August 2005


Have your Patent Rights been violated?

A patent is a property right that the federal government gives to an inventor with respect to an invention. That property right is the right to exclude others from making, using, selling, offering for sale, or importing the patented invention without the inventor’s permission for the limited period specified by the patent statute. A person or other entity that makes, uses, sells, offers for sale, or imports the invention covered by the patent is said to liable for direct infringement of the patent.
Patent infringement is classified by the law as a “tort,” which is a wrong–other than a breach of contract–for which the law provides a remedy. Therefore, the rules of tort law will govern how a lawsuit alleging patent infringement is to be commenced and prosecuted.

If you believe your patent rights have been violated, contact one of our patent attorney’s to review your patent rights.

Because of the wholly exclusive nature of patent rights, it does not matter if an infringer does not know that the thing that he or she makes, uses, sells, offers for sale or imports is protected by a patent. This means that even if a second inventor invents an already patented invention completely independently of the first inventor and without any awareness of the existence of the invention or the patent, the patent owner can prevent the second inventor from any of the activities prohibited by the patent right. Although the second inventor in such a case is said to be an “innocent infringer,” the second inventor is still liable for patent infringement.

Embodiment

When a patented invention is manufactured and sold, it is not the patent that is sold but rather an embodiment of the patent. When sold, the inventor’s rights in the physical embodiment of the patent are said to have been exhausted, and unless the manufactured product is sold under a contract restricting any resale of the product, the buyer of the manufactured product can freely use the product, offer the product for sale, or sell that product, notwithstanding the existence of the patent. The buyer of that particular embodiment of the patent may not, however, make new embodiments of the invention or import other embodiments of the invention without infringing the patent. The buyer may also repair the product, as long as the repair of the product is not so extensive that it amounts to a completely new manufacturing of the patented invention and so would infringe the patent.

Promotional Activity

To be liable for direct infringement for offering for sale the subject of a patent, the patented invention need not have been already manufactured or imported into the United States. Any unauthorized promotional activity of a patented invention that does not amount to an actual sale of the patented invention may be found to constitute an infringing offer to sell. However, the promotion or offer must be connected with an act that would itself be infringing. Therefore, promotional activity of a patented invention anticipating the expiration of a patent or an offer to sell a patented product after the patent expires does not infringe the patent.

The United States Patent and Trademark Office, which issues patents under the authority of the patent statute, has no jurisdiction over patents once they are issued; thus, patent infringement lawsuits must be brought in the appropriate federal district court. Remedies for patent infringement include an injunction, which is a court order that infringing activities cease, and monetary damages to compensate any economic losses sustained by the patent owner.


Beware of Indirect Infringers

Patent rights are created by federal law and give an inventor the right to exclude others from making, using, selling, offering for sale, or importing a patented invention without the inventor’s permission for a limited period of time. The making, using, selling, offering for sale, or importing of a patented invention without the inventor’s permission is said to directly infringe the patent, for which the patent owner may be able to recover a remedy. Patent law also provides for indirect infringement of a patent.

If you believe someone may have infringed upon your patent rights, please contact one of our patent attorneys to schedule an appointment to discuss protecting your valuable legal rights.

Indirect Infringement

One way of becoming liable for indirect patent infringement is to induce another party to commit an act of patent infringement. In order to be liable for inducement to infringe a patent, one must actively solicit or assist another in the infringing of a patent. The United States Court of Appeals for the Federal Circuit, which hears appeals of patent cases, has held that to actively induce infringement, one must knowingly and intentionally induce the actual infringer. One basic requirement for liability for inducement to infringe is that there must be an actual case of direct infringement by another party; thus, one cannot be liable for attempting to induce the infringement of a patent when no infringement takes place. For example, offering to sell the parts necessary to build a patented invention and instructions on how to build it does not in itself amount to inducement to infringe; however, if someone accepts the offer to buy the parts and builds the invention, thus infringing the patent, the seller of the parts has induced the act of infringement.

Another form of indirect infringement is contributory infringement. The patent statute specifically defines contributory infringement as selling, offering to sell or importing an important part of a patented invention that has no substantial use except to build the patented invention. If the item being sold is a common item that has other uses, selling it is not contributory infringement even if the seller knows that the buyer intends to use the item to infringe a patent. As with inducement to infringe, liability for contributory infringement depends upon an actual act of direct infringement. The knowing and intentional element of inducement to infringe also applies to contributory infringement. Therefore, to be liable for contributory infringement, one must know that the item being sold, offered for sale, or imported has no real use except in the creation of an infringing product and that the person to whom the item is sold intends to use it in such a way that a patent will likely be infringed.


How to Choose a Protectable Trademark

The spectrum of trademark distinctiveness goes from fanciful marks, which are very protectable, to generic trademarks, which are not protectable. In trademark usage, words can be classified according to the degree of their distinctiveness. The right to protection of a trademark comes from its use to identify the product. When choosing a protectable trademark it should be highly distinctive. Choose a trademark that are fanciful, arbitrary, or suggestive because they may be more likely to be considered distinctive, meeting a requirement for registration by the USPTO.

