Business Law 4510 Chapter 5 Notes Intellectual Property and Internet Law I Trademarks and Related Property a Intellectual property any property resulting from intellectual creative processes the products of an individual s mind Trademark a distinctive mark motto device or emblem that a manufacturer stamps prints or otherwise affixes to the goods it produces so that they may be identified on the market and their origins made known The Coca Cola Co v Koke Co of America b c i Issue did the marketing of products called Koke and Dope by the Koke Company of America and other firm s constitute an unauthorized use of Coca Cola s trademark ii Yes for Koke but no for Dope The Court enjoined prevented the competing beverage companies from calling their products Koke but did not prevent them from calling their products Dope d Statutory Protection of Trademarks i Trademark dilution 1 When a trademark is used without authorization in a way that diminished the distinctive quality Protect distinctive or famous trademarks from certain unauthorized uses even when use is 2 on noncompeting goods or is unlikely to confuse ii Use of a similar mark may constitute trademark dilution 1 A famous mark may be diluted not only by the use of an identical mark but also by the use of a similar mark provided that it reduces the value of the famous mark 2 A similar mark is more likely to lessen the value of a famous mark when the companies provide 3 related goods or compete in the same market To establish dilution it is required that the plaintiff show that the similar mark actually reduces the value of the famous mark e Trademark Registration i Can be registered either with the state or the federal government if 1 2 It is currently in commerce The applicant intends to put the mark into commerce within 6 months a Can be extended to 30 months in special circumstances ii Once registered any applicant can legally protect the trademark f Trademark Infringement Infringed used without authorization i ii To succeed in a case owner must show the defendant s use of the mark created a likelihood of confusion about the origin of the defendant s goods or services g Distinctiveness of Mark i Only protected if deemed sufficiently distinct from all competing trademarks ii Strong marks most distinctive since they are normally taken from outside the context of the particular product and thus provide the best means of distinguishing one product from another Fanciful invented words such as Xerox or Kodak 1 2 Arbitrary use common words in a fictitious or arbitrary manner to create a distinctive mark that 3 identified the source of the product such as dutch boy for a can of paint Suggestive suggests something about a product without describing the product directly such as dairy queen which suggests an association between its products and milk but doesn t describe the ice cream directly iii Secondary meaning 1 When customers begin to associate a specific term or phrase with specific trademarked items a Descriptive terms geographic terms personal names only protected once they acquire a secondary meaning iv Generic terms 1 2 No protection regardless of if they have a secondary meaning Terms that refer to an entire class of products bicycle computer h Service Certification and Collective Marks i Service mark a trademark that is used to distinguish the services not products of a person or company ii Certification mark used to certify the region materials mode of manufacture quality or other characteristic of specific goods or services 1 Collective mark when a certification mark is used by an association union or other organization i Trade Dress i A trademark used to describe the image and overall appearance of a product impression created by the product can either include all of part of the total image j Counterfeit Goods i Copy or otherwise imitate trademarked goods but are not genuine ii Stop counterfeiting in manufactured goods act SCMGA 2006 1 Combat the growing problem of counterfeit goods by making it illegal to intentionally bring in counterfeit goods or attempt to bring in counterfeit goods or services or to knowingly use a counterfeit mark on or in connection with goods or services k Trade Names i Trademarks apply to products trade names apply to part of whole business names 1 2 Protected as trademarks if company name and product trademarked are the same In order to be protected name must be unusual or fanciful II Cyber Marks a b Domain Names Trademarks in cyberspace i The core part of an internet address ii By using the same or similar domain name parties have attempted to profit from the goodwill of a competition to sell porn to offer for sale another party s domain name and other infringement c Anticybersquatting Legislation ACPA 1999 i Cybersquatting when a person registers a domain name that is the same as or confusingly similar to the trademark of another and then offers to sell the domain name back to the trademark owner It is illegal to register traffic in or use a domain name ii 1 2 If the name is identical or confusingly similar to the trademark of another If the one registering trafficking in or using the domain name has a bad faith intent to profit a An intent to divert consumers in a way that could harm the goodwill represented by the trademark b An offer to transfer or sell the domain name to the trademark owner c An intent to use the domain name to offer goods and services d Meta Tags key words are used to help sites appear more in search results i ii Using another s trademark as a meta tag without permission is trademark infringement unless the use is reasonably necessary and does not suggest that the owner authorized or sponsored the use Licensing e i Agreement permitting the use of a trademark copyright patent or trade secret for limited purposes 1 Grants only the rights explicitly stated in the license agreement Licensor party that owns the intellectual property rights and issues the license Licensee party obtaining the license ii iii III Patents a A grant from the government that gives an inventor the exclusive right to make use and sell an invention i Period of 20 years from the date of filing the application for a patent ii Patents for designs are given a 14 year period iii Must demonstrate that the invention discovery process or design is novel useful and not obvious b In the USA the first person to invent a product or process gets the patent rights i If not the first person to patent must prove that