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Products, services, logos, slogans, music, publications and inventions are known as intellectual property. Intellectual property law is the term for the multiple areas of law—copyright, trademark and patent—that governs the ownership and rights to these creations. In this Blue Paper, we discuss the basics of what these protections are, why they are important to business, when and how to apply, and how to take efforts to ensure that you and your employees are not violating the terms of someone else’s copyright, trademark or patent.
Copyrights, trademarks and patents lue Paper 4imprint.com © 2010 4imprint, Inc. All rights reserved That was my idea: Copyrights, trademarks lue Paper and patents It’s 3:00 a.m. on a Wednesday and despite a glass of warm milk, a lavender- scented pillow case and the soft glow of your television set, you just can’t fall asleep. You flip mindlessly through channels when an infomercial catches your eye. You glare at the product being peddled by a man describing the greatest thing since sliced bread in what is quite possibly the worst fake British accent you have ever heard. Then suddenly, you perk up in recognition. Is that … no, way … it can’t be! But, oh yes, there it is. That thing he’s peddling? That was totally your idea! Maybe it really was your idea or maybe great minds think alike. Either way you’re the one awake at 3:00 a.m. while the guy with the bad accent is probably fast asleep in his king-sized bed in the master suite of his palatial mansion, high in the hills of Hollywood, California. Why? Because he took the idea, made it tangible and patented it before you did. Products, services, logos, slogans, music, publications, inventions. Known as intellectual property, these are the things that build business, grow the economy, define capitalism and make many businesses and individuals very wealthy. In fact, businesses based on intellectual property drive more economic growth in the United States than any other single sector.1 Intellectual property law is the term for the multiple areas of law—copyright, trademark and patent—that governs the ownership and rights to these creations. Most intellectual property laws have historically sought to encourage innovation and creativity, with the ultimate aim of promoting a general benefit to society by granting overarching rights to the creator of a work that allows only the creator to profit from his or her work for a limited period of time.2 Without these laws in place, businesses based on intellectual property become vulnerable to threats of degraded reputations and deflated bottom lines posed by pirates and counterfeiters while consumers become vulnerable to knock- offs or products and services of decreased quality. The United States Patent and Trademark Office (USPTO) estimates that the cost of piracy, counterfeit and all-out theft of intellectual property equates to roughly $250 billion or 750,000 jobs per year. 1 “Stop Fakes.” United States Patent and Trademark Office. Web. 31 July 2010. <http://www.uspto.gov/smallbusiness/>. 2 “Intellectual Property.” Citizen Media Law Project. Web. 01 Aug. 2010. <http://www.citmedialaw.org/legal-guide/intellectual-property>. © 2010 4imprint, Inc. All rights reserved Intellectual property law is not always easy to understand, which quite often lue Paper means that many small businesses and entrepreneurs forgo seeking protection offered by copyrights, trademarks and patents altogether. The truth is, whether an individual entrepreneur or a member of a Fortune 500 company that employs millions, it is time to protect your ideas. In this Blue Paper, we discuss the basics of what these protections are, why they are important to business, when and how to apply, and how to take efforts to ensure that you and your employees are not violating the terms of someone else’s copyright, trademark or patent. But first, a history lesson. A brief history of intellectual property law (it’s not as boring as it sounds) Copyright history dates back to the days when the printing press was first introduced to England in the late 15th century. As the sheer number of presses rose, authorities decided to control the publication of books by granting printers a monopoly with the Licensing Act of 1662. This act lapsed a few years later and copyright laws were absent until 1710 when Parliament enacted the Statute of Anne. This statute established principles of authors’ ownership of copyright and a fixed term of that copyright and prevented a monopoly among booksellers. It also established a public domain for literature by limiting copyright terms and ensuring that once a work was bought, the copyright owner had limited control over the work’s use. When the U.S. was colonized, the Statute of Anne was one of few British laws that failed to carry over to the original 13, meaning copyright laws didn’t exist in America’s early history. However, the Copyright Act of 1790 changed this: It was enacted as one of the first laws following the Constitution and was based, almost verbatim, on the Statute of Anne. Ironic, isn’t it? Also notable, the biggest proponent of this act was Noah Webster, the author of the