Best practices?

1. Make the price of asking never zero. $

2. Set realist expectations.
3. Make sure you have management awareness and acceptance of
4. Never be the only one with an action item.

1) What is trademark?

Trademark is a word, logo, symbol, smell, or anything that indicates

the source of a product. It identifies the source of specific good and
services for consumers.

2) Trademark duration? As long as the mark is in use and the renewal

paperwork is submitted.

3) How can I get it?

Through common law, which requires the use of the mark in
commerce and the indication of TM. And through registration ®,
which requires an application with the USTPO and actual use of the
mark in commerce or an intent to use file (up to 3 years). The
application will be examined and there’s a chance of rejection.

4) How to protect it?

To protect your trademark you can register the mark with USTPO,
make sure your mark is distinct, police your mark to avoid it to fall
into genericide and use the right form of IP protection, function
features of a product cannot be trademark.

5) How to defend to infringement?

- Attack the validity.
Your mark is not protectable because is generic, descriptive (did not
acquired meaning) or is a function of your product.
- My use is fair:
Descriptive: Defendant used the plaintiff’s mark to describe the
defendant’s own product.
Nominative. Defendant used the plaintiff’s mark to describe the
plaintiff’s product because it was associated with defendant’s
product (could describe barbie without saying barbie).
Expressive work: Rogers test replaced likelihood of confusion
analysis. Expressive works are protected against infringement under
the first Amendment and requires dismissal, unless (1) the
unauthorized work is not artist relevant to the work underlying or (2)
mislead the consumers regarding the source or content of the work.
 P.S. Rogers test is not applicable if the defendant used the plaintiff’s
mark as a source identifier to its own product.

6) What is false advertising? False advertising is a statement of fact. A

merely statement of opinion or puffery is not considered false
advertising.

7) What is dilution? If you have a famous mark you can go after you
someone for dilution and prove infringement, regardless of
likelihood of confusion, injury, or competition. A mark to be famous
need a household name and be known by the general public. It hard
to prove and expensive (surveys). There is Tarnishment when
someone cause harm to a mark and blurring when someone blurs
the famous mark distinctiveness.
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1) What is copyright?
It is an original work of authorship fixed in tangible mean of
expression.

2) How can I get one?

It is automatic after the creation of the work. However, a copyright

registration with the U.S. copyright office is required to sue someone
for infringement.

3) Copyright duration?

After 1/1/78 it last life of the author + 70 years. If it is multiple

author, death of last surviving author + 70 years. If it is work for
hire/anonymous/pseudonymous it last 95 years from publication and
120 years from creation.

4) How to protect one?

Registration gives prima facie evidence of validity (if filed within 5

years of initial publication), registration is necessary to sue for
infringement and gives notice to public of the copyright’s creation ©

5) Bundle of copyrights’ rights?

1- Copy or reproduce;
2- Make derivative work
3- Public display
4- Public perform
5- Distribute
 6) What is scenes a faire? It is a scene of a fiction work that is
almost always required because have became standard or
indispensable for a topic or genre.
7) Defenses for copyright infringement?
- I didn’t copy (Independent creation)
- What I took wasn’t copyrightable
 Not original (facts)
 Idea (not expression)
 Merge of idea and expression
 It was an useful article
 Scenes a fair
 De minimis
- My use is okay
 Fair use (4 factors – purpose; nature; amount and effect). Most
important factor if it was transformative, which is the first
factor [parody]. (defense is affirmative)
o Transformative: add something new, further purpose,
different character, new expression/message/meaning
 DMCA
 First sale

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What is patent? Is the right to exclude other from making, using,

selling, offer for selling, importing what is claimed.

1) How to get a patent?

To get a patent a person needs to submit an application with the

USTPO describing the invention with enough details for a PHOSITA
to make and use it. The application is published after 18 months.
The examiner will search prior art and the fulfillment of novelty,
utility and non-obviousness requirements (usually is rejected). The
next steps are prosecution with opportunities for amendments and
arguments, allowance, and issuance. It is difficult to obtain and
expensive but is the safest form of IP (strong rights).

2) How to protect a patent?

- Not sell or offer in public more than 1 year before the effective
filing date with USPTO
- File application for patent.

3) How to defend for infringement?

 I don’t infringe (I’m missing one elements of your claim).
  Your patent is invalid.
o You patent is on prior art (lack of novelty or nonobvious).
o Does not meet patent requirements (inadequate
enablement; not in a statutory subject matter; is a
judicial exception; is immoral or illegal.
o Inadequate conduct (withheld prior art).
 My use is okay.
o I have a license
o Patent exhaustion

4) Requirements for a patent?

- Statutory requirements: process, manufacture, machine,
composition of matter. I also needs to be novel, useful and
nonobvious.
You cannot patent a creation included in the judicial exceptions:
 Law of nature (gravity)
 Natural phenomenon (lightning)
 Abstract idea/pure algorithm (mathematical formulas,
methods or organizing human activity [marketing/mitigate
risks], mental process [observation/evaluation])

Or

Immoral or illegal

5) What is prior art? (1) Information known by the public (1) before
the effective filing data of a U.S. patent application.

6) Duration of a patent?

Utility – filing data + 20 years

Design – filing data + 14 years (if filed after 2015 is 15 years_

Plant – filing data +20 years

7) Difference and similarities between patents and trade dress?

 Similarities:
Both protect ornamental appearance of a product “how it looks”.
And do NOT protect functional features.
 Differences:

To be a Design patents, the ornamental appearance of the

product must be novel and non-obvious (use no required). In
infringements all the elements of the claim must be the same.
The length after 2015 is filing date + 15 years. Damages are
 easier to prove and require only the substantiality similarity
between the designs.

To be a Trade Dress, the ornamental appearance of the product

must be a source identifier and used in commerce. In
infringement cases likelihood of confusion among consumers
must be proved. To claim damages causation is required.

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1) What is a trade secret? Information which reasonable

measures are taken to keep it secret and is valuable because
it is secret.

2) How to get one?

Automatic if you have a valuable information that you are have

taken reasonable measures to protect it and is valuable because
it’s secret.

3) How to protect it? Taking reasonable measures:

1) Sharing the secrete with those who have need to know

2) NDA (1-3) – watch out for rogue terms.
3) NCA (6 months – 2)
4) Strong IT security
5) Control personnel factors
6) Control accessibility

4) What are improper means?

1) Theft
2) Bribery
3) Espionage
4) Breach or inducement of breach of a duty to maintain
secrecy
5) Misrepresentation (fraud/omission)

5) How to defend against misappropriation?

- My appropriation was through proper means (OKAY)

 Reverse engineering
 Public observation
 Independent creation

- You didn’t take reasonable measures to protect your secret.

Costs and benefits of the reasonable measure
Violation of a social conduct can constitute misaappropration