Innovators should consider following these best practices to ensure that what they believe to be their trademarks and copyrights actually are their legal property.
Civil and structural engineers can easily lose sight of the basic premise that intellectual property, such as trademark and copyright, ultimately boils down to legal property. Like any other form of property, the law operates to determine the legal owner of trademarks and copyrights. In certain situations, the law may operate to deny civil and structural engineers the ownership of what should have been their IP.
A few IP ownership best practices and pitfalls follow, which civil and structural engineers can consider keeping in mind in managing their enterprises. This second article in this series covers ownership issues in trademark and copyright. The previous article in this series covered ownership issues in patent and trade secret, which provide the other main legal pillars of IP protection.
Trademark ownership. Trademark provides critical protection to stop others from misusing the brands and goodwill that innovators build up over years and decades of hard work promoting their goods and services. Although civil and structural engineers create common law rights merely by using their marks in commerce, these property rights suffer from significant geographic restrictions and place the burden of proof on the mark user. That is, common law trademark rights do not confer an initially strong presumption of ownership on would-be plaintiffs hoping to enforce those rights.
In addition to state common law trademark rights, U.S. federal law provides a strong body of trademark law that civil and structural engineers can leverage to protect their brands and goodwill in the marketplace. Innovators can apply for federal trademark protection through the United States Patent and Trademark Office. Similar to patent applications, the USPTO examines trademark applications to ensure applicants’ desired marks meet legal requirements for protection. Only after the USPTO registers a trademark can that trademark owner use the circle R, denoting a registered federal trademark. Federal trademark registration on the USPTO principal register grants a robust bundle of IP rights to the owner, including the legal presumption of ownership of the trademark and a legal presumption of exclusive use of that mark across the entire United States, along with a host of other rights. After five years, owners may apply to make their trademark incontestable, which makes it invulnerable to many types of legal challenges.
To maintain federal trademark ownership, federal law expects trademark owners to vigilantly watch over their property. The law leaves it to individual trademark owners to monitor the marketplace for infringers and competing marks that might cause a likelihood of confusion with their own marks. Owners must also be careful in managing their marks and the legal structure used for owning them. Only the legal owner of a mark may apply to the USPTO for registration of that mark. Getting ownership wrong at the USPTO or failing to notify the USPTO of ownership changes such as legal entity changes may result in cancellation of the mark. Also, civil and structural engineers must conduct any licensing of a trademark and its associated goodwill carefully to avoid ownership pitfalls that may have grave legal consequences. Despite the challenges and complexities that accompany federal trademark ownership, innovators should not overlook federal trademark registration as a robust form of IP ownership and protection against competitors looking to hijack brands and goodwill in the marketplace.
Copyright ownership. At least nominally, copyright ownership provides a relatively user-friendly framework to civil and structural engineers. Stemming from the same clause in the U.S. Constitution as patent law, material meeting the relatively low bar for originality becomes copyrighted subject matter as soon as the author fixes the work in tangible form. This generous grant of copyright covers works ranging from prose scrawled on napkins to blockbuster films.
Though the copyright laws do not require registration of copyrighted works, they certainly incentivize authors to take the extra step of filing for a copyright with the U.S. Copyright Office, which falls under the umbrella of the Library of Congress. Typically involving a simple online form wizard and costing a little over $50, many authors can easily handle their own copyright registrations. Registering a work bolsters the author’s copyright by providing a presumption of ownership and allowing for statutory damages. Recent case law also appears to make copyright registration a requirement for bringing a federal cause of action.
Civil and structural engineers should consider filing for copyright registration for at least each set of plans they create, subject to any agreements that may be in place regarding copyright ownership with clients. Engineers may also copyright inhabitable three-dimensional buildings to prevent copying of those structures.
As with many areas of copyright, authors should be careful to delineate whether they are working in a capacity of a work for hire made in the course of employment or as an independent contractor, as these relationships dictate ownership of the work. In general, independent contractors retain ownership of their copyrights in the absence of an agreement to the contrary, while the law generally considers the works of an employee as owned by his or her employer.
Conclusion. Civil and structural engineers should remember that the legally operative word in intellectual property such as trademarks and copyrights is property. Innovators should consider following some of the exemplary best practices mentioned above to try to ensure that what they believe to be their trademarks and copyrights actually are their legal property, which they can enforce if necessary against infringers.
Stephen Keefe, P.E., Esq., is a principal attorney of Stephen L. Keefe LLC. After graduating from West Point with a degree in civil engineering and serving in the U.S. Army, he earned a master’s degree in civil engineering from Columbia University and practiced as a structural engineer in New York City and Virginia for six years. He served as a patent examiner at the U.S. Patent & Trademark Office, received a Juris Doctorate from the George Washington University Law School, and has practiced patent and IP law for over 12 years at leading IP law firms and as in-house corporate patent counsel. He can be contacted at skeefe@keefeip.com.
