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Intellectual Property

A trademark or service mark is a word, name, logo, symbol or design that identifies the source of a product or service, distinguishing it from the competition. While trademarks are used to identify products, service marks are used to identify services. Both marks are afforded the same protections and subject to the same requirements.

To qualify for trademark protection, the mark must be used in commerce and it must be distinctive. Trademark law is tied to the power of Congress to regulate interstate commerce.Therefore, to qualify for federal trademark protection a mark must be used in interstate commerce. Marks used in intrastate commerce are eligible for state trademark protection. If a mark is not being used in commerce at the time a trademark application is filed, the mark may still be registered if you can establish a good faith intent to use the trademark in commerce on a future date. Nevertheless, trademark rights are awarded to the first individual or entity to actually use the mark in commerce.

The trademark must also be sufficiently distinctive to identify and distinguish the goods or services from those of other sources. Distinctiveness generally falls within one of four categories: 1) arbitrary or fanciful; 2) suggestive; 3) descriptive; and 4) generic.

A trademark categorized as arbitrary or fanciful, or suggestive, is automatically considered to be inherently distinctive, and the exclusive right to use the mark is determined solely based on who was first to use the mark in commerce. Descriptive trademarks are only protected if the mark has acquired secondary meaning to members of the public.  If the mark merely describes the type of product or service, it will not stand out and leave an impression in the minds of consumers. Generic terms are ineligible for any trademark protection. A trademark may be generic at the outset, or it can become generic over time through common usage, such as “aspirin”.

Trademarks can be registered at either the federal or state level, depending on whether the product or service will be sold across state lines or within one state only. Registration is not required for trademark protection, but there are significant advantages to registration. Registration puts the public on notice that the mark is used to identify a particular good or service. Under federal law, a registered trademark can achieve incontestable status following five years of continuous use.Under state law in most jurisdictions, even unregistered trademarks are protected under unfair competition laws.

Trademarks that are registered at the federal level are permitted to use the ® designation. Absent registration with the U.S. Patent and Trademark Office, trademark owners can use the letters “TM” or “SM” in conjunction with the mark, to alert the public of the owner’s claim to the mark.

Trademark owners are obligated to protect the mark by taking legal action against any infringers, regardless of how insignificant the infringement may seem. Owners must be consistent in asserting and defending their rights to the mark. Failure to do so could result in a waiver of the right to enforce the mark.

Copyrights

A copyright is a type of protection provided by federal law to authors of intellectual works, such as literary works, drama, music or artistic works. Intellectual works can also include choreography, sculptures, movies, sound recordings and architectural designs. Some things that can’t be copyrighted are works that aren’t in a tangible fixed form (such as performances that aren’t recorded or written), slogans, titles, names, ideas, procedures, discoveries, and works that consist only of common property (such as standard calendars).

The holder of a copyright on a book, painting, play, song or other work of art is the only one who can reproduce the work, perform the work publicly, distribute or display the work.Unauthorized use of any work protected by copyright is a violation of federal law.

In order to obtain a copyright, no action with the federal Copyright Office is needed. A copyright is automatically secured when the work is created. When a work is published, the author may choose to place a notice of copyright on the work to notify the public that the work is copyrighted. The notice varies among art forms, however, it usually includes the symbol ©, the year of publication of the work and the name of the owner of the work.

Many people also wish to register their copyrights with the Copyright Office. Although registration is not required in order to be protected by a copyright, registration has several advantages. Most importantly, registration establishes a public record of the copyright. Registration is necessary before a copyright infringement suit can be filed. If a copyright is registered and it is then infringed, statutory damages and attorney’s fees are available. Otherwise, if the copyright is not registered, only an award of actual damages and profits is allowed. Registration also allows the copyright owner to record the copyright with the U.S. Customs Service, which will help protect against importation of infringing copies.

In order to register a copyright, some basic information is needed. When was the work created? When was the work originally published? Is this an original work or a derivative work? Was the work created for hire (i.e., done by an employee)? Is the work entirely original? When was the work completed?

Our knowledgeable copyright attorneys can assist an author or creator of a work in registering a copyright. Once the copyright has been obtained, we will work with the owner to ensure the copyright is properly retained and enforced. If someone other than the owner of that copyright reproduces the copyrighted work, we will assist the author with copyright litigation, when appropriate. Our attorneys can also help with any legal issues that arise under the Digital Millennium Copyright Act, which has adapted copyright law to keep pace with a digital world. The DMCA protects service providers from copyright liability that may arise from the infringement by their users.


Rosenberg Calica & Birney LLP is located in Garden City, NY serves clients in Nassau County, Suffolk County, Queens, Brooklyn, Staten Island, Bronx & Manhattan.



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