By Susan Colman & Neil S. Ende
This is Part I of this article. Don’t miss Part II, on protecting trade secrets!
Service providers can protect their company’s intellectual property by obtaining appropriate trademark and copyright protection.
Yet, despite the importance of these ideas, processes, products and services to the success of their businesses, many telecommunications companies do not take the steps necessary to protect themselves against copycats lying in wait to steal such “intellectual property” from them.
In most cases, they need not let this happen.
Trademarks
The function of a trademark is to evoke an association in the minds of the purchasing public between a product and/or service offered under the mark with the source of the product or service—that is, the company that provides it. By using a trademark and making it known in the marketplace, a company creates a very valuable asset: goodwill. Goodwill is a byproduct of the consumers’ loyalty to a product (and, therefore, a company), thereby being able to distinguish just that product from others that may be similar.
The best marks to consider are those that are arbitrary and fanciful. For example, “Kodak” and “Polaroid” for cameras have been excellent marks through the years. These trademarks do not describe the products in any way and are very strong. Indeed, as tempting as it might be, trademarks should not describe products or services. In fact, the U.S. Patent and Trademark Office will not register marks that are descriptive or that it determines to be generic. Examples of marks that have become generic are cellophane and escalator.
Unlike patents, trademark registrations do not expire as long as certain statutory requirements are met. For example, between the fifth and sixth year after the date of registration, a declaration of continued use must be filed at the Trademark Office. Also, every 10 years from the date of registration another declaration of continued use, combined with a request for renewal must be filed. Thus, with a little thought and planning, you can protect your company’s name and business identity, along with your products and services, through the trademark process, and this protection can be in place for as long as these requirements are met.
Copyrights
Unlike a patent, a copyright does not protect ideas; it protects the expression of ideas in original works of authorship in a tangible medium of expression. Thus, businesses may be able to copyright software (including source code and object code), promotional materials, databases and related materials.
The beauty of a copyright is that you don’t have to do much to obtain protection, and you can get the protection immediately. A business automatically obtains copyright protection by fixing the work in a tangible medium of expression. In fact, a work expressed in RAM on a computer will be protected by copyright. Notice of copyright is provided by the placing the copyright symbol “©” on the relevant work, along with a date of copyright and an indication of the party to whom the copyright belongs. For an individual, a copyright lasts for the life of the author plus 50 years. For a work created as a “work made for hire,” which is typical in a company setting, the copyright lasts for 75 years after the first publication of the work or for 100 years from the year of creation, whichever expires first.
A copyright owner, in most circumstances, has the right to exclude others from reproducing, distributing, displaying or importing infringing copies of the work, or from making derivative works. Derivative works are works based on the underlying copyrighted work. For example, certain enhancements to software can be viewed as derivative works.
So if you already have copyright protection in the instant you create the work, why register it in the Copyright Office? First, for works created in the United States, it allows you immediate access to the federal courts in case someone infringes your copyright. Second, you are eligible to receive statutory damages in case of infringement. Third, if you prevail in a copyright litigation, you are even eligible to get attorneys’ fees. Litigation is extremely expensive in this country, and litigation over intellectual property is no exception.
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