Trademark & Copyright Law

Symmes Law Group, PLLC Seattle trademark lawyers are fully prepared to assist you and your business in protecting your ideas and business image through registering your copyrights and trademarks, preparing licensing agreements, and representing you in other copyright and trademark related matters. The trademark process starts with selecting a proper trademark to avoid litigation down the road and ends with a successful registration or enforcement of your trademark. Our trademark attorneys will assist you through the entire process. Your intellectual property needs the best protection in order to assure your bottom line is not affected by somebody else taking your ideas for their own. Don’t take a chance by not registering your trademarks or copyrights. Your business assets, goodwill and identity are valuable assets that you must protect at all costs.

We are confident to say that we have the most affordable pricing in the Seattle area. Call (206) 682-7975 today to schedule an initial consultation and discuss your options with our copyright and trademark attorneys.

Some of the services we provide to clients are:

  • Assist in Trademark Selection
  • Trademark and Copyright Registration with the USPTO or US Copyright Office
  • Trademark and Copyright Licensing Contracts
  • Confidentiality Agreements
  • Draft Cease and Desist Letters on your behalf

At Symmes Law Group we feel that it is important to educate our clients as much as possible so that they understand the importance of the service we provide; below you can find general information about trademarks and copyrights, and answers to commonly asked questions.

What is a Trademark?

Section 45 of the Lanham Act (trademark definition)

The term “trademark” includes any word, name symbol, or device, or any combination thereof

(1)   Used by a person, or

(2)   Which a person has a bona fide intention to use in commerce and applies to register on the principle register established by this Act, to identify and distinguish his or her goods, including a unique product, from those manufactured or sold by others and to indicate the source of the goods, even if that source is unknown.

Why Register a Trademark?

Although it is true that a person or company may obtain rights to a trademark from use, registering a trademark with the United States Patent Trademark Office (USPTO) allows for a trademark to gain rights nationally rather than only locally in the jurisdiction where the trademark is being used.

 

What Type of Trademark Should I Register?

If given a choice, it is always advisable to register an inherently distinctive mark which acquire protection upon use as long as the person/company is first to use the mark in commerce.

Inherently distinctive marks come in three varieties:

(1)   Arbitrary Marks

§         When the trademark has no relation to the use for the mark

§         Examples:  Apple, arbitrary as applied to a computer. Geographical mark if consumers don’t associate product with geography.

(2)   Fanciful marks

§         Made up marks that don’t mean anything by themselves

§         Examples:  Kodak, Exxon, Xerox

(3)   Suggestive mark

§         Words that suggest what the products are

§         Examples:  Krispy Kreme, Coppertone, Tide

(4)   Product Packaging trade dress (maybe)

(1)   Trade Dress (restaurant) –

§         If consumers buy a product just for the packaging (coke bottle), then the packaging is inherently distinctive.

§         If a mark is ambiguous as to an association with the product, then product design trade dress test is applied which needs secondary meaning.

Possibly distinctive Marks (needs secondary meaning)

–         these marks are not as strong as inherently distinctive marks and should be avoided

(1) Descriptive Marks

§         Trademarks that describe what the products are.

§         Examples:  “Brewed with rocky Mt. spring water”, invisalign, “snap, crackle, pop”, “Alo”, “fish fri”

§         Owner must show that the mark has acquired secondary meaning.

  • Over time you show that your descriptive mark does identify source and has a secondary meaning within the consumers mind over time to identify with a product.

(2) Surnames

(3)   Geographical Marks if patron associate place with product.

(4)   Fragrance

(5)   Color (trade dress)

(6)   Product Design Trade Dress (design of a car, a dress)

Non Distinctive Marks (Cannot Trademark)

(1)   Generic mark

 

a.       Not protected by trademark law

i.      Examples:  (grocery store, bookstore) Can’t describe a whole class of things.

ii.      A mark that was once able to be trademarked, may later become untrademarkable. Ex. Aspirin, Xerox, cellophane, escalator safari

When has trademark infringement occurred?

The basic test for determining whether trademark infringement has occurred looks at whether a person or company is using a trademark in commerce that is confusingly similar to another name already in use and whether the name is being used with the same type of services or goods as the pre-existing mark.  Courts use a multi-factor test to determine the likelihood of confusion between two similar trademarks.   The specific factors that are used vary depending on jurisdiction.  These factors may include:

(1)   Strength of the mark

a.       The more arbitrary or fanciful the stronger it is

b.      The more famous the mark is the stronger

c.       Can talk about what would make something stronger (surveys of association)

(2)   Proximity of the goods to one another

a.       will consumers associate one with the other

(3)   Similarity of the marks

a.       Sight, Sound and Meaning

(4)   Evidence of actual confusion

a.       If you can prove, you will probably win.  Need evidence (rare)

(5)   Marketing channels used

a.       Internet (popups on the same screen as each other)

b.      Shows intent to confuse

c.       Parallel sales methods, use same places and approach to selling

d.      Same price ranges

e.       Different submarkets not persuasive

(6)   Type of goods and the degree of care likely to be exercised by the purchaser

a.       The more expensive the good, the less likely there will be confusion (Hyundai v. Honda) – boat case

(7)   Defendants intent in selecting the mark; and

a.       Look to if there was intent to confuse.  Trying to siphon customers from somebody else.  (hard to prove)

(8)   Likelihood of expansion of the product lines

In order to prevail on a trademark infringement claim for registered trademarks, a plaintiff must establish that:

(1)   It has a valid mark that is entitled to protection under the Lanham Act

(2)   That the defendant used the mark

(3)   In commerce

(4)   In connection with the sale … or advertising of goods or services

(5)   Without the plaintiff’s consent.

