Patent, Copyright & Trademark

The Trusted Name

(but don’t take our word for it)

“In Nolo you can trust.”

THE NEW YORK TIMES

“Nolo is always there in a jam as the nation’s premier publisher of

do-it-yourself legal books.”

NEWSWEEK

“Nolo publications . . . guide people simply through the how,

when, where and why of the law.”

THE WASHINGTON POST

“[Nolo’s] . . . material is developed by experienced attorneys who

have a knack for making complicated material accessible.”

LIBRARY JOURNAL

“When it comes to self-help legal stuff, nobody does a better job

than Nolo . . .”

USA TODAY

“The most prominent U.S. publisher of self-help legal aids.”

TIME MAGAZINE

“Nolo is a pioneer in both consumer and business self-help books

and software.”

LOS ANGELES TIMES

13th Edition

Patent,

Copyright

& Trademark

An Intellectual Property Desk Reference

Attorney Richard Stim

THIRTEENTH

EDITION

MARCH 2014

Cover Design SUSAN PUTNEY

Book Design

TERRI HEARSH

Proofreading ROBERT WELLS

Index THÉRÈSE SHERE

Printing BANG PRINTING

ISSN: 2326-3946 (print) ISSN: 2332-4368 (online) ISBN: 978-1-4133-

1969-9 (pbk) ISBN: 978-1-41331970-5 (epub ebook) This book covers

only United States law, unless it specifically states otherwise.

Copyright © 1996, 1997, 1999, 2000, 2002, 2003, 2004, 2006, 2007,

2009, 2010, 2012, and 2014 by Nolo and Richard Stim. All rights

reserved. The NOLO trademark is registered in the U.S. Patent and

Trademark Office. Printed in the U.S.A.

No part of this publication may be reproduced, stored in a retrieval

system, or transmitted in any form or by any means, electronic,

mechanical, photocopying, recording, or otherwise without prior written

permission. Reproduction prohibitions do not apply to the forms

contained in this product when reproduced for personal use. For

information on bulk purchases or corporate premium sales, please

contact the Special Sales Department. Call 800-955-4775 or write to

Nolo, 950 Parker Street, Berkeley, California 94710.

Please note

We believe accurate, plain-English legal information should help you solve many of your

own legal problems. But this text is not a substitute for personalized advice from a

knowledgeable lawyer. If you want the help of a trained professional—and we’ll always

point out situations in which we think that’s a good idea—consult an attorney licensed to

practice in your state.

Dedication

This book is dedicated to Steve Elias who passed away in 2012. Steve

wrote and edited the first three editions at a time when intellectual

property was just beginning to surface in mainstream media. His

contributions to the legal self-help movement were crucial to its success

and the world is a different place for his efforts.

About the Author

Richard Stim is an attorney specializing in intellectual property and is an

editor at Nolo. He is the author of several other intellectual property

books, including Getting Permission: How to License & Clear Copyrighted

Materials Online & Off (Nolo); Music Law: How to Run Your Band’s

Business (Nolo); and Profit From Your Idea: How to Make Smart Licensing

Deals (Nolo). He enjoys watching movies but not if they’re longer than

two hours.

Table of Contents

Introduction

Intellectual Property Law: The Basics

Determining What Rights Apply to Your Work

Part 1: Patent Law

Patent Law: Overview

Patent Law: Definitions

Patent Law: Forms

Patent Application Basics

Preparing a Design Patent Application

Part 2: Copyright Law

Copyright Law: Overview

Copyright Law: Definitions

Copyright Law: Forms

Preparing a Copyright Application

Preparing an Electronic (eCO) Copyright Application

Preparing a Traditional Print Copyright Application

Part 3: Trademark Law

Trademark Law: Overview

Trademark Law: Definitions

Trademark Law: Forms

Preparing a Federal Trademark Application

The Trademark Application: the TEAS System

Example of a TEAS Plus Application

Part 4: Trade Secret Law

Trade Secret Law: Overview

Trade Secret Law: Definitions

Trade Secret Law: Forms

Preparing a Nondisclosure Agreement

Index

Introduction

A photographer is wondering why an advertising agency can copy her

photographs without permission. An inventor is wondering why he

cannot stop a foreign manufacturer from making his patented invention.

A man named McDonald is wondering why he cannot open a restaurant

called McDonald’s. And a woman who spends $600 on a software

program is wondering why it’s illegal to share copies with her friends.

Welcome to the world of intellectual property.

Writers, inventors, and artists transform ideas into tangible property.

When this property qualifies under law for protection it’s known as

intellectual property (or IP)—for example, patents, copyrights,

trademarks, and trade secrets. Creators of IP are granted certain rights.

For example, the author of a book can prevent others from copying it;

and the owner of a patented invention can prevent others from making,

using, or selling the device.

After a time, these exclusive rights may be lost or taken from the

owner and given to the public. For example, copyright protection has

ended for Mark Twain and anyone is free to copy his books Huckleberry

Finn and The Adventures of Tom Sawyer. The patent on the original roller

blade invention has expired and companies are now free to copy the

device.

But not all products of the mind can achieve protection under

intellectual property law. Determining what can be protected and why

used to be the exclusive domain of patent, copyright, and trademark

lawyers. Unfortunately, few businesses, nonprofits, or educational

institutions can afford to call an attorney with every question. And

lately, there are a lot more questions. Globalization, digital data, and the

Internet have all contributed to a greater need for information about IP.

The truth is that intellectual property is not an inscrutable discipline.

Anybody can understand the basics. This book is proof that IP law is not

a mystery. For over 15 years, engineers, scientists, businesspeople,

academics, and attorneys have used this book as a reference for

understanding basic patent, copyright, trademark, and trade secret

principles. This helpful desk reference has evolved to include hundreds

of definitions, statutes, forms, and bits of how-to information about

protecting and preserving intellectual property.

