PREFACE

Intellectual property rights (IPR) have increasingly assumed a vital role and become important in
the face of dynamically changing trade environment characterized by global competition, high
innovation risks, short product cycle, rapid changes in technology, high investments in research
and development (R&D) etc. that we are witnessing today. Rapid changes in the global economic
environment with the influence of high speed internet connectivity created new development of
business models and opportunities, where IPR is a critical aspect for potential growth.

Regardless of the type and volume of product or service an enterprise makes or provides, they
need to have proper knowledge of IPR laws for protecting, managing and enforcing their
intellectual property rights, so as to get the best possible commercial value from its ownership. In
India several new legislations for protection of IPRs have been passed in accordance with
International treaties such as TRIPS, WIPO etc.

As majority of the IPs are being produced in the field of Science and Engineering Technology, it
is felt by the Board of Governance of MRCET to introduce the concepts of IPR to the students at
the much early stage of their Engineering study thereby they can focus on protection of their
innovative ideas and thoughts in accordance with the statues of the state.
It is in this context, the subject of IPR is offered to the II year B.Tech students of CSE, IT and
Aeronautical Engineering. This hand book, carefully compiled and prepared in accordance to
their syllabus, provides an insight into the laws related to intellectual property and the
administration of these laws. Keeping in view of the latest developments in IPRs related to
computer field and growing cyber related crimes, complete fourth unit has been allocated to
discuss about cyber laws and related aspects. I hope it will provide the students with a wide
perspective and fair knowledge in IPR and also help them as a ready reference to their
examinations. I congratulate the faculty members for preparing this hand book and appreciate
their efforts in providing a very useful and yet compact study material for the aspiring students.
 INDEX
S.No. Contents Pg.Nos

I Syllabus 01

II Notes 02-77

1 Unit-1 02-09

2 Unit-2 10-41

3 Unit-3 42-56

4 Unit-4 57-69

5 Unit-5 70-77

III Unit wise Questions 78-79

 SREYAS COLLEGE OF ENGINEERING & TECHNOLOGY

L T/P/D C
B. Tech III Year I Sem, Common for All Branches
3 0 3

INTELLECTUAL PROPERTY RIGHTS

(Open Elective)
Course Objectives:
1. Create an understanding on Intellectual Properties and the importance of it.
2. To understand Trademarks and Trade secrets. To create awareness of unfair completion and
methods of it.
3. Create awareness on the protection copyrights and patents. Understand the Ownership rights
and transfer.
4. Create awareness of Cyber laws, Cyber Crime and get understanding of Privacy of Data.
5. To create awareness international aspects of IPR and the Emerging Trends in IPR.

UNIT - I:
Introduction: Introduction to Intellectual property, types of intellectual property, importance of
intellectual property rights, agencies Responsible for Intellectual property Registration,
Regulatory – Compliance and Liability Issues.

UNIT - II:
Trade Marks: Purpose and function of trademarks, acquisition of trade mark rights, Transfer of
Rights, protectable matter, selecting and evaluating trade mark, Registrations of Trade Marks,
Claims.

UNIT - III:
Copy rights: Fundamental of copy right law, originality of material, rights of reproduction,
rights to perform the work publicly, copy right ownership issues, copy right registration, notice
of copy right.

Patents: introduction, patent searching process, ownership rights and transfer.

UNIT - IV:
Trade Secrets: Determination of trade secret status, liability for misappropriations of trade
secrets, protection for submission,

Unfair competition- Misappropriation right of publicity, false advertising

UNIT - V:
New development of Intellectual Property: Emerging trends in trade mark; copy rights, patent,
International overview on intellectual property.

TEXT BOOKS & REFERENCES:

1. Intellectual property right, Deborah, E. Bouchoux, cengage learning.

2. Cyber Law. Text & Cases, South-Western’s Special Topics collections.

1
 3. R. Radha Krishnan, S. Balasubramanian: “Intellectual Property Rights”, Excel Books.
New Delhi
4. A short course in International Intellectual Property Rights – Karla C. Shippey, World
Trade Press – 2nd Edition.
5. Intellectual Property Rights – Heritage, Science, & Society under international treaties –
A. Subbian, - Deep & Deep Publications – New Delhi.
6. Intellectual Property Rights: N K Acharya: ISBN: 9381849309
7. Intellectual Property Rights: C B Raju : ISBN-8183870341

Course Outcomes:
1. It allows students how to prepare and protect the Inventions , start up ideas and rights of patents
and copy rights etc.,
2. Students get the knowledge on Trademarks and Trade Secrets.
3. This subject brings awareness to the students on the various types of Unfair Competition and the
Students gets well versed with exposure to licensing and transfer of Copyrights and Patents
4. Student gets. Awareness of Cyber laws and Cyber Crime, to protect the data from Cyber crime.
5. Summarize the Intellectual property rights globally and exposure to the emerging trends In IPR.

2
 UNIT-1

INTELLECTUAL PROPERTY RIGHTS

Introduction

Intellectual property (IP) is a term referring to creation of the intellect (the term used in studies
of the human mind) for which a monopoly (from greek word monos means single polein to sell) is
assigned to designated owners by law. Some common types of intellectual property rights (IPR),
in some foreign countries intellectual property rights is referred to as industrial property,
copyright, patent and trademarks, trade secrets all these cover music, literature and other artistic
works, discoveries and inventions and words, phrases, symbols and designs. Intellectual Property
Rights are themselves a form of property called intangible property.

Although many of the legal principles governing IP and IPR have evolved over centuries,
it was not until the 19th century that the term intellectual property began to be used and not until
the late 20th century that it became commonplace in the majority of the world.

Types of Intellectual Property

The term intellectual property is usually thought of as comprising four separate legal fields:

1. Trademarks
2. Copyrights
3. Patents
4. Trade secrets

1. Trademarks and Service Marks: A trademark or service mark is a word, name, symbol, or
device used to indicate the source, quality and ownership of a product or service. A trademark is
used in the marketing is recognizable sign, design or expression which identifies products or
service of a particular source from those of others. The trademark owner can be an individual,
business organization, or any legal entity. A trademark may be located on a package, a label, a
voucher or on the product itself. For the sake of corporate identity trademarks are also being.

General Logos:

3
The Trademark Registration Logo

In addition to words, trademarks can also consist of slogans, design, or sounds. Trademark
provides guarantee of quality and consistency of the product or service they identify. Companies
expend a great deal of time, effort and money/ in establishing consumer recognition of and
confidence in their marks.

Federal Registration of trademarks:

Interstate use of trademarks is governed by federal law, namely, the United States
Trademark Act (also called the Lanham Act), found at 15 U.S.C 1051et seq. In the United States,
trademarks are generally protected from their date of first public use. Registration of a mark is not
required to secure protection for a mark, although it offers numerous advantages, such as allowing
the registrant to bring an action in federal court for infringement of the mark.

4
 Applications for federal registration of trademarks are made with the PTO. Registration is
a fairly lengthy process, generally taking anywhere from twelve to twenty-four months or even
longer. The filing fee is $335 per mark (Present $225 per class) per class of goods or services
covered by the mark.

A trademark registration is valid for 10 years and may be renewed for additional ten year
periods thereafter as long as the mark is in used in interstate commerce. To maintain a mark the
registrant is required to file an affidavit with the PTO between the fifth and sixth year after
registration and every ten years to verify the mark is in continued use. Marks not in use are then
available to others.

A properly selected, registered and protected mark can be of great value to a company or
individual desiring to establish and expand market share and better way to maintain a strong
position in the marketplace.

2. Copyrights: Copyright is a form of protection provided by U.S. law (17 U.S.C 101 et seq) to
the authors of "original works of authorship" fixed in any tangible medium of expression. The
manner and medium of fixation are virtually unlimited. Creative expression may be captured in
words, numbers, notes, sounds, pictures, or any other graphic or symbolic media. The subject
matter of copyright is extremely broad, including literary, dramatic, musical, artistic, audiovisual,
and architectural works. Copyright protection is available to both published and unpublished
works.

Copyright protection is available for more than merely serious works of fiction or art.
Marketing materials, advertising copy and cartoons are also protectable. Copyright is available for
original working protectable by copyright, such as titles, names, short phrases, or lists of
ingredients. Similarly, ideas methods and processes are not protectable by copyright, although the
expression of those ideas is.

Copyright protection exists automatically from the time a work is created in fixed form.
The owner of a copyright has the right to reproduce the work, prepare derivative works based on
the original work (such as a sequel to the original), distribute copies of the work, and to perform
and display the work. Violations of such rights are protectable by infringement actions.
Nevertheless, some uses of copyrighted works are considered “fair use” and do not constitute
infringement, such as use of an insignificant portion of a work for noncommercial purposes or
parody of a copyrighted work.

Definition:

General Definition of copyright “Copyright owner”, with respect to any one of the exclusive
rights comprised in a copyright, refers to the owner of that particular right.

Federal Registration of Copyrights: The works are protected under federal copyright law from
the time of their creation in a fixed form. Registration, however, is inexpensive, requiring only a
$30 (present

5
$85) filing fee, and the process is expeditious. In most cases, the Copyright Office processes
applications within four to five months.

Copyrighted works are automatically protected from the moment of their creation for a
term generally enduring for the author’s life plus an additional seventy years after the author’s
death. The policy underlying the long period of copyright protection is that it may take several
year for a painting, book, or opera to achieve its true value, and thus, authors should receive a
length of protection that will enable the work to appreciate to its greatest extent.

3. Patents: A patent for an invention is the grant of a property right to the inventor, issued by the
United States Patent and Trademark Office. Generally, the term of a new patent is 20 years from
the date on which the application for the patent was filed in the United States or, in special cases,
from the date an earlier related application was filed, subject to the payment of maintenance fees.
U.S. patent grants are effective only within the United States, U.S. territories, and U.S.
possessions. Under certain circumstances, patent term extensions or adjustments may be
available.
The right conferred by the patent grant is, in the language of the statute and of the grant itself,
“the right to exclude others from making, using, offering for sale, or selling” the invention in the
United States or “importing” the invention into the United States. What is granted is not the right
to make, use, offer for sale, sell or import, but the right to exclude others from making, using,
offering for sale, selling or importing the invention. Once a patent is issued, the patentee must
enforce the patent without aid of the USPTO.

There are three types of patents:

Utility patents may be granted to anyone who invents or discovers any new and useful process,
machine, article of manufacture, or composition of matter, or any new and useful improvement
thereof;

Design patents may be granted to anyone who invents a new, original, and ornamental design for
an article of manufacture; and

Plant patents may be granted to anyone who invents or discovers and asexually reproduces any
distinct and new variety of plant.

Federal Registration of Copyrights: Patents are governed exclusively by federal law (35 U.S.C
100 et seq). To obtain a patent, an inventor must file an application with the PTO (the same
agency that issues trademark registration) that fully describes the invention. Patent prosecution is
expensive, time consuming and complex. Costs can run into the thousands of dollars, and it
generally takes over two year for the PTO to issue a patent.

Patent protection exists for twenty years from the date of filing of an application for utility
and patents and fourteen years from the date of grant for design patents. After this period of time,
the invention fall into the public domain and may be used by any person without permission.

6
 The inventor is granted an exclusive but limited period of time within which to exploit the
invention. After the patent expires, any member of the public is free to use, manufacture, or sell
the invention. Thus, patent law strikes a balance between the need to protect inventors and the
need to allow public access to important discoveries.

4. Trade Secrets: A trade secret consists of any valuable business information. The business
secrets are not to be known by the competitor. There is no limit to the type of information that can
be protected as trade secrets; For Example: Recipes, Marketing plans, financial projections, and
methods of conducting business can all constitute trade secrets. There is no requirement that a
trade secret be unique or complex; thus, even something as simple and nontechnical as a list of
customers can qualify as a trade secret as long as it affords its owner a competitive advantage and
is not common knowledge.

If trade secrets were not protectable, companies would no incentive to invest time, money
and effort in research and development that ultimately benefits the public. Trade secret law thus
promotes the development of new methods and processes for doing business in the marketplace.

Protection of Trade Secrets: Although trademarks, copyrights and patents are all subject to
extensive statutory scheme for their protection, application and registration, there is no federal law
relating
to trade secrets and no formalities are required to obtain rights to trade secrets. Trade secrets are
protectable under various state statutes and cases and by contractual agreements between parties.
For Example: Employers often require employees to sign confidentiality agreements in which
employees agree not to disclose proprietary information owned by the employer.

If properly protected, trade secrets may last forever. On the other hand, if companies fail to
take reasonable measures to maintain the secrecy of the information, trade secret protection may
be lost. Thus, disclosure of the information should be limited to those with a “need to know” it so
as to perform their duties, confidential information should be kept in secure or restricted areas,
and employees with access to proprietary information should sign nondisclosure agreements. If
such measures are taken, a trade secret can be protected in perpetuity.

Another method by which companies protect valuable information is by requiring

employee to sign agreements promising not to compete with the employer after leaving the job.
Such covenants are strictly scrutinized by courts, but generally, if they are reasonable in regard to
time, scope and subject matter, they are enforceable.

AGENCIES RESPONSIBLE FOR INTELLECTUAL PROPERTY REGISTRATION

United States Patents and Trademark Office:

The agency charged with granting patents and registering trademarks is the United States
Patent and Trademark Office (PTO), one of fourteen bureaus within the U.S. Department of
Commerce. The PTO, founded more than two hundred years ago, employs nearly 700 (present

7
1000 employs) are working. At present it is located in 18 building in Arlington, Virginia. Its
official mailing address is Commissioner of Patents and Trademarks, Washington, DC 20231.

The PTO is physically located at 2900 Crystal Drive in Arlington, Virginia. Its web site is
http://www.uspto.gov and offers a wealth of information, including basic information about
trademarks and patents, fee schedules, forms, and the ability to search for trademarks and patents.
Since 1991, under the Omnibus Budget Reconciliation Act, the PTO has operated in much the
same way as a private business, providing valued products and services to customers in exchange
for fees that are used to fully fund PTO operations.

It uses no taxpayer funds. The PTO plans to move all of its operations to Alexandria,
Virginia, by mid-2005. The PTO is one of the busiest of all government agencies, and as
individuals and companies begin to understand the value of intellectual property, greater demands
are being made on the PTO.

Legislation passed in 1997 established the PTO as a performance-based organization that

is managed by professionals, resulting in the creation of a new political position, deputy secretary
of commerce for intellectual property. In brief, the PTO operates more like a business with greater
autonomy over its budget, hiring, and procurement. U.S patents issued its first patent in 1790.
Since 1976 the text and images of more than three million are pending for registration. The PTO
is continuing its transition filing for both trademarks and from paper to electronic filing for both
trademarks and patents.

The PTO is led by the Under Secretary of Commerce for Intellectual Property and
Director of the United States Patent and Trademark Office (the “Director”), who is appointed by
the President. The Secretary of Commerce appoints a Commissioner for Patents and a
Commissioner for Trademarks. Citations to many cases in this text will be to “U.S.P.Q”., a
reference to United States Patent Quarterly, a reporter of cases decided by the Trademark Trial
and Appeal Board (TTAB) as well as patent and copyright cases.

