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How do I trademark the name of my business?

Brett J. Trout
Registered Legal Name vs. Trade Name vs. Trademark
What is the difference between a registered legal name, a trade name, and a trademark? It is important to know the difference as they are all used differently for different purposes, and using them incorrectly could cause a company to lose the rights to at least one of them. First, a registered legal name is the legal name of your business such as ACME Corp. or SmithCo, LLC. It is the name a company uses in formal legal agreements and government filings. A registered legal name is a noun (this will be important later).

Second, a trade name is the name a company usually goes by, such as ACME (without the “Corp.”) or SmithCo (without the “LLC”). Although it may, a trade name does not have to, match the registered legal name. For instance, the registered legal name of your company may be ACME Corp. but the customer-facing name you use for your company may be something like KewlTewls. In cases like this, companies typically must register the trade name as a “d.b.a” (doing business as) with their state. The d.b.a links the trade name to the registered legal name so anyone harmed by the company may determine the registered legal name of the company to pursue legal action. Like a registered legal name, a trade name is also a noun.

Third, a trademark is something that indicates to consumers the source of particular goods or services. A trademark may be a word, name, phrase or symbol. Trademarks can even be colors, sounds, or even smells. The Nike “swoosh” is an example of a trademark. By identifying the source of goods or services, trademarks allow consumers to see the trademark as a symbol of trust, indicating the quality good or service they have experienced in the past. Unlike registered legal names and trade names, trademarks are not nouns, but adjectives. While a trademark may be similar to a company’s registered legal name and trade name, unlike registered legal names and trade names, you should always use trademarks as an adjective in conjunction with a noun identifying the generic good or service associated with the trademark. An example of a company using its various types of names might look like this:

Registered legal name: Acme Corp. has entered into a lease agreement with SmithCo, LLC. (used as a noun)
Trade name: Acme has just opened a new store at 123 Main Street. (used as a noun)
Trademark: Acme widgets are guaranteed for life. (used as an adjective modifying the noun “widgets”)

It is important to always use your trademark as an adjective rather than a noun. Using your trademark as a noun may cause your trademark to become generic, leading to the loss of your trademark rights. Valuable trademarks like escalator, aspirin, and cellophane were all lost as a result of their owners failing to prevent them from becoming unprotectable generic nouns.

Your Company’s Most Valuable Asset
While registering a legal name is often necessary, registered legal names are often not particularly valuable. This is because the government agency registering legal names only cares that no two registered legal names are exactly the same. Because such agencies will often allow the registration by different entities of extremely similar names (such as ACME’s LLC and ACMEs’ LLC) registered legal names are not always what a consumer associates with a good or a service they want to purchase. Trademarks, however, must not only be technically different from one another, they must also be different enough to avoid a likelihood that a consumer might be confused that a particular trademark identifies the goods or services of a competitor. This gives the trademark owner wide latitude to keep competitors from using a similar trademark to trade on the goodwill the trademark owner has developed among its customers.

Many companies have multiple trademarks for multiple product lines. Some companies even have “families” of trademarks connected by a common mark. An example of a family mark is McDonalds’ use of the “Mc” trademark to identify several of its products: McMuffin, McRib, McChicken, etc. owning multiple trademarks allow consumers to associate your company with each of its goods and services. Due to their enormous value in differentiating products from those of competitors, trademarks are the most valuable asset of many companies. Your trademark is what consumers think of when they think of your company. Your company’s trademarks embody the goodwill of your company. This is why it is important to not only vet your potential trademarks to make sure they do not infringe anyone else’s trademarks, but to register and enforce your trademarks against infringers trying to use your reputation to trick customers into buying their inferior product.

Protecting your Trademark
Before you invest a large amount of time and money getting consumers to associate a particular name or logo with your company’s goods or services, contact a trademark attorney to make sure you are not running afoul of any obvious trademark no-nos like infringing or unregistrable trademarks. Once you are on track with the right trademark, you can rest easy knowing that your future marketing campaigns are not going toward promoting a brand you may have to change as soon as it gets popular. For more information on trademarks, check out our FAQ.

