Court TV's Legal Cafe: The Laws of Invention (Background)

The Laws of Invention

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Qualifying for a Patent
Obtaining a Patent
Copyright Basics
Different Types of Trademarks
Trademark Protection
Registering a Trademark

Qualifying For A Patent

A patent is a document issued by the U.S. Patent and Trademark Office (PTO) that grants a monopoly for a limited period of time on the manufacture, use and sale of an invention. This right lasts between 14 and 20 years, depending on the type of invention.

Most inventions must pass several basic tests to qualify for a patent:

The invention must fall within one or more of five statutory classes of inventions (that is, it must be "statutory subject matter").
The invention must have some utility, no matter how trivial.
The invention must be novel (this means that it must be new in some important way).
The invention must be nonobvious (a significant development) to somebody who understands the technical field of the invention.

1. What types of inventions can be patented?

The U.S. Patent and Trademark Office (PTO) issues three different kinds of patents: utility patents, design patents and plant patents.

To qualify for a utility patent an invention must be:

a process or method of getting something useful done (such as a genetic engineering procedure, a surgical technique or computer software)
a machine (usually something with moving parts or circuitry, such as a cigarette lighter, sewage treatment system, laser or photocopier)
an article of manufacture (such as an eraser, tire, transistor or hand tool)
a composition of matter (such as a chemical composition, drug, soap or genetically altered lifeform), or
an improvement of an invention that fits within one of the first four categories.

Often, an invention will fall into more than one category. For instance, computer software can usually be described both as a process (the steps that it takes to make the computer do something) and as a machine (a device that takes information from an input device and moves it to an output device). Regardless of the number of categories a particular invention falls under, only one utility patent may be issued on it.

For design patents, the only statutory requirements are that the design be novel, nonobvious and nonfunctional. For example, a new shape for a car fender, bottle or flashlight that doesn't improve its functionality would qualify.

Finally, asexually reproducible plants may qualify for a patent if they are both novel and nonobvious. Plant patents are issued less frequently than any other type of patent.

More Examples of Statutory Subject Matter

The following items are just some of the things that will be considered patentable subject matter: biological inventions; carpet designs; new chemical formulas, processes or procedures; clothing accessories and designs; computer hardware and peripherals; computer software; containers; cosmetics; decorative hardware; electrical inventions; electronic circuits; fabrics and fabric designs; food inventions; furniture design; games (board, box and instructions); housewares; jewelry; laser light shows; machines; magic tricks or techniques; mechanical inventions; medical accessories and devices; medicines; musical instruments; odors; plants; recreational gear; and sporting goods (designs and equipment).

2. What types of inventions are not eligible for patent protection?

Some types of inventions do not qualify for a patent, no matter how interesting or important they are. For instance, mathematical formulas, laws of nature, newly discovered substances that occur naturally in the world, and purely theoretical phenomena (for instance a scientific principle like superconductivity without regard to its use in the real world) have long been considered unpatentable. This means, for example, that you can't patent a method for meditation, a purely mathematical approach to problem solving or a newly discovered pain killer in its natural state. But the law in this area can be subtle and tricky. For instance, some computer software heavily based on mathematical formulas may nevertheless qualify for a patent if the patent application limits the software to specific uses on specific machines. This is because the patent laws may not be used to create a monopoly on an idea per se, but can be used to create a monopoly on a specific application of an idea. For instance, no patent may issue on the complex mathematical formulae that are used in space navigation, but a patent is certainly appropriate for the software and machines that translate those equations and make the space shuttle go where its supposed to go. Also, life forms, from bacteria to cows, that are genetically altered to have new and useful characteristics or behaviors, may qualify for utility patents.

In addition, the following categories of inventions don't qualify for patents:

processes done entirely by human motor coordination, such as choreographed dance routines
methods of doing business, such as quality circles, or just-in-time production techniques
printed matter that has no unique physical shape or structure associated with it
unsafe new drugs
inventions useful only for illegal purposes, and
non-operable inventions, including "perpetual motion" machines.

3. What makes an invention novel?

In the context of a patent application, an invention is considered to be novel when it is different from all previous inventions (called "prior art") in some important aspect. When deciding whether an invention is novel for purposes of issuing a patent, the PTO will consider all prior art that existed as of the date the inventor files a patent application on the invention, or if necessary, as of the date the inventor can prove he or she first built and tested the invention, or conceived the invention and then followed up with diligence by building and testing it or filing a patent application. (It may be necessary to look to an earlier date when two or more inventors are fighting over who's entitled to a patent, because U.S. patents are awarded to the first inventor.)

