benefiting consumers and the marketplace. Under trademark law, using another’s trademark for comparison in advertisements is permitted, provided it is done in good faith and does not mislead consumers.
Nominative fair use often occurs in comparative advertising when consumers recognize another’s trademark or else’s trademark upon identification. For instance, an advertisement comparing the features of two smartphones might use the trademarks of both brands to make the comparison clear and effective. However, it is essential to use only as much of the trademark as necessary to avoid implying endorsement or sponsorship.
While comparative advertising can be beneficial, it also carries risks. Claims of superiority must be substantiated to avoid legal problems, and any misleading comparisons can lead to disputes and potential trademark infringement claims. Therefore, businesses must exercise caution and ensure their comparative advertising is accurate and fair.
Product reviews and commentary are protected under nominative fair use, allowing the public to discuss, compare, and critique protected trademarks. Mentioning a brand name is often necessary to provide a meaningful review or comparison of goods or services. This type of fair use is crucial for consumers and media, as it enables informed decision-making and fosters transparency.
Parody and criticism fall under the umbrella of trademark fair use, provided they clearly indicate that the content is a joke and not an affiliated promotion. Parody uses humor or satire to comment on a trademark, and it must be evident to the audience that it is not an endorsement by the trademark owner.
For instance, a parody of a popular brand’s advertisement that humorously exaggerates its claims can be permissible under fair use, as long as it avoids misleading consumers about sponsorship. In the Jack Daniel’s Properties, Inc. v. VIP Products LLC case, the U.S. Supreme Court addressed the boundaries of parody as a defense under trademark law. VIP Products marketed a dog toy resembling Jack Daniel's whiskey bottle, substituting "Jack Daniel's" with "Bad Spaniels" and altering other label elements humorously. Jack Daniel's contended this infringed and diluted its trademarks. VIP Products countered, asserting First Amendment protection due to the parodic nature of the toy.
The Court unanimously ruled that when a trademark is employed to identify the source of the defendant's own goods—essentially using the trademark as a trademark—the First Amendment does not automatically shield such use from infringement claims. Consequently, the standard likelihood-of-confusion analysis under the Lanham Act applies, even for parodic expressions.
This decision delineates the limits of parody as a fair use defense in trademark law. While parody can serve as commentary or criticism, its protective scope is not absolute. The Court emphasized that the mere presence of humor or parody does not exempt a defendant from liability if the use confuses consumers regarding the source or sponsorship of goods. Therefore, entities employing another's trademark in a parodic context must ensure their use does not mislead consumers about the origin of the products to avoid infringement liability.
The concept of fair use is acknowledged globally, but its application varies by jurisdiction. While some regions may not label it as fair use, similar principles apply to allow certain uses of trademarks. Businesses and individuals must familiarize themselves with local trademark laws to navigate trademark usage effectively. Common law jurisdictions, such as the United States, employ fair use principles in trademark cases, allowing certain usages of marks. However, the subjective nature of fair use means that interpretations can vary across different legal contexts, making it essential to understand the specific requirements of each jurisdiction.
Companies operating internationally must be particularly careful, as what is considered fair use in one country might not be legally allowed in another. Staying informed about local laws and regulations is crucial to avoid legal disputes and ensure compliance.
For businesses, understanding trademark fair use is vital to safeguard their brands and avoid unintentional infringements. Companies should educate stakeholders about trademark rights and monitor how trademarks are used, especially in digital spaces like social media and e-commerce. This proactive approach can significantly reduce the risk of infringement.
Additionally, businesses should stay informed about changes in trademark laws as they can impact operations and compliance. Avoiding the use of widely recognized descriptive trademarks that may lead to confusion is also essential. By navigating trademark fair use carefully, businesses can protect their intellectual property and operate within legal boundaries.
Asserting fair use comes with potential risks and challenges. Trademark owners may challenge the legitimacy of the fair use claim, leading to litigation risks. Engaging in comparative advertising using fair use can result in legal disputes if the comparison is seen as misleading or unfair. Therefore, businesses must carefully apply fair use principles accurately to avoid trademark infringement claims, which can have significant financial consequences.
Consulting an trademark attorney is essential to assess cases and ensure proper application of fair use. If you’re unsure whether your use of a trademark qualifies as fair use, an attorney can provide clarity and guidance. They can also assist in responding to cease-and-desist letters and handling any legal disputes.
Legal counsel is crucial for businesses and individuals facing challenges or disputes regarding trademark usage. An attorney can help you understand your rights and obligations, ensuring that your actions are legally sound and protect your interests.
Trademark fair use is a complex yet essential concept for businesses and individuals. Understanding its types, applications, and legal framework can help navigate potential legal challenges and support fair competition. By applying fair use principles correctly, businesses can describe their products accurately, engage in comparative advertising, and contribute to informative discourse without infringing on trademark rights.
Staying informed and consulting with legal experts can ensure that your use of trademarks remains within legal boundaries.
© 2025 Sierra IP Law, PC. The information provided herein does not constitute legal advice, but merely conveys general information that may be beneficial to the public, and should not be viewed as a substitute for legal consultation in a particular case.
Prior art is evidence that an invention was publicly known before the filing date of a patent application. It can be in many forms, such as existing patents, written publications, videos, and other forms of public disclosure. Prior art matters because if it is sufficiently similar to an invention, it can render the invention unpatentable. Grasping the concept of what is prior art is and how it affects patentability is essential for understanding what can be patented. This article will explore various types of prior art and the role of prior art in the patent examination process.
To truly grasp the significance of prior art, we must first define it under U.S. law. According to federal statute 35 U.S.C. § 102, as amended by the America Invents Act, prior art encompasses any evidence that an invention was known or available to the public before the effective filing date of a patent application. Any public disclosure of the invention before the filing date can challenge its originality, novelty, and patentability.
The timing of public disclosure is crucial. For a public disclosure to qualify as prior art, it must have been disclosed or available to the public before the filing date of a patent application. Information disclosed after this date does not qualify as prior art. This emphasizes the importance of filing a patent application promptly to avoid potential conflicts with third party disclosures. In other words, you want to beat competitors and other parties to the punch. However, in the case of a previously filed patent application, it may qualify as prior art even if it is not publicly available. The prior filed application can still qualify as prior art if it was filed before the new application.
Prior art is the basis upon which the United States Patent and Trademark Office determines patentability. There are two analyses that the patent office conducts in view of the prior art: whether the claimed invention is novel and whether the claimed invention is non-obvious. The novelty and non-obvious requirements are discussed below.
Under U.S. patent law, the novelty requirement ensures that an invention is new and has not been disclosed in prior art before the patent application’s filing date. This requirement is codified in 35 U.S.C. § 102, which outlines the conditions under which an invention is considered novel.
An invention lacks novelty if it is anticipated by a single prior art reference, meaning every element of the claimed invention is disclosed, either explicitly or inherently, in that reference. The all-elements rule for anticipation under U.S. patent law requires that a single prior art reference disclose each and every element of a claimed invention to invalidate the claim for lack of novelty. If even one claimed element is missing from the reference, the claim is not anticipated. The rule is grounded in the principle that anticipation requires the invention to have been fully disclosed in a single reference so that it is not truly "new". This rule generally applies in other national patent offices as well.
Section 102 changed between pre-AIA (America Invents Act) and post-AIA frameworks. Under the pre-AIA framework, novelty is determined based on whether the invention was known, used, or described in a printed publication or patented in the U.S. or abroad before the date of invention. However, the AIA, effective March 16, 2013, shifted US patent law to a "first inventor to file" system, where the relevant date is the filing date rather than the invention date. The US is thus a first-to-file system and prior art is evaluated based on whether it pre-dates the earliest filing date of the patent application.
The non-obviousness requirement under U.S. patent law ensures that an invention is not only new but also represents a meaningful technical advance that would not have been obvious to a person of ordinary skill in the art at the time the patent application was filed. This requirement is codified in 35 U.S.C. § 103, which states that a patent cannot be obtained if the differences between the claimed invention and prior art would have been obvious to someone skilled in the relevant field.
The landmark case Graham v. John Deere Co., 383 U.S. 1 (1966), established the framework for evaluating non-obviousness, known as the Graham factors. These include: (1) determining the scope and content of the prior art, (2) assessing the differences between the prior art and the claimed invention, (3) understanding the level of ordinary skill in the art, and (4) considering secondary factors such as commercial success, long-felt but unresolved needs, and failure of others.
In KSR International Co. v. Teleflex Inc., 550 U.S. 398 (2007), the Supreme Court emphasized a flexible approach to obviousness, in which the Court emphasized that a combination of prior art references or the knowledge of one of ordinary skill in the may render an invention obvious if there is some articulated reason or motivation to make such a combination that existed prior to the filing date of the application.
Non-obviousness serves to prevent patents on trivial or routine improvements, ensuring that the patent system rewards only innovations that include a genuine inventive step while maintaining a competitive market for incremental advancements easily within the grasp of skilled practitioners.
Prior art encompasses various forms of information relevant to the patentability of an invention. It is not limited to existing patents and products. Beyond existing patents, prior art can include public disclosures, scientific papers, technical journals, and any other forms of literature that provide relevant information before the filing date of a patent application. Identifying prior art from this wide array of sources can be complex and painstaking. To find the relevant prior art, a diversity of sources must be searched.
Printed publications are prior art under 35 USC 102(a)(1). Specifically, a person is not entitled to a patent if the claimed invention was described in a printed publication of any kind (e.g., a patent, journal article, blog post, product description on a website, etc.), or in public use (e.g., a device used in an open or public manner by the inventor), on sale (e.g., a product that is available to the public), or otherwise available to the public before the effective filing date of the claimed invention. Printed publications must be publicly accessible, such as being indexed in a library or available online, to qualify as prior art under § 102(a)(1).
Previously filed patents and published applications qualify as printed publications under 35 USC 102(a)(1). They are reliable references for the state of the art at the time of filing and are typically the primary source of prior art for the patent office in the patent examination purposes.
Under 35 USC 102(a)(2), issued patents and published applications are considered prior art if they existed before the effective filing date of a new invention. Thus, there are situations where material that was unpublished at the time your patent application is filed that can serve as prior art to your invention. Thus, prior art searches cannot be certain to uncover all relevant prior art. However, it is still of great importance to conduct a thorough prior art search prior to filing a new application.
Non-patent literature, such as scientific papers, articles, and technical journals, are also prior art if they are sufficiently thorough and complete in describing the invention. If publicly accessible and providing relevant information before the filing date, these documents can serve as prior art. This type of literature must be searched for and considered in assessing the patentability of an invention.
Various forms of non-patent literature, including research articles and technical papers, can significantly impact the patentability of an invention. By providing a wealth of information on existing technologies and innovations, these documents can help patent examiners determine whether a new invention is truly patentable.
Public disclosures, such as presentations at trade shows, conferences, and other public events, can be deemed prior art if they disclose an invention to the public before the filing date of a patent application. Any public presentation, lecture, or event revealing the invention can impact its patentability.
These public disclosures can significantly affect the assessment of originality of an invention claimed in a patent application. By making information publicly accessible, such disclosures provide a basis for patent examiners to compare the claimed invention against existing knowledge and determine its novelty and non-obviousness.
A sale of an invention prior to filing a patent application can create prior art, barring patentability under 35 U.S.C. § 102(a)(1). An invention offered for sale by a third party prior to the filing of the application or by the applicant more than one year before the application filing date is considered prior art.
