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John Stockton and the
No-Look Pass: What a Patent Isn't

Karl R. Cannon

One time a writer asked me, a patent attorney, if I could get him a patent on a book he had written. Another time, a business owner wondered if she could patent her product name. And one of my favorites was a sports enthusiast's observation of Utah Jazz basketball player John Stockton's "patented no-look pass." Although it's technically erroneous, this latter example is a delightful vernacular use of the word patent. Such expressions are certainly not objectionable. But if you're wondering where these folks erred, read on.

A book, or any other written matter, cannot be patented. Neither can a product name. Books and product names are the domain of copyrights and trademarks, respectively. More specifically, a copyright is the right of an author to prevent others from copying a tangible expression, such as writings, recordings, and artwork. A trademark is a broad term that applies to any word, name, symbol, or device merchants use to identify and distinguish goods and services in the mind of the purchasing public. Trademarks used in connection with a service are often called service marks (Red Hanger Cleaners™, for example).

John Stockton's no-look pass, although brilliant and admired by basketball fans across the nation, is not patentable. But if it were, John Stockton would do well to patent it. He could then prevent competing basketball players from using a no-look pass without his permission. Like other patent holders, John could reserve his permission for those willing to pay a handsome license fee. But that would unduly complicate the game of basketball: imagine a referee penalizing a player for patent infringement!

A patent is a powerful legal instrument. Briefly stated, it guarantees an inventor's right to exclude others from making, using, or selling an invention. Patents fall into three categories: utility patents for devices and processes, design patents for ornamental designs, and plant patents for certain asexually produced plants.

Utility patents pro-tect the physical, functional features of an invention that is new, useful, and nonobvious. The invention must be a machine, an article of manufacture, a process, a composition of matter, or an improvement of any of these.

Accordingly, some things cannot be patented, no matter how useful or original they are. Mathematical equations cannot be patented. Printed matter or writings are not patentable. Neither are unaltered products of nature such as naturally occurring cellular tissue, microorganisms, or gold, not even by the first person to discover them. The artificial heart was granted a patent because it is a machine that is new, useful, and nonobvious. The light bulb was patented for the same reason. So was the airplane.

However, an invention need not rival the airplane to be worthy of a patent. Patents have been granted for an improved screen door, a new board game, a simple digging tool, and a table. That's right. Remember, an improvement upon a device can also be patentable. In fact, some of the simplest improvements have been the most useful, and the most profitable.

Accordingly, Xerox Corporation may secure a trademark for the name Xerox®, but not a patent. The written information in Xerox Corporation's product literature can be copyrighted, but not patented. Only the products themselves can be patented. However, a company's name can be just as valuable as its patents, and a trademark will protect the name as applied to certain goods or services.

The Death of a Trademark
Unlike patents and copyrights, trademarks can be renewed indefinitiely. But trademarks can also "die" the death of genericide if they become vernacular expression through misuse, and the courts will not enforce them. Such was the fate of aspirin, dry ice, nylon, escalator, raisin bran, yo-yo, and brassiere-all of which used to be trademarks. Trademark misuse occurs when the marks are used as nouns or verbs.

Trademark owners can help prevent such a fate by actively promoting their mark as an adjective only, followed by a generic descriptor of their product. For example, Xerox Corp-oration's trademark campaign states: You can't Xerox a Xerox on a Xerox. But we don't mind at all if you copy a copy on a Xerox® copier.

Therefore, don't go "xerox" anything, but feel free to make use of a Xerox® copier to photocopy something. Similarly, White Consolidated Industries, Inc., would appreciate it if people would not refer to all weed trimmers as "weedeaters," but would ask for Weed Eater® brand trimmers.

Patents, trademarks, and copyrights are generally not interchangeable, but there are exceptions. For example, the design of a manufactured item may be protectable by both a copyright and a design patent. It is also worth noting that a functional feature of that same item may be protectable by a utility patent, and a label on the item may serve as a trademark. The fact that a single product may occasionally be protected by patent, trademark, and copyright law at the same time may seem redundant and confusing at first. Just remember that each area covers entirely separate subject matter, except perhaps for the design patent/copyright overlap in some unique cases.

Patent protection is broader in key respects than trademark or copyright protection. A patent protects an invention and functional equivalents of the invention. A simple design-around still infringes the patent if it performs the same function in the same way to achieve the same result.

In contrast, a copyright protects only a particular expression of an idea, not the idea itself. Thus, the basic idea of one's deceased spouse returning as a teasing ghost may be used legally in several independently copyrighted scripts, such as Noel Coward's Blithe Spirit and the 1980s film, Kiss Me Goodbye, with Sally Fields. The specific wording of each script may be copyrighted, but not the basic idea for the script.

In a similar vein, trademarks are generally protectable only within a specified range of goods or services. For example, Ford Motor Company owns the trademark Mustang® as applied to automobiles, but Glasstream Boats of Georgia owns the same Mustang® trademark as applied to watercraft. Trademark owners may use the "circled R" (®) symbol if the mark is federally registered, and the "superscript TM" () if it is not.

Another way in which patents differ from trademarks and copyrights is the way in which they originate. A patent does not spring into existence until the government grants it. In contrast, a work of authorship attains a copyright as soon as it is fixed in a tangible medium. Similarly, a word, name, or symbol attains trademark status as soon as it is used in commerce with goods or services. Not so with patents. While copyrights and trademarks are automatic, however, they should be formally registered for the full protections and advantages offered by law.

What Good Is a Patent?
How important a patent is often depends on how marketable the protected invention is. Businesses and inventors must therefore give careful consideration to whether their inventions truly represent an advancement worth protecting. If the invention doesn't sell, then a patent may not be worth the trouble. Or, if the market is likely to be ephemeral in nature, a patent may not even be issued until after demand for the product has dwindled.

In such cases it may be better to focus all resources on marketing, without spending time and money trying to get a patent. If the invention really is useful, however, competitors will copy it and sell it in a heartbeat. If your competitors make and sell your invention as well or better than you do, you may soon find yourself downsizing or even out of business. A patent would enable you to preserve your market from the ravages of copycat competitors. Rule of thumb: if a new product is worth putting on the market, it is probably worth patenting.


Karl R. Cannon is a registered patent attorney with the intellectual property law firm of Thorpe, North & Western, L.L.P., 9035 South 700 East, Ste. 200, Sandy, UT 84070; 801-566-6633, fax 801-566-0750, cannon@tnw.com

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