However, laypeople often put incorrect information in their copyright application, potentially delaying the processing of their application and jeopardizing the value of any resulting registration. One common source of error is the first publication date.

Has Your Work Been Published?

The first publication date is the date your work was first published anywhere in the world. But, what is publication? In copyright law, publication has a specific definition that differs from what you might find in a dictionary:

“the distribution of copies or phonorecords of a work to the public by sale or other transfer of ownership, or by rental, lease, or lending. The offering to distribute copies or phonorecords to a group of persons for purposes of further distribution, public performance, or public display, constitutes publication. A public performance or display of a work does not of itself constitute publication”

See the U.S. Copyright Office FAQ and Copyright Basics Circular.

Displaying your work to the public is NOT publication. Therefore, in my opinion, most blog articles are NOT published, although logically you might think otherwise if you did not know this definition. Making copies of your work and renting, leasing, or lending them, or selling or otherwise transferring ownership of them, is publication. Offering to distribute copies to a group for further distribution or display is publication.

What if I Can’t Remember the Exact Date of First Publication?

The date of first publication should be given in a month/day/year format. But sometimes, first publication occurred many years ago. What if you do not know the exact date? How can you give a month and day?

The Copyright Office instructs that if you do not know the exact date of first publication, you should give an approximate month, date, and year. See Copyright Office Help. So just try to pin the date down as best you can, and give your best guess.

In court, your copyright registration will serve as prima facie evidence of its contents, requiring a defendant to produce some evidence contesting the information it contains before you would need to produce evidence to support it.

Conclusion

Whether a work has been published, and if so on what day, can be a difficult question to answer, particular for certain types of works like online texts and computer programs. If you have questions about the date of first publication of your work, talk to a copyright attorney or at least give the Copyright Office a call or email.

Unfortunately, it is rarely possible to register multiple works together in a single copyright application.

Registering Collections of Unpublished Works

Unpublished works (essentially, works where copies have not been sold) can be registered together if the same person or entity owns every work in the collection and at least one author contributed to the creation of every work. See the U.S. Copyright Office help pages. In the typical situation where a single author/artist has created each of the works and retains ownership of them, this requirement is satisfied.

Page 9 of the Copyright Basics circular put out by the U.S. Copyright Office details additional qualifications:

1. The combined elements must bear a single title identifying the collection as a whole; and
2. The elements of the collection are assembled in an orderly form

Exactly what this means is not entirely clear. If you give the collection a title (e.g., “Photographs 2007″) and assemble the elements in an “orderly form” your collection would seem to qualify. These requirements to not appear to be a serious obstacle. The more detailed Copyright Office guidelines with examples do not even mention these other requirements.

In any case, the staff at the Copyright Office is quite helpful and usually responds quickly to questions sent by email and can also be reached by phone. Please contact them if you have any questions about your unpublished collection.

As a data point, when I went to the Copyright Office to register a large number of (unpublished) secure exams, the staff recommended that I file one application for each set of exams that were released together. I believe they could have all been included in one application, although that could make licensing and copyright management more difficult. If anyone has any input on this issue, please leave it in the comments.

Registering Collections of Published Works

A group of published works can also be registered together under certain circumstances. To be registered in a single application, the published works must all be:

1. First published on the same day;
2. First published in the same unit of publications; and
3. Owned by the same person or entity.

See the U.S. Copyright Office help pages. For examples, see here.  The first and third requirements are clear-cut, the second less so. Generally, two works are published in the same unit of publication if they are sold together as a single unit.

Conclusion

It is a good idea to consult a copyright attorney if you are weighing whether you can or should apply to register multiple works together. In a future post, I will discuss the advantages and disadvantages of registering multiple works with a single application.

However, sometimes it is difficult to locate one or more of the inventors, and sometimes one or more of the inventors refuses to sign. When this happens, it is often still possible to proceed with an application.

None of the Inventors are Available

If none of the inventors can be found or are willing to sign, an application can still be filed by someone who has been assigned the patent rights or to whom the inventor has agreed to assign the patent rights or who otherwise has a proprietary interest in the invention (35 U.S.C. §118).

Typically, this would be an employer, to whom the inventor has either already signed an assignment giving it the patent rights to the invention in question or to whom the inventor has agreed, often in an employment agreement, to assign the invention. A standard employment agreement in technology industries requires assignment of all inventions developed during the course of employment to the employer.