So before you pick up the phone to call an attorney, check out this

book. It may save you time and money . . . and it will hopefully make

your job easier, your employer more secure, and your business more

prosperous.

Intellectual Property Law: The Basics

Intellectual property laws, along with court decisions and regulations,

establish rules for the following activities:

• the registration and administration of intellectual property

• selling or licensing of intellectual property, and

• resolving disputes between companies making or selling similar

intellectual property products and services.

Intellectual property laws don’t prevent someone from stepping on

the owner’s rights. But the laws do give an owner the ammunition to

take a trespasser to court. This is the most well-known benefit of owning

intellectual property: The owner acquires exclusive rights and can file a

lawsuit to stop others who use the property without authorization. If the

intellectual property owner does not confront the person or company

who has acted without permission, then the illegal activity will likely

continue.

Determining What Rights Apply to Your Work

Intellectual property law consists of several separate and overlapping

legal disciplines, each with their own characteristics and terminology.

This book is divided into four sections, each for a different type of

intellectual property. If you are concerned about your own creation,

you’ll first need to know what form (or forms) of intellectual property

applies to it.

• Patent law establishes three types of patents: Utility patents (the

most common) are awarded for new processes, machines,

manufactures, or compositions of matter, or new uses of any of the

above. The utility patent owner has the exclusive right to make,

use, and sell the invention for a limited term—it expires 20 years

after the date the application was filed. Design patents are

awarded to new nonfunctional, ornamental, or aesthetic design

elements of an invention or product. A design patent (for a new but

nonfunctional design) lasts 14 years after the date the patent issues.

Plant patents are granted for new asexually reproducible plants

(plants reproducible by grafting or cloning). A plant patent expires

20 years from the date the patent was filed.

• Copyright law protects expressions of creative ideas such as songs,

artwork, writing, films, software, architecture, and video games.

Copyright law does not protect ideas and facts, only the manner in

which those ideas and facts are expressed. Copyright protection

lasts a long time, often more than 100 years.

• Trademark law protects marketing signifiers such as the name of a

product or service or the symbols, logos, shapes, designs, sounds, or

smells used to identify it. This protection can last as long as the

company uses the trademark in commerce—for example, many

trademarks, such as Coca-Cola and General Mills, have been

protected for over a century.

• Trade secret law commonly protects confidential designs, devices,

processes, compositions, techniques, formulas, information, or

recipes. A trade secret is any confidential information that gives a

business a competitive advantage. Under trade secret law, the

owner of this confidential information can prevent others from

using the information if it was obtained illegally. Trade secret

protection lasts for as long as the business maintains the secret.

Is It Primarily Functional or Aesthetic?

Intellectual property rights are often divided between functional elements (protected by

utility patents and trade secrets) and nonfunctional elements (protected by trademarks,

copyrights, and design patents). Sometimes you can start your analysis of intellectual

property protection by asking the question: “Does this creation accomplish a task or goal or

is it done primarily to appeal to the senses or provide information or entertainment?”

Legal Basis of Intellectual Property Laws

The sources of intellectual property laws vary according to the subject matter. Copyright

and patent laws are derived from powers originating in the U.S. Constitution and are

specifically and exclusively implemented by federal statutes. In all of these areas, court

decisions provide important principles governing the application of intellectual property

laws. Trademark and trade secret laws originate primarily in both federal and state statutes

but also are derived from court decisions that apply principles developed by earlier courts

as part of the common law.

Forms of Intellectual Property: How They Overlap

Sometimes, trade secret, copyright, patent, and trademark laws intersect

with each other with respect to a particular product or service. Some

common examples of this are as follows:

• Trade secret and patent. It is possible to pursue a patent

application while simultaneously maintaining the invention as a

trade secret, at least for the first 18 months of the U.S. patent

application process. The U.S. Patent and Trademark Office (USPTO)

regards applications as confidential until they are published. Unless

the applicant files a Nonpublication Request (NPR) at the time of

filing, and doesn’t file for a patent outside the United States, the

PTO will publish the application within 18 months of the filing

date.

• Copyright and trademark. It’s not uncommon for an item to be

protected under both trademark and copyright law. For example,

the expressive artwork in a package design may be protected by

copyright, while the overall look and feel of the package may be

protected as a form of trademark. Likewise, a commercial may

include some material covered by copyright (for example, a jingle)

and other material covered by trademark (the product or company

name). The difference here is that copyright protects the literal

expression, while trademark protects whatever is used to designate

the source of a product or service being offered in the marketplace.

• Patent, copyright, and trademark. Patent law can intersect with

copyright and trademark law in the case of certain products. For

example, the designer of a toy or of jewelry may protect the

device’s name or appearance (as a trademark), the design of the

item (design patent), the appearance of any artwork or graphics

(copyright), and the novel, nonobvious functionality of the device

(utility patent).

IP Around the World

Most countries in the world have entered into intellectual property

treaties that afford members mutual rights. This does not mean that

anything protected in the United States will necessarily be protected

abroad. However, intellectual property that is protected in America may

achieve protection abroad under the standardized rules established by

the various treaties. For example, the Madrid Protocol has standardized

the process for obtaining trademark protection among member

countries. Similarly, the Berne Convention establishes international

copyright principles, and the Paris Convention and the Patent

Cooperation Treaty offer harmonization for owners of patents. Trade

secrets may receive international protection under GATT (General

Agreement on Tariffs and Trade).

Get Updates and More Online

When there are important changes to the information in this book, we’ll post updates

online, on a page dedicated to this book: www.nolo.com/back-of-book/PCTM.html