first American dictionary himself.3 Trademarks date back further than copyrights and are often said to be the oldest form of intellectual property. However, unlike other intellectual property, trademarks have historically been protected primarily by common law and were actually the last to be protected by a federal statute in the U.S., established shortly after the Civil War in 1870. This came as a response to the rapid growth of trade that followed the period of Reconstruction and the need of manufacturers for trade identity. Subsequently amended and struck down over the course of ten years, trademark law as we know was enacted by Congress in 1881 with the Trademark Act.4 3 “Copyright Timeline: A History of Copyright in the United States.” Association of Research Libraries. Web. 31 July 2010. <http://www.arl.org/pp/ppcopyright/copyresources/copytimeline.shtml>. 4 Dudnikov, Karen, and Michael Meadors. “Trademark Law - The History Of Trademark Law.” Tabberone. Great Fabrics and Collectibles. Web. 31 July 2010. <http://www.tabberone.com/Trademarks/TrademarkLaw/History/History.shtml>. © 2010 4imprint, Inc. All rights reserved Patents combine with the history of both copyright and trademarks. In short, the lue Paper basis for modern patents came from Europe where sovereigns commonly awarded “letters patent” to favored inventors. These letters had a seal on the outside, but were open, or “patent” for anyone to see. In the U.S., Congress enacted the first patent laws in 1790 as part of the U.S. Copyright Act. Before then, any inventions and technological advancements created by colonists were owned by the King of England.5 The first patent on the continent of North America was granted by the Massachusetts General Court to Samuel Winslow in 1641 for a novel method of making salt. George Washington signed the First U.S. Patent Grant on July 31, 1790 to Samuel Hopkins of Pittsford, Vermont for the dainty price of four dollars. It was for a new method of making Potash, an industrial chemical used in making soap, glass, fertilizers and gunpowder.6 Break it down As can be expected, intellectual property law has evolved quite drastically since its U.S. inception in the 18th and 19th Centuries. Our Founding Fathers could hardly have predicted the growth of print publications, popular music, radio, television, cds, the Internet or e-books. Today, intellectual property has expanded to be a rather vast subject that is increasingly confusing, with many if-then-and-but situations, especially in how it relates to entrepreneurs, business owners and marketing professionals. Here’s what you need to know … Copyrights According to the Associated Press, copyright is the right of authors to control the reproduction and use of their creative expressions that have been fixed in tangible form, ranging from books to computer discs to the Internet 7. The USPTO elaborates that a copyright is a form of protection provided to authors of original works of authorship that have been tangibly expressed, such as8: • Literary, (i.e., a book or an article) • Graphic (i.e., an infograph or a map) • Photographic • Audiovisual (i.e., a FlashSM presentation) • Electronic (i.e., a website) • Dramatic, (i.e., a play) • Musical (i.e., a song) • Artistic, (i.e., a painting) 5 Bellis, Mary. “A Trip To The Patent and Trademark Office.” About.com - Inventors. Web. 31 July 2010. <http://inventors.about.com/library/weekly/aa061499.htm>. 6 “Happy Anniversary of the First American Patent Act.” Inventors. Web. 31 July 2010. <http://inventors.about.com/library/weekly/aa073100a.htm>. 7 Goldstein, Norm. Stylebook and Briefing on Media Law. New York: Associated, 2005. Print. 8 “What Are Patents Trademarks, Servicesmarks, and Copyrights.” United States Patent and Trademark Office. Web. 01 Aug. 2010. <http://www.uspto.gov/web/offices/pac/doc/general/whatis.htm>. © 2010 4imprint, Inc. All rights reserved Sometimes, unpublished works like diaries or personal letters and e-mails may be lue Paper protected under copyright laws, too. Under the most current Copyright Act of 1976, an owner of a copyright holds exclusive rights to reproduce copyrighted work, to make derivative works, to distribute copies of the copyrighted work, to perform the copyrighted work publicly or to have the work displayed publicly. Copyright protects the form of expression rather than the subject matter; no one can ever copyright an idea or a fact. For example, a description of a machine can be copyrighted, but that will not keep others from drafting their own description or from making or using the machine9. Copyrights are not international and, like most laws, copyrights are not always black and white even in the U.S.