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96 Cards in this Set
- Front
- Back
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Intellectual property categories
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1) copyrights
2) trademarks 3) patents 4) trade secrets |
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trademark definition
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words, symbols, devices, other designations that serve to identify the source of goods or services
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patents
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invention of applied technology
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trade secret
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any info that can be used in business that is sufficiently valuable and secret to afford economic advantage over others
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Intellectual property clause in Constitution and purpose
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Article 1, Section 8, Clause 8
Rationale: promote progress |
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Public domain purpose
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- no constitution provision/statute
- starts from constitutional purpose of the IP clause of promoting progress (note: time limitation) - once into public domain, cannot come out |
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IP and bundle of sticks
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right to exclude- fundamental property right,
not allowed for abstract ideas applied to "downstream" products not "upstream" products |
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unfair competition definition
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driven by common law
The imitation, by design, of the goods of another, for the purpose of palming them off on the public, misleading it, and inducing it to buy goods made by the imitator |
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misappropriation
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preventing free riding and reaping what one has not sown
4 Elements -inventor has substantial investment to gather information with expectation of commercial profit -defendant has appropriated with little effort AND made commercial use of it -inventor has suffered economic hard -inventor must be fairly and equitably be entitled to relief - apply only as a last resort when one + IP areas do not apply |
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Passing off
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palming off
tort crime -defendant makes a false representation that causes consumers to believe that D's goods comes from the plaintiff and this false representation causes a likely commercial detriment to that competitor |
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False representation (direct/indirect)
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direct: intentional misrepresentation about source of goods or services occurs
indirect: different way. showing of samples that are in fact from P |
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measuring detriment to Plaintiff for passing off
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detriment to competitor if:
1) material (affect conduct of prospective purchasers) 2) reasonable basis that representation has/or is likely to cause trade to flow from one member of the market to the other note: only between market place competitors provides background to trademark law |
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trademark definition
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word, symbol, device, other designation, or combination of which that is DISTINCTIVE of a persons goods or services AND used in a manner that distinguishes those goods and services as being from the owner
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purpose of trademark law
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incentives for merchants to maintain quality
aid consumers so they can be certain of the source prevents unfair competition |
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costs of trademark law
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creates barriers to entry (hard for newcomers to establish new identify, encourages extensive advertising efforts)
imposes problems of commercial communication (restrain on use of certain names in communication) |
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basic category of trademark
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word, name, symbol, device, other designation, or some combo that is distinctive of a person's goods/services AND used to distinguish those goods/services as being from the owner
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service category of trademark
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identify services offered rather than product
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certification category of trademark
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relate to words, names, symbols, or devices or other designation that certain goods/services have certain characteristics
NOTE: NOT used by owners. owners let others use the mark if certain standards are observives |
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collective mark of trademark
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used by members of an organization to show that something comes from that group
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what can be a trademark?
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can be formed by other type of symbol such as drawing, slogan, numbers, combinations
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distinctive categories (trademark)
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1) arbitrary/fanciful: coining of a brand new word that has no other meaning other than that good or service
-inherently distinctive (xerox) 2) suggestive terms: indirectly describe goods/services indentifier eg. Roach motel 3) descriptive terms (surnames, geographic marks)- directly identifies product NOTE: not considered distinctive unless have secondary meaning |
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secondary meaning
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mark has acquires secondary meaning if in the eyes of the public, the primary purpose is to identify the source of the product, rather the product itself
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how to show secondary meaning
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testimony
consumer surveys volumes of sales NOTE:does NOT need to identify the specific maker of the product NOTE 2: common test question: drawing the line between suggestive and descriptive marks |
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generic terms
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never registerable
sometimes old trademarks become generic terms--> primary significance of a term becomes to identify the product rather than he brand, the mark will be determined to have gone generic |
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marks precluded from registration
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generic marks
deceptively mis-descriptive: deceptive marks are never registerable NOTE: secondary meaning marker may be registered geographic mis-descriptive: need to show secondary meaning immoral/scandalous marks: apply ordinary dictionary definition, morally offensive, disreputable |
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judge standard for deceptive mis-descriptive
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Judge: intent of use of mark in whether misrepresented fact would be believed by consumer when making purchasing decision
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prior use of marks
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marks may not be registered if they so resemble an unabandoned mark previously used/registered in the U.S. so as to cause confusion among members of the public
NOTE: under common law |
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categories of symbols that can serve as marks
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1) product/container shapes
2) Colors 3) Trade dress |
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products/container shape requirement
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1) distinctiveness: secondary meaning or by showing that the product/container is inherently distinctive
2) Must be non-functional Functional test: deemed functional if it is superior or economy of operation in light of competitive necessity to copy |
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factors to consider in functionality test
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number/cost of available design alternatives
user touted utilitarian features through advertising was design previously protected through utility patent aesthetic functionality |
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Colors: serve as marks
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distinctive AND non-functional
NOTE: color can be functional- coloring on bottle to prevent UV radiation |
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trade dress: serve as marks
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overall appearance of goods or services
distinctiveness and non-functionality note aggregation of functionality and non-functionality |
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ownership of trademark
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secure under both state and federal protection
note: unifying element is use-- most important factor to establish a trademark right |
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state trademark law
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Common law
use creates right to prevent confusion use the mark to the point that people associate that mark with your product designed to protect the consumer need to have active use notifies others to not use |
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does the mark travel with the good? two factor test
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1) mark must be directed toward the goods or services for which the TM protection is sough
2) type/scope of the use must be reasonably substantial and in ordinary course of trade |
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summary of trademark ownership and common law
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party may show it used a mark sufficiently to satisfy the CL if use in the course of ordinary business
mark does NOT need to be affixed on the product and may be placed on advertisements/displays token transaction sufficient IF followed up continuous use of the mark |
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federal trademark ownership
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entirely optional (CL is independent of federal registration)
use in commerce creates priority registration creates the right similar goods/services nationwide purely statutory does NOT take take effect until registration |
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benefits of federal trademark
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guarantees owner rights in all parts of the U.S.
