State Bar of Wisconsin

Intellectual Property Terminology

• Patents
• Trademarks and Service Marks
• Copyrights
• Licensing
• Intellectual Property Litigation
• Evaluating What Others Have Developed
• Trade Dress/Product Configuration Protection
• Unfair Competition
• Trade Secrets

Patents

A patent is a grant by the federal government to an inventor of the right to exclude others from making, using, or selling an invention in the United States or importing the invention into the United States. A patent is a written document in which the invention is described and claimed. A patent can be obtained by any person who "invents or discovers any new and useful process, machine, manufacture, or compositions of matter, or any new and useful improvements thereof" according to statute.

In order for an invention to be patentable, it must be useful, new, and not obvious to "one of ordinary skill in the art" to which the technology pertains. An invention must be "new" in the sense that it must not have been done before. If the invention is similar to something else that has been done before, it must be different enough such that it is not obvious. An inventor can lose the right to patent an invention in the United States if the invention was offered for sale, sold, publicly used, patented in another country, or described in a printed publication more than one year before filing for the patent. However, an inventor can lose the right to patent an invention outside of the United States if any of this was done before filing.

Once obtained, maintenance fees must be periodically paid to the federal government or the patent will lapse and become unenforceable. Providing all maintenance fees are paid, the term of a patent is 20 years from the date it was filed. Some older patents can have a term of 17 years from the date it issued.

Plant patents and design patents are other types of patents that can also be obtained. A plant patent is reserved for someone who has invented or discovered and asexually reproduced any distinct and new variety of plant, including cultivated sports, mutants, hybrids, and newly found seedlings, other than a tuber-propagated plant or a plant found in an uncultivated state. A design patent is different in that it covers ornamental aspects of an industrial design. No maintenance fees are due after it issues and it has a fixed term of 14 years.

Patent attorneys in the State Bar of Wisconsin help our clients determine if what they have invented is patentable. We often do so by evaluating the results of a patent search of related patents. If it is believed that the invention is patentable, we will prepare and file a patent application on their invention in the U.S. Patent Office. Such an application contains a set of claims that define the scope of the invention, a background section, and a section where the invention is described in detail.

Many Wisconsin Bar patent attorneys also help our clients obtain patent protection in foreign countries. We work with associates in foreign countries all over the world to do so.

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Trademarks and Service Marks

A trademark is a word, a slogan, a name, a design, a picture or any other symbol used in trade in connection with goods to indicate the source of the goods and to distinguish them from the goods of others. A service mark is the same as a trademark, except that it is used in connection with a service instead of goods. Such marks can be federally registered in the U.S. Patent and Trademark Office. Once registered, rights accorded such marks can be used to prevent others from using a confusingly similar mark across the United States. Trademarks and service marks can also be registered in most states, are protected by state common law, and, even when unregistered, can be accorded protection under section 43(a) of the Lanham Act.

To federally register a mark, the mark must be used in interstate commerce, which means that it must be used in connection with goods or services across state lines. Where it is desired to obtain preapproval before a mark is actually used, an intent-to-use (ITU) application can be filed in the U.S. Patent and Trademark Office.

After a mark has been registered, it is enforceable for ten years and then can be renewed every ten years by filing a renewal application in the U.S. Patent and Trademark Office. Renewal applications can be filed every ten years thereafter. A renewal application must set forth the goods or services with which the mark is still being used and include a sample or photocopy showing current use of the mark. Between the fifth and sixth year of each ten year period, an affidavit of use must be filed in the U.S. Patent and Trademark Office along with evidence that the registered mark is still being used or the registration will be cancelled.

We have specialists who help our clients evaluate whether they can use and register a proposed mark, prepare and file registration applications, maintain the mark, and enforce the mark against others who may be using confusingly similar marks. Additionally, we help clients with an international presence to do the same in other countries.

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Copyrights

A copyright is a federal right owned by every author of a work that enables the author to exclude others from doing any of the following activities in connection with the copyrighted work: (1) reproduction of the work, (2) adaptation of the work, (3) distribution of the work to the public, (4) performance of the work in public, or (5) display of the work in public. Copyright is therefore a right to exclude others from using a copyrighted work and is not, in and of itself, a right to use the work.

Property protectible by copyright are original works of authorship including literary works such as books, other written materials and computer programs; musical works, including any accompanying words; dramatic or theatrical works; pantomimes and choreographic works such as plays, etc.; motion pictures and other audiovisual works; sound recordings; and architectural works. Copyright protection arises from the time the work is created in fixed form and, at least initially, is the property of the author who created the work.

Attorneys in the Wisconsin Bar's Intellectual Property (IP) Section help our clients evaluate what they have developed and obtain copyright protection if the situation warrants.

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Licensing

A license is permission to use an intellectual property right under certain defined conditions. Usually, a license is a document that sets forth what right or rights that a licensor (entity granting permission) is permitting a licensee (entity seeking permission) to use. Examples of intellectual property that can be licensed include patents, trademarks, copyrights.

Attorneys in our IP Section assist our clients in licensing matters by helping them to draft and negotiate license agreements. This includes helping clients determine a fair value for the intellectual property at issue.

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Intellectual Property Litigation

Intellectual property litigation involves seeking adjudication by a court or other entity to determine whether a party accused of infringing someone's intellectual property is liable. This usually involves determining the scope of the intellectual property being asserted along with whether the accused intellectual property falls within that scope.

Attorneys in the IP Section help our clients vigorously assert their intellectual property rights against infringers. We also help our clients defend against accusations of infringement by others.

