10:30-Noon Intellectual & Cultural Properties:

Part One

ROOM | John S. WilliamsTuesday, September 15

AM|PM

Session A1

© 2014 Kilpatrick TownsendSeptember 2015

Intellectual Property Overview

Wade T. Blackmon Kilpatrick Townsend (202) 508-5833 wblackmon@kilpatricktownsend.com

Part I:

•Distinguishing between patents, trademarks and copyrights

Part II:

•Real life examples and cases

Program

3

Distinguishing Between Copyrights, Trademarks

and Patents

• Trademark:  A name, slogan, design (brand) for identifying goods and services in commerce.

• Patent:  Protects inventions.

• Copyright:  Protects original artistic and literary works.

• Domain Name:  Provides web address.

• Business Name:  Entity name under which you do business.

Types of Intellectual Property Assets

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• Legal definition: Any work, slogan, design or combination thereof that:

1) Identifies the source of your goods services in commerce, and

2) Distinguishes them from the goods and services of another party.

What is a Trademark?

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7

LettersLetters

NumbersNumbers

SlogansSlogansPinch Yourself

The Wonder of it All

DesignsDesigns

WordsWords PALA

29 Palms

NARF

Types of Trademarks

Types of Trademarks

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Characters: Colors:

Music:

Shapes:

Smells:

Symbols:

Moving Image Marks:

floral scent of knitting yarn

Owner: Choctaw Defense Services, a Tribal Enterprise of the Choctaw Nation of Oklahoma

Owner: Seneca Gaming Corporation, a tribally-chartered corporation of the Seneca Nation of Indians

Owner: Pechanga Band of Luiseno Mission Indians of the Pechanga Reservation

Owner: Mohegan Tribe of Indians of Connecticut

Owner: Tunica-Biloxi Tribe of Louisiana

Official Trademarks

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• Avoid Likelihood of confusion

– Likelihood of confusion among consumers (look alike, create similar commercial impression).

– Goods and services are related.– Trademark Classification (45 Classes):– Identical marks can be registered by separate

owners for distinct uses:  Oneida for casino services and Oneida for silverware

Selecting a Trademark

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• Clearance Search: To avoid any potential infringement claims:

– Internet Searches– Trademark Electronic  Search System (TESS)

www.uspto.gov/trademark– State trademark databases– Business name databases

Selecting a Trademark

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• Selecting a mark that may not be “strong” enough for broad protection.– Generic: Cheese – cannot be registered

– Descriptive: Mac & Cheese – usually cannot be registered

– Suggestive: Dairy’s Best Cheese – can be registered

– Fanciful / Arbitrary: Apple for computers; Blackberry for smart phone

• When not to seek federal registration.

Strength of Trademark

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• Trademark identifies your goods or services:

• Rights are established as soon as you use your brand in commerce.

• Federal or State Registration: Exclusive Right to Use in Geographic Area

• Federal or State registration is not required to own a trademark.

• Determine nature of use.

1) Is the mark used is a small geographic area?

2) Is it used on a nationally or internationally?

Establishing Rights in a Trademark

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• Enhance Rights Under Federal Law :– Creates a legal presumption that you are the owner.

– Provides a legal presumption that the owner has the exclusive right to use you for the goods or services identified in your registration.

– Puts public on notice that you own the mark. Published in the federal register and listed on USPTO’s database.

– Record trademark with the US Customs and border Protection.

– Right to bring legal action concerning your mark in federal court.

– Right to use “®”.

Benefits of Federally Registered Trademarks

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Owner: Oneida Indian Nation of New York

ONEIDA (Serial No. 78978992; Intent-to-Use Application (Sec. 1(B))

•IC 041. G & S: Conducting sporting events, namely, boxing, bull riding, snowmobile races, figure skating, snow shoeing, balloon rides, yoga, lacrosse, golf, and basketball; entertainment services, namely, live musical performances, live comedy performances, and cooking demonstrations; golf instruction; conducting seminars, workshops, lectures, and classes relating to the culture, heritage, and language of the Oneida Indian Nation; and museum and cultural center services

Oneida Trademarks (multiple owners)

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Owner: Oneida Indian Nation of New York

ONEIDA (Serial No. 78978999; Intent-to-Use Application (Sec. 1B))

•IC 016. G & S: Newsletters pertaining to Oneida Indian Nation events and issues; newspapers and magazines of general circulation about Indian issues; greeting cards; stationery

•IC 018.  G & S: Bags, namely, tote bags, sports bags, gym bags, shopping bags, and golf bags

•IC 035. G & S: Promoting tourism in and to the Oneida Indian Nation and its environs

•IC 036. G & S: Charitable services, namely, providing financial assistance to families and individuals; providing educational scholarships; governmental services, namely, family counseling in the areas of financial and budgeting skills

•IC 039. G & S: Marina services

•IC 043. G & S: Providing temporary housing accommodations

•IC 044. G & S: Medical services; governmental services, namely, mental health assistance services, family mental health and psychological counseling services, nutrition counseling services, counseling services in the fields of alcohol and substance abuse

•IC 045. G & S: Police protection services; governmental services, namely, family counseling in the nature of marriage counseling and providing emotional support.

 

Oneida Trademarks (multiple owners)

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Owner: Oneida Tribe of Indians of Wisconsin

ONEIDA (with Eagle design) (Registration No. 3016505 (Sec. 1.A))

•IC 035. G & S: Retail store services featuring convenience store items and gasoline.

•IC 041. US 100 101 107. G & S: Casinos. 

•IC 042. US 100 101. G & S: Hotel and restaurant services; retail and commercial printing and graphics art design services.

Oneida Trademarks (multiple owners)

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Owner: Oneida Ltd., New York Corporation

 ONEIDA (Registration No. 2883927) •IC 021. G & S: bakeware items of non-precious metal, with or without non-stick coating, namely, loaf pans, muffin pans, pizza pans, cake pans, cookie sheets, oblong baking pans and springform pans.

ONEIDA (Registration No. 2299604) •IC 008. G & S: Non electric can openers, grapefruit knives, paring knives, non-electric fruit and vegetable peelers, pizza cutters.

•IC 009. G & S: Measuring cups, measuring spoons.

•IC 021. G & S: Serving spoons, slotted spoons, pierced spoons, basting spoons, serving forks, ice tongs, food serving tongs, kitchen ladles, kitchen sauce ladles, pasta servers, pie servers, ice cream scoops, ice cream spades, non-electric bottle openers, melon ball scoops, household utensils, namely, skimmers, turners, slotted turners, spatulas, whisks, citrus fruit zesters.

ONEIDA (Registration No. 2425852) •IC 035. G & S: On-line retail store services featuring tableware, namely, flatware, hollowware, china, glassware and crystal.

Oneida Trademarks (multiple owners)

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• Owners must be able to show continued use of their trademark for the identified goods or services; file evidence of use with USPTO.

• If an owner ceases to use a trademark it will become abandoned, and potentially available for others to use; loss of exclusivity.

• Owners must “police” their trademarks – take steps to prevent others from infringing on their exclusive rights.

• Cease and desist letters, arbitration and lawsuits.

• Federal or State registration is not required to own a trademark.

• Determine nature of use.

1) Is the mark used is a small geographic area?

2) Is it used on a nationally or internationally?

Maintaining Trademark Rights

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• Intent-to-Use Application:– Enable a party to establish rights in a trademark prior to use.

– U.S. Patent and Trademark Office assigns an examining attorney to all trademark applications, including intent-to-use application.

– Independently reviewed by examining.

– If allowed, trademark will be “published for opposition” in Official Gazette.

- Trademark that are in use are issued a federal registration;

- Trademarks based on intent-to-use applications are issued notice of allowance; Registration will be issued upon establishing use.

Benefits of Federally Registered Trademarks

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• Domain Name: Web address for finding a site on the Internet.

• Examples:   – aianta.com– skyutecasinoresort.com & skyutecasinoresort.com– Narf.org– USPTO.gov– tulaliptribes-nsn.gov (only official, government sites at the

federal, state and local levels of government, including federally recognized Indian tribes and Alaskan Native groups, known as Native Sovereign Nations (NSNs))

•  Domain Names as trademarks: amazon.com

Domain Names

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Owner: Agua Caliente Band of Cahuilla

Owner: Oneida Indian Nation of New York

Owner: Choctaw Nation of Oklahoma

Official Insignia of Native American Tribes

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Tribal Insignia do not have to qualify for trademark registration because section 2(a) of the Trademark Act provides for refusal of registration of a mark that falsely suggests a connection with persons, institutions, beliefs or national symbols.

• Copyright Clause: Article I, Section. 8, Clause 8 of the Constitution grants Congress the power:

• To promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries.

• The Copyright Act of 1976

Copyrights

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• Copyright protects “original works of authorship” that are fixed in a tangible form of expression.

• The form of the tangible expression does need not be directly perceptible so long as it may be communicated with the aid of a machine or device.

• Copyright protection does not extend to ideas, concepts procedures, processes, and system method of operation.

Copyrights

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• The Copyright Act grants the owner of a copyrighted work the exclusive right to commercially exploit his or her work, which includes:– Power to sell a copyrighted work– Sell copies and reproductions– Prepare new works based on the original work;– Display the work;– Grant limited use rights, such as licenses.

• Any one who violates these rights will be infringing on the owners copyright.

Copyrights

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• Literary works (includes computer programs)

• Musical works, including any accompanying words

• Dramatic works, including any accompanying music

• Pantomimes and choreographic works

• Pictorial, graphic, and sculptural (3D) works (includes maps & architectural plans)

• Motion pictures and other audiovisual works

• Sound recordings

• Architectural works

Types of Copyrights

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• Copyrights are granted to the owner of an original creation.

• Joint authorship: – Both parties must make an independent contribution to

the work.– The parties must intent to creation a single work.– Each party becomes a co-owner of the work, and may

independently license or use the work.

Ownership of Copyrights

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• Prior to 1989 a published work needed to contain a valid Copyright notice in order to receive copyright protection. – “Copyright”– “©”– Year of publication– Name of author or owner of the copyright

• Since 1989, a copyright notice is no longer require to obtain copyright protection, but recommended.

Copyright Notice

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• Ownership of a copyrighted work does not vest in the author, but rather the party who employed or hired the author.

• The work must either be:– Prepared by the employee within the scope of his or

her employment; or– Created (i) by an independent contractor, (ii) under and

agreement stating that it is a work-made-for-hire, and (iii) the commissioned work is created for designated uses:

Works-Made-For-Hire Exception

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• Commissioned works can be created under the work-for-hire exception in the following areas:– A contribution to a collective work;– A part of a motion picture or other audiovisual work;– A translation;– A supplementary work;– A compilation;– An instructional text;– A test, answer material for a test, or– An atlas.

Works-Made-For-Hire Exception

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• Under the Copyright Act unauthorized uses of copyrighted works are permitted for generally non-commercial purposes such as:

– Criticism– Commentary and parody– News reporting;– Teaching (e.g., multiple copies for classroom use)– Scholarship and research

Fair Use Doctrine: Permitted Unauthorized Use

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• Right of Publicity: Increasingly courts are recognizing the right of a person to the commercial value of his or her identity.

• Has the Producer obtained the right to use the name or likeness of people are shown in the commercials:– Paid actors,– Employees, or– Actual Patrons.

Copyrights Involved in Creating a Commercial

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• The exclusive right to make, use and sell an invention that is:– New– Non-Obvious– Useful

• Utility - for any “new and useful process, machine, manufacture, composition of matter or any new and useful improvement thereof.”

• Design - granted to any new, original and ornamental design for an article of manufacture.

• Plant Rights – Twenty years.

Patents

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Real Life Examples

Avoid Likelihood of confusion

– Likelihood of confusion among consumers (look alike, create similar commercial impression).

– Goods and services are related.– Trademark Classification (45 Classes):– Identical marks can be registered by separate

owners for distinct uses:  Oneida for casino services and Oneida for silverware

Trademark Infringement

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Misappropriation of Goodwill.

Dilution: Provides owners of famous trademarks with the right to prevent others others from using that mark in a way that would lessen its uniqueness. Does not have to be a competing use.

Trademark Infringement

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Cease and Desist Letter: Notice to alleged trademark infringer; identifies the nature of the infringing use, and demands that such use cease.

Press Release: In 2014, NARF issued press release alleging misappropriation of its trademark “NARF” to organization calling itself Native American Redskins Fans

Cease and Desist Letter; Press Release

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Mashantucket Pequot Tribe v. Redican (403 F. Supp. 184 (D. Conn. 2005)

Dilution and Cybersquatting

Cases

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Havasupai Tribe of Arizona v. AZNETCO WIPO Case No. D2012-2030 (2102)

Seeking protection under the Uniform Domain Name Dispute Resolution Policy.

Arbitration under the WIPO – World Intellectual Property Organization

Dispute heard by arbitration panel; authority to authorize transfer of domain name

Cases

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Navajo Nation v. Urban Outfitters, Inc. (D. New Mexico)

Navajo Nation has approximately 108 federal trademark registrations.

Urban Outfitters is claiming the Navajo mark is generic.

Trademarks can become generic: Aspirin, Elevator, Thermos, Trampoline, Videotape.

Cases

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San Pasqual Casino Development Group, Inc. v. Viejas Band of Kumeyaay Indians (S.D. California)

Complaint alleges Trademark Infringement, Copyright Infringement, Unfair Competition involving tribal casino slogan and commercial

Cases

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Shakopee Mdewakanton Sioux Community v. FBCV, LLC, et al. (D. Nevada)

Trademark Infringement involving the Tribe’s trademark Mystic Lake Casino.

Cases

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Man in the Maze Design: Tribal Symbol/Cultural ResourceTrademark, Copyright, Title, False Designation

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ATLANTA

AUGUSTA

CHARLOTTE

DENVER

LOS ANGELES

NEW YORK

RALEIGH

SAN DIEGO

SAN FRANCISCO    

SEATTLE

SHANGHAI

SILICON VALLEY

STOCKHOLM

TOKYO

WALNUT CREEK

WASHINGTON D.C.

WINSTON-SALEM

www.kilpatricktownsend.com

ATLANTA

AUGUSTA

CHARLOTTE

DENVER

LOS ANGELES

NEW YORK

RALEIGH

SAN DIEGO

SAN FRANCISCO    

SEATTLE

SHANGHAI

SILICON VALLEY

STOCKHOLM

TOKYO

WALNUT CREEK

WASHINGTON D.C.

WINSTON-SALEM

www.kilpatricktownsend.com