only federal registrant can use the R symbol |
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use of federal trademark
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1) bonafide ordinary course of trade
2) bonafide intent to use |
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common law trademark rights
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gives the right to prevent others from using the same mark or similar mark in such a way that creates a likelihood of confusion
NOTE: does NOT confer rights OUTSIDE the market in which it is being used/outside marker which it is known |
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second user and CL trademark usage
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second user must show the following
1) later user mark in good faith (no knowledge of earlier use) 2) must operate in a remote geographical area |
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natural expansion doctrine
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allows a senior use of a TM to a limited geographical area in which they were the first to use the mark
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natural expansion doctrine tests (4)
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1) how great is the geographic distance from users and point of border of area of expansion
2) nature of the business (large or small zone of actual market penetration) 3) history of senior users past expansion 4)would it require an unusual great leap forward for the senior user to enter the zone |
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federal trademark advantage
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includes CL benefits
prima facie evidence of registered marks ownership and validity during litigation nationwide constructive notice of the mark as of filing date and use of filing date protection against importation of infringing goods use of the R symbol |
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infringement and TM
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owner of TM acquires the right to prevent their goods/services from being confused with those of others
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Critical issue in infringement and TM
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whether any likelihood that an appreciable number of ordinary consumers are likely to be confused/misled as to the source of the goods in question
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infringement evaluation
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strength of TM
degree of similarity between original and accuse mark proximity of products likelihood that prior owner will bridge the gap actual confusion reciprocal of D's good faith in adopting its own mark quality of D's product sophistication of buyers |
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degree of purchaser care
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last refuge of scoundrels: identical marks and there is likely confuse. people are confused because they deserve it
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contributory infringement
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under theory of agency law
if one person knowingly aids the infringement of another or induces another's infringement- face liability vicarious liability: manufacturers/distributors |
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infringement defenses
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fair use: use of the mark that is used fairly and in good faith only to describe the good/services
examples - comparative advertising -reconditioned parts -parody |
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three factors for infringement and fair use
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1) does D use the mark to describe the product/service or go further to display products as one's own
2) use of mark in good faith or trying to free ride 3) likelihood of confusion |
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abandonment
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rare expression/use of mark by proprietor
-ceased use of mark -owner has no intention of remaining use -Lanham act: 3 years |
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Remedies under Lanham act for TM infringement
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-injunction
-award of damages |
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dilution
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allows owner of a mark to enforce a mark against a wide range of products and market
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dilution and activities exemption from liability
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comparative advertising
non-commercial use of mark all forms of news reporting |
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trade secret
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any information that can be used in the operation of a business/enterprise that is sufficiently valuable/secret to afford an actual or potential economic advantage over others
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improper means and trade secrets
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use/disclosure of a trade secret through a breach of confidence, abuse of a confidential relationship, or by accident or mistake
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Examples of trade secret
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formula, pattern, compilation of data, computer program, process
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basic element of trade secret
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formula
holder knows it competitors do not known it provides an advantage for the holder |
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two factors to judge if it is a trade secret
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secrecy
value |
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secrecy and trade secret
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rule: level of secrecy must be reasonable under the circumstances
NOTE: if information is readily known in the industry, then not a trade secret |
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value and trade secret
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must afford an actual or potential economic advantage over others
holder can demonstrate value by direct evidence of it's competitive worth. NOTE: may show by showing if people will pay for access |
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misappropriation of TS (2 ways)
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breach of confidential relationship (permission granted/not given)
improper means of acquisition- any means that fall below the generally accepted standards of commercial morality and reasonable conduct |
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proper means of learning protected information
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1) discovery by independent invention
2) reverse engineering 3) observation of item in public use 4) obtaining trade secret from published literature |
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non-compete agreement
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include restrictive covenant or promises where one party agrees not to compete with another
strictly construed |
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non-compete agreement and factor analysis
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whether the restriction furthers legitimate business purpose
whether restrictions are subject to appropriate limits in terms of location and subject matter |
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blue pencil rule and trade secret
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if unreasonable elements can be crossed out of a non-compete while allowing the contract to survive
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patents
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granted to inventor
creates a legal presumption that the invention meets the necessary criteria -not covered by someone else's patent -not from the public domain |
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invention steps
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1) conception
2) reduction to practice |
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qualification for invention when filing a patent application
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specification
set of drawings oath from inventor indicating they were the first inventor CRITICAL Element: whether a person of sufficient skill in the field could make the invention |
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patentability analysis
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1) What is the disclosure
2) does it have a written description 3) satisfy the best mode requirement 4) enable a person of ordinary skill in the pertinent area to create the invention 5) look at limits of Section 102/103 6) statutory bars 7) usefulness |
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statutory subject matter
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authorizes patents for any new/useful process/machine/manufacture/composition of matter
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statutory subject matter patents not granted to..
