“Works Made for Hire” Under the Copyright Act

By Richard A. Catalina, Jr. |   Jan. 30, 2017

Introduction

Under the 1976 Copyright Act, 17 U.S.C. §101, et seq., a creative work is protected by copyright upon its creation at the moment that the work is fixed in a medium.  When the work is written down or otherwise set into tangible form, the copyright immediately becomes the property of the author who created it.  Only the author or those deriving their rights from the author can rightfully claim copyright to that work, including the rights to copy and make derivative works.

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Topics : work protected by copyright, creative work protected by copyright, copyright act, 1976 copyright act, works made for hire | 0 Comments Read More

When a Utility Patent is not Available, Consider a Design Patent

By Richard A. Catalina, Jr. |   Jan. 23, 2017

A lesser known – but nonetheless valuable – form of protection under U.S. patent law concerns the aesthetic design or appearance of articles of manufacture, such as, for example, tables, lamps, bottles, automobile grills – almost any object, product or portions thereof.  When a utility patent cannot be obtained on an invention, a design patent should be explored.

Under U.S. patent law, a design patent may be granted to any person who has invented any new and non-obvious ornamental design for an article of manufacture.  35 U.S.C. §171.  A design patent protects only the appearance of an article and not its structural or functional features.  Utility patents, on the other hand, are patents that cover the functional aspects of the invention – provided that it is patentable subject matter, novel and non-obvious.  35 U.S.C. §§101, 102 and 103.

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Topics : utility patent, us patent law, united states patent law, patents cover functional aspects of invention | 0 Comments Read More

Differences between the Principal and Supplemental Registers

By Richard A. Catalina, Jr. |   Jan. 17, 2017

In a previous post, I noted the benefits of registering a trademark with the United States Patent and Trademark Office (the “USPTO”).  While that post highlighted those benefits, it did not delve into specific detail regarding the two registers available for registration with the USPTO – the Principal and the Supplemental Registers.  This post addresses those differences.

Important to this discussion is an understanding of the nature of trademarks and whether certain “devices” may legally serve as a legitimate mark.  As noted previously, a trademark or service mark is a device – a word, phrase, symbol or design, or a combination of words, phrases, symbols or designs – that identifies and distinguishes the source of the goods or services of one party from those of others.  A device (such as a word or a logo) can only be considered a trademark or a service mark if it is distinctive – that is, it is capable of distinguishing a user’s goods or services from those of another.  A non-distinctive device, on the other hand, is one that merely describes or names a characteristic or quality of the goods or services.

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Topics : registers available for trademark registration, trademarks, registering a trademark, united states patent and trademark office, USPTO | 0 Comments Read More

The Benefits of a Provisional Patent Application: Preserving Your Rights and Other Lessons Learned

By Richard A. Catalina, Jr. |   Jan. 9, 2017

Over the years, I have filed many provisional patent applications on behalf of clients with the United States Patent and Trademark Office.  A provisional application is a unique animal within the patent system and whether it is appropriate for a given situation requires an understanding of the client’s needs and circumstances.

A provisional application is fundamentally different than a non-provisional utility application.  For one, a provisional application does not contain any claims – the legal description of the invention that the inventor believes is entitled to patent protection – and a provisional application is never examined by the USPTO.  As such, a provisional application will never result in a patent.  Only a non-provisional utility application is examined by the USPTO and may result in a patent.

Many may ask – then why file a provisional application?  There are many compelling reasons and benefits for doing so.

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Topics : provisional application, provisional application benefits, provisional patent applications, provisional application basics, benefits of provisional applications, benefits of a provisional application | 0 Comments Read More

Why Register a Trademark?

By Richard A. Catalina, Jr. |   Jan. 3, 2017

A trademark is any word, symbol, sound or other “device” (or any combination of the foregoing) that identifies and distinguishes a source of goods or services of one party from those of others.  Trademarks, and the goodwill they represent, are intangible assets and can be enormously valuable to the companies that own them.

Generally, trademark rights accrue with use of the actual mark; as such, they are rightfully owned by the party first using it for the respective goods and/or services.  This principle has long been recognized at common law and is often referred to as “superior rights.”
Since trademark rights accrue with use as a matter of common law and are statutorily recognized under the federal Lanham Trademark Act, see, e.g., 15 U.S.C. §1125 (civil liability for false designations of origin, importation, false descriptions, and dilution of marks), one may question why time and expense should be expended towards registering a mark with the United States Patent and Trademark Office (the “USPTO”).  The straight answer is that that trademark registration confers substantial benefits and legal presumptions under the law, as specifically set forth in the Lanham Act.

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Topics : registering a trademark, register a trademark, trademark rights | 0 Comments Read More

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