San Diego Intellectual Property Attorney
Intellectual Property Law Firm‚ Mandour & Associates can assist you. We have qualified intellectual property attorneys on staff with a wealth of experience in trademark‚ copyright‚ patent‚ and trade secret law.If you are seeking a San Diego
Intellectual property (IP) is an umbrella term for creative works and inventions including trademarks, copyrights, and patents. The methods for establishing IP differ from one type of intangible asset to the next. Some forms of intellectual property require a formal application and review, while others are activated under terms of common law. The U.S. Patent and Trademark Office administers patents and trademarks while the U.S. Copyright Office administers copyrights.
Trademarks, also referred to as service marks, protect symbols, names, and slogans that identify the source of goods and services. The idea is to prevent the inaccurate association of a company’s goods and services with the company’s competitors. A company primarily benefits from its trademark in that any goodwill the business establishes by delivering quality goods and services over time is tied to the trademark, giving it inherent value.
Companies put this value to use by trademarking all creative elements associated with its products and services, including domain names, trade dress, sounds, colors, and other designations.
Once a trademark is established, the lifespan of ownership rights can be perpetual.
The most basic form of a trademark right is established with the concept of prior use. Individuals or organizations that are the first to use a creative element can claim ownership of the element within the geographic region in which it has been used. The addition of a trademark symbol after the element can underscore this ownership but is not required for the prior use claim to work.
For more in-depth protection of a trademark, its creator can file a trademark application. Even if a trademark has not yet been used in commerce, a trademark application can be filed on an “intent to use” basis. In these cases, once an application is filed, the constructive date of first use is established.
Companies or individuals embarking on filing a trademark application should first conduct a trademark search to make sure another party has not already claimed the mark.
Benefits of registering a trademark with the USPTO
Federal trademark registration benefits a business or individual in several ways, by:
- Extending presumptive nationwide trademark rights to the registrant, regardless of whether the trademark has been used nationwide. Such rights can prove to be critical in the case of infringement.
- Providing statutory benefits, including that of incontestability. Incontestability provides immunity from some challenges by trademark cancellation and can be declared after five years of consecutive use from the date of Federal registration.
- Indicating to would-be infringers that the trademark registrant is serious about protecting its IP
- Increasing the value of the trademark and the business that owns it
For more information, see our trademark page.
Copyrights protect original intellectual and artistic expressions. The defining aspect of this type of IP protection is that it must be captured in a fixed medium. In other words, you cannot copyright an idea, but once such an expressive work is created it is automatically copyrighted. Although many creators use a copyright symbol to represent the ownership of the work visually, copyright law does not require this step as essential to establishing ownership.
If you take a picture and post it on the internet, the work is considered “fixed to a tangible medium,” which means you own the copyright to the image.
That being said, by registering a U.S. copyright, you enjoy valuable benefits:
- Presumption of ownership
- Right to recover statutory damages and intellectual property attorney’s fees for all post-infringement requirements
- The message to would-be infringers that you are serious about protecting your IP
- Increased value of your work and the business that owns it
In general, a copyright’s lifespan matches the lifespan of the work’s creator, plus an additional 70 years. You may see our copyright page for more information.
Patents protect inventions. With this type of IP, an inventor can profit either by putting a patented invention to use in the marketplace or by transferring that right to another party.
The requirements for being granted a patent are exact, starting with strict deadlines for filing the patent application. Some inventions cannot be patented, such as those that are obvious, or are not useful, or are not novel.
Important Details Regarding Patent Filing and Eligibility
- Be familiar with the idea of “Absolute Novelty,” which dictates that you cannot patent something if the subject matter was disclosed before filing the patent application even if it was your own disclosure.
- To account for most countries being first to file jurisdictions, as soon as possible you should file your patent application with the United States Patent and Trademark Office and in all other countries where you anticipate using the patented item.
- Conduct a patent search before you file to make sure a similar patent has not been filed by someone else.
- Your patent application must include one or more claims that technically and specifically define the scope of what is being protected in the patent. These claims are the heart of your patent.
- Your patent application should include drawings that show how the invention looks or works.
Please see our patent page for more information.
Any information that is valuable to its owner, is not generally known, and has been guarded as a secret by the owner constitutes a trade secret.
Protected under both state and federal law, trade secrets are defined in The Uniform Trade Secrets Act as information including a formula, pattern, compilation, program, device, method, technique, or process that derives independent economic value from not being generally known and not being readily ascertainable and is subject to reasonable efforts to maintain secrecy.
In other words, to be considered a trade secret, a set of information must:
- Be valuable to its owner
- Not be generally known
- Have been kept secret by its owner
A business or individual can protect various types of information under trade secret law:
- Formulas for producing products
- Manufacturing processes
- Instructional methods
- Customer lists
- Document-tracking processes
If an invention or a process is not patentable, it can still be protected under trade secret law. This form of IP is often used by patent applicants as a stop-gap to protect innovations for which patent applications are still pending.
From the moment that information is kept secret by its owner, that information automatically becomes a trade secret. The IP continues to live as a trade secret so long as the information continues to have value to the owner and reasonable steps are taken to keep the information secret.
Intellectual Property Infringement Law Firm in San Diego
After you have taken the steps to register your intellectual property, an intellectual property owner has a duty to actively monitor its intellectual property for infringements. Intellectual property infringement occurs when another person or entity sells, duplicates, or uses products or materials that are protected through intellectual property without the owner’s permission. Infringement is more specifically defined based on the type of intellectual property involved. For example:
- If another business uses a trademark that is confusingly similar to yours, this is trademark infringement.
- If another person creates a work that is substantially similar to yours, this is copyright infringement.
- If another company produces a product that utilizes all elements of one or more claims of your patent, this is patent infringement.
- If an individual or entity uses the protected trade secrets of a business without proper authorization, this is misappropriation of a trade secret.
Whether your intellectual property rights were violated or if you’ve been accused of being the violator, there is a typical process that occurs after. In many cases, only a cease and desist letter is necessary to stop the infringing party.
After a cease and desist letter is sent, there are a few outcomes that could occur. In the simplest scenario, the accused party recognizes the infringement and ends the offending practices. In some cases, it may be appropriate that monetary damages be paid to the IP owner.
If the person or entity accused of intellectual property infringement refuses to end the infringing practices – or if an agreement cannot be reached on compensation – intellectual property litigation is the likely next step.
Intellectual Property Litigation Lawyers in San Diego
If an infringer does not respond to a cease and desist letter, a lawsuit may be necessary. Because federal laws protect intellectual property rights, most intellectual property infringement cases are filed in federal court. However, some intellectual property cases may be filed in state courts. If filed in state court, a defendant may decide to have the case removed to federal court.
Legal Remedies for Intellectual Property Infringement
Intellectual property owners have many legal remedies available to them in the event of an infringement including:
- Injunctions – In some infringement cases, the owner of the intellectual property may be able to get an order from the court early in the case that instructs the infringing party to stop using or selling the intellectual property in question.
- Compensatory Damages – This form of damages compensates a plaintiff for the monetary losses suffered as a result of the infringement. These damages may include payment for lost sales or damage to the company’s reputation.
- Payment of Royalty Fees – In some situations, a court may order an infringing party to pay ongoing royalty fees to the owner of intellectual property. This remedy is more common in patent infringement cases.
- Destruction of the Infringing Material – The court may order the infringing party to destroy the infringing material. For example, if the infringing company has created products that infringe a patent, the court may order it to destroy all of the infringing products.
- Stop Importation – When intellectual property is infringed, and a foreign country is shipping in the counterfeited products, these products can be stopped at customs by S. Customs and Border Protection and prohibited from entering the country.
- Punitive Damages – Punitive damages can be awarded when infringement is reckless or willful. These damages are intended as a form of punishment to the infringing party and to deter the defendant and others from committing similar acts in the future. However, these damages are not common because they are reserved for cases involving particularly egregious behavior.
- Attorney’s Fees – In exceptional cases, a court may order the infringing party to pay the other side’s attorney fees.
Mandour & Associates – San Diego Intellectual Property Lawyers
Our experienced attorneys have assisted numerous clients in obtaining registered trademarks‚ patents‚ and copyrights. In addition, if you have been sued or believe someone is infringing on your intellectual property rights‚ we are aggressive intellectual property litigators with 20 plus years of experience.
For a consultation with a qualified San Diego intellectual property attorney on how to best protect your IP rights‚ please contact us.