In this case, the assignee or otherwise interested party must (MPEP 409.03(b)):

1. Execute the oath or declaration on behalf of the inventor(s);
2. State the relationship between it and the inventor(s);
3. Submit proof that the inventor(s) cannot be found or reached after a diligent effort or refuse to execute the application papers;
4. Submit the last known address of the inventor(s);
5. Show that it has a proprietary interest in the invention (MPEP §409.03(f));
6. Show that the filing of the application is necessary to preserve the rights of the parties or to prevent irreparable damage; and
7. Pay the petition fee under §1.17(g).

Most of these elements can usually be satisfied by statements or affidavits on the part of the assignee or other interested party, along with relevant assignment documents.

One or More Inventors Are Available

When at least one inventor is available and willing to sign the oath or declaration, the available inventor(s) can sign and submit the application on behalf of all the inventors. In this case, the application must include proof that the nonsigning inventor(s) cannot be reached or refuse to execute the application papers and the last known address of the nonsigning joint inventor(s) (MPEP §409.03(a)). See MPEP § 409.03(d).

Rights of Nonsigning Inventors

These procedures do not terminate the rights of nonsigning inventors. The nonsigning inventors retain the same rights they would have had if they had signed. A nonsigning inventor who becomes aware of the application and wishes to participate may join the application by submitting a signed oath or declaration. A nonsigning inventor cannot revoke or grant a power of attorney without agreement of the signing applicant. MPEP §409.03(i).

Note that where all the inventors have assigned the rights to their invention, it is the assignee who has the patent rights and the inventors, signed or unsigned, have few rights beyond having their names listed on the patent as inventors.

So, rendering (offering) your services in multiple states satisfies this requirement. Yet also it seems that the requirement can be met without offering your services in multiple states or in multiple countries, by “rendering your services in commerce.”

Rendering Trademarked Services in Commerce

So what the heck does rendering the services in commerce mean? Well, only trademarks used in interstate commerce are entitled to federal trademark registration, because the federal government only has the power to regulate interstate commerce (it’s in the Constitution!). “In commerce” here is differentiated from commerce in multiple states or in the U.S. and a foreign country, so it mean intrastate service that nevertheless qualifies as “interstate” commerce.

Intrastate Hotel, Dining, and Automotive Services Are Interstate Commerce

The TMEP explains: “if intrastate use directly affects a type of commerce that Congress may regulate, this constitutes use in commerce within the meaning of the Act.” TMEP § 901.03. Thus, automotive, restaurant, and hotel services are generally considered to be used in commerce because they are available to customers traveling interstate on federal highways, and thus are subject to federal regulation.

Intrastate Services That Target or Serve Out-of-State Customers Qualify As Interstate Commerce

Other services offered in only a single state may also be considered to be rendered in commerce if a sufficient inter-state nexus can be shown. Evidence that the services are advertised in multiple states or are used by residents of different states is effective in demonstrating that the services have been rendered in commerce.

Internet Services Are Interstate Commerce

Services offered over the Internet are considered interstate commerce, “since the services are available to a national and international audience who must use interstate telephone lines to access a website.” TMEP § 901.03

Summary

In order to register your trademark with the United States Patent and Trademark Office, you must use your trademark in connection with services offered in interstate commerce. That means the services must either be offered in multiple states, or in the U.S. and a foreign country, or that the services are offered in a single state, but to out-of-state customers.

And if your services do not fall under any of those possibilities, but you can think of another way to tie your services to interstate commerce, the Trademark Office could allow your trademark to be registered as well.

So what does it mean to use a trademark “in commerce”? Is it sufficient to use your trademark on your website? The answer is, sometimes yes and sometimes no. It depends on whether your mark is a plain old trademark or a service mark. A service mark is a trademark that is used to sell services, rather than physical products.

To register a service mark, you must show that you have used the mark in the advertisement or sale of a service to prospective customers and that you were prepared to provide the service at the time of the advertisement.

The Rule Regarding Use in Commerce of a Service Mark

TMEP § 901.01 states that “a mark shall be deemed to be in use in commerce… on services when it is used or displayed in the sale or advertising of services and the services are rendered in commerce, or the services are rendered in more than one State or in the United States and a foreign country and the person rendering the services is engaged in commerce in connection with the services.”

In other words, for a service mark use in commerce requires:

1. Display of the service mark in the sale or advertisement of services, and
2. Rendering the services in commerce or in multiple states or the U.S. and a foreign country

Let us ignore the second part of #2 for now (it’s a doozy) and parse the rest of that.

1) Display of the Service Mark in the Sale or Advertising of Services

To successfully claim use of your service mark and achieve a federal registration, you must show that you have used your mark in an advertisement or sale of your services. This is generally an easy requirement to fulfill. Display of your service mark on your website, where your website advertises your services, generally is sufficient to satisfy it, and is the most popular way to do so.

Advertisements Are Not Sufficient to Show Use in Commerce For Trademarks

Note that this is in contrast to the rule for trademarks (used on goods/products), where use in an advertisement is NOT sufficient and therefore use on a website often does NOT satisfy the requirement. Many business owners get in trouble with this distinction and do not understand why their website is not sufficient to show use. Nevertheless, it usually is not (consult your attorney to find out for sure).

Mere Preparation to Use Is Not Sufficient to Show Use in Commerce of  a Service Mark

What does not satisfy this requirement is preparation to use the service mark. “[m]ere adoption (selection) of a mark accompanied by preparations to begin its use are insufficient . . . for claiming ownership of and applying
to register the mark.” Aycock Engineering, Inc., v. Airflite, Inc., (Fed. Cir. 2009) (citing Intermed, 197 USPQ at 507).

Such acts as soliciting the support of others, issuing a detailed announcement using the service mark to inform and update individuals about the service’s status, and hiring a fundraising firm to raise money for the service are insufficient.

Use in Commerce Requires Advertisement or Sale to Customers

Advertising your service to potential partners, investors, or affiliates is not sufficient to show use in commerce. Rather, “there must be an open and notorious public offering of the services to those for whom the services are intended.” Aycock Engineering, Inc., v. Airflite, Inc., (Fed. Cir. 2009) (citing Intermed, 197 USPQ at 507)(emphasis added).

2) Rendering the Services

Mere advertisement of your services, in and of itself, is not sufficient to satisfy the federal trademark registration requirement of use in commerce for service marks. You must also actually be prepared to provide the services you are advertising.

Advertising a Service You Will Soon Provide is NOT Sufficient

“Without question, advertising or publicizing a service that the applicant intends to perform in the future will not support registration. Instead, the advertising or publicizing must relate to ‘an existing service which has already been offered to the public’… The use in advertising which creates a right in a service mark must be advertising which relates to an existing service which has already been offered to the public.” Aycock Engineering, Inc., v. Airflite, Inc., (Fed. Cir. 2009) (citing Greyhound Corp. v. Armour Life Ins. Co., 214 USPQ 473, 474 (TTAB 1982))

The Services Advertised and Rendered Must Be The Services Listed in Your Trademark Application

Be careful when listing the services you provide or intent to provide. You will have to show that you have advertised and are ready to perform THOSE services. The listed services (or goods) can be changed, but only to narrow or clarify what you have listed, and never to broaden the list.

Thus, going from “Clothes” to “shirts” is okay, but going from “shirts” to “clothes” is not. That is one reason to leave your listing of services broad if you can, particularly if you are uncertain exactly how to describe the services you are offering or what service you actually will provide.

In Aycock Engineering, the registrant’s federal trademark registration was canceled because his activities did “not constitute a service that falls within the scope of our definition of the recitation of services.” Mr. Aycock’s listed services covered  “only the arranging of flights between an air taxi operator and a passenger”, whereas his activities involved “efforts to arrange a network of air taxi operators.”

Conclusion

The failure to properly show use in commerce of your trademark can result in rejection of your application for registration or cancellation of your federal registration years later. Do not take chances with formalities like these, work with a trademark attorney early on to ensure the strength of your trademark rights, and learn from the mistakes of others.

The transfer of a trademark to a new owner, for compensation or otherwise, is called an assignment. 37 C.F.R. §3.1. If the trademark in question is registered or pending registration, the assignment should be filed with the Trademark Office so that its records will reflect the change in ownership.

Trademarks That Have Been Used In Commerce

If you have already used your trademark in commerce, the assignment rules for your trademark application are the same as for a registered trademark. A registered trademark can be assigned, as long as it is transferred along with “the good will of the business in which the mark is used, or that part of the good will of the business connected with the use of and symbolized by the mark.” TMEP § 501.01

So if you have a trademark for a shoe brand and part of your business is selling your branded shoes, you can sell your shoe trademark to another company, but you must also sell the portion of your business that sells shoes under that trademark. You cannot simply sell the brand name to the other company to place on their own shoes and then continue selling your shoes under a different name.

The reason for this is that  trademark rights exist to avoid consumer confusion. Companies are not granted exclusive rights to brand names just because they were they first to think them up. Rather, the purpose of exclusive trademark rights is to allow consumers to identify products that they are familiar with and to expect a consistent source for the product. Because of trademark rights, when you buy a computer with the Apple logo on it, you know that it is made by the Apple Computer Company and not some fly-by-night computer startup.