An invention will flunk the novelty test if it was described in a published document or put to public use more than one year prior to the date the patent application was filed (this is known as the one-year rule).

4. When is an invention considered nonobvious?

In addition to being novel, an invention must be nonobvious to qualify for a patent. An invention is considered nonobvious if someone who is skilled in the particular field of the invention would view it as an unexpected or surprising development.

For example, assume that in August 1996, Future Enterprises invents a portable high quality virtual reality system. A virtual reality engineer would most likely find this invention to be truly surprising and unexpected. Even though increased portability of a computer-based technology is always expected in the broad sense, the specific way in which the portability is accomplished by this invention would be a breakthrough in the field and thus unobvious. Contrast this with a bicycle developer who uses a new, light but strong metal alloy to build his bicycles. Most people skilled in the art of bicycle manufacturing would consider the use of the new alloy in the bicycle to be obvious, since lightness is a desirable aspect of high-quality bicycles.

Predicting whether an invention will be considered nonobvious by the PTO is difficult because it is such a subjective exercise--what one patent examiner considers surprising, another may not. In addition, the examiner will usually be asked to make the nonobviousness determination well after the date of the invention, because of delays inherent in the patent process. The danger of this type of retroactive assessment is that the examiner may unconsciously be affected by the intervening technical improvements. To avoid this, the examiner generally relies only on the prior-art references that existed as of the date of invention.

As an example, assume that in 1999, Future Enterprises' application for a patent on the 1996 invention is being examined in the Patent and Trademark Office. Assume further that by 1999, portable virtual reality units are to be found in every consumer electronics store for $200. The patent examiner will have to go back to the time of the invention to fully appreciate how surprising and unexpected it was when it was first conceived, and ignore the fact that in 1999 the technology of the invention is very common.

5. What makes an invention useful?

Patents may issue on inventions that have some type of usefulness (utility), even if the use is humorous, such as a musical condom or a motorized spaghetti fork. However, the invention must work--at least in theory. Thus, a new approach to manufacturing superconducting materials may qualify for a patent if it has a sound theoretical basis--even if it hasn't yet been shown to work in practice. But a new drug that has no theoretical basis and which hasn't been tested will not qualify for a patent.

Remember that to qualify for a design or plant patent, the other two types of patents obtained in the U.S., the inventor need not show utility.

Obtaining A Patent

Because a patent grants the inventor a monopoly on the invention for relatively long period of time (between 14 and 20 years depending upon the invention), patent applications are rigorously examined by the Patent and Trademark Office. Typically, a patent application travels back and forth between the applicant and the patent examiner until both sides agree on which aspects of an invention the patent will cover, if any. After an agreement is reached, the PTO issues a patent deed.

1. How does an inventor apply for a patent in the U.S.?

There is no such thing as an automatic patent through creation or usage of an invention. To obtain patent protection, an inventor must file an application (with the appropriate filing fees) and be issued a patent. To apply for a U.S. patent, the inventor will file the application with a branch of the U.S. Department of Commerce, known as the U.S. Patent and Trademark Office (PTO). A U.S. patent application typically consists of:

an explanation of why the invention is different from all previous and similar developments (the "prior art")
a detailed description of the structure and operation of the invention (called a patent specification) that teaches how to build and use the invention
a precise description of the aspects of the invention to be covered by the patent (called the patent claims)
all drawings that are necessary to fully explain the specification and claims
a statement under oath that the information in the application is true, and
the filing fee.

In addition, small inventors often include a declaration asking for a reduction in the filing fee.

Understanding the Provisional Patent Application*

Often inventors want to have a patent application on file when they go out to show their invention to prospective manufacturers because it will discourage ripoffs. Also, inventors like to get their invention on record as early as possible in case someone else comes up with the same invention. To accomplish both these goals an inventor may file what is known as a Provisional Patent Application (PPA). The PPA need only contain a complete description of the structure and operation of invention and any drawings that are necessary to understand it--it need not contain claims, formal drawings, a Patent Application Declaration (a statement under penalty of perjury that everything in the application is true) or an Information Disclosure Statement (a statement of all prior art known to the applicant). The PPA isn't examined when filed. Instead, it sits in a PTO file and is examined only if the inventor files a regular patent application on the same invention within a one-year period and the applicant wishes to claim the earlier filing date. (An inventor would need to claim the earlier date only if prior art surfaced after the PPA's filing date but before the filing date of the regular application, or if a patent application the same invention was filed by another inventor and the PTO has to decide which applicant should get the patent.)