INTERNATIONAL ORGANIZATIONS, AGENCIES AND TREATIES

There are a number of International organizations and agencies that promote the use and
protection of intellectual property. Although these organizations are discussed in more detail in
the chapters to follow, a brief introduction may be helpful:

International Trademark Association (INTA) is a not-for-profit international association

composed chiefly of trademark owners and practitioners. It is a global association. Trademark
owners and professionals dedicated in supporting trademarks and related IP in order to protect
consumers and to promote fair and effective commerce. More than 4000 (Present 6500 member)
companies and law firms more than 150 (Present 190 countries) countries belong to INTA,
together with others interested in promoting trademarks. INTA offers a wide variety of
educational seminars and publications, including many worthwhile materials available at no cost
on the Internet (see INTA’s home page at http://www.inta.org). INTA members have collectively

8
contributes almost US $ 12 trillion to global GDP annually. INTA undertakes advocacy [active
support] work throughout the world to advance trademarks and offers educational programs and
informational and legal resources of global interest. Its head quarter in New York City, INTA
also has offices in Brussels, Shanghai and Washington DC and representative in Geneva and
Mumbai. This association was founded in 1878 by 17 merchants and manufacturers who saw a
need for an organization. The INTA is formed to protect and promote the rights of trademark
owners, to secure useful legislation (the process of making laws), and to give aid and
encouragement to all efforts for the advancement and observance of trademark rights.

World Intellectual Property Organization (WIPO) was founded in 1883 and is specialized
agency of the United Nations whose purposes are to promote intellectual property throughout the
world and to administer 23 treaties (Present 26 treaties) dealing with intellectual property. WIPO
is one of the 17 specialized agencies of the United Nations. It was created in 1967, to encourage
creative activity, to promote the protection of Intellectual Property throughout the world. More
than 175 (Present 188) nations are members of WIPO. Its headquarters in Geneva, Switzerland,
current Director General of WIPO is Francis Gurry took charge on October 1, 2008. The
predecessor to WIPO was the BIRPI [Bureaux for the Protection of Intellectual Property] it was
established in 1893. WIPO was formally created by the convention (meeting) establishing the
world intellectual Property organization which entered into force on April 26 1970.

Berne Convention for the Protection of Literary and Artistic Works (the Berne Convention)
An International copyright treaty called the convention for the protection of Literary and Artistic
works signed at Berne, Switzerland in 1886 under the leadership of Victor Hugo to protect
literary and artistic works. It has more than 145 member nations. The United States became a
party to the Berne Convention in 1989. The Berne Convention is administered by WIPO and is
based on the precept that each member nation must treat nation must treat nationals of other
member countries like its own nationals for purposes of copyright (the principle of “nation
treatment”). In addition to establishing a system of equal treatment that internationalized
copyright amongst signatories, the agreement also required member states to provide strong
minimum standards for copyrights law. It was influenced by the French “right of the author”.

Madrid Protocol It is a legal basis is the multilateral treaties Madrid (it is a city situated in Spain)
Agreement concerning the International Registration of Marks of 1891, as well as the protocol
relating to the Madrid Agreement 1989. The Madrid system provides a centrally administered
system of obtaining a bundle of trademark registration in separate jurisdiction. The protocol is a
filing treaties and not substantive harmonization treaty. It provides a cost-effective and efficient
way for trademark holder. It came into existence in 1996. It allows trademark protection for more
than sixty countries, including all 25 countries of the European Union.

Paris Convention The Paris convention for the protection of Industrial Property, signed in Paris,
France, on 20th March 1883, was one of the first Intellectual Property treaties, after a diplomatic
conference in Paris, France, on 20 March 1883 by Eleven (11) countries. According to Articles 2
and 3 of this treaty, juristic (one who has through knowledge and experience of law) and natural
persons who are either national of or domiciled in a state party to the convention. The convention

9
is currently still force. The substantive provisions of the convention fall into three main
categories: National Treatment, Priority right and Common Rules.

An applicant for a trademark has six months after filing an application in any of the more
than 160 member nations to file a corresponding application in any of the other member countries
of the Paris Convention and obtain the benefits of the first filing date. Similar priority is afforded
for utility patent applications, although the priority period is one year rather than six months. The
Paris Convention is administered by WIPO.

North American Free Trade Agreement (NAFTA) came into effect on January 1, 1994, and is
adhered to by the United States, Canada, and Mexico. The NAFTA resulted in some changes to
U.S. trademark law, primarily with regard to marks that include geographical terms. The NAFTA
was built on the success of the Canada-U.S Free Trade Agreement and provided a compliment to
Canada’s efforts through the WTO agreements by making deeper commitments in some key
areas. This agreement has brought economic growth and rising standards of living for people in
all three countries.

General Agreement on Tariffs and Trade (GATT) was concluded in 1994 and is adhered to by
most of the major industrialized nations in the world. The most significant changes to U.S
intellectual property law from GATT are that nonuse of a trademark for three years creates a
presumption the mark has been abandoned and that the duration of utility patent is now twenty
years from the filing date of the application (rather than seventeen years from the date the patent
issued, as was

THE INCREASING IMPORTANCE OF INTELLECTAL PROPERTY RIGHTS

❖ Protecting Intellectual Property Rights

❖ Technology has led to increase awareness about the IP
❖ Some individuals and companies offer only knowledge.Thus, computer consultant,
advertising agencies, Internet companies, and software implementers sell only brainpower.
❖ Domain names and moving images are also be protected
❖ More than fifty percent of U.S. exports now depend on some form of intellectualproperty
protection.
❖ The rapidity with which information can be communicated through the Internet has led to
increasing challenges in the field of intellectual property.
❖ The most valuable assets a company owns are its Intellectual property assets
❖ Companies must act aggressively to protect these valuable assets from infringement
(breaching, violation of law) or misuse by others
❖ The field of intellectual property law aims to protect the value of such investments

-----x-----

10
 UNIT-2

TRADE MARKS
Introduction

Although there was some use of trademarks or symbols in the Middle East and Far East
several centuries ago, contemporary (modern) trademark law can be traced back to use of
trademarks during the medieval period in Europe by merchants who sought to distinguish the
goods they sold from those sold by others by applying a mark or symbol to their goods. By
viewing the mark, purchasers would immediately be able to identify the craftsperson that made
the goods and make an informed decision about the quality of the material. The use of symbols by
medieval craftspeople to distinguish and identify their goods is the direct antecedent for the
modern use of trademarks.

Definition of Trademark:

The modern definition of trademark is that “it is a word, name, symbol, or device or a
combination thereof, used by a person [including a business entity], or which a person has a
bonafide intention to use, to identify and distinguish his or her goods from those manufactured
by others and to indicate the source of those goods.”

PURPOSE AND FUNCTION OF TRADEMARK

Trademarks perform two critical functions in the marketplace: [1] they provide assurance
that goods are of a certain quality and consistency, and [2] they assist consumers in making
decisions about the purchase of goods. The main purpose of trademark is to show the difference
about the quality of goods and service For example: If a trademark such as NIKE could be
counterfeited (imitating) and used by another on inferior merchandise (goods), there would be no
incentive for the owners of the NIKE mark to produce high-quality shoes and to expend money
establishing consumer recognition of the products offered under the NIKE marks.

Thus, protection of trademarks results in increased completion in the marketplace, with

both the producer of goods and services and the consumer as the ultimate beneficiaries. Business
benefit because they can reap the rewards of their investment in developing and marketing a
product with one fearing another business will deceive consumer by using the same or a
confusingly similar mark for like goods, and consumers benefit because they are able to identify
and purchase desired and quality goods.

The value inherent in achieving consumer loyalty to a particular product or service

through the maintenance of consistent quality of the products or service offered under a mark is
called goodwill.

11
❖ they identify one maker’s goods or services and distinguish them from those offered byothers
❖ They indicate that all goods or services offered under the mark come from a single producer,
manufacturer, or “source”
❖ They indicate that all goods or services offered under the mark are of consistent quality and
❖ They serve as an advertising device so that consumers link a product or service being offered
with a mark

TYPES OF MARKS

There are four different types of marks. They are:

1. Trademark

2. Service mark

3. Certification mark

4. Collective mark

Trademark & Service mark

The term trademark thus refers to some physical and tangible good, and service mark
refers to an intangible service, in common usage the term trademark is often used to refer to
marks for both goods and service. The key point in this legal description is that a trademark is a
visual mark that may use any combination of letters and imagery to aid a company in
differentiating itself from other entities.

The purpose of a trademark is to visually represent a person, company, or product, and

trademark should be designed to provide easy and definite recognition. The term mark will be
used as a synonym for both trademark and service marks. The federal statute ((law) an act passed
by a legislative body) governing trademark law, the U.S. Trademark Act (Lanham Act, found at
15 U.S.C 1051 et seq.) itself states that the term mark includes any trademark, service mark,
collective mark, or certificate mark.

A Certification mark

A citification mark is a word, name, symbol, device, or combination thereof, used by one
person to certify that the goods or services of others have certain features in regard to quality,
material, mode of manufacture, or some other characteristic (or that the work done on the goods
or services was performed by members of a union or other organization). For example:
Hallmark, ISO mark and in U.S Underwriters Laboratory seals of approval (Underwriters
Laboratory is the largest and best known independent, not for profit testing laboratory in the
world based in Northwood, Illinois, UL conducts safety and quality tests on a broad range of
products, from firedoor’s to CCTV cameras seals of approval).

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Collective Mark

A collective mark is one used by a collective membership organization, such as a labor

union, fraternity, or professional society, to identify that the person displaying the mark is a
member of the organization. Thus, the FUTURE FARMERS OF AMERICA and AMERICAN
BAR ASSOCIATION marks indicate membership in certain organizations. A company may use
several marks For Example: the word: COCA-COLA, the stylized WAVE DESIGN, and the
slogan “THINGS GO BETTER WITH COKE”. All of these marks are used on one product and
all are protected by the Coca-Cola Company. On some occasions, companies use house marks to
establish recognition in a wide range of products or service.

ACQUISITION OF TRADEMARK RIGHTS

In most foreign countries, trademark rights arise from registering the mark with a
governmental entity. The law in the United States is quite different: trademark rights arise from
adoption and use of a mark. A person using a mark may have valid and enforceable rights in a
mark even though the mark is not registered with the PTO, such an owner will have priority even
over a subsequent user who has secured a federal registration for a mark with the PTO. The “use”
required to establish trade mark rights is more than token use, it must be public use, while actual
sales of products or services are not required, a certain level of presale activity is required. For
example: Sales within a company or to personal friends are insufficient to show use, while
soliciting [plead for something] and accepting order is usually sufficient to show commercial use.
Thus, a person using a mark may have valid and enforceable rights in a mark even though the
mark is not registered with the PTO. Such an owner will have priority even over a subsequent user
who has secured a federal registration for a mark with the PTO.

Establishing a date of first use is critical for a trademark owner because priority of
trademark rights is measured form this date. If one party first used of mark on September 15,
2015 and another first used a similar mark on October 15, 2015, the prior, or senior, user will be
able to preclude the junior user from using a confusingly similar mark.

For a mark to be registrable, it must be based on use in commerce, meaning the type of
commerce that can be regulated by Congress. Generally, the use is based on interstate commerce
or commerce between states (although it could be based on commerce between the United State
and a foreign country). A purely intrastate use does not provide a basis for federal registration of
a mark. A purely intrastate use does not provide a basis for federal registration of a mark. The
requirement of interstate (within one state) commerce is satisfied if the goods or services are
advertised in more than one state, offered to citizens of more than one state, or offered on the
Internet, which is considered use in commerce because it is available to a national audience
through the use of telephone lines.

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 The general rule is that acquisition of trademark rights stem from use, there is one
exception to this rule: the intent-to-use application. Until 1989, the United States was one of
only two countries in the world that required that a mark be in actual use before an owner could
file an application to register it. After an applicant had begun using the mark and then filed an
application, the PTO might refuse registration of the mark on the basis it was confusingly similar
to a prior mark or was subject to some other defect. The applicant would then have invested
substantial money and time in developing the mark, in using it in commerce, marketing and
advertising, and in applying for registration, only to be told the mark was unregistrable. To
remedy this situation, the Trademark Law Revision Act of 1988allowed persons to file
applications for marks based on a bona fide intent to use the mark in commerce in the future. If
the PTO determines the mark is unregistrable, the applicant will not have expended any sums
other than the PTO filing fee and can readily file another application for a new mark. Once the
mark proceeds to registration, priority is measured from the date the intent-to-use-application was
filed, even though that filing date may precede actual use in commerce by more than three years.

Minimal or token use cannot serve as the basis for securing or maintaining a registration,
ensuring that an owner does not reserve or “warehouse” a mark by making only sporadic use of it
with the intent to

block others from using it rather than having a true commercial intent to exploit the mark for
sales. The PTO desires to clear its records of unused marks, or “deadwood”, so that such unused
marks may be available by others. The use required is “bonafide use of a mark in the ordinary
course of trade, and not made merely to reserve a right in a mark”, 15 U.S.C 1127.

COMMON LAW RIGHTS, FEDERAL REGISTRATION UNDER THE LANHAM ACT,

LAWS AND TREATIES GOVERNING TRADEMARKS, AND STATE TRADEMARK
RIGHTS

Common Law Rights

The United States, trademark rights arise from use of a mark. It is not necessary to secure
permission or registration from any governmental entity to acquire trademark rights. A party who
is using a mark without any such governmental registration is said to have a common law
trademark, it can be enforced in any geographical area in which the mark is used.

Federal Registration

Although there is no requirement that a trademark owner apply for a secure federal
registration of mark with the PTO, registration on the PTO’s Principal Register does offer several
advantages:

14
❖ nationwide constructive use effective from the filing date of the application (the public
assumed to have notice that the registrant has nationwide priority in the use of its mark as of
this date)
❖ nationwide notice to the public of an owner’s claim to a mark, thereby precluding a later user
from claiming it used a mark in good faith in a remote territory and should be able to continue
use;
❖ the ability to bar importance of goods bearing infringing trademarks
❖ the right under the Paris Convention to obtain a registration in various foreign countries based
upon the U.S. registration;
❖ the right to bring an action in federal court for trademark infringement and recover lost profits,
damages, costs, and possibly triple damages and attorney’s fees
❖ incontestable status of the registration after five years of continuous use subsequent to the
registration
❖ the right to use the registration symbol with the mark
❖ a possible basis to claim priority to an Internet domain name and
❖ prima facie (literally, “on its face”) evidence of the validity of the registration, the registrant’s
ownership of the mark, and the registrant’s exclusive right to use the mark in connection with
the identified goods and services.

Laws and Treaties Governing Trademark

There are several laws and treaties governing trademark, including the following:

Lanham Act The federal statute governing trademark rights is the Lanham Act (also called the
United States Trademark Act and found at 15 U.S.C § 1051 et seq.), enacted in 1946 and named
for Congressman Fritz Garland Lanham (D.Tex.), the then chair of the House Patent Committee
(which also proposed legislation relating to trademarks) who introduced the legislation. In
addition to providing for federal trademark protection, the Lanham Act also includes statutes
prohibiting unfair competition. The Lanham Act has been amended numerous times. Perhaps the
most significant amendment occurred with the Trademark Law Revision Act of 1988, which
provided the following two critical changes: allowing for a trademark application based on the
applicant’s intent to use a mark in the future. Rules of practice and procedure relating to
trademarks are found at Title 37 of the Code of Federal Regulation (C.F.R).

