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Intellectual Property Law for Legal Professionals Amy C. Kelly & Ben Tabor Of Counsel Associate Shook, Hardy & Bacon, L.L.P . 2555 Grand Blvd Kansas City, Missouri 64108 DISTINGUISHING BETWEEN TYPES OF INTELLECTUAL PROPERTY

I am the owner, or an agent authorized to act on behalf of the owner, of the copyrighted work described.
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Intellectual Property Law for Legal Professionals

Amy C. Kelly & Ben Tabor

Of Counsel Associate

Shook, Hardy & Bacon, L.L.P.

2555 Grand Blvd

Kansas City, Missouri 64108

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  • TRADE SECRETS: concern confidential information with economic value

  • PATENTS: concern functional and design inventions

  • COPYRIGHTS: concern literary and artistic expressions

  • TRADEMARKS: concern commercial origin identifications

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Trade Secret

  • TRADE SECRET: concern commercial secrets


    • Formula, process, practice, etc.

    • Not generally known

    • Gives the owner a competitive advantage

    • Reasonable efforts are taken to maintain its secrecy

      Examples: customer lists, survey methods, marketing strategies,

      computer algorithms, manufacturing techniques

      It is illegal:

  • to acquire another’s trade secret by improper means (bribery, misrepresentation, theft, etc.) or

  • to disclose or use another’s trade secret without consent by a person used improper means to acquire it

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No government registration fees

No government registration disclosure

Effective immediately

Indefinite in duration

Used to protect software

Both federally and state protected


Protection lost upon disclosure

Law does not punish “fair discovery”

Law only punishes improper acquisition

Trade Secret

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  • PATENTS:concern functional and design inventions

  • 1787: U.S. Constitution

    Article 1, Section 8, Clause 8

    “The Congress shall have 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. . .”

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United States Patent & Trademark Office

  • Exclusive jurisdiction over Patents (no State patent laws)

  • Charges fees for PTO services

  • Only registered patent attorneys and patent agents deal with PTO

  • Only inventor or representative may file

  • Over 400,000 patent applications each year

  • Less than two out of three applications are granted

  • Full disclosure at 18 months, at issuance, and throughout prosecution of the patent

  • Over two-year wait for examination after filing due to back log

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United States Patent & Trademark Office

  • Examination process

    -- Novelty & Nonobvious

    -- Prior art

    -- Claims

  • “Patent Pending” v. “U.S. Pat. No. ________”

  • Maintenance fees (approx. 4 yr intervals)

  • Assignments & Joint Ownership

  • Infringement & Damages

  • Validity

  • Best mode

  • Enabling disclosure

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What it does:

Grants the inventor the right to exclude others from making, using, offering for sale, or selling the invention in the U.S., or importing the invention into the U.S.

What it does not:

Grant the inventor the right to make, use, offer for sale, or sell the invention in the U.S. or import the invention into the U.S.

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Utility Patent

New & useful process, machine, article of manufacture, etc., or improvement thereof.



Fall within one or more statutory classes

“Better mousetrap”

Duration: 20 years

Example: Software


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Design Patent

New, original, and ornamental design for an article of manufacture

Aesthetic aspects of an article only; no functional aspects

Duration: 14 years

Very specific in scope


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Plant Patent

Granted to those who invents or discovers and asexually reproduces any distinct and new variety of plant.

Duration: 20 years

“Anything under the sun made by man” –Diamond v. Chakrabarty


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Keep others out of the market

Revenue from licenses or sale

Marketing entrapment

Personal accomplishment



Published inventions are exposed to the public

Limited duration (e.g., patents on drugs by pharmaceutical companies)


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  • COPYRIGHTS:concern literary and artistic expressions

  • 1787: U.S. Constitution

    Article 1, Section 8, Clause 8

    “The Congress shall have 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. . .”

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  • 17 U.S.C. 102 (a) -- An original work of authorship fixed in any tangible medium of expression.

  • Notice

    • © 2009 Boliver J. Shagnasty

      (symbol) + (first year of publication/creation) + (author)

      -- No longer a legal requirement for protection

  • Term

    • Life of the author + 70 years

    • “Work for hire” = the shorter of:

      • 95 years from date of first publication

      • 120 years from year of creation

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What it protects:

literary works

musical works, including any accompanying words

dramatic works, including any accompanying music

pantomimes and choreographic works

pictorial, graphic, and sculptural works

motion pictures and other audiovisual works

sound recordings

architectural works

What it does not protect:


processes, procedures, systems

methods of operation

concepts, principles


titles, names

short phrases, slogans

listing of ingredients, contents

works *not* fixed in a tangible medium of expression


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Grants five exclusive bundle of rights:

  • To reproduce the work in copies or phonorecords

  • To distribute copies of the work to the public by sale or other transfer of ownership, or by rental, lease, or lending

  • To prepare derivative works or create adaptations based upon a protected work

  • To perform the work publicly

  • To display the work publicly

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U.S. Copyright Office (Library of Congress)

  • Exclusive jurisdiction (no State copyright laws)

  • Registration is not necessary, but serves as indication of validity

  • Registration process is required for litigation

    • Original work that involved skill, labor, and judgment

    • Reduced to a tangible form (e.g., computer file)

    • Send application form, copy of work, and application fee

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  • Access & Substantial Similarity

  • Damages may be assessed percopy


  • Fair Use (lawful use without permission)

    • Purpose & character

    • Nature of the copyrighted work

    • Amount / portion to be used in relation to the whole

    • Effect upon potential market / value of the work

  • Types of fair use include parody, satire, news reporting, education, research, and commentary

  • First Amendment concerns

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Injunctive Relief

U.S. Customs

Public Domain



Government paperwork

Minimal examination

Copyright -- Registration

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    concern commercial origin identifications

    Federal (commercial use of mark in interstate commerce)

    The Lanham Act -- 15 USC 1051, et seq

    Term: 10 years with possibility of indefinite 10-year renewals

    States (commercial use of mark in intrastate commerce)

    State “Trademark Acts” and registries

    Term: varies by State

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A trademark is any designation that identifies and

distinguishes the source of goods or services.

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  • Other Types of Trademarks

    • Service Marks

    • Certification Marks

    • Collective Marks

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Basic Tenants:

Thou Shalt Not Confuse Thy Consuming Public

First to Use Wins!

CoNsistent Quality Contr@l

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Trademark Searching

  • Step One: Knock-Out Search or Clearance Search

    USPTO online records; State trademark records; Google® search

  • Step Two: Comprehensive Search

    Business/trade name databases Domain name register searches Trade directory databases The Internet (,, and, etc.)

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  • U.S. Federal Registration --

    • Application Procedure

      • 400,000 federal applications each year

    • Examining Attorney review

    • Publication in Official Gazette

    • Registration  Designate a Class (e.g., Delta® for air travel and Delta® for faucets)

    • Post-Registration Maintenance

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Trademark –Distinctiveness

Fanciful – coined or made-up words

  • highest protection

    • Kodak® for cameras

    • Verizon® for telecommunication services

      Arbitrary – common words used out of context

  • high protection

    • Apple® for computers

    • Grey Goose® for vodka

      Suggestive – suggests a quality of the product

  • strong protection

    • Chicken of The Sea® for tuna fish

    • Jaguar® for fast sports car

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Descriptive – describes the actual goods or services

least protection; difficult to secure trademark registration

Park ‘N Fly® for airport parking services

Vision Center® for optics store

Generic – the term is the name of the goods or services themselves

no protection; not eligible for trademark registration

“scissors” for scissors

“restaurant” for restaurants

Trademark -- Distinctiveness

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nylon thermos zipper

kerosene formica linoleum

escalator aspirin cellophane

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Use as an adjective:

I drive an Acura® car.

Never use as a plural:

We own two Acura® cars.

Never use as a possessive:

I love my Acura® car’s handling.


I drive an Acura.

We own two Acuras.

I love my Acura’s handling.

Trademark – Proper Use

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Never use as a verb:

I’ll make Xerox® copy of it.

Never add prefixes or suffixes to create a new word:

I did a Google® search; I spent an hour using Clorox® cleanser in the kitchen.


I’ll Xerox a copy for you.

I Googled it; I spent an hour Cloroxing the kitchen.

Trademark – Proper Use

  • ~ ~ ~ ~ ~ ~ ~ ~ ~ ~

  • Always distinguish from surrounding text and

  • provide ownership attribution statement:

    • “Budweiser® is a trademark of Anheuser-Busch, Inc.”

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U.S. ownership

Intent-to-Use filing


May use “®”

Access to federal courts

Tangible asset

Indefinite duration


Government paperwork (cost & hassle of application, subsequent filings)

Duty to police (proper use of the mark and potential infringement)

Must rely on State or common law rights instead

-- TM (trademark) or

-- SM (service mark)


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Library of Congress

U.S. Patent & Trademark Office

World Intellectual Property Organization (WIPO)

Wordwide Legal Directories – Intellectual Property

Copyright Clearance Center

American Society of Composers, Authors and Publishers (ASCAP)


Harry Fox Agency

Intellectual Property Links

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Intellectual Property Law for Legal Professionals

Questions and Answers

Amy C. Kelly Ben Tabor

Of Counsel (Trademarks) Associate (Patents)