What is intellectual property, or “IP” for short? Often when I tell people that I practice mainly intellectual property law, one of the first responses I always get is “is that like real estate?” or “so you’re buying land and buildings?,” and even a couple of “is that like construction related?”
Of course, the answer to all of these is no, and while I do get a bit frustrated at times with having to repeat the same things over and over, I can understand why laypersons not familiar with the spectrum of all the available legal practice areas might not understand outright what IP is. Because they don’t initially know, they will create a default association with something else, something that they have some general knowledge of (even if they don’t understand fully how it works).
When people who don’t know what IP is hear the term for the first time, they isolate the word “property” instead of processing the term as a whole. When people hear the word “property,” they think of land or buying homes, and any other kind of physical property ownership that is generally associated with real estate.
IP however, has little to do with physical items, buildings, or real-world locations. IP is property produced by the mind, or your ‘intellect.’ It is the unique, novel ideas, concepts, and visions that you create in your mind, seek to bring to life, and want to protect from other misusing without your knowledge or consent. So let’s just jump straight into what is IP, as well as the different types of IP and how they work.
Typically, a trademark is generally a word, phrase, slogan, symbol, design, or a combination thereof, that not only identifies the source of your goods and services, but also serves to distinguish them from the goods and services of provided by everyone else. A trademark lets consumers know that the goods or services come only from you and not from someone else. Essentially, a trademark is a brand, distinguishing your goods and services from those of your competitors. It’s how you know that a “Big Mac” comes from McDonald’s, a “Baconator” comes from Wendy’s, a “Whopper” comes from Burger King, a “Whataburger” comes from Whataburger, a “Buttery Jack” comes from Jack in the Box, and a “Double-Double” comes from In-N-Out Burger. Trademarks helps consumers decide what to buy when choosing between similar or related products.
Trademarks are given for brands that identify a source of goods and services. In the U.S., they are granted to the trademark holder by the United States Patent & Trademark Office (USPTO). There are technically 2 different types of trademarks:
- Trademarks, which identifies a source of goods, such as shoes, consumer electronics, and food; and
- Service Marks, which identifies a source of services, such as accounting or tax preparation services. Service marks are also informally referred to as trademarks as well.
The USPTO has a video series on its Trademark Information Network (TMIN), explain the basics of what trademarks are. Each video is not too long, and it is very information for anyone interested in obtaining a U.S. trademark. If you intend on seeking a trademark, it will tell you what you should know before filing your application.
It takes several months from the time an application is filed before you actually receive a trademark registration, with some estimates ranging from 9 or 10 months to 2 years, depending on whether the USPTO issues office actions against your application or whether someone else files an opposition to your trademark application. A trademark registration can perpetually remain in force for unlimited, consecutive ten-year cycles, as long as the trademark owner meets the legal requirements for post-registration maintenance / renewal, and timely files all necessary documents and fees with the USPTO.
While applicants domiciled in the U.S. are not required to have a licensed attorney represent them (meaning that you can file a trademark application by yourself), you should seek one out a trademark attorney as they can advise you on the likelihood of being able to secure the mark you desire, are knowledgeable on how to navigate and properly complete the trademark application system (known as the Trademark Electronic Application System (TEAS)), and will perform clearance searches to see if any similar marks already exist. If you are domiciled outside of the U.S., you must be represented by a licensed U.S. attorney in your trademark application.
The USPTO has published an online pamphlet with basic facts about trademarks, which goes into more depth about the entire process of getting a trademark, which includes what you should know before you file, after you file, and after you’ve received a registered trademark.
A copyright is defined by the U.S. Copyright Office as “a form of protection grounded in the U.S. Constitution and granted by law for original works of authorship fixed in a tangible medium of expression. Copyright covers both published and unpublished works.” Copyrights are issued and maintained by the U.S. Copyright Office, which is a part of the Library of Congress.
A copyright generally protects original literary, dramatic, musical, and artistic works, such as poetry, novels, movies, songs, computer software, books, and architecture. Copyrights do not protect facts, ideas, systems, or methods of operation. Rather, it can protect the way these things are expressed.
While Copyright renewal is not necessary for works created on or after January 1, 1978, the general rule is that works created after January 1, 1978 have a copyright protection term of the life of the author, plus an additional 70 years. For anonymous works, a work filed under a pseudonym, or a work made for hire, the copyright lasts for a term of 95 years from the year of its first publication, or for a term of 120 years from the year of its creation, whichever expires first.
Copyrights are uniquely different from trademarks and patents in that your work is technically under copyright protection the moment it is created and fixed in a tangible form that is perceptible either directly, or with the aid of a device or machine. This makes seeking a copyright registration more voluntary rather than mandatory. The reason why you should seek an official copyright registration with the copyright office is because if someone ever unlawfully copies, steals, republishes, or otherwise takes your work without permission, you will need a valid, active U.S. copyright registration if you wish to bring a lawsuit for copyright infringement. Without a copyright registration, you won’t have much of a remedy at law if someone infringes on your copyright. Registered works may be eligible for attorney’s fees and statutory damages if you successfully litigate a copyright infringement suit. Additionally, if you obtain a copyright registration within five years of the publication of your work, it is considered prima facie evidence in a court of law, which can be very helpful in a copyright infringement suit.
