Copyrights

Copyrights are protections rooted in the United States Constitution and various other laws that apply to original works that are fixed in a tangible form of expression. The term ‘fixed in a tangible form of expression’ refers to it being present in a physical way, not just an idea in your head. These can include songs, photos, videos, audio recordings, paintings, movies, software, writing, or sculptures. A copyright does not protect an idea, system, operation method, or fact, although it may protect the way these items are ultimately expressed.

Registering a copyright can be optional and it protects you from other people copying your work. People like photographers often find their photos have been used without permission. A photographer who finds out one of his photos has been taken and used for a large company’s advertising campaign can pursue a claim for copyright infringement, even though that photo was not already registered. In the U.S., a copyright exists as soon as the work is created. In order to pursue a claim, you will need to register the copyright.

Trademarks

A trademark is a sign or symbol that is capable of distinguishing services or goods of one business from those of other businesses. A trademark might be a word, combination of words, letters, numerals, symbols, logos, or packaging and shape. Trademarks can even be sounds, fragrances, or color shades.

Protect your trademark through intellectual property rights. You can register your trademark by filing an application for regional or national protection, and there are options to have it protected internationally as well.

Trademark registration means you have the exclusive right to use that registered mark, or you can license it out for payment. Registering it provides the protection you need in the event there is litigation. Trademarks are typically valid for 10 years, and can be renewed repeatedly once you pay additional fees. 

Patents

A patent covers an invention, and it is issued by the United States Patent and Trademark Office. There are three types of patents:

• Design patent —Granted to someone who invents an original, new, and ornamental design for manufacturing an article
• Utility patent — Granted to someone who discovers or invents a new and useful process
• Plant patent — Granted to someone who discovers or invents and asexually reproduces a new and distinct variety of plant

New patents are generally granted for a term of 20 years from the date the application was filed. In certain situations, the date may be calculated from an earlier related application. Patent grants issued in the U.S. are only effective in the United States and its territories and possessions.

Retaining a Washington, DC Intellectual Property Lawyer

If you have questions on intellectual property and want to pursue registering a trademark or copyright, or are starting a patent application, it’s important to retain a Washington, DC intellectual property attorney. Tobin O’Connor Concino P.C. specializes in a variety of business law topics and can assist with intellectual property matters, including disputes and infringements. Contact our office at 202-362-5900 to schedule a consultation.

What is a Trade Name?

Basically, a trade name is the formal name a company does business under.  You’ll hear it called a DBA (“Doing Business As”), a fictitious name, or an assumed name. This is achieved via a business filing. In Washington D.C., a trade name is filed with the Superintendent of Corporations of DCRA. A trade name can refer to a single word, a name, or any combination of a name or words that is used by a business owner to create a unique identity. It typically doesn’t include the real names of those running the business.

Trade names offer no type of brand protection nor do they grant you the right to unlimited use of your fictitious name.

You’ll need a trade name when you are doing business under any name other than your legal name. For example, Joe Smith sets up a new construction company and calls it Joe Smith Construction. He will need to complete the paperwork and register that as his fictitious business name. DBAs are used in some sole proprietorships and partnerships, as well as LLCs and corporations.

What is a Trademark?

A trademark offers protection for your brand name. It can also protect other things like symbols, slogans, and logos. A trademark can also be associated with your business’s trade name. Since your business name is likely one of your most valuable assets, it’s important to protect that by proceeding with a formal trademark application.

It’s important to distinguish between a trade name and a trademark. The United States Small Business Administration points out that if a business starts using its trade name to identify services and products, people may perceive that its name is acting as a functioning trademark. This is important as it has the potential to infringe on existing trademarks.

Trademarks can be registered on a federal level through the United States Patent and Trademark Office (USPTO). There is an option to file online using the Trademark Electronic Application System (TEAS), but you’ll need to do some research first. Start by identifying what is eligible for a trademark, and then you need to do an existing trademark search through the Trademark Electronic Search System (TESS).