—there are often limitations and exemptions from liability, the primary being the doctrines of Fair Use and compulsory license. Fair Use doctrines are used by the courts to determine whether an exemption can be made to copyright laws and are usually based on the following factors10: 1. The purpose of the use of the copyrighted work 2. The nature of the copyrighted work that is used 3. The amount and substantiality of the portion of the copyrighted work used in relation to the whole of the copyrighted work 4. The effect of the use of the copyrighted work upon the potential value of the copyrighted work Compulsory license grants certain use of a copyrighted work upon payment of royalties. For example, if you want to use a song written and performed by The Beatles in your next commercial, you can do so but only after paying a hefty amount of fees to the The Beatles’ song rights holder. Or, you can use any stock imagery you want in that brochure, but you’ll likely have to purchase limited rights before downloading the file from a stock image website. Thanks to the Copyright Act of 1976, copyrights are now obtained automatically upon creating a work for the first time in tangible form. No forms need to be filled out, declarations made, registrations completed or fees paid and the 9 “What Are Patents Trademarks, Servicesmarks, and Copyrights.” United States Patent and Trademark Office. Web. 01 Aug. 2010. <http://www.uspto.gov/web/offices/pac/doc/general/whatis.htm>. 10 Goldstein, Norm. Stylebook and Briefing on Media Law. New York: Associated, 2005. Print. © 2010 4imprint, Inc. All rights reserved copyright symbol doesn’t need to be used. If a work is created over a period of lue Paper time, the part of the work that is fixed on a particular date constitutes the overall work’s creation date. Because copyright law has changed over time, depending on when a work was created determines how long a copyright lasts: For works originally created on or after January 1, 1978, protection under copyright law is granted from the moment of its creation and lasts throughout the author’s life plus an additional 70 years. If something was created by more than one person, the term lasts 70 years after the last surviving author’s death. For works made for hire, such as a logo created by a branding firm for a client, and for anonymous works or those created under pseudonyms, copyrights last 95 years from publication or 120 years from creation—whichever is shorter11. For works originally created and published or registered before January 1, 1978, protection began on the date a work was published with a copyright notice or on the date the work was registered in unpublished form and lasted for 28 years. In the 28th year, registration could have been renewed. The Copyright Act of 1976 extended this term from 28 to 47 years for copyrights that existed on January 1, 1978, or for pre-1978 copyrights restored under the Uruguay Round Agreements Act, making these works eligible for protection for a total of 75 years12. As you develop marketing materials, draft articles, blog posts, press releases, websites and more, it’s important to consider copyright laws in order to protect from a copyright holder’s legal actions against you or your company. Know that: • Ignorance is not a legal defense when copyright is concerned. It is your responsibility to know whether or not the works you are creating are indeed original. • Every work is owned by someone. If you do not own it, you cannot claim any rights to it nor can you use it as you wish, claim it as your own or give the impression that it may have been created by you whether in print or online. • Quotes, snippets, and references are always acceptable as long as the original source is cited. 11 “Small Business - Copyright Law and Registered Copyrights - Copyright Infringement Information - USPTO Stopfakes.gov.” United States Patent and Trademark Office. Web. 01 Aug. 2010. <http://www.uspto.gov/smallbusiness/copyrights/>. 12 “Small Business - Copyright Law and Registered Copyrights - Copyright Infringement Information - USPTO Stopfakes.gov.” United States Patent and Trademark Office. Web. 01 Aug. 2010. <http://www.uspto.gov/smallbusiness/copyrights/>. © 2010 4imprint, Inc. All rights reserved • Copyright symbols (©) placed on a work or a website means that the lue Paper creator is claiming ownership of the work, nothing more and nothing less. The year associated with this symbol refers to the original date of publication and, subsequently, the beginning of a copyright term. This is useful to include on any work created because it informs the public of ownership and will be necessary to prove infringement in many cases. • Many professional associations, such as the Public Relations Society of America (PRSA), have established industry best practices that often address the ethical and legal implications of copyrights and other intellectual property laws. For example, PRSA recommends to all members that RFPs should stipulate that intellectual property developed by consultants and agencies remain the property of said consultant or agency until hired or paid. Thusly protecting a work’s creators and the content created for proposals, while also serving in the best interest of the client.13 So what if you find that a work created by you or your company has been infringed, such as the content of your website has been used on someone else’s site and they are passing it off as their own? The first step is to draft a cease-and-desist letter acknowledging the copyright infringement and requesting for the plagiarized content to be removed. If that doesn’t work, only two options exist—forget about it or file a lawsuit. Whichever you choose will likely