* For more information on Provisional Patent Applications, see the article titled, "The Easy Way to 'Patent Pending' Status-The New Provisional Patent Application," in this Patent area.

2. What happens after I file a patent application?

When the PTO receives an application, a patent examiner is assigned to it. The examiner is responsible for deciding whether the application meets all technical requirements, whether the invention qualifies for a patent and, assuming it does, what the scope of the patent should be. Typically the application process takes between one and three years--and involves significant amendments by the applicant.

Eventually, if the examiner's objections are overcome by the applicant, the invention is approved for a patent. Then, the applicant pays a patent issue fee and receives an official copy of the patent.

To keep a patent in effect, three additional fees must be paid over the life of the patent. At present, the total patent fee for a small inventor, from application to issue to expiration is well over $3,000. For large corporations, it is twice this amount.

3. What happens if there are multiple applications for the same invention?

If the patent examiner discovers that another pending application involves the same invention, and that both inventions appear to qualify for a patent, the patent examiner will declare that a conflict (called an interference) exists between the two applications. In that event, a hearing is held to determine who is entitled to the patent.

Who gets the patent depends on such variables as who first conceived of the invention and worked on it diligently, who first built and tested the invention and who filed the first provisional or regular patent application. Because of the possibility of a patent interference, it is wise to document all invention-related activities in a signed and witnessed inventor's notebook so that you can later prove the date the invention was conceived and the efforts taken to build and test the invention or quickly file a patent application.

4. How are U.S. patents protected abroad?

Patent rights originate in the U.S. Constitution and are implemented exclusively by federal laws passed by Congress. These laws define the kinds of inventions that are patentable and the procedures that must be followed to apply for, receive and maintain patent rights for the duration of the patent.

All other industrialized countries offer patent protection as well. While patent requirements and rules differ from country to country, several international treaties (including the Patent Cooperation Treaty and the Paris Convention) allow U.S. inventors to obtain patent protection in these other countries if they take certain required steps, such as filing a patent application in the countries on a timely basis and paying required patent fees.

Copyright Basics

Copyright is a legal device that provides the creator of a work of art or literature, or a work that conveys information or ideas, the right to control how the work is used. The Copyright Act of 1976--the federal law providing for copyright protection--grants authors a bundle of intangible, exclusive rights over their works, including the right to reproduce, distribute, adapt or perform those works.

An author's copyright rights may be exercised only by the author--or by a person or entity to whom the author has transferred all or part of her rights. If someone wrongfully uses the material covered by a copyright, the copyright owner can sue and obtain compensation for any losses suffered.

1. What types of creative work does copyright protect?

Copyright protects any creative work that is fixed in a tangible medium of expression, including crafts, poetry, flow charts, movies, CD-ROMs, video games, videos, plays, paintings, sheet music, recorded music performances, novels, software code, artwork, sculptures, photographs, choreography and architectural designs.

Copyright protects a work if and to the extent it is original--that is, independently created by the author. A work does not have to be novel, and its quality, ingenuity and aesthetic merit do not matter. So long as a work was independently created by its author, it is protected by copyright even if other similar works already exist.

To be protected, a work must also be the result of at least some creative effort on the part of its author. There is no hard and fast rule as to how much creativity is enough. As one example, a work must be more creative than a telephone book's white pages, which involve a non-discretionary alphabetic listing of telephone numbers rather than a creative selection of listings.

What Is Tangible Expression?

Virtually any form of expression will qualify as a tangible medium, including a computer's random access memory (RAM), the recording media that capture all radio and television broadcasts, and the scribbled notes on the back of an envelope that contain the basis for an impromptu speech. If an expression is not recorded, however, it is not protected. For example, an extemporaneous poetry reading or musical jam session will not qualify for copyright protection unless they are recorded as they happen.

2. Does copyright protect an author's creative ideas?

No. It is very important to understand that copyright protects only the form in which ideas are expressed (such as a novel, sculpture or software code)--not the ideas or facts underlying the expression. For instance, copyright may protect a particular song, novel or computer game about a romance in space, but it cannot protect the underlying idea of having a love affair among the stars.

