Intellectual property protection extends beyond patents

In addition to patents, as covered last month, two other instruments of intellectual property protection include trademarks and copyrights extending across all sectors. It’s important to employ the correct form of protection and to understand the differences between them.
 
TRADEMARKS & SERVICE MARKS
A trademark is a word, symbol or combination thereof that is used to identify the source, albeit a possibly anonymous source, of goods. Examples of trademarks include Nike, Rolls Royce, and Kleenex. A service mark performs the same function as a trademark with respect to the provision of services.  Examples of service marks include FedEx and Roto-Rooter. A trademark or service mark has a potentially perpetual life. Although registration confers several advantages on the owner of the mark, it is not legally required.
 
If a trademark ceases to serve primarily as an identification of the source of goods and instead comes to identify the goods themselves (i.e., if it becomes the generic term for such goods), the rights to exclusive use of the mark are lost.  Notable examples of such lost marks are escalator, thermos, and aspirin.  Only proper trademark usage will prevent the loss of the trademark or service mark.  Prior to the release of any hard-copy or on-line documents and publications, each should be reviewed for proper trademark use. A trademark is an adjective, so it should be followed by the appropriate generic term.

An example of an Energy-related trademark infringement occurred in September 2009 when Chevron Intellectual Property LLC and Chevron U.S.A. Inc. (“Chevron”) filed two separate trademark infringement and unfair competition lawsuits in the United States District Court for the Western District of Pennsylvania against defendants who allegedly owned and operated automobile gasoline and service stations with infringing signage and materials.

Chevron owns more than 20 trademarks and service marks including trademarks for TEXACO, Star T Design, Service Station Canopy Design, Gasoline Pump Design, and a Building Design for automobile services. Chevron’s authorized TEXACO-branded stations sell TEXACO brand gasoline. Licensed TEXACO-branded service station facilities are authorized to use and prominently display exterior and interior signage that bear Chevron’s registered TEXACO and Star T Design trademarks.
 
Trade secrets and know-how may be lost through inadvertence, improper activity such as industrial espionage, or through reverse engineering.  When improper activity does occur, only the actual wrongdoer is liable for damages. 

Trade secrets are forfeited when disclosed in a patent application.  The surrender of the trade secret is the price one pays for obtaining a patent. Many years ago, Coca Cola made the decision to not apply for a patent for the formula for its beverage, but to keep it as a trade secret. Had they patented their formula, the patent would have run out decades ago. So a patent has both benefits and liabilities.

COPYRIGHTS
A copyright is an exclusionary right.  It conveys to its owner the right to prevent others from copying, selling, performing, displaying, or making derivative versions of a work of authorship.  The duration of a copyright depends on several factors, but in no event is less than 70 years.
 
Copyrights differ from patents in that they only protect against actual copying.  A work created by another, without copying, is not an infringement, no matter how similar it may be to a copyrighted work.  Moreover, a copyright protects only the expression of an idea, not the idea being expressed.  Thus, information or data included in a copyrighted work is not protected against appropriation and use by others, although copying of the presentation and arrangement is barred.

Alexander Poltorak is the Founder, Chairman and CEO of General Patent Corporation (GPC), an intellectual property (IP) management company focusing on IP strategy and valuation, patent licensing and assertion.  He is also a managing director of IP Holdings LLC, an IP-centric merchant banking boutique that provides IP finance and brokerage services and operates an idea incubator. Alex Poltorak is a Certified Licensing Professional (CLP).