USA Law and Practice Contributed by: Keith Medansky, Tamar Duvdevani, Michael Geller, Aislinn Smalling and Kristina Fernandez Mabrie, DLA Piper LLP
1. Trade Mark and Copyright Law 1.1 Governing Law Trade Mark US trade mark law is governed by federal and state statutes and common law. Federal law is controlled by the Lanham Act (15 USC § 1051 et seq). Many states also have trade mark and unfair competi - tion statutes. Their scope varies, but they are generally similar to federal law. Trade mark rights arise from use, not just registration. Therefore, common law trade marks are recognised. However, there are benefits to owning a federal reg - istration. Common law rights are limited to the geo - graphic area in which the mark is used and a limited zone of expansion. Copyright US copyright law is governed by the Copyright Act of 1976 (17 USC § 101 et seq). For certain pre-1978 works, the 1909 Copyright Act governs. Common law copyrights are not recognised, and state laws addressing copyright generally are pre-empted. 1.2 Conventions and Treaties/Rights of Foreign IP Holders The US is a party to several treaties relevant to trade marks including: • Trademark Law Treaty
• TRIPS • WIPO Copyright Treaty • WIPO Performances and Phonograms Treaty 2. Trade Mark Ownership, Protection and Rights 2.1 Types of Trade Marks The US protects any designation of source including words, logos, trade dress, collective and certification marks, and “nontraditional marks” such as scents, colours, sound, motion and others. Anything which acts as a source identifier may be protectable pro - vided it is non-functional. Industrial designs are not protected under US trade mark law. Trade mark affords protection in some cir - cumstances to trade dress, including product design and packaging. Design patents protect the ornamen - tal appearance of an article. Surnames are not protectable as trade marks unless they have acquired distinctiveness. Living persons must give permission for their name to be registered as a trade mark. Geographically descriptive trade marks cannot be protected unless (1) the mark has acquired distinc - tiveness and (2) the mark is not geographically decep - tively misdescriptive. The US has several marks which are specially pro - tected by statute. These include, but are not limited to, the OLYMPIC, BOY SCOUTS and GIRL SCOUTS, and LITTLE LEAGUE marks, among others. Many of these statutes include US agency and military marks. The law regarding protection of famous marks not used or registered in the US is unsettled. Some courts have held the famous marks doctrine does not apply in the US ( ITC v Punchgini , 482 F.3d 135, 142 (2d Cir. 2007)), whereas others have recognised some appli - cability ( Grupo Gigante v Dallo , 391 F.3d 1088 (9th Cir. 2004)).
• Singapore Treaty • Madrid Protocol • Paris Convention • TRIPS
• Pan-American Convention • Buenos Aires Convention The US is a party to several treaties relevant to copy - rights including: • Berne Convention
• UCC (Geneva and Paris) • Buenos Aires Convention
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