Despite what people might think, neither trademarks nor copyrights cover protection for domain names. The Internet Corporation for Assigned Names and Numbers (ICANN), which is a nonprofit organization that has assumed the responsibility for all domain name system management, administers the assigning of domain names through accredited registers.
The U.S. Copyright Office regularly publishes online, the full text and any updates to the U.S. Copyright Act, which you can find right here.
The very concept of patents is created by the U.S. Constitution. Article I, Section 8, reads that “Congress shall have power . . . to promote the progress of science and useful arts, by securing for limited times to authors and inventors the exclusive right to their respective writings and discoveries.”
Patents are given for inventions. In the U.S., they are granted to the inventor by the USPTO. Patents are known in the legal profession as the “hard IP,” and are very different from trademark, copyrights, and trade secrets, which are known as “soft IP.” An issued patent lasts for 20 years from the date the patent was applied for, or in special cases, 20 years from the date an earlier related patent application was filed. A patent granted in the U.S. are only effective within the U.S. and U.S. territories.
There are 3 types of patents, and they are:
- Utility Patents, which 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, which may be granted to anyone who invents a new, original, and ornamental design for an article of manufacture; and
- Plant Patents, which may be granted to anyone who invents or discovers and asexually reproduces any distinct and new variety of plant.
A utility patent lasts for 20 years from the date the utility patent application was filed, if your application was filed on or after June 8, 1995. If your utility patent application contains a specific reference to an earlier application (under 35 U.S.C. 120, 121, 365(c), or 386(c)), then your utility patent will last for 20 years from the earliest effective U.S. filing date. Utility patent holders must pay periodic maintenance fees in order to maintain the enforceability of the utility patent. All patents (other than design patents) that were in force on June 8, 1995, or were issued from an application that was filed before June 8, 1995, have a term that is the greater of the “20-year term” or seventeen years from the date the patent was granted.
A design patent last for 14 years from the date you were issued your design patent, if your application was filed before May 13, 2015. If your design patent application was filed on or after May 13, 2015, you would receive a 15 year term from the date you were issued your design patent. Design patents do not require any maintenance fees.
A plant patent expires 20 years from the filing date of the plant patent application. Similarly to utility patents, when a plant patent expires, the patent enters the public domain.
What benefit does one get from seeking to obtain a patent? Well, according to U.S. patent laws, having a patent grants you “the right to exclude others from making, using, offering for sale, or selling” the invention in the U.S., or “importing” the invention into the U.S.
If you have an idea for a “new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof,” and you want to obtain a patent for it, visit the USPTO’s website. It is highly recommended that you find an IP attorney who specifically specializes in dealing with patents. As patents are highly technical and scientific, an attorney must have a particular educational background, and must have passed what’s called the patent bar exam, in order to even represent patent applicants before the USPTO.
While in law school, my contracts professor described trade secrets as the lesser known, unpopular black sheep of the IP family. Even people who know about IP, or discuss it regularly, don’t often mention trade secrets, and I think that might be because of the very nature of trade secrets.
The USPTO defines a trade secret as information that:
- has either actual or potential independent economic value by virtue of not being generally known;
- has value to others who cannot legitimately obtain the information; and
- is subject to reasonable efforts to maintain its secrecy.
WIPO, the World Intellectual Property Organization, explains it like this: a trade secret is commercially valuable because it is secret, is known only to a very limited group of individuals, and there are reasonable steps taken by the secret holder to maintain its secrecy, even if that requires using confidentiality agreements or non-disclosure agreements (NDAs).
All three of these elements must be met to have a valid trade secret. If any single element is missing, then the trade secret ceases to be a trade secret. Unlike trademarks, copyrights, and patents, as long as these 3 elements continue to be met, there is no limit on the amount of time that a trade secret can be protected.
Trade secrets are federally protected by laws such as the Economic Espionage Act of 1996 (EEA) and the Defend Trade Secrets Act of 2016, which amended certain provisions of the EEA.
Some famous trade secrets that are known for being extremely secretive are:
- Coca-Cola’s formula;
- Dr. Pepper’s formula;
- Google’s Algorithm;
- KFC’s fried chicken recipe;
- The breakdown/definition of the New York Time’s Bestseller List;
- Krispy Kreme donuts;
- Listerine mouthwash;
- Bush’s Baked Beans recipe;
- The mixture composition of WD-40;
- McDonald’s Big Mac special sauce recipe;
- Twinkies recipe;
- Thomas’ English Muffins recipe.
Trade secrets are a do-it yourself (DIY) method of IP protection, so there is no government registration process that you go through to secure your trade secret. This makes trade secrets very distinct from trademarks, copyrights, and patents, which all require a registration in order to fully be effective and therefore grant the owner legal rights. As long as the secret is kept… well, secret, you have trade secret protection, but once the information is made available to the public, your trade secret is gone completely.
Whatever type of IP you seek to obtain, it is important that you educate yourself and be well informed before filing any actual applications, and IP registration applications can be very expensive (especially if you’re dealing with patents), and are typically non-refundable, so if you make a mistake that causes your application to be denied, you will have cost yourself a lot of money that you thought you would have saved by not going to an attorney, only to have to resubmit a new application with a new set of fees all over again.