Read answers to the most frequently asked questions.
WHAT IS A TRADEMARK?
A trademark is any designation as to the source of goods or services. It can be a word, design, sound, scent, song, jingle, or any other indicator as to where the goods or services come from.
WHAT IS THE DIFFERENCE BETWEEN A SERVICE MARK AND A TRADEMARK?
A service mark is simply a trademark for services. Although some of the "use" requirements are slightly different when pursuing a registration, service marks receive all of the same protections, and are subject to the same rules, as trademarks.
WHAT IS THE DIFFERENCE BETWEEN A BRAND AND A TRADEMARK?
While all trademarks are brands, not all brands are trademarks. For a brand to receive trademark protection, it must be distinctive. “Distinctive” is a legal concept that means that there must be some leap in the imagination of the customer that links your brand to your product or service. An example of this “leap” is when customers see the word “Apple” and think of computers.
CLEARANCE & REGISTRATION
CAN MORE THAN ONE BUSINESS USE THE SAME TRADEMARK?
Sometimes. Trademark rights are divided up between territory (usually by country) and fields of use. Thus, two businesses can own the trademark “Dove” — one for chocolate and one for soap — but only because their goods are so different that customers would not be confused as to the source when shopping for either one.
CAN MORE THAN ONE BUSINESS USE THE SAME TRADEMARK FOR THE SAME THING?
No, not unless they are operating in entirely different territories — usually different countries. Two businesses using the same trademark for similar services creates the likelihood of customer confusion as to the source of goods and services. Trademark law is designed to prevent this kind of unfair competition created by consumer confusion. As between two businesses using the same trademark, the first one to use it or to have filed an “Intent to Use” with the USPTO has prior rights to the trademark.
HOW DO I KNOW IF THE BRAND I WANT TO USE IS AVAILABLE?
The best way to minimize the chance of choosing a brand that someone is already using is to conduct a clearance search of USPTO registrations and applications, as well as potential common law uses of the mark by third parties. For more information, see “Little Effort, Big Payoff” in the Knowledgebase for more details on what is involved in a clearance search.
WHY SHOULD I REGISTER A TRADEMARK WITH THE UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)?
Although you can build trademark rights in those states where you actually use it, federal registration offers, among other things, presumptive trademark rights in all 50 states, regardless of whether you’re actually doing business in that state. These rights of priority are strong and can help you stake your claim to your trademark nationwide.
WHAT IS THE DIFFERENCE BETWEEN AN "INTENT TO USE" VS. "USE-BASED" TRADEMARK APPLICATION?
An “intent to use” (ITU) is just that — filing a trademark application based on intent to use the mark. If you know you’ll be launching your product in the very near future but you want to make sure that no one starts using the brand you chose before you get a chance to launch, then filing an ITU creates a constructive “first use” date on the day you file. For instance, if you file an ITU on June 1 and then launch your product on November 9, your “priority” date for when your trademark rights began would be June 1. Keep in mind, however, that filing an ITU is not like reserving a domain name for later use. You must have a “bonafide intention” to use the mark in your business.
DO I NEED AN ATTORNEY TO FILE A TRADEMARK?
Not always. It’s often a case of “you don’t know what you don’t know”. For simple trademarks that are uncomplicated by legal registrability issues, the application process indeed can often be pretty straightforward, and many people navigate it without an attorney. In some cases, however, there are more complex legal issues present, such as third-party conflicts and distinctiveness problems with the proposed mark. These issues are very difficult to address without legal assistance. In short, the application process itself can be deceptively simple, but when there is a problem, the legal reasons underlying that problem are not so simple.The USPTO designed a user-friendly website filled with valuable information and an electronic filing system to guide you through the trademark application process and can be found at https://www.uspto.gov/trademark
WHAT IS THE "USE IN COMMERCE" REQUIREMENT IN FILING FOR A FEDERAL TRADEMARK REGISTRATION?