depend on how much money you are willing to spend in proportion to how much money the infringed work is worth. Trademarks Trademarks protect any word, name, symbol, device or any combination used, or intended to be used, in commerce to identify and distinguish the goods of one party from those of others. The most common trademarks are of: • Company names, product names or service names • Internet domain names, if they label a product or service • Images that are proprietary to a brand (like the bowls of soup on a Campbell’s® label) • Symbols • Logos • Slogans and taglines • Colors and combinations of • Product design • Product packaging (known as “trade dress”) 13 “Protecting Your Intellectual Property | PRSAY – What Do You Have to Say?” PRSay | What Do You Have To Say? Web. 01 Aug. 2010. <http://prsay.prsa.org/index.php/2010/02/11/protecting-your-intellectual-property/>. © 2010 4imprint, Inc. All rights reserved In essence, trademarks protect a brand and its visual identity. lue Paper Service marks are trademarks except that service marks identify and distinguish the source of a service versus a product. Trademarks and service mark rights, commonly referred to as simply “marks,” may be used to prevent others from using a potentially confusingly similar mark, but not to prevent others from making the same goods or from selling the same goods or services under an obviously different mark14. In order for an individual or business to establish trademark rights, it must legitimately use the actual mark: TM or SM following the word, name, symbol, device, service, etc. in text. However, in order for an individual to use the formal register mark, ®, Federal trademark registration must take place. Why would you pay for registration and go through the registration process for a fancier trademark symbol? For starters, it provides the ability to bring actionable concern in Federal court against someone who has infringed upon your mark. Other advantages include15: • Public notice of ownership of a mark • The exclusive right to display and use a mark within your industry • The legal presumption of a registrant’s ownership of the mark and their exclusive right to use the mark nationwide • The use of the U.S. registration as a basis to obtain registration in foreign countries • The ability to file the U.S. registration with U.S. Customs and Border Protection to prevent the importation of goods that infringe upon your registered mark. Consider registering your trademark if your business intends to expand beyond the local market to sell regionally, statewide, nationally or internationally. Trademarks should also be considered when a brand, product or service is developed that is especially proprietary to your business. 14 What Are Patents Trademarks, Servicesmarks, and Copyrights.” United States Patent and Trademark Office. Web. 01 Aug. 2010. <http://www.uspto.gov/web/offices/pac/doc/general/whatis.htm>. 15 “Small Business - Copyright Law and Registered Copyrights - Copyright Infringement Information - USPTO Stopfakes.gov.” United States Patent and Trademark Office. Web. 01 Aug. 2010. <http://www.uspto.gov/smallbusiness/trademarks/>. © 2010 4imprint, Inc. All rights reserved Typically, trademarks can last indefinitely if the owner continues to use the mark lue Paper in connection with the goods and or services in the registration and files all necessary documentation and renewal forms in the USPTO at the appropriate times16. Once in a blue moon, however, trademark registration will expire but a word or phrase will find itself a “generic trademark”—posing both a threat to a brand and an amazing opportunity all at the same time. Examples include aspirin, bikini, hula hoop, escalator, zipper and more. This phenomenon is called “genericide” and usually occurs when an invention or creation has occurred that requires a name that doesn’t yet exist and one that ultimately becomes the best way to describe something in everyday vernacular. As Seth Godin, blogger and social media expert, explains, “People didn’t say ‘That’s a sexy Bikini® brand bathing suit’ because the idea itself was bigger than the bathing suit.” But we digress. Unlike the process for obtaining a copyright, the process for registering a trademark is time consuming and can be costly, especially if you or your business consults with a legal advisor to review your application … which, is usually recommended. To begin the process of registering a trademark, follow these (somewhat) simple steps17: 1. Make sure your product is eligible for a trademark in the first place. Most trademark registrations are based on the current use of the mark in commerce or a company’s or individual’s intent to use the mark in commerce in the future. What in the heck does “use in commerce” mean? Well, in the case of goods, the mark must appear on the actual goods, the container and displays associated with the goods. Plus, the goods must be sold or transported in legal commerce (a sales or purchase in exchange for commodities). In the case of services, the mark must be used or displayed in the sale or advertising of services and the services must be rendered in commerce. If you have already started using TM or SM, a registration will be based on this and require proof along with a declaration. 