North American Free Trade Agreement (NAFTA) came into effect on January 1, 1994, and is
adhered to by the United States, Canada, and Mexico. The NAFTA resulted in some changes to
U.S. trademark law, primarily with regard to marks that include geographical terms. The NAFTA
was built on the success of the Canada-U.S Free Trade Agreement and provided a compliment to
Canada’s efforts through the WTO agreements by making deeper commitments in some key
areas. This agreement has brought economic growth and rising standards of living for people in
all three countries.

15
Madrid Protocol It is a legal basis is the multilateral treaties Madrid (it is a city situated in Spain)
Agreement concerning the International Registration of Marks of 1891, as well as the protocol
relating to the Madrid Agreement 1989. The Madrid system provides a centrally administered
system of obtaining a bundle of trademark registration in separate jurisdiction. The protocol is a
filing treaties and not substantive harmonization treaty. It provides a cost-effective and efficient
way for trademark holder. It came into existence in 1996. It allows trademark protection for more
than sixty countries, including all 25 countries of the European Union.

Trade-Related aspects of Intellectual Property Rights (TRIPs) is an international agreement

administered by the World Trade Organization (WTO) that sets down minimum standards for
many forms of intellectual property (IP) regulation as applied to nationals of other WTO
Members. It was negotiated at the end of the Uruguay Round of the General Agreement on Tariffs
and Trade (GATT) in 1994.

The Doha declaration is a WTO statement that clarifies the scope of TRIPS, stating for example
that TRIPS can and should be interpreted in light of the goal "to promote access to medicines for
all." Specifically, TRIPS requires WTO members to provide copyright rights, covering content
producers including performers, producers of sound recordings and broadcasting organizations;
geographical indications, including appellations of origin; industrial designs;integrated circuit
layout-designs; patents; new plant varieties; trademarks; trade dress; and undisclosed or
confidential information. TRIPS also specifies enforcement procedures, remedies, and
dispute resolution procedures.

Trademark Law Treaty Implementation Act (TLTIA) effective in late 1998 simplified several
requirements relating to trademark registration and maintenance. For example: at present, the
applicant need only submit one specimen showing how a mark is used rather than three, as was
previously required. Additionally, a trademark applicant need no longer state the manner in which
the mark is used. Finally, TLTIA established a six month grace period for filing a renewal for a
trademark registration.

Federal Trademark Dilution Act The Federal Trademark Dilution Act of 1995 is a United
States federal law which protects famous trademarks from uses that dilute their distinctiveness,
even in the absence of any likelihood of confusion or competition. It went into effect on January
16, 1996. This act has been largely supplanted by the Trademark Dilution Revision Act of 2006
(TDRA), signed into law on October 6, 2006.

Anti cyber squatting Consumer Protection Act. 15 U.S.C. § 1125(d), is an American law
enacted in 1999 that established a cause of action for registering, trafficking in, or
using a domain name confusingly similar to, or dilutive of, a trademark or personal name. The
law was designed to thwart “cyber squatters” who register Internet domain names containing
trademarks with no intention of creating a legitimate web site, but instead plan to sell the domain

16
name to the trademark owner or a third party. Critics of the ACPA complain about the non-global
scope of the Act and its potential to restrict free speech, while others dispute these complaints.
Before the ACPA was enacted, trademark owners relied heavily on the Federal Trademark
Dilution Act (FTDA) to sue domain name registrants. The FTDA was enacted in 1995 in part with
the intent to curb domain name abuses. The legislative history of the FTDA specifically mentions
that trademark dilution in domain names was a matter of Congressional concern motivating the
Act. Senator Leahy stated that “it is my hope that this anti-dilution statute can help stem the use of
deceptive Internet addresses taken by those who are choosing marks that are associated with the
products and reputations of others”.

CATEGORIES OF MARKS

Although marks can consist of words, symbols, designs, slogans, or a combination thereof,
not every term is protectable. Even among marks that are protectable, some marks are stronger
than other. In determining strength of marks, courts recognize several categories of marks. In
ascending order ofstrength and protectability, the five categories are:

❖ A Generic Mark Generic "marks" are devices which actually name a product and are
incapable of functioning as a trademark. Unlike descriptive marks, generic devices will not
become a trademark even if they are advertised so heavily that secondary meaning can be proven
in the mind of consumers. The rationale for creating the category of generic marks is that no
manufacturer or service provider should be given exclusive right to use words that generically
identify a product. A valid trademark can become generic if the consuming public misuses the
mark sufficiently for the mark to become the generic name for the product. The prime examples
of former trademarks that became the generic name for a product are ASPIRIN, XEROX and
CELLOPHANE.

❖ A Descriptive mark (or more properly, "merely descriptive marks") are devices which
merely describe the services or goods on which the mark is used. If a device is merely
descriptive, it is not a mark at all, since it does not serve to identify the source of the goods or
services. No trademark rights are granted to merely descriptive marks. Misdescriptive marks are
equally weak. As explained in connection with suggestive marks above, descriptive marks are
often difficult to distinguish from suggestive marks. Suggestive marks require some imagination,
thought, or perception to reach a conclusion as to the nature of the goods. Descriptive marks
allow one to reach that conclusion without such imagination, thought or perception. Putting this
distinction into practice can be very difficult. Merely descriptive marks can be registered federally
on the Supplemental Register (see the Bit Law discussion on federal registration of trademarks for
more information). The descriptive mark will not register in PTO until the consumer links the
mark with a single source. That learned association is called Secondary meaning or acquired
distinctiveness. The PTO assumes that secondary meaning has been acquired after five years of
consecutive and exclusive use of a mark. Secondary meaning can be demonstrating a significant

17
level of advertising, sales an consumer survey evidence, to prove that when consumer encounter a
mark.
For Example: The following imaginary marks could be considered merely descriptive for
computer peripherals:

✓ FAST BAUD for modems (describing the quickness of the modem);

✓ 104 KEY for computer keyboards (describing the number of keys on a keyboard);

✓ LIGHT for portable computers (describing the computer's weight); and

✓ TUBELESS for computer monitors (even if misdescriptive for a monitor that contains tubes).

❖ A Suggestive mark are marks that suggest a quality or characteristic of the goods and
services. Despite the fact that suggestive marks are not as strong as fanciful or arbitrary marks,
suggestive marks are far more common due to the inherent marketing advantage of tying a mark
to the product in a customer's mind. Suggestive marks are often difficult to distinguish from
descriptive marks (described below), since both are intended to refer to the goods and services in
question. Suggestive marks require some imagination, thought, or perception to reach a
conclusion as to the nature of the goods. Descriptive marks allow one to reach that conclusion
without such imagination, thought or perception. Putting this distinction into practice clearly is
one of the most difficult and disputed areas of trademark law.

The following marks can be considered suggestive:

✓ MICROSOFT (suggestive of software for microcomputers)

✓ NETSCAPE (suggestive of software which allows traversing the "landscape" of the
✓ Internet)
✓ SILICON GRAPHICS (suggestive of graphic oriented computers)

❖ Arbitrary Marks An arbitrary mark utilizes a device having a common meaning that has no
relation to the goods or services being sold.

Examples of arbitrary marks include:

✓ APPLE (for computers)

✓ LOTUS (for software)
✓ SUN (for computers)
✓ CROWN (For Television)

❖ Fanciful Marks are devices which have been invented for the sole purpose of functioning as
a trademark and have no other meaning than acting as a mark. Fanciful marks are considered to be
the strongest type of mark. Examples of fanciful marks are:
EXXON, KODAK and XEROX.

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 PROTECTABLE MATTER

Slogans, Letters and Numbers

A word or other groupings of letters is the most common type of mark For Examples:
APPLE, SILICON, GRAPHICS, NETSCAPE, IBM, NBC. Slogans from advertising campaigns
are also used as trademarks. Example slogans which have strong trademark rights attached For
Example:

Nike
Alphanumeric symbols (letters and numbers) may be protectable as long as they are not merely
descriptive. If the numbers or letters describe something about the product or service offered
under the mark, however, they will not be registrable unless proof of secondary mining is shown.
Thus, the mark “VT220” for computer hardware peripherals was held merely descriptive and
unregistrable because “VT” Video Terminal and 220 was a mere model number.

Logos and Symbols

Logos are probably the next most common form of mark. A logo can be described as a design
which becomes a mark when used in close association with the goods or services being marketed.
The logo mark does not need to be elaborate; it need only distinguish goods and services sold
under the mark from other goods and services. Examples of logo marks are:

McDonald's double arches:

NBC's peacock style design:

Apple Computer's Apple:

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Names of performing Artists

A mark that merely serves to identify an artist or entertainer is not registrable. However, if the
owner of the mark has controlled the quality of the goods or services, and the name of the artist
or group has been used numerous times on different records (thereby representing an assurance of
quality to the public), the name may be registered as a trademark, Thus, GOO GOO DOLLS and
BOB BYLAN have been registered for musical sound recordings.

Domain Names

Domain names, for example, www.ibm.com, are registrable as trademark or service marks only if
they function as an identification of the source of goods and service. Thus, www.oakwood.com
has been registered for real estate leasing service and www.eilberg.com was refused registration
because the mark merely indicated the location on the Internet where the applicant’s web site
appeared and it did not separately identify the applicant’s legal services. Another complication
with domain name registration is that the PTO has held that businesses that create a web site for
the sole purpose of advertising their own products or services cannot register a domain name used
to identify that activity. Thus, www.amazon.com is registered for providing online chat rooms
and bulletin boards. It is not registered in connection with offering books or other goods for sale.

Shapes and Containers

A product or container shape can also serve a source identifying function and therefore can be an
enforceable trademark. A product or container shape may also be subject to a design patent (see
the BitLaw discussion of design patents to see an analysis of the similarities and differences
between design patents and trademark protection for product shapes). Historically, trademark
protection was not granted to product shapes until the consuming public recognized the shape as
indicating the source of the product. In other words, the product shape was required to obtain
secondary meaning. However, recent court decisions may mean that an inherently distinctive
product shape can be a protectable trademark even before secondary meaning is obtained.
Examples of product shapes and configurations that likely enjoy trademark status include:

Coca-cola Bottle

Apple’s Ipod

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Trade Dress

Trade dress is the overall commercial image (look and feel) of a product or service that indicates
or identifies the source of the product or service and distinguishes it from those of others. It may
include the design or configuration of a product; the labeling and packaging of goods; and/or the
décor or environment in which services are provided. Trade dress can consist of such elements as
size, shape, color and texture to the extent such elements are not functional. In many countries,
trade dress is referred to as “get-up” or “product design”. Only nonfunctional trade dress can be
protected. Because trade dress is often protected through the law of unfair competition.

Color

The color of an item can also function as a trademark. The Supreme Court held in the 1995 case
of Qualitex Co. v. Jacobson Products Co., 115 S.Ct. 1300 (1995) that the green-gold color of a
dry cleaning press pad can function as a trademark. Before this decision, the argument was often
made that color alone could not be considered a trademark, since granting trademark status to
colors would soon lead to the depletion of the number of colors available for an object. The Court
in Qualitex rejected arguments based on this depletion theory, reasoning that alternative colors
would usually be available for competitors. In those cases where alternative colors were not
available, courts could deny trademark protection in those circumstances where color depletion
may actually occur

Fragrances, Sounds, and Moving Images

A sound can also be a trademark or a service mark. The three tone chime of NBC has been
registered as a service mark. Sound trademarks recently were in the news when Harley-Davidson
announced that it was attempting to register the exhaust sound of a Harley- Davidson motorcycle
with the U.S. Patent and Trademark Office (USPTO). Harley-Davidson was reacting to moves by
competitors to duplicate the Harley sound in competing motorcycles. Hearings in front of the
USPTO have been scheduled to determine whether Harley-Davidson can register the sound. A
fragrance can function as trademark if it is distinctive and not functional. For example: in In re
Clarke, 17 U.S.P.Q.2d 1238 (T.T.A.B.1990), a floral fragrance was allowed as a trademark for
sewing thread and embroidery yarn and was not functional when used in connection with those
goods. The roar of the MGM lion and Woody Woodpecker’s distinctive laugh are also registered.
Finally, the Internet has given rise to applications for marks that consist of moving images, such
as Microsoft company’s spinning EXPLORER GLOBE.

Design and Ornamentation

A design can function as a trademark as long as it is distinctive rather than merely functional or
ornamental. Some designs are protected on their own, such as Nike’s famous “swoosh”
design, the alligator that appears on shirts, and Betty Crocker’s spoon. If the design is merely
back ground material, however, and does not create a separate commercial impression, or if it
consists solely of some simple geometric shape, such as an oval or square, it cannot be protected

21
without proof of secondary meaning. For example, the PTO refused registration of two parallel
colored bands placed at the top of socks as pure ornamentation. Merely decorative subject matter
and pure ornamentation cannot be registered because they do not identify and distinguish goods or
services and thus cannot function as trademark.

Serialized Literary and Movie Titles

The title of a single book or movie title is generally not protectable. The title of a serialized work,
such as THE BRADY BUCH or NEWSWEEK, however, can be protected as a trademark or
service mark.

Insignia

Flags, coats of arms, and other insignia of the United States or any state or any foreign nation
cannot be registered.

Picture and Drawings

Pictures or drawings of a character or scene are often used as trademarks or service marks.

Corning's Pink Panther

Sun Microcomputer, Inc.'s Duke

MSN's Butterfly

Apples Automator

SELECTING AND EVALUATING A TRADEMARK

Selecting a Mark

The selection of mark occurs in a variety of ways.

22
• companies hold contests and encourages employees to create a mark for a new product line
or service
• Companies engage sophisticated research
• Branding firms that will conduct surveys and create a mark and a logo or design for the
company.
• There are name creation software programs that help individuals and companies create marks

Once the mark is selected, it must be screed and evaluated for use and registrability, if failed
then it leads to wastage in expenditure of time and money in advertising, using, and applying for a
mark that is rejected for registration by the PTO or, in the worst case scenario, might subject the
owner to damages for trademark infringement and unfair competition.

Reviewing a Proposed Mark

Once a mark is selected, it should be carefully scrutinized to ensure that it will not be excluded
from protection under the Lanham Act.

• Firstly they have check whether the mark contains scandalous (giving offence to moral
sensibilities and injurious to reputation)
• Whether consent from a living person will be required,
• Whether the mark is generic,
• Whether it is statutorily protected
• Whether the mark is descriptive of some feature of the goods and services offered under the
mark,
• It also see that the mark includes foreign terms
• Many law firms specializing in trademark work use a questionnaire form or data sheet to
gather questionnaire form or data sheet to gather basic information from clients about their
marks

THE TRADEMARK SEARCH

Scope of search

• There are a variety of sources that can be reviewed to locate potentially conflicting marks
• There are literally millions of marks registered or applied for at the PTO, and thousands of
journals, trade magazines, directories, telephone books, Internet sources, state records, and
state trademark registrations that might contain other marks or business names, a computer
assisted or online search is the most effective method of searching.
• Both LEXIS and WESTLAW, the computer-assisted legal research system, offer access to
vast databases that may point out conflicts.
• One of the best known databases is TRADEMARKSCAN product OF Thomson & Thomson.
Conducting the trademark search

The trademark searching is a two-step process:

23
• a preliminary search is conducted of the records of the PTO to make a quick determination as
to whether the mark may be available or whether there is conflict that would preclude use of
the mark. It is also called a knockout search.
• If the results of the preliminary or knockout search indicate a mark may be available, a
comprehensive search of other sources (including state trademark records, telephone
directories, Internet records, and trade journals) is then conducted.