The “use in commerce” requirement means that before a trademark registration can issue, an applicant must be selling their product or services across state lines in the ordinary course of business. To be clear, selling one or two T-shirts to your family members as a “token sale” is not “the ordinary course of business”. Similarly, press releases announcing what a company plans to do is not “use” for these purposes.
Although different products and services warrant different kinds of uses, in general, it means when you regularly sell or ship your products across state lines (such as with online orders or selling to customers from out of state), and when you hold your services to potential customers across state lines and those customers can readily avail themselves of those services through a contact number, registration, or other form of signing up.
WHAT ARE THE INTERNATIONAL CLASSES OF GOODS AND SERVICES?
There are 45 different international “classes” of goods and services created to maintain consistency and conformity around the world. When filing a trademark application in the U.S. or any other national trademark office, the applicant chooses one or more classes of goods or services it will or does provide under the applied-for trademark, as well as a description of the goods and services themselves. Examples of these classes and descriptions can be found on the USPTO’s official website under the link for its Trademark ID Manual.
WHAT IS AN OFFICE ACTION?
An office action is a formal letter sent by the USPTO that sets forth reasons why the application can’t move forward without some kind of additional response by the applicant. Sometimes the office actions are simple to address, such as when the USPTO wants to tweak the wording on the identification of goods and services. Simple, administrative office actions are referred to as “non-substantive” because they generally relate to the application process itself rather than the underlying legal rights involved. Substantive office actions, by comparison, refer to claims by the USPTO that some kind of legal rights are at issue, usually relating to either third-party conflicts of the same or similar marks already registered or claims by the examiner that the proposed mark is not distinctive enough to warrant trademark protection. Non-substantive office actions can be handled by individuals filing on their own or by an administrator. Substantive office actions, on the other hand, most often require the help of an attorney.
WHAT ABOUT INTERNATIONAL REGISTRATION?
There are two ways to protect your trademark internationally: 1. You file directly with the foreign country in which you seek protection, or 2. You file with a centralized intellectual property administrative office.
With direct national foreign country filings, the applicant works with an attorney licensed in the particular country of interest. If the foreign registration rights are based off the applicant’s U.S. rights, then a U.S. attorney usually is the one to coordinate efforts with the foreign attorney in securing foreign trademark rights.
With centralized application filing, the applicant or their attorney files with a centralized intellectual property administrative office, such as World Intellectual Property Organization (WIPO) or the European Intellectual Property Office (EUIPO). Both organizations provide for a centralized application filing process, whereby applicants designate which countries they would like to seek trademark protection. In some circumstances, these centralized filings can make the application process and management of a foreign country registration much easier. Both WIPO and EUIPO administrative offices manage the administrative communications with the selected countries both before and after the trademark registration issues, although it is still the national trademark office for the selected countries that examine, approve, and ultimately determine each trademark application independently.
THIRD PARTY USE
WHAT DO I DO IF SOMEONE ELSE IS USING MY TRADEMARK?
It is imperative that you keep your trademark from being diluted in the marketplace. Not only is it important as a business owner in maintaining the value of your brand, but also you have a duty as a trademark owner to ensure that your mark identifies your business — and only your business — as the source of goods and services being sold. Third parties that use your mark without permission essentially are trading off the goodwill you’ve created for your business. This goodwill is the crux of your intellectual property in your trademark.
Trademark rights are designed to prevent unfair competition between businesses, particularly where two marks for the same goods create a likelihood of consumer confusion. Failure to enforce your mark against others can erode these rights, eventually giving third parties a viable claim that your mark no longer is associated exclusively with only your business. Many trademark owners have lost substantial trademark rights by not enforcing and protecting their marks.
WHAT IS A COPYRIGHT?
A copyright is a collection of rights that arise automatically when someone creates an original work of authorship like a piece of writing, a photograph, a drawing or logo, a song, film, or even source code in software. These collection of rights include:
The right to reproduce the work
The right to create derivative works
The rights to distribute copies of the work
The right to perform the work
The right to display the work publicly
DO I NEED TO REGISTER A COPYRIGHT TO MAKE IT VALID?
