ROOM | John S.
Williams
Tuesday, September 15
Session A1
AM|PM
10:30-Noon
Intellectual & Cultural Properties:
Part One
Intellectual Property Overview
Wade T. Blackmon
Kilpatrick Townsend
(202) 508-5833
wblackmon@kilpatricktownsend.com
September 2015
© 2014 Kilpatrick Townsend
Program
Part I:
•Distinguishing between patents,
trademarks and copyrights
Part II:
•Real life examples and cases
3
Distinguishing Between
Copyrights, Trademarks
and Patents
Types of Intellectual Property Assets
• 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.
5
What is a Trademark?
• 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.
6
Types of Trademarks
Letters
NARF
Numbers
29 Palms
Words
PALA
Designs
Slogans
Pinch Yourself
The Wonder of it All
7
Types of Trademarks
Characters:
Colors:
Music:
Shapes:
Smells:
Symbols:
Moving Image
Marks:
floral scent of knitting yarn
8
Official Trademarks
Owner: Choctaw Defense Services, a Tribal
Enterprise of the Choctaw Nation of Oklahoma
Owner: Seneca Gaming Corporation, a triballychartered 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
9
Selecting a Trademark
• 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
10
Selecting a Trademark
• 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
11
Strength of Trademark
• 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.
12
Establishing Rights in a Trademark
• 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?
13
Benefits of Federally Registered Trademarks
• 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 “®”.
14
Oneida Trademarks (multiple owners)
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
15
Oneida Trademarks (multiple owners)
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.
16
Oneida Trademarks (multiple owners)
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.
17
Oneida Trademarks (multiple owners)
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, nonelectric 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.
18
Maintaining Trademark Rights
• 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.
19
Benefits of Federally Registered Trademarks
• 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.
20
Domain Names
• 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
21
Official Insignia of Native American Tribes
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.
Owner: Agua Caliente Band of Cahuilla
Owner: Oneida Indian Nation of New York
Owner: Choctaw Nation of Oklahoma
22
Copyrights
• 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
23
Copyrights
• 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.
24
Copyrights
• 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.
25
Types of Copyrights
• 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
26
Ownership of Copyrights
• 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.
27
Copyright Notice
• 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.
28
Works-Made-For-Hire Exception
• 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:
29
Works-Made-For-Hire Exception
• 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.
30
Fair Use Doctrine: Permitted
Unauthorized Use
• 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
31
Copyrights Involved in Creating a
Commercial
• 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.
32
Patents
• 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.
33
Real Life Examples
Trademark Infringement
 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
35
Trademark Infringement
 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.
36
Cease and Desist Letter; Press Release
 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
37
Cases
Mashantucket Pequot Tribe v. Redican (403 F.
Supp. 184 (D. Conn. 2005)
Dilution and Cybersquatting
38
Cases
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
39
Cases
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.
40
Cases
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
41
Cases
Shakopee Mdewakanton Sioux Community v.
FBCV, LLC, et al. (D. Nevada)
Trademark Infringement involving the Tribe’s trademark
Mystic Lake Casino.
42
Man in the Maze Design: Tribal Symbol/Cultural Resource
Trademark, Copyright, Title, False Designation
43
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
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