Carlos A. Aldarondo-López, Esq.— U.S. Reg. Patent Attorney at Aldarondo & López-Bras, PSC
As defined by the World Intellectual Property Organization, the term “intellectual property” (IP) refers to “creations of the mind, such as inventions; literary and artistic works; designs; and symbols, names and images used in commerce.” Over a dozen IP rights exist, however, the most commonly known are patents, copyrights, and trademarks.
Under U.S. patent law, a patent confers the right to exclude others from making, using, selling, or offering for sale an invention in the U.S., or importing an invention into the U.S. See 35 U.S.C. § 271. To obtain a U.S. patent, a patent application must be filed in the U.S. Patent and Trademark Office (USPTO), and a detailed technical description of the invention must be publicly disclosed to enable a person skilled in the art to make and use the invention. See 35 U.S.C. § 112(a).
Also, an invention must meet four patentability requirements established in 35 U.S.C. §§ 101, 102, and 103. First, the invention must fall into the categories of patent-eligible subject matter, meaning it must be a process, machine, article of manufacture, or composition of matter. Second, the invention must be novel or different than any other invention that has ever existed, anywhere in the world. Third, the invention must have at least a minimum level of functionality. Fourth, the invention must be non-obvious, which means it cannot be a trivial variation of any previously created invention. Additionally, the U.S. Supreme Court has excluded laws of nature, natural phenomena, and abstract ideas from the above mentioned categories of patent- eligible subject matter. See Alice Corp. v. CLS Bank International, 573 U.S. 208 (2014).
There are three different types of patents. Utility patents protect the manner in which an invention is used and how it works; design patents protect the way an invention looks; and plant patents protect any distinct and new variety of plant, invented or discovered (in a cultivated state) and asexually reproduced. See 35 U.S.C. §§ 101, 161, and 171.
Utility and plant patents have a life-term of 20 years from their filing date and design patents last for 15 years from their date of grant. See 35 U.S.C. §§ 154, 163, and 173.
Another well-known IP right is copyright, which protects original works of creative expression that are fixed in a tangible medium. See 17 U.S.C. § 102. The categories of copyright protection include literary, artistic, dramatic, and musical works. Id.
Under U.S. copyright law, copyright owners are granted a bundle of six exclusive rights. Id. These include the right to reproduce a copyrighted work, prepare derivatives of the work, distribute copies or phonorecords of the work, publicly perform the work, publicly display the work, and publicly perform the work by means of a digital audio transmission in case of sound recordings. See 17 U.S.C. § 106.
U.S. copyrights are registered in the U.S. Copyright Office, a division of the Library of Congress. Copyright registration is optional, as rights are acquired automatically from the moment a work is fixed in a tangible medium of expression. See 17 U.S.C. §102. Nonetheless, registration is highly recommended, for it provides valuable legal benefits, such as the ability to bring a lawsuit for infringement in federal court. See Fourth Estate Public Benefit Corp. v. Wall-Street.com, 586 U.S. ___ (2019).
Copyright in the U.S. generally lasts for the life of the author plus an additional 70 years. See 17 U.S.C. § 302. Anonymous wor ks, pseudonymous works, and company owned copyrights typically last for 95 years from the date of first publication or 120 years from the date of creation, whichever term is shorter. Id.
Last but not least, trademarks serve to identify and distinguish the source of goods or services from those of others. See 15 U.S.C. § 1127.
Trademark owners in the U.S. are granted the exclusive right to use a trademark and to prevent others from offering related goods or services under a “confusingly similar” trademark. See 15 U.S.C. § 1125. Almost anything that identifies, distinguishes and/or indicates source of goods or services can serve as a trademark subject to few limitations. Therefore, trademark rights can be obtained for any word, symbol, sound, color, shape of product, shape of packaging, etc., that is used in trade to offer goods and/or services, so long as its features are non- essential to the use or purpose of a product. See Qualitex Co. v. Jacobsen Products Co., Inc., 514 U.S. 159 (1995).
One may file a federal trademark application in the USPTO if a trademark is used, or the applicant has a bona fide intent to use a trademark, in interstate commerce or commerce between the U.S. and another country. See 15 U.S.C. §§ 44 and 1051. Otherwise, a trademark owner may only apply for a state trademark registration, typically through the Secretary of State’s office.
Trademark registration is optional, since trademark common law rights are obtained from the sole use of a trademark in commerce. See 15 U.S.C. § 1125. However, common law rights are limited to the geographic territory where a trademark is used and any reasonable areas of expansion. See 5 J. Thomas McCarthy, McCarthy on Trademarks & Unfair Competition § 26:52 (4th ed. 1997).
Many legal benefits are obtained from a federal trademark registration, such as the right to include the famous ® symbol next to the trademark and bring a lawsuit against an infringer in federal court. See 15 U.S.C. §§ 1111 and 1121. On the other hand, state trademark registrations are highly valuable as an alternative or complement to federal trademark registration, although more limited in rights and geographic scope.
Trademark rights can last forever, so long as the trademark is used in commerce and renewal documents are filed every ten years. See 15 U.S.C. § 1058.
Each type of IP protection is different and usually a single product can be protected under various forms of IP rights. A classic example of overlapping IP protection is found in the Coca-Cola bottle. The brand “Coca-Cola” is a trademark, copyright protects the packaging art of the bottle, and a design patent protects the shape of the bottle. Furthermore, the formula for the actual soda is considered a “trade secret” and the shape of the bottle can also be protected by “trade dress”, two different IP rights not mentioned in this discussion.