Although many types of information can be considered prior art, some categories do not qualify. Non-enabling publications, for instance, cannot be classified as prior art if they do not provide sufficient description of the invention to enable someone of ordinary skill in the relevant field to replicate the invention. In other words, vague or incomplete disclosures are not considered prior art.
Unpublished patent applications, trade secrets, and publications that are not accessible to the public at the time of filing are not considered prior art because they remain undisclosed and unavailable for public scrutiny. Understanding what is not considered prior art is just as important as knowing what is.
There are also exceptions to what would otherwise be considered prior art. For instance, under 35 U.S.C. § 102(b) certain disclosures are not deemed prior art if the subject matter disclosed was obtained directly or indirectly from the inventor or if subject matter disclosed by a third party had previously been publicly disclosed by the inventor before the effective filing date.
A thorough prior art search is crucial for identifying existing inventions that may affect the novelty of a new patent application. This process involves systematically searching through various sources of prior art to ensure that the invention is truly novel and non-obvious.
Structured approaches and effective strategies can significantly increase an inventor’s chances of securing granted patents. A patent search can also identify potential patent infringement issues that should be considered before pursuing a patent and providing a new product or service.
Patent databases like USPTO enable efficient searches of both issued patents and pending applications. The USPTO’s Patent Public Search tool offers a tool to access US Patent prior art. Other publicly available tools, such as Google Patents, Espacenet, and Free Patents Online can also be used to search for patent documents. Utilizing patent citation data can enhance searches by connecting related patents and identifying previously referenced prior art. Additionally, Global Dossier tools provide access to file histories of related applications across international patent offices, offering a more in-depth understanding of prior art and its implications.
Patent attorneys, with their expertise in navigating complex patent databases, can advise on search strategy. Their knowledge and experience ensure thorough and effective patent searches, providing a solid foundation for the patent application process. Comprehensive prior art searches require refined search techniques. Experienced patent attorneys thoroughly understand the patent search databases offered by the USPTO, EPO, and others and are adept at using them.
Patent attorneys can help ensure that the pertinent prior art is identified and accounted for in the patent application process. They can enhance the quality of the prior art search and provide expert analysis of the findings, ensuring thorough and effective searches. Attorney analysis of the search results can provide valuable insights into the patentability of an invention.
Patent examiners use prior art as a reference point to evaluate the claims of an invention against established knowledge and technology. The examination process compares the claimed invention in a patent application with relevant prior art to determine if the invention is novel or previously disclosed. This ensures that the invention meets the legal requirements for patentability, including novelty and non-obviousness.
The examiner's process includes finding prior art in the same field covering related technologies and comparing this prior art to the claimed invention to determine whether one of ordinary skill in the relevant art would find the invention novel and non-obvious. The patentability of the invention depends on the degree of difference from existing art. This process underscores the importance of a thorough prior art search to identify potential prior art problems and assess the patentability of the invention before the examiner conducts their search and analysis.
Mitigating risks associated with prior art is essential for successful patent applications. Conducting early searches, continuous monitoring, and effective disclosure management can significantly enhance the chances of securing a patent and protecting intellectual property.
Conducting prior art searches early helps identify potential obstacles to patentability before significant time and resources are invested in development. An effective prior art search requires a systematic approach, including identifying relevant databases and keywords.
Consulting with a patent attorney can provide valuable insights and expertise to ensure that prior art searches are thorough and effective. Their knowledge of patent law and search techniques can help uncover potential conflicts and guide inventors towards successful patent applications.
Continuous monitoring of new publications and patents can keep you competitive and informed. Patent databases and online alerts efficiently track relevant patents and publications, ensuring inventors stay aware of new developments that may affect their inventions.
Routine checks of academic journals, patent databases, and industry news can result in more informed decision-making and provide a competitive edge in the market.
Managing public disclosures properly is vital to maintain the potential for patentability in future applications. Strategic management of public disclosures protects the patentability of inventions by minimizing unintentional prior art creation by disclosure of your own technology. Once you disclose your own invention in a public manner, there is a 12-month grace period in the US for filing a patent application for the invention. If you fail to file within that 12-month grace period, your invention becomes public domain and can be practiced by anyone without a license or permission. In some other countries, the grace period is shorter or there may be no grace period at all. Also, premature sharing of ideas that evolve into an invention could compromise patentability of that invention. You need a confidentiality process and policy to avoid unintentional disclosures that may affect the patentability of your inventions down the road.
It is critical for innovators to understand prior art and how it factors into the patentability of an invention. If you are an inventor or you have a business that is actively innovating, you need to be aware of the role of prior art. If you need assistance with assessing the patentability of an innovation or any other patent matter, contact our office for a free consultation.
© 2025 Sierra IP Law, PC. The information provided herein does not constitute legal advice, but merely conveys general information that may be beneficial to the public, and should not be viewed as a substitute for legal consultation in a particular case.
The "public domain" is a fundamental concept in copyright law, referring to the body of works that are not protected by copyright and, as a result, are freely available for anyone to use without permission or the need to pay royalties. Works in the public domain can be reproduced, adapted, and distributed without restriction, thereby fostering creativity and innovation. However, before you start using old, famous literary, audiovisual, and visual works of art, you should understand the applicable copyright law, which will vary depending on when a work is created and published.
Federal copyright law protects a work from the moment it is created and fixed in a tangible form, such as paper, recording, or digital photograph. The length of copyright protection depends on factors like the author’s life and the type of work. For most works, copyright lasts for the life of the author plus 70 years. Once the copyright term expires, the work enters the public domain, allowing anyone to use it without permission from the author. Copyright protection can be formally secured through registration with the copyright office, which provides additional legal benefits. It’s important to note that copyright laws vary by country, so understanding copyright protection is essential for both creators and users to navigate their rights and responsibilities effectively. Proper awareness ensures compliance with copyright laws and supports the lawful sharing and use of creative works.
Categories of material that are not eligible for federal copyright protection include ideas and facts, works with expired copyrights, and works with no original authorship. U.S. government works are generally not eligible for federal copyright protection unless written by non-government authors under federal funding or produced by state governments. Scientific principles, theorems, mathematical formulae, laws of nature, and research methodologies are also excluded from copyright protection. Copyright law does not protect titles of books or movies, short phrases, facts, ideas, or theories. Similarly, words, names, numbers, symbols, signs, rules of grammar and diction, and punctuation cannot be copyrighted. Public domain works, such as public domain images, sound recordings, and other creative materials, become immediately accessible for unrestricted use. These exclusions ensure that fundamental tools for creativity and knowledge remain accessible, fostering innovation and public benefit. Let me know if further refinements are needed.
A copyrighted work may enter the public domain in the following ways:
Unpublished works created, but not published before January 1, 1978, are subject to special transitional rules:
When a work is dedicated to the public domain, it is free for anyone to use, but this process is rare and requires express authorization. Dedication occurs when a copyright owner relinquishes all rights to the work, allowing unrestricted use by the public.
Only the copyright owner—not necessarily the creator—can dedicate a work to the public domain. This distinction matters because creators who have transferred their copyright to another party, such as a publisher, may lack the authority to make such a dedication.
To dedicate a work, the copyright owner must take clear and intentional steps, such as issuing a formal statement, providing an explicit notice on the work indicating it is public domain, or using tools like Creative Commons Zero (CC0). These tools enable the owner to waive all copyright claims, affirming the public domain status of the work.
If you encounter a work claimed to be in the public domain by dedication, it is crucial to verify the dedication with the copyright owner. Documentation or explicit confirmation ensures that the dedication is valid and legally enforceable. Once a work is confirmed as dedicated to the public domain, it can be freely used without permission. However, proper diligence in verifying the dedication protects against inadvertent infringement.
Determining whether a work is in the public domain requires examining its publication date and adherence to statutory formalities. The Sonny Bono Copyright Term Extension Act of 1998 significantly impacted the length of copyright terms for works under the Copyright Act of 1909.
The Sonny Bono Act extended copyright terms by 20 years, meaning many works that would have entered the public domain earlier are still under copyright. For example, works published in 1929 were protected until the end of 2024. Understanding these complexities ensures proper use of public domain materials.
Each year, works whose copyrights have expired enter the public domain. This process allows the public to freely access and use classic literature, music, films, and more. Below are some notable examples for 2024 and 2025:
Several notable works from 1928 lost their copyright protection in the United States on January 1, 2024.
