Size matters in the computer industry, or at least that’s what we were once told. Computer hard drives once could be measured in megabytes. But as the size of programs and operating systems grew they moved to gigabytes. Soon we were told we would need to have storage measured in terabytes to accommodate the latest programs. But then along came the cloud and size, at least on your home or business devices, was no longer as significant of an issue.
In the past few years cloud computing has swept across the technology industry offering the solution to our programs insatiable need for more and more bytes. Hand-in-hand with this remedy, cloud computing also purports to provide greater security for your data in the form of redundant servers constantly backing up the same. Not surprisingly, with the wave of cloud computing there has been a veritable gold rush to register trademarks to identify respective companies’ cloud computing goods and services.
In any business it is critical to understand what your intellectual property rights are and how they can be used to protect your company’s assets. In the growing hyper-competitive marketplace for cloud computing software and other solutions the protection of your intellectual property is now an essential tool in your business model.
The purpose of this paper is to provide a general understanding of the various forms of intellectual property protection available to the creators of cloud software and related goods and services with a suggested action plan for securing and enforcing those rights in the actual marketplace in the future.
Trademark Law 101
First, understand a trademark’s role in society. A trademark operates as a source identifier. In other words, a trademark tells the consumer who the producer or manufacturer is for a specific good or service (e.g., Windows for operating systems, Intel for computer hard ware).
As such, to function as a trademark, a term or design must be distinctive. In other words, when consumers see the trademark in the marketplace the trademark must be capable of identifying the source of the goods or services and not merely to be viewed as a word or combination of words describing the good or service with which it is used.
For instance, the term COMPUTER would not function as a trademark for computers because, when seen in the marketplace, consumers would not view the term to identify the manufacturer of the machine. Rather, they would merely see the term and believe that it is identifying what is in the box – a computer.
In the alternative, APPLE, when used in connection with computers, does function as a trademark as it is not descriptive of what is in the proverbial box but rather arbitrary as applied to those goods. As such, the term is inherently distinctive and can function as a trademark for computers and related technology devices.
This chart provides you with a brief overview of the Spectrum of Distinctiveness and what types of words can and cannot function as a trademark:
Class of Term
Function as a Trademark
|Generic||COMPUTER for computers||No||No one would see the term COMPUTER for computers as identifying the source of those computers.|
|Descriptive||CLOUD for software provided in “the cloud”||No||The term describes a feature, function, or characteristic of the software. Thus it is merely descriptive and would likely not be viewed as identifying the source of the software.|
|Suggestive||GATEWAY for “computers”||Yes||The term suggests that the computers will be a “gateway” elsewhere perhaps by providing one access to the Internet. But because one must exercise mature thought to understand this possible relevance of the term to the industry the term is suggestive and not descriptive.|
|Arbitrary||APPLE for “computers”||Yes||Although an apple is a tangible thing, the use of the term APPLE is arbitrary in regard to computers as it does not describe a feature, function, or characteristic of the goods. Thus, an arbitrary term can be registered as a trademark.|
|Coined or Created||GOOGLE for “search engine services”||Yes||A coined term, one that is created or made up, functions to identify the source of goods or services.|
Now that you have a fundamental understanding of the types of terms that can function as a trademark, what forms of intellectual property are available to goods and services in the cloud computing industry?
Types of Intellectual Property Protection Available
- Trademark(s): Trademarks, in general, are the brand name of the computer hardware, software, or related services that are used to identify the source of those goods or services. A trademark can protect the name of the company (e.g. Microsoft), the name of the software product (e.g., Windows), the name of the service (e.g., Norton Secured), and even slogans or tag lines associated with the goods or services.
- Copyright(s): Copyrights, in general, protect original works of artistic expression. For cloud computing companies U.S. Copyright Law allows you to protect proprietary and original code which is used in the construction of your software, books or written materials you create concerning your goods or services, and possibly your corporate logos if they are of sufficient artistry.
Action Plan for Protection of Your Cloud-Related Trademarks and Copyrights
1. Select Your Trademark(s): Determine a name for your goods, services, tag lines, and/or company mindful of the Spectrum of Distinctiveness above. For instance, at this juncture the trademark you select may use the term “Cloud” in the same (e.g., RACON CLOUD COMPUTING), but given the descriptive and/or generic nature of the terms “CLOUD COMPUTING” you will not be able to claim exclusive rights to these terms. So select a trademark or trademarks that can function as source identifiers and would not be seen as merely describing a feature or characteristic of your goods or services.
2. Trademark Research: Once selected, determine whether your trademarks are available to be registered by conducting a Trademark Research Report for each trademark. Properly conducted, a trademark clearance report will let you know if your trademark(s) are likely to be registered or whether they may be refused for being too similar to another’s trademark among other potential refusals.
3. Register Your Trademark(s): Next, Register Your Trademark(s) with the U.S. Patent and Trademark Office. This is an absolute and critical step for computer companies providing goods and services in the cloud. A U.S. federal trademark registration not only will assist you in preventing infringement of your goods or services but may also provide a critical shield against allegations of infringement by others.
4. Register Your Copyright(s) (Software / Written Materials / Logos): Also, Register Your Copyright(s). If you have unique code in the construction of your programs then get it registered as a Copyright with the U.S. Copyright Office. Also, register any written materials that you provide and/or the artwork for unique logos that you may use to identify your goods or services.
5. Monitor for Infringement: You must also be vigilant in monitoring for infringement of your trademarks and copyrights. You should create a system, or hire a company that specializes in the same, for Monitoring Trademarks filed with the U.S. Patent and Trademark Office, used on the Internet, the registration of domain names, as well as conducting routine searches of the major search engines to make sure infringement of your goods and services and their potential underlying copyright and trademark rights does not occur.
6. Enforce Your Rights: Finally, when infringement is spotted you must act quickly to Enforce Your Copyright(s) and Trademark(s) before it impacts your sales. As referenced above, having your trademarks and copyrights registered is a critical step in the protection of your rights. If you have done so, then when infringement is spotted it is typically far easier to stop quickly and affordably. As web hosts, search engines, and social media sites have policies that preclude infringement of another’s rights on their servers, if your copyrights and trademarks are registered you can often get the infringing material removed from web within days. If they are not registered there are other options for enforcement, however, they are typically more costly and take more time all the while you are losing sales to the infringer. So if you are in cloud computing it is critical to include these steps in your business model to make sure that others who witness your success do not develop similar products with like code or trademarks to illegally siphon sales away from your company by infringing upon its copyright and trademark rights.
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