Act Early ! Act Often! Protect Your Intellectual Property

Commentators have estimated the value of intellectual property (“IP”) in the U.S. economy as between $10-$15 trillion. IP enhances market share and market valuation, provides competitive advantage by erecting barriers to entry, and helps defend against knock-offs or infringement.

Too often, though, businesses – from individual entrepreneurs to Fortune 500 companies – overlook the most basic protection for these valuable assets. Proactive steps, regular self-audits, and frequent re-evaluation are crucial.

Trademarks

A trademark is an embodiment of goodwill that quickly communicates numerous attributes. For example, consumers associate ROLEX with diamond watches, high-quality, and high price, while the goodwill associated with TIMEX is dependability, durability, and a lower price point.

Just as importantly, a trademark designates a single source for the products or services, even though the consumer may not know exactly what that source is. A consumer seeing an ad for a “ROLEX Limited Edition” car would assume that the makers of ROLEX watches have somehow ensured that the same qualities of luxury and high-quality appear in the automobile.

So how do you protect your trademark rights?

  • Trademarks are adjectives. Adjectives modify nouns. So follow your trademark with a noun. A generic product descriptor or the word “brand” helps to prevent your trademark from becoming a generic name. “Trampoline,” “cornflakes,” and “aspirin” were trademarks once, but their owners lost their rights because they failed to come up with a generic product name.
  • Don’t get too cute with your trademark by turning it into a verb or a possessive noun, by varying the spelling, or by turning it into another word. This is one of the easiest ways to lose trademark rights.
  • Use it or lose it! In the U.S., trademark rights are based on use, not registration.
  • Use a “TM” symbol – even if you don’t have a pending trademark application. BUT you can only use the registration symbol ® if you actually have a federal registration.
  • Get a federal registration for your trademark if possible, which will give you presumptive nationwide rights, especially against later users.
  • Make sure your trademark registrations cover all of the goods and services on which you use your mark. A registration doesn’t cover “everything,” so be sure to register your trademark for any product line extensions.
  • If you modify your trademark (whether the word(s), logos, or designs), you may need a new registration.
  • We most often think of trademarks as words or symbols, but taglines, slogans, packaging, colors, scents, and even sounds can be trademarks, too. Be sure you’re protecting ALL your valuable trademark rights.

Copyrights

Copyrights protect tangible, original works of authorