2. DISCLAIMER
The information provided in this slideshow is for general information purposes only
and does not constitute advertising, a solicitation or legal advice. The information
contained in the slideshow may not reflect the most current market and legal
developments and may not address all relevant business or legal issues. Neither the
availability, transmission, receipt or use of the slideshow is intended to create, or
constitutes formation of, an attorney client relationship. You should not rely on the
information contained within the slideshow without consulting an attorney first.
Importantly, information in this slideshow is not promised nor guaranteed to be
complete or correct, as intellectual property law is constantly changing and the
slideshow does not include the points that I discussed which were not on slides.
Roger R. Quiles, Esq. expressly disclaims all liability, loss, or risk incurred as a direct or
indirect consequence of the use of the slideshow.
Feel free to share this slideshow with others for noncommercial purposes. The
slideshow’s contents may not be altered. The images contained in the slideshow
are the intellectual property of their respective owners. Roger R. Quiles, Esq. makes
no claim to ownership of any of the marks contained in the slideshow.
4. What is a Copyright?
A copyright is 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.
Copyrights last for the life of the creator +70 years if
created after 1978
If created between 1922 and 1978, then the copyright
lasts for 95 years from publication
If created before 1922, its in the public domain
5. What does that mean?
The work must be original,
or created by you
The work must be fixed in a
tangible medium of
expression
This means the work is
permanent/stable
enough to be
perceived, reproduced
or communicated for
more than a transitory
duration
Some examples of fixation
Book
Painting
Drawing
recording
Additional requirements
A copyrightable work
must contain a “modicum
of creativity”
6. Derivative Works
A derivative work is something initially created by
another which you alter in a creative and original
fashion
The totality of changes must be substantial so as to
clearly identify the work as being a separate entity (The
work must be transformative)
Your alterations are copyrightable
8. What does copyright not protect?
Copyright does not protect facts or ideas
However, copyright can protect an original, creative
expression of facts and ideas if fixed in a tangible
medium
Phonebook- Not copyrightable
Content is a listing of facts (peoples’ phone numbers)
Organized alphabetically
Not sufficiently creative
9. Do I need to register a copyright?
Copyright protection attaches once the work is fixed in a
tangible form of expression
No need for “poor man’s copyright,” which is mailing to
yourself the finished work
There are substantial benefits though to registering a
copyright
10. Benefits of Registration
Must register before you sue for infringement
Provides notice that you own the copyright
Statutory damages
$750-$30,000 per work irrespective of actual damages suffered
If work is published, must be registered within 3 months of publication
If work is unpublished, must be registered within 1 month of learning the work was
infringed upon
Attorney’s fees
Make’s it easier to transfer your copyright
Presumption of validity in court if registered within 5 years of pub.
11. How to Register a Copyright
Go to www.copyright.gov
Click Register a Copyright
Click new user registration to create an account
After you log in, click register a new claim on the left
Answer the prompts to be directed to the correct form
Fill out the form and submit a copy or two of your work
Pay the $35 application fee
Your copyright will be processed in about 8 months
12. How to Protect Your Works Online
Place a copyright notice on your work- “Copyright Roger Quiles 2015. All
Rights Reserved”
Define others’ rights in utilizing your work
Create a policy and link to it on your work that outlines how people may
use your content with and without permission
Search for your work on Google
Whether its text or an image, Google searches are a great place to
begin a search to see if your content is being used inappropriately
Contact any infringer
Request that your content be removed. If they don’t contact their
website’s ISP and send a Takedown notice
13. How Copyrights Apply to
Businesses
Logos
Websites
Software (same status as literary work)
Blog posts
Product designs (if artistic elements can be separated from
functional elements)
Clothes: original prints and patterns, unique color arrangements,
novel combination of elements
Architectural designs (if artistic elements can be separated from
functional elements)
15. What is a trademark?
A trademark is a word, phrase, symbol or design, or a
combination thereof, that identifies and distinguishes the
source of the goods of one party from those of others
A servicemark is the same thing, except it identifies and
distinguishes the source of a service rather than goods.
Oftentimes, the term “trademark” is used to mean both
16. What can’t you trademark?
Generic terms
Descriptive terms (“Sweet” for ice cream)
Your name (unless secondary meaning- Kraft for Cheese)
Misleading terms (Can’t say “sugar sweet” for something artificially
sweetened)
Location terms (“New York fashion” for clothes)
Name of the goods in another language (“Gelato”)
Commonly used words in an industry (“hamburger,” “software”)
Scandolous, offensive or immoral language
17. How to Apply for Trademark
1. Search for your desired mark and similar marks on TESS
2. Start the application at TEAS (Trademark Electronic
Application System)
3. Identify your mark format: character mark, design mark,
or sound mark
4. Identify the goods and services the mark will apply to
5. Identify the proper “basis” for filing a trademark
application
6. Submit samples of how the mark is used in commerce
7. Pay the fee
18. Step 1: Searching for marks
This isn’t going to be easy
Search for your exact desired mark on TESS
Search for synonyms of EVERYTHING
If doing an image search, use generic terms (ex. Dog for
greyhound)
Pay attention to any results with a similar “basis” (or class)
for registration
Search for the elements of your mark
19. Step 3: Mark Format
Character Mark
Made up of words and phrases
Design mark
Pictograph elements
Design elements
Logos
Sound mark
Made up of sounds
Ex: BEST BUY
20. Step 4: Identifying the
Goods/Services
Your mark must be used in connection with providing
goods/services
These goods and services must be identified in order to
determine the basis of your trademark
Easy to determine if you have a specific brand identity
planned
Difficult to determine when trademarking a new
business, as you may not yet know all fields your business
will be involved in
21. Step 5: The proper basis
When applying for a trademark, you must identify the
particular class your mark is to be registered in
Multiple classes, multiple filing fees
Search by generics of what you provide (software, real
estate, hardware, classes, etc.)
Multiple class numbers may apply
Select as many as you feel directly apply to the
service/goods you are currently providing
22. Steps 6 & 7: Specimens and Fees
You must provide specimens of the mark as it used in commerce
Goods:
Website showing product near the mark with purchase info
Photo of product with mark on product
Labels, tags, and packaging showing the mark
For software- instruction manual and screen printouts of actual program/launch screens
Services
Advertising
Menus
Marketing materials
Business signage
Fees: $225 per class
23. Next Steps
Application will be reviewed by an examining attorney
May request further specimens or info
When satisfied, the mark is published for an open
comment period
Other mark holders can challenge the legal sufficiency of your
trademark in an Opposition
Opposition is similar to a court proceeding but is held before the
Trademark Trial and Appeal Board
If there is no Opposition, or if successful in an Opposition,
then a registration certificate is issued
24. Intent to Use Applications
You can file a trademark for a mark you have yet to use in
commerce under certain conditions
How:
After you select the class of product/service you must select
whether the mark is being used in commerce or is not yet used in
commerce
Select “no use of mark yet, intending to use” and complete the
application as normal
ITU is examined based on its application and following all steps
(publication for Opposition) a letter is issued to the mark holder
6 months from that point to file a Statement of Use form
25. How Trademarks Apply to
Businesses
Business name
Logos
Brands
Colors
Sounds when starting a
program
Catchphrases
26. Differences between Trademark
and Copyright
Copyright is geared toward protecting literary, artistic,
and creative works
Trademark protects items that help define a company,
such as a logo and brand
Ex: A publishing company can trademark its name, logo
and sometimes the names of the books it publishes.
However, it can copyright the content of the books.