Step One: The Preliminary Search

There are a variety of sources that can be used to conduct an initial trademark search,
including online subscription services, CD-ROM, the Patent and Trademark Depository Libraries,
and the PTO website search services. Following are some resources commonly used for
conducting a preliminary search:

Electronic Database and CD-ROM

• TRADEMARKSCAN is a database owned by Thomson & Thomson, a renowned trademark

search firm, which provides information on all active registered trademarks and service marks.
The TRADEAMRKSCAN database is primarily used as a quick screening tool to determine
the availability of a new mark.
• DIALOG is another database offered by Thomson & Thomson. Its database includes
trademarks from the United States plus numerous foreign countries as well as patent and
copyright information. It provides online training and practice and free practice searching at
the following web site: http://training.dialog.com/onlinecourses/trademarks/.
• SAEGIS is an entire suite of services provided by Thomson & Thomson that allows online
worldwide trademark searching as well as searching of domain name registries and websites
to locate common law uses of proposed marks.
• TRADEMARK.COM is an online search service offered by Micro Patent LLC, offering a
variety of searchable databases, including federal marks, and common law uses of potentially
conflicting marks.
• LEXIS and WESTLAW, the computer-assisted research system, offer access to vast
trademark databases that may disclose potentially conflicting marks.

Many law firms subscribe to one or more of these services so they can perform an initial
screening search in-house.

PTO Web Site : Perhaps the easiest and least expensive way to conduct a very preliminary
search is to review the records of the PTO (http://www.uspto.gov) and it free public searching
called Trademark Electronic Search System (TESS).

Step Two: The Comprehensive Search

A separate professional trademark search firms are existing for the companies when their need
of searching the trademark. These companies review the records of the PTO (go through existing

24
and pending application) , review state trademark office records for state trademark registration,
and they perform a “common law” search of various journals, directories, press releases, domain
names and Internet references to locate unregistered names and mark.

These professional search firms can save considerable time and money and more importantly,
provide a more thorough search than that which an individual can conduct on his or her own, they
also check for identical and phonetically equivalent marks for similar goods and services and will
also check for foreign equivalents. They will charge for the searching of the marks. The report is
typically divided into three sections: results gained from reviewing PTO registrations and
applications; results gained from reviewing state trademark records; and the common law results.

TRADEMARK REGISTRATION PROCESSES

Preparing the application

• Once a mark has been selected and evaluated for use and registrability, an application for
federal registration of the /mark should be prepared and filed.
• An application is provided by PTO
✓ The name of the applicant
✓ The citizenship of the applicant
✓ The address of the applicant
✓ The address of the applicant
✓ An identification of the goods and or services offered under the mark
✓ A drawing of the mark
✓ A verification or declaration signed by the applicant or agent or attorney
• The application is based on actual use of the mark or the owner’s intent to use the mark.
• The process of moving an application through the PTO is called prosecution [(law) the
institution and conduct of legal proceedings against a defendant for criminal behavior]
• The application must be in English.
• Electronically filed application are provided by the PTO
• Self application is also be prepared as the letter size (namely 8 ½ inches by 11 inches) paper,
typewriter, double-spaced, with margins of at least 1 ½ inches at the left and top of the pages.
• The application should be written on only one side of the paper.
• The filing and prosecution of trademark application are governed by the TMEP [Trademark
Manual of Examination Procedure]
• The PTO introduced on electronic filing system in 1998.
• The Trademark Electronic Application System [TEAS].Permits applicants to file
numerous documents electronically.
• PTO considers the electronically filed document after transmission.

The applicant

• The mark can be made only by the owner of the mark or, in the case of intent –to-use
application, by a person who has a bonafide to use the mark in commerce.

25
• Application may be natural persons or business entities such as corporation, partnership,
association, unions or other organization.
• Government entities such as nations, states municipalities and other governmental bodies.
• The applicant name must be in correct legal form
• A mark should be identified in the application by the name set forth in its articles of
incorporation.
• Clients often make mistakes in their corporate names or in the punctuation
• The certificate of registration will issue in the name of the application as set forth in the
application
• If the application is a person or business that conducts business under a fictitious [fake]
business name, the application will be rejected.
• The applicant is a partnership For example: “Balboa Gardens Partnership”, the application
should be made by the partnership itself and the state in which the partnership was organized.
• A trademark or service mark application is usually filed in the name of one party.
• The PTO has been reluctant [unwilling] to accept application by joint applicants.
• A joint venture or a partnership cannot be joint applicants

Identification of Goods or Services

The application must identify the goods and/or services offered or to be offered under the
mark that is the subject of the application. Careful consideration must be given to drafting this
part of the application. Goods and services are categorized by the PTO into forty-five separate
classes, called International Classes because many other nations use this same classification
system established by WIPO. Until 1973, the PTO used a different classification scheme, called
the United States Classification Scheme. Each class requires a filing fee of $335.

A detailed listing of the International Classes with numerous examples is found in Chapter
1400 of TMEP, available on the PTO’s web site. If a mark is used for more than one class of
goods or services, the applicant may either file a combined application, listing all of the goods and
services. Some attorneys prefer to file separate application believing that a defect in regard to one
class of goods or services in a combined application will hold up registration for the mark in all
class.

The PTO requires that the identification of goods or services be as clear, accurate and
concise as possible. Once the application filed, no other item can be added in the process of
registration, a separate application should be applied.

REGISTRATION

• A registration will issue about twelve weeks after publication in the official gazette
• If no notice of opposition is filed to the application
• For an ITU [Intent-to-Use] application registration will occur after publication in the official
Gazette.
• The PTO will issue a certificate of registration for the mark

26
• The term of the registration is presently ten years from the date the mark is registered [for
registration issued before November 16, 1989, the term is twenty years]
• “TM” for Trademark & SM for service mark.

A SAMPLE REGISTRATION CERTIFICATE

Reg. No. 3,665,378 WISDOM TO GO INC.(CALIFORNIA CORPORATION) Registered

Aug. 11,2009 1829 WEST LYDIA LANE
PHONIX, AZ 85041
Int. Cls.: 41 and 45 FOR: PERSONAL COACHING SERVICES IN THE FIELD OF SELF-
IMPROVEMENT; EDU- CATIONAL SERVICES, NAM MEYL ,
CONDUCTING SEMINARS AND WORKSHOPS IN THE FIELD
SERVICE MARK OF SELF IMP
PROVEMEN NT; ENTERTAINMENT IN THE
NATURE OF ON-GOING DRA 0
TELEVISION ANPR D1 OGRAMS IN THE FIELD OF SELF-
IMPROVEMENT,IN CLASS
PRINCIPAL REGISTER 41 (U.S. CLS. 10 00, 10
01 AND 107).

FIRST
T USE 1-19-200
07; IN COMMERCE 1-19-2007.

FO
OR: PE
ERSONAL ENRICHMENT SERVICES, NAMELY,
PROVIDING SELF IMPROVEMENT CO OUNSELIN
NG;
PROVIDING INFORMATION IN THE FIELD OF SELF-
IMPROVEMENT VIA THE INTERNET AND PORTABLE
MEDIUMS INCLUDING CELL PHONES AND VIDEO
PHONES, IN CLASS 45 (U.S. CLS. 100 AND 101).

FIRST USE 1-19-2007; IN COMMERCE 1-19-2007.

27
 NO CLAIM IS MADE TO THE EXCLUSIVE RIGHT TO
USE "ONE MINUTE", APART FROM THE MARK AS
SHOWN.
THE COLOR(S) BLACK, RED, WHITE, GOLD, YELLOW,
RUST AND MAGENTA IS/ARE CLAIMED AS A
FEATURE OF THE MARK.

THE MARK CONSISTS OF THE WORDING "THE ONE

MINUTE ZONE", WITH THE LETTERS "ONE" FORMING
BOTH "ONE" AND PART OF THE WORD "ZONE", AND A
SUN DESIGN RADIATING OUT FROM THE CENTER OF
THE LETTER "O". THE COLORS BLACK, RED, WHITE,
GOLD, YELLOW, RUST AND MAGENTA ARE CLAIMED
AS A FEATURE OF THE MARK. THE WORDS "THE" AND
"MINUTE" ARE IN THE COLOR BLACK, THE LETTER
"Z" AND THE LETTERS "ONE" ARE IN THE COLOR RED
AND OUTLINED IN THE COLOR WHITE, THE CENTER
OF THE SUN DESIGN IN THE LETTER "O" IS IN THE
COLOR WHITE, THE OUTER SUN DESIGN IS IN THE
COLOR GOLD, AND THE LINES RADIATING FROM THE
SUN DESIGN ARE IN THE COLORS YELLOW, GOLD,
RUST ANDMAGENTA.

SER. NO. 76-683,444, FILED 10-29-2007. JOHN

GARTNER, EXAMINING ATTORNEY

*Note: The seal will be a gold embossed seal similar to what appears on the current cover bind

REQUIREMENTS TO MAINTAIN YOUR

FEDERAL TRADEMARK
REGISTRATION

WARNING: YOUR REGISTRATION WILL BE CANCELLED IF YOU DO NOT

FILE THE DOCUMENTS BELOW DURING THE SPECIFIED TIME PERIODS.

Requirements in the First /Ten Years

* What and When to File:

● First Filing Deadline: You must file a Declaration of Use (or Excusable Nonuse) between the
5th and 6th years after the registration date. See 15 U.S.C. §1058. If the declaration is accepted,
the registration will continue in force for the remainder of the ten-year period from the registration
date, unless cancelled by an order of the Commissioner for Trademarks or a federal court.

28
SIET-Intellectual Property Rights (IPR) III B.Tech I Sem (R22)

● Second Filing Deadline: You must file a Declaration of Use (or Excusable Nonuse) and an
Application for Renewal between the 9th and 10th years after the registration date. See 15
U.S.C. §1059.

Requirements in Successive Ten Year Periods

* What and When to File:

● You must file a Declaration of Use (or Excusable Nonuse) and an Application for Renewal
between every 9th and 10th-year period calculated from
m the regisstration date.

Grace Period Filings*

The above documents will be accepted as tiimely if filed six-months after the deadlines listed
above with the payment of an additional fee.

mark Office (USPTO) will NOT send you any future notice
The United States Patent and Trradem
der of these filing requirements.
or remind

*ATTENTION MADRID PROTOCOL REGISTRANTS: The holder of an international

registration with an extension of protection to the United States under the Madrid Protocol must
also timely file the Declarations of Use (or Excusable Nonuse) referenced above at the USPTO
based on the U.S. registration date (not the international registration date). However, the grace
periods for these registrations are different, as is the time period for filing the declarations of use
due every ten years after the registration date. The declarations due every ten years must be filed
within six-months before expiration of the ten year period. In addition, there is no grace period for
the declaration due between the 5th and 6th years after the registration date, and there is a three-
month grace period for the declarations due every ten years. See 15 U.S.C. §1141k. Further,
owners of these registrations do not file renewal applications at the USPTO, but instead must file
a renewal of the underlying international registration at the International Bureau of the World
Intellectual Property Organization, under Article 7 of the Madrid Protocol, before the expiration of
each ten-year term of protection from the date of the international registration. See 15
U.S.C. §1141j. For more information and renewal forms for the international registration, see
http://www.wipo.int/madrid/en/.

NOTE: Fees and requirements for maintaining registrations are subject to change. Please
check the USPTO website for further information. You can file the registration maintenance
documents referenced above online at http://www.uspto.gov.

* Note: The seal will be a gold, embossed seal similar to what appears on the current cover bind

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SIET-Intellectual Property Rights (IPR) III B.Tech I Sem (R22)

UNIT-3

COPYRIGHTS
Introduction

Every year millions of Americans create original works like books, music, research and
other forms of creative expression. All these creation are Intellectual Property and all of them are
protected by copyright. Writers, editors and publishers, understanding copyrights issues are
essential. Especially now that the production of counterfeit [imitating] and pirated goods,
including written works, has become so prevalent.

In 2005 more than $600 billion in pirated and counterfeited goods were recognized by
WCO [World Customs Organization]. Now-a-days the internet has made copying and distributing
protected material easier than ever before for avoiding copying the material. So, in order to
protect yourself from IP theft, it’s important to know the basics about rights.

Definition

“The legal protection given to published works forbidding anyone but the author from
publishing or selling them. An author can transfer the copyright to another person or corporation,
such as a publishing company.”

What is a Copyright?

• Copyright is a form of protection provided by U.S. Law to the authors of “Original Works of
Authorship” fixed in any tangible medium of expression.
• The manner and medium of fixation are virtually unlimited.
• Creative expression may be captured in words, number, notes, sounds, pictures or any other
graphic or symbolic media.
• The subject matter of copyright is extremely broad, including literary, dramatic, musical,
artistic, audiovisual and architectural works.
• Copyright protection is available for both published and unpublished works.

History

• In England prompted the first insistence upon protection for publication of books
• Bookbinders and printers demanded protection from copying of books.
• Authors also began to demand protection from unauthorized copying and demanded to
share in the financial rewards
• Finally, in 1710, parliament enacted the first copyright statute [Act/law], the Statute of Anne
[Named after Anne, Queen of Great Britain, the Statute become the foundation for British and
American Copyright Law]

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SIET-Intellectual Property Rights (IPR) III B.Tech I Sem (R22)

• The first copyright law is enacted under the new U.S. Constitution, Protecting books maps and
charts for 14 years with privilege of renewal for another 14 years
• Copy right registration is made in the U.S. district court where the author or proprietor resides.
• The first copyright entry, “The Philadelphia Spelling Book” by John Barry, is registered in
• U.S. District court of Pennsylvania. Protection is for 14 years with a renewal period of author
14 years.
Common Law Right

• The enacted the first copyright act in 1790 and the first federal copyright registration were
issued.
• Until January1, 1978 [the effective date of the 1976 copyright Act] the U.S had a dual system
of copyright protection.
• Until 1978, an author has a perpetual common law right to their unpublished works.
• Once the work was published, however, the common law perpetual copyright was
extinguished and protection was afforded by virtue [quality] of the 1909 act, provide
protection up to fifty-six years.
• Publication is the distribution of copies of a work to the public for sale or other transfer of
ownership, by rental lease, or lending.
• The dual nature of copyright protection was complex, often led to controversy
• The 1976 act eliminated the distinction between unpublished and published works.
• For Example: Ernest Heming way’s a farewell to Arms [Published in 1929], are governed
by the act in existence on the date of their publication. Heingway’s book would thus be
governed by the 1909 act.

• Just as trademark rights arise from use and not from registration with PTO
• A copyright registration from the copyright office provides certain advantages to author’s of
work, including the following.
• Registration establishes a public record of the copyright claim
• Before an infringement suit may be filed in court, registration is necessary for works of U.S
origin
• If made before or within five years of publication, registration will establish Primafacie
evidence in court of the validity of the copyright and of the facts stated in the certificate and
• If registration is made within three months after publication of the work or prior to an
infringement of the work, statutory damages and attorney’s fee will be available to the
copyright owner in court action
• Copyright protection generally lasts until seventy years from the death of the author.
• The 1976 copyright act is found at 17 U.S.C. §§101-1101 and it was amended for several
times.
• In 1980, specific protection was afforded to computer programs as works entitled to copyright
protection.

