Cyber Law

Intangible assets such as trademarks, copyrights and patents have the same basic attributes of ownership as any tangible property.  Then why do they seem so confusing?  While the attributes of ownership for intangibles are the same as for those you touch, the nomenclature, i.e. the labels used to describe the rights in intangibles, are different from that which we learned with respect to hard assets. Learn the language of intangible assets and you will be on your way to a better understanding.

What terms are used instead of "sale" or "lease"? With real or personal property, one sells the car or the land, or rents or leases the house to a tenant. Intellectual property has the exact same rights and attributes, only the words are different. A total sale is called an "assignment" and a lease or rental of rights is a "license."  One tenant is called an "exclusive licensee" and co-users of the same IP, at the same time, are "non-exclusive licensees."

What is a trademark?  A trademark is a word, symbol, slogan or sound that is used to identify and distinguish your goods and services from those of your competitors.  The rights in a trademark are secured and ultimately maintained only by continuous use in commerce on certain goods and services.  Trademark rights are not established without use for particular goods or services.

What does it mean when a mark is "inherently distinctive?"  A word, phrase or symbol that is "inherently distinctive" is strong and generally easy to protect as a trademark.  It is a term that does not describe the qualities, characteristics or ingredients of your goods and services. It is protectable against third parties without proof of "secondary meaning" and serves as a strong sword against infringers and cyber squatters.  While not always easy to select, inherently distinctive marks bring stronger value and protection to your business. The word "diesel" is generic as applied to truck and engine parts, but it becomes distinctive when applied "arbitrarily" to clothing.  Diesel has nothing to do with clothing, except as a brand.

What is "secondary meaning" or acquired distinctiveness?  Terms that describe the qualities, characteristics or ingredients of your goods are "descriptive" and cannot be registered as a trademark. Nor can those terms be used as a sword against infringers, unless the owner successfully proves that the mark has acquired a "secondary meaning" in addition to its literal meaning.  The question is whether the mark can be shown to be known by the public as a product from a unique source?  Is there a public association of the term with your product or service? For example, the owner of CHARCOAL STEAK HOUSE lost in an effort to enforce its name since it was held descriptive and the owner was unable to present enough evidence of secondary meaning.

How does a trademark differ from my company name?  Formation of a company and the right to use that company name as a corporate entity has nothing to do with establishing trademark rights!  The distinctive portion of a corporate name can become a trademark when correctly used in connection with the sale of goods or services to the public.  However, until this occurs, a corporate name offers little protection against subsequent use in commerce by a competitor who establishes prior lawful use and/or registration with the U.S. Trademark Office for specific goods and services.  

How does a domain name differ from a trademark?  A domain is an address on the Internet.  It is the location of your website, and may or may not be used to offer particular goods and services to the public. Domain names are not a substitute for a brand.  Many domains cannot serve as trademarks, especially if they are only a descriptive term which describes the goods and services.  Trademark rights in domains can be registered if the term is distinctive and used to advertise and sell goods and services. An example of a descriptive domain with little or no trademark protection is http://www.hotels.com>.