Intellectual Property Attorneys in New York, NY

Registration

Copyrights and trademarks, which are a type of intellectual property, involve different procedures for registration. Copyrights protect original work in the literary and artistic domain such as books, music, videos, and computer software, while trademarks protect symbols, brands, and identifiers of goods and services.

Trademark registration is a more complex procedure than copyright registration.

Copyright application is a simpler process, which requires the submission of an application form together with supporting documents. Approval is usually granted especially for original works, but delays can occur due to the submission of incomplete documents.

Trademark registration, on the other hand, involves several steps, such as trademark search and application. The first step requires a search of existing trademarks in various databases to see whether there is another similar trademark in the same classification that would cause confusion to the consumer as to the source of the product or service. This step also includes a review of the proposed mark to determine its eligibility in terms of distinctiveness. For example, generic and descriptive trademarks and names such as Compact SUV, Table Tennis, Greek Yogurt, or Vanilla Candle are generally not eligible for registration, while suggestive, arbitrary and fanciful trademarks are eligible, such as Pepsi, Exxon, Apple (when it relates to computers and not fruits), and Dove (when it relates to personal care products and not animals).

During review, an examiner can issue an office action, when it finds that the trademark application suffers from deficiencies in legal requirements. This office action must be responded to, and such response will be the basis for the examiner's approval or denial of the trademark application.

As intellectual property lawyers, we assist our clients in the application of both copyrights and trademarks to ensure its successful registration.

Infringement and Misappropriation Actions

Aside from registration, an intellectual property lawyer like us can also file copyright or trademark infringement or trade secret misappropriation actions to enforce one's intellectual property. This includes filing for injunctive relief such as a temporary restraining order which prohibits a person from using the copyright or trademark or misappropriating the trade secret even without hearing. A preliminary injunction can also be requested to enjoin the misappropriation or infringement pending resolution of the action.

• Copyright Infringement

  To prove copyright infringement, the copyright owner must prove:

  1. Valid copyright ownership; and
  2. The defendant's copying of elements of the original copyrighted work.

  Under valid copyright ownership, it must be shown that:

  • The work is an original and subject to legal protection. A work is original if it is of independent creation with a modicum of creativity.
  • There is notice of the copyright. Registering the work with the Copyright Office creates a rebuttable presumption regarding validity and ownership. However, even if the work is not registered, a common law copyright may exist for unpublished works. However, once the work is published, the work must be registered before filing a copyright infringement lawsuit.

• Trademark Infringement

  To prove trademark infringement, the following elements are required:

  • The plaintiff must own a valid and legally protectable trademark through registration or common law rights.
  • The defendant used the same or similar trademark in commerce without the plaintiff's consent; and
  • The defendant's use of the trademark caused a likelihood of confusion.

  In determining whether the use of the trademark caused a likelihood of confusion, the Polaroid confusion test enunciated in Polaroid Corp. v. Polarad Elect. Corp., 287 F.2d 492 (2d Cir. 1961) by the US Court of Appeals is used. This decision stated the key factors that would determine whether there is trademark infringement or whether a trademark should be registered:

  • Similarity of marks
  • Proximity of the products or services
  • Strength of the plaintiff's marks
  • Similarity of marketing channels
  • Likely degree of purchaser care (sophistication of buyers)
  • Actual confusion
  • Defendant's intent and good faith in adopting its own mark
  • Likelihood of expansion

• Trade Secret Misappropriation

  A successful claim for trade secret misappropriation must show:

  • An unconsented disclosure or use of a trade secret by one who
    • used improper means to acquire the secret, or,
    • at the time of disclosure, knew or had reason to know that the trade secret was acquired through improper means.
  • Plaintiff possessed a trade secret;
  • Defendant is using that trade secret in breach of an agreement, confidence, or duty, or as a result of discovery by improper means.

  As intellectual property lawyers, our job is to litigate infringement and misappropriation actions to a successful conclusion to ensure that the trade secret is not divulged to third parties and that damages are recovered due to copyright and trademark infringement, among other reliefs.

Contract Review

Another matter intellectual property owners are concerned about refer to the grant of rights to a third person to use their intellectual property. This includes the preparation and negotiation of licensing agreements, technology transfer agreements, and confidentiality agreements. Intellectual property lawyers review contracts to check substantial provisions relating to the grant of rights, scope of license, royalties and payments, term and termination, confidentiality and non-disclosure, indemnification, and dispute resolution.

As intellectual property attorneys, we provide strategic advice regarding the protection of intellectual property assets. Experienced attorneys are essential in drafting and negotiating IP contracts, in registering trademarks and copyrights, in responding to office actions in trademark applications, and in enforcing rights through the filing of infringement and misappropriation actions. Should you need legal representation in intellectual property matters, we, at the law offices of Albert Goodwin, can help. We are located in New York, NY. You can call us at 212-233-1233 or send us an email at [email protected].