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SIET-Intellectual Property Rights (IPR) III B.Tech I Sem (R22)

• Copyright Act © represents

• Another 1998 amendment to copyright law is the Digital Millennium Copyright act.

The United States Copyright Office:

Register of Copyright, Copyrights office, Library of Congress,

101 Independence Avenue SE, Washington,
DC 20559-6000

• The copyright office is not permitted to give legal advice and will not offer guidance on matter
such as disputes, suits against possible infringers or other matters related to copyright.
• Among the more useful publications and materials are the following:
• Forms for copyright registration
• Circular 1, “Copyright Basics”,
• Circular 2, “Publication on copyrights”,
• Circular 3, “Copyright Notice”,
• Circular 4, “Copyright Fees”
• Circular 15, “Renewal of Copyright”
• Circular 15a, “Duration of Copyright”; and
• Circular 38a, “International copyright Relations of the United States”; and
• Circular 61, “Copyright Registration for computer Programs”
• To order copyright publications, write to:

Library of Congress, Copyright Office, Publication section, LM-455,

101 Independence Avenue SE, Washington-DC20559-6000

• Circulars and announcements are available via facsimile

• If you do not know the document number of the items you want, you may request that a menu
be faxed to you
• All the data pertaining to copyrights are available in Internet
• The copyright office provides a free electronic mailing list, “NewsNet”, that issues periodic e-
mail messages on copyright issues
• Copyright office process the application via electronically

Originality of Material:

Introduction

• The limits of copyrightability are dictated [command] by federal statute

• According to 17 U.S.C § 102, copyright protection exists in original works [tangible medium]

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SIET-Intellectual Property Rights (IPR) III B.Tech I Sem (R22)

• Thus, there are three basic requirements for copyrightability:

• A work must be original
• A work must be fixed in a tangible form of expression; and
• A work must be a work of authorship

Originality of Material

• To be eligible for copyright protection

• Material must be original
• Meaning
• Independently created
• Posses a modicum of creativity
• It should not confused with novelty, worthiness or aesthetic [dealing with beauty] appeal
• “Originality” thus does not mean “first”, it merely means “independently created”,
• A slight amount of “creative spark”.

• Fixation of Material :(17U.S.C. § 101

• The copyright act protects works of authorship that are “fixed in any tangible medium of
expression”.
• A work is “fixed”:
• When it is embodied [existing in broad form]
• Phonorecord and is sufficiently permanent
• Stable to permit it to be perceived, reproduced or communicated for a period of more than
transistory [temporary] duration
• Thus there are two tangible categories
• Copies: A copy is a material object from which a work can be perceived, reproduced or
communicated, either directly by human perception or with the help of a machine.
• Phonorecord: A Phonorecord is a material object in which sounds are fixed and from which
the sounds can be perceived, reproduced or communicated either directly by human
perception or with the help of a machine.

Works of Authorship: (17 U.S.C § 102)

• The copyright act provides that copyright protection subsists [support oneself] in original
works of authorship fixed in any tangible medium of expression, now known or hereafter
developed, from which they can be perceived, reproduced or otherwise communicated.
• The list is preceded by the phrase that works of authorship “include” those categories,
demonstrating that the listed categories are not only types of works that can be protected, but
are illustrate only
• Literary works

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SIET-Intellectual Property Rights (IPR) III B.Tech I Sem (R22)

• Musical works
• Dramatic works
• Pantomimes and choreographic works
• Pictorial, graphic and sculptural works
• Motion pictures and other audiovisual works
• Sound recording and
• Architectural works

Exclusions from copyright protection:

Not all works are protected by copyright

• Ideas, Methods, or System
• Blank forms, Titles, short phrases and common property
• Public domain works
• Facts
• Computing and measuring devices

The Rights afforded by copyright law:

Introduction

• The copyright act provides that, subject to certain exceptions, the owner of a copyrights has
the exclusive rights to do and to authorize any of the following:
• To reproduce the copyrighted work in copies or phonorecords
• To prepare derivative works based on the copyrighted work
• To distribute copies or phonorecords of the copyrighted work to the public
• To perform the copyrighted work publicly
• To display the copyrighted work publicly
• To perform the copyrighted work publicly by means of a digital audio transmission
• Unless exemption exists, unauthorized exercise of any of these rights by another is an
infringement.
These exclusive rights, usually referred to as a “bundle”

Rights of Reproduction:

• The most fundamental of the rights granted to copyright owners is the right to reproduce the
work
• A violation of the copyright act occurs whether or not the violator profits by the reproduction
• Only the owner has the right to reproduce the work
• Secretly taping a concert, taking pictures at a performance, or recording all violate the owner’s
right to reproduce

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SIET-Intellectual Property Rights (IPR) III B.Tech I Sem (R22)

• The suggestion of congress, in 1978 a group of authors, publishers and users established a not-
for-profit entity called Copyright Clearance Center [CCC]
• CCC grants licenses to academic, government and corporate users to copy and distribute the
works
• It collects royalty fees, which are distributed to the authors
• Companies that photocopy articles from journals and magazines often enter into licensing
arrangements with the CCC so they can make copies.

Rights to prepare Derivative works:

• Section 106 of the copyright Act provides that the owner of a copyright has the exclusive right
to prepare derivative works based upon the copyrighted work
• This right I often referred to as the right to adapt the original work

Definition:

• “A derivative work is broadly defined as a work based upon one or more preexisting works,
such as a translation, dramatization, fictionalized motion pictures version, abridgment
condensation or any other from in which a work may be recast, transformed, or adapted.

• a work consisting of editorial revisions, annotations, elaborations, or other modifications is

also a derivative work

New material represents original work of authorship

Rights of distribution and the first sale doctrine:

• Section 106 (3) of the copyright act provides that the owner of a copyright has the exclusive
right to distribute copies or phonorecords of the work to the public by sale or other transfer of
ownership
• A violation of the distribution right can arise solely from the act of distribution itself
• The distributor did not make an unlawful copy or the copy being distributed was unauthorized
• Thus, blockbuster video store can be liable for violating an owner’s right to distribute
• Once the author has parted with ownership of copyrighted material, the new owner of a
lawfully made copy can treat the object as his or her own
• The new owner the right to lend the book or movie to a friend, resell the work at a garage sale,
or even destroy it.
• The first sale doctrine does not apply to or limit the author’s exclusive rights to prepare
derivative works or rights of public performance and
• Without permission of authorship the goods are not permitted to imported into the U.S.

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SIET-Intellectual Property Rights (IPR) III B.Tech I Sem (R22)

Rights to perform the work publicly

• Section 106 [5] of the Copyright Act provided that in the case of all copyrighted works other
than sound recording & works of architecture, the copyright owner has the exclusive right to
display the work publicly.
• A display is “public” under the same circumstances in which a performance is “public”.
• Namely if it occurs at a place open to the public (or) at a place where a substantial number of
persons outside of the normal circle of a family.

Copyright Ownership Issues [17 U.S.C. § 201(a)]:

• Copyright in a work protected under the copyright act vests [provide with power and
authority] in the author or authors of the work
• Issues about ownership arise when more than one person creates a work

Ownership of a physical object is separate and distinct from ownership of the

copyright embodied in the material object

• Unless copyright has been explicitly conveyed with those physical articles, the original
authors generally retain all other rights associated with the works.

Joint Works [intent to create a unitary whole]

• A joint work is a work prepared by two or more authors with the intention that their
contributions be merged into inseparable or interdependent parts of a unitary whole.
• One copyright exists in the created works
• Joint authors are those who “mastermind” or “super mind” the creative effort.

Ownership Rights in Joint Works

• If individual are authors of a joint work, each owns an equal undivided interest in the
copyright as a tenant in common, [each has the right to use the work, prepare derivative
works, display it without seeking the other coauthor’s permission].
• If profits arise out of such use, an accounting must be made so, that each author shares in the
benefits or proceeds.
• The death of a coauthor, his or her rights pass to heirs who then own the rights in common
with the other coauthor.

Ownership in Derivative or Collective Works

• The author of the original book has rights only to his or her work and cannot reproduce or
perform the derivative work without permission.

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SIET-Intellectual Property Rights (IPR) III B.Tech I Sem (R22)

• If a work such as a book is created by one person who intends it to be complete at the time and
illustrations are later added to it by another, the work cannot be a joint work because there was
no intention of the parties to create a unitary whole at the time of their creation.
• The author of the derivative work cannot create further works based on the original book
without permission and cannot reproduce the original work without permission.
• Multiple ownership rights may also arise if separately copyrightable works are compiled into
a collection.
• For Example: If essays written by Jerry Seinfeld, Ellen DeGeneres, and Paul Reiser are
collected into a humor anthology by Bill Jones (with permission of the original authors), the
original authors retain their exclusive rights (such as rights to reproduce, distribute, and
perform) in their respective essays. No join work is created because there was no intent at the
time the separate essays were created to merge them into a unitary whole. No derivative work
is created because the original works have not been transformed in any way and nothing new
has been added to them. The anthology by the compiler, Bill Jones, is a collective work and
pursuant to section 201(c) of the act, Jones acquires only the right to reproduce and distribute
the contributions as part of the particular collective work or any revision of the collective
work.

Works Made for Hire

• The general rule is that the person who creates a work is the author of that work and the owner
of the copyright therein, there is an exception to that principle: the copyright law defines a
category of works called works made for hire.
• If a work is “made for hire”, the author is considered to be the employer or commissioning
party and not the employee or the actual person who created the work
• The employer or commissioning party may be a company or an individual.
• There are two types of works that are classified as works made for hire; works prepared by an
employer within the scope of employment and certain categories of specially ordered or
commissioned works.

Copyright Registration

• A work is “created” when it is fixed in a copy or phonorecord for the first time.
• Although not required to provide copyright protection for a work, registration of copyright
with the Copyright Office in expensive, easy and provides several advantages, chiefly, that
registration is a condition precedent for bringing an infringement suit for works of US origin.
• To register a work, the applicant must sent the following three elements to the Copyright
Office: a properly completed application form, a filing fee, and a deposit of the work being
registered.
• Registration may be made at any time within the life of the copyright.

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SIET-Intellectual Property Rights (IPR) III B.Tech I Sem (R22)

THE APPLICATION FOR COPYRIGHT REGISTRATION

• The following persons are entitled to submit an application for registration of copyright:
• the author (either the person who actually created the work or, if the work is one made for
hire, the employer or commissioning party)
• the copyright claimant (either the author or a person or organization that has obtained
ownership of all of the rights under the copyright originally belonging to the author, such as a
transferee)
• the owner of exclusive right, such as the transferee of any of the exclusive rights of copyright
ownership (for example, one who prepares a movie based on an earlier book may file an
application for the newly created derivative work, the movie); and
• the duly authorized agent of the author, claimant, or owner of exclusive rights (such as an
attorney, trustee, or anyone authorized to act on behalf of suchparties)

Application Forms

• The Copyright Office provides forms for application for copyright registration.
• Each form is one 8 ½ by 11” (inchs) sheet, printed front and back.
• An applicant may use photocopies of forms
• The Copyright Office receives more than 6,00,000 applications each year, each application
must use a similar format to ease the burden of examination.
• The type of form used is dictated by the type of work that is the subject of copyright.

For example: One form is used for literary works, while another is used for sound recording.

Following are the forms used for copyright application.

• Form TX (Literary works, essays, poetry, textbooks, reference works, catalogs, advertising
copy, compilations of information, and computer programs)
• Form PA (Pantomimes, choreographic works, operas, motion pictures and other audiovisual
works, musical compositions and songs.
• Form VA (Puzzles, greeting cards, jewelry designs, maps, original prints, photographs,
posters, sculptures, drawings, architectural plans and blueprints.
• Form SR (Sound recording)
• Form SE (periodicals, newspapers magazines, newsletter, annuals and Journals. Etc.

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Notice of copyright

• Since March 1, 1989 (the date of adherence by the United States to the Berne Convention),
use of a notice of copyright (usually the symbol © together with the year of first publication
and copyright owner’s name) is no longer mandatory, although it is recommended and offers
some advantages.
• Works published before January 1, 1978, are governed by the 1909 copyright Act.
• Under that act, if a work was published under the copyright owner’s authority without a
proper notice of copyright, all copyright protection for that work was permanently lost in the
United States.
• With regard to works published between January 1, 1978, and March 1, 1989, omission of a
notice was generally excused if the notice was omitted from a smaller number of copies,
registration was made within five years of publication, and a reasonable effort was made to
add the notice after discovery of its omission.

International Copyright Law

• Developments in technology create new industries and opportunities for reproduction and
dissemination of works ofauthorship.
• A number of new issues have arisen relating to the growth of electronic publishing,
distribution, and viewing of copyrighted works.
• Along with new and expanded markets for works comes the ever-increasing challenge of
protecting works form piracy or infringement.
• Copyright protection for computer programs
• Copyright protection for Automated Databases
• Copyright in the Electronic Age
• The Digital Millennium Copyright Act

LAW OF PATENTS

• The work Patent is a shorthand expression for “letters patent”

• A Patent is a grant from the U.S. government to exclude others from making, using, or selling
another person’s new, nonobvious, and useful invention in the United States for the term of
patent protection.
• It is protected for 20 years
• Under patent law, inventors can enjoin the making, using or selling of an infringing invention
even if it was independently created.
• A Patent allows its owner to exclude others from using the owner’s invention; it does not
provide any guarantee that the owner can sell the invention.
• To obtain a patent, an inventor must file an application with the PTO, same agency of the
Department of Commerce that issues trademark registration.

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• The application must describe the invention with specificity.

• The application will be reviewed by a PTO examiner, and, if approved, the patent will issue.
• The U.S. Constitution provides that Congress shall have the power “to promote the progress
of science and useful arts, by securing for limited times to authors and inventors the exclusive
rights to their respective writing and discoveries”.
• Patent promote the public good in that patent protection incentivizes inventors.

Advantages of Patents

• Patents promote the public good in that patent protection incentivizes inventors
• The introduction of new products and processes benefits society.
• In return for the full disclosure to the public of specifies of the invention, thus advancing
science and technology, the inventor is given a limited period of time within which to exploit
his or her invention and excluded others from doing so.
• Inventors are thus incentivized to create new products, and the public benefits from inventions
that ultimately will fall into the public domain.

Rights Under Federal Law

• Patent law derives from the Constitution.

• In 1790, pursuant to the direction provided in the Constitution, Congress passed the first
patent, which in large part relied upon English Law.
• Three years later, the statute was replaced with a new act authored by Thomas Jefferson.
• These early acts provided the structural framework for U.S patent law and specified the four
basic conditions, still existing, that an invention must satisfy to secure patent protection:
• The invention must be a utility, design, or plant patent
• It must be useful (or ornamental in the case of a design patent or distinctive in the case of a
plant patent);
• It must be novel in relation to the prior art in the field; and
• It must not be obvious to a person of ordinary skill in the field.
• Revision of federal patent statutes occurred in 1836 when the Patent Office was created and
again in 1870 and 1897.
• Thereafter, in 1952, Congress enacted a new patent act, codified in title 35 of the United
States Code (U.S.C), it is last major revision to federal patent statutes
• Development of patent law has evolved primarily through federal court decisions rather that
the legislature
• In 1982, Congress created a new court, the Court of Appeals for the Federal Circuit (CAFC),
the exercise exclusive jurisdiction over all cases involving patent issues and to promote
uniform interpretation of the U.S. patent statutes, which until then had been interpreted in
often inconsistent ways by the various federal courts of appeals throughout the nation.