No. Copyright arises from the moment you create the original expression of “authorship.” However, there are certain benefits that arise from registering your copyright, including the right to statutory damages for infringement of your copyright. Also, you cannot sue for copyright infringement without a federal registration. You can learn more about the copyright registration process and what kind of creative works are protectable at https://www.copyright.gov/registration/
WHAT IS A WORK MADE FOR HIRE?
A “work made for hire” is a work of authorship that is either (1) prepared by an employee within the scope of their employment; or (2) the work specially ordered or commissioned by a third party (like an independent contractor), where the commission is (i) in writing, (ii) signed before the work is created; and (iii) that falls within one of nine specific categories of works. In both cases, the employer or business commissioning a third party is considered the “author” of the work. If the writing is signed after the work is created, then technically the copyright is an assignment and not a work made for hire. Although one can assign perfectly good title in a copyright, “authors” receive certain benefits that “owners” are not afforded, so in some circumstances the distinction can be meaningful. You can read more about “Works Made For Hire” at the U.S. Copyright Office at https://www.copyright.gov/circs/circ30.pdf
WHAT ARE MORAL RIGHTS?
Under the federal Visual Artists Rights Act (“VARA”), moral rights refer to a limited set of rights designed to protect a creator’s honor and reputation in their work. Some states, like New York and California, have enacted state legislation for additional protection for visual artists, but in general these rights are limited and protect paintings, drawings, prints, sculptures, and photographs (existing in a single copy or limited edition). Expressly excluded are posters, maps, globes, motion pictures, electronic publications, and applied art.
In general, moral rights allow the author the sole right to claim authorship in their work and to prevent the use of their name in association with a work and, in particular, grants an artist the right to prevent distortion, mutilation or other modification of their works. An example of this right against destruction of work comes up frequently in cases where graffiti artists contest building condemnations. For more about moral rights, please see https://www.copyright.gov/policy/moralrights/
WHAT IS THE DIFFERENCE BETWEEN COPYRIGHT AND TRADEMARK?
Trademark rights refer to the particular source of goods or services offered. Trademark rights protect a business or individual against the unfair competition of others using the goodwill created by their brand. Copyright, on the other hand, protects the creative expression of original authorship and might not be tied to a business brand at all. In many instances, both trademark and copyright rights can exist in the same work. For instance, a brand logo might function as a trademark (i.e. a source designator of goods and services) and also as a creative expression itself (i.e. the artwork of the logo). Similarly, a jingle might serve both as a sound trademark and also as a copyrightable musical work. Both trademark and copyright (and sometimes rights of publicity) serve as layers of separate, coexisting intellectual property rights.
CAN I COPY SOMETHING OFF THE INTERNET FOR USE IN MY BUSINESS?
Most likely, no. In some cases, there will be photos and text that have been placed in the public domain intentionally (or because the copyright period has expired), but in most cases, you will need to obtain licensee and pay a royalty fee. Music, in particular, can be tricky because there are several “layers” of licenses needed, depending on how you want to use it. When it comes to music, film, and photographs, assume you need permission unless the work expressly states otherwise.
CAN I REGISTER A COPYRIGHT FOR MY SOFTWARE PRODUCT?
Possibly. It all depends on whether the source code for your product contains enough original creation (filtering out licensed in and off the shelf software tools). The US Copyright Office offers very precise guidelines in pursuing registration of source code copyright, which can be found at https://www.copyright.gov/circs/circ61.pdf.
RIGHTS OF PUBLICITY
WHAT IS A RIGHT OF PUBLICITY
The right of publicity means the right of an individual to control the commercial use of his/her name, image, or “likeness.” It is a right created by state law, so the parameters of rights of publicity vary from state to state. Some states, like New York, treat it more like a privacy right that keeps an individual from being associated with a commercial matter without their consent, while other states, like California, treat it more like a property right that can be assigned and is even descendible after death.
