The legalities of patent, trademark and trade dress, Four Corners Business Journal, Mar. 6-19, 2006

PAGOSA SPRINGS — A creation of the mind, be it an invention, a literary or artistic work, or the symbols, names, images and designs used in commerce, is called intellectual property.

Intellectual property is divided into two categories: Industrial property, which includes inventions (patents), trademarks, industrial designs, and geographic indications of source; and Copyright, which includes literary and artistic works such as novels, poems and plays, films, musical works, artistic works such as drawings, paintings, photographs and sculptures, and architectural designs.

The Shy Rabbit art center in Pagosa Springs recently hosted Colorado Lawyers for the Arts board member Christopher Beall from Faegre & Benson in Denver. Beall, an IP litigator, discussed the finer points of IP: Patents; Copyright; Trademark and Trade Secrets. Issues critically important for artists, writers, musicians and performers to understand, but frequently overlooked until it is too late.

This week, the Business Journal features the industrial property of patents and trademarks. In the March 20 issue we will explore legal issues for artists on the Internet. Look for further articles to cover the basics of contracts, licenses and entity formation in future issues.

In the world of intellectual property, there are other forms of protection besides copyright.

PATENT

A patent typically applies to a new non-obvious useful invention. A patent can be for something utilitarian or it can be for a new, non-obvious ornamental invention or design. Jewelry artist David Yurman owns a design patent for his cable link bracelet. A patent lasts 19 years from the date of issuance.

A patent is beneficial for an artist whose work is at risk of being knocked off in large quantities. The authority of patent allows shipments to be stopped at the border. Many artists who are finding their work copied in Hong Kong and shipped back into America and sold to mass retailers, could help themselves by applying for a patent.

With a copyright, to prove infringement, the artist, writer or musician must be able to prove that the person copying the work had access to the original. With a patent, access is not an issue. It doesn’t matter if a jewelry artist has ever seen the work of David Yurman; if they create a cable link bracelet with similar structure as that patented by David Yurman, then the patent has been violated.

TRADEMARK

A trademark is any word, name, symbol or device or combination thereof used by a person to identify and distinguish his or her goods or services from those of others and to indicate the source of the work. Trademark law is designed to protect consumers. No one can use a swoosh mark to make running shoes.

A swoosh mark prevents consumers running shoes and apparel can sport the swoosh mark.

In the United States, registration of a Trademark is not required for protection. Trademark priority is established by: 1) Being the first to use a mark for particular goods or services in a geographic area; or 2) Filing a federal application based on use, an intent-to-use, or a foreign filing that matures to registration. Trademark rights arise when the mark, name, symbol, device or combination are used regularly in the marketplace.

Trademark law protects the owner from dilution and from the likelihood of confusion. Trademarks are very clear identifiers of a product. The Coca Cola label, the Pepsi can, the Gateway computer cow box, Kodak, Exxon — only the owners of these famous marks or names can use them, and the distinctive quality of a mark cannot be tarnished, mutilated or diluted in use by another.

A simple Trademark search begins by searching the Yellow Pages for the common law use of a name or trademark. An official search to determine if a trademark is already in use costs between $600-$5,000, depending on the complexity.
Fair use of trademark is more complex than fair use of a copyright. The only clear fair use of trademark is in all forms of news reporting and news commentary. A trademark may be used fairly by another person in comparative commercial advertising or promotion to identify a competing good or service. Think Coke and Pepsi ads that use the competitors name or trademark to say their product is better.

In determining the likelihood of Trademark confusion in fair use the court looks at the distinctiveness of the senior mark; the similarity of the marks; if the goods or services are related; the consumer care at the point of purchase; the junior user’s intent; the trade channels and the likelihood that the consumer can bridge the gap; and at any actual confusion created. There are two types of fair use: (descriptive and nominative.)

Although trademark rights may be acquired in descriptive words and images, non-trademark holders may use such words in their descriptive sense, but not as a trademark. Bausch & Lomb may call their contact lens solution Sensitive Eyes Plus but a competitor may say that their saline solution is “especially for sensitive eyes.” And while Car-Freshener owns the trademark in pine-tree-shaped car air fresheners, the court said that it could not stop S.C. Johnson from shaped like pine trees where the shape was being used to refer to the pine scent of the product and not as a source identifier.

Mattel sued the musical group Aqua for trademark infringement because of their song, Barbie Girl. The court upheld that when the only word reasonably available to describe a particular thing is a trademark, others could use the mark to describe the thing. What other word is there to describe Barbie? The court agreed that the band could not effectively comment on the Barbie doll without mentioning her name. The CD liner notes stated that Mattel did not approve the song. The band did not include an image of a Barbie doll and therefore did not use more of the trademark than was necessary.

What is interesting for artists to consider is that Andy Warhol’s famous Campbell’s soup cans are mimicking an exact representation of the Campbell’s trademark. Campbell’s never considered suing Warhol for trademark infringement; however, in today’s climate and market, Campbell’s could sue and would probably win a lawsuit.

TRADE DRESS

Trade Dress is the look and feel of a product, which distinguishes the product from those of others and indicates the source of the product. Chris Beall, from Faegre & Benson and a board member of Colorado Lawyers for the Arts, recently represented Denver artist Mark Becker in a trade dress violation lawsuit in New York. San Francisco based jewelry artist Jeanine Payer sued Becker for violation of trade dress. Payer, who had not copyrighted her silver jewelry hand engraved with famous quotes and poetry felt that Becker’s work was too similar to her own. Payer, who only sells ten percent of her jewelry in New York, filed the case in New York because the court system is more favorable for artists. However, Payer lost her case because the New York jury did not believe consumers would be confused by Becker’s work and were differences the jury felt significant. Becker’s work is rounded and Payer’s work has square corners. Becker’s silver work has a lip on the edge and Payer’s work is smooth.

In the end, trademark and trade dress laws protect their owners from dilution: the likelihood of confusion as to the affiliation, connection or association — the origin — of a good or service. To qualify as a trademark, the name, logo or symbol must be unique enough to earn customer recognition on its own or have earned continued use of time. The more distinctive the trademark, the easier it is to get the courts to stop its use by others.

For more information, or to find a lawyer, contact Colorado Lawyers for the Arts, http://www.lawyersforthearts.org or reach them by phone at (303) 722-7994.

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