AVOIDING TRADEMARK INFRINGEMENT

Trademarks ( brand names) Indicate Commercial Source

Trademarks may be words, logos or other symbols which indicate to consumers

that goods come from a particular company. They may even be sounds, three

dimensional symbols such as the well-known "golden arches," or colors. There are

also service marks which indicate the source of services - and still other kinds of

marks which need not be considered here.

Copying May Be Irrelevant

As with patents, one can infringe another's marks without copying them or even

being in direct competition with their owner. All that is necessary is to use the same

or a similar mark under circumstances where consumers may be confused as to the

source or sponsorship of goods or services.

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AVOIDING COPYRIGHT INFRINGEMENT

Copyright infringement can be avoided by establishing that a work was

independently created. Therefore, records which show independent creation are

helpful in avoiding liability. Even with such records, establishing an independent

creation may be difficult if the original work was widely disseminated or otherwise

available to the alleged infringer. In one such case, the court held that, while

copying may have been unconscious,'the original was nevertheless infringed.

Copyrights are unlike patents in that the term is much longer (the lifetime of the

author plus 50 years in the case of identifiable, living authors). They arise

automatically and they are inexpensive to register. Yet, subject to some fairly basic

limits, a copyright provides an owner with the exclusive rights to reproduce the

work during its term.

One of the limits to copyright protection is that ideas (as contrasted with

expressions) and technology -computer software aside -- are generally not

protected. This means that our inventor would have been free, at least as far as

copyright laws are concerned, to use any information that could have been found in

books on mousetrap designs and to make and sell working copies of anything

shown or described. A copyright gives the owner only the right to prevent

reproduction of the text or drawings themselves.

But, what if the inventor wants to use some of the text, for example, in an

advertisement? While there is a remote possibility that such use might be protected

under the so-called "fair use" defense, it is very unwise to proceed without getting

permission or expert advice.

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AVOIDING PATENT INFRINGEMENT

One Need Not Copy In Order To Infringe

Patents do more than prevent copying; their owners can forbid the making, using or

selling of a covered invention even though it was independently created. This is

certainly true for utility patents -- which is what people usually mean when they use

the term, "patent." These provide 17 years of exclusive rights for inventions which

deal with the way things work and otherwise qualify. It is also true for design

patents which afford 14 years of protection for significant improvement in the

appearance of useful items such as car bodies or furniture. (The only possible

exception is patents on natural plants which will not be covered in this publication.)

Copying may actually be a way to avoid infringement. Our inventor of the

mousetrap might have avoided potential problems by using technology which had

been described in a printed publication, publicly used or on sale. Products which are

on sale and give no notice of patent coverage are relatively free from the risk of

infringement

However, if the technology is fairly new, one should keep in mind that an inventor

has one year from public sale or disclosure within which to file a patent application.

Further, because patents often take two or more years to issue, there is some risk

that a patent will be issued at a later time. While there is no liability for pre-issue

infringement, one would nevertheless have to cease making, using or selling the

technology at the time of issue -- losing both unrecovered start-up costs and

inventory.

A patent search is helpful in minimizing the risk of infringement if the technology is

not known to be old. But, of course, if our inventor is determined to make a better

mousetrap, there would be no interest in copying something else found in the

market. Still, before spending too much time and money on research, the inventor

should make sure that others do not have exclusive rights in the same area being

explored. The inventor certainly should not assume, because a product was not on

the market, that it is unpatented. As many independent inventors have learned to

their chagrin, it is usually easier to patent something than to market it profitably.