Intellectual Property:  The Types and Protection Available

Intellectual Property

So, what is intellectual property anyway?  Intellectual property is a term used to describe a broad range of types of property.  In some ways, intellectual property (often abbreviated “IP”) isn’t a whole lot different from the kinds of property you deal with every day, like personal property (your car, your television, your prized carved coconut collection) or real property (your house and the land it’s on)–you can own it, you can sell it, and you can lend it out.  However, very much unlike personal property or real property, intellectual property is not a tangible thing that you can touch or see.  Also unlike personal or real property, intellectual property can be divided up over and over again without diminishing its value.  If you divide your land and sell part of it, what you have left is clearly worth less than the whole property was.  In contrast, the holder of a copyright, for example, can license a bookstore to sell copies of the copyrighted work, and the value of the copyright isn’t diminished at all by each sale of the work.

The Most Common Types of Intellectual Property

Okay, that’s a general description of intellectual property, now let’s turn to some specific types.  The most common types of intellectual property are things you’ve probably heard of:  trademarks, copyrights, patents, and trade secrets.  What’s the difference?  Well, let’s start by pretty much ignoring anything you may have heard from mainstream media about any of them, because the media pretty universally mixes the types up or just completely misuses the terms.  I can’t tell you how many times I’ve heard that Pat Riley (the former coach of the LA Lakers) had taken the made-up word “three-peat” and patented it (he couldn’t), copyrighted it (he couldn’t), or trademarked it (he couldn’t in the way the media describes, though he did obtain a trademark for the limited use of placing the word on tee-shirts and the like).  Even a basic understanding of these terms will make it clear to you how far off these claims really were.  Let’s get started.

TRADEMARKS

A trademark is a name, word, slogan, phrase, logo, image, symbol, or design, or some combination of any of these, that is used by business or person (or government) to identify and distinguish its products or services from those of others, and to indicate the source of the goods.  What we call a “brand name” is one kind of trademark.

COPYRIGHTS

A copyright is a set of rights granted to the creator of an original work such as a book, song, photograph, painting, sculpture, movie, play, recording or computer program.  The creator, or author, generally has the exclusive right to reproduce the copyrighted work, to prepare derivative works, to distribute copies or phonorecords of the copyrighted work, to perform the copyrighted work publicly, or to display the copyrighted work publicly.  It is important to note that a copyright protects the form of expression (e.g. the actual words and notes in a song) and not the underlying subject matter or idea (e.g. the topic of the song).  For example, anyone can do a movie about the sinking of the Titanic, they just can’t use James Cameron’s script (or portions thereof).

PATENTS

A patent is a right granted to an inventor “to exclude others from making, using, offering for sale, or selling the invention throughout the United States or importing the invention into the United States” for a limited time in exchange for public disclosure of the invention when the patent is granted.  There are three types of patents, with the one most familiar to most people being the “utility patent,” which covers “any new and useful process, machine, article of manufacture, or composition of matter, or any new and useful improvement thereof.”  So, your basic “better mousetrap” would qualify for a utility patent, as would new and useful machines, circuits, programs, and, more recently, business methods.  The other two types of patents cover plants and designs, and are beyond the scope of this discussion.

TRADE SECRETS

A trade secret is a formula, technique, process or collection of information that is not generally known or easily ascertained by the public, and that is used by a business to gain an economic advantage over competitors (or customers in some cases).  The formula for Coca Cola is the classic (okay, bad pun, but I couldn’t resist) example of a trade secret.  A trade secret only has value as long as it is kept secret.  Once the cat is out of the bag, the value of the trade secret is lost forever, and the owner’s only option is to file a law suit if the secret was disclosed improperly.  However, it is not “improper” for somebody to figure out or discover the secret on their own.

Available Forms of Protection for Intellectual Property

COPYRIGHTS, PATENTS AND TRADE SECRETS

The focus of this site is on trademarks, but I will cover the protection available for the other types of intellectual property listed above very briefly.  A patentable invention is protected by applying for and receiving a patent from the United States, namely from the U.S. Patent and Trademark Office (USPTO).  Absent an issued patent, generally no form of protection is available except where the intellectual property in question overlaps with one of the other areas of protection.  A utility patent generally lasts for twenty (20) years from the date that an application is filed.

A copyright is obtained when an author creates the work in a fixed form.  For example, as soon as an author writes a book on paper or types it into a computer, it is protected by copyright.  No registration is necessary, though doing so through the U.S. Library of Congress offers some benefits.  A copyright generally lasts for the entire life of the author, plus an additional seventy (70) years (for works created after January 1, 1978).  However, the length of copyright protection is something that has been extended repeatedly, and may well get extended again.

A trade secret is protected only by state law–there is no federal law protecting trade secrets, and no form of registration.  As such, a business enforces its trade secrets through binding contracts (with employees and anybody else with whom the secret might be shared) and legal action through the courts.  A trade secret can be held forever, as long as the secret is kept, well, secret.

TRADEMARKS

So, that brings us to trademarks.  Trademarks enjoy protection at both the state and federal level.  The rights in a trademark arise as soon as the mark is used in commerce in conjunction with particular products and/or services.  So, as soon as you run an ad using the mark, or sell a product that is labeled or packaged with the mark, you have a trademark that can be protected and enforced.  If the trademark is exclusively used within the borders of a single state, then only state law is available to protect the mark.  A trademark can often be registered with the state (usually with the Secretary of State), though many states only allow registration of a limited type of trademark, such as a trade name (often called a “d.b.a.” by the state).  The trademark can be enforced informally by making written demand on an infringer to stop using the mark (attorneys call this a “cease and desist” letter), or formally by bringing a lawsuit in the state courts.

If the trademark is used across state lines (and use on the internet generally qualifies, as long as you are marketing to potential customers outside of your home state), then it may be eligible for federal protection.  Registration of a trademark is accomplished by filing an application with the USPTO.  If registration is successful, then the trademark can be enforced by bringing a lawsuit in the federal courts.  Once a trademark is obtained, either at the state or federal level, it may be held indefinitely, as long as the owner continues to actively use the mark in commerce in conjunction with the particular goods and/or services.  However, registrations must generally be renewed periodically, and federal registration requires periodic certification by the owner that the mark is still being used in commerce.