COMPARISON OF PATENTS, TRADEMARKS, COPYRIGHTS AND TRADE SECRETS

With respect to our example of the new golf club:

 

  • Utility patent protection can be sought on the new composite, the method of making the composite, the method of making the head, and club head per se;
  • Design patent protection can be sought for the new shaft decoration and on the non-functional design features of the club head;
  • Trademark, state, and/or federal protection can be sought for the mark “SLAMMER”;
  • Federal copyright protection can be sought for the instructions for using the new club;
  • Common law copyright protection may exist for the instructions for using the new club; and
  • Trade secret protection may exist for the manufacturing know-how.

The chart below provides brief descriptions of attributes of various options for protection of intellectual property assets.

COMPARISON OF
PATENTS, TRADEMARKS, COPYRIGHTS AND TRADE SECRETS

Form of ProtectionUtility PatentPlant PatentDesign PatentCopyrightTrademark or Service MarkTrade Secret
What is ProtectedMachine, process, composition of matter, new productsAsexually reproduced plant varietyOrnamental design for an article of manufactureWritings, music, works of artWords, names, symbols, devicesAny confidential information of commercial or personal value
Test for ProtectionNew, useful and unobviousDistinct and new variety of plantNew, ornamental and unobviousOriginalityDistinguish and identify services or goods of one source from those of another(1) Is it a secret and (2) does owner protect the secrecy
How are Rights ObtainedGrant of patent by U.S. Patent & Trademark Office (PTO)Grant of patent by the PTOGrant of patent by the PTOUpon creation of work(1) Through actual use, or (2) registration in PTOBy identifying and treating the information as confidential
Life of Protection20 years from the filing date; enforceable from date of publication; periodic payment of maintenance fees is required20 years from the filing date; enforceable from the date of issue14 years from date of grantLife of the author plus 70 years -or- 95 to 120 years for anonymous works(1) Perpetual with proper use (2) 10 years, renewable if use continuesIndefinite while information remains confidential
Test of InfringementMake, use or sell product or process covered by patent claimsAsexually reproduce or use the patented plantSubstantial similarity of design as a wholeCopy substantial portion of the workLikelihood of confusion, mistake or deception as to origin of goods or serviceMisappropriation