Similarly, copyright does not protect facts--whether scientific, historical, biographical or news of the day. Thus, the facts that an author discovers in the course of research are in the public domain, free to all. This is so even if the author spends considerable time and effort discovering previously unknown facts. Copyright only protects fixed, original and minimally creative expression, not the information upon which the information is based.

3. Does copyright protect what I say in an online forum or seminar?

Technically it does, as long as your words are your own and no one else's. But remember that only your words are protected--not any bright ideas that you share with your online audience. Also, a legal doctrine known as fair use may allow others to use your words for educational or news purposes.

4. How long does a copyright last?

For works published after 1977, the copyright lasts for the life of the author plus 50 years. However, if the work is a work for hire or is published anonymously or under a pseudonym, the copyright lasts between 75 and 100 years, depending on the date the work is published.

If the work was published before 1978 and the copyright has been properly renewed, the copyright expires 75 years after date of publication. If the work was created but not published before 1978, the copyright will last until December 31, 2002.

5. When is a work considered to be in the public domain?

When a work becomes available for use without permission from a copyright owner, it is said to be in the public domain. Most works enter the public domain because their copyright has expired. But some works published before 1989 became public domain material because they didn't carry the proper copyright notice (a notice is no longer required to maintain a copyright). Also, many works published before 1964 have entered the public domain because the copyright owners did not renew their copyright under a law that was in effect at that time.

Under a recent change in the copyright laws occasioned by the GATT (General Agreements on Tariffs and Trade) treaty, works of foreign authors that fell into the public domain in the U.S. because they failed to comply with certain formalities required by U.S. laws (such as a valid copyright notice before 1989) have had their copyrights restored.

To determine whether a work is in the public domain, you first have to find out when it was published. Then you can apply the periods of time set out earlier in this section. If the work was published before 1978, you will also need to check with the U.S. Copyright Office to see whether it was renewed. As a general rule, you should assume that every work is protected by copyright unless you can establish that it is not. You can't rely on the presence or absence of a copyright notice (©) to make this determination, because a notice is not required for works published after March 1, 1989. And even for works published before 1989, the absence of a copyright notice may not affect the validity of the copyright.

The use of a collective mark is restricted to members of the group or organization that owns the mark. Even the group itself--as opposed to its members--cannot use the collective mark on any goods it produces. If the group wants to identify its product or service, it must use its own trademark or service mark.

Example:

The letters "ILGWU" on a shirt label is the collective mark that identifies the shirt as a product of a member of the International Ladies Garment Workers Union. If, however, the ILGWU wanted to start marketing its own products, it could not use the ILGWU collective mark to identify them; the union would have to get a trademark of its own.

4. What is trade dress?

In addition to a label, logo or other identifying symbol, a product may come to be known by its distinctive packaging (Kodak film or the Galliano liquor bottle, for example) and a service by its distinctive decor or shape (such as the decor of Banana Republic clothing stores). Collectively, these types of identifying features are commonly termed "trade dress." Because trade dress often serves the same function as a trademark or service mark--the identification of goods and services in the marketplace--trade dress can be protected under the federal trademark laws and in some cases registered as a trademark or service mark with the Patent and Trademark Office.

5. What kinds of things can be considered trademarks or service marks?

Most often, trademarks are words or phrases that are clever or unique enough to stick in a consumer's mind. Logos and graphics that become strongly associated with a product line or service are also typical. But a trademark or service mark can also consist of letters, numbers, a sound, a smell, a color, a product shape, or any other non-functional but distinctive aspect of a product or service that tends to promote and distinguish it in the marketplace. Titles, character names or other distinctive features of movies, television and radio programs can also serve as trademarks or service marks when used to promote a service or product. Some examples of unusual trademarks: the sound of a Harley Davidson motorcycle, the pink color of housing insulation manufactured by Owens-Corning and the shape of the Galliano liquor container.

Trademark Protection

If a trademark or service mark is protected, the owner of the mark can:

prevent others from using it in a context where it might confuse consumers, and
recover money damages from a someone who used the mark knowing that it was already owned by someone else.

Not all marks are entitled to an equal amount of protection, however--and some aren't entitled to any protection at all.

1. What laws protect trademarks?

The basic rules for resolving a dispute over who is entitled to use a trademark come from decisions by federal and state courts (the common law). These rules usually favor whichever business was first to use the mark. A number of additional legal principles used to protect owners against improper use of their marks derive from federal statutes known collectively as the Lanham Act (Title 15 U.S.C. §§1051 to 1127). And all states have statutes that govern the use and protection of marks within the state's boundaries.

