Law Offices of Steven D. Kim - Our Services
Good Design Protected is Good Business(TM)
Good Design Protected is Good Business(TM)
We offer the following legal services:
We practice in the areas of entertainment, intellectual property, sports, and media law with a focus on music, fashion, sports, licensing and branding. We represents actors, models, musicians, music producers, photographers, designers and clothing brands. We have extensive experience developing licensing strategies, strategic partnerships for global corporate clients as well as assisting in product design and brand development.
A trademark consists of a word, symbol. Trade dress law deals with certain attributes of a product: color or combination of colors; size; shape; texture; weight; graphics (i.e., the color yellow applied on the Kodak box). Trademark configuration consists of a shape(s) or form(s) (i.e., the Ferrari automobile shape). In short, the trademark law protects against competitors from using the same or a confusingly similar mark on the same or related goods in the same geographic area traded in by the first user. In the U.S., a person or entity who first uses the trademark is the owner of the mark. In Europe and Asia, unlike the U.S., a person or entity who first files the trademark with their respective government agency is th owner of the trademark. In the U.S., trademark protection is achieved in one of two ways: (1) by actual use of the mark in connection with the product or service in commerce; or (2) by filing a trademark application in the U.S. Patent & Trademark Office.
The criteria and threshold for a trade dress and trademark configuration to be registered is more complex and difficult, however. A product design (its shape or form such as the iPOD from Apple) may be protected under the trademark law as a trademark configuration –it would be deemed analogous to a non-distinctive trademark. However, such protection is granted only when the design has acquired a certain distinctiveness associated with a particular source of the product. Such distinctiveness achieved (generally with time, marketing money and unique design) by the product have acquired a “secondary meaning.”
Trademark, trade dress or trademark coonfiguration protection lasts as long as the mark or design continues to be in actual use in commerce. The registration, which is good for 10 years, may be renewed for another 10 years with the evidence of mark’s actual use in commerce.
A copyright protects creative and original expression (not an idea) fixed in a tangible form. Creative works include text, photos, layout, drawings, artwork, buildings (including 3-dimensional works), and decorative aspects of the products - a product design or form may be registered and protected only if the design is non-functional. The copyright law adheres to a “separatability rationale” whereby an aesthetic/ornamental part of the design must not be intertwined with the functional aspect of the design. As such, copyright law is very limiting when it comes to protecting many product designs. However, product designs that are more akin to works of art may have a better chance of acquiring protection under the Copyright Law.
A copyright to your design automatically comes into being the moment your design is created and fixed in a tangible form. However, additional statutory benefits arise when the work is registered with the Copyright Office. A copyright registration lasts for the life of the author plus 70 years, but is not renewable.
Utility patents protect the functional and structural aspects of a product. Design patents protect the aesthetic/ornamental aspects of a product. A utility patent holder has right to exclude others from importing, making, using, offering for sale and selling the claimed invention. A design patent lasts for 14 years from the date of filing and utility patent lasts for 20 years from the day it was first filed.
In order to get a utility patent the design or invention must pass the three-prong test against prior art:
On the other hand, in order to get a design patent the design must simply be original. It is possible to get a utility patent and a design patent on the same product.
Timeliness is very important with patent applications. Patent application (Design/or utility) must be filed within one year of:
The One-Year Bar rule also applies to obtaining registration in the European Community (called a Community Design). The Paris Convention, an international treaty, allows filing of a design patent application in a foreign country within 6 months of filing a patent application in the United States. The foreign application would be back dated to the date the application was filed in the U.S. The grace period is 1 year for utility patents.
The Law Offices of Steven D. Kim specialize in TRADEMARK, TRADE DRESS, DESIGN COPYRIGHT, DESIGN PATENT, BRAND LICENSING, ENTERTAINMENT, and CONTRACT LAWS. The firm focuses on these specialties to provide our international and local clients with professional and competent representation.
Mr. Kim provides a comprehensive and unparalleled service for his clients with his law and business acumen, product design background, and real-life entrepreneurial experience that is invaluable and resourceful.
| » Trademarks » Patents » Licensing |
» Copyrights » Brand Expansion to Korea & Asia |
