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Many of our clients include a search of the United States Patent and Trademark office as part of their due diligence process. Marvin Lawrence from our Washington, DC office expands a bit on the various types of patents. Marvin is a Client Service Representative specializing in Intellectual Property. If this type of request is new to you, please see some of the frequently asked questions below (FAQ). If you don’t see your question addressed here, email us at info@incserv.com.

What are Patents?

Patents are a property right granted by the Government of the United States of America 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.

What are Trademarks?

A trademark is a protection of words, names, symbols, sounds, or colors that distinguish goods and services from those manufactured or sold by others and to indicate the source of the goods. Trademarks, unlike patents, can be renewed forever as long as they are being used in commerce.

What is a trade name and where are they filed?

A trade name is a pseudonymused by companies to perform their business under a name that differs from the registered, legal name of the business. A trade name is filed at the Secretary of State.

What are some of the benefits of Federal Registration?

(i) it grants the right to use the registered trademark symbol: ®, (ii) it grants the right to file a trademark infringement lawsuit in federal court and to obtain monetary remedies, including infringer’s profits, damages, costs, and, in some cases, treble damages and attorneys’ fees, (iii) it acts as a bar to the registration of another confusingly similar mark, and (iv) it may serve as the basis for an international trademark application.

What is a Service Mark Filing?

A service mark is a word, phrase, symbol or design, or a combination thereof, that identifies and distinguishes the source of a service rather than goods. The term “trademark” is often used to refer to both trademarks and service marks.

What is a copyright?

A Copyright is a form of protection provided to the authors of “original works of authorship” including literary, dramatic, musical, artistic, and certain other intellectual works, both published and unpublished. The 1976 Copyright Act generally gives the owner of copyright the exclusive right to reproduce the copyrighted work, to prepare derivative works, to distribute copies or phono records of the copyrighted work, to perform the copyrighted work publicly, or to display the copyrighted work publicly.

The copyright protects the form of expression rather than the subject matter of the writing. For example, a description of a machine could be copyrighted, but this would only prevent others from copying the description; it would not prevent others from writing a description of their own or from making and using the machine. Copyrights are issued by the Library of Congress.

What types of things are protected by copyright?

Copyright is a form of protection provided by the laws of the United States to the authors of “original works of authorship,” including literary, dramatic, musical, artistic, and certain other intellectual works. This protection is available to both published and unpublished works.

What information do I get with a copyright search?

It depends on the type of search being requested.  Some of the more popular searches are the “chain of title”, “portfolio” and “in-process” searches.  The chain of title search provides basic claim information as well as any recorded instruments and new submissions on record for a “specific title.”  The portfolio search is a search for any claims, recordation or new submission on record under the name of an individual or company at the US federal level.  The in-process search is a search for new submissions to the US Copyright Office by name or title.

What is the Digital Millennium Copyright Act of 1998?

The Digital Millennium Copyright Act (DMCA) is a United States Copyright Law thatimplements two 1996 treaties of the World Intellectual Property Organization (WIPO). It criminalizes production and dissemination of technology, devices, or services intended to circumvent measures (commonly known as digital rights manager or DRM) that control access to copyrighted works. It also criminalizes the act of circumventing an access control, whether or not there is actual infringement of copyright itself. In addition, the DMCA heightens the penalties for copyright infringement on the internet. Passed on October 12, 1998, by a unanimous vote in the United States Senate and signed into law by President Bill Clinton on October 28, 1998, the DMCA amended Title 17of the United States Code to extend the reach of copyright, while limiting the liability of the providers of on line services for copyright infringement by their users.

Can I get a search of the U.S. Copyright Office records for recorded assignments and security interests?

The Copyright Chain of Title search will provide results for Assignments and Security Interests

What is a PTO Ownership search and can you include that with my due diligence searches?

When conducting due diligence searches to determine assets held on the state level, you may choose to conduct various searches to determine the current owner of federal patents and/or trademarks.  As with copyright, you may conduct a patent and/or trademark chain of title search to determine the owner(s).

How can I follow the chain to see if a patent or trademark has been assigned?

A Chain of Title search will provide this information.

How do I file a trademark assignment?

Complete the Trademark Cover Sheet and submit a copy of the Trademark Assignment.

What are Trade Secrets and how do I protect them?

A fourth type of intellectual property, in addition to patents, trademarks, and copyrights, is trade secrets. Trade secrets consist of information and can include a formula, pattern, compilation, program, device, method, technique or process.

Contrary to patents, trade secrets are protected without registration, that is, trade secrets are protected without any procedural formalities.

See for more information on how the US can provide protections:  http://www.uspto.gov/patents-getting-started/international-protection/trade-secret-policy

If you need assistance with searching or filing requests with the US Patent Trademark Office, please contact our Washington DC office directly at 202-386-7575.

Resources include:
http://www.uspto.gov/web/offices/ac/ido/oeip/taf/patdesc.htm
https://en.wikipedia.org/wiki/Trade_name
http://www.americanbar.org/groups/young_lawyers/publications/the_101_201_practice_series/trademarks_101_part_2_the_benefits_of_federal_registration.html
http://www.copyright.gov/circs/circ01.pdf
http://www.copyright.gov/circs/circ01.pdf
https://en.wikipedia.org/wiki/Digital_Millennium_Copyright_Act
http://www.uspto.gov/patents-getting-started/international-protection/trade-secret-policy

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