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By Brett Trout
May 8, 2024

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Using the Amazon Patent Evaluation Express (APEX) program may subject you to personal jurisdiction in another state

Brett Trout

In 2022, Amazon formally launched its Amazon Patent Evaluation Express (APEX) program, billing it as an efficient way to resolve claims when a seller on Amazon is infringing your patent. Assuming you have signed up for the program and meet all of Amazon’s prerequisites, if you see someone on Amazon selling a product that infringes your patent you may fill out and submit an APEX Agreement to Amazon.

Upon receipt of an APEX Agreement from a patent holder Amazon sends the APEX Agreement to all accused infringers. The seller then has four options: 1) ignore the APEX Agreement; 2) opt into the APEX program and proceed with a third-party determining whether the product likely infringes the patent; 3) resolve the claim directly with the patent owner; or 4) file a lawsuit for declaratory judgment of noninfringement.

If a seller ignores the APEX Agreement, or opts for the third-party review which finds a likelihood of infringement, Amazon will remove the accused products from Amazon. If the parties settle the matter on their own, Amazon will take no further action. Finally, if the accused seller files a declaratory judgment of noninfringement, Amazon will abide by the court’s ruling.

The problem with the last option is that the accused infringer is unlikely to file the declaratory judgment of noninfringement in your home state. The accused infringer is much more likely to file the lawsuit in their own state or a state with courts more favorable to their position. This was the case in SnapRays, d/b/a SnapPower v. Lighting Defense Group. In SnapRays, LDG, a Delaware Limited Liability Company located in Arizona, owned U.S. Pat. No. 8,668,347 covering a cover for an electrical receptacle. Upon receipt of LDG’s APEX Agreement SnapRays, the accused infringer, filed a declaratory judgment of noninfringement in its home state of Utah. The United States District Court for the District of Utah dismissed the declaratory judgment action for lack of personal jurisdiction. The district court ruled in LDG’s favor, finding LDG lacked sufficient contacts with Utah to be subject to personal jurisdiction in an Utah court. The court ruled that submitting the APEX Agreement did not demonstrate LDG purposely directed activities at SnapRays in Utah. The district court’s ruling was based on similar cases and that is well-settled law that a patent owner sending a cease and desist letter to an accused infringer is not, without more, sufficient to justify subjecting that patent owner to personal jurisdiction in the accused infringer’s home state.

SnapRays appealed the district court’s ruling to The United States Court of Appeals for the Federal Circuit. As the issue related to personal jurisdiction in a patent infringement matter, the Federal Circuit applied “Federal Circuit Law” affording no deference to the lower court’s ruling. in determining whether or not LDG was subject to personal jurisdiction in Utah, the Federal Circuit examined three factors: (1) whether the defendant “purposefully directed” its activities at residents of the forum; (2) whether the claim “arises out of or relates to” the defendant’s activities with the forum; and (3) whether assertion of personal jurisdiction is “reasonable and fair.”

In finding that LDG submitting the APEX Agreement did indeed subject LDG to personal jurisdiction in Utah, the Federal Circuit held that extra-judicial enforcement activities, such as Amazon’s APEX program, satisfy the “purposefully directed” arm of the personal jurisdiction analysis. The Court held that the brunt of the harm caused by a defendant’s activities need not be suffered in the declaratory judgment state, as long as at least a “jurisdictionally sufficient amount of harm” is suffered in the state. The Federal Circuit likened the APEX Agreement to a copyright owner sending a notice of claimed infringement (NOCI) under eBay’s Verified Rights Owner (VeRO) program or someone sending a letter to Network Solutions, Inc. (NSI) challenging the registration of a particular domain name in a manner that automatically triggers NSI’s dispute resolution process.

The difference between these activities and a cease and desist letter, reasoned the Court, is that is that these activities all trigger an “automatic effect” in the accused infringers state if the accused infringer does not respond. Conversely, if an accused infringer ignores a cease and desist letter, no harm automatically occurs in the accused infringer’s state. In the SnapRays case, if SnapRays ignored the APEX Agreement, Amazon would automatically remove SnapRays’ products from Amazon. In overruling the lower court, the Federal Circuit ruled that this “automatic takedown process” was enough to tip the scales toward a finding of personal jurisdiction.

While the Federal Circuit did state “Parties who participate in APEX by submitting an Agreement will only be subject to specific personal jurisdiction where they have targeted a forum state by identifying listings for removal that, if re- moved, affect the marketing, sales, or other activities in that state.” it is hard to imagine an APEX Agreement that would not potentially affect the marketing, sales, or other activities in that state.

One of the main attractions of the APEX program is its low cost compared to a multi-million dollar patent infringement lawsuit. In light of this recent ruling, however, the APEX program may not only force a patent owner into a full-blown patent infringement trial before they are ready, but it may face them to litigate the matter in a hostile state. For this reason, if you are not willing, or financially able, to fight a patent infringement lawsuit in the home state of your accused infringer, you may wish to rethink filing an APEX Agreement in the first place.

Edit: SnapRays appealed the district court’s ruling

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By Brett Trout
May 6, 2024

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Can I register a trademark created by Artificial Intelligence?

Brett Trout

Patents require a human inventor and copyright requires a human author, but trademarks require neither a human inventor nor author. There are many reasons the United States Patent and Trademark Office (USPTO) might reject your application for federal trademark registration, such as likelihood of confusion with an existing trademark, being merely descriptive or misdescriptive, being merely a surname, being merely ornamental etc. One reason the USPTO will not reject your trademark application, however, is because your trademark was generated by artificial intelligence.

While you will not be able to copyright your AI-generated trademark, this may work in your favor. You not being able to register the copyright means no one else may register the copyright in the trademark either. This eliminates the problem of the artist you paid to design your logo stealing the logo from somewhere else, resulting in a copyright lawsuit that lands you in federal court.

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By Brett Trout
May 2, 2024

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Do I own the copyright in the AI images I created?

Brett Trout

In the United States, as of the date of this post, you do not own the copyright in any AI work you create. The United States Copyright office has stated explicitly, that “it is well-established that copyright can protect only material that is the product of human creativity.” In reaching this conclusion, the Copyright Office relies on the case of Naruto v. Slater for the proposition that non-humans, such as monkeys, cannot create a copyrightable work.

So how can you protect your AI-generated images? Presently, the Copyright Office will allow you to register copyright in material that was only partially AI-generated. So if you create an AI image, then modify it sufficiently to constitute artistic contribution, you own copyright in that portion of the AI-generated image that you authored.

Your contribution may include the addition of human-generated text or images, and/or the selection, coordination, and arrangement of portions of image. You may even register your copyright in an AI-generated image with human-created portions. To do so, you must describe, in the copyright form, the portions of the image that were created by a human and those items that were AI-generated. Those portions of the image that were AI-generated will be specifically excluded from any resulting copyright registration.

Be aware though that this is a rapidly-changing area of the law, and that the rules outlined above may very well change in the near future.

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By Brett Trout
May 1, 2024

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Do I Need to Trademark the Name of My Board Game? 

Brett Trout

So what is a trademark? A trademark is any word, name, symbol, or device, used to indicate source and to identify and distinguish the owner’s goods or services from those manufactured or offered for sale by others. Trademarks are associated with specific goods or services. That is why one company may own the trademark “Avocado” for mattresses and another company may own the trademark “Avocado” for clothing. While you may own a similar trademark for different goods or services, you cannot own trademarks that are generic or merely descriptive.  So you would not be allowed to own a trademark in “Avocado” or “Green” for avocados.

How do you obtain a trademark? As soon as you offer your board game for sale in commerce with a non-descriptive, non-infringing word or symbol, you automatically have a what is known as a “common law” trademark. While a common law trademark might be sufficient for most board games, if you anticipate competitors trying to sell a similar board game with your trademark, you may want to seek out a trademark attorney to assist you in pursuing federal trademark registration. Assuming there are no other trademarks similar to yours, the cost for federal registration runs less than $1,000. Although you do not have to register your trademark to enforce your trademark against infringers, federal registration does provide many benefits, including constructive notice to everyone in the country that you are claiming the trademark and the possibility of receiving treble damages and having your attorney’s fees paid if the infringer is found to be willfully infringing your federal trademark rights.

What is trade dress? Trade dress is a subset of trademark law that protects the visual appearance of the product or packaging to the extent it serves as an indicator of the source of the product.  

How do I know if I infringe someone else’s trademark? The test for whether you infringe someone else’s trademark is whether there is a likelihood that consumers would be confused that your product originated from, or was authorized by, the trademark owner. Adding more words to an existing trademark will typically not avoid infringement of that trademark. If you incorporate someone else’s entire trademark into your trademark for the same goods, you are likely going to lose the incoming trademark infringement battle. Federally registering your trademark is a good way to not only protect your trademark, but it also gives you some indication of the likelihood you may be infringing someone else’s trademark. Bear in mind, however, the person with the best legal claim against you for trademark infringement is not always the one who actually ends up suing you for trademark infringement and since federal trademark infringement lawsuits can run hundreds of thousands of dollars, even if you win, it is sometimes easier to simply pick a different trademark than to fight trademark infringement lawsuit you are likely to win.  

So do I need to federally register the trademark in my board game? That really depends on your game and your budget. If you are publishing tens of thousands of copies of your “evergreen” board game, the cost of federally registering your trademark, or at least undertaking a trademark infringement analysis, may indeed be warranted. If you are merely publishing 500 copies of your game for little or no profit, however, federally registering your trademark may not be worth the cost. 

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By Brett Trout
April 5, 2024

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Do I Need to Copyright My Board Game?

Brett J. Trout

Whenever you create an original work of authorship, such as a book or artwork for a board game, you own the copyright in that work of authorship as soon as you fix your work in a tangible medium. So what is fixing a work in a tangible medium and why is it necessary? Fixing the work in a tangible medium basically means that you have recorded your work in a way that allows you to communicate your work to others. This can be making a prototype of your board game, storing the artwork on a thumb drive, printing 3D miniatures, etc. Basically, as soon as you record your artwork in some manner, you obtain copyright in that work.

So why have the fixed in a tangible medium requirement anyway? The requirement of fixation in a tangible medium requirement avoids the intractable issues that would be associated with people claiming copyright in ideas. Without a fixation requirement, anyone could claim they wrote any hit song or a hit movie script and sue for copyright infringement. Simply put, no one is allowed to claim copyright in mere ideas. So what parts of your board games can you protect with copyright? Among other things, you may protect your box art, graphic design, minis, characters, text, card art, etc. Ans which parts of your board games are not covered by copyright? By statute, copyright protection does not apply to “any idea, procedure, process, system, method of operation, concept, principle, or discovery.” For functional aspects of your board game such as the game mechanics you have to use patents, rather than copyright, to protect them.

Now that you have fixed your work in a tangible medium and obtained your automatic copyright you are all set, right? Possibly. If you ever actually intend to enforce your copyright in court against an infringer, however, you must first register the copyright with the United States Copyright Office. Unlike registering patents and trademarks, when you register your copyright you do not have to prove that you are the first one to create the copyrightable work. The work only has to be original to you. So, theoretically, two people could own the copyright in the exact same artwork. This actually works to your benefit when it comes to registration. Since there is no requirement of that your copyrightable work be unique, the Copyright Office does not have to undertake a search for similar works before registering your copyright. This makes the copyright registration process cheaper and faster than obtaining a trademark registration on the name of your board game and significantly cheaper and faster than obtaining a patent on one or more of your board game mechanics.

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By Brett Trout
March 21, 2024

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The Right of Publicity in Board Games

Brett J. Trout

Kickstarter recently suspended a campaign for a board game showcasing a well-known intellectual property. The public suspension notice stated the campaign was the “subject of an intellectual property dispute and is currently unavailable.” So did the creators of the game launch their Kickstarter campaign without securing all of the necessary the intellectual property rights? 

Kickstarter did post an additional fact about the issue, namely that the dispute involves “Use of images of Mother Firefly, played by actress Karen Black” and that the infringing materials is the “Likeness of Karen Black.” Even before the dispute was finally settled, Andy Van Zandt of the creator, Trick or Treat Studios, confirmed that their position was that “Our House of 1000 Corpses Kickstarter has been temporarily paused due to an infringement dispute surrounding likeness rights of an individual. Please be assured this is an officially licensed product, and we were diligent in securing all necessary approvals.” While it appears the dispute is settled and the creators may have indeed obtained all of the necessary releases, very little information has been publicly disseminated about the issue, so any opinion on the matter is little more than conjecture at this point.

Although this particular dispute may be one of mistaken allegations, it provides an opportunity to review what it means to “license an IP.” In addition to licensing the trademarks and copyrights, if your game includes names and/or likenesses of actual people you must also consider licensing the name, image, and likeness of everyone you intend to use in your game. Typically, for a movie, the name, image, and likeness rights will have been previously obtained and rolled into one agreement, this is not always the case. Sometimes, while the IP owners may have obtained the name, image, and likeness rights as they pertain to the movie, they may not have obtained the right to sublicense those rights for other projects, such as board games. 

Assume, hypothetically, you are running a Kickstarter campaign. How do you avoid a dispute like this? The best course of action is to have everyone whose name, image, or likeness you intend to use in your game, including the estates of any deceased individuals, (the “Talent”) execute a name, image, and likeness agreement. The agreement should include clauses detailing how long the agreement lasts, how much the Talent is to be paid, whether the Talent has approval rights regarding the final product, governing law, reservation of rights, etc. 

Lets assume though, that you were rash and licensed the intellectual property of a movie for your game, but failed to have one the Talent, sign a name, image, and likeness agreement. Lets also assume that Talent refuses to let your game go forward with her image and likeness. What do you do then? The first thing you do is find out what the Talent wants. Does she want money? Does she want changes to the final product? Does she not want to be associated with the project? Once you know her motivations, you can move toward a settlement. If that is not possible, your only option may be to replace all images of the Talent in your game. 

So just what are name, image, and likeness rights? Name, image, and likeness rights are publicity rights. Publicity rights stem from privacy rights which, in turn, stem from the Fourth Amendment to the Constitution. The right of publicity is of a much more recent vintage than the right of privacy however, dating back only a century or so. Unlike the right of privacy, the right of publicity is a person’s right to control the commercial exploitation of their name, image, likeness, etc. to market third-party goods or services without that person’s consent.

Unlike the right of privacy, which is protected by the Constitution and specific federal statutes, the right of publicity is a patchwork of state and common law. This means your rights to your name, image, and likeness vary depending on which state law applies. Even if what you want to do is legal in your state, it may not be legal in another. So if you plan to sell your game nationwide, it is important that you comport with the publicity rights of every state.  The best way to do this is to have a name, image, and likeness agreement drafted to cover all aspects of your project in compliance with the law of every state. Make sure to anticipate all of your intended use of the name, image, and likeness, so you do not have to go back later. Plan on having expansions to your game? Make sure that is covered in the agreement. Plan on creating an online version of your game or spinning off a video game? Make sure those are covered as well. Given the complexity and potential issues with these types of agreements, it is important to retain a lawyer who has the requisite experience dealing with intellectual property and the right of publicity.

The right of privacy is an ever-changing minefield that can easily land you and your game in court facing down and injunction that could send your game into development hell. Be aware that what constitutes the right of publicity today may be different tomorrow. To avoid third-party lawsuits it is important to educate yourself as to what laws govern your particular intended use of other-people’s names, images, and likenesses. Be prepared to spot right of publicity issues before they arise, so you can get all of the proper licenses in order. Even if you have obtained all of the proper licenses, be sure to quickly address all accusations of infringement to clear up any potential misunderstandings. Being technically right will be of little solace if your game gets confiscated at your warehouse due to a lawsuit by a model or an actor who may have less knowledge of image rights than you do. 

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Posted in Board Games, Copyright Law, Trademark Law.

By Brett Trout
March 15, 2024

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Can I Patent my Board Game?

Brett Trout

The short answer is “yes.” Many board game designers have patented their board games. Given that board games are indeed patentable, the better question might be “Should I patent my board game?” With the cost of patenting a board game running $12-$25K or more and the cost of suing someone for infringing your board game patent running up to seven or eight figures, unless you are planning on making large profits from your game, you may want to forego patent protection. Conversely, if you do anticipate large profits from your game, patent protection may dramatically increase those profits. The extreme example would be the patent on Magic the Gathering that carved out a monopoly allowing the owners of that patent to sell over 20B cards to over 20M players. So while patenting your board game is a good idea, it likely only makes sense if: 1) you plan on your game being in the top 5-10% in overall game sales; and/or 2) you have a publisher willing to pay you a large fee to license your game.

