Intellectual Property Primer

Unfair Competition | Copyright | Copyright Protection | Trademark | Trademark Protection | Patent | Patent Protection

Unfair Competition

Unfair Competition: Commercial conduct which the law views as unjust, giving rise to a civil claim by those who have been injured by the conduct.

Unfair competition covers a wide range of unlawful, unfair, deceptive or fraudulent acts. Included within the scope of un fair competition is trademark and trade dress infringement, false advertising, trade libel, misappropriation of trade secrets and infringement of the right of publicity.

Most states have broad unfair competition statutes. For instance, California’s unfair competition statute states:

[U]nfair competition shall mean and include any unlawful, unfair or fraudulent business act or practice and unfair, deceptive, untrue or misleading advertising[.]
California Business and Professions Code §17200.

Federal trademark law also includes an unfair competition provision, Lanham Act Section 43(a), 15 U.S.C. §1125(a). Section 43(a) provides for a federal cause of action by anyone who is injured or likely to be injured by another’s use in commerce of any word, term, name, symbol or device, or any false designation of origin or false or misleading description or representation of fact which is likely to cause confusion, mistake or deception, or in commercial advertising or promotion, misrepresents the nature, characteristics, qualities or geographic origin of goods or services.


Copyright: The exclusive legal right to reproduce, perform, and sell the matter and form of literary, musical or artistic work. The purpose of copyright is to promote literary and artistic creativity by protecting, for a limited time, what the U.S. Constitution calls the writings of authors.

Copyrightable works include:

  • literary, musical and dramatic works
  • choreographic and pantomime works
  • pictorial, graphic and sculptural works
  • sound recordings
  • motion pictures and other audiovisual works
  • computer programs
  • compilations of works and derivative works
  • architectural works

Copyright comprises the five exclusive rights to:

(a) reproduce
(b) distribute
(c) publicly display
(d) publicly perform
(e) prepare derivative works

Copyright Protection

Step 1: The moment you have created and fixed a work in a tangible form, such as writing it down or recording it on tape, it automatically enjoys federal copyright protection. Works that are not fixed, such as extemporaneous speeches or un-recorded live performances, are not covered by federal statute but may be protected by state law.

Step 2: Affix a copyright notice to all publicly distributed copies of a work in a manner and location legible to an ordinary user of the work. While copyright notice is no longer required for U.S. copyright protection, notice is recommended to prevent others from claiming they did not know the work was copyrighted. The copyright notice should contain three elements:

  1. the symbol ©, or the word copyright, or the abbreviation copr. (for sound recordings use the ℗ symbol);
  2. the first year of publication; and
  3. the name of the owner of the copyright, a recognizable abbreviation of the name, or a generally known alternative designation of the owner.

Step 3: In order to preserve certain advantages provided under federal statute, within three months after the work is first published, submit an application to the Copyright Office along with two complete copies of the best edition of the work and pay the requisite filing fee.

Why file for copyright registration?

Even though it is not required, the advantages of registering with the Copyright Office include:

  • establishing a public record of your copyright ownership;
  • registration is a prerequisite for filing an infringement action (except for works originating in another country that is a signatory to the Berne Convention);
  • if done within three months of publication, registration allows for recovery of attorneys’ fees and statutory damages in an infringement action;
  • if done within five years of publication, registration is prima facie evidence of the validity of the copyright; and
  • you can record your registration with U.S. Customs in order to protect against infringing imports.

How long does a copyright last?

For a work created on or after January 1, 1978, the copyright lasts for the author’s lifetime plus seventy years. The copyright in a work made for hire (generally, a work prepared by an employee within the scope of his or her employment) or in an anonymous work lasts for ninety-five years from the date of first publication or one hundred twenty years from the date the work was created, whichever is shorter.

Copyright Restoration for certain foreign works:

Under the GATT Treaty, U.S. copyright protection is restored to some foreign works which had lost protection in the U.S. for failure to comply with formalities previously imposed by U.S. copyright law. Reliance parties, those who have copied these works before their copyright was restored, will have a grace period to stop, or obtain a license for, their copying before becoming liable for infringement.