The trafficking of trademarks apart from the business or goodwill they are associated with is antithetical to this purpose. If Apple sold the apple logo to some other company and the company started using the logo on their own, completely different computers, this would be very confusing for consumers. Therefore this type of trafficking in brand names and other trademarks is not allowed.

Intent-to-Use Applications

You can apply for a trademark registration before you being using that trademark in commerce. Although a registration cannot be issued until use begins, the application will “hold your place in line” and prevent other people who thought of the trademark after you from using it.

However, an intent-to-use application cannot be assigned unless it pertains to an ongoing and existing business (or portion of a business) and is transferred along with that business. TMEP § 501.01 So if you have an active business selling herbal supplements and apply for a new trademark you intend to use with your business, you can sell or transfer that trademark application along with your business to another company.

On the other hand, if you intend to start a business selling herbal supplements in the future, and apply for a trademark for that business, you cannot assign your application to anyone else. You cannot even assign your application from yourself to your new LLC that you own 100% and intend to use to start your business. See, for example, Opposition No. 118,181, Pfizer, Inc. v. Gregg Hamerschlag.

Avoiding an invalid assignment is critical. If you assign an application when you should not, the result is not an invalidation of your assignment, but an invalidation of your application!

Without this requirement, an applicant would be free to assign an intent-to-use application to anyone, since the goodwill that would have to be transferred is trivial or nonexistent. Trademark speculation, like domain name speculation, would probably be rampant, with entrepreneurs registering hundreds or, like modern domainers, hundreds of thousands, of potentially valuable trademarks and holding them for sale to actual businesses. The requirement of an ongoing business avoids the trafficking of trademarks that the goodwill requirement is meant to avoid.

More reading:

U.S. Assignments (International Trademark Association)

Avoiding illegal trademark transfers: introducing the assignment-in-gross (Florida Bar Journal)

Business Names, Slogans, Brand Names, and Other Short Phrases

Business names, slogans, brand names, and other short phrases cannot be copyrighted. They are explicitly excluded from copyright protection. Any kind of name, title, catch phrase or short advertising expression will fall under this exclusion. Listings of ingredients, including recipes, formulas, and labels, are also not protected by copyright (although text descriptions, directions, or explanations may be copyrightable).

Trademark Protection for Names and Slogans

Ideas for business names, brand names, and slogans can be protected by trademark law if you intend to use them in commerce. Trademark law protects brand names, logos, slogans, and anything else that is used in commerce to distinguish your products or services from those of others. Trademark law grants exclusive rights to such marks to the first user, under certain circumstances.

For example, if you place your logo or brand name on your products so that customers can easily identify them and distinguish them from the products of competitors, that logo or brand name is protected as a trademark. Similarly, slogans, brand names, and other marks used to advertise your services are afforded trademark protection.

Although some protection for trademarks arises automatically when you begin using them in commerce, it is necessary to register your trademark at the federal level to protect it nationwide, or to get any protection for a trademark you have not yet begun to use in commerce.

To protect a great idea for a brand name or slogan that you want to use in business, contact a trademark attorney to apply for a trademark registration. If you have an idea for a name, slogan, or title that you do not plan to use in business, it cannot be protected- just keep it a secret!

Trade Secret and Patent Protection for Recipes and Formulas

Recipes and formulas are not protected by copyright or trademark law. The only way they can be protected is by patenting them or keeping them as trade secrets. A recipe or formula may be patented if it is new and not an obvious combination of known recipes or formulas.Patents grant you exclusive rights to an invention for a period of 20 years.

However, many recipes and formulas, such as the formula for coca cola, are kept as trade secrets because they are difficult to reverse-engineer from the finished product. Trade secret protection can last indefinitely as long as you keep the information confidential and restrict access to it.

Logos

Logos can be protected by both copyright and trademark law. To be protected by copyright, they must have a minimum level of originality. A geometric shape alone is not sufficiently original, however most logos are. To be protected by trademark law, there must be an intent to use it in commerce.

Copyright protection lasts the lifetime of the author, plus 70 years. However, it only protects against copying of the trademark. If another business independently develops their own, strikingly similar logo, you are out of luck. Copyright law does not stop them from doing that.

Trademark protection can last indefinitely as long as the logo is in use in commerce, however a trademark registration must be renewed periodically. A trademark registration protects against another business using a confusingly similar mark, regardless of whether they copied your design.

Conclusion

This is a brief introduction to the protection of logos and names, titles, slogans, and other short phrases as intellectual property. To learn more about patents, trademarks, copyrights, and trade secrets, please see some of my other posts, some of which I have linked to in the body of this post.