To help determine if a Mark is available for protection or to help register your Mark, please contact one of our Trademark Attorneys.

A mark, such as a word or a logo, can only be considered a trademark or a service mark if it is distinctive. A distinctive mark is one that is capable of distinguishing the goods or services upon which it is used from the goods or services of others. A non-distinctive mark is one that merely describes or names a characteristic or quality of the goods or services. The distinctiveness of a mark can generally be categorized into one of five categories which fall along a spectrum of distinctiveness. The strength of a mark is determined in part by where it falls on this spectrum. Fanciful marks are considered stronger than suggestive marks, and therefore are granted greater protection by the courts. The categories, from most distinctive to least distinctive, are as follows:

1. Fanciful trademarks are marks 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. FAB is a shortened version for fabulous and is a fanciful word used for detergent. Other examples are Kodak, Starbucks, Verizon, Xerox and Reebok.

2. Arbitrary trademarks are common words used in a unique way so that the word has no relationship to the product. An arbitrary trademark neither suggests nor describes any ingredient, quality, or characteristic of a product. Examples are Apple for computers, Amazon for an Internet site, and Blue Diamond for nuts.

3. Suggestive trademarks indirectly allude to a quality of a product. Suggestive marks conjure images of the associated products without directly describing them. Trademark protection may be afforded to suggestive terms that shed some light upon the qualities or characteristics of goods but which are not descriptive of such goods. Secondary meaning is not necessary for suggestive terms because they are not merely descriptive. Stronghold for threaded nails is suggestive of their superior holding power, 7-11 for a store that is open from 7 a.m. until 11 p.m., Jaguar for a fast car, Gleem for toothpaste, and Orange Crush for a soft drink.

4. Descriptive trademarks are those which describe to potential customers the characteristics, nature, qualities or ingredients of goods or services. These trademarks are often referred to as inherently “narrow” or “weak.” Through use and advertising such marks may attain ”secondary meaning,” or trademark significance, to the public. In the absence of secondary meaning or distinctiveness, descriptive trademarks have generally been denied trademark protection in the belief that the number of such appropriate terms is limited and that all merchants should equally be allowed to describe their own goods while competing for customers. Examples are Computerland for a computer store, Vision Center for an optics store, and Tender Vittles for cat food.

5. Generic trademarks are terms that describe a whole class of products. A generic word is one which is the language name for the product. There can be no trademark rights in a generic term. They remain in the public domain as a part of our language. Examples are Personal Computer for a personal computer and Butter for butter.

Trademarks are referred to as strong or weak because of the amount of use necessary to create protected rights. Words which are fanciful or arbitrary are distinctive almost from their first use, so they are considered strong and would be the best choice for a trademark. These terms take less effort, time, and money to protect. Suggestive words are also protected as trademarks when used distinctively for particular products. Fanciful, arbitrary, and suggestive marks are registrable on the Principal Register without proof of acquired distinctiveness. Words which are merely descriptive do not obtain protection solely from their use as a trademark. Descriptive words must first acquire distinctiveness from the effect of the owner’s efforts in the market place. This is what is called the development of secondary meaning, which is when, in the minds of the consuming public, the primary significance of a descriptive term that has been used as a trademark is not the product itself but the identification of it with a single source.

Secondary meaning is the term applied to the source-indicating significance of a mark as contrasted with its primary or language significance. Thus, Ivory has acquired a secondary meaning signifying a particular manufacturer’s soap, whereas its primary meaning is the substance of an elephant’s tusk. Factors typically considered in determining whether a mark has secondary meaning include (1) length and manner of use; (2) manner and extent of advertising and promotion; (3) sales volume; and (4) evidence that potential purchasers actually view the mark as indicating the product’s source, including consumer testimony and survey evidence.


CAUTION: Bad Trademarks

Trademarks that are determined to be deceptive are not protected and may not be registered. Like deceptive marks, deceptively misdescriptive marks tend to mislead consumers as to the underlying product. However, deceptively misdescriptive marks do not meet the requirements of a deceptive mark as there is not a bad intent or reliance by purchasers upon the misdescription. Trademarks that are determined to be deceptively misdescriptive may be registered on the Principal Register upon a showing of secondary meaning or distinctiveness.

If you are interested in registering a Mark which may be descriptive or deceptive, please contact one of our Trademark Attorney’s to review whether the Mark would qualify for registration by the USPTO.

Deceptive Trademarks

These marks cannot be registered as trademarks because they mischaracterized or mislead consumers as to the underlying product. Deceptive trademarks are those that would likely mislead the public as to the nature and qualities of the product.

