Richard D. Clarke Patent, Trademark & Copyright Attorney

Frequently Asked Questions

COPYRIGHT

PATENT

TRADEMARK

TRADE SECRETS

Q: What is a copyright?
A: A copyright gives the author or copyright owner the exclusive right to make copies of their creative work for the life of the author plus seventy years. A copyright also gives the owner control of derivative works (e.g. plays, motion pictures, or other adaptations of the work), as well as exclusive rights to display and perform the work.
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Q: How do I establish a copyright?
A: Your work is protected by copyright the moment it is created and fixed in a tangible form so that it is perceptible either directly or with the aid of a machine or device. It is not necessary to register your copyright to have rights of copyright.
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Q: What does copyright protect?
A: Copyright, a form of intellectual property law, protects original works of authorship including literary, dramatic, musical, and artistic works, such as poetry, novels, movies, songs, computer software, and architecture. Copyright does not protect facts, ideas, systems, or methods of operation, although it may protect the way these things are expressed.
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Q: How is a copyright different from a patent or a trademark?
A: Copyright protects original works of authorship, while a patent protects inventions or discoveries. Ideas and discoveries are not protected by the copyright law, although the way in which they are expressed may be. A trademark protects words, phrases, symbols, or designs identifying the source of the goods or services of one party and distinguishing them from those of others.
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Q: When is my work protected?
A: Your work is under copyright protection the moment it is created and fixed in a tangible form that it is perceptible either directly or with the aid of a machine or device.
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Q: Why should I register my work if copyright protection is automatic?
A: Registration is recommended for a number of reasons. Many choose to register their works because they wish to have the facts of their copyright on the public record and have a certificate of registration. Registered works may be eligible for statutory damages and attorney's fees in successful litigation. Finally, if registration occurs within 5 years of publication, it is considered prima facie evidence in a court of law.
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Q: I’ve heard about a “poor man’s copyright.” What is it?
A: The practice of sending a copy of your own work to yourself is sometimes called a “poor man’s copyright.” There is no provision in the copyright law regarding any such type of protection, and it is not a substitute for registration.
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Q: Is my copyright good in other countries?
A: The United States has copyright relations with most countries throughout the world, and as a result of these agreements, we honor each other's citizens' copyrights. However, the United States does not have such copyright relationships with every country. For a listing of countries and the nature of their copyright relations with the United States, see Circular 38a, International Copyright Relations of the United States.
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Q: Can I copyright my website?
A: The original authorship appearing on a website may be protected by copyright. This includes writings, artwork, photographs, and other forms of authorship protected by copyright.
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Q: Can I copyright my domain name?
A: Copyright law does not protect domain names. The Internet Corporation for Assigned Names and Numbers (ICANN), a nonprofit organization that has assumed the responsibility for domain name system management, administers the assignation of domain names through accredited registers.
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Q: What is a patent?
A: A patent gives its owner the right to exclude others from making, using or selling the invention described in the patent for a period of twenty years from the date the patent application is filed. An invention must be new, useful and non obvious to benefit from patent protection.
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Q: What is "patent pending"?
A: Patent pending refers to the status of an applicant who has filed a patent application with the Patent Office and is awaiting processing of the application. Once an applicant is "patent pending" the applicant may begin marketing his/her invention without jeopardizing patent rights. In addition, the applicant can affix the words "patent pending" on their invention to warn others that the applicant is pursuing a patent.
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Q: Why should I have a patent attorney draft my patent application?
A: Patents have been referred to as the most complex legal documents that exist. A patent generally includes a set of legal claims, specification, drawings, description of the drawings, summary, detailed description, abstract and background. Proficiency in claims drafting usually comes from years of experience and training.
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Q: How long does it take to get a patent?
A: It can take anywhere from about 1 to 5 years to get a final decision from the patent office on whether they will grant you a patent. However, you can start selling your invention as soon as you are "patent pending" (i.e. your patent application has been filed and accepted by the PTO) without damaging your patent rights.
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Q: What is a Design Patent?
A: A design patent may be granted to anyone who invents a new, original, and ornamental design for an article of manufacture. A design patent has a term of 14 years from the date it gets issued by the patent office.
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Q: What is a Utility Patent?
A: A utility patent may be granted to anyone who invents or discovers any new and useful process, machine, article of manufacture, compositions of matter, or any new useful improvement thereof. A utility patent has a term of 20 years from the filing date of the Utility Patent Application.
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Q: Why do you need a patent?
A: A patent gives an inventor the right to exclude all others from making, using, importing, selling or offering to sell the invention for up to 20 years without the inventor's permission. This gives the inventor the opportunity to produce and market the invention himself, or license others to do so, and to make a profit.
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Q: Does an inventor get paid when a patent is granted?
A: A patent does not guarantee monetary success by itself. An inventor gets paid byeither selling the invention or by licensing or selling (assigning) the patent rights to someone else. Not all inventions are commercially successful. The invention may actually cost the inventor more money than he or she makes unless a strong business and marketing plan is created.
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Q: What would happen if you didn't have a patent?
A: In some cases, you could keep your invention a secret like the Coca-Cola Company keeps the formula for Coke a secret. This is called a trade secret. Otherwise, without a patent you run a risk of someone else copying your invention with no rewards to you as the inventor.
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Q: If two or more persons work together to make an invention, to whom will the patent be granted?