Literature
Title | Author/Creator | Type of Work | Brief Description |
---|---|---|---|
The House at Pooh Corner | A. A. Milne | Children's Book | This heartwarming story continues the adventures of Winnie-the-Pooh and his friends in the Hundred Acre Wood, with the introduction of the bouncy Tigger. The narrative, filled with gentle humor and charming illustrations by E.H. Shepard, explores themes of friendship, kindness, and the simple joys of childhood. |
Peter Pan; or, the Boy Who Wouldn't Grow Up | J. M. Barrie | Play | This timeless tale of Peter Pan, a boy who refuses to grow up, and his adventures in Neverland with the Darling children has captivated audiences for over a century. The play, first performed in 1904, explores themes of childhood, imagination, and the conflict between innocence and adulthood. It has been adapted numerous times for stage and screen, including a 1911 novel titled Peter and Wendy. |
The Threepenny Opera | Bertolt Brecht and Kurt Weill | Play | A groundbreaking musical play that offers a satirical critique of capitalism and societal norms, The Threepenny Opera features memorable songs like "Mack the Knife" and has had a lasting impact on musical theater. |
The Well of Loneliness | Radclyffe Hall | Novel | A groundbreaking and controversial work for its time, The Well of Loneliness explores lesbian themes and relationships with unprecedented frankness. Published in 1928, the novel faced censorship and legal challenges due to its depiction of same-sex love. |
Decline and Fall | Evelyn Waugh | Novel | This satirical novel, marking Waugh's debut, offers a witty and often biting critique of English society in the 1920s. The story follows the misadventures of Paul Pennyfeather, an innocent student expelled from Oxford and thrust into a world of eccentric characters and absurd situations. |
Millions of Cats | Wanda Gág | Children's Picture Book | One of the oldest American picture books still in print, Millions of Cats tells the enchanting story of a very old man who sets out to find a cat and ends up with millions of them. With its simple text and charming illustrations, the book has delighted generations of children. |
West-Running Brook | Robert Frost | Poetry Collection | This collection showcases Robert Frost's mastery of language and his profound reflections on nature, humanity, and the passage of time. The poems explore themes of rural life, the beauty of the natural world, and the complexities of human relationships. |
The Front Page | Ben Hecht and Charles MacArthur | Play | A fast-paced and cynical portrayal of the world of reporters and editors in 1920s Chicago, The Front Page is a classic of American journalism. The play, known for its witty dialogue and colorful characters, captures the energy and corruption of the newspaper industry. |
Tarzan, Lord of the Jungle | Edgar Rice Burroughs | Adventure Novel | This thrilling adventure novel introduced the iconic character of Tarzan, a man raised by apes in the African jungle. Tarzan's story, filled with action and exotic locales, has spawned numerous sequels, film adaptations, and other media. |
Coming of Age in Samoa: A Psychological Study of Primitive Youth for Western Civilization | Margaret Mead | Anthropological Study | This influential anthropological study challenged traditional Western views of adolescence and sexuality. Mead's research in Samoa suggested that adolescence was not inherently a period of turmoil and that cultural factors played a significant role in shaping adolescent experiences. |
The Missing Chums, Hunting for Hidden Gold, and The Shore Road Mystery | Franklin W. Dixon | Children's Novels (The Hardy Boys series) | These early installments in the popular Hardy Boys series introduced the young detective brothers Frank and Joe Hardy. The books, filled with mystery and adventure, have entertained generations of young readers. |
The Trumpeter of Krakow | Eric P. Kelly | Children's Historical Novel | Set in medieval Poland, The Trumpeter of Krakow tells the story of a young trumpeter who plays a crucial role in defending the city of Krakow. The novel combines historical detail with adventure and suspense. |
Lady Chatterley's Lover | D.H. Lawrence | Novel | A controversial novel exploring the physical and emotional relationship between a working-class man and an upper-class woman, Lady Chatterley's Lover was banned for many years due to its explicit content. |
Audiovisual Works
Steamboat Willie | Walt Disney and Ub Iwerks | Cartoon | The first Mickey Mouse cartoon with synchronized sound, this animated short film marked a turning point in animation history and launched the iconic character of Mickey Mouse. |
Plane Crazy | Walt Disney and Ub Iwerks | Cartoon | The first Mickey Mouse cartoon ever produced, though released later than Steamboat Willie, this silent film features Mickey and Minnie Mouse in a slapstick airplane adventure. |
Music
Title | Author/Creator | Type of Work | Brief Description |
Animal Crackers | Bert Kalmar and Harry Ruby | Musical | This musical, starring the Marx Brothers, is a hilarious and entertaining spectacle. The show features witty dialogue, slapstick comedy, and memorable songs by Kalmar and Ruby. |
Mack the Knife | Bertolt Brecht (lyrics) and Kurt Weill (music) | Song (from The Threepenny Opera) | This iconic song from The Threepenny Opera has become a standard in the world of music. Its cynical lyrics and memorable melody have made it a popular choice for singers and musicians across various genres. |
Let's Do It (Let's Fall in Love) | Cole Porter | Song (from the musical Paris) | This classic Cole Porter song is known for its playful lyrics and sophisticated melody. The song's suggestive wordplay and catchy tune have made it a timeless favorite. |
Sonny Boy | George Gard DeSylva, Lew Brown & Ray Henderson | Song (from the film The Singing Fool) | This popular song from the early days of sound film was a major hit for Al Jolson. The song's sentimental lyrics and Jolson's emotive performance resonated with audiences at the time. |
When You're Smiling | Mark Fisher and Joe Goodwin (lyrics) and Larry Shay (music) | Song | This cheerful and optimistic song has become a standard and has been recorded by many artists. Its simple message of finding joy in life has made it an enduring favorite. |
Empty Bed Blues | J. C. Johnson | Song | This blues song deals with themes of loneliness and lost love. The song's melancholic melody and heartfelt lyrics capture the pain of heartbreak. |
Sound Recordings
Title | Author/Creator | Type of Work | Brief Description |
---|---|---|---|
Downhearted Blues | Bessie Smith and the Tennessee Ten | Sound Recording | This influential blues recording helped establish Bessie Smith as a major figure in the genre. It was a significant commercial success, selling millions of copies and showcasing Smith's powerful vocals and emotional delivery. |
Bambalina | Ray Miller Orchestra | Sound Recording | This recording captures the vibrant jazz scene of the 1920s. The Ray Miller Orchestra's performance showcases the energy and improvisational spirit of early jazz music. |
Charleston | James P. Johnson | Sound Recording | This recording features a classic example of the Charleston, a popular dance craze of the 1920s. James P. Johnson's piano playing captures the lively rhythm and syncopated beat of the Charleston. |
Dipper Mouth Blues | King Oliver's Creole Jazz Band, featuring Louis Armstrong | Sound Recording | This influential jazz recording showcases the talents of Louis Armstrong and King Oliver. The recording features Armstrong's innovative trumpet playing and Oliver's distinctive cornet style. |
Down South Blues | Hannah Sylvester and The Virginians | Sound Recording | This recording is a notable example of early blues music. Hannah Sylvester's vocal performance and the accompanying musicians capture the raw emotion and soulful expression of the blues. |
Froggie More | King Oliver's Creole Jazz Band, featuring Louis Armstrong | Sound Recording | Another significant jazz recording from King Oliver's Creole Jazz Band. This recording further demonstrates the band's musical talent and their contribution to the development of jazz. |
Lawdy, Lawdy Blues | Ida Cox | Sound Recording | This recording features a powerful vocal performance by blues singer Ida Cox. Cox's expressive voice and the song's emotional lyrics convey the hardships and resilience of Black life in the early 20th century. |
On January 1, 2025, works published in 1929 joined the public domain in the United States.
Literature
Title | Author/Creator | Type of Work | Brief Description |
A Farewell to Arms | Ernest Hemingway | Novel | Set during World War I, A Farewell to Arms tells the story of an American ambulance driver, Frederic Henry, and his passionate love affair with an English nurse, Catherine Barkley. Hemingway's concise prose and poignant depiction of war and love have made this novel an enduring classic. |
The Sound and the Fury | William Faulkner | Novel | Considered one of Faulkner's most challenging and rewarding works, The Sound and the Fury portrays the decline of the Compson family through the fragmented perspectives of its four children. The novel's experimental use of stream-of-consciousness and its exploration of themes of time, memory, and loss make it a landmark of modernist literature. |
Seven Dials Mystery | Agatha Christie | Mystery Novel | In this classic whodunit, Lady Eileen "Bundle" Brent, a young aristocrat with a knack for solving mysteries, finds herself entangled in a web of intrigue involving a series of murders and a secret society known as the Seven Dials. |
All Quiet on the Western Front (first English translation) | Erich Maria Remarque (author) and Arthur Wesley Wheen (translator) | Novel | This powerful anti-war novel, originally published in German in 1928, offers a harrowing depiction of the horrors of World War I from the perspective of young German soldiers. The first English translation, by Arthur Wesley Wheen, became a bestseller and played a crucial role in shaping public perception of the war. |
Rope | Patrick Hamilton | Crime Thriller Novel | This suspenseful novel revolves around two Oxford students who commit a murder and then host a dinner party with the victim's body hidden in a chest. The novel explores themes of morality, guilt, and the psychology of crime. |
A Room of One's Own | Virginia Woolf | Essay | This extended essay, first published in 1929, is a feminist landmark that explores the challenges faced by women writers throughout history. Woolf argues that women need financial independence and a "room of one's own" to achieve their full creative potential. |
Comics
Title | Author/Creator | Type of Work | Brief Description |
---|---|---|---|
Popeye the Sailor | E. C. Segar | Comic Strip Character | Popeye the Sailor, the spinach-loving, one-eyed sailor man, first appeared in the comic strip "Thimble Theatre" in 1929. Known for his superhuman strength, quirky humor, and his love for Olive Oyl, Popeye has become a pop culture icon. |
The works listed above entered the public domain because their copyright protection has expired. In the United States, copyright law has evolved over time, and different rules apply to different types of works.
For works published or registered before 1978, the term of copyright generally lasts for 95 years from the date of publication. This is why works published in 1928 entered the public domain on January 1, 2024, and works published in 1929 entered on January 1, 2025.
However, sound recordings have different copyright rules. Audio recordings have a 100-year copyright term, compared to the 95 years for film, literature, and written musical compositions. Thus works published in 1924 expired at the start of 2025.
Furthermore, there are special cases for copyright expiry, particularly for works first published outside the U.S. These include unpublished works, works by foreign nationals, and works with specific publication conditions. These cases often involve complex legal considerations and may have different copyright durations.
The extension of copyright terms, such as those mandated by the Sonny Bono Copyright Term Extension Act of 1998 (also known as the "Mickey Mouse Protection Act"), delayed many works from entering the public domain. This act extended copyright terms for works created after 1978 to the author's lifetime plus 70 years (up from 50 years), and for works created before 1978 to a total of 95 years. This act aligned U.S. law with European standards and responding to lobbying by industries reliant on long-term copyright protections, such as film and music.
For example, "Steamboat Willie" would have entered the public domain in 2004 under the previous law but was delayed until 2024 due to this extension. While copyright extensions protect the interests of creators and their heirs, they also postpone the cultural and creative benefits of public domain availability.
Public domain works are a valuable resource, as they can be used without permission or paying royalties. These works, free from copyright restrictions, can serve as the foundation for new creative endeavors and can be quoted extensively in various projects. Educators, for instance, can copy and distribute public domain works to classes or place them on course web pages without seeking permission or incurring royalty fees. Additionally, public domain works can be leveraged for commercial purposes, offering entrepreneurs and creators a wealth of material to incorporate into products and services.
However, while public domain material itself is free to use, it's essential to verify its public domain status before use. Compilations of public domain works may still be protected by copyright as “collective works,” meaning that copying and distributing an entire collection could infringe on the copyright of the compilation’s arrangement or curation. Users should exercise caution to ensure their use of such collections respects any existing copyright protections. By understanding these nuances, creators and educators can effectively utilize public domain resources while respecting copyright law.
To ensure compliance, always use reputable sources to confirm the public domain status of a work. Be mindful of copyright laws and regulations in your country, as rules can vary widely. While public domain material is free to use, collections of public domain works may be protected under copyright as “collective works.” Copying and distributing an entire collection without authorization could infringe on the collection’s copyright, even if the individual works are not protected.
Finally, when using public domain works, act responsibly by giving credit to original creators whenever possible, promoting ethical use of these cultural treasures.
Derivative works are new creations based on public domain works, and they can be protected by copyright law. These works may include adaptations, sequels, or reinterpretations of existing public domain content. For example, an updated film adaptation of a public domain novel could qualify as a derivative work. If you create any derivative work, consider registering your work with the copyright office to secure copyright protection. Copyright registration provides many advantages and protections against unauthorized use of your derivative work. Derivative works are worthy of protection against copyright infringement.
The copyright owner of a derivative work is granted exclusive rights to reproduce, distribute, and display their unique contributions to the original material. However, this protection only applies to the new creative elements added by the author, not the underlying public domain work itself.
Derivative works play a crucial role in enriching the cultural landscape by breathing new life into public domain works. Through reinterpretation and adaptation, creators can engage modern audiences while contributing innovative ideas to the artistic and literary world.
As copyright terms expire, each new year brings a fresh infusion of artistic and intellectual treasures for the public to enjoy and reinterpret. Understanding the dynamics of copyright and the public domain empowers creators, scholars, and enthusiasts to leverage these resources responsibly and innovatively. If you need assistance with evaluating works for their public domain status, need assistance with pursuing copyright registration, or need assistance with other issues related to copyrights, please contact our office for a free consultation.
© 2025 Sierra IP Law, PC. The information provided herein does not constitute legal advice, but merely conveys general information that may be beneficial to the public, and should not be viewed as a substitute for legal consultation in a particular case.
Need to protect your business name or logo within California? This article outlines the California state trademark registration process, including its legal framework, benefits, and the steps required to successfully protect your trademark rights. It also highlights practical considerations, such as conducting a thorough search, selecting the correct classification, and handling the registration process. Whether you’re a new entrepreneur or an established business, understanding state trademarks is necessary to enable you to protect your business and brand.