Finally, in addition to laws that specifically protect trademarks, all states have laws that protect one business against unfair competition by another business.

What types of marks are entitled to the most legal protection?

As a general rule, trademark law confers the most legal protection to names, logos and other marketing devices that are distinctive--that is, memorable because they are creative or out of the ordinary, or because they have become well known to the public.

Inherently Distinctive Marks

Trademarks that are unusually creative are known as inherently distinctive marks. Typically, these marks consist of:

unique logos or symbols (such as the McDonald's Golden Arch and the IBM symbol)
made-up words, such as Exxon or Kodak (called "coined marks")
words that invoke imaginative images in the context of their usage, such as Double Rainbow ice cream (called "fanciful marks")
words that are surprising or unexpected in the context of their usage, such as Time Magazine or Diesel for a bookstore (called "arbitrary marks"), and
words that cleverly connote qualities about the product or service, such as Slenderella diet food products (called "suggestive or evocative marks").

2. Which marks receive the least protection?

Trademarks and service marks consisting of common or ordinary words are not considered to be inherently distinctive and receive less protection under federal and state laws. Typical examples of trademarks using common or ordinary words are:

people's names, such as Pete's Muffins or Smith Graphics
geographic terms, such as Northern Dairy or Central Insect Control, and
descriptive terms--that is, words that attempt to literally describe the product or some characteristic of the product, such as Rapid Computers, Clarity Video Monitors or Ice Cold Ice Cream.

3. What about Ben and Jerry's Ice Cream? Even though Ben and Jerry are common names, isn't the Ben and Jerry's trademark entitled to maximum protection?

Absolutely. Even if a mark is not inherently distinctive, it may become distinctive if it develops great public recognition through long use and exposure in the marketplace. A mark that becomes protected in this way is said to have acquired a "secondary meaning." In addition to Ben and Jerry's, examples of otherwise common marks that have acquired a secondary meaning and are now considered to be distinctive include Sears (department stores) and Park 'n Fly (airport parking services.)

4. Are there marks that can't be protected under the trademark laws?

Yes. When a trademark is used to describe a type of product rather than a brand of product, the mark is said to be generic and won't be given any protection. Sometimes an inherently distinctive mark is so successful that people start to consider the mark to be synonymous with the product itself, and the mark becomes generic. For example, aspirin was originally a highly distinctive brand name for a type of analgesic (acetaminophen). After a while, aspirin became synonymous with acetaminophen itself and was no longer considered distinctive. Escalator and cellophane were once distinctive marks, as well. And not too long ago, the Xerox mark for photocopiers was in grave danger of losing protection because of the common use of the term as a noun (a xerox) and a verb (to xerox something). To prevent this from happening, Xerox launched an expensive campaign urging the public to use "Xerox" as a proper noun (Xerox brand photocopiers).

Sometimes the name originally chosen for a mark is simply too descriptive of the underlying product to qualify for trademark status. For instance, assume that a new cellular telephone manufacturer calls its product "The Cellular." Because the term "cellular" is the descriptive name for the product itself, it cannot legally be considered a trademark or service mark. If the term "cellular" were used on a facial creme, however, it would be considered suggestive, and therefore distinctive, in that context.

5. Are Internet domain names--names for sites on the World Wide Web--covered by trademark law?

The short answer is yes. Most people are familiar with World Wide Web site names like http://www.times.com or http://www.uspto.gov. The words between "www" and the extension following the period (for instance, com, org, gov, edu) are typically used to identify the business that owns the web site or a well known product or service that is featured on the web site. Frequently, this identifier is an abbreviation of the company or product name. The U.S. Patent and Trademark Office allows these identifiers to be registered as trademarks.

Registering A Trademark

It is possible to register certain types of trademarks and service marks with the U.S. Patent and Trademark Office (PTO). Federal registration puts the rest of the country on notice that the trademark is already taken, and makes it easier to protect a mark against would-be copiers.

1. How does a mark qualify for federal registration?

To register a trademark with the PTO, the mark's owner first must put it into use "in commerce that Congress may regulate." This means the mark must be used on a product or service that crosses state, national or territorial lines or that affects commerce crossing such lines--for example, a catalog business or a restaurant or motel that caters to interstate or international customers. Even if the owner files an intent-to-use (ITU) trademark application (ITU applications are discussed in the previous set of questions), the mark will not actually be registered until it is used in commerce.

Once the PTO receives a trademark registration application, the office must answer the following questions:

Is the trademark the same as or similar to an existing mark used on similar or related goods or services?
Is the trademark on the list of prohibited or reserved names?
Is the trademark generic--that is, does the mark describe the product itself rather than its source?

If the answer to each question is "no," the trademark is eligible for registration and the PTO will continue to process the application.

2. I know the PTO won't register a mark if it's not distinctive or already in use. But are there other types of marks that are ineligible for federal registration?

Yes. The PTO won't register any marks that contain:

names of living persons without their consent
the U.S. flag
other federal and local governmental insignias
the name or likeness of a deceased U.S. President without his widow's consent
words or symbols that disparage living or deceased persons, institutions, beliefs or national symbols, or
marks that are judged immoral, deceptive or scandalous.

If the PTO decides that a mark is eligible for federal registration, what happens next?

Next, the PTO publishes the trademark in the Official Gazette (a publication of the U.S. Patent and Trademark Office). The Gazette states that the mark is a candidate for registration; this provides existing trademark owners with an opportunity to object to the registration. If someone objects, the PTO will schedule a hearing to resolve the dispute.

3. Is it possible to federally register a mark made up of common or ordinary words?

Yes. But marks that are not considered distinctive are placed on a list called the supplemental register while marks that are considered distinctive (either inherently or because they have become well known) are placed on a list called the principal register. Marks on the supplemental register receive far less protection than do those on the principal register. The benefits granted by each type of registration are discussed in more detail in the next question.

4. What are the benefits of federal trademark registration?

It depends on which register carries the mark. Probably the most important benefit of placing a mark on the principal register is that anybody who later initiates use of the same or a confusingly similar trademark will be presumed by the courts to be a "willful infringer" and therefore liable for large money damages.

Placing a trademark on the supplemental register produces significantly fewer benefits, but still provides notice of ownership, which makes it far less likely that someone will use that identical mark for fear of being sued for damages as a willful infringer. Also, if the trademark remains on the supplemental register for five years--meaning that the registration isn't canceled for some reason--and the mark remains in use during that time, it may be moved to the principal register under the secondary meaning rule (secondary meaning will be presumed).

If a mark is placed on neither the principal nor supplemental register, it is still possible to obtain basic protection from the federal courts by suing the infringer under a federal statute which forbids use of a false designation of origin (Title 15 U.S.C. Section 1125). It will be easier to prove the case and collection large damages, however, if the mark has been registered.

5. How long does federal registration last?

Once a trademark or service mark is placed on the principal register, the owner receives a certificate of registration good for an initial term of ten years. The registration may lapse, however, unless the owner files a sworn affidavit within six years of the registration date (called the Sections 8 and 15 Affidavit) stating that the mark is either still in use in commerce or that the mark is not in use for legitimate reasons that do not constitute abandonment of the mark.

The original registration may be renewed indefinitely for additional ten-year periods if the owner timely files the required renewal applications (called a Section 9 Affidavit) with the U.S. Patent and Trademark Office. Failure to renew a registration does not void all rights to the mark, but if the owner fails to re-register, the special benefits of federal registration will be lost.

6. What happens if there is a conflict between a World Wide Web domain name and an existing trademark?

To establish a web site, the owner must first register the site name with a non-profit organization called InterNic. As a general rule, InterNic will register any name that it hasn't already registered, without regard to whether the name is in fact a trademark owned by a different company. This has led to a number of instances where companies with famous marks have initially not been able to use these marks when establishing web sites because someone already used the name as their domain name identifier.

To respond to the legitimate interests of trademark owners (and to keep from getting sued), InterNic lets an established trademark owner contest the use of a domain name that infringes the owner's mark, and in some cases requires the domain name owner to either stop using the name or post a bond to cover any damages suffered by the trademark owner while the dispute is settled in court.

7. Can a business register its mark at the state level?

It is possible to register a mark with the state trademark agency, although the state registration does not offer the same level of protection that is provided by federal law. The main benefit of state registration is that it notifies anyone who checks the list that the mark is owned by the registrant. But if the mark is federally registered, this notice is presumed and the state registration isn't necessary. If, however, the mark is used only within the state and doesn't qualify for federal registration, state registration is a good idea.

How To Register Your Trademark

For most trademarks, registration is a relatively straightforward process. To register your mark with the U.S. Patent and Trademark Office, simply describe your mark in plain English, provide samples of how the mark is being used and include a drawing. State registrations are even easier.

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