Chapter 11 Intellectual Property

Question 1

abandonment

Answer 1

The failure to use a mark after acquiring legal protection may result in the loss of rights, and such loss is known as abandonment.

Question 2

actual abandonment

Answer 2

Loss of trademark rights that occurs when a trademark owner discontinues use of a mark with the intent not to resume use.

Question 3

arbitrary mark

Answer 3

A real word whose ordinary meaning has nothing to do with the trademarked product.

Question 4

best mode

Answer 4

The best way the inventor knows of making an invention at the time of filing the patent application.

Question 5

blurring

Answer 5

Dilution of a famous trademark that occurs when a non- famous mark reduces the strong association between the owner of the famous mark and its products.

Question 6

certification mark

Answer 6

A mark placed on a product or used in connection with a service that indicates that the product or service in question has met the standards of safety or quality that have been created and advertised by the certifier.

Question 7

claims

Answer 7

The description of those elements of an invention that will be protected by the patent.

Question 8

constructive abandonment

Answer 8

Loss of trademark rights that occurs when a trademark owner does something, or fails to do something, that causes the mark to lose its distinctiveness.

Question 9

continuation application

Answer 9

A patent application filed after the final office action on an earlier filed application that consists of the same disclosure; the claims may be the same or there may be a new set of claims directed to the same invention claimed in the prior application. Continuation applications must be filed before the earlier application is abandoned and must contain no new matter. A continuation application has the same filing date as the earlier filed application.

Question 10

contributory copyright infringement

Answer 10

Inducing, causing, or materially contributing to the infringing conduct of another with knowledge of the infringing activity.

Question 11

contributory patent infringement

Answer 11

One party knowingly sells an item that has one specific use that will result in the infringement of another’s patent.

Question 12

copyright

Answer 12

The legal right to prevent others from copying the expression embodied in a protected work.

Question 13

counterfeit mark

Answer 13

A spurious trademark (1) that is used in combination with trafficking in goods or services, (2) that is identical to, or substantially indistinguishable from, a registered trademark, and (3) the use of which is likely to cause confusion or mistake
or to deceive; or a spurious designation that is identical with, or substantially indistinguishable from, the holder of the right to use the designation.

Question 14

cybersquatting

Answer 14

The registration of a domain name that is confusingly similar or identical to a protected trademark, where the person registering the domain name has no legitimate interest in that particular domain name and registers and uses it in bad faith.

Question 15

declaration by the inventor

Answer 15

Part of a patent application, the declaration by the inventor states that the inventor has reviewed the application and that he or she believes that he or she is the first inventor of the invention.

Question 16

derivative works

Answer 16

Works based upon a copyrighted work.

Question 17

descriptive marks

Answer 17

The identifying marks that directly describe (size,

color, use of) the goods sold under the mark.

Question 18

design patent

Answer 18

A patent that protects any novel, original, and ornamental design for an article of manufacture.

Question 19

direct copyright infringement

Answer 19

Occurs when one party is alleged to have violated at least one of the five exclusive rights of the copyright holder by its own actions.

Question 20

direct patent infringement

Answer 20

The making, use, or sale of any patented invention in the jurisdiction where it is patented during the term of the patent.

Question 21

doctrine of equivalents

Answer 21

The doctrine that holds that a direct infringement of a patent has occurred when a patent is not literally copied, but is replicated to the extent that the infringer has created a product or process that works in substantially the same way
and accomplishes substantially the same result as the patented invention.

Question 22

domain name

Answer 22

The unique name that identifies an Internet site. Domain names always have two or more parts, separated by dots. The part on the left is the most specific, and the part on the right is the most general.

Question 23

drawings

Answer 23

The drawings (except in chemical cases) must show the claimed invention in a patent application in graphic form.

Question 24

fair use doctrine

Answer 24

The doctrine that protects from liability a defendant who has infringed a copyright owner’s exclusive rights when countervailing public policies predominate. Activities such as literary criticism, social comment, news reporting, educational activities, scholarship, or research are traditional fair use domains.

Question 25

fanciful mark

Answer 25

A coined term having no prior meaning until used as a trademark in connection with a particular product.

Question 26

file-wrapper estoppel

Answer 26

The doctrine that prevents a patent owner involved in infringement from introducing any evidence at odds with the information contained in the owner’s application on file with the U.S. Patent and Trademark Office.

Question 27

first sale doctrine

Answer 27

A U.S. doctrine that states that once the copyright or trademark owner places a copyrighted or trademarked item in the stream of commerce by selling it, the owner has exhausted its exclusive statutory right to control its distribution.

Question 28

genericism

Answer 28

The use of a trademark as a generic name for the product, for example, “a Kleenex” for “tissue.”

Question 29

gray market

Answer 29

A market where products are sold outside the normal channel of distribution, often at a discounted price.

Question 30

hot-news exception

Answer 30

A state law misappropriation claim that applies in cases where (a) the plaintiff generates or gathers information at its cost; (b) the information is time-sensitive; (c) the defendant’s use of the information amounts to free-riding on the plaintiff’s efforts; (d) the defendant is in direct competition with the plaintiff; and (e) the availability of other parties to free ride on the plaintiff’s efforts would reduce the plaintiff’s incentive to provide the product or service such that plaintiff’s existence would be threatened.

Question 31

indirect patent infringement

Answer 31

One party’s active inducement of

another party to infringe a patent.

Question 32

inducement to infringe

Answer 32

A party’s active encouragement of another party to infringe a patent or copyright. Applies to those who supply a product or service that has substantial non-infringing uses if the supplier also encourages that product or service to be used in an infringing fashion.

Question 33

inevitable disclosure doctrine

Answer 33

A doctrine that permits a former employer to prevent an employee from working for a competitor when the new position will require the employee to disclose or use the trade secrets of the former employer.

Question 34

intellectual property

Answer 34

Any product or result of a mental process that is given legal protection against unauthorized use.

Question 35

know-how

Answer 35

Detailed information on how to make or do something.

Question 36

merger doctrine

Answer 36

If an idea and its expression are inseparable, the merger doctrine dictates that the expression is not copyrightable.

Question 37

nominative use

Answer 37

A fair-use defense to a trademark infringement action that permits use of a trademark when necessary for purposes of identifying another producer’s product, not the user’s own product.

Question 38

noninfringement

Answer 38

In a patent dispute, the defense of noninfringement asserts that the allegedly infringing matter does not fall within the claims of the issued patent.

Question 39

novel

Answer 39

An invention is novel if it was not anticipated; i.e., if it was not previously known or used by others in the United States and was not previously patented or described in a printed publication in any country.

Question 40

patent

Answer 40

A government-granted right to exclude others for a stated period of time (usually 20 years) from making, using, or selling within the government’s jurisdiction an invention that is the subject of the patent.

Question 41

patent misuse

Answer 41

In a patent dispute, a defense asserting that although the defendant has infringed a valid patent, the patent holder has abused its patent rights and therefore has lost, at least temporarily, its right to enforce them.

Question 42

plant patent

Answer 42

A patent issued for new strains of asexually reproducing plants.

Question 43

prior art

Answer 43

Developments or pre-existing art that relates to a claimed invention.

Question 44

protected expression

Answer 44

The part of a work that is subject to copyright protection.

Question 45

registered mask work

Answer 45

Highly detailed transparencies that represent the topological layout of semiconductor chips.

Question 46

secondary meaning

Answer 46

A descriptive trademark becomes protectable by acquiring secondary meaning, or sufficient consumer recognition through sufficient use and/or advertising of the goods under the mark.

Question 47

service mark

Answer 47

A legally protected identifying mark connected with services.

Question 48

show-how

Answer 48

Nonsecret information used to teach someone how to make or do something; generally not legally protectable.

Question 49

specifications

Answer 49

The description of an invention in a patent application in its best mode and the manner and process of making and using the invention so that a person skilled in the relevant field may make and use the invention.

Question 50

statutory bar

Answer 50

An inventor is denied patent protection in the event that prior to one year before the inventor’s filing, the invention
was (1) patented; (2) publicly used or sold in the United States; or (3) described in a printed publication in the United States or a foreign country.

Question 51

suggestive mark

Answer 51

A trademark that suggests something about a product without directly describing it.

Question 52

tarnishment

Answer 52

Dilution of a famous trademark that occurs when use of the famous mark in connection with a particular category of goods or goods of an inferior quality reduces the positive image associated with the products bearing the famous mark.

Question 53

trade dress

Answer 53

A manifestation of trademark law, the concept of trade dress is to protect the overall look of a product as opposed to just a particular design.

Question 54

trade name

Answer 54

A trade name or a corporate name identifies and symbolizes a business as a whole, as opposed to a trademark, which is used to identify and distinguish the various products and services sold by the business.

Question 55

trade secret

Answer 55

Information that derives independent economic value from not being generally known and that is subject to reasonable efforts to maintain its secrecy.

Question 56

trademark

Answer 56

A word or symbol used on goods or with services that indicates their origin.

Question 57

useful article doctrine

Answer 57

The doctrine that holds that copyrightable pictorial, graphic, and sculptural works include works of artistic craftsmanship insofar as their form but not their mechanical or utilitarian aspects are concerned.

Question 58

utility patent

Answer 58

A patent that protects any novel, useful, and nonobvious process, machine, manufacture, or composition of matter; or any novel, useful, and nonobvious improvement of such process, machine, manufacture, or composition of matter.

Question 59

utility requirement

Answer 59

A requirement that an invention must have a practical or real-world benefit in order for a utility patent to be issued.

Question 60

vicarious copyright liability

Answer 60

The imposition of civil or criminal liability on one party (e.g., an employer) for the wrongful acts of another (e.g., an employee). Also called imputed liability.

Question 61

web robots

Answer 61

Software programs that search and index the Internet for specific content by visiting websites, requesting documents based on certain criteria, and following up with requests for documents referenced in the documents already retrieved to identify illegal copying

Question 62

work made for hire

Answer 62

A copyrightable work created by an employee within the scope of his or her employment, or a work in one of nine listed categories that is specially commissioned through a signed writing that states that the work is a “work made for hire.”