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laws and nature
abstract ideas business methods/medical procedures are on the fence |
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statutory subject matter patents and living matter
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may be granted that has been altered to have characteristics it would not normally have
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novelty standard and denial of patent when..
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1) if applicant's invention was known by others in the U.S. before the applicant invented. To have been known, must be
a) reduced to practice (ordinary skill argument) b) accessible to public: prior to invention date, must have been reduced to practice 2) applicant's invention used by others in the U.S before application invented 3) described in a printed publication in the U.S/foreign country |
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statutory bar/inventor requirement
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a patent must be denied if ore than 1 year prior to the date the application was files, the invention was in public use in the U.S.
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experimental use
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public use that is primarily experimental will not trigger prior 102(b):
must be used to test the invention not for commercial exploitation or market testing |
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obvious/non-obvious standard
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invention is not patentable if at the time it was made would be have been obvious to a person having ordinary skill in the pertinent art with knowledge of all the prior art
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evaluation of obvious/non-obvious standard
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1) does the new invention represent sufficient innovation over the prior art to warrant patent protection
2) whether a novel invention is a sufficient advance in the art that its disclosure to the public warrants the right to exclude others from its use for a limited time period |
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non-obvious determination
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1) scope and content of prior art
2) differences between the pertinent prior art and the invention 3) measuring obviousness according to the ordinary level of skill in the pertinent art |
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prior art
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1)a person w/ordinary skill in the art is presumed to have all pertinent prior art existing when the invention was made
2) prior art = pertinent if - in the same field of endeavor -reasonably related to the particular problem the inventor was addressing --invention was on sale in the U.S. --invention described in publication in the U.S./foreign country --invention was patented anywhere in the world |
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usefulness standard
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utility standard
needs to confer a significant benefit in its current form useful invention if there is a current/significant beneficial use of the invention or product of the process |
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disclosure requirement
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1) claiming requirement: must include 1+ claims that clearly and distinctly describe the invention
2)enabling requirement: must describe how to make/use the invention with sufficient clarity/detail to enable a person with ordinary skill in relevant art to make/use without undue experimentation |
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patent timeline
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1) invention
2) application 3) prosecution of the patent 4) period between issue and expiration where owner has limited monopoly 5) patent goes into public domain |
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provisional application
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1) statutory bars stops running when a provisional application is filed
2) once the filing occurred --> anticipation/novelty/obviousness are minimized as issues to worry about 3) stop statutory bar clock while not using up the 20 year monopoly 4) inventor still must be disclosed |
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sufficiency of disclosure elements
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1) invention
2) nature/state of development of prior art 3) knowledge and kinds/degree of skills/experience of one skilled in the art 4) drawings may be sufficient to prove the written description 5) at time of filing, specification must be enabling AND the term must not be indefinite within the meaning set forth |
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infringement
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suits to enforce patents brought in U.S. district court
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liability from infringement arise from
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1) direct infringement
2) inducing another to infringe 3) contributory infringement 4) importing/selling/offering to sell/using a product made through a process protected by a U.S. process patent 5) manufacturing/selling certain component of a patented invention to be assembled abroad |
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claim interpretation and literal infringement
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1)look at the claim which will describe the scope of the invention
2) Court decides the meaning and scope (issue of law) 3) If D's product/process faills within the description of the claim, containing all the elements, =infringement |
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doctrine of equivalents
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a new device or process violates an existing patent if the new invention does the same work in a substantially similar
must find an element that corresponds/equivalent to each claim described in the patent claim |
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impact of doctrine of equivalents
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prevents D from avoiding liability by making insubstantial changes to a product
NOTE: if amend a claim, give up right to claim equivalents |
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standard to evaluate doctrine of equivalents
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objective determination made on an element by element basis from the perspective of a person with ordinary skill in the art
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direct infringement and patent
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a person who makes, uses, sells, offers to sell, imports the patent invention without proper authorization
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induce to infringe
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d must know that direct infringement is likely to occur if D actively/knowingly solicits/assists a third party to infringe
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contributory infringement
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D know that the component was especially made/adapted for use in the patent invention and has no other substantial use AND
purchaser does use the component to infringe directly |
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defenses to infringement
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1) D overcome presumption with clear/convincing evidence that a condition of patentability was not satisfied
2) patent misuse: if patent holder use patent to unreasonably extend market power beyond what congress intended 3) intellectual curiousity only 4) 2-6 year statutory exception that allows for experimentation if invention is not complete |