Trademarks are a form of intellectual property that protects the source of a particular good or service from imitators that would either intentionally or unknowingly trade on the reputation associated with the source of goods or services (the trademark owner). A California state trademark is specifically designed for local businesses that operate solely within the state. Unlike federal trademarks, which provide nationwide protection, California state trademarks are limited to the geographical boundaries of California. This type of trademark serves as a powerful tool for identifying and distinguishing products or services within the local market.
Registering a California trademark offers significant legal protections against unauthorized use by competitors within the state. For many California businesses, especially those that focus on local commerce, state trademarks provide a cost-effective way to secure their brand identity.
Moreover, the California Trademark Unit manages registrations for specific types of trademarks, including container brands and estate names, ensuring a tailored approach for different business needs. While state trademarks are not as far-reaching as federal trademarks, they still offer robust protections and can be a crucial asset for businesses operating within California.
The legal framework for California state trademarks is outlined in the Model State Trademark Law under California Business and Professions Code Sections 14200-14272. These laws provide the foundation for trademark rights and protections within the state. While rights to a trademark arise from its use in commerce, registering the trademark is governed by the CBP code, which provides additional legal protections and formal recognition.
Registering a California state trademark comes with a host of benefits that can significantly impact your business. The costs are lower. With a state registration fee paid to the California Secretary of State's office is $70, considerably less than the approximately $350 filing fee for federal registration. There is also a simpler application process than at the federal level. The application is examined by the California Trademark Unit for formalities, such as descriptiveness, specimen of use, and properly identified goods. There is no in-depth search for confusingly similar marks. If the exact mark is not previously registered with the state, then it is very likely that you will be able to register the mark if the formal requirements are met. Thus, if you have engaged a trademark attorney to handle the application, the attorney's fees will be significantly less for a California trademark application because there is generally less to do in the examination process. The process of state trademark registration is straightforward and less cumbersome compared to the federal registration process, making it a lower cost option for businesses focused on local commerce.
The registration process for a California trademark is generally faster than for federal trademarks. Often completed within weeks, this quicker turnaround means businesses can secure their trademarks and start reaping the benefits much sooner. Once registered, your trademark becomes a matter of public record, enhancing your brand’s visibility, and providing a formal record of your claim of ownership.
Another significant benefit is the exclusive rights to use the trademark within California. This exclusivity helps prevent competitors within the state from using similar marks, thereby protecting your brand’s identity and market position.
Registering a California state trademark involves several steps, including conducting a thorough trademark search, preparing a proper specimen of use, correctly identifying the classification of goods, and correctly filling out and submitting the application forms to the California Secretary of State. Each of these steps is essential for successfully registering a trademark in California, which are discussed in more detail below.
Before you can register a trademark in California, it is important to conduct a thorough trademark search. This step ensures that your proposed trademark is not confusing to other similar trademarks registered with the United States Patent and Trademark Office (USPTO) or that are otherwise in use by third parties and thus does not infringe on the rights of others. It is not enough to simply use the California Secretary of State’s trademark search tool. This only tells you whether your mark has been registered with the state. Most registered trademarks and service marks in use in California are either federally registered or unregistered. In order to avoid potential conflicts, your trademark search needs to be broader than just the California state trademark search tool. We recommend seeking the assistance of an experienced trademark attorney to properly vet your trademark or service mark before you file a trademark application. You do not want to waste your funds on an application that is invalid and that creates a public record that you are engaging in trademark infringement.
Selecting the correct classification is absolutely necessary for the registration process. Trademarks are categorized based on the goods or services on which they are used. A trademark protects goods, whereas a service mark is specifically designed to protect services. Goods and services are classified separately based on their relatedness. There are 45 classifications set by the United States Patent and Trademark Office that the Secretary of State's office has adopted. If you mark is used on different types of goods and/or services, your trademark application may include multiple classifications. Choosing the wrong class can result in the inability to register your trademark. Each classification for which you seek registration comes with a $70 filing fee. Carefully reviewing the classifications and selecting the one that best fits your business’s goods or services is critical.
Preparing your California trademark application involves several key steps. The primary form used for this process is the TM-100. You must have begun use of your trademark before you can seek a trademark registration in California. California Business Professions Code Section 14207 requires that a trademark must be in use and a specimen of such use must be submitted in the application before a California trademark registration can be issued. This contrasts with the federal trademark registration process, in which you can file an intent-to-use application if you a bona fide intent to use trademark or service mark in the future.
The specimen of use is required to demonstrate how the trademark is being used. This can include photos of the product, marketing materials, or screenshots of your website. Your application may need a particular type of specimen depending on the nature of your goods or services.
There are a number of other formal requirements in the application, including the date on which actual use of the trademark began, the designated owner of the mark (you personally or your business entity), and a declaration that the applicant is the owner and that the applicant is not aware of any third party that has a registered mark or the right to use a mark that is confusingly similar to the applied-for mark. You must provide accurate details about your trademark and declare the truthfulness of this information under the risk of criminal penalties for false statements under the California Business and Professions code.
Once your application is prepared, you can file it with the secretary of state’s office. This can be done online through the California Secretary of State Bizfile Portal, in person at the Sacramento office of the Secretary of State, or by mail. The date of receipt of your application establishes its priority as of the date and time of the submission, so timely submission is crucial.
Declaring the accuracy of your application details is important, as false statements can result in penalties of up to $10,000. Because there are significant legal implications in the filing the trademark or service mark application, it is highly recommended that you seek the assistance of an attorney before filing the application.
During the registration process, you may receive an office action—a notice from the Secretary of State's office about issues with your application, which are limited to formal issues. Responding promptly and accurately to these office actions is essential, as failing to do so can result in your application being abandoned.
The issues raised in such office actions almost invariably regard compliance with the requirements of section 14207 of the California Business and Professions Code. They are not complicated issues, but they can be difficult for the layperson to address. Seeking guidance from a licensed California trademark attorney can greatly increase your chances of success. Additional fees may be incurred, but you will likely succeed in registering your mark with proper assistance.
After successfully addressing any office actions, your registration may issue. The process usually lasts no more than a few weeks before you receive your registration certificate, officially marking your trademark as registered in California. Subsequently, you will be required to maintain the registration by filing renewal applications every five years.
Maintaining your California state trademark requires an ongoing effort. Registrations are valid for five years and must be renewed to remain active. Renewal involves submitting the necessary documentation to demonstrate the ongoing use of the trademark in commerce.
Failing to renew your trademark on time can lead to its cancellation, requiring a complete reapplication process. Continuous commercial use is crucial to avoid abandonment and maintain your trademark rights.
Additionally, monitoring your trademark to prevent unauthorized use by competitors is essential for long-term brand protection. If you allow third parties to use confusingly similar trademarks without taking action, you will lose exclusivity and your trademark rights will be eroded. If your brand has value it is important to police the marketplace for unauthorized use and enforce your trademark rights when necessary.
Registering cannabis-related trademarks in California is possible, which contrasts with federal trademark law and policy. This allows businesses in the cannabis industry to protect their brands within the state, despite federal limitations.
However, cannabis-related trademark registrations and the legal implications of such filings are delicate topics and should be approached with caution. It should be remembered that cannabis is still outlawed under the federal Controlled Substances Act. Consulting with a trademark attorney who specializes in this area can provide valuable guidance and ensure compliance with state regulations.
Understanding the difference between the TM and ® symbols is crucial for trademark owners. In California, you can use the TM symbol to indicate that you claim rights to your trademark, even if it is not federally registered.
The ® symbol can only be used after your trademark is federally registered. Only a federal trademark registration allows for the use of the ® symbol.
Registering a state trademark in California offers specific advantages for many businesses. If your business operates solely within California, federal registration may not be an option. However, a state trademark provides significant protections. Additionally, state registration often involves fewer restrictions and a quicker, more affordable process.
State trademarks are particularly beneficial for businesses involved in industries like cannabis, where federal registration may not be feasible. A California state trademark also provided protections under California law in addition to applicable sections of the Lanham Act (federal trademark law) and provides a public record of your trademark rights within the state.
Registering a California state trademark is a strategic move for businesses operating within the state. It offers cost-effective, robust legal protections and enhances brand visibility. To register a California state trademark, businesses must use the mark in commerce, conduct a thorough trademark search, and correctly prepare the application and navigate the application process. The benefits of a California state trademark extend beyond legal protection; they reinforce your brand’s presence and value within the local market.
If you are considering pursuing a trademark registration, contact our office for a free consultation regarding trademark registration.
© 2024 Sierra IP Law, PC. The information provided herein does not constitute legal advice, but merely conveys general information that may be beneficial to the public, and should not be viewed as a substitute for legal consultation in a particular case.
Business owners often hire independent contractors (e.g., graphic designers, marketing firms, web designers, etc.) to assist with marketing and ad design, website design work, branding concepts, content writing, product photography, and many other projects and tasks that require creativity. Many businesses are not aware that they do not own the copyrights in the work provided by these independent contractors. The copyrights in such creative works only transfer to the business owner if there is a written contract that expressly includes a proper assignment clause. Without this, the business owner has only an implied license to use the work generated by the independent contractor ("IC"). The terms of this license are not defined and open to interpretation and dispute between the IC and the business. The business cannot transfer the copyrights (e.g., if the business or brand is sold) and may not be able to transfer the license. Business owners need to understand their intellectual property and manage it proactively. There are pitfalls for the unwary. The bottom line is that you as a business owner need to be the copyright owner of the work that you pay for.
A copyright assignment is an agreement that transfers ownership from the original creator to another party in exchange for some payment or other consideration (any bargained-for value provided by the receiving party), which grants the new owner rights to the work. This article will explain what a copyright assignment entails, its legal requirements, and how it differs from ‘work for hire’.
A copyright assignment is a legal agreement that transfers ownership rights from the original creator to another individual or entity. The assignment can transfer to the assignee all or some of the exclusive rights in the work to use, modify, and distribute the work. Copyrights are a bundle of rights granted to the creator of an original work. These rights include the ability to perform or display the work publicly, reproduce the work (e.g., by printing, copying digital files, scanning, etc.), distribute copies of the work (e.g., by posting the work on social media, selling printed copies, transferring digital files, etc.), create derivative works, and license or assign these rights to others. Each of these rights is distinct, meaning they can be transferred, licensed, or assigned individually or collectively. An assignment can be written to transfer one or more rights in this bundle to another party. The assignment can encompass all rights or just specific ones, depending on the agreement. The original creator relinquishes control of whatever rights are assigned and cannot exercise the assigned copyrights in the work without permission from the assignee. For example, an author of a novel might assign the right to publicly perform the work to a theater company while retaining the rights to reproduce and distribute copies of the book. The author has relinquished the public performance rights and can no longer pursue public performances of his work, but retains the right to sell the book.
Publishers and businesses must have control over the copyrights in works they commission because it enables them to transact business with respect to the work without limitations and it makes the work an asset in the business, rather than just something the company is allowed to use. Complete control over a work is ideal to allow the business to maximize its commercial potential. However, in certain situations like the example above, carve outs for the original author may make sense. Each situation is different and requires a skilled copyright attorney to avoid costly mistakes.
