Chapter 11 Intellectual Property Flashcards
abandonment
The failure to use a mark after acquiring legal protection may result in the loss of rights, and such loss is known as abandonment.
actual abandonment
Loss of trademark rights that occurs when a trademark owner discontinues use of a mark with the intent not to resume use.
arbitrary mark
A real word whose ordinary meaning has nothing to do with the trademarked product.
best mode
The best way the inventor knows of making an invention at the time of filing the patent application.
blurring
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.
certification mark
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.
claims
The description of those elements of an invention that will be protected by the patent.
constructive abandonment
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.
continuation application
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.
contributory copyright infringement
Inducing, causing, or materially contributing to the infringing conduct of another with knowledge of the infringing activity.
contributory patent infringement
One party knowingly sells an item that has one specific use that will result in the infringement of another’s patent.
copyright
The legal right to prevent others from copying the expression embodied in a protected work.
counterfeit mark
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.
cybersquatting
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.
declaration by the inventor
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.
derivative works
Works based upon a copyrighted work.
descriptive marks
The identifying marks that directly describe (size,
color, use of) the goods sold under the mark.
design patent
A patent that protects any novel, original, and ornamental design for an article of manufacture.
direct copyright infringement
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.
direct patent infringement
The making, use, or sale of any patented invention in the jurisdiction where it is patented during the term of the patent.
doctrine of equivalents
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.
domain name
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.
drawings
The drawings (except in chemical cases) must show the claimed invention in a patent application in graphic form.
fair use doctrine
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.
fanciful mark
A coined term having no prior meaning until used as a trademark in connection with a particular product.
file-wrapper estoppel
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.
first sale doctrine
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.
genericism
The use of a trademark as a generic name for the product, for example, “a Kleenex” for “tissue.”
gray market
A market where products are sold outside the normal channel of distribution, often at a discounted price.
hot-news exception
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.
indirect patent infringement
One party’s active inducement of
another party to infringe a patent.
inducement to infringe
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.
inevitable disclosure doctrine
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.
intellectual property
Any product or result of a mental process that is given legal protection against unauthorized use.
know-how
Detailed information on how to make or do something.
merger doctrine
If an idea and its expression are inseparable, the merger doctrine dictates that the expression is not copyrightable.
nominative use
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.
noninfringement
In a patent dispute, the defense of noninfringement asserts that the allegedly infringing matter does not fall within the claims of the issued patent.
novel
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.
patent
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.
patent misuse
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.
plant patent
A patent issued for new strains of asexually reproducing plants.
prior art
Developments or pre-existing art that relates to a claimed invention.
protected expression
The part of a work that is subject to copyright protection.
registered mask work
Highly detailed transparencies that represent the topological layout of semiconductor chips.
secondary meaning
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.
service mark
A legally protected identifying mark connected with services.
show-how
Nonsecret information used to teach someone how to make or do something; generally not legally protectable.
specifications
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.
statutory bar
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.
suggestive mark
A trademark that suggests something about a product without directly describing it.
tarnishment
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.
trade dress
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.
trade name
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.
trade secret
Information that derives independent economic value from not being generally known and that is subject to reasonable efforts to maintain its secrecy.
trademark
A word or symbol used on goods or with services that indicates their origin.
useful article doctrine
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.
utility patent
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.
utility requirement
A requirement that an invention must have a practical or real-world benefit in order for a utility patent to be issued.
vicarious copyright liability
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.
web robots
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
work made for hire
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.”