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• Moreover, some inventions such as computer programs, are protectable under copyright law
as well as patent law.

Patent Searching Process

The Need for a Search:

➢ Patentability requires novelty and nonobviousness.

➢ The patentability search, sometimes called a novelty search
➢ A search is recommended to determine the feasibility of obtaining a patent.
➢ A novelty search is somewhat limited in scope and is designed to disclose whether an
application will be rejected on the basis of lack of novelty or obviousness.
➢ A novelty search can usually be completed for less than $1,000.
➢ If an invention is intended for immediate commercial use or sale, an additional search, call an
infringement search or investigation, is often conducted concurrently with the novelty search.
➢ This novelty search is thus more expensive

Searching Methods:

➢ The PTO provides public search facilities for patent searching.

➢ Searching is free and the PTO allows searchers to review issued patents, complete with
drawings.
➢ Searching can be done either in the main public search room or in the examiners’ search areas
where examiners will assist in searching. (The patent search room contains copies of all U.S.
issued patents from 1790 to present as well as many foreign patents).
➢ The PTO employs a classification system that provides for the storage and retrieval of patent
documents
➢ The patent examiners in the course of examining patent applications, the system is also used
by searchers, and classification files are divided into subclasses.
➢ Most classes have approximately three hundred sub classes

Patent Application Process

Overview of the Application Process

➢ The process of preparing, filing, and shepherding a patent application through the PTO
towards issuance is called “prosecution”.
➢ An application may be filed by the inventor himself or herself or, as is more usual, by a patent
attorney.
➢ Only 20% of all applications are filed by inventors without the assistance of attorneys.
➢ The application is filled with PTO, it will be assigned to one of more than 3500 patent
examiners having experience in the area of technology related to the invention who will

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SIET-Intellectual Property Rights (IPR) III B.Tech I Sem (R22)

review the application and conduct a search of patent records to ensure the application
complies with the statutory requirements for patents.
➢ The process may continue for several rounds.
➢ A Notice of Allowance will be sent to the applicant, which specifies an issue fee that must be
paid to the PTO in order for the patent to be granted.
➢ Until 2000 all patent application were maintained in confidence, but after November 2000
they were published
➢ It takes one to three years to prosecute a patent, and costs and fees can range from $5000 to
more than $30000 with fee generally ranging for $10000 to $12000

Patent Practice

➢ While preparing trademark and copyright applications is relatively straightforward, preparing

a patent application requires skillful drafting as well as knowledge in the relevant fields,
whether that is biotechnology, chemistry, mechanical engineering, physics, computers,
pharmacology, electrical engineering, and so forth.
➢ They are divided into different groups, such as a mechanical group, a biotech group, and an
electrical group.
➢ Many patent attorneys possess both a law degree and an advanced degree in engineering,
physics, chemistry, or the like.
➢ To represent patent applicants before the PTO, an attorney must be registered to practice with
the PTO.
➢ An attorney must pass the Patent Bar, which requires the attorney to demonstrate background
in science or engineering.
➢ The examination is very difficult it is a multiple choice questions, and the pass rate tends to
hover around one-third.
➢ A list of attorneys and agents registered to practice before the PTO is available from the
Government Printing Office located in Washington, DC, Alternatively, the PTO web site
(http://www.uspto.gov/web/ofices/dcom/olia/oed/roster/) provides an index to the more than
18000 attorneys and agents who are licensed to practice before the PTO.

Confidentiality of Application Process and Publication of Patent Application

➢ More than 200 years, all patent applications filed with the PTO were maintained in strict
confidence throughout the entire application process.
➢ Only when the patent issued was the file wrapper open to public inspection.
➢ Under the American Inventors Protection Act (AIPA) of 1999, however, which took effect in
November of 2000, the PTO now publishes utility and plant applications eighteen months
after their filing
➢ If the applicant later decides to apply for a patent in a foreign country, the applicant must
provide notice of this foreign filing to the PTO within forty-five days or the application will

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SIET-Intellectual Property Rights (IPR) III B.Tech I Sem (R22)

be regarded as abandoned.
➢ The intent of the new law is to harmonize U.S. patent procedures with those of other
countries, almost all of which publish patent applications after an initial period of
confidentiality.
➢ The new act protects inventors from having their inventions infringed by providing that
patentees can obtain reasonable royalties if others make, used, or sell the invention during the
period between publication and actual grant of the patent.

Types of Application

1. Provisional Application
2. Utility Application
3. Design Application
4. Plant Application
5. Continuation Application
6. PCT (Patent Cooperation Treaty) Application
7. Divisional Application

Preparing the Application

➢ Title
➢ Cross-references to related applications
➢ Background
➢ Summary of invention
➢ Brief description ofdrawing
➢ Detailed description of the invention
➢ Claims

Patent Prosecution Flowchart

Ownership Rights

• Patents are items of personal property and thus may be owned, sold, licensed, or devised by
will.
• Applications for patent must be filed by the actual inventor of the article, process, design, or
plant.
• If there is more than one inventor, the application must be signed by all inventors.
• In many instance, employees are required to sign agreements with their employers whereby
they agree that any invention or discovery invented by them while on the job will belong to
the employer and that they will agree to assist and cooperate in any manner, including signing
applications for patents, to ensure the employer’s rights are protected

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• Although the oath in the patent application is signed by the individual inventor, when the
application is filed, a simultaneous assignment is also filed identifying the employer as the
“true” owner of the application and the invention.

Ownership transfer

• As objects of intellectual property or intangible assets, patents and patent applications

may be transferred.
• A transfer of patent or patent application can be the result of a financial transaction, such as an
assignment, a merger, a takeover or a demerger, or the result of an operation of law, such as in
an inheritance process, or in a bankruptcy.
• The rationale behind the transferability of patents and patent applications is that it enables
inventors to sell their rights and to let other people manage these intellectual property assets
both on the valuation and enforcement fronts. As The Economist put it,
• "Patents are transferable assets, and by the early 20th century they had made it possible to
separate the person who makes an invention from the one who commercialisesit. This
recognised the fact that someone who is good at coming up with ideas is not necessarily the
best person to bring those ideas to market.”.

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UNIT - IV

TRADE SECRETS LAW

• The type of information that must be kept confidential in order to retain its competitive
advantage is generally called a “Trade Secret”

• A trade secret is any information that can be used in the operation of a business or other
enterprise that is sufficiently valuable and secret to afford an actual or potential economic
advantage over others.

• Restatement (Third) of Unfair Competition § 39 (1995).

• A recipe, a formula, a method of conducting business, a customer list, a price list, marketing
plans, financial projection, and a list of targets for a potential acquisition can all constitute
trade secrets.

• Generally, to qualify for trade secret protection, information must

✓ be valuable;
✓ not be publicly known; and
✓ be the subject of reasonable efforts to maintain its secrecy

• The rapid pace of technology advances the ease with which information can now be rapidly
disseminated and the mobility of employees require businesses to devote significant effort to
protecting their trade secrets.

• If trade secrets were not legally protectable, companies would have no incentive for investing
time money and effort in research and development that ultimately benefits the public at large.

• Trade secrets law not only provides an incentive for companies to develop new methods and
processes of doing business but also, by punishing wrongdoers, discourages improper conduct
in the business environment.

• The Law Governing Trade Secrets:

• Trademarks, copyrights, and patents are all subject to extensive federal statutory schemes for
their protection, there is no federal law relating to trade secrets, and no registration is required
to obtain trade secret protection.

• Most trade secret law arises from common law principles, namely, judge-made case law.
• The first reported trade secret case in the United States was decided in 1837 and involved
manufacturing methods for making chocolate.

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• In 1939, the Restatement of Torts (a wrongful act or an infringement of a right) adopted a

definition of a trade secret, and many states relied on that in developing their body of case
law, leading to greater consistency in the development of trade secrets law.

• Additionally 1979, the National Conference of Commissioners on Uniform State laws drafted
the uniform Trade Secrets Act (UTSA) to promote uniformity among the states with regard to
trade secrets law.

• The UTSA was amended in 1985.

• The following definition of trade secret has been adopted by the UTSA:

Trade secret means information, including a formula, pattern, compilation, program, device,
method, technique or process that:

✓ Derives independent economic value, actual or potential, from not being generally known to,
and not being readily ascertainable by proper means by, other persons who can obtain
economic value from its disclosure or use, and

✓ is the subject of efforts that are reasonable under the circumstance to maintain its secrecy.

DETERMINATION OF TRADE SECRET STATUS:

Restatement of Torts (a wrongful act or an infringement of a right) §757 cmt.b lists six factors to
be considered in determining whether information qualifies as a trade secret. Courts routinely
examine these factors to determine whether a company’s information constitutes a trade secret.

The extent to which the information is known outside the company:

• Although information may be known to other outside the company and still qualify as a trade
secret, the greater the number of people who know the information, the less likely it is to
qualify as a trade secret.

• Secrecy need not be absolute.

• The extent to which the information is known within the company:

• Although an employer or company is permitted to disclose confidential information to those

with a demonstrated “need to know” the information.

• If the information is widely known within the company, especially among those who have no
business need to know the information, it may not qualify as a trade secret.

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The extent of the measures taken by the company to maintain the secrecy of the
information:

• One claiming trade secret protection must take reasonable precautions to protect the
information.

• Courts are unlikely to protect information a company has not bothered to protect.

• A company is not obligated to undertake extreme efforts to protect information, but

reasonable precautions are required.
• Some experts predict that courts will likely require advanced security measures to protect
trade secrets transmitted via e-mail, including encryption and protocols to ensure
confidentiality.

• The extent of the value of the information to the company and its competitors:

• If information has little value either to its owner or to the owner’s competitors, it is less likely
to qualify as a trade secret.

• Conversely, information that is valuable to a company, such as the recipe for its key menu
product, and that would be of great value to the company’s competitors is more likely to be
protectable trade secret.

• The extent of the expenditure of time, effort, and money by the company in developing
the information:

• The greater the amount of time, effort, and money the company has expended in developing
or acquiring the information, the more likely it is to be held to be a protectable trade secret.

• The extent of the ease or difficult with which the information could be acquired or
duplicated by other:

• If information is easy to acquire or duplicate, it is less likely to qualify a trade secret.

• Similarly if the information is readily ascertainable from observation or can be easily
reproduced, it is less likely to be a trade secret.

• On the other hand, if it can be reverse engineered only with significant expenditures of time,
effort, and money, the product may retain its status as a trade secret.

• LIABILITY FOR MISAPPROPRIATION OF TRADE SECRETS:

• Misappropriation of a trade secret occurs when a person possesses, discloses, or uses a trade
secret owned by another without express or implied consent and when the person
▪ used improper means to gain knowledge of the trade secret;

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▪ knew or should have known that the trade secret was acquired by improper means; or

▪ Knew or should have known that the trade secret was acquired under circumstances giving
rise to a duty to maintain its secrecy.

• The term improper means includes bribery, theft, and misrepresentation, breach of duty to
maintain secrecy, or espionage (the practice of spying or of using spies, typically by
governments to obtain political and military information) or other means.

• Thus, misappropriation occurs either when a trade secret is lawfully acquired but then
improperly used or when the trade secret is acquired by improper means.

• Absence of Written Agreement:

• A written agreement prohibiting misappropriation of trade secrets can be enforced through an

action for breach of contract; a company’s trade secrets can be protected against
misappropriation even in the absence of any written agreement between the parties.

• A party owning trade secrets can bring an action in tort for breach of the duty of
confidentiality, which duty can arise even without an express agreement.

• Courts will impose a duty of confidentiality when parties stand in a special relationship with
each other, such as an agent-principal relationship (which includes employer- employee
relationship) or other fiduciary (involving trust, especially with regard to the relationship
between a trustee and a beneficiary) or good faith relationship

• Courts have consistently held that employees owe a duty of loyality, fidelity, and
responsibility to their employers.

• In fact, more trade secret cases are brought in tort for breach of confidentiality than in contract
for breach of written agreements.

For example: If XYZ company is attempting to make a sale to Jones and informs Jones that the
XYZ product is superior to that of competitors because it involves a new breakthrough in
technology and explains the trade secret, courts would likely find that Jones is subject to a duty
not to disclose the information. Similarly, if XYZ co., explains its trade secrets to its bankers in
an attempt to obtain financing, the bankers would likely be precluded from disclosing or using the
information. Such implied contracts to protect the information generally arise when the parties’
conduct indicates they intended the information to be kept confidential or impliedly agreed to
keep it confidential.

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Misappropriation by Third Party:

A number of other parties may also have liability for misappropriation of trade secrets if
they knew or should have known they were the recipients of protected information.

For example:

1. Assume Lee is employed by XYZ co., In course of time Mr.Lee learns valuable trade secret
information. If Mr.Lee resigns jobs and begins working for new company and it prohibited for
both in using the information. He may not misappropriate the information because he was in an
employee-employer relationship with XYZ company. New company should not use the
information if Mr Lee reveals, if it happen so, then XYZ Company would generally prefer to sue
New Company inasmuch as it is far likelier to have deep pockets, meaning it is more able to pay
money damages than is an individual such as Lee.

2. If New Company has no reason to know the information was secret or that Mr. Lee may not
reveal it, New Company would not have liability for such innocent use of the information.
Similarly, if trade secret information were innocently obtained by New Company by mistake,
New Company would have no liability for subsequent use or disclosure of the information.

Written Agreement:

Employers are generally free to require employee, independent contractors, and consultants to
sign express agreements relating to the confidentiality of information. These agreements are
usually enforced by courts as long as they are reasonable. The agreements usually include four
specific topics:

• Ownership of Inventions
• Non-disclosure Provisions
• Non-solicitation Provisions
• Non-competition Provisions
✓ Purpose
✓ Reasonableness
✓ Consideration

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PROTECTION FOR SUBMISSION:

Submission to Private Parties:

• In may instance individuals wish to submit an idea for an invention, process, game, or
entertainment show to a company or business in the hope that the company or business in the
hope that the company will market and develop the idea and the individual will be
compensated for the idea?

• Idea submission disputes frequently arise in the entertainment industry. In oen case an
individual claimed that the producers of the Cosby Show (American comedian)
misappropriated her idea for a television program portraying a wholesome and loving African
American family. A court held there were no people and the idea was so general as to lack the
element of concreteness to be protectable.

• The solution to such a dilemma is for the “inventor” to submit the idea pursuant to an
evaluation agreement, or submission agreement, whereby the other party agrees to evaluate
the idea only for the purpose of considering a future transaction between the parties and
further agrees not to circumvent the submitter or to disclose the idea to others.

Submission to Government Agencies:

• Private companies that present bids to government agencies in the hope of obtaining a
government contract are often required to disclose confidential or trade secret information to
the agency.

• Under freedom of information act (both at the state and federal levels), the proposal might
later be released to any member of the public requesting the document, thus resulting in loss
of confidential information to possible competitors.

• The protected information is usually blocked out.

• If a government agency discloses trade secret information, the owner may have a cause of
action for an unconstitutional taking of private property and may be awarded compensation if
the owner had a reasonable expectation of confidentiality.

REMEDIES FOR MISAPPROPRIATION:

• A trade secret owner may request a variety of remedies from a court. Among them are the
following:

• Injective relief: In many cases, a trade secret owner is more interested in ensuring the
defendant cease use of the trade secret (or is precluded from commencing use) than in
recovering damages. In cases in which money damages are not sufficient to protect a trade
secret owner, a court may issue an injection. A court may also issue an injuction to compel the

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• defendant to surrender or destroy trade secret information. In fact, courts may issue
injunctions’ to prevent inevitable disclosure, reasoning that even if a former employer cannot
show a particular secret has been taken, it is inevitable that key employees will eventually
disclose what they know to a new employer.

• Money damages: A trade secret owner whose information has been misappropriated may
recover money damages from the defendant. The Plaintiff may recover its lost profits as well
as the profits made by the defendant. Alternatively, the plaintiff may seek and recover a
reasonable royalty arising from defendant’s use of the trade secret. Punitive damages may
also be awarded in cases in which the defendant’s conduct is reckless, willful, and intentional.
The USTA provides that punitive damages not exceed more than twice the compensatory
damages awarded.

• Attorneys’ fees and costs: In most cases, the parties bear their own attorneys’ fees and costs.
The UTSA, however, provides that reasonable attorneys’ fees and costs may be awarded to
the prevailing party if bad faith or willfulness is shown.

TRADE SECRET LITIGATION:

• If a trade secret is disclosed in violation of a written confidentially agreement, and the parties
cannot resolve the dispute themselves, an action for breach of contract may be brought,
similar to any other breach of contract action.

• The plaintiff may add other causes of action as well, for example, for misappropriation in
violation of a state trade secret law. If no written agreement exists, the plaintiff must rely upon
case law or state statutes protecting trade secrets, or both.

• To protect itself against a lawsuit by another alleging trade secret violation, companies should
require new employees who will have access to confidential information to acknowledge in
writing that accepting employment with the new company does not violate any other
agreement or violate any other obligation of confidentiality to which the employee may be
subject.
• If grounds for federal jurisdiction exist (the parties have diverse citizenship and the claim
exceeds $75000), the action may be brought in federal court.

• The UTSA [Uniform Trade Secrets Act] provides that an action for misappropriation must be
brought within three years after misappropriation is discovered or reasonably should have
been discovered.

• In federal court, the action will be governed by the Federal Rules of Civil Procedure relating
to federal civil actions generally.

• Most states have rules relating to civil procedure that are modeled substantially after the
Federal Rules of Civil Procedure and likewise govern the litigation.

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• If the defendant has a cause of action to assert against the plaintiff relating to the trade secret,
it must be asserted by way of a counterclaim in the litigation so that all disputes between the
parties relating to the information can be resolved at the same time.

• After the complaint, answer, and counterclaim have been filed, various motions may be made.
Discovery will commence. The plaintiff and defendant will take depositions to obtain
testimony from those who may have information about the case.

• Ultimately, if the matter cannot be resolved by private agreement, it will proceed to trial. The
trade secret owner must prove misappropriation by a preponderance of the evidence. Ether
party may request a jury trial; otherwise, a judge will render the decision. Appeals may
follow.

• One of the difficult issues in trade secret litigation arises from the fact that the trade secret
sought to be protected often must be disclosed in the litigation so the judge or jury canevaluate
whether the information is sufficiently valuable that it affords its owner a competitive
advantage.

• Similarly, the owner’s methods of protecting the information often must be disclosed so the
fact-finder can determine whether the owner has taken reasonable measures to protect the
alleged trade secrets.

• The dilemma faced by trade secrets owner is that they must disclose the very information they
seek to protect.

• As technology progresses and the value of certain communication and entertainment

inventions increases, trade secret litigation is becoming an increasingly common and high-
stakes occupation.

TRADE SECRET PROTECTION PROGRAMS:

Trade secrets are legally fragile and may be lost by inadvertent disclosure or failure to
reasonably protect them, companies should implement trade secret protection programs to
safeguard valuable information. Because trade secret protection can last indefinitely, businesses
should devote proper attention to the methods used to ensure confidentiality of information.
Developing programs and measure to protect trade secrets is an easy way to demonstrate to a
court that an owner values its information and takes appropriate measures to maintain its secrecy.

Physical protection

There are a variety of tangible measures a company can implement to protect trade secrets,
including the following:

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• Safeguarding information under lock and key;

• Protecting the information from unauthorized access;
• Forbidding removal of protected information from the company premises or certain rooms;
• Retaining adequate security during evening and weekends either through alarm systems or
security services;
• Ensuring tours of the company premises do not expose outsiders to valuable processes or
information;
• Using check-out lists when valuable equipment or information is removed from its normal
location;
• Monitoring employees’ use of e-mail and the Internet to ensure confidential information is
not being disseminated;
• Using encryption technology and antivirus protection programs to protect information stored
on computers;
• Educate employees on trade secrets and protection of trade secrets;
• Ensuring information retained on computers is available only on company networks so that
access can be easily tracked.

Most companies will not need to implement all of the measures described above. Courts do not
require absolute secrecy or that extreme measure be taken to protect information. Rather,
reasonable measures will be sufficient to protect the status of information as trade secrets.
Contractual Protection

• Another method of protecting trade secrets is by contract, namely, requiring those with access
to the information to agree in writing not to disclose the information to other or use it to the
owner’s detriment.

• Similarly, in licensing arrangements, trade secret owners should ensure the license agreements
contain sufficient protection for trade secret information.

• Employers should use noncompetition agreements to ensure former employees do not use
material gained on the job to later compete against the employer.

• With the advent of the Internet and the increased ease of electronic communications,
employers have become concerned about the loss of trade secrets through dissemination over
the Internet.

• It has been held that “once a trade secret is posted on the Internet, it is effectively part of the
public domain, impossible to retrieve”.

Contractual Protection
Companies can also rely on other complementary methods of protection to safeguard trade
secrets. Any material that qualifies for copyright protection should be protected by registration, or
at a minimum, by ensuring a copyright notice is placed on the material or document to afford
notice to other of the owner’s right and internet in the material.

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UNFAIR COMPETITION
INTRODUCTION:

The law of unfair competition is based upon the notion that individuals should be
protected from deceptive (looking down) and improper conduct in the marketplace. The law of
unfair competition is found in case law, in state statutes prohibiting unfair business practices, in
specific federal statutes, and in regulations promulgated by the FTC (Federal Trade Commission),
the federal regulatory agency charged with protecting consumers from unfair or deceptive acts
and practices.

The law of unfair competition continues to evolve as new methods of conducting business
arise, such as electronic offers and sales through telemarketing, television infomercials, and the
Internet. There are a number of theories and actions that can be used by injured parties to protect
against unfair competition. In many instances, actions for unfair competition will be combined
with other actions (such as those alleging trademark, copyright, or patent infringement) to provide
a plaintiff a wide array of possible remedies.
For Example: a designer of scarves imprinted with fanciful designs may decide against applying
for a design patent due to the expense involved and the short life cycle of fashion products
Protection against copying of the design may thus be available under the umbrella of unfair
competition rather than under design patent law.

Section 43 of the Lanham Act (15 U.S.C § 1125) provides a federal cause of action to protect
consumers against unfair competitive business practices. Moreover, section 43(a) protects
unregistered marks and names, such as those that do not qualify for federal trademark registration
because they are descriptive or perhaps used only in intrastate commerce.

The most common types of unfair competition are discussed more fully in this chapter but
can be briefly summarized as follows:

• Passing off (or palming off), “Passing off” occurs when one party attempts to pass off or sell
his or her goods or services as those of another.
• Misappropriation
• Right of Publicity
• False advertising
• Dilution, Either tarnishing another’s mark or causing it to lose its distinctiveness through
“blurring” is actionable as dilution
• Infringement of trade dress, adopting the overall concept of another’s distinctive packaging or
product image, generally called its “trade dress”, so as to deceive consumers is an
infringement of trade dress.

Generally, injured parties notify the wrongdoer prior to initiating litigation.

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MISAPPROPRIATION:

• The doctrine of misappropriation first arose in International News Service V. Associated

Press, 248 U.S. 215 (1918), in which the Supreme Court held that an unauthorized taking of
another’s property, in that case, news information, that it invested time and money in creating
was actionable as misappropriation of property.

• In INS, news information originally gathered by the Associated Press relating to World War I
was pirated by International News Service and sold to its customers.

• Because the news itself, as factual matter, could not be copyrighted, the plaintiff could not sue
for copyright infringement.

• Instead it alleged that its valuable property right had been taken or misappropriated by the
defendant.

• The Supreme Court agreed, noting that the defendant was “endeavoring to reap where it has
not sown, and is appropriating to itself the harvest of those who have sown. “Id. At 239-40.
Because the defendant was not attempting to convince its subscribers that its news reports
were from the plaintiff, an action for passing off would not lie. The defendant was
misappropriating rather that misrepresenting.

RIGHT OF PUBLICITY:

• The right of publicity gives individuals, not merely celebrities, the right to control commercial
used of their identities or personas.

• The right of publicity protects a commercial interest, the vast majority of cases involve
celebrities inasmuch as they can readily show economic harm when their names, photographs,
or identities are used to sell products or suggest a sponsorship of merchandise.

• Publicity rights are governed by state law.

• The right of publicity has evolved from the right of privacy, which protected against
unreasonable invasions upon another person’s solitude and provided remedies for the
disclosure of private information.

• The right of publicity allows individuals to protect the marketability of their identities and
punishes those who would unjustly enrich themselves by appropriating another’s fame for
profit-making purposes.
• Unpermitted commercial exploitation of an individual’s persona would dilute the value of the
persona, making it more difficult for the individual to commercialize his or her identity. Thus,
remedies for infringement include injunctions to prevent further exploitation and monetary
relief to compensate the individual whose right of publicity has been appropriated (including
damages for injury to reputation recovery of the defendant’s profits, and punitive damages in
extreme cases

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• Courts have articulated a number of reasons for uploading an individual’s right to publicity,
including the need to protect against confusion that would arise if consumers were led to
believe individuals sponsor or approve products when they do not, the need to incentivize
performers who provide entertainment and benefit t society and should thus be provided with
a protectable proper right in their identities.

• The right of publicity does not apply to non commercial uses; using another’s name, likeness,
or identity for news reporting, scholarship, or research is permissible.

NEW DEVELOPMENTS IN THE RIGHT OF PUBLICITY

➢ As is common with intellectual property rights in today’s society, some of the new issues
relating to the rights of publicity stem from increasing technologicaladvances.

➢ Without prior permission one should not appear in the digital technology used movie.

➢ The international Trademark Association has proposed amending the U.S.Tradeamrk Act to
create a federal right of publicity with postmortem rights (although such rights would be
limited to some specific period of duration after death).

➢ Similarly, names, gestures, and likenesses are unprotectable under copyright law because
they are titles or ideas rather than expressions.

➢ Thus, in some instances, federal copyright law may control a plaintiff’s rights, while in other
instances; only the right to publicity will provide protection.

➢ California recently passed the Astaire Celebrity Image Protection Act (Cal.Civ.Code § §
3344-3346) to allow heirs of celebrities to block commercial uses of deceased celebrities’
likenesses while allowing a “safe harbor exemption” to artistic uses, such as the digital
insertion of President Kennedy’s image into the movie Forrest Gump, or uses for news, public
affairs, and so forth.

FALSE ADVERTISING:

➢ In 1943, the federal trademark law, the Lanham Act, was passed.
➢ Section 43(a) of the act (15 U.S.C. § 1125) prohibited false designations of origin, namely,
descriptions or representations tending falsely to describe or represent goods or services.
➢ It was not an effective vehicle to use when a party made misrepresentations relating to the
nature or quality of goods orservices.
➢ Moreover, until the passage of the Lanham Act, Plaintiffs, an element that was often difficult
to demonstrate.

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➢ Although the individual states enacted statutes prohibiting false advertising, these statutes
varied from state to state and were often ineffective to prohibit false advertising that was
national in scope.
➢ The expansive language of section 43 of the Lanham Act, however, soon began to be used to
protect not only against unregistered trademarks but also against nearly all forms of false
advertising.
➢ In 1989 Congress amended the Lanham Act and broadened the scope of section 43 for
infringement of trademarks (both registered and unregistered marks) and trade dress, while the
other portion of the statute allows the assertion of claims for false advertising and trade libel.

New material represents original work of

authorship

For Example:

• a failure to disclose that advertised prices did not include additional charges;
• a statement that a pregnancy test kit would disclose results in “as fast as ten minutes” when a
positive result would appear in ten minutes but a negative results might take thirty minutes;
• a claim that a certain motor oil provided longer life and better engine protection than a
competitor’s product when that claim could not be substantiated;
• a false claim that automobile antifreeze met an automobile manufacturer’s standards;
• covering up a label stating “Made in Taiwan” that appeared on goods

INTERNATIONAL PROTECTION AGAINST UNFAIR COMPETITION:

• The United States has assumed certain obligations under international agreements in the arena
of unfair completion, chiefly under the Paris Convention.
• The Paris Convention seeks to afford citizens of each of the more than 160 member nation’s
protection against unfair competition and trademark infringement and requires that member
nations provide the same level of protection against unfair competition to citizens of other
member nations as they do for their own citizens.
• The Paris Convention expressly prohibits acts that create confusion b y any means with a
competitor, false allegations that discredit a competitor, and indications that mislead the
public in regard to the nature or characteristics of goods.
• Section 44 of the Lanham Act (15 U.S.C§ 1126) implements the Paris Convention and
expressly provides that any person whose country of origin is a party to any convention or
treaty relating to the repression of unfair competition, to which the United States is also a
party, is entitled to effective protection against unfair completion.
x

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UNIT-5

NEW DEVELOPMENTS OF INTELLECTUAL PROPERTY LAWS

NEW DEVELOPMENT IN TRADE MARKS LAW:

The Internet:
• Trademark owners throughout the world are struggling with new issues presented by
increased electronic communication, primarily that occurring through the Internet.

• The Internet derives from a network set up in the 1970s by the Department of Defense to
connect military and research sites that could continue to communicate even in the event of
nuclear attract.

• In the 1980s, the National Science Foundation expanded on the system, and its first
significant users were government agencies and universities.

• In the early1990s, however, it became apparent that the system could provide a global
communication network, allowing people from all over the world to talk with each other;
send written messages, pictures, and text to each other; and establish web pages to advertise
their ware and provide information to their customers.

Assignment of Domain Names:

• A company’s presence on the internet begins with its address or domain name not only serves
as a locator for a company but also functions as a designation of origin and a symbol of
goodwill---a trademark.

• There are two portions to a domain name: the generic top-level domain, which is the portion
of the name to the right of a period (such as .gov or .com) and the secondary level domain,
which is the portion of the name to the left of a period (such as “kraft” in Kraft.com”).

• Disputes frequently arise between owners of registered mark and owners of domain names
whose domain names similar or identical to the registered marks.