For a copyright assignment to be valid, it must be executed in writing. Notarization is advisable, but not required. The written agreement should clearly outline the transfer of ownership and the specific rights being assigned. The agreement should also detail the amount of consideration. A copyright assignment is not valid without "consideration", which is anything for which the author is willing to exchange the copyrights. In other words, there must be a bargained-for exchange. Where a business is engaging an IC, the assignment is part of the bargain upfront and the consideration is in the price paid for the work. However, if the business fails to include the assignment the original agreement, there must be separate consideration for the assignment - i.e., the business has to pay the IC again to get a valid transfer of the copyrights. This is a mistake businesses make very often.
In order to avoid these mistakes, businesses should take a proactive approach similar to that outlined below.
Assigning copyright requires several critical steps: drafting a comprehensive agreement with the IC upfront, obtaining signatures, registering the copyrights in the work with the US Copyright Office (USCO), and recording the assignment with the USCO. The copyrights should be registered to create a public record of the work. The assignment should also be recorded with the USCO to establish a public record of the assignee's rights. Clarity in the scope and terms of the rights being transferred helps prevent misunderstandings and disputes. These steps can be adopted as a structured process for a business to execute any time they are soliciting creative services from an IC. Such a process can ensure that both the creators and assignees understand the terms of the engagement and that the copyrights are being transferred, and that there is a legally sound transfer of the copyrights.
A copyright assignment agreement should be comprehensive and include essential clauses to facilitate the transfer. Improper handling of copyright assignments, like omitting critical clauses, can impact your ability to enforce the copyrights. Careful drafting and review of the agreement are crucial to protect both parties’ interests. Having a copyright lawyer draft such an agreement is advised to ensure it is properly structured and legally sound. The original author (IC) must sign the agreement for it to be legally binding.
Essential elements of a copyright assignment agreement include the grant of rights, term and termination conditions, payment and consideration terms, the scope of the assignment, and warranties. The scope of the assignment may vary depending on the agreement of the parties. Copyrights are not monolithic. There are a bundle of copyrights in a work. There are several aspects of copyrights and the agreement should be explicit about which rights are being transferred and which rights are being retained by the IC, if any. For example, a graphic designer may demand that they are granted a license to use a copy of their work for inclusion in their public portfolio and/or other advertising.
The terms of the assignment should be tailored to the specific transaction and failure to properly capture the parties' intent and the necessary language can result in a failed transfer or unintended limitations on the transfer of rights.
In order to publicly record copyrights in a particular work, the work must be registered with the USCO. To register a copyright, the applicant must complete an application, providing the title of the work, identifying the author(s), its creation date, and whether and when it was previously published, such as by sale, public performance or display of the work. A deposit of the work must also be submitted. Additionally, groups of related works, such as a group of photographs, can sometimes be registered together under specific rules. Copyright registration ensures legal protection if the work is displayed, copied, or performed by any person or group without authorization. Once registered, there is a public record of the copyrights in the work and the copyrights can be enforced against infringements by filing a complaint in federal court. Registration also establishes constructive notice of the work to the public, meaning that even if a copyright infringement occurs without actual knowledge of the copyrighted work, the infringer is still liable. Copyright notice can be used to provide actual notice of copyrights to potential infringers, but registration provides more complete copyright notice benefits.
Recording the copyright assignment with the Copyright Office establishes public notice and legal recognition of the transfer of the copyrights from the author(s) to the assignee. The Copyright Office does not provide specific forms for copyright transfers but accepts various documents related to copyright ownership and maintains records of submitted assignments. This step solidifies the legal validity of the assignment and a pubic record of the transfer to the assignee. The publicly recorded assignment is crucial for future reference and resolving potential disputes over ownership.
One common pitfall in engaging an IC for creative services is to assume that because you are paying the IC for the work, you own the copyrights. As explained above, this is incorrect. There must be a written assignment signed by the IC that expressly transfers the copyrights to you.
Another common mistake is the use of a copyright assignment form found online. Copyright assignments are unique to each situation. It is important that the assignment is appropriately tailored to the situation by an attorney. A inadequate copyright assignment can lead to legal disputes over ownership, costly litigation, and complicate future licensing deals.
Failing to keep adequate records of copyright transfers can be equally damaging. The copyright office database does not provide copies of the copyrighted work associated with registration or assignment records. Thus, a failure to keep copyright registration and assignment records associated with copyrighted work can lead to confusion about what copyrights you own and associated enforcement and licensing problems.
These potential consequences underscore the importance of following proper procedures and maintaining accurate records to protect one’s interests.
While both copyright assignment and work for hire involve the transfer of copyright ownership, they operate very differently. A copyright assignment can be made between any two parties, whereas a work for hire is only created either by an employee or by an IC under specific circumstances. For a work to qualify as work for hire, it must either be created by an employee as part of their normal responsibilities and job duties or fit into one of nine specific categories defined by law. These categories include commissioned works such as translations, instructional texts, and tests, among others. Additionally, the work must be specially ordered or commissioned, and there must be a written agreement stating that the work is a work for hire.
Many businesses operate under the assumption that creative work specifically commissioned for the business is a "work for hire". However, as a general rule, the creative work is not a work for hire, since the categories of works for hire are fairly narrow and there must be a written agreement specifically identifying the work as a work for hire. It is much more effective to include specific assignment language for each contract made for creative services.
In summary, a copyright assignment is essential in any situation where you are engaging an IC to create artistic, design, decorative, or other kinds of creative work. You must include assignment language in the initial contract, clearly define the scope of the assignment, maintain accurate copyright records, and ideally register the copyrights with the USCO. Proper management of copyright assignments allows creators to retain control over their work and businesses to fully exploit their commercial potential.
Your copyrights are important assets and should be protected. Our attorneys have decades of experience in the copyright field. Contact our office for a free consultation.
© 2024 Sierra IP Law, PC. The information provided herein does not constitute legal advice, but merely conveys general information that may be beneficial to the public, and should not be viewed as a substitute for legal consultation in a particular case.
The Federal Circuit’s recent decision in LKQ Corporation v. GM Global Technology Operations LLC has significantly refashioned obviousness analysis in the context of design patents. By overruling the longstanding Rosen-Durling test, the court introduced a more flexible approach for evaluating design patent obviousness, aligning it more closely with the framework for utility patents. This article explores the background, implications, and practical considerations stemming from the Federal Circuit's decision.
Design patents, which protect certain ornamental features of manufactured articles, have long been subject to the Rosen-Durling test to determine obviousness. This test required a primary reference that was “basically the same” as the claimed design and any secondary references must be “so related” to the primary reference that their combination would result in the same overall visual appearance. While this rigid framework aimed to reduce hindsight bias, it often limited the flexibility needed to invalidate undeserving design patents.
Criticism of the Rosen-Durling test grew following the Supreme Court’s decision in KSR International Co. v. Teleflex Inc., which emphasized a flexible approach to obviousness for utility patents. It was frequently argued that this flexibility should extend to design patents. In LKQ Corporation v. GM Global Technology Operations LLC, the Federal Circuit finally heeded these calls, finding the Rosen-Durling test “improperly rigid” and inconsistent with Supreme Court precedent.
The case involved a challenge to a GM design patent for a vehicle fender, with LKQ Corporation arguing that the patented design was obvious in light of prior art. The Patent Trial and Appeal Board (PTAB) upheld the patent, citing LKQ’s failure to identify a “Rosen reference” with design characteristics “basically the same” as the claimed design. On appeal, the Federal Circuit granted an en banc rehearing and ultimately overruled the Rosen-Durling framework.
In its en banc decision, the court adopted the Graham v. John Deere Co. factors to evaluate design patent obviousness:
This flexible approach considers the overall visual impression created by the prior art designs and the claimed design, emphasizing the perspective of an ordinary designer in the field. The court’s reliance on Graham aligns design patent obviousness with utility patent principles.
The Federal Circuit’s new framework redefines the test for design patent obviousness. It begins by identifying a primary reference—the most visually similar prior art design—without requiring it to be “basically the same” as the claimed design. Secondary references can be considered to determine whether there is a combination of prior art features of the secondary reference with the design of the primary reference that would result in the same overall appearance as the patented design.
The court emphasized the importance of the analogous art requirement, which ensures that prior art comes from the same field or is reasonably pertinent to the purpose and field of the claimed design. By eliminating the rigid “so related” requirement for secondary references, the court allows for a broader but fact-specific inquiry.
Secondary considerations, such as commercial success, industry praise, and copying, now also play a critical role as “indicia of obviousness or nonobviousness.” However, these factors must be supported by evidence demonstrating their relevance to the claimed design’s ornamental features.
The new standard shifts focus to the “ordinary designer,” emphasizing whether the claimed design’s overall visual impression would have been obvious to such a designer.
The analogous art test ensures that prior art is relevant, considering designs from the same field or those reasonably pertinent to the claimed design’s purpose.
By aligning the obviousness inquiry with the Graham factors, the Federal Circuit ensures a more nuanced and comprehensive evaluation, reducing the risk of improperly rigid outcomes.
The shift in the obviousness standard has significant implications for both design patent applicants and challengers:
Enhanced Examination Scrutiny: The new test may result in more rigorous examinations by the USPTO, potentially leading to an increase in rejections based on prior art.
Proactive Strategies: Applicants should include detailed disclosures and evidence of secondary considerations, such as commercial success and industry recognition, to strengthen their applications.
Broader Searches: Comprehensive prior art searches, including analogous designs from related fields will now be more critical to successful patenting.
Increased Opportunities: The flexible framework provides challengers with greater latitude to combine prior art references, improving the likelihood of invalidating weak design patents.
Evidence-Driven Arguments: Successful challenges will require robust evidence, including motivation to combine references and the overall visual appearance created by the combination.
Following the Federal Circuit’s decision, the USPTO issued updated examination instructions, emphasizing the application of the Graham factors and the importance of analogous art. The guidance encourages a focus on the claimed design’s overall visual impression rather than isolated ornamental features.
The USPTO has pledged to provide further examples and training to ensure consistency in applying the new standard. Patent practitioners and applicants should stay abreast of these developments and adapt their strategies accordingly.
The Federal Circuit’s decision in LKQ Corporation v. GM Global Technology Operations LLC represents a monumental shift in design patent law. By overruling the Rosen-Durling test and adopting a flexible framework based on the Graham factors, the court has aligned design patent obviousness with utility patent principles. While this new standard introduces some uncertainty, it promises a more equitable and rigorous evaluation of design patent claims.
Patent applicants and challengers alike must adapt to this evolving legal landscape. Consulting with experienced patent professionals is essential to navigating the complexities of the new obviousness standard and ensuring the robust protection of innovative designs. Contact our office for a free consultation.
© 2024 Sierra IP Law, PC. The information provided herein does not constitute legal advice, but merely conveys general information that may be beneficial to the public, and should not be viewed as a substitute for legal consultation in a particular case.
A continuation patent application allows you to extend your original patent filing with additional claims, keeping the same filing date. This can be vital in adapting to new developments and protecting your innovation fully. This article will explain what a continuation patent application is, why it’s beneficial, the types available, the filing process, associated costs, and common mistakes to avoid.
A continuation patent application is an extension of a previously filed application that allows inventors to pursue additional claims related to the same invention. Essentially, it’s a way to continue the subject matter disclosed in a prior application without losing the original filing date. A continuation application is essentially a refiling of the original application with a different set of patent claims. It has the same priority date of the original patent application, meaning that it functions as though it was filed on the same day as the original application. However, it must be understood that no subject matter can be added to the original patent application, if you want the benefit of the original filing date.
