Protecting Your Entertainment Client s Intellectual Property. Law Offices Of Kimberly Kolback

Transcription

1 Protecting Your Entertainment Client s Intellectual Property Law Offices Of Kimberly Kolback

2 TRADEMARKS Understand your client s trademarks and trademark use Music Lounge All rights reserved Kerven Dorcinvil

3 Register client trademarks with the United States Patent and Trademark Office ( USPTO ) $ U.S. per class of good or services

4 The Application Process Step 1 If your client is already using the mark in commerce (which generally means that the client is offering goods or services bearing the mark for sale to the public) then you will file a "1(a)" or In-Use application. 15 U.S.C. 1051(a) If your client is intending, but has not yet used its trademark on goods or services in commerce, then you will file a "1(b)" or Intent-To-Use application. 15 U.S.C. 1051(b) This type of application requires you to file a Statement Of Use once the client offers its goods or services for sale to the public. You must pay the USPTO an additional $ filing fee with your Statement Of Use.

5 Step 2 The USPTO assigns the application a serial number and forwards it to an examining attorney for review. This may take 1-2 months. The examining attorney reviews the application to determine whether it complies with all applicable rules and statutes for registration. Oftentimes, the examining attorney issues a letter, called an Office Action, stating that a mark can not be registered because of a technical or substantive reason. A technical reason can generally be easily fixed. A substantive reason for refusing a registration usually means that there is a legal impediment to registering your trademark (i.e. geographic, surname, another person has already registered a mark that is "confusingly" similar to your mark). Trademark Manual of Examining Procedure Chapter 12 You have a six month period in which to respond to a technical or substantive denial of your application.

6 Step 3 Once you overcome all of the examining attorney's objections, the examining attorney will approve the mark for publication in the Official Gazette, a weekly publication of the USPTO. After the mark is published in the Official Gazette, an outside party has 30 days in which it may file an objection (this is called an "opposition") to the registration of your proposed trademark. If an opposition is filed by a third party, the matter is sent to the Trademark Trial And Appeal Board where a proceeding very similar to a federal court action is commenced.

7 Step 4 If no outside party opposes the registration, and -- if you filed a 1(a) or In-Use application, the trademark will now register. -- if you filed a 1(b) application or Intent-To-Use application, the USPTO will issue a notice of allowance. Your client then has 6 six months to either: (1) use the mark in commerce and submit your Statement Of Use; or (2) request a six month extension of time to file a Statement Of Use (a total of five extensions may be filed; however, each extension requires payment to the USPTO of an additional $ fee). Once a Statement Of Use is filed, the examining attorney reviews it to confirm that it satisfies the necessary requirements, and then the USPTO registers the trademark. This process takes approximately 6-8 weeks.

8 Step 5 After the mark registers, the client must timely file specific maintenance documents to keep the registration active or "live". The owner of a registered trademark is required to file a Declaration Of Use between the 5th and 6th year of the date of the registration, and a Declaration Of Use and an application for Renewal between the 9th and 10th year of the date of the registration (and before every ten years thereafter). IMPORTANT: the USPTO does not provide you with any further notice to file this information -- so be sure your client establishes a calendaring system for these deadlines.

9 Don t Forget Trade Dress Talk to your client about any unique visual appearance of a product or its packaging that further signifies the client as the source of a product.

10 Generally, it takes between 8-16 months to fully complete the trademark application process; however, the "effective" registration date is the date the application was filed.

11 FOREIGN REGISTRATIONS Madrid Protocol As of April 2011, 84 countries have joined the Madrid Protocol. A current list of the Contracting Parties is available online at the World Intellectual Property Organization (WIPO) website:

12 Who can submit an international application through the USPTO -- any trademark owner with an application filed in or a registration issued by the USPTO, and -- who is a national of, has a domicile in, or has a real and effective industrial or commercial establishment in the U.S.

13 What are the requirements for submitting an international application through the USPTO? Generally, the client Must have a U.S. application or a U.S. registration must list goods and/or services that are identical to or narrower than the list of goods or services in the U.S. application or registration. and pay the required fee(s) Article 3 of the Protocol / Rule 9 of the Common Regs Under the Madrid Agreement

14 What is the cost for filing an international application through the USPTO? USPTO - charges a certification fee for certifying international applications and transmitting them to the International Bureau. The certification fee is $100.00, per class, if the international application is based on a single U.S. application or registration, or $150.00, per class, if the international application is based on more than one U.S. application or registration. International Bureau - requires payment of fees based on - the particular Countries designated in the application, - the number of classes of goods and services, and - whether the reproduction of the mark is in black and white or in color. The schedule of fees and a Fee Calculator may be found at: The international application fees must be paid directly to the International Bureau in Swiss francs.

15 China $1318 Germany $1081 Russian Federation $1081 Switzerland $1407 United Kingdom $1292 Number of Classes Note: The Class Number is based on the number of classes actually being extended in either the International Application or the Subsequent Designation. International Registration fees For information on this calculation, see WIPO fee calculator*. Conversion from Swiss francs to U.S. dollars was based on the exchange rate of USPTO Certification Fee =USPTO Certification Fee x Number of Classes Total Amount =International Registration Fees + USPTO Certification Fee $2345

16 An international registration lasts for ten years from the date of registration and may be renewed for additional 10-year periods by paying a renewal fee to the International Bureau Duration

17 Canada and Mexico Canada Mexico

18 Copyrights Is filing always best for your client?

19 Registration Register your client s copyrights with the U.S. Copyright Office Basic application fee $35.00 The application process

20 Author /Owner Generally, the person who creates the work is its author. So, your corporate client needs to make sure that it owns the work created by its employees or independent contractors.

21 Work Made For Hire 17 U.S.C. 101 of the Copyright Act defines a Work Made For Hire Generally, it is: a work prepared by an employee within the scope of his or her employment or a work specially ordered or commissioned for use as a contribution to a collective work

22 Protect Your Client with a Contract Employees should sign an Employment Contract Independent Contractors should sign A Work Made For Hire Agreement (a simple Work Made For Hire Agreement is included in the materials)

23 Duration In the United States a "work for hire" (published after 1978) receives copyright protection until 120 years after creation or 95 years after publication, whichever comes first. This differs from the standard U.S. copyright term of life of the author plus 70 years because the "author" of a work for hire is often not an actual person, in which case the standard term would be unlimited.

24 FOREIGN REGISTRATIONS Most countries offer copyright protection to foreign works under certain conditions, which have been established through international copyright agreements and conventions. Two Primary Sources Berne Union for the Protection of Literary and Artistic Property (Berne Convention) Universal Copyright Convention (UCC)

25 Presentation prepared by: Law Offices Of Kimberly Kolback 1395 Brickell Ave., Suite 800 Miami, FL All rights reserved