Who owns a copyright?

The individual or joint authors of a work own the copyright. In the case of a work made for hire, the employer or party commissioning a work is deemed to be the author.

Are copyrights transferable?

Yes. A copyright is divisible, and the five rights comprising copyright may be sold or assigned. All transfers must be in writing and signed by the copyright owner. Rights in a copyright work can be licensed, in whole or in part.

What is copyright infringement?

Copyright infringement is the unauthorized use or copying of a work. Some copying does not constitute copyright infringement, e.g., the copying of a basic idea, rather than the expression of that idea in a copyrighted work , the independent creation of a similar work, or “fair use” of the work for comment, criticism or research.

International copyright protection:

First publication anywhere in the world of a literary or artistic work may affect its copyright status elsewhere. Therefore, international treaties are particularly important in the copyright field. Many commercially important countries, including the U.S., have ratified the Universal Copyright Convention, and are members of the Berne Convention for the Protection of Literary and Artistic Works. Both conventions protect works created in one nation against copyright infringement in other member nations.

Semiconductor chip protection:

A separate federal law gives the owner of a mask work (a set of images or templates used to design and manufacture a semiconductor chip) the exclusive right to reproduce it and to import and distribute chips embodying it. The protection starts when you register the mask work in the Copyright Office or you first commercially exploit the mask work anywhere, whichever is earlier. The protection continues for ten years, but only if you register within two years of the first commercial exploitation.


Trademark: Any word, name, symbol or device, or any combination thereof used by a person to identify and distinguish his or her goods from those manufactured or sold by others and to indicate the source of the goods, even if that source is unknown.

Service mark: Any word, name, symbol or device, or any combination thereof used by a person to identify and distinguish the services of one person from the services of others and to indicate the source of the services, even if that source is unknown.

Trademark Protection

Step I: Before adopting and using a trademark or service mark, we recommend that a search be conducted to determine whether the proposed mark is available for use or whether it has been adopted and used by another in connection with related goods or services. Determining the availability of a mark before using it can save time and money, as well as help to avoid a legal action for trademark infringement. Counsel with expertise in trademark law can conduct the necessary searches and provide you with an analysis of the legal risks associated with the mark(s) you are considering.

Step II: Rights in a mark begin when that mark is used on or in connection with goods or services. Registration is not a requisite of trademark or service mark ownership; however, the rights in an unregistered mark are geographically limited to the territory in which the mark is actually used. Rights in a mark that will be used in interstate commerce can be reserved before actual use of the mark begins by filing an intent-to-use application with the United States Patent and Trademark Office.

Why register a trademark?

Registration of your mark at the state or federal level has several advantages. A registration is evidence of your claim of ownership of the mark, your mark will appear in mark availability searches conducted by others, and there are procedural and substantive advantages if you have to file an infringement action. A state registration is recommended if your business is limited to a single state. If your goods or services travel in interstate commerce or foreign trade, a federal registration is recommended. In addition to the advantages cited, a federal registration confers nationwide priority in the mark over those who later adopt a similar mark from the filing date of the application; it gives federal courts jurisdiction to hear infringement and related unfair competition claims; the registration can be recorded with U.S. Customs to prevent importation of goods bearing infringing marks; and, five years from the date of registration, the mark can become incontestable, providing significant procedural and substantive advantages in enforcing your trademark rights.

How long do trademarks last?

Trademarks and service marks have no set term. So long as the mark is not abandoned or permitted to lose its trademark significance by becoming a generic term, a trademark can last for generations. If the mark is registered, certain filing requirements relating to establishing continued use of the mark and/or renewal of the registration must be met in order to maintain the registration.

Who owns a trademark?

Generally, the first to use a mark in commerce is the owner of that mark. The primary exception to this rule is where an intent-to-use application for a similar mark is filed prior to the adoption and use of the m ark by another.

Are trademark rights transferable?