• The Patent Reform Act of 2010 receives a favorable opinion and thorough analysis on Patent Baristas. Stephen Albainy-Jenei notes a number of critical features of the proposed bill, including authorization for the USPTO to set its own fees, a move to first-to-file, raising the bar for findings of inequitable conduct and willful infringement, elimination of the best mode requirement, new pre- and post-grant review procedures, and more. In my mind it is a mix of really good changes and not-so-good changes- of course odds are good we will end up with the status quo as usual. Fortunately Kappos seems to be doing a good job internally.

• Gene Quinn at IPWatchdog discusses the new USPTO proposal allowing the extension of provisional patent application pendency from 12 to 24 months. Quinn approves, although he comments regarding the use of late-filing procedures: “I really hope that as patent reform moves forward in Congress someone can add a simple amendment to the bill that would change ‘12 months’  and ‘12-month period’ in 111(b)(5) to ‘24 months’ and ‘24-month period’ respectively. That would be cleaner for sure.“ I personally dislike that this has been billed as examination deferral when in reality it seems more of a trap for the unwary.

• Just N Examiner reports and discusses the recent change to patent examiner hoteling rules. Experienced examiners have been allowed to work at home for years now, reducing the amount of office space needed on the PTO campus in Alexandria. However, prior to the rules change Examiners had to check in at the PTO twice every biweek. Is this change a step towards a nation-wide examining corps?

• IP Kat discusses the interplay of trademarks and brands and the difficulty of defining and analyzing brands in a business context.

• Duets Blog illustrates how direct navigation allows cybersquatters to profit from your business.

Any thoughts or questions on the latest Patent Reform Act or the PTO’s new proposal for provisional patent applications?

What is inducement of patent infringement?

Inducement of patent infringement is (sparingly) defined by statute in 35 U.S.C. §271(b). Affirmatively and intentionally causing, encouraging, or aiding the direct infringement of another constitutes inducement. As with all indirect patent infringement, it requires that you knew or should have known of the infringed patent.

What is contributory patent infringement?

Contributory infringement is defined by statute in 35 U.S.C. §271(c). It is contributory infringement to offer for sale or import a part of a patented invention, knowing that it is specially adapted for infringing the patent, where the part has no substantial non-infringing uses.

Thus, contributory infringement can be thought of as a type of inducement, in which the intent to cause direct infringement can be inferred from the fact that the product offered for sale is suitable only for patent infringement (“When a manufacturer includes in its product a component that can only infringe, the inference that infringement is intended is unavoidable.” Ricoh Co., Ltd. v. Quanta Computer Inc., 550 F.3d 1325, 1337 (Fed. Cir. 2008)).

As with all indirect patent infringement, prerequisites for a finding of contributory patent infringement include some direct infringement and that the indirect infringer knew or should have known of the infringed patent (otherwise the indirect infringer could not know the product was specially adapted for infringement).

Future posts will explain each type of indirect infringement in greater detail. Let me know if you have any questions.

What is Direct Patent Infringement?

Direct patent infringement is a fairly straightforward concept. Look at the claims of the patent concerned, go through the elements of each claim and ask yourself, does my product have each of these elements or an equivalent?

If your product arguably has all of the elements of any claim, you might be in trouble. Uncertainty arises mainly in the proper interpretation of the claim elements. Indirect infringement on the other hand is generally not understood as well.

What is Indirect Patent Infringement?

Indirect infringement is the facilitation of direct infringement by others. Although now established by statute, it originally arose under the theory of joint tortfeasors (a tortfeasor is a civil, as opposed to criminal, wrongdoer). Under the theory of joint tortfeasors, one who intentionally causes or aids the commission of a tort by another (e.g. an indirect infringer) is just as responsible as the primary tortfeasor (e.g. direct infringer) and so the full amount of the plaintiff’s damages can be collected from either.

Thus, indirect infringement cannot exist in the absence of direct infringement, however the indirect infringer is responsible for the full amount of damages caused by the direct infringers.

Requirements for Finding Indirect Patent Infringement

Two key requirements for a finding of indirect patent infringement are that another party directly infringed the patent at issue and that the indirect infringer knew or should have known about the patent that was infringed. Without either of these elements, there can be no indirect infringement.

Relevance of Indirect Patent Infringement to Business Owners

Alleging indirect patent infringement has become a popular litigation strategy that allows patent holders to sue producers, vendors, importers, and others for selling products which either enable or require the end user to infringe the patent in question, without themselves directly infringing upon the patent. Therefore, businesses need to have an understanding of indirect infringement.

Modern patent law defines two types of indirect patent infringement: contributory patent infringement and inducement of patent infringement. My next post will summarize what constitutes contributory infringement and inducement and what you should be aware of when bringing new products to market.