(6)   Likely to cause confusion (use factors) as to the affiliation, connection or association of defendant with plaintiff, or as to the origin, sponsorship, or approval of the defendant’s goods, services or commercial activities by plaintiff.

COPYRIGHT LAW

What can be Copyrighted?

literary works, musical works, dramatic works, pantomime, pictorial, graphic, sculptural, motion pictures, sound recordings, architectural works

17 U.S.C. §102 – (defines the scope of copyright)

(a)    Copyright protection subsists, in accordance with this title, in

(1) original works of authorship

(2) fixed in any tangible medium of expression, now known or later developed, from which they can be perceived, reproduced, or otherwise communicated, either directly or with the aid of a machine or device.

 

Who Owns a Copyrighted Work? 17 USC §201

(a) Copyright in a work protected under this title vests initially in the author or authors of the work upon creation.  The authors of joint work are co-owners of copyright in the work.

(b) works made for hire – in the case of a work made for hire, the employer or other person for whom the work was prepared is considered the author for purposes of this title, and, unless the parties have expressly agreed otherwise in a written instrument signed by them, owns all of the rights comprised in the copyright.

Is the Copyrightable work a Joint Work?

For a work to be a joint work there must be: – 17 U.S.C. §101

(1)    a copyrightable work

(2)    Two or more authors and

(3)    The authors must intend their contributions be merged into inseparable or interdependent parts of a unitary whole

Joint Authorship Test  to prove (3) above

–        Superintending, master mind (most important)

–        Objective manifestation of shared intent to be co-authors

–        Audience appeal as to whether there is joint authorship

Is the Copyrightable Work part of a Collective Work under 17 USC §101?

o       A work, such as a periodical issue, anthology, or encyclopedia, in which a member of contributions, constituting separate and independent works in themselves, are assembled into a collective whole.

o       Person maintains their copyright in what they contributed but not to the total compilation.

What are the Rights of a Copyright Owner under 17 USC §106?

(1)   to reproduce the copyrighted work in copies or phonorecords

(2)   to prepare derivative works based on the copyrighted work (movie, action figure)

(3)   to distribute copies or phonorecords of the copyrighted work to the public by sale or other transfer of ownership, or by rental, lease, or lending

(4)   in the case of literary, musical, dramatic, and choreographic works, pantomimes, and motion pictures and other audiovisual works, to perform the copyrighted work publicly; and

(5)   in the case of literary, musical, dramatic, and choreographic works, pantomimes, and pectoral, graphic, or sculptural works, including the individual images of a motion picture or other audiovisual work, to display the copyrighted work publicly.

(6)   in the case of sound recordings, to perform the copyrighted work publicly by means of a digital audio transmission.

 

How Does a Copyright Holder Prove Copyright Infringement?

(1) Ownership: he or she Owns the copyrighted work and

(2) Copying: that defendant “Copied” the work or took another exclusive right of the plaintiff.  To prove copying we need to show: Access & Substantial Similarity.

Because direct evidence is rarely available plaintiff can show circumstantial evidence:

a.)  Access-requires “an opportunity to view or to copy plaintiff’s work”

-Described as a “reasonable opportunity or possibility” NOT a “bare possibility”

-Circumstantial evidence of “reasonable access” is proven by

(1) A particular chain of events between plaintiff’s work and defendant’s access

to that work

(2) The plaintiff’s work has been widely disseminated (sales of sheet music,

records, and radio performances

b.)  Substantial Similarity

-Satisfied by a 2 part Test of extrinsic and intrinsic similarity

-Extrinsic-plaintiff identifies concrete elements based on objective criteria (analytical dissection and expert testimony)

-Intrinsic-“whether reasonable person would find the total concept of the works to be substantially similar”

-Inverse Ration Rule-we require a lower standard of proof of substantial similarity when a high degree of access is shown

–           If two works or so strikingly similar you don’t need to prove access

What are Defenses to Copyright Infringement?

17 U.S.C §107 Fair Use (Balancing Test)

(1)    The purpose and character of the use (most important factor)

a.       Looks at whether such use is of a commercial nature or is for nonprofit educational purposes, news, research, transformative, parody, criticism.

(2)    The nature of the copyrighted work

a.       Is it a creative or factual work? – Factual has much less protection.

b.      Is the work published or unpublished.  If it’s unpublished you should have more protection to maintain more creative control.

(3)    The amount and substantiality of the portion used in relation to the copyrighted work as a whole; and

a.       What was taken?  Did it go to the heart of the work?

b.      Necessity?  Was it necessary to take that piece to achieve their work?

i.      Yes in order to parody.

c.       Numbers – specifically how much taking was there? (3 bars of music, 1 sentence etc.)

d.      Actual use

(4)    The effect of the use upon the potential market for or value of the copyrighted work.  – (second most important factor)

a.       Will infringing affect the value of copyrighted work?

b.      Does the copy replace the original in terms of sales

c.       Defining the market – (the market for the original, derivatives and future products)

d.      Could it have a positive effect on the original work?

First Sale Doctrine – 17 USC §109(a)

A copyright holder can’t control the use after the first sale.  Therefore copyrighted works may be resold after the first sale.

Independent Creation

If a potential infringer can prove they independently created a work, then they will not be liable for copyright infringement.

 

How long do Copyrights Last for works created on or after Jan 1, 1978?

(a) General- life of author +70 years

(b) Joint Works- last surviving author +70 years

(c) Works for Hire- 95 years from first publication; or 120 years from its creation;
whichever comes first

 
 
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Richard J. Symmes, Esq
E-Mail :: (206) 682-7975

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Seattle, Washington   98154

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