Yes. Trademarks and service marks can be licensed for use by others so long as the owner of the mark has the right to control the manner of use of the mark and retains the right to control the quality of the goods or services sold under the mark. A trademark or service mark can be sold or transferred, but the goodwill of the business represented by the mark, as well as existing registrations or pending applications, must be included as part of the sale or transfer.

What is trademark infringement?

Infringement of a trademark or service mark is unauthorized use by another, of the same or a confusingly similar mark, on or in connection with the same or closely related goods or services. The test is whether, because of the similarity in the marks and goods or services of the parties, consumers would be likely to mistakenly believe that the parties are in some manner related or associated such that the goods or services share a common source.

What is trademark dilution?

Dilution is the unauthorized commercial use of a famous, distinctive trademark or service mark which lessens the mark’s exclusive association with the owner’s goods or services, even if no consumer confusion as to a common source has occurred. The unauthorized user may be liable for dilution when the mark is used on unrelated goods or services, thus “diluting” the unique link between the mark and its owner, or when the use tarnishes or degrades the positive associations of the mark.

Are Internet domain names trademarks?

Sometimes. A domain name can function as a trademark or service mark if it is used as a brand in connection with the sale of goods or the rendering of services. Your real-space trademark or service mark does not necessarily entitle you to use that mark as a domain name, however. Domain names are assigned on a first-come, first-served basis, and another entity may establish valid prior use of the name in connection with unrelated cyberspace goods or services. We recommend early acquisition and federal trademark registration of domain names.

International trademark protection:

A foreign registration program is an important consideration if your mark is used in international trade because in most countries, ownership is based on registration, not use. Registration in all fifteen European Union member countries is available through a single European Community Trademark Registration. Elsewhere, international trademark protection is generally available only on a country-by-country basis.


Patent: A grant from the Federal Government securing to an inventor, for a specific term of years, the exclusive right to exclude others from making, using or selling his or her invention.

Utility Patent

  • process (chemical, mechanical or electrical procedures)
  • machines (mechanisms with moving parts)
  • articles of manufacture (manufactured products)
  • compositions of matter (chemical com pounds, combinations or mixtures)

Design Patent

  • a new, original and ornamental design for an article of manufacture.

Plant Patent

  • a new variety of a cultivated asexually reproduced plant

To be patentable, an invention must meet the following criteria:

  • novelty, in that it was not previously known to others or in public use in the U.S., or patented or described in a printed publication anywhere before the inventor’s conception of it more than one year before the U.S. application filing date;
  • non-obvious to a person having ordinary skill in the relevant art; and
  • useful in that it has a useful purpose, actually works, and is not frivolous or immoral.

Patent Protection

Step 1: A patent and/or literature search to find out if the invention is novel is generally recommended.

Step 2: Prepare and file a patent application before disclosing the invention to anyone, or selling it or offering it for sale to preserve your foreign patent rights. Once you have filed a patent application, you may use the informal legends “patent applied for,” “patent pending” or “pat. pending.” After a patent has issued, you may use the word “patent” or “pat.” and the patent number.

Why file a patent application?

If you do not file a patent application before publicly disclosing, selling or offering the invention for sale, you lose your right to file foreign patent applications. If within one year of public disclosure, or sale or offer for sale of the invention, you do not file a patent application in the U.S., you lose your right to file and the invention becomes public domain.

How long does a patent last?

A ‘utility’ or ‘plant’ patent generally lasts twenty years from the date of filing. You must pay a specified maintenance fee (three, seven and eleven years after the grant) or the term can expire earlier. In some cases the term can be extended for up to five years. A ‘design’ patent lasts up to fourteen years from issuance of the patent.

Who owns a patent?

Generally, the original patent owner is the person who conceives the invention.

Are patent rights transferable?

Yes. A notarized assignment transfers the ownership of pending applications and issued patents. Patent rights can also be licensed.

What is patent infringement?

Generally, patent infringement is the unauthorized manufacture, use or sale in the United States of a device or process embodying the patented invention, whether copied from the patented invention or independently invented.

International patent protection is available only on a country-by-country basis. Under U.S. law, you cannot file a foreign patent application until the U.S. grants you a foreign filing license or until six months after the filing date of your U.S. patent application.