Continuation applications must adhere to strict guidelines required by the United States Patent and Trademark Office (USPTO). They can only claim the subject matter disclosed in the prior application and must name at least one inventor from that application. This ensures that the continuation application is genuinely a continuation of the original invention rather than a new or partially new invention. The scope of claims in a continuation application can be broader or narrower than those of the parent application, but they cannot be identical. This flexibility allows inventors to refine their claims based on new information or strategic considerations, enhancing the overall protection of their invention.
So why pursue a continuation application? Filing a continuation patent application can be a strategic move that offers numerous benefits beyond the initial patent grant.
One of the primary reasons to file a continuation application is to secure broader claims that may not have been included in the original patent application. This allows inventors to expand the scope of their patent protection, ensuring comprehensive coverage of their innovation.
Also, patent examiners regularly restrict the number of claims in a patent application to a smaller number than what is filed in the application. This is referred to as a restriction requirement. A continuation application allows the applicant to pursue claim subject matter that the applicant was unable to pursue in the original application. The restricted subject matter may be pursued through a continuation application, or the more specific form of continuation referred to as a divisional patent application.
Another significant advantage of continuation applications is their ability to preserve the ability to pursue new claims in response to changing market conditions and technological advancements. As the market evolves, new information may arise that necessitates modifications to the original claims. By filing a continuation application, the patent owner can keep any prior issued patent and pursue different claims that cover different scope than the original . If no continuation application is filed, the parent patent application may issue as a patent, and the applicant will have no further opportunity to pursue patent claims for that invention.
Continuation applications can significantly enhance the licensing and valuation of a patent portfolio by allowing inventors to tailor claims to specific markets or potential licensees. Having a continuation application pending at the point of licensing or transferring the patent rights is potentially attractive to the licensee or assignee if they have or wish to develop variations or additions to the patented technology. With a continuation application, they may be able to tailor and pursue claims to the future advances. Through continuation filings, patent holders can craft claims that cover additional aspects of an invention, making the patent more attractive to a broader range of industries or applications. This flexibility enables licensees to negotiate agreements that align closely with their business models or technological needs.
Filing continuation applications can also help protect against competitor products that have designed around the original patent. For example, a competitor may attempt to analyze and design its products to avoid infringement of the initial issued patent. If the applicant files a continuation, the applicant can respond to such attempts to design around the parent patent by pursuing other claims on which the competitor's products read. Additionally, maintaining a pending application can create uncertainty for competitors about the scope of patent protection, further enhancing the applicant's competitive edge.
There is also the possibility that highly pertinent prior art may be discovered after the parent application becomes an issued patent. It is not uncommon that prior art that was not found by the applicant or the examiner prior to the payment of the issue fee in the parent patent application. The claims in the continuing application can be amended to distinguish the claims from the newly discovered prior art.
Moreover, continuation applications enable incremental claiming of allowable subject matter, making approval easier and providing a strategic tool against challenges to an existing patent at the USPTO. Leveraging continuation applications helps to build a robust and strategically valuable patent portfolio over time.
There are three main types of continuing patent applications: continuation, divisional, and continuation-in-part. Each serves a unique purpose and offers different advantages. Continuation applications claim only the subject matter disclosed in prior applications, allowing the pursuit of multiple patents without new material. This makes them ideal for refining and expanding the scope of an existing patent. Divisional applications, on the other hand, pursues claims that were restricted from the original application through a restriction requirement. Continuation-in-part applications include new material or subject matter not disclosed in the parent application. This type of application is beneficial when significant advancements or new aspects of the invention arise after the original filing. Using the appropriate type of continuation application, inventors can tailor their patent strategy to effectively protect their innovations.
Divisional applications can result in patent applications that involve complex inventions that may be claimed in multiple manners covering distinct aspects. Divisional applications claim independent subject restricted from the prior application, ensuring each distinct invention receives its own patent protection. Restriction is required where the patent examiner finds that the original application includes multiple inventions. The examiner will require that the applicant select one of the identified distinct inventions for examination in the original application. The restricted claims were submitted with the parent application but were found to be recite a distinct invention from the claim selected for examination in the original application.
Divisional applications allow the applicant to pursue those claims restricted from the original application to fully cover and protect the invention. The claims in the divisional application retains the priority date of the original application.
Continuation-in-part (CIP) applications offer a unique advantage by allowing inventors to include new material not disclosed in the parent application. This is in contrast to standard continuation applications, where new matter is not allowed. This can be valuable when new developments or improvements closely tied to the underlying invention arise after the initial filing. Incorporating these advancements allows a CIP to extend protection to the new aspects of the original invention.
To file a CIP application, it must claim the benefit of the prior-filed application. However, it’s important to note that the new material added in a CIP application does not inherit the earlier filing date of the parent application. Only the claims based solely on the parent application’s disclosure receive the original priority date.
A CIP application adds new disclosure of additions or changes to the original invention, and thus does not have the same specification as the parent patent application. A CIP can be useful in the case of an evolving technology. In order to establish priority for a CIP application to an earlier application, you must list the parent application in the application data sheet at the time of filing the CIP application. The CIP must also be filed during the pendency of the prior application. The CIP can be filed after the payment of the issue in the prior application, but must be filed prior to the issuance of the prior application.
In a CIP application, the effective filing date relates to the claims and whether they are supported by the parent's specification. If the CIP application contains claims that are fully supported by the written description of the parent patent application, those claims retain the effective filing date of the earlier application. However, claims that find their support at least partially in the new additional disclosure included in the CIP application, the filing date of the CIP application will be the effective filing date for such claims.
Unless you are filing a CIP application, the specification and drawings should be the same as those filed in the earlier parent application to avoid introducing new matter. The continuation application must also be filed during the pendency of the original application. The original and continuation applications must be co-pending when the continuation application is filed in order the continuity to be effective. Failure to maintain continuity means that the continuation application will not have the benefit of the original filing date. The continuation patent application filing must also reference the prior application that it seeks to continue in an application data sheet filed with the continuation application.
Filing continuation patent applications generally avoids the professional fees for drafting the full application. However, continuation applications still involve various costs, including filing fees, examination costs, and long-term expenses like maintenance fees. The examination costs, including attorney fees and responses to office actions, can add up over time. Long-term expenses, such as maintenance fees for multiple continuations, also need to be factored into your budget.
By understanding and planning for these costs, inventors can make informed decisions about their patent strategy while pursuing thorough patent protection.
Filing a continuation patent application incurs various fees, which are set to increase starting January 19, 2025. The basic filing fee for a continuation application will rise from $320 to $350. Additionally, the utility examination fee will increase from $800 to $880, reflecting an 8% hike. New fees for continuation applications are set to take effect, with costs of $2,700 in extra fees for filing a continuation more than 6 years after the application priority date and $4,000 for continuing applications filed more than nine years after the priority date. These fees are intended to reduce the timeframe in which continuation applications are pursued. They will change the strategy in pursuing continuation applications. However, continuation applications will remain valuable strategic tools in pursuing patent protection. The patent office is already overburdened, and this fee increase is designed to reduce the number of continuations filed. By understanding these upcoming changes, you may better plan your patent strategy and budget for the associated costs.
In conclusion, understanding and effectively utilizing continuation patent applications can significantly enhance an inventor’s patent strategy. These applications allow for the extension and expansion of patent protection, ensuring that innovations remain secure against competition over a longer period. By strategically filing continuation applications, inventors can refine and broaden their claims, adapt to changing market conditions, and protect against competitor products.
Ultimately, the benefits of continuation applications, including extended protection and strategic claim adjustments, make them a valuable tool for any inventor looking to maximize the value and protection of their intellectual property.
If you need assistance with a patent application, a continuation application, or other information pertaining to patents, contact our office for a free consultation. Our patent attorneys have decades of experience in handling patents.
© 2024 Sierra IP Law, PC. The information provided herein does not constitute legal advice, but merely conveys general information that may be beneficial to the public, and should not be viewed as a substitute for legal consultation in a particular case.
Design patents protect the ornamental aspects of an article's appearance, ensuring that unique designs for products and other articles of manufacture receive legal protection against unauthorized replication. However, design patent infringement is a bit esoteric and an often contentious area of intellectual property law. This article explores the legal standards for determining infringement and hypothetical scenarios illustrating varying outcomes in infringement cases.
A design patent safeguards the ornamental design of a functional item. Unlike utility patents, which protect how an invention works, design patents focus solely on aesthetic aspects, as illustrated in the patent drawings. Importantly, only the non-functional, ornamental features are protected, leaving functional aspects outside the scope of design patent protection.
The scope of protection is defined by the visual characteristics of the patented design as depicted in its drawings. These drawings represent the claimed design and form the basis for evaluating design patent infringement.
In design patent cases, courts must separate ornamental features from functional ones. Elements dictated solely by functionality do not qualify for design patent protection. For instance, in the Egyptian Goddess, Inc. v. Swisa, Inc. (2008) case, the Federal Circuit Court of Appeals clarified that functional aspects should be excluded from the infringement analysis, focusing instead on the overall visual impression.
Design patent rights can only be acquired by filing a design patent application with the United States Patent and Trademark Office (USPTO). The USPTO examines the design to determine whether it is novel, non-obvious, and meets all formal requirements. The patent office must evaluate whether the design is original (novel) and whether one of ordinary skill in the relevant art would find the applied-for design obvious in view of the relevant prior art. Design patent obviousness may be found based on one or more prior art references, e.g., a combination of a primary reference that is similar to the applied-for design and a secondary reference that fills in deficiencies of the primary reference. The references must be the same type of article or product. For example, if the claimed design is for an article of clothing, the prior art must be clothing or something very similar. This is referred to as the analogous art requirement. If there is no analogous prior art that discloses the design or is so similar that it renders the design obvious, the USPTO will issue the design patent. Once the USPTO issues the design patent, it can be enforced against infringing parties.
The standard for determining design patent infringement was clarified by the Federal Circuit in the Egyptian Goddess case. The court adopted the ordinary observer test as the sole standard, moving away from the "point of novelty" test. Under the ordinary observer standard, infringement occurs if, in the eyes of an ordinary observer, the claimed and accused designs are substantially similar, causing the observer to mistake one for the other. The accused design infringes the design patent if it embodies the patented design or is a colorable imitation thereof. However, relevant prior art references must be considered in making the infringement determination.
The design patent infringement test applied by federal courts involves a two-step analysis:
1. First Prong - Plainly Dissimilar Comparison: Determine whether the accused product is "plainly dissimilar" from the patented design. If so, the analysis ends. This approach is quite different from utility patent infringement analysis, in which infringement is found only if each and every claimed element is present in the infringing article either literally or by equivalent. Design patent infringement is more based on perception by an ordinary observer, which is somewhat similar to trademark infringement analysis where consumer confusion between trademarks must be shown.
2. Second Prong - Comparison with Prior Art: If the accused product is not plainly dissimilar from the patented design, compare both the claimed and accused designs against the prior art to assess whether the unique aspects of the patented design are present in the accused design. The determination the portions of the design that are found in the prior art is usually performed by the district court in a claim construction hearing, or a Markman hearing.