Test for Determining if Mark is Deceptive

The usual test for determining whether or not a mark is deceptive is:

  1. Whether the mark misdescribes the character, quality, function, composition, or use of the underlying product.
  2. If yes, then whether the prospective purchasers are likely to believe that the misdescription actually describes the goods.
  3. If yes, then whether purchasers are likely to rely upon the misdescription in making their purchasing decision.

Some courts have simply looked for an intent to deceive, instead of applying the above test.

Example of a Deceptive Trademark

The trademark BreathAsure was determined to be deceptive because it conveyed the literally false message that fresh breath was assured by using the product. Deception was found because an essential and material element was misrepresented, was distinctly false, and was the very element upon which the customer would reasonably rely in purchasing the product over another product.

Deceptively Misdescriptive Trademarks

If a mark is misleading but does not qualify for being a deceptive mark because either the mark’s owner had no bad intent or there is not likely to be any reliance by purchasers on the misleading description then the mark is a deceptively misdescriptive mark. A deceptively misdescriptive mark conveys an immediate false idea of an ingredient, quality, characteristic, function, or feature of the goods or services with which it is used. Prospective purchasers that encounter the mark, as used on or in connection with the goods or services in question, would be likely to believe the misrepresentation. Deceptively misdescriptive marks are unregisterable unless there is a showing of secondary meaning or acquired distinctiveness.

Test for Deceptive Misdescriptiveness

The following test is used to determine whether or not a trademark is deceptively misdescriptive:

  1. The mark is misdescriptive of the goods or services in relation to which it is used,
  2. Consumers would be likely to believe the misdescription, and
  3. The misdescription would likely affect consumers’ decision to buy the goods or services.

 

If the misdescription represented by the mark is material to the decision to purchase the goods or utilize the services then registration of the mark will be barred.

Examples of Deceptively Misdescriptive Trademarks

  • The use of Pheromone on a line of perfumes was found to be deceptively misdescriptive because plaintiff admittedly did not know or care whether or not its perfumes actually contained pheromones, which are organic substances that allegedly attract other members of the same species. Plaintiff’s use of Pheromone for five years was found to be insufficient to acquire secondary meaning and protection was denied.
  • The trademark Super Silk was refused registration on the ground that the mark was deceptively misdescriptive of the applicant’s goods, which were dress shirts and sport shirts made of silk-like fabric. It was determined that consumers would likely believe that applicant’s products were made from silk. The deception caused by the mark was not mitigated by the applicant’s labels on the goods at issue that identified the synthetic nature of the fiber from which the goods were made.

Protecting the Display of Your Copyrightable Work

The Copyright Act confers upon copyright owners the right to publicly display certain types of works. This right may be claimed in literary, musical, dramatic, and choreographic works and in pantomimes, pictorial, graphic, and sculptural works as well as in the individual images of motion pictures and other audiovisual works.

The public display right is the right to show a copy of the work directly to the public or by means of a film, slide, or television image at a public place or displaying it on a website in order to transmit it to the public. In the case of a motion picture or other audiovisual work, showing the work’s images out of sequence may be considered “display.”

If you believe someone has displayed your Copyrightable work without your permission, please contact one of our Copyright Attorneys to discuss your legal rights.

Definition of Display

By definition, to display a work means to show a copy of it, either directly or by means of a film, slide, television image or any other device or process. A display is “public” on the same terms as a performance is “public.” Whether such acts would be an infringement would be determined by separate infringement analyses.

Copyright Infringement

To constitute an infringement, any display must be done publicly without the permission of the copyright owner. This includes displaying either the original work or a copy of the copyrighted work without the copyright owner’s permission.

Types of Work

The public display right is similar to the public performance right, except that this right controls the public “display” of a work. This right is limited to the following types of works:

  • literary works;
  • musical works;
  • dramatic works;
  • choreographic works;
  • pantomimes;
  • pictorial works;
  • graphical works;
  • sculptural works; and
  • stills from motion pictures and other audio visual works.

Exemption of Certain Displays

The right to display a copyrighted work belongs to the copyright holder but it is not an absolute right because there are some exemptions. The following are not considered infringements of copyright:

  • A display of a work by instructors or pupils in the course of face-to-face teaching activities of a nonprofit educational institution, in a classroom or similar place devoted to instruction, unless, in the case of a motion picture or other audiovisual work, the performance or the display of individual images is given by means of a copy that was not lawfully made and the person responsible for the performance knew or had reason to believe it was not lawfully made; and
  • A display of a work by or in the course of a transmission if the display is a regular part of the systematic instructional activities of a governmental body or a nonprofit educational institution, the display is directly related and of material assistance to the teaching content of the transmission, and the transmission is made primarily for reception in classrooms or similar places normally devoted to instruction or reception by persons to whom the transmission is directed because their disabilities or other special circumstances prevent their attendance in classrooms or similar places normally devoted to instruction. Also, reception by officers or employees of governmental bodies as a part of their official duties or employment is not considered an infringement of copyright.

 

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