Say your game is the exception, rather than the rule, and you do want to pursue patent protection. What does it take to get a patent on a board game? Board game patents do not protect the entire game. They only protect a narrowly-defined combination of elements that make up a certain mechanic or part of the structure or play of your game. A patent cannot protect the name of your game, your logo, your text, your artwork, or your graphic layout. Those items may instead be protected by trademark and copyright. You also cannot obtain a patent on simply an idea or a concept for a game. To obtain a patent, you have to describe in detail exactly how to make at least one actual embodiment or mechanic of your game.

To obtain a patent, your board game must be new, useful, and nonobvious. Proving your game is new and useful is not as difficult as proving your game is nonobvious. To be nonobvious, your game must be more than simply a new combination of old mechanics. Your game has to either employ a new mechanic, or a combination of existing mechanics in a way that your average skilled board game designer would not have thought of combining. In denying your patent application, patent examiners are allowed to combine mechanics from several other games to show your game is merely an “obvious” combination of old elements and therefore unpatentable. Factors weighed in this determination include: the commercial success of your game, long-felt but unsolved needs in the industry for a game such as yours, failure of others to design similar game, and unexpected results of your particular combination of pre-existing mechanics. None of these factors are dispositive, however, meaning that the determination of the patentability of your game will depend on your specific game, the specific games that preceded yours, and the desire in the industry for a game such as yours.

Unlike trademark and copyright registrations, patent registrations are more detailed and complex. One small error may invalidate your entire patent. Moreover, if you had fifty patent attorneys draft a patent covering your board game, no two of the patents would be the same. They would all have a different scope of protection, varying from narrow to broad. The more narrow your patient, the easier it is for competitors to change one or two items to circumvent your patent. The broader your patent, the better able it is to carve out a larger monopoly. So picking the best patent attorney for your game is extremely important. While disclosing your new board game design does not necessarily prevent you from later applying for a patent, if you wait a year or more after such a disclosure, your game design may be in the public domain and, therefore, unpatentable. If you have disclosed your game to playtesters, publishers, or anyone else, it is important to contact a patent attorney as soon as possible to determine the deadline for getting your patent application on file.



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By Brett Trout
March 14, 2024

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Can you patent inventions created by artificial intelligence? 

It depends (what did you expect a lawyer to say?). The United States Patent and Trademark Office (USPTO) has just issued guidance  indicating inventions created solely by artificial intelligence are not protectable by patent and no artificial intelligence system may be named as an inventor on a patent application. This is not too surprising as it closely mirrors the U.S. Copyright Office’s recent refusal to register copyright in artistic works created solely by artificial intelligence. 

So artificial intelligence cannot be an inventor, but what if artificial intelligence is only used to assist in the creation of the invention? Is the resulting invention patentable? 

According to the new UPSTO guidance, a human inventor may file a patent application on an invention developed with the assistance of AI if the human inventor provided a “significant contribution” to one or more of the claims in the patent application. For the human inventor to obtain a patent on an invention developed with the assistance of AI: 1) the inventor must be a human being; 2) the patent application must be filed on or after February 13, 2024; and 3) the human’s contribution to at least one patent claim must satisfy all of the factors outlined in Pannu v. Iolab Corp., 155 F.3d 1344, 1351 (Fed. Cir. 1998) (the “Pannu” factors). 

To meet the Pannu test, the human inventor must: (1) contribute in some significant manner to the conception or reduction to practice of the invention, (2) make a contribution to the claimed invention that is significant when measured against the full invention, and (3) do more than merely explain to the other inventors (be they human or AI) well-known concepts and/or the current state of the art.  If the human fails to meet even one of these factors, that human is not an inventor of the invention, regardless of any AI contribution to the development. 

If no humans meet all of the Pannu criteria, the invention is not patentable and the USPTO will reject any patent application covering the invention under 35 U.S.C. 101 (no “whoever” (human) exists to have invented or discovered the invention) and/or 35 U.S.C. 115 (failure to name the inventor). 