Apple filed a high profile design patent infringement lawsuit against Samsung on April 15, 2011, in the United States District Court for the Northern District of California. Apple accused Samsung of infringing its design and utility patents, focusing on Samsung’s smartphones and tablets, including products in the Galaxy series. Apple alleged that Samsung's devices copied key features of the iPhone and iPad, including their distinctive designs and user interfaces. Central to the case were Apple’s claims that Samsung’s products unlawfully mimicked the sleek, minimalist design of its devices, particularly focusing on patented design elements like those in the D618,677 patent. Below is an example comparison of the design patent to the Samsung products. This is the kind of design patent infringement analysis that is carried out in such a case.
A company designs a smartphone case that has a conventional, plain case design that simply follows the outline of an iPhone. The only unique element of the case is the company's decorative logo on the back surface. Another company releases a case with the same conventional, plain design with a different logo. The designs only overlap with respect to common, plain general design. The designs do not overlap with respect to the unique design of the company logo. Conventional elements cannot be a basis for infringement, and thus there is no infringement.
A patented chair design features a unique combination of curved and straight lines, creating a distinctive aesthetic. The patented design also includes decorative features in the cushions of the chair. A competitor’s chair replicates the curved and straight line elements of the design, but does not include the decorative elements on the cushions of the patented design.
Under the ordinary observer standard, the fact finder (a jury) might find the designs substantially similar, particularly if the omitted features are not prominent. Prior art designs would play a critical role in the district court's assessment.
A patented shoe design displays a specific pattern on the sole, providing a recognizable look that is not found in the prior art. A competitor sells shoes with an identical sole design, but different upper portion of the shoe. Here, the patented design specifically covers the pattern on the sole and is not limited to any design elements on the upper portion of the shoe. The competitor's design is not plainly dissimilar and the patented design is wholly original. The competitor’s shoe would likely be deemed a colorable imitation, constituting design patent infringement.
Design patent owners face challenges in proving infringement due to the subjective nature of the ordinary observer test. Courts often rely on side-by-side comparisons of the claimed and accused designs, as well as input from expert witnesses and consumer surveys. Moreover, considerations of functional aspects of the design and claim construction in view of related prior art designs can complicate the analysis.
Your business can take proactive steps to avoid design patent infringement. Before launching a new product, a Freedom to Operate (FTO) search may be conducted to determine whether there are enforceable patents that pose an infringement risk. This search may coincide with a patentability search to determine whether the new design is potentially patentable. If there are enforceable design and/or utility patents that pose a potential infringement risk, you may modify your designs to ensure they are plainly dissimilar from the patented designs.
You should also focus on designs with unique visual impressions that the typical consumer can easily distinguish from existing designs. The closer your designs are to what has created by third parties and competitors, the more likely you will face an infringement issue.
You should also seek legal advice during product development to help you navigate potential infringement issues and minimize risks. By prioritizing these steps, businesses can safeguard their products, respect intellectual property rights, and avoid costly disputes.
Accounting for potential design patent infringement requires the skill and knowledge of an experienced patent practitioner. The attorneys at Sierra IP Law have decades of experience in the field of patents and can assist you with patent procurement, patent infringement analysis and disputes, and any other intellectual property issues. Contact us for a free consultation.
© 2024 Sierra IP Law, PC. The information provided herein does not constitute legal advice, but merely conveys general information that may be beneficial to the public, and should not be viewed as a substitute for legal consultation in a particular case.
Trademark law provides rights and protections for trademark owners as a result of continuous use of their marks in commerce. This means that a business must actively use the trademark to keep the rights alive and enforceable. As a general matter, when a trademark is no longer actively used by its owner, its protection under the common law and the Lanham Act ends. This cessation of use and rights is referred to as trademark abandonment. However, in some cases a trademark owner may retain residual goodwill in an abandoned trademark. Residual goodwill refers to the lasting association and recognition that a trademark retains in the minds of consumers even after the trademark has been abandoned or its use has ceased. This form of goodwill persists because consumers continue to associate the trademark with the original source, company, or product, despite its absence from the marketplace.
Under Section 45 of the Lanham Act, a trademark is considered abandoned if its use ceases with no intent to resume such use. The Lanham Act provides that nonuse for three consecutive years constitutes prima facie evidence of abandonment. However, the concept of residual goodwill complicates this seemingly straightforward treatment. Even after a mark is abandoned, it may retain a marketplace presence, eliciting recognition from consumers and maintaining a measure of its original goodwill.
Residual goodwill embodies the public’s continued association of a mark with its original owner, even after the owner has ceased production or sales. As such, it represents the lasting value of the mark in the minds of consumers, despite its absence from the ordinary course of trade.
Residual goodwill is not merely a concept, but has tangible consequences in trademark disputes. Courts and the Trademark Trial and Appeal Board (TTAB) have frequently grappled with its role in rebutting the presumption of abandonment. For example, in Ferrari S.p.A. Esercizio Fabbriche Automobili e Corse v. McBurnie, 11 U.S.P.Q.2d (BNA) 1843, 1851–52 (S.D. Cal. 1989)., the court recognized residual goodwill in the trade dress of Ferrari’s iconic car designs, noting their continued recognition in the marketplace long after active production had ceased.
This legal doctrine serves two purposes:
Protecting Consumer Interests: The lingering association of an abandoned mark with its original source can lead to consumer confusion if a new party adopts the mark without disclaimers or quality control. Courts have often emphasized the importance of minimizing such confusion in alignment with the Lanham Act's objectives.
Safeguarding the Original Owner’s Reputation: If a new user capitalizes on the goodwill of an abandoned mark by attaching it to inferior products, it can tarnish the reputation of the original trademark owner, especially if the owner remains in business.
Residual goodwill significantly impacts the trademark registration process by complicating determinations of abandonment and priority. When a trademark is presumed abandoned due to nonuse, residual goodwill may rebut this presumption, allowing the original owner to retain rights despite the cessation of active use. This poses challenges for new applicants attempting to register a mark that appears unused but retains consumer recognition. The Trademark Office and courts often assess residual goodwill by examining consumer perception, de minimis use, and how the brand is maintained in the public eye. For example, in the Ferrari case the court emphasized that the car designs were still on the road in the public eye and the Ferrari company was still providing parts for the vehicles.
For new applicants, the existence of residual goodwill can create legal hurdles, as they must demonstrate that the mark has lost its source significance. Conversely, owners of marks with residual goodwill must provide evidence of ongoing recognition or intent to resume use to safeguard their rights. The interplay between residual goodwill and registration ensures that consumer interests and marketplace integrity are preserved, but it also introduces complexity to the process.
Demonstrating the existence of trademark residual goodwill requires substantial proof, often involving evidence of consumer recognition, ongoing secondary markets, or continued advertising by the original owner. For instance, de minimis use—such as limited sales or production of related items—can support a finding of residual goodwill. In Peter Luger Inc. v. Silver Star Meats Inc. 63 U.S.P.Q.2d 1555, 1563 (W.D.Pa. 2002), a court concluded that residual goodwill persisted when the infringer’s unadvertised launch of a product led to significant sales increases, indicating sustained consumer recognition.
However, residual goodwill generally diminishes over time. In Hornblower & Weeks Inc. v. Hornblower & Weeks Inc., the TTAB held that 15 years of nonuse effectively extinguished any remaining goodwill, underscoring the limits of this doctrine. Conversely, strong consumer recognition can sustain residual goodwill for decades, as in the Skippy peanut butter case, where residual goodwill rebutted abandonment after 23 years of nonuse. Skippy Inc. v. CPC International Inc., 674 F.2d 209, 216 (4th Cir. 1982).
Critics of the residual goodwill doctrine argue that its subjective nature complicates its application. Courts must weigh a several factors, including the strength of consumer recognition, elapsed time, and the intent of the new adopter. This lack of standardization can lead to over reliance on inconsistent judicial reasoning.
Moreover, some assert that recognizing residual goodwill may hinder market competition by making it more difficult for companies to adopt marks deemed abandoned. By reducing the availability of marks for new entrants, this doctrine may inadvertently discourage commerce.
Trademark owners and potential adopters can both take proactive steps to navigate issues surrounding residual goodwill:
For Owners:
For New Adopters:
Residual goodwill remains an important consideration in the broader framework of trademark law. Courts will continue to wrestle with the balance between encouraging commerce and new business to establish brands and the enduring value of residual goodwill. The concept of residual goodwill will continue to shape the interplay between abandoned trademarks and the establishment and growth of new businesses.
If you are an entrepreneur and you have built or plan to build a business, it is in your interest to consult with a trademark attorney that understands the complexities of trademark law, including residual goodwill. Vetting your business name and branding at an early stage may make the difference between building a strong brand or facing a trademark infringement lawsuit.
Contact Sierra IP Law, PC for assistance with complicated trademark matters or issues in other areas of intellectual property law. Our attorneys have decades of experience in all areas of intellectual property. We handle trademark registration, trademark licensing, trademark disputes and litigation, and cancellation and opposition proceedings before the Trademark Trial and Appeal Board. Call us to schedule a free consultation.
© 2024 Sierra IP Law. The information provided herein is not intended to be legal advice, but merely conveys general information that may be beneficial to the public, and should not be viewed as a substitute for legal consultation in a particular case.
In order to understand how trademark rights are acquired, you must first understand what a trademark is. Trademark rights came into existence to protect both businesses and consumers by fostering trust and clarity in the marketplace. These rights serve a dual purpose: ensuring that consumers can identify the source of goods or services, and protecting businesses from unfair competition resulting from the misuse of their branding.
A trademark is a source identifier that distinguishes a product, brand, or business name from others in the marketplace. The primary function of trademarks is to help consumers identify the origin of products and prevent confusion with similar marks. Trademark law protects (1) the trademark owner by providing the exclusive right to use a specific trademark in connection with their goods or services and (2) the consumer by enabling them to rely on a particular source of goods or services.
Trademark law grants legal protection to registered trademarks, but unregistered marks can still gain common law trademark rights through use of the mark in connection with goods or services ("actual use in commerce"). However, common law protection is limited compared to federal registration, which carries nationwide rights, a presumption of trademark rights, and a public record of the owner's trademark rights. We explore these distinctions in greater detail below.
Trademark rights are unique because they are created from the relationship of the trademark owner and the consumer. Unlike copyrights or patents, they are not the result of creative expression or innovation. A particular trademark can contain significant artistic expression, such as the famous Ferrari logo, the MGM logo, the Columbia Pictures logo, and the Starbucks logo. However, such artistry is not required to establish trademark rights. A trademark can be essentially devoid of creativity. To illustrate, consider the GAP name and logo, General Motors' name and logo, and American Airlines.
Another distinction between trademarks and other intellectual property is that term of trademark rights is based on continued use. Unlike patents or copyrights, which have a fixed term, trademarks can last indefinitely, provided they remain in use and maintain distinctiveness from other brands. If a trademark owner stops using the mark in connection with the sale of its goods or services, the rights can be lost due to abandonment. Because trademarks are source identifiers for goods and services, when the source of the goods and services is no longer using the mark, the mark no longer serves its lawful purpose and the trademark rights cease.
Trademarks can include unique combinations of letters, sounds, symbols, or designs, often representing a brand's identity. When used for services, they are called service marks. Trademarks are a key element of intellectual property and differ from other intellectual property rights, such as patents or copyrights, because they protect branding rather than inventions or creative works.