16 “Small Business - Copyright Law and Registered Copyrights - Copyright Infringement Information - USPTO Stopfakes.gov.” United States Patent and Trademark Office. Web. 01 Aug. 2010. <http://www.uspto.gov/smallbusiness/trademarks/>. 17 “Small Business - Copyright Law and Registered Copyrights - Copyright Infringement Information - USPTO Stopfakes.gov.” United States Patent and Trademark Office. Web. 01 Aug. 2010. <http://www.uspto.gov/smallbusiness/trademarks/>. © 2010 4imprint, Inc. All rights reserved 2. Search for trademarks. lue Paper In order to determine whether or not a similar or identical mark is already in use in the U.S., deeming your registration impossible, use the USPTO’s free online database to search for existing marks and their details. 3. Search for potential obstacles. While a registered a mark may not exist, that doesn’t mean there isn’t threat of confusion of ownership. Take a few extra steps to search the Internet for domain names and social media accounts to find out if a desired mark is being used in a different capacity by someone else in a way you might not want your brand associated with. 4. Register After conducting research, file a trademark application that can be found on the USPTO website online or by mail. Once an application is filed, your registration is assigned an examining attorney by the USPTO who is responsible for determining if there is a conflict, such as a likelihood of confusing your trademarked work with that of someone else’s. Trademarks, you see, aren’t just about protecting the integrity of a work, but also the consumer—which is why they are so valuable to businesses and brands. “The purpose of a trademark is to help consumers by allowing them to be certain of the source of a good or service,” explains Godin. “When you go to the store and buy some Mentos®, you know you’re getting the real kind, not some sort of inferior mento with a small ‘m.’”18 Once a registration is granted, it is up to the business or brand to monitor the use of the trademark and identify any potential infringements by ignorant parties or competitors. In order to prevent legal scuffles, businesses should honor trademarks of others when referencing trademarked goods or services in marketing materials, communications and resources (like this Blue Paper!) by including the appropriate mark (™, SM, ®) upon first reference of the brand, good or service. Be sure that in advertising, particularly those that compare your product to a competitor’s, that it is very clear that your brand is not attempting to represent their brand. Much like copyrights, if your business suspects that someone is violating the 18 Godin, Seth. “Godin on Trademark*.” Seth’s Blog. Nov. 2006. Web. 01 Aug. 2010. <http://sethgodin.typepad.com/seths_blog/2006/11/godin_on_tradem.html>. © 2010 4imprint, Inc. All rights reserved terms of your trademarks or service marks the first step is a cease and desist lue Paper letter, followed by formal legal action. However, the Internet, particularly search engines, has added a whole other level of infringement risks where trademarks are concerned and it’s these infractions that require additional steps to resolve. It has not been uncommon for competitors to purchase each other’s trademarks as keywords for search engine advertising and hiding these keywords in metatags or use a competitor’s trademarks in the copy or links of a paid search engine ad. For example, Brand A offers similar products to Brand B and would like to reach Brand B’s consumer base through search engines. Brand A purchases keywords that happen to be trademarked words or phrases by Brand B to use its own advantage and conversion gain, essentially allowing Brand A’s search engine ads to appear in searches directly relating to Brand B’s trademarks. While technically a trademark infringement, both situations like this go relatively untouched by intellectual property lawyers because it’s such a gray area. The law and the issues caused by technology are just too far apart.19 In most cases, infringement is not a legal issue but instead relates to policies enacted by each individual search engine. If your business believes that a competitor is infringing upon your trademark via search engine results, the first step to resolution is to file a claim with the search engine itself. Patents A patent is intellectual property protection for an invention—it grants property right to the inventor and is also issued by the USTPO. Patents are granted for new, useful and non-obvious inventions for a period of 20 years from the filing date of an application and provide the right to exclude others from making, using, selling or offering to sell the invention in the U.S. or importing the invention into the U.S. in that time period. Patents on U.S. inventions, like copyrights, are only effective within the U.S.20 There are three types of patents21: • Utility: Granted to someone who invents or discovers a new and useful process, machine, article of manufacture or composition of matter. One of the stipulations of obtaining a utility patent is “usefulness,” 19 Crowell, Grant. “Trademark Law – What Search Marketers Should Know, Part 1 - Search Engine Watch (SEW).” Search Engine Marketing, Search Engine Optimization (SEO) and Paid Search Advertising (PPC) - Search Engine Watch (SEW). 