Internet Corporation for Assigned Names and Numbers [ICANN]:

• To help resolve the problems in the domain names registration and use process
• The government created the ICANN

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• It is a nonprofit corporation
• It is governed by a board of directors elected in part by various members of the Internet
community.
• ICANN are authorized to register domain names ending with .com, .org and .net
• Registrations usually last one year, at which time they can be removed or will expire.
• Registration requires a representation that the person seeing to register the name is not doing
so far an unlawful purpose and does not know of any infringement
• ICANN recently added seven new top-level domains, including .biz and .info

PROTECTING A DOMAIN NAME:

• People register well-known marks as domain names to prey on consumer confusion by
misusing the domain name to divert customers from the legitimate mark owner’s site. This
practice is commonly called cybersquatting.

• There are three approaches for against cybersquatter:

✓ An action can be brought under the Federal Trademark dilution Act

✓ A civil suit can be instituted under the recent Anticybersquatting consumer protection Act, or
✓ An arbitration proceeding can be instituted through ICANN’s disputs resolutions process

• Cybersqutter and the dilution doctrine: Federal trademark dilution Act (15 U.S.C § 1125 (C)

• Cybersquatters and Anticybersquatting consumer protection Act (15 U.S.C § 1125 (d)

[ACPA: Anticybersquatting consumer Protection Act]

✓ To prevail in a civil action under ACPA, a plaintiff must prove three thing:
1. The plaintiff’s mark is a distinctive or famous mark deserving of protection
2. The alleged cyber squatter’s infringing domain name is identical to or confusingly similar
to the plaintiff mark
3. The cyber squatter registered the domain name is bad faith

• Resolving Disputes through the Uniform Domain Name Dispute Resolution Policy: [UDRP]
1999
✓ The allegedly wrongful domain name is identical or confusingly similar to the complainants’
trademark;
✓ The domain name registrant has no legitimate interest in the domain name and
✓ The domain name is being used in bad faith

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NEW DEVELOPMENT IN COPYRIGHT LAW:

• While acknowledging that clothing is a useful article and thus not subject to copyright
protection, a New York Federal court ruled that lace design, copyrighted as writing and
incorporated into wedding dresses, were protectable and enjoined another maker of wedding
dresses from making or marketing copies. Similarly, detailed embroiders or some other two
dimensional drawing or graphic work affixed to a portion of a garment may be copyrightable.

• A federal court in California recently held that while type fonts themselves are not
protectableunder copyright law, a software program that generated and created the typefaces
was protectable.

• As soon as Stephen King sold his book riding the Bullet exclusively in an Internet format, an
individual cracked the copyright protection software and posted free copies of the book on
the Internet. The publishers responded by adopting stronger encryption technology.
Similarly, in 2000, Mr. King suspended online publication of a serial novel because too
many individuals were downloading the work without paying it.

• It late 1997 President Clinton signed into law the No Electronic Theft [NET] Act [amending
18 U.S.C §2319] to enhance criminal penalties for copyright infringement, even if the
infringer does not profit from the transaction. The act also extends the statutes of limitations
for criminal copyright infringement from three to five years, and allows law enforcement
officers to use federal copyright law against online copyright violation, thereby extending the
same copyright protection to the Internet that is provided to other media.

• In September 1999, the Clinton administration relaxed government restrictions on the export
of encryption products and simultaneously introduced new legislation to give law
enforcement agencies greater authority to combat the use of computers by terrorists and
criminals and to create a new code cracking unit within the FBI [Foreign Bureau of
Investigation] .

• In mid-2000, president Clinton signed the Electronic signatures in Global and National
Commerce Act, making digital execution, called e-signatures, as legally binding as their
paper counterparts.

• In 2000, federal prosecutors in Chicago indicted seventeen people who called themselves
“Pirates with Attitude” for pirating thousands of software program. The case was brought
under the NET Act. Some of the individuals were former employees of Intel and Microsoft.

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SIET-Intellectual Property Rights (IPR) III B.Tech I Sem (R22)

• The copyright office has recommended that congress amend section 110 of the copyright Act
to grant educators the right to transmit copyrighted works for distance learning if certain
conditions are met.

NEW DEVELOPMENT IN PATENT LAW:

The patent Act has proven remarkably flexible in accommodating changes and development in
technology. Thus advisement in technology generally has not necessitated changes in the stately
governing patent protection.

Business method and software patent:

Many of the cutting-edge issues in patent law related to patents for computer software. For
several years, the conventional wisdom has been that unless a computer program had significant
commercial value and application patent protection was often counterproductive or ineffective in
that the PTO often took two years to issue a patent, roughly the same time it took for the
software program to become absolute.

Biotechnology patent:

Medicines, Science, agricultural and pharmacology present the other cutting-edge issues in
patent law. Research into genes may hold the key to curing disease throughout the world.
Agricultural research may hold the key to providing sufficient food for the world’s ever-
increasing population.

The development of strains of plants and crops that are resistant to brought and disease has also
led to an increasing number of patents issued, and attendant litigation. In the field of “agbiotech”.

American Investors Protection Act of 1999 [AIPA]:

The AIPA was signed into law in 1999 and represents the most significant changes to patent law
in twenty years. Although some of the provisions of AIPA have been discussed earlier, its key
subtitles are as follows:

➢ Inventors’ Right Act of 1999

➢ The First Inventor Defense Act of 1999
➢ The patent term guarantee act of 1999
➢ The domestic publication of Foreign filed patent application act of 1999
➢ The optional Inter parts reexamination procedure Act of 1999

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SIET-Intellectual Property Rights (IPR) III B.Tech I Sem (R22)

Introduction of International Patent protection:

The rights granted by a U.S Patent extend only throughout the U.S and have no effect in a
foreign country. Therefore, an inventor who desires patent protection in other countries must
apply for a patent in each of the other countries or in regional patent office.

• The Paris convention (already it is in previous units)

• The European patent organization
• Agreement on Trade-Related Aspects of IPR (already it is in previousunits)
• The patent Law Treaty
• Foreign Filling Licenses
• Applications for United States Patents by Foreign applicants

The European patent organization:

The European Patent Organization (EPO) was founded in 1973 to provide a uniform patent
system in Europe. A European patent can be obtained by filing a single application with the EPO
headquartered in Munich (or its subbranches in The Hague or Berlin or with the national offices
in the contracting nations). Once granted, the patent in valid in any of the EPO countries
designated in the application and has the same force as patent granted in any one of the
contracting nations.

International overview on intellectual property rights

Key issues related to IP internationally :

Ideas and knowledge are an increasingly important part of trade. Many products that used to be
traded as low-technology goods or commodities now contain a higher proportion of invention
and design in their value. Films, music recordings, books, computer software, on-line services,
clothing, food, plants, biotechnology products and many others are bought and sold because of
the information, creativity and identity they contain — not usually because of the plastic, metal,
cloth, paper or other material used to make them.

➢ The WTO’s Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS),

negotiated in the 1986–94 Uruguay Round, introduced intellectual property rules into the
multilateral trading system for the first time. It’s one of the three main areas of work in the
WTO, alongside trade in goods and services. The TRIPS Council’s job is to monitor how
countries are applying the TRIPS Agreement and to discuss issues that arise from that. The

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SIET-Intellectual Property Rights (IPR) III B.Tech I Sem (R22)

balance is described in different ways. It’s a balance between private rights (incentives to
create) and public interest (ability to use or access the creations). It’s also a balance between
the short and long term.

➢ Long-term: society benefits from creations and inventions, including when the period of
protection expires and they enter the public domain

Short-term: intellectual property protection is mostly limited in time (there are some exceptions).
Generally, private rights are protected in the short-term as an incentive to create and invent.
Where intellectual property protection has social costs, governments can meet their objectives
for social welfare and development by adapting the protection through various exceptions and
flexibilities, for example to tackle public health problems Technology transfer -Intellectual
property protection should contribute to technical innovation and the transfer of technology.
Producers and users should benefit. So should economies and societies at large.

IP rights in international forums:

➢ The United States has been negotiating with 11 other countries to establish an international
free trade arrangement known as the Trans-Pacific Partnership Agreement, or TPP. The
parties have been proceeding slowly; the countries recently entered into their 19 th round of
discussions.
➢ International business disputes could potentially be mitigated if multi-country coalitions
would enforce and respect international agreements. Although only a limited number of
countries are involved in the TPP, establishing a framework for IP protection would send a
message to other countries not to ignore international laws.
➢ India is one of a number of countries that have failed to adhere to international agreements
concerning IP law. In 2012 alone, nine U.S. products protected by a patent had those patents
either revoked or denied by India. While business litigation may resolve patent disputes
within the U.S., U.S. laws cannot be imposed on an International forum.
➢ Companies that experiment with medicines to be submitted to the FDA go through anywhere
between 5,000 and 10,000 medicines on average before being granted one approval.
➢ These companies typically invest more than $1 billion dollars before being awarded a patent.
➢ In India, international agreements concerning IP rights have been ignored so that the country
may grow its own domestic pharmaceutical industries. A failure to protect U.S. intellectual
property might remove the incentive to dedicate time and resources to finding cures for
pressing and ongoing diseases like cancer, since companies might not be willing to tackle
more complex medical issues if there was no prospective payout.
➢ Business attorneys may help researchers litigate within the U.S. to protect their intellectual
property rights. An attorney could investigate a business' individual situation and come up
with a legal plan of action in order to combat copyright infringements.

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SIET-Intellectual Property Rights (IPR) III B.Tech I Sem (R22)

NEW DEVELOPMENT IN TRADE MARKS LAW:

The Internet:

Trademark owners throughout the world are struggling with new issues presented by increased
electronic communication, primarily that occurring through the Internet.
The Internet derives from a network set up in the 1970s by the Department of Defense to connect
military and research sites that could continue to communicate even in the event of nuclear
attract.
In the 1980s, the National Science Foundation expanded on the system, and its first significant
users were government agencies and universities.
In the early1990s, however, it became apparent that the system could provide a global
communication network, allowing people from all over the world to talk with each other; send
written messages, pictures, and text to each other; and establish web pages to advertise their ware
and provide information to their customers.

Assignment of Domain Names:

A company’s presence on the internet begins with its address or domain name not only serves as
a locator for a company but also functions as a designation of origin and a symbol of goodwill---
a trademark.
There are two portions to a domain name: the generic top-level domain, which is the portion of
the name to the right of a period (such as .gov or .com) and the secondary level domain, which is
the portion of the name to the left of a period (such as “kraft” in Kraft.com”).
Disputes frequently arise between owners of registered mark and owners of domain names
whose domain names similar or identical to the registered marks.

Internet Corporation for Assigned Names and Numbers [ICANN]:

➢ To help resolve the problems in the domain names registration and use process
➢ The government created the ICANN
➢ It is a non-profit corporation
➢ It is governed by a board of directors elected in part by various members of the Internet
community.
➢ ICANN are authorized to register domain names ending with .com, .org and .net
➢ Registrations usually last one year, at which time they can be removed or will expire.
➢ Registration requires a representation that the person seeing to register the name is not doing
so far an unlawful purpose and does not know of any infringement
➢ ICANN recently added seven new top-level domains, including .biz and .info

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SIET-Intellectual Property Rights (IPR) III B.Tech I Sem (R22)

PROTECTING A DOMAIN NAME:

People register well-known marks as domain names to prey on consumer confusion by misusing
the domain name to divert customers from the legitimate mark owner’s site. This practice is
commonly called cyber squatting.

There are three approaches for against cyber squatter:

➢ An action can be brought under the Federal Trademark dilution Act

➢ A civil suit can be instituted under the recent Anticybersquatting consumer protection Act,
➢ An arbitration proceeding can be instituted through ICANN’s disputs resolutions process
➢ Cybersqutter & the dilution doctrine: Federal trademark dilution Act (15 U.S.C § 1125 (C)
➢ Cyber quarters and Anti cyber squatting consumer protection Act (15 U.S.C § 1125 (d)
[ACPA: Anti cyber squatting consumer Protection Act]

To prevail in a civil action under ACPA, a plaintiff must prove three thing:
➢ The plaintiff’s mark is a distinctive or famous mark deserving of protection
➢ The alleged cyber squatter’s infringing domain name is identical to or confusingly similar to
the plaintiff mark
➢ The cyber squatter registered the domain name is bad faith
➢ Resolving Disputes through the Uniform Domain Name Dispute Resolution Policy: [UDRP]
1999
➢ The allegedly wrongful domain name is identical or confusingly similar to the complainants’
trademark;
➢ The domain name registrant has no legitimate interest in the domain name and The domain
name is being used in bad faith

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SIET-Intellectual Property Rights (IPR) III B.Tech I Sem (R22)

IMPORTANT QUESTIONS UNIT WISE

UNIT-I Pg. Nos

1 What is Intellectual Property Law? Give examples of same? TB-1 - 16
2 What are the Types of Intellectual Property Rights? Explain in TB-1 - 17
detail?
3 What is Importance of Intellectual Property Rights, write in MT-H.B
details?
4 What are Agencies responsible for Intellectual Property Rights TB-1 - 20
registration?
5 What are Regulatory-Compliance and liability issues? Explain in MT-H.B
detail.
UNIT II
1 What is Trade Marks? Explain in detail with examples? TB-1-26 & 27
2 What is Purpose and function of Trade Marks? TB-1-26
3 What are Acquisition of Trade Mark Rights? TB-1-28

4 What do you mean by Transfer of Rights? MT-H.B

5 What is Protectable matter? Give examples of same. TB-1-34
6 What are the procedures for selecting and evaluating Trademark? TB-1-44
7 What is Registration of Trade Marks and Claims? Explain in TB-1-75
detail.

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SIET-Intellectual Property Rights (IPR) III B.Tech I Sem (R22)

UNIT-III
1 What are Fundamentals of copyright law? TB-1-138
2 What is originality of material? Give examples of that? TB-1-143
3 What is right of reproduction? TB-1-156
4 What is right to perform the work publicity? TB-1-159
5 What are copyright ownership issues? TB-1-167
6 What is notice of copyright? TB-1-192
7 What is Foundation of patent law? TB-1-240
8 What is Patent searching process? TB-1-254

UNIT-IV
9 What is ownership right and transfer? TB-1-282
8 What is Trade Secret Law? Explain in detail. TB-1-3,1,2
10 What is liability for misappropriation of trade secrets? Explain in MT-H.B
detail?
11 What is protection for submission of Trade Secret? TB-1-320
12 What is Trade Secret Litigation? TB-1-322
13 What is Unfair Competition? Give examples of same. TB-1-36,114
14 What is Misappropriation right of publicity? TB-1-
20,316,330
15 What is false advertising, give examples of that? TB-1-
20,27,329,335
10 What is liability for misappropriation of trade secrets? Explain in MT-H.B
detail?
UNIT-V
1 What is new development of intellectual property? TB-1-117
2 What are new developments in trade mark law? TB-1-119
3 What is copyright law, patent law? Explain in detail? TB-1-138

4 Write notes on International overview on intellectual property TB-1-127,233

rights?
5 Explain the international trade mark law? TB-1-134

6 Explain the copyright law and patent law on overview TB-1-233,241

internationally?

Text Book -1 (TB-1) IPR --- Deborah E. Bouchoux

Material --- HAND BOOK (MT-H.B)
Reference Book-2 (TB-2) IPR --- N.K. Acharya

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