WHAT DOES THE "PUBLICITY"RIGHT INCLUDE?
“Publicity” is a broad term and can include:
WHAT IS THE DIFFERENCE BETWEEN TRADEMARK AND RIGHTS OF PUBLICITY?
Trademark rights refer to a business or individual brand (even if that brand is the individual’s name) and must adhere to all other trademark requirements of use and function. Rights of publicity, on the other hand, are personal to an individual without reference to use in business or any other public forum. As with trademark and copyright, one can have both a trademark right and a right of publicity in their name. when their name is also used as a brand (e.g., Kim Kardashian).
WHAT KINDS OF LEGAL ISSUES ARISE IN SOCIAL MEDIA?
Social media is the wild wild west of IP-related legal issues ranging from first amendment issues, defamation and libel, trademark and copyright infringement, misappropriation of likeness and rights of publicity, privacy rights, and advertising law. Platforms such as You-Tube, Instagram, Twitter, SnapChat, Facebook, Tik-Tok and even reseller sites such as Amazon and Etsy, all give rise to a multitude of interactions where conflict and misappropriation (intended or not) is inevitable.
Nearly all platforms have institutionalized Terms or Use as well as notice and dispute resolution procedures that normally can be found in the links within the platform itself as an administrative remedy. But, occasionally, you can run into more complicated issues, as with music infringement, libel, or brand misappropriation, that require additional legal insight into your options for resolution.
Although seeing a third party infringe your IP rights can prompt you to run straight to a lawyer, it’s often prudent to refer to the particular platform’s dispute resolution policies to see if there is a remedy that’s acceptable for your situation. If your work or brand is registered, very often these platforms have efficient and expedient “take down” options. These remedies don’t always give you the “legal smackdown” satisfaction that you want, but in the cost/benefit analysis sometimes it’s better choose what will be most effective for your business over the satisfaction of enforcing your rights. Social media is a marathon and most certainly not for the faint of heart. Putting your work and brand out into the world is act of courage and sometimes that means knowing how to pick your battles strategically.
WHAT ARE THE RULES FOR INFLUENCERS ON SOCIAL MEDIA?
The Federal Trade Commission (FTC) governs all aspects of advertising on social media and in November 2019 it released guidelines for social media influencers. In general, the FTC recommends the following to stay in compliance with relevant advertising laws:
What to Disclose:
Disclose when you have any financial, employment, personal, or family relationship with a brand
Financial relationships aren’t limited to money. Disclose if you got anything of value to mention a product.
If a brand gives you free or discounted products or other perks and then you mention one of its products, make a disclosure even if you weren’t asked to mention that product.
Keep in mind that tags, likes, pins, to show you like a brand or product are endorsements.
How to Disclose:
Make sure people will see and understand the disclosure. Place it so it’s hard to miss.
The disclosure should be placed with the endorsement message itself. Disclosures are likely to be missed if they appear only on an ABOUT ME or profile page, at the end of posts or videos, or anywhere that requires a person to click MORE.
Don’t mix your disclosure into a group of hashtags or links.
If your endorsement is in a picture on a platform like Snapchat and Instagram Stories, superimpose the disclosure over the picture and make sure viewers have enough time to notice and read it.
If making an endorsement in a video, the disclosure should be in the video and not just in the description uploaded with the video.
If making an endorsement in a live stream, the disclosure should be repeated periodically so viewers who only see part of the stream will get the disclosure
Use simple and clear language
So are terms like “advertisement,” “ad,” and “sponsored.” On a space-limited platform like Twitter, the terms “AcmePartner” or “Acme Ambassador” (where Acme is the brand name) are also options
Don’t use vague or confusing terms like “sp,” “spon,” or “collab,” or stand-alone terms like “thanks” or “ambassador,” and stay away from other abbreviations and shorthand when possible.