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Evaluating What Others Have Developed

In today's highly competitive environment, it is not unusual for a competitor to review and evaluate intellectual property that others have developed to help avoid infringing that intellectual property when developing competing products and services. Such an evaluation typically includes reviewing patents, trade secrets, copyrights, and trademarks of others to help determine its scope so any design steers clear.

Attorneys in our Section help our clients evaluate the intellectual property of others. In doing so, we provide clear and concise guidance as how to avoid infringing their intellectual property rights.

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Trade Dress/Product Configuration Protection

Another form of trademark protection is trade dress. Trade dress is the total image of a product (i.e. product configuration) or its packaging, including features such as size, shape, color or color combinations, texture, graphics, or even particular sales techniques. A claim for trade dress infringement may be brought under either federal or state law, and the requirements are essentially the same. A plaintiff must prove (1) ownership of valid trade dress that is entitled to legal protection; and (2) that the defendant's use of similar dress is likely to cause confusion among the consuming public. Trade dress generally refers to the general appearance of either product packaging or the product's configuration itself; whereas traditional trademarks are words, phrases, designs logos or the like used to identify the source of goods or services. Trade dress in the form of the product itself can be protected the same as traditional trademarks provided that what is claimed as the identifying trade dress is not functional and has acquired secondary meaning. This means that the primary significance to the consumer of the feature claimed as trade dress is to identify the source of the product rather than serve as an attractive or functional component of the device. The likelihood of confusion analysis here addresses the reaction of the purchasing public when confronting the accused product in the marketplace, i.e., are they likely to think, based on the appearance of the product that the senior user is the source of the product.

Infringements of trade dress may be brought under 15 U.S.C. Section 1114 or 1125(a) (also known as Section 43(a) of the Lanham Act).

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Unfair Competition

Unfair competition can be pursued either under 43(a) of the Lanham Act or common law. Elements are generally identical to trademark infringement claim, but common law unfair competition claim under state law may vary. For example, New York recognizes a claim for unfair competition claim without proof of secondary meaning or distinctiveness.

The ultimate end of 43(a) is to prohibit commercial activities, which tend to mislead the consuming public. The Lanham Act seeks to eliminate promotional advertising techniques that are likely to confuse the consuming public as to affiliation, sponsorship or source of the advertised goods. The Lanham Act also seeks to protect parties from false or misleading statements of fact made in commercial promotion, regardless of whose articles the statements is directed toward. The essence of 43(a) is protection of both the labor of another and against public deception. As problems often arise with comparative advertising, it is important to ensure applicable federal trade commission guidelines on advertising are met and Section 43(a) is not violated.

Under the Federal Anti-Dilution Act, 15 U.S.C. § 1125(c), the owner of a famous mark is entitled to prevent another person's commercial use in commerce of a mark or trade name, if such use begins after the mark has become famous and causes dilution of the distinctive quality of the mark.

Cybersquatting, i.e., registering a domain name with the intent to sell the domain to the owner of a trademark, is now a violation of the 1999 Anti-Cybersquatting Consumer Protection Act (Section 43(d)).

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Trade Secrets

Trade secret law, like patent protection, protects ideas. However, whereas patent law gives an inventor a limited monopoly in exchange for fully disclosing the invention, trade secret law provides protection for an advancement only to the extent it is kept secret. The advantages to trade secret protection are that it protects a broader range of subject matter than either patent or copyright law, and trade secret protection can theoretically last indefinitely as long as the necessary steps are taken along the way.

Protection of trade secrets first developed under common law tort or contract theories, but is now the subject of statutory protection in more than 30 states and the District of Columbia. Many states, including Wisconsin, have adopted the Uniform Trade Secrets Act. See § 134.90, Wis. Stats.

A "trade secret" is information that derives value for its owner from being secret. The information can take innumerable forms. The statute specifically identifies protectable information as including a formula, pattern, compilation, program, device, method, technique or process. Whatever form the information takes, it must be capable of being specifically identified. Courts are reluctant to grant protection where the trade secret is an inexplicable combination of items that are common knowledge in the field.

"Secret" means that the information is neither generally known nor readily ascertainable by proper means. Absolute secrecy is not required. For example, the fact that one other company possesses the same information does not disqualify the information form being a trade secret, provided the other company takes appropriate measures to prevent public disclosure as well. But if another company in possession of the information makes no effort to prevent public disclosure, then it may lose its trade secret status because it is readily ascertainable by proper means. Whether information is "readily ascertainable" is a factual question that may take into account how much time and money it took to develop the information, how much time and money would be required to independently develop the same information, and how difficult it would be to reverse engineer the product to obtain the "secret" information. "Proper means" to ascertain the information includes researching published literature, inspecting the public display or use of a product embodying a trade secret, a license from the trade secret owner to use the trade secret without restriction on use, reverse engineering the product, or independent development.

The "secret" information must also be the subject of "reasonable efforts" to maintain the secrecy.

What is reasonable in a given circumstance is highly dependent upon the specific situation. For example, the larger the number of employees who potentially have access to the information, the more important it is to adopt specific procedures and precautions that are always followed to limit the circulation of the secret information and advise all who must know of the information of their obligation to maintain its secrecy. Steps that might be appropriate include: Including nondisclosure clauses in all employment agreements. Conducting preemployment and exit interviews with employees to drive home their obligations to preserve the company's trade secrets. Providing physical security measures such as a secure storage location for tangible forms of data, using passwords to limit access to computer stored information, or restricting employee access to areas where trade secret information is accessible. Developing and enforcing appropriate policies regarding the marking, dissemination, copying, and destruction of sensitive documents. Making all outside vendors or consultants execute confidentiality agreements before providing them access to sensitive information.

Finally, in order to prevent another from using a tradesecret, the owner must also show the trade secret was misappropriated and not discover through "proper means."

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