Intellectual property (“IP”) can be one of the most valuable assets to any startups or growing companies, whether it is the customer goodwill associated with a trademark and brand, or a copyright over some original works of authorship. IP refers to creations of the mind, such as inventions; literary and artistic works; designs; and symbols, names and images used in commerce. IP rights are like any other property right. They allow creators, or owners, of patents, trademarks or copyrighted works to benefit from their own work or investment in a creation. Article I, Section 8, Clause 8, of the United States Constitution grants Congress the enumerated 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.” Traditionally, IP is comprised of four categories, copyright, trademark, patent and trade secrets.
One of the important Intellectual property is Copyright. Copyright is a legal term used to describe the rights that creators have over their literary and artistic works. Works covered by copyright range from books, music, paintings, sculpture and films, to computer programs, databases, advertisements, maps and technical drawings. Copyright law grants the owner of the copyright certain exclusive rights to protect the original works of authorship, such as books, films, and music. In the United States, federal copyright law protects a wide range of works, including–but not limited to–literary works; musical works and lyrics; dramatic works; pantomimes and choreographic works; pictorial, graphic, and sculptural works; motion pictures and other audiovisual works; sound recordings; architectural works; and computer programs. Federal copyright law is set forth in Title 17 of the U.S. Code. Copyright law protects only the original expression set forth in those works, however, and not the underlying ideas, procedures, processes, systems, methods of operation, concepts, principles, and discoveries themselves.
One of the important Intellectual property is Trademark. A trademark is a word, a symbol, a combination of words and symbols, three-dimensional features such as the shape and packaging of goods, or non-visible signs such as sounds or fragrances, or color shades, which are used as distinguishing features to be placed on or associated with goods and services and used to identify those goods or services. When a symbol, picture, or other design is used as a trademark, it is often referred to as a “logo” or as the “brand.” A trademark informs the consumer that the product comes from a particular source and guarantees that the quality of the product will be the same as that of other products sold under that trademark. In the United States, trademark rights arise from use of the trademark in commerce and registration with the U.S. Patent and Trademark Office (“USPTO”) is not required. However, significant benefits arise from registering a trademark with the USPTO. Trademarks are governed both by common law and Title 15 of the U.S. Code. Trademark laws confer an exclusive right to use the trademark to trademark owners and allow trademark owners to license the right to use their trademarks to other parties in return for payment.
Other important Intellectual property is Patent. A patent is an exclusive right granted for an invention. Patent laws protect original, novel, and useful inventions. Generally speaking, a patent provides the patent owner with the right to exclude others from, among other things, making, using, or selling an invention that is claimed in the patent. In exchange for this right, the patent owner makes technical information about the invention publicly available in the published patent document.
Carbon Law Group has a depth of experience in policing and enforcing our clients’ brands. We help our clients to develop and implement sound and cost-effective brand protection strategies tailored to each client’s unique needs online and offline.
Our attorneys help our clients protect the words, phrases, designs, logos, and other commercial symbols they use to identify their products or services in the marketplace. Carbon Law Group counsels its clients concerning the selection, availability, and use of trademarks, service marks, and trade names.
We have filed hundreds of trademark applications and we have been engaged with respect to advising on and clearing many more brand names and logos.
We can also assist clients with cybersquatting disputes under the Uniform Domain-Name Dispute-Resolution Policy (UDRP).
What we can do for you
Initial Name Clearance
Statement of Use
Office Action Responses (and Insurance)
International Trademark Filing
International Trademark Filing
Trademark Trial and Appeal Board (TTAB) Oppositions and Cancellations
Trademark and Trade Dress Infringement
Domain Name Disputes
Unfair Competition (State Law Claims)
Cease and Desist Letter
Trademark Monitoring Service
Intellectual Property Audits
What is a Trademark?
Trademarks identify the source or origin of a product or service. For example, “Chanel” is the trademarked name of a clothing brand, while McDonald’s “Golden Arches” and NBC’s multi-colored peacock are trademarked logos representing those companies’ brands. Trademarks are how consumers identify your brand and can be worth billions of dollars if adequately protected. Consider for a moment the aforementioned Chanel®, McDonalds® & NBC® – you can be certain they have a team of lawyers registering and enforcing their trademarks on a daily basis.
How to get your trademark registered?
To trademark a name or symbol (usually a logo) that represents a product or service, you must first confirm that it isn’t already being used by someone else. Assuming the name or symbol you have in mind is available, it’s now a matter of whether it qualifies based on two primary defining criteria: (1) how distinct your name is, and (2) whether it could be confused with another brand already in use.
Here’s an example, let’s say you’ve come up with an incredible name for a new clothing line for athletes. First, you need to make certain the name is distinct and not merely a description of the product you want to trademark – for example: “RUN FAST SHOES.” Second, you need to be sure no one else in the marketplace is already using a similar name to identify their brand.
Confused? Don’t worry, Carbon Law Group is here to help. When you are ready to start the trademark process we will conduct a comprehensive trademark search identifying marks that could prevent your registration or undermine your rights.
While these sorts of reports are available from online trademark services, they simply churn out a list of search results and fall gravely short on analysis. At Carbon Law Group, our seasoned attorneys and paralegals prepare a comprehensive report that evaluates the legal significance of our findings to give you a deeper understanding of your rights and the potential hurdles you may face in registering your trademark.
