2006 Lane Reports

Realize and Maximize Your Trademarks and Copyrights

Saturday, July 1, 2006
by Cori A. Mathis, J.D.

Trademarks and copyrights are making headlines. Dan Brown defended the copyright in his popular book The Da Vinci Code in United States and London courts. Owners of the small town ice cream shop "Krispy Kream" defended their trademark rights in their company name against donut giant Krispy Kreme Doughnuts Inc. Owners of the Kentucky store "Victor's Little Secret" battled Victoria's Secret all the way to the United States Supreme Court under allegations that their company's name diluted the name of the famous lingerie company. The USC Trojans ran up against Pat Riley's company, Riles & Co., when they used the phrase "Three-Pete" (a reference to coach Pete Carroll) without first obtaining a license from Riles & Co., owners of the registered trademark "Three-Peat".

So, what is all the buzz about? And more importantly, does it affect you or your company? The short answer is yes - in our global economy and Internet age, trademarks and copyrights affect everyone doing business, selling products and offering services. So, what do you need to know to get in the game?

Trademarks

Trademarks are words, phrases, and logos that identify the source of products or services. Strong trademarks identify source, indicate consistency, and are often one of a company's most valuable asset. Most companies protect trademark rights in their name. But, the names of products, services and company logos also have the potential for being very valuable trademarks.

The strength of a trademark is evident when you think of AOL after hearing the phrase, "You've got mail". Strong trademark rights are also the reason that you know what is on the menu at McDonalds, whether you encounter the golden arches in Chicago, New York or Russia.

Copyrights

Copyrights are created when original ideas are fixed in a tangible medium of expression. Copyrights protect such things as songs, computer software programs, books, web site content and, if a pending House of Representatives bill is passed, fashion design.

Early in his career, Walt Disney lost the copyright in his first fully animated cartoon character, Oswald the Lucky Rabbit. Oswald faded into oblivion, but due to a hard lesson learned, the copyright in his next fully animated character, Mickey Mouse, is still going strong. Walt Disney became so aggressive in the protection of his copyrights that the saying "Don't Mess With the Mouse" lingers today.

A more modern copyright protection that you have probably encountered is in the computer software industry. Computer companies go to great lengths to protect their copyrights by binding users of their software programs to certain terms and conditions. These terms and conditions were once found on the shrink-wrapped packaging of boxed software programs. Today, the terms and conditions appear on your computer screen with an "I accept" option that you must click to proceed with the installation.

The Value of Trademarks and Copyrights

On April 26, World Intellectual Property Day, the White House recognized the "vital importance of protecting intellectual property." In its Statement No. 142, the Financial Accounting Standards Board stated that "intangible assets are an increasingly important economic resource for many entities and are an increasing proportion of the assets acquired in many transactions."

Companies are investing a significant amount of money establishing and protecting their trademarks and copyrights because they realize that these assets are extremely valuable. Trademarks and copyrights can be licensed to third parties in exchange for royalty payments, sold to third parties, used as collateral for loans, and used to obtain monetary damages from unauthorized users of those trademarks and copyrights.

However, all of these lucrative possibilities may be lost if you do not take the necessary steps to establish and protect your trademarks and copyrights before you start using them or very soon thereafter. An intellectual property attorney at The Law Offices of Marc J. Lane can guide you through the nuances of this field and help you maximize the value of your trademarks and copyrights. However, a brief summary of the process is below.

The first step in establishing a valuable trademark is to ensure that the term, phrase or logo you have chosen is a unique and strong source-identifier. That is, you want to choose a mark that no one else is using on a similar product or service. You also want to choose a mark that will prove to be a strong trademark- one that is not generic and does not merely describe its products or services.

With regard to copyrights, your work should be screened and written permission should be obtained for any third-party content used in your work. This includes obtaining permission to use or frame third-party articles on your web site and to provide links to third-party web sites.

The next step is seeking federal registration of your trademarks and copyrights by filing applications with the appropriate offices. These applications must be carefully drafted so that they are broad enough to provide sufficient protection, but not so broad as to be considered fraudulent and vulnerable to cancellation. Obtaining a federal registration of your trademarks and copyrights provides you with several advantages, including giving the public notice that you own those rights and increasing your ability to recover damages against an infringer.

At the same time, you need to market your products and services in a way that increases the value of your trademarks and copyrights. On most advertisements, you will notice the ® or ™ symbol after a product name or logo or the phrase "© Copyright 2006 XYZ Company. All Rights Reserved." You may also encounter web pages titled, "Trademark Guidelines" which inform visitors of the proper way to use a company's trademarks. These are all efforts to maximize the value of trademarks and copyrights. Proper usage strengthens your rights, increases the value of your trademarks and copyrights, and ensures that your trademarks will not meet the same fate as aspirin and escalator, once registered trademarks that can now be freely used by anyone.

Even if you decide not to register or protect your trademarks and copyrights, screening your creative works, company and product names is a smart preventative measure. Companies that own trademarks have a duty to enforce their rights so that those rights are not lost and most copyright owners are extremely sensitive to copying of their creative works.

For these reasons, trademark and copyright owners tend to be aggressive in enforcing their rights against third parties that they believe are infringing on their rights. So that you do not find yourself on the receiving end of a lawsuit or a cease and desist letter, it is important that you make sure that your creative works, company and product names do not infringe pre-existing trademarks and copyrights.

The Law Offices of Marc J. Lane would be happy to help you establish and protect valuable trademarks and copyrights or screen and manage your already existing creative works, company and product names. For further information, please contact Marc Lane in confidence via email at [email protected] or via telephone at (312) 372-1040.


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Cori A. Mathis, J.D., is an Associate Attorney with The Law Offices of Marc J. Lane, a Professional Corporation. Ms. Mathis received a certificate in Intellectual Property Law from the DePaul College of Law.

 

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Read the June 5th, Registered Rep article entitled, "Advocacy Investing, Catnip for Wealthy Clients?"

 

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The Lane Report is a publication of The Law Offices of Marc J. Lane, a Professional Corporation. We attempt to highlight and discuss areas of general interest that may result in planning opportunities. Nothing contained in The Lane Report should be construed as legal advice or a legal opinion. Consultation with a professional is recommended before implementing any of the ideas discussed herein. Copyright © 2007 by The Law Offices of Marc J. Lane, A Professional Corporation. Reproduction, in whole or in part, is forbidden without prior written permission.

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