May 16, 2012
By Rachel Young Fields, published on May 16, 2012, in Business in Savannah.
As e-commerce expands and access to original work on the Internet increases, the need for businesses to protect intellectual property has become increasingly urgent.
Trademarks and copyrights, two distinct forms of intellectual property, are governed by different bodies of law. A copyright protects original works of authorship that have been fixed in a tangible medium of expression. Books, songs, paintings, plays, architecture and computer software, for example, are all eligible for copyright protection. Although a copyright does not protect facts, ideas, concepts, systems or methods, the way these things are expressed can often be protected by copyright. Copyright protection originates in the United States Constitution and is outlined by the Copyright Act.
Copyright law provides authors of original works exclusive rights to use their works, including the right to reproduce, distribute, perform and display the protected work. As a general rule, it is illegal for others to violate the copyright holder’s exclusive right to use their original work. Anyone violating those exclusive copyrights can be held liable for copyright infringement.
Copyright protection attaches to original works of authorship at the moment of creation. However, copyright registration provides important benefits and is a prerequisite to enforcing one’s copyright, including the right to bring a lawsuit for infringement. Copyrighted works can be registered with the United States Copyright Office and the registration process is relatively simple and inexpensive. Copyright protection is available for a limited term, the length of which depends on a number of factors including when the work was created and published.
A trademark, on the other hand, is a word, phrase, symbol or design (or combination thereof) that identifies and distinguishes the goods or services of one business from those of others. As with copyrights, certain protection automatically attaches to a trademark by virtue of its use in commerce. Such protection, however, is limited to the geographic region in which the trademark is actually used to sell goods or services. Filing a state or federal trademark application can provide important benefits including notifying others of your claim to be the exclusive owner of the mark and the right to keep others from providing the same or similar goods or services using the same or a similar mark.
When registering a trademark, the first step is to conduct a search for identical or similar trademarks in advance of filing the registration application. For federal trademark applications, this is done by checking the Trademark Electronic Search System database maintained by the U.S. Patent and Trademark Office. For a Georgia state registration, the applicant can search the trademark database maintained by the Georgia Secretary of State’s Office.
Trademark applications can be filed with the U.S. Patent and Trademark Office or the Secretary of State’s Office, depending on the extent of protection sought. An applicant must identify the goods or services provided under the mark and show actual use in commerce before a trademark can be registered with either Office.
A federal trademark application may be submitted as an “intent-to-use” application if the mark is not yet in use in commerce, but the registration will not issue until the applicant files a “statement of use” declaring the mark is in use in commerce. State trademark registrations, like copyright registrations, are relatively simple and inexpensive to obtain. Federal trademark registrations are often more difficult and expensive to obtain. Trademark registrations can have infinite duration, provided they are properly renewed and the trademark owner can demonstrate ongoing use of the mark in commerce.
Businesses seeking to register a trademark or copyright should consider consulting an attorney for legal advice and assistance with filing a registration. In addition, an attorney can help business owners assess whether they own protectable intellectual property and assist in achieving maximum levels of legal protection for their intellectual property.
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Rachel Young Fields is an associate at HunterMaclean who practices in the areas of business litigation and intellectual property. She can be reached at rfields@huntermaclean.com or 912-236-0261.