A: If each had a share in the ideas forming the invention as defined in the claims – even if only as to one claim, they are joint inventors and a patent will be issued to them jointly on the basis of a proper patent application. If, on the other hand, one of these persons has provided all of the ideas of the invention, and the other has only followed instructions in making it, the person who contributed the ideas is the sole inventor and the patent application and patent shall be in his/her name alone.
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Q: What is a trademark?
A: A trademark includes any word, name, symbol, or device, or any combination, used, or intended to be used, in commerce to identify and distinguish the goods of one manufacturer or seller from goods manufactured or sold by others, and to indicate the source of the goods. In short, a trademark is a brand name.
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Q: Do I have to register my trademark?
A: No, but federal registration has several advantages, including notice to the public of the registrant's claim of ownership of the mark, a legal presumption of ownership nationwide, and the exclusive right to use the mark on or in connection with the goods or services set forth in the registration.
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Q: What are the benefits of federal trademark registration?
A: 1. Constructive notice nationwide of the trademark owner's claim.
2. Evidence of ownership of the trademark.
3. Jurisdiction of federal courts may be invoked.
4. Registration can be used as a basis for obtaining registration in foreign countries.
5. Registration may be filed with U.S. Customs Service to prevent importation of infringing foreign goods.
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Q: Are there federal regulations governing the use of the designations "TM" or "SM" with trademarks?
A: No. Use of the symbols "TM" or "SM" (for trademark and service mark, respectively) may, however, be governed by local, state, or foreign laws and the laws of the pertinent jurisdiction must be consulted. These designations usually indicate that a party claims rights in the mark and are often used before a federal registration is issued.
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Q: When is it proper to use the federal registration symbol (the letter R enclosed within a circle -- R -- with the mark.
A: The federal registration symbol may be used once the mark is actually registered in the U.S. Patent and Trademark Office. Even though an application is pending, the registration symbol may not be used before the mark has actually become registered. The federal registration symbol should only be used on goods or services that are the subject of the federal trademark registration. [Note: Several foreign countries use the letter R enclosed within a circle to indicate that a mark is registered in that country. Use of the symbol by the holder of a foreign registration may be proper.
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Q: Do I need an attorney to file a trademark application?
A: No, although it may be desirable to employ an attorney who is familiar with trademark matters. An applicant must comply with all substantive and procedural requirements of the Trademark Act and Trademark Rules of Practice even if he or she is not represented by an attorney. The USPTO cannot aid in the selection of a search firm or an attorney.
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Q: Do I need to do a trademark search before filing a trademark application?
A: We generally recommend ordering a professional trademark search before you decide to file a trademark application. A trademark search could help you avoid conflict with another trademark owner and is a reliable indicator of whether or not your mark can be registered. A professional trademark search will help you make an informed decision about filing a trademark application.
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Q: Do I have to be a U.S. Citizen to obtain a federal registration?
A: No. However, an applicant's citizenship must be set forth in the record. If an applicant is not a citizen of any country, then a statement to that effect is sufficient. If an applicant has dual citizenship, then the applicant must choose which citizenship will be printed in the Official Gazette and on the certificate of registration.
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Q: Where can I find trademark forms?
A: You can access forms through the Trademark Electronic Application System (TEAS), at http://www.uspto.gov/teas/index.php. TEAS can be used to file an application for registration of a mark, response to examining attorney's Office action, notice of change of address, amendment to allege use, statement of use, request for extension of time to file a statement of use, affidavit of continued use under 15 U.S.C. §1058, affidavit of incontestability under 15 U.S.C. §1065, combined affidavit under 15 U.S.C. §§1058 and 1065, or combined filing under 15 U.S.C. §§1058 and 1059.
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Q: Who may file an application?
A: Only the owner of the trademark may file an application for its registration. An application filed by a person who is not the owner of the mark will be declared void. Generally, the person who uses or controls the use of the mark, and controls the nature and quality of the goods to which it is affixed, or the services for which it is used, is the owner of the mark.
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Q: What is a trade secret?
A: A trade secret is information that has value because it is not generally known and is the subject of efforts to keep it secret. State law protects against disgruntled ex-employees, sabotage by current employees, or simple carelessness about the risk and possible protections of your trade secrets. Protection for trade secrets does not expire, as it does for copyright. As long as the owner makes reasonable efforts to keep the information secret, the information is protected.
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Q: How do I protect my trade secrets?
A: Protect Your Trade Secrets with a Nondisclosure Agreement A nondisclosure agreement-also called an NDA or a confidentiality agreement-is a contract in which the parties promise to protect the confidentiality of secret information that is disclosed during employment or another type of business transaction. If you make a nondisclosure agreement with someone who uses your secret without authorization, you can request a court to stop the violator from making any further disclosures and you can sue for damages.
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Q: How do I mark something "trade secret"?
A: Generally speaking, if you must reveal a trade secret to a third party, you should have an intellectual property attorney prepare an underlying agreement which includes a statement as to what constitutes a trade secret and what the marking requirements are. A typical marking requirement may be simply "Proprietary material belonging to NAME". Often it makes sense to purchase a stamp with the appropriate phrase to facilitate the marking.
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Q: Do I register a trade secret?
A: No. There is no process for application or registration of trade secret or know-how. In fact, publication of a trade secret to any third party could destroy its confidential nature.
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Q: Is stealing trade secrets a crime?
A: Intentional theft of trade secrets can constitute a crime under both federal and state laws. The most significant federal law dealing with trade secret theft is the Economic Espionage Act of 1996 (EEA) (18 U.S.C., Sections 1831 to 1839). The EEA gives the U.S. Attorney General sweeping powers to prosecute any person or company involved in trade secret misappropriation and punishes intentional stealing, copying or receiving of trade secrets. Penalties for violations are severe: Individuals may be fined up to $500,000 and corporations up to $5 million. A violator may also be sent to prison for up to ten years. All property used and proceeds derived from the theft can be seized and sold by the government.
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