17 Oct. 2007. Web. 01 Aug. 2010. <http://searchenginewatch.com/3627333>. 20 “Small Business - Copyright Law and Registered Copyrights - Copyright Infringement Information - USPTO Stopfakes.gov.” United States Patent and Trademark Office. Web. 01 Aug. 2010. <http://www.uspto.gov/smallbusiness/patents/>. 21 “Small Business - Copyright Law and Registered Copyrights - Copyright Infringement Information - USPTO Stopfakes.gov.” United States Patent and Trademark Office. Web. 01 Aug. 2010. <http://www.uspto.gov/smallbusiness/patents/>. © 2010 4imprint, Inc. All rights reserved meaning that the subject matter has a purpose that consumers would lue Paper deem useful and that the utility actually works. • Design: Granted to someone who invents a new and original design for an article of manufacture. • Plant: Granted to someone who invents or discovers and asexually reproduces any new and distinct variety of plant. Patents, like all other areas of intellectual property law, cannot be granted for mere ideas. Something tangible—an actual invention, the design plan for an invention or a plant must exist. In relation to your business, patents are important, if not necessary to consider. They protect the investment you have made in developing a new product or design. If you don’t patent a new invention, the door is left open for someone to swoop in with the same idea, patent it themselves and prevent your business from moving forward. Additionally, patents provide monetary incentive for new creations, which is a benefit to both brands and consumers. Like trademarks, there steps to be taken in order to file for a patent22: 1. Make sure your invention is patentable. As mentioned, inventions to be patented must be new and useful. Additionally, according to the USPTO, “an invention cannot be patented if a) the invention was known or used by others in the U.S. or patented and described in a printed publication in this or a foreign country; or b) the invention was patented or described in a printed publication in the U.S. or a foreign county or in public use or on sale more than one year prior to the application for patent in the U.S.”23 2. Search prior public disclosures (called “prior art”) Not as easy as searching for trademarks, searching for prior existing patents is time consuming and confusing for most novices. Research is often best done with the help of an attorney. 22 “Small Business - Copyright Law and Registered Copyrights - Copyright Infringement Information - USPTO Stopfakes.gov.” United States Patent and Trademark Office. Web. 01 Aug. 2010. <http://www.uspto.gov/smallbusiness/patents/>. 23 “Small Business - Copyright Law and Registered Copyrights - Copyright Infringement Information - USPTO Stopfakes.gov.” United States Patent and Trademark Office. Web. 01 Aug. 2010. <http://www.uspto.gov/smallbusiness/patents/>. © 2010 4imprint, Inc. All rights reserved 3. File for a patent lue Paper An application must be filed with the USPTO and patent applications are extremely complex. Two types of applications exist: A non- provisional that will include descriptions, declarations, drawings and search and examination fees; and a provisional that is designed to provide a lower cost and allows for joint filing of U.S. and international patents but doesn’t offer the same protections. Once a patent has been approved, a company can move forward with mass production and sales or actions that otherwise deem a patented item profitable. The thing about honoring someone else’s patent is that it won’t likely be necessary unless your business is required to go through its own patenting process—new patents cannot be obtained on existing ones. Claim it Intellectual property law can be confusing … but once understood, copyrights, trademarks and patents can protect a business’ investments, its creation and the very things that differentiate itself from competitors. Additionally, knowing how intellectual property works means a reduced opportunity for a business to unknowingly infringe upon another company’s rights which often results in litigation. Protect your brand, grow your business and support the free market with copyrights, trademarks and patents. Speaking of legal bits … This Blue Paper was written as an informational presentation and overview of intellectual property and how it relates to entrepreneurs, business owners and marketing professionals. Under no circumstances should the information herein be construed as legal advice. Consult with an attorney for more information. 4imprint serves more than 100,000 businesses with innovative promotional items throughout the United States, Canada, United Kingdom and Ireland. Its product offerings include giveaways, business gifts, personalized gifts, embroidered apparel, promotional pens, travel mugs, tote bags, water bottles, Post-it Notes, custom calendars, and many other promotional items. For additional information, log on to www.4imprint.com. © 2010 4imprint, Inc. All rights reserved
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