Introduction to Copyrights & TrademarksBy : Roger Quiles

April 2015

DISCLAIMERThe 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.

Introduction toCopyrights and TrademarksBY ROGER R. QUILES, ESQ.

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.

X Copyrights last for the life of the creator +70 years if created after 1978

X If created between 1922 and 1978, then the copyright lasts for 95 years from publication

X If created before 1922, its in the public domain

What does that mean?X The work must be original,

or created by you

X The work must be fixed in a tangible medium of expressionX This means the work is

permanent/stable enough to be perceived, reproduced or communicated for more than a transitory duration

Some examples of fixationX BookX PaintingX DrawingX recording

Additional requirementsX A copyrightable work

must contain a “modicum of creativity”

Derivative Works

X A derivative work is something initially created by another which you alter in a creative and original fashion

X The totality of changes must be substantial so as to clearly identify the work as being a separate entity (The work must be transformative)

X Your alterations are copyrightable

Example

What does copyright not protect?

X Copyright does not protect facts or ideasX However, copyright can protect an original, creative

expression of facts and ideas if fixed in a tangible medium

X Phonebook- Not copyrightableXContent is a listing of facts (peoples’ phone numbers)XOrganized alphabetically

XNot sufficiently creative

Do I need to register a copyright?

X Copyright protection attaches once the work is fixed in a tangible form of expression

X No need for “poor man’s copyright,” which is mailing to yourself the finished work

X There are substantial benefits though to registering a copyright

Benefits of RegistrationX Must register before you sue for infringementX Provides notice that you own the copyrightX Statutory damages

X $750-$30,000 per work irrespective of actual damages suffered

X If work is published, must be registered within 3 months of publication

X If work is unpublished, must be registered within 1 month of learning the work was infringed upon

X Attorney’s feesX Make’s it easier to transfer your copyrightX Presumption of validity in court if registered within 5 years of pub.

How to Register a CopyrightX Go to www.copyright.govX Click Register a CopyrightX Click new user registration to create an accountX After you log in, click register a new claim on the leftX Answer the prompts to be directed to the correct formX Fill out the form and submit a copy or two of your workX Pay the $35 application feeX Your copyright will be processed in about 8 months

How to Protect Your Works OnlineX Place a copyright notice on your work- “Copyright Roger Quiles 2015. All

Rights Reserved”

X Define others’ rights in utilizing your work

X Create a policy and link to it on your work that outlines how people may use your content with and without permission

X Search for your work on Google

X 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

X Contact any infringer

X Request that your content be removed. If they don’t contact their website’s ISP and send a Takedown notice

How Copyrights Apply to Businesses

X LogosX WebsitesX Software (same status as literary work)X Blog postsX Product designs (if artistic elements can be separated from

functional elements)X Clothes: original prints and patterns, unique color arrangements,

novel combination of elementsX Architectural designs (if artistic elements can be separated from

functional elements)

Trademarks

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

What can’t you trademark?

X Generic termsX Descriptive terms (“Sweet” for ice cream)X Your name (unless secondary meaning- Kraft for Cheese)X Misleading terms (Can’t say “sugar sweet” for something artificially

sweetened)X Location terms (“New York fashion” for clothes)X Name of the goods in another language (“Gelato”)X Commonly used words in an industry (“hamburger,” “software”)X Scandolous, offensive or immoral language

How to Apply for Trademark1. Search for your desired mark and similar marks on TESS2. Start the application at TEAS (Trademark Electronic

Application System)3. Identify your mark format: character mark, design mark,

or sound mark4. Identify the goods and services the mark will apply to5. Identify the proper “basis” for filing a trademark

application6. Submit samples of how the mark is used in commerce7. Pay the fee

Step 1: Searching for marks

X This isn’t going to be easyX Search for your exact desired mark on TESSX Search for synonyms of EVERYTHINGX If doing an image search, use generic terms (ex. Dog for

greyhound)X Pay attention to any results with a similar “basis” (or class)

for registrationX Search for the elements of your mark

Step 3: Mark Format

X Character MarkX Made up of words and phrases

X Design markX Pictograph elements

X Design elements

X Logos

X Sound markX Made up of sounds

Ex: BEST BUY

Step 4: Identifying the Goods/Services

X Your mark must be used in connection with providing goods/services

X These goods and services must be identified in order to determine the basis of your trademark

X Easy to determine if you have a specific brand identity planned

X Difficult to determine when trademarking a new business, as you may not yet know all fields your business will be involved in

Step 5: The proper basis

X When applying for a trademark, you must identify the particular class your mark is to be registered inXMultiple classes, multiple filing fees

X Search by generics of what you provide (software, real estate, hardware, classes, etc.)XMultiple class numbers may apply

X Select as many as you feel directly apply to the service/goods you are currently providing

Steps 6 & 7: Specimens and FeesX You must provide specimens of the mark as it used in commerce

X Goods:

X Website showing product near the mark with purchase info

X Photo of product with mark on product

X Labels, tags, and packaging showing the mark

X For software- instruction manual and screen printouts of actual program/launch screens

X ServicesX Advertising

X Menus

X Marketing materials

X Business signage

X Fees: $225 per class

Next Steps

X Application will be reviewed by an examining attorneyX May request further specimens or info

X When satisfied, the mark is published for an open comment periodX Other mark holders can challenge the legal sufficiency of your

trademark in an OppositionX Opposition is similar to a court proceeding but is held before the

Trademark Trial and Appeal Board

X If there is no Opposition, or if successful in an Opposition, then a registration certificate is issued

Intent to Use ApplicationsX You can file a trademark for a mark you have yet to use in

commerce under certain conditionsX How:

X 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

X Select “no use of mark yet, intending to use” and complete the application as normal

X ITU is examined based on its application and following all steps (publication for Opposition) a letter is issued to the mark holder

X 6 months from that point to file a Statement of Use form

How Trademarks Apply to Businesses

X Business nameX LogosX BrandsX ColorsX Sounds when starting a

programX Catchphrases

Differences between Trademark and Copyright

X Copyright is geared toward protecting literary, artistic, and creative works

X Trademark protects items that help define a company, such as a logo and brand

X 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.

Thank you!

Roger R. Quiles, Esq.(917) 477-7942

Roger@RRQlaw.com

get started at www.lawtrades.com

Registering a Trademark or Copyright?