The disclosure should be in the same language as the endorsement itself.
What Else to Know?
You can’t talk about your experience with a product you haven’t tried
If you’re paid to talk about a product and thought it was terrible, you can’t say it’s terrific
You can’t make up claims about a product that would require proof the advertiser doesn’t have –such as scientific proof that a product can treat a health condition.
The full set of guidelines can be found at: https://www.ftc.gov/system/files/documents/plain-language/1001a-influencer-guide-508_1.pdf
WHAT IS A PATENT?
A patent for an invention is the grant of a property right to the inventor and is issued by the United States Patent and Trademark Office. Generally, a patent term lasts for 20 years. The patent confers exclusive rights to prevent others from making, using, offering for sale, or selling or importing the invention. There are a limited number of things that can be patented and often patents can be difficult to obtain. The requirements of patentable “subject matter,” as well as the requirement that it be “new” and “non-obvious” can make the bar very high (and very expensive) in procuring patent protection. The reality is that for as many patents that are filed with the USPTO, very few actually meet the requirements of true invention.
WHAT ARE THE TYPES OF PATENTS?
There are three types of patents:
Utility Patents - refer to any “new” or “useful” process, machine, article of manufacture, or composition of matter, and any useful improvement of that matter.
Design Patents - refer to a new, original and ornamental (as opposed to “useful”) design for an article of manufacture.
Plant Patents - granted to anyone who invents or discovers and asexually reproduces any distinct and new variety of plant.
HOW DOES PATENT OVERLAP WITH OTHER IP RIGHTS?
If patent rights are present, a patent can then overlap with many other rights. For instance, a company might have a novel and useful software product that has trademark rights in a brand, copyright in the source code, and patent rights in it some aspect of novel functioning. In addition, patent often works in conjunction with trade secrets; although, it should be noted that a patent must eventually be disclosed to the public in exchange for the 20 year exclusivity. Very often this disclosure requirement will be at odds with trade secret protection, which can exist indefinitely provided that the owner successfully is taking steps to maintain its secrecy.
DOES CROS IP OFFER PATENT SERVICES?
No. Patent attorneys are a distinct form of legal specialist. In additional to their legal training, they often have engineering and other technical undergraduate and graduate degrees and must be a member of the USPTO’s “patent bar” in order to file patents on behalf of their clients. Cross IP does not provide patent services directly, but has several excellent patent attorney referral partners, who work together with Cross IP to offer a full range of IP services.
WHAT IS A TRADE SECRET?
Trade secrets are a type of intellectual property that consist of information and can include a formula, pattern, compilation, program, device, method, technique or process. Trade secret protection derives from state law, but it tends to be uniform among the states.
To meet the most common definition of a trade secret, it must be used in business, and give an opportunity to obtain an economic advantage over competitors who do not know or use it. For example, the formula for Coke is a trade secret because it gives the product a distinct flavor advantage over other sodas. Similarly, a marketer might have a methodology for executing their services, that might constitute a trade secret because it gives them a competitive advantage over other marketing consultants.
The crux of a trade secret is the fact that it is secret and you gain your competitive advantage by virtue of the fact that it is secret. If the secret gets out because you inadvertently disclosed it, then you no longer have a trade secret as an IP asset. If someone misappropriates your trade secret and discloses it, you then have a cause of action, but you no longer have a trade secret. Trade secrets are most often protected through non-disclosure agreements, employment policies, and “need to know” access.
ARE TRADE SECRETS AND CONFIDENTIAL INFORMATION THE SAME THING?
Not always. Although trade secrets are always confidential, confidential information isn’t necessarily a trade secret. Confidential information can be any information relating to your business, regardless of whether or not it gives you a competitive advantage. In the case of confidential information, the best form of protection is contractual, such as with a stand-alone non-disclosure agreement and/or a confidentiality provision in a contract or by operation of law, such as with fiduciary duties of an attorney with privileged information, healthcare privacy laws, etc.