LAW OFFICES OF JOSEPH R. NOVICK, ESQ.

(908) 892-6859

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Frequently Asked Questions:

Trademark & Copyright

Trademarks

What is a trademark/service mark? A trademark or service mark can be a word, a logo, a package design or a combination used by a manufacturer/merchant to identify and distinguish its goods or services. Examples of trademarks include brand names, trade dress, certification marks and collective marks.

How do I obtain trademark rights? By using a mark in connection with goods, or displaying it in the sale or advertising of services, one receives automatic state law trademark rights in the geographic area of use. For national rights, one must register with the United States Patent & Trademark Office.

What are the advantages of registering my mark? Registering your mark with the United States Patent & Trademark Office provides constructive notice to the public of your claim to ownership of the mark. One cannot recover damages under federal law unless the infringer had notice of the mark’s registration. Registration also provides a legal presumption of your ownership of the mark and your exclusive right to use the mark nationwide in connection with the specific goods and/or services. Also, the mark must be registered before one can file a lawsuit concerning the mark in federal court. Finally, registration allows the use of the U.S. registration as a basis to obtain registration in foreign countries as well as giving the owner the ability to register with the U.S. Customs Service to prevent importation of infringing foreign goods.

When can I use ®? Owners of unregistered marks may only use TM or SM. The owner of a registered mark may use ®, or Reg. U.S. Pat. & Tm. Off.

How long do trademark rights last? Rights in a mark continue indefinitely as long as the mark is neither abandoned nor permitted to lose its significance by becoming generic. A mark owner must file a declaration of use after 6 and 10 years confirming the mark is still in use. Finally, rights in a mark must be renewed every 10 years.

Who owns a mark? The first user of a mark. Trademark rights in the US are based on use.

What infringes a trademark? It is an infringement for another entity to use the same or a confusingly similar mark, on the same or closely related goods or services, in the same geographical area, or in some cases, nationally if there is a federal registration. Additionally, the concepts of unfair competition, dilution and tarnishment can be used to protect against different types of infringement.

What are my remedies if my mark is infringed? Remedies for infringement include: obtaining an injunction, the infringer’s profits, damages for past infringement, destruction or recall of infringing goods, as well as costs and attorneys fees. However, one cannot recover damages under federal law unless the infringer had actual notice of the mark’s registration or you use a trademark registration notice.

What are the remedies for trademark cybersquatting? Remedies for cybersquatting include cancellation of the domain name and statutory damages.

What are the remedies for trademark counterfeiting? Remedies for counterfeiting include: fines or imprisonment for the counterfeiter, seizure of their equipment, and destruction of counterfeited articles.

If I register my mark in the US, do I have international trademark protection? No, most foreign countries protection attaches at filing, not upon use. An additional registration in foreign territories is required.


Copyrights

What is a copyright? Copyright protection exists in original works of authorship fixed in any tangible medium of expression. Works of authorship include: literary works, musical works (including any accompanying words), dramatic works (including any accompanying music), pantomimes and choreographic works, pictorial, graphic and sculptural works, motion pictures and other audiovisual works, sound recordings and architectural works.

How do I obtain copyright rights? Copyright protection arises as soon as a work of authorship is fixed. Registration with the U.S. Copyright Office is currently not required, but is preferable.

What are the advantages of registering my copyright? Registration provides notice to the public that you are claiming rights in the work. Also, the certificate of registration (made before or within 5 years after 1st publication) constitutes prima facie evidence of the validity of the copyright and the facts stated in the certificate, thus alleviating much of the burden of proof if litigation arises. In the U.S., a copyright owner must register the copyright in a work in order to bring an infringement action in federal court. A copyright must be registered in order to recover attorney’s fees during litigation. Finally, statutory damages, available if a copyright owner cannot prove actual damages, are only available if copyright in a work was registered prior to the alleged infringement.

Do I have to use the © symbol? Yes, if the work was created prior to 1989. Currently, it is not required, but the use of the © symbol is preferred as it gives notice to the public that you are claiming rights in the work. A suitable notice would include the symbol, the date of creation, and the name of the author, i.e., © 2008 Gary Laurie.

How long do copyright rights last? For works created on or after January 1, 1978, the basic term is the life of the author plus 70 years. There are different durations for works created or published earlier than January 1, 1978. Common law copyright protection is perpetual unless and until the author avails himself of federal protection.

Who owns a copyright? Generally, the author of the work owns the copyright. The authors of a joint work are co-owners of any copyright in the work. However, an employer will own the copyright of a work created by an employee if the work is found to be a “work made for hire.”

What infringes a copyright?  A copyright infringer is someone who violates the exclusive rights of a copyright owner. Subject to certain exceptions, the owner of a copyright has the exclusive right to do and to authorize any of the following: (1) to reproduce the copyrighted work; (2) to prepare derivative works based upon the copyrighted work; (3) to distribute copies of the copyrighted work to the public; (4) to perform the copyrighted work publicly in the case of literary, musical, dramatic, and choreographic works, pantomimes, and motion pictures and other audiovisual works; (5) to display the copyrighted work publicly in the case of literary, musical, dramatic, and choreographic works, pantomimes, and pictorial, graphic or sculptural works, including the individual images of a motion picture or other audiovisual work; (6) to perform the copyrighted work publicly by means of a digital audio transmission in the case of sound recordings. There are also theories of vicarious liability and contributory infringement to be used against third party infringers.  

What are my remedies if my copyright is infringed? A copyright owner may seek an injunction against infringer to halt the infringing activities. A copyright owner may also seek actual damages and the infringer’s profits or statutory damages. Where an infringement is willful, courts may increase the amount of statutory damages awarded. Costs and attorneys fees are available in the court’s discretion. One may also seek impoundment and destruction of the infringing articles, as well as criminal sanctions against an infringer.