What if My Trademark Cannot be Registered?
Sadly, even with the best search, you may have an aggressive brand opposing your mark even if the USPTO finds it worthy of registration. Carbon Law Group’s attorneys can help you fight for your trademark against trademark bullies or help you find a new name that is less susceptible to an opposition. No matter what, we are here to support you along the way and help you secure and build the strongest brand possible.
What is Statement of Use?
A Statement of Use is a declaration filed after your initial trademark application showing use in interestate commerce.
One of the primary requirements for trademark registration is that a mark is used in interstate commerce–meaning sales accross state lines. However, in contrast to other countries, the USPTO, has a special exception where trademark applicants can file under “intent to use” to preserve the rights to a name they are not currently using in commerce. There are, however, two caveats applicants must be aware of: (1) the filer has six months to use the mark from time the USPTO issues a “notice of allowance” (this time can be extended up to three years), and (2) there is a filing fee associated with filing the Statement of Use (or extension) (this fee depends on the number of classes in which you are using your mark).
What is Trademark Infringement?
Trademark infringement requires proving two main elements: (1) you have a valid trademark right, and (2) the unauthorized use of your trademark causes consumer confusion.
Enforcing you trademark against possible infringements is critical to the preservation of your trademark registration. This means taking proactive steps to protect your trademark through sending a Cease and Desist letter or filing a lawsuit. A failure to protect your trademark registration may jeopardize your trademark rights.
It’s important to have an experienced legal counsel who truly understands the business of intellectual property and the value of your creative works. Carbon Law Group is well equipped to protect our clients’ copyright by having a thorough understanding of the federal copyright law and numerous state laws that govern the ownership of creative works. We conduct copyright searches to help our clients identify potentially conflicting copyright holders and provide our clients with strategic counseling on copyright registration and enforcement. Carbon Law Group also helps our clients select, register, acquire, and sell copyrighted works. We perform due diligence, draft and negotiate purchase and sale agreements, and audit our clients’ copyright portfolios.
We also assist our clients concerning the unauthorized reproduction, display, distribution, or performance of their creative works or the creation of derivative works. Whether you or alleging infringement or being accused, we are here to help you better understand your rights and guide you through the process.
Our attorneys also have extensive experience in supporting our clients in their relationships with third parties. With Carbon Law Group’s assistance, our clients are able to avoid infringing third party copyrights and obtain licenses to use third party copyrighted works.
What can we do for you
Registration and Agreements
Application Preparation and Filing
Licensing, Assignment, and Monetization
Protection and Enforcement
Use, Misuse, and Fair Use of Copyrighted Material
Digital Millenium Copyright Act Take-Down and Responses
Public Display of Works of Visual Art
What is a Copyright?
A copyright is a form of protection, grounded in the U.S. Constitution and granted by law, provided to authors of “original works of authorship,” including literary, dramatic, musical, and artistic works, such as poetry, novels, movies, songs, computer software, and architecture. Copyright protection is afforded to any work that has been reduced to a tangible medium of expression, such as books, manuscripts, drawings, sheet music, CDs, DVDs, software and the like. Copyright provides the author or owner an exclusive right to copy, distribute, perform or display the copyrighted work, and prepare derivatives of the copyrighted work. Examples of copyrights include television shows, movies, music, sculptures, paintings, architectural works, magazines, websites, and advertisements.
Why Should You Register a Copyright?
Although the author of a work has an inherent common law copyright as soon as the work is fixed in a tangible medium, there are several advantages to an owner for obtaining a copyright registration for work prior to infringement, including:
- Before an infringement suit may be filed in court, registration is necessary for works of U.S. origin.
- Registration establishes a public record of the copyright claim.
- If made before or within five years of publication, registration will establish prima facie evidence in the court of the validity of the copyright and of the facts stated in the certificate.
- If registration is made within three months after publication of the work or prior to an infringement of the work, statutory damages and attorney’s fees will be available to the copyright owner in court actions. Otherwise, only an award of actual damages and profits is available to the copyright owner.
What Rights do Copyright Owners Have?
Absent a written agreement to the contrary, such as a work-for-hire agreement, the owner of the copyright is deemed to be the individual who authored the work itself. Such owner has the exclusive rights to do and authorize the actions listed below, as well as license the work.
Pursuant to 17 U.S.C. § 106, the owner of a copyright has the exclusive rights to do and to authorize any of the following:
- To reproduce the copyrighted work in copies or phonorecords
- To prepare derivative works based upon the copyrighted work
- To distribute copies or phonorecords of the copyrighted work to the public by sale or other transfer of ownership, or by rental, lease or lending
- In the case of literary, musical, dramatic, and choreographic works, pantomimes, and motion pictures and other audiovisual works, to perform the copyrighted work publicly
- In the case of literary, musical, dramatic, and choreographic works, pantomimes, and pictorial, graphic, or sculptural works, including the individual images of a motion picture or other audiovisual work, to display the copyrighted work publicly
- In the case of sound recordings, to perform the copyrighted work publicly by means of a digital audio transmission
What is a DMCA Takedown Notice
The Digital Millennium Copyright Act of 1998 (the “DMCA”) allows copyright holders to issue a DMCA takedown notice when they learn of a copyright violation. Such a notice is issued to the service that hosts the offending website or to the internet service provider (ISP) of the violator.