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When, Why and Copyrights and How to Use Patents, Trademarks FORM Magazine, July 1991 BY KATHERINE LEUPOLD You've just designed what you think is a unique form. You're planning your entire marketing campaign around the product. You've even picked out a catchy name to help buyers remember it. The problem: you don't want anyone else to reproduce it, copy the text or design or use the same name. What protection does U.S. law give your form and how can you obtain it? Even if your form is not unique, the name may qualify for trademark protection, preventing others from using the same name. The form's construction may qualify for patent construction, as many mailers have. And you might be able to protect some of the form's text under copyright laws. The first step is understanding the differences between patents, copyrights and trademarks. Patents A patent is a non-renewable grant of property right by the government's Patent and Trademark Office (PTO) to the inventor "to exclude others from making, using or selling the invention." The term is 17 years from the date granted; maintenance fees are required. Business forms distributors and manufacturers have received patents on form constructions. You may not, however, obtain a patent on an invention that was in public use or on sale in the U.S. for more than one year prior to filing. If work on the product is "work made for hire"-completed using time and resources of an employer-you may file for a patent but rights will be assigned to your employer. Copyrights A copyright protects the writings of an author against copying. Literary, dramatic, musical, artistic and architectural works are among those included. "Blank forms and similar works, designed to record rather than to convey information, cannot be protected by copyright," according to Circular 32 of the Copyright Office. Copyright does not extend to names, titles and short phrases or clauses such as column headings or simple check lists. Nor can the format, arrangement or typography of work be protected. To be protected, a work must contain "at least a certain minimum amount of original literary, pictorial or musical expression." The Copyright Office does not offer an explanation of "certain minimum amount." However, "an original literary or pictorial work is subject to copyright registration even though it is published in conjunction with a blank form or other material not protected by copyright, provided that the requirements of the copyright law have been met." In these cases, the original work only-not the blank form- would be subject to protection. Works consisting entirely of information that is common property and does not contain original authorship cannot be copyrighted either, including standard calendars, height and weight charts and tape measures and rulers. Copyrights generally endure for the author's life plus 50 years. Copyrights for works made for hire are granted for 100 years from the date of creation or 75 years after initial publication, whichever is shorter. Trademarks A trademark relates to any word, symbol, design, slogan, combination word and design or distinctive sound used in trade to indicate the source or origin of goods and to distinguish them from others' goods. Trademarks can be called service marks when used to identify a service. Trademark rights may be used to prevent others from using a confusingly similar mark but not to prevent others from making the same goods or from selling them under a non-confusing mark. Effective November 1989, applicants may file for registration based on a bona fide intention to use a mark in commerce. The term of trademark registration is 10 years with 10-year renewal terms. Between the fifth and sixth year after registration, registrants must file an affidavit stating the mark is currently in use in commerce or registration will be canceled. Unlike a copyright or patent, trademark rights can last indefinitely if a mark continues its function. Applying for a Patent Any person who "invents or discovers any new and useful process, machine, manufacture or composition of matter, or any new and useful improvements thereof" may obtain a patent. Only the inventor may apply for a patent, with certain exceptions. The Patent and Trademark Office recommends hiring a patent attorney or agent. The application process is lengthy (about 18 months from application to issuance) and complicated. Applicants must submit a drawing, when necessary, a filing fee and a written document, which includes a specification (description and claims) and an oath or declaration. The basic filing fee is $315 for small businesses employing fewer than 500 people. Applying for a Copyright When filing for a copyright, fill out Form TX (for non-dramatic literary works), send samples and the $20 application fee. In works made for hire, the employer, not the employee, is considered the author. Average processing time is four months. When filing a copyright on text contained on a form, specify that you are filing for protection on the text and not the entire form, since blank forms automatically are denied protection. Applying for a Trademark An application consists of a written application form, a drawing of the mark, a filing fee ($175 for each class of goods or services for which the application is made) and specimens in some cases. The PTO has specific requirements on the type and sizes of drawings and specimens. On average, a mark will be registered or the application abandoned within 13 months of filing. Applicants receive an initial determination of registrability within 12 weeks of filing. Applicants must respond to any objections within six months. Your application can be refused if it does not identify the goods or services as coming from a particular source; if it is immoral, deceptive or scandalous; if it consists of or simulates the flag or coat of arms or other insignia of the United States or a state, municipality or foreign nation; or if it is primarily a surname. Several other grounds for refusal also exist. Patent Infringement and Ownership The patentee may manufacture and sell an invention or may license others to do so. After a patent has expired, anyone may make, use or sell the invention without permission of the patentee if other unexpired patents are not infringed. A U.S. patent protects inventions in the U.S. only. Normally you must obtain a license from the Commissioner of Patents and Trademarks before filing in another country unless you file more than six months after filing in the U.S. Patentees making or selling patented items or those authorized to do so are required to mark the articles with the word "Patent" and the number of the patent. Patentees who fail to do so may not recover damages from an infringer unless the infringer was notified of the infringement. Protection for a patent does not start until the patent is granted. If you have applied for a patent, you may market goods with the terms "Patent Applied For" or "Patent Pending" but these phrases have no legal effect. Marking a good as patented when it is not is illegal. Copyright Protection and the Copyright Symbol Registration is generally not a requirement for protection. However, registration establishes a public record of the copyright and is generally necessary before infringement suits may be filed in court. Some companies place copyright symbols on forms to prevent others from reproducing them even if the forms have not been formally registered. If you want to determine if aspects of a form have been registered, conduct a copyright search. Remember that a lag time exists-a copyright may have been issued recently but not yet filed in the Copyright Office. The copyright notice should include the symbol ©-the letter "c" in a circle or the word "Copyright" or the abbreviation "Copr.;" the year of first publication of the work; and the name of the owner of copyright or a recognizable abbreviation or designation. For works first published on and after March 1, 1989, use of the copyright notice is optional though highly recommended, according to the Copyright Office. International copyright protection does not exist. Protection in other countries usually depends on laws of that country. Use of the Trademark Symbol Federal registration is not necessary for trademark protection but registration provides several benefits, including the right to sue in federal court for infringement and the right to deposit the registration with U.S. Customs to stop importation of goods with an infringing mark. Once a registration is issued, registrants may use the ® symbol or the phrase "Registered in U.S. Patent and Trademark Office" or "Reg. U.S. Pat. & Tm. Off." Prior to registration, many trademark owners use a ™ or SM (if the mark identifies a service) symbol to indicate a claim of ownership, even if no federal trademark application is pending. Katherine Leupold is managing editor of FORM magazine. Profile of a Patent Last fall, Bruce Bendel received a patent on this mailer, called ComPro®. Earlier, Bendel, president of Performance Dataforms Co. in Lake Forest, Ill., had received a trademark on the name, short for Communication Promotion Mailer. Bendel filed for the patent in mid-1988 after he realized the mailer was "different than anything else I'd ever seen." The 2-way, self-contained mailer replaces outbound and return envelopes; a full-size, 81/2- x 11-inch or larger message/billing insert; and promotional advertising panels. The mailer, which can be made as large as 111/2 x 18 inches, reduces to a maximum folded size of 111/2 x 6 inches, allowing it to meet first class, one ounce or less and third class automated postage size limits, according to Bendel. Addressing, POSTNET bar coding and personalization can be completed in one pass-through on a high-speed dot-line printer, saving processing time and cost. Cutters and folders also are needed for processing. The entire back (81/2 x 11 inches) and the top half front of the return envelope can be used for advertising. No fly sheet is required for selective address image transfer if billing information is recorded on computer tape or fiche. Bendel is targeting high-volume mailers, including fund raisers, associations, retailers and credit card companies. He has exhibited ComPro at trade shows and advertised in magazines aimed at direct marketers and other high-volume mailers. He estimates he spent $14,000 on attorney's fees alone to file patents in the U.S. and several other countries, including most European countries, Australia, Japan, Canada, South Africa and Israel. If he receives patents overseas, he plans to grant licenses to other producers so he can collect royalties. Bendel filed a patent on another mailer in July 1989. Copyright Searches Before applying for a copyright, you may want to do a search at the Library of Congress in Washington, D.C. A handful of libraries around the country have on-line access to copyrights filed after Jan. 1, 1978. Ideally, when doing a search on a specific form, you'll need its title, the author and the copyright owner. The Copyright Office will search its records for you at $20 per hour, excluding photocopying fees. Write or call the Reference and Bibliography Section, LM-451, Copyright Office, Library of Congress, Washington, DC 20559; (202) 707-6850. Patent and Trademark Searches You may search and examine patents granted since 1836 in the Search Room of the Patent and Trademark Office, Crystal Plaza 3, 2021 Jefferson Davis Highway in Arlington, Va. You also may make preliminary searches at Patent Depository Libraries throughout the U.S., although their collections may not be as extensive. The Trademark Search Library is located nearby at 2900 Crystal Dr., 2nd Floor, Arlington, VA. Getting Help Copyrights are registered in the Copyright Office in the Library of Congress. For information, write Register of Copyrights, Library of Congress, Washington, DC 20559, or call (202) 479-0700. If you know which forms and publications to order, call (202) 707-9100. The office provides several free publications, including Circular 1, "Copyright Basics," and Circular 32, "Blank Forms and Other Works Not Protected by Copyright." For information on patents and trademarks, write the Commissioner of Patents and Trademarks, Washington, DC 20231. An independent trade association, the United States Trademark Association, also can provide background information on trademarks. Contact the group at 6 East 45th St., New York, NY 10017. "Basic Facts About Patents" (including application forms) is available free from the PTO. Write the Commissioner of Patents and Trademarks at the above address or call (703) 557-7800. "Basic Facts About Trademarks" (including application forms) costs $1 and is available from the Government Printing Office. "General Information Concerning Patents" costs $2. To order these documents, write the Superintendent of Documents, U.S. GPO, Washington, DC 20402; (202) 783-3238. Payment should accompany requests. Did You Know?... Hundreds of trademarks exist in the forms industry for product and company names, slogans and logos. Tip-on® and Twin-Web®, for example, are well-known trademarks of Bertek Inc., a Fort Lee, N.J., manufacturer. Other companies making affixed products cannot use "tipped on" and "tip-on." Accepted substitutes for Twin-Web are dual-web, multi-web, joined web and joint web. Familiar trademarks outside the industry include Kleenex, Mace and Ping-Pong. Back to Patents, Copyrights & Trademarks