To register a trademark on a state level, you’ll need to check the USPTO’s State Trademark Information page. This can direct you to the specific trademark office where you can do a search and verify the specific state rules.

Retaining a Washington DC Small Business Attorney

The USPTO has authority to issue penalties and fines for possible trademark infringement and clashes, which is why it’s very important to retain a good Washington DC small business lawyer when you’re setting up your business. The attorneys at Tobin O’Connor Concino P.C. are experienced with business startups of all sizes. We can prepare and draft all the necessary paperwork as well. Contact our office at 202-362-5900 today to schedule a consultation.

Resources:

dcra.dc.gov/page/trade-name-registration

uspto.gov/trademarks-getting-started/process-overview/state-trademark-information-links

sba.gov/blogs/difference-between-trade-name-and-trademark-and-why-you-cant-overlook-either

Trademark registration can take months, in some cases over a year. This means doing your due diligence prior to applying is key so you don’t prolong the process by choosing trademarks that get rejected. Also, hiring a knowledgeable Washington DC small business lawyer to help you through the process can help you avoid this list of potential pitfalls.

Don’t Be Generic

Using generic words and terms is a surefire way to get your trademark rejected. As generic words or terms are not distinctive or easily linked to a brand, they generally won’t hold up in court.

Not Registering Your Trademark

Some people say using the “TM” symbol is the common-law trademark, but it is very limited. You should protect your trademark by registering it with the US Patent and Trademark Office. Once the application is granted, you can use the ® symbol.

Not Using it in Commerce

Before you apply for your trademark, you must use it in commerce. The process won’t begin until you’ve started using it in the stream of commerce. You can file an intent to use it, but you only have 36 months to file a statement of use, so it’s best if you start using your intended trademark as soon as possible.

Failure to Do Thorough Search

Digging deep in the USPTO database is essential. And, don’t limit your search to active trademarks, look for exact or similar ones that have been abandoned or canceled. Think outside the box and look for names that may be similar, like cat and kat. Thorough searching up front can help save legal issues down the line if someone comes back and claims you’re using their trademark.

Don’t Forget Your Tagline

Don’t forget about your brand’s tagline. If you have a great tagline, why wouldn’t you want to trademark that too? Remember, in some cases, a tagline can become more of a brand identifier than the logo or name itself!

Failure to Monitor Your Application

Be sure to monitor the status of your application. The Trademark Status and Retrieval system lets users track the status of their application. If the USPTO needs you to respond, you’ll have about six months to respond, otherwise USPTO will cancel your  trademark  or declare it abandoned. From there, you’ll have to pay additional fees to reinstate the application.

Don’t Overestimate the Trademark

Some people assume that if you file a trademark, it covers everything and anything. That’s not the case. Trademark ownership in one class will not give you the right to use it and enforce your brand against someone with a similar trademark in a completely different class of goods.

Small Business Attorney in Washington DC

If you’re in the process of setting up your small business, rely on the team of Tobin O’Connor Concino P.C.; we have years of experience with everything from deciding on the best type of business and drafting all the paperwork through handling legal disputes that arise in the course of day-to-day business. Contact our office today to schedule a consultation.

Resource:

uspto.gov/trademarks-getting-started/trademark-basics/trademark-patent-or-copyright

Definition of Work Made for Hire

Section 101 of the Copyright Act defines what constitutes a “work made for hire.” It explains work made for hire as a work that is prepared by an employee in the scope of their employment; or a work ordered or commissioned for use as one of the following:

• Part of a movie or audiovisual work
• Contribution for collective work
• Translation
• Compilation
• Supplementary work prepared as secondary adjunct to a work for purpose of introducing, concluding, illustrating, revising, commenting upon, or assisting in the use of the other work
• Tests or answer material for a test
• Instructional text which can be literary, pictorial, or graphic work intended to be used in systematic instructional activities
• An atlas

If a work doesn’t fall under one of the categories above, it is still a work made for hire if there is an express written agreement signed by both parties indicating the work shall be considered a work made for hire.

Who is an Employee

The courts often have to determine what is a work made for hire as there isn’t an all-encompassing legal definition that fits all scenarios. The first step is to determine whether the individual is an employee or independent contractor. If it’s determined to be an employee, the first section that references work created by an employee will apply. Independent contractors typically fall under the second section, and their work can only be determined to be a work for hire if it falls under one of the categories and there is a written agreement that specifies the work is a work made for hire.

To determine the employer-employee relationship, courts look at factors like how much control the employer has over the employee’s work, how much control the employer has over the employee itself, and conduct of the employer. Conduct of the employer deals with things like does the company provide benefits to the employee or withhold taxes from payments, etc.

Copyright Term and Termination of Rights

Works made for hire are protected for 95 years from publication date or 120 years from the creation date, whichever one comes first. To compare against regular copyrights, a standard non-work made for hire is protected for the life of the creator plus 70 years.

In standard copyrights, the law provides certain grants of the rights which can be terminated 35 to 40 years after the grant was made or after publication, depending on some circumstances. In the case of works made for hire, copyright law termination provisions don’t apply.

Retaining a Washington D.C. Business Lawyer

If you are concerned about copyright issues or are potentially facing the issue of a work made for hire, it’s important you have a good Washington D.C. business lawyer. Contact the team at Tobin O’Connor Concino P.C. at 202-362-5900 to schedule a consultation with one of our knowledgeable business litigation attorneys.

Resource:

copyright.gov/circs/circ09.pdf

In some cases, small businesses neglect the basics of intellectual property law, potentially losing out on protecting their creations, or worse, being sued for violating someone else’s intellectual property. If you’re a business owner, consider retaining the services of a knowledgeable Washington D.C. area small business lawyer to ensure your intellectual assets are protected.

Types of Intellectual Property

There are different types of intellectual property, but three of the most familiar categories are trademarks, copyrights, and patents.

• Trademarks: A sign that distinguishes goods and/or services of one business apart from those of other businesses.
• Copyrights: Legal term used to describe the rights creators have over their creations, which may include books, music, paintings, photos, films, computer programs, ads, technical drawings, and more. Only expressions are covered, not ideas, procedures, operation methods, etc.
• Patents: Exclusive right granted for an invention which provides the patent owner rights to decide how or if an invention can be used by others.

Protecting Your Intellectual Property

When it comes to copyrights, it’s generally agreed in most countries that copyright protection is automatic and doesn’t require registration or formal notice. This came about from the Berne Convention for the Protection of Literary and Artistic Works. There are some countries that do have systems in place to allow for voluntary registration, so it’s worth it to check on local requirements if you have specific business ties with another country. One benefit of a copyright is economic rights, which allows the rightful owner to receive financial benefits from the use of his works by others. Protection does have a time limit, which can vary based on law. Member countries of the Berne Convention typically hold that the time limit should be equal to or longer than 50 years after the creator’s death.

To protect a trademark, you’ll need to register and pay fees to the national/regional trademark office. If you’re looking for international protection, you can either file an application with each country you’re seeking protection in, or look into WIPO’s Madrid System, which lets you file a single application and pay one set of fees to receive protection in up to 116 countries. Protection of a trademark offers exclusive rights to the use of the registered trademark. The duration of registration can vary, but 10 years is a common timeframe. It can be renewed when more fees are paid.

Patents give the owner exclusive rights to prevent or stop others from benefiting commercially from your patented invention. This means that others cannot use, make, distribute, import, or sell your invention without your consent. Patents are typically only valid in the country or region where it was filed, and it’s only valid for a limited time, typically 20 years from the filing date.

Hiring a Small Business Lawyer

If you have questions on intellectual property or require other legal assistance, let the experienced team at Tobin O’Connor Concino P.C. in Washington D.C. handle all your small business needs. Contact us at 202-362-5900 to schedule a consultation.

Resource:

wipo.int/treaties/en/text.jsp?file_id=283698