The USPTO gave itself wide berth in applying this new guidance, stating there is no bright-line test as to what constitutes a human’s significant contribution to inventorship. Without committing itself to any specifics, the USPTO states it will use the following factors to interpret the application of the Pannu factors: 

Does not constitute inventorship                 

Using AI to invent something             

Creating plan to attack problem

Recognizing a problem

Inputting that problem into an AI system

Recognizing an invention in AI output

Owning or overseeing an AI system used to an invention

May indicate inventorship 

Making a significant contribution to AI-assisted invention

Constructing a specific AI prompt to elicit a desired solution to a narrow problem 

Making a significant contribution to the output of AI to create an invention 

Successfully experimenting on AI output

Developing an essential building block from which the claimed invention derives

Designing, building, or training an AI system to a specific problem in a way that makes a significant contribution to an invention output by the AI system

To assist in the application of the foregoing principles to various fact patterns the USPTO provides some straightforward hypotheticals.

Bear in mind though, while the foregoing guidance is what the USPTO currently uses to analyze patent applications filed on or before February 13, 2024, the guidance is not only not the law, it is not even a formal rule. If you have an edge case or if it is unclear how the foregoing guidance applies to a particular fact pattern, it is best to review your particular facts directly in light of existing case law, such as Pannu, and governing statutes, such as 35 U.S.C. 101 and 35 U.S.C. 115.

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By Brett Trout
February 27, 2024

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Who Owns the Pooh?

Brett J. Trout

As of January 1, 2022 Winnie the Pooh entered the public domain. But what does that mean? 

Can you write a book about Winnie the Pooh and Tigger too? No. 
Can you sell Winnie the Pooh branded socks? No. 
Can you start a Winnie the Pooh comic strip? Probably not. 

But why? The answer is that although the original copyright in Winnie the Pooh has moved into the public domain, the copyrights in all of his friends and all of the books published after 1926 are still in force. More importantly, all of the trademarks covering Winnie the Pooh goods and services are still in force and may never expire. 

So how did Disney come to own Winnie the Pooh? A.A. Milne published the first Winnie the Pooh book in 1926. In 1930, Milne transferred United States and Canadian rights in Winnie the Pooh to Stephen Slesinger who, in turn, transferred his rights in Winnie the Pooh to Walt Disney Productions the rights in 1961. Between 1981 and 2017 Disney has filed a dozen or so trademarks on Winnie the Pooh, covering everything from mattresses to coin purses.

If Winnie the Pooh is in the public domain, why can’t you use Winnie the Pooh however you want? Since the copyright in the original 1926 Winnie the Pooh book is in the public domain, you are free to print your own copies of that book. But since Disney owns a whole host of trademarks on Winnie the Pooh, you are not allowed to use Winnie the Pooh in any manner that would imply to the purchasing public that what you are selling is marketed, manufactured, or authorized by Disney. Unfortunately, that leaves a very narrow avenue of authorized uses, even after the 1926 work has entered into the public domain.   

What is a copyright? A copyright is the exclusive right to reproduce or distribute an original work of authorship. Copyrights protect things like books, songs, movies, etc. A copyright does not protect more abstract things like ideas, procedures, processes, systems, forms, methods of operation, concepts or principles. Since 1989, copyright protection attaches to a work as soon as it is “fixed” in a tangible medium and only last for the life of the author plus 75 years. Copying to a disk or hard drive, or ripping to a flash drive all constitute “fixation” for the purposes of copyright protection. Prior to 1989, copyrighted works like Winnie the Pooh entered into the public domain 95 years after their first publication. That is why the original Winnie the Pooh book is in the public domain, but later Winnie the Pooh books, and the characters, like Tigger, introduced in those later works, are not. 

What is a trademark? A trademark is a word or symbol (“mark”) that identifies goods or services coming from a particular source. The mark may be a word, name, phrase or symbol. By identifying goods or services as coming from a particular source, consumers can go back to that good or service time and again, relying on the quality they have grown to trust.  You only obtain trademark rights through actual use of the trademark to market a good or a service. Unlike copyrights, trademarks can last forever, as long as the owner keeps using them and keeps enforcing them against infringers. 

So while Winnie the Pooh is technically in the public domain, and you are free to copy the original 1926 Winnie the Pooh book, most of the rights in Winnie the Pooh are still owned by Disney and tightly enforced. 

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Posted in Copyright Law, Trademark Law, Trademarks. Tagged with .

By Brett Trout
January 22, 2022

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