Trademark rights can be acquired through three main methods: common law use, state registration, and federal trademark registration, each providing varying levels of trademark protection. Common law rights arise automatically when a trademark name or service mark is used in connection with goods or services in commerce. These rights depend on active and continuous use and are geographically limited to the area of consumer recognition, though an online presence can expand this reach. State trademark registration provides localized protection within the state, offering exclusive rights within its borders. Finally, federal registration through the USPTO grants nationwide protection and enhanced protection under trademark law, with the federally registered mark benefiting from the legal presumption of validity. The specific process and requirements for each method vary, but all emphasize the importance of proper use, registration formalities, and alignment with the intended scope of the business.
Trademark rights can be established under common law without formal registration by using a mark in connection with goods or services in commerce. This process explains how to get trademark rights based on actual use rather than registration. A business entity or individual acquires exclusive rights to a trademark name or service mark when the mark is used publicly to identify the source of goods or services. The provision and sale of goods or services in commerce under a trademark or service mark generates trademark rights as long as it is a proper form of trademark and it is not confusingly similar to an existing third-party trademark. If the mark is generic (e.g., you are calling your barber shop "The Barber Shop) or if you are using a confusingly similar mark to an existing mark (e.g., you are trying to sell fresh fruit under the name "Sunkissed", which is almost identical to the famous Sunkist brand ), you will not establish trademark rights. Otherwise, the simple use of a trademark in commerce will result in the establishment of trademark rights, which will grow in strength with sustained use.
The geographic scope of a common law trademark is determined by the area where the mark is actively used and recognized by consumers. Historically, this was limited to the locations where a business had a physical presence. However, the internet has significantly expanded the geographic reach of a business name or service marks, enabling businesses to claim broader geographic trademark rights if their online presence creates recognition outside their immediate location. For example, the furniture and décor company Wayfair is exclusively on the internet, but has national reach with its products. Even if Wayfair never pursued a trademark registration, it would have nationwide common law trademark rights. Conversely, the geographic scope of the trademark rights of a local salon reach only as far as the local area in which consumers recognize its business name.
Common law trademarks can be enforced under both the Lanham Act and corresponding state laws, offering claims and remedies for trademark infringement even without federal registration. The Lanham Act provides a federal cause of action for the unauthorized use of a similar mark in a way that is likely to cause confusion, deception, or mistake in connection with goods or services. Remedies under the Lanham Act include injunctive relief, monetary damages, and, in some cases, recovery of the infringer's profits.
At the state level, common law claims, such as unfair competition or passing off, can also be pursued to stop the misuse of a mark. State laws vary but generally allow for remedies like injunctions and damages for harm caused by the unauthorized use of a trademark name or service mark.
Although common law trademarks lack the presumption of validity provided to registered marks, trademark attorneys can help trademark owners establish their rights by presenting evidence of active and continuous use in commerce. This may include showing consumer recognition in the relevant market or proving that the mark has acquired distinctiveness. These legal pathways enable private companies and individuals to protect their intellectual property rights and secure relief from unauthorized use.
State trademark registration offers localized trademark protection and differs across states in terms of scope and rights. The state trademark registration process involves filing a trademark application with the relevant state agency, such as the California Secretary of State, and paying the required trademark registration fees. In California, registering a trademark grants the registered mark exclusive use within the state, providing legal grounds to prevent unauthorized use of the mark in connection with goods or services in California.
The application process is typically less complex and costly than federal registration, but the geographic scope of rights is limited to the state’s borders. In California, trademark law allows enforcement through state courts, providing remedies like injunctive relief and damages for infringement.
State registration is useful for businesses operating locally or regionally and that do not engage in interstate commerce. A trademark attorney can assist in navigating the trademark registration process to register a trademark and secure robust state-level protection.
To establish trademark rights through a trademark application at the federal level, you must file with the United States Patent and Trademark Office (USPTO), the federal agency that registers trademarks. Federal trademark registration provides enhanced protection, including the exclusive right to use a registered mark in connection with the goods or services listed in the application throughout the U.S.
The trademark application process requires that the Applicant choose a filing basis, which can be:
Intent-to-Use (for marks not yet in use but with a bona fide intent to use in interstate commerce)
Use-in-Commerce (for marks already in use in interstate commerce).
For an intent-to-use application, applicants must have a bona fide intent to use the applied-for mark in interstate commerce. This means that the applicant has real and present plans to use the mark in commerce. An applicant cannot reserve marks for later use by filing an ITU application without a good faith intent to begin use of the mark. For example, if you come up with a clever name that you like for a clothing line, you need more concrete intent to use the mark than just a general desire to start a clothing brand under the imagined brand name. The intent to use the mark must be tied to a real plan of action.
A present-use application requires evidence of actual use during the initial filing. A present-use application requires proof that the mark is already in use in interstate commerce, meaning the goods or services are offered across state lines or at least impact trade between states. Applicants must include a declaration of use, affirming active use of the mark, and provide a specimen of use (e.g., product labels, website screenshots showing sales, or other evidence that the mark is being used in interstate commerce). The trademark application must also specify the date of first use in commerce and first use anywhere, demonstrating the mark's active and continuous use. Additional requirements include identifying the mark, its class of goods or services, and paying the required filing fees.
The trademarking process begins with filing an initial application that includes a clear depiction of the mark (e.g., a standard character mark), a description of the goods or services, and the filing fee and any additional trademark registration fees. A key part of the initial application is designating the appropriate trademark classes. The USPTO organizes goods and services into 45 broad categories: 34 for products and 11 for services. For example, Class 25 covers clothing items like T-shirts and jackets, while Class 35 includes business services such as marketing and advertising. Each class designated in the application is treated as a separate application with its own separate application fee. Applicants must specify the class or classes relevant to their proposed mark.
The initial application must be filed electronically through the Trademark Electronic Application System (TEAS), an efficient platform offered by the USPTO. Applicants can choose between the TEAS Plus and TEAS Regular forms. The TEAS Plus option has lower required fees (currently $250 per class of goods or services) but requires strict adherence to specific descriptions of goods and services in a pre-approved list provided in the USPTO's Trademark ID Manual. The TEAS Regular form, while more flexible in allowing custom descriptions, has higher required fees (currently $350 per class).
The United States Patent and Trademark Office (USPTO) is responsible for processing trademark applications and maintaining the federal trademark registry. The USPTO provides resources and tools to help applicants navigate the trademark registration process. After submitting a pending trademark application to the trademark office, the examination process begins. An examining attorney, assigned by the USPTO, conducts a comprehensive trademark search in the USPTO database to identify potential conflicts with existing registered trademarks or pending applications. If the examining attorney raises concerns, such as similarity to an existing mark or issues with the stated filing basis, the applicant receives an office action detailing objections.
Applicants must respond to an office action within six months to maintain their application. If the examining attorney approves the application, the mark is published in the Official Gazette, allowing the public to challenge its registration on legal grounds within a 30-day window. If no opposition is filed, or if the opposition is resolved in favor of the applicant, the trademark office issues a registration certificate, granting the mark the status of a registered mark on the federal trademark registry with enhanced protection under federal trademark law.
For intent-to-use applications, the process includes additional steps. Before the application can advance to a federal registration, the applicant must file a statement of use proving the mark’s use in commerce within six months of the notice of allowance of the pending application. If more time is needed, applicants may submit extension requests, allowing up to five additional six-month periods to meet this requirement.
Successful federal trademark registration provides the legal presumption of ownership and exclusive rights to the mark for specific goods or services, as listed in the official record. The process ensures the trademarking process maintains fairness and clarity in the market, while providing the registered mark enhanced protection and the ability to enforce rights in federal court.
The entire process typically takes between 12 and 18 months to complete, depending on factors such as application completeness and formalities, and whether the trademark examiner raised any issues. After submission, the trademark office reviews the application within 6 to 9 months. If no office action or opposition arises, registration proceeds smoothly. However, the timeline may extend due to examining attorney reviews or public opposition during publication in the Official Gazette. For faster processing, the USPTO offers expedited options under special petitions for urgent cases, which require additional filing fees and specific justifications, such as an existing trademark infringement issue.
A U.S. trademark registration or pending trademark application can serve as a priority application for foreign registration under the Madrid Protocol or foreign national trademark systems. By filing a foreign trademark application within six months of the U.S. filing date, applicants can claim the U.S. filing date as their priority date in other jurisdictions. This priority claim provides an advantage by securing earlier rights in foreign markets, offering protection against later-filed conflicting marks. The Madrid Protocol simplifies international filings by allowing a single application to cover multiple countries, reducing costs and administrative burdens while ensuring a streamlined trademark registration process globally.
Conducting a trademark search is a critical first step in the trademarking process to ensure your proposed mark does not conflict with existing registered trademarks or other protected marks. The USPTO’s Trademark Electronic Search System (TESS) allows you to search the trademark registry for direct matches with all or part of your proposed mark. This helps identify potential conflicts within the USPTO database, ensuring your application meets trademark law requirements.
Beyond a TESS search, state trademark and business registries, domain name databases, social media handles, and the internet should also be searched to determine whether there are existing state registrations and common law rights in the same or similar marks. State trademark registrations and unregistered marks might present potential trademark infringement risks. By performing a comprehensive search, you minimize the risk of application rejection or legal disputes, saving time and resources in the trademark registration process. Seeking the assistance of an experienced trademark attorney can ensure the accuracy and proper scope of the search.
Trademark symbols indicate the status and type of trademark rights associated with a mark:
™ Symbol: The ™ symbol signifies that the mark is being claimed as a trademark, typically for goods, even if it is not registered. It provides notice of the claim but does not confer any specific legal protection beyond common law rights.
SM Symbol: The SM symbol is used for service marks, which identify the source of services rather than goods. Like ™, it indicates a claim of rights but does not require federal registration.
® Symbol: The ® symbol denotes a mark that is federally registered with the USPTO. Its use is legally reserved for registered trademarks and provides enhanced protection, including a legal presumption of ownership and validity. Improper use of the ® symbol for unregistered marks can lead to legal penalties.
The use of the ® symbol provides constructive notice to the public of the trademark owner's rights. Constructive notice means that anyone who uses or attempts to register a mark identical or confusingly similar to the registered mark is deemed to be aware of the existing registration, even if they did not actually know about it. This legal doctrine prevents a defense of ignorance in cases of trademark infringement.
The significance of constructive notice lies in its role in strengthening trademark protection. It creates a legal presumption of the mark's validity, ownership, and exclusive use for the specified goods or services nationwide, regardless of the actual geographic scope of use. This presumption allows the trademark owner to enforce their rights in federal court more effectively, deterring potential infringers and simplifying the litigation process.
Proper use of the ® symbol is crucial to maintaining these benefits. Failure to use the symbol, while not invalidating the registration, may weaken claims of infringement, as it could limit the remedies available for damages arising from unintentional infringement. Consequently, displaying the ® symbol serves as a powerful tool in protecting and asserting the value of a registered trademark.
Private companies and individuals alike benefit from establishing trademark rights to distinguish their brand and acquire the legal right to protect it. A properly protected trademark strengthens a brand's market position while deterring unauthorized use of its identifying marks. Trademark rights can be established through use of the mark in commerce through common law rights. However, trademark registration provides enhanced trademark protection and rights on a nationwide basis.
Contact our firm for a free consultation regarding the trademark process.
© 2024 Sierra IP Law. The information provided herein is not intended to be legal advice, but merely conveys general information that may be beneficial to the public, and should not be viewed as a substitute for legal consultation in a particular case.
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