Protecting one’s intellectual property is a right and responsibility of an individual or organization. It all starts with a trademark or patent registration to ensure that one’s IP rights are recognized and distinguished to be the owner’s.
The good thing here is that the registration process isn’t that complicated. It’s what follows that one has to be prepared for. Someone else can always challenge and contest your application for registration so it’s important to prepare for what might come up. A bit of research is always necessary so you will not be caught off-guard. Since you can easily search trademarks and patents online, you should make sure to do so before doing anything.
For patents, innovators and creators have to be on the lookout for patent trolls. These ‘trolls’ are hoarders of vague patents intended for filing malicious lawsuits against anyone with anything that will remotely resemble what their patents are for. A good example of this instance is the case between the web infrastructure and security company Cloudflare and Blackbird Technologies, a company created by a group of IP lawyers that promises to help small businesses monetize their intellectual property.
Blackbird sued Cloudflare for infringing their patent for a product that provides “an Internet third-party data channel”. They were hoping for an out-of-court settlement but Cloudflare fought back through the legal system and various other means. The defendant gunned for invalidating not just the patent they are accused of infringing upon but all of Blackbird’s patents. In the end, Cloudflare won the case on the grounds of the ambiguity of the plaintiff’s patent.
Trademarks, on the other hand, are pretty straightforward. Trademarks can be applied for specific categories that the mark is applicable to. However, you can’t trademark something that is generic and commonly used. Most countries also have a first-to-file rule, upholding the validity of previously filed marks. Free speech and fair use are respected for trademarks in most countries.
A good example of a trademark dispute that says a lot about IP litigation is the case between the BGK Trademark Holdings, LLC and Veronica Morales, owner of an event planning service, for the trade name ‘Blue Ivy’. Morales is the registered owner of the mark when BGK Trademark Holdings applied for a trademark for the mark ‘Blue Ivy Carter’.
Morales contested the application as she believed that it would cause confusion with her brand. She also alleged fraud as she believed that the owners of the ‘Blue Ivy Carter’ trademark does not intend to use it at all even if their application is for several categories.
In the end, the Trademark Trial and Appeals Board (TTAB) rejected the opposition as there was no evidence that confusion will take place between two trademarks.
Patent and trademarks are categories under the Intellectual Property Law. They are creations by man (or woman) and sufficient intellect was used to put into each of its creation. The Intellectual Property Law is wide and comprehensive, so this article is not a substitute for legal advice.
In the USA, the treatment of a business name is looked at differently by different states and state-specific laws are followed accordingly. With that, we will not mention the business name as a trademark.
Despite being products of intellect in common, there are differences between the two which is enumerated hereafter.
Trademarks are words, phrases, or even a single word used in business to differentiate one goods or services from another. The trademark rights may belong to an individual or a company that constitute an enterprise.
Common examples for trademarks are the ever-popular Coca-Cola soft drink in can or bottles and the Nike shoes of Michael Jordan.
Patents is an instrument to protect a discovery or an invention of design or utility. It may also be utilized for business intent right after the approval from the Patent Office.
In consideration of the owner’s effort in coming up with the invention and with the general public in mind, as well, the Patent Office will extend only a limited time on the rights of the original owner to have a monopoly on the profits of that invention.
One very good example of this are the pharmaceutical products that become generic upon the extinguishment of patent where everybody now can copy and manufacture it. Monopoly for the owner first then public benefits from modern advances.
Another example and a very ingenious one, is a genetically modified bacteria to clean oil spills.
If the name used for goods or services pre-dates any similar name, registered or not, he has full common law protection and may not even be liable for a case of infringement.
If you need to get professional help, please contact us for free consulation. We are a trademark registration and patent application agent in Hong Kong offering international trademark and patent application.
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