In certain cases it is appropriate to use a catalog as a specimen for goods. The standard is that the specimen must show the mark as used on or in connection with the goods in commerce. More specifically, a trademark specimen should be a label, tag, or container for the goods, or a display associated with the goods. 37 C.F.R. §2.56(b)(1). In the case of Lands’ End Inc. v. Manbeck, 797 F. Supp. 511, 24 USPQ2d 1314 (E.D. Va. 1992), the applicant had applied to register “KETCH” for purses. The Court determined that the catalog was not mere advertising and that it met the relevant criteria for displays associated with the goods.

A catalog will meet the criteria for display associated with the goods provided that it: “(1) includes a picture or a sufficient textual description of the relevant goods; (2) shows the mark sufficiently near the picture or textual description of the goods to associate the mark with the goods; and (3) includes the information necessary to order the goods (e.g., an order form or a phone number, mailing address, or e-mail address for placing orders).” TMEP §904.03(h)

For more information on trademark specimens, contact your intellectual property attorney. We are located near Downtown Los Angeles, in the City of Pasadena, California.

Your right to protect your invention may be affected when you tell your invention to others. Disclosure of your invention can cause you to lose your ability to obtain a patent. After a printed publication of your invention, you have one year to file for a patent. After the year elapses, you are barred from patenting the invention. The term “printed publication” has a much broader meaning than a layperson might think. Distributing even a single copy of a document can trigger the one-year period – even a poster presentation, marketing materials, or a college thesis.

By treating your disclosures and documents as confidential, you can avoid triggering this statutory bar to patenting your invention. Whenever, disclosing your invention, the best practice is to have a Non-Disclosure Agreement (NDA) or Confidentiality Agreement with the party you are disclosing to. An exception is when you are discussing your invention with your attorney, because strict confidentiality rules already apply to attorney-client communications.

According to the U.S. Copyright Office: “There is no such thing as an ‘international copyright’ that will automatically protect an author’s writings throughout the world. Protection against unauthorized use in a particular country depends on the national laws of that country. However, most countries offer protection to foreign works under certain conditions that have been greatly simplified by international copyright treaties and conventions. There are two principal international copyright conventions, the Berne Convention for the Protection of Literary and Artistic Works (Berne Convention) and the Universal Copyright Convention (UCC).

The United States became a member of the Berne Convention on March 1, 1989. It has been a member of the UCC since September 16, 1955. Generally, the works of an author who is a national or domiciliary of a country that is a member of these treaties or works first published in a member country or published within 30 days of first publication in a Berne Convention country can claim protection under the treaties. There are no formal requirements in the Berne Convention. Under the UCC, any formality in a national law can be satisfied by the use of a notice of copyright in the form and position specified in the UCC. A UCC notice should consist of the symbol © (C in a circle) accompanied by the year of first publication and the name of the copyright proprietor (example: © 2006 John Doe). This notice must be placed in such a manner and location as to give reasonable notice of the claim to copyright. Since the Berne Convention prohibits formal requirements that affect the “exercise and enjoyment” of the copyright, the United States changed its law on March 1, 1989, to make the use of a copyright notice optional. U.S. law, however, still provides certain advantages for use of a copyright notice; for example, the use of a copyright notice can defeat a defense of “innocent infringement.” Even if a work cannot be brought under an international convention, protection may be available in other countries by virtue of a bilateral agreement between the United States and other countries or under specific provision of a country’s national laws. (See Circular 38, International Copyright Relations of the United States.)

An author who desires copyright protection for his or her work in a particular country should first determine the extent of protection available to works of foreign authors in that country. If possible, this should be done before the work is published anywhere, because protection may depend on the facts existing at the time of first publication. There are some countries that offer little or no copyright protection to any foreign works. For current information on the requirements and protection provided by other countries, it may be advisable to consult an expert familiar with foreign copyright laws. The U. S. Copyright Office is not permitted to recommend agents or attorneys or to give legal advice on foreign laws.” U.S. Copyright Office, FL100

For further information on international copyright protection or international copyright conventions go to www.wipo.int or contact your Copyright Lawyer. We are located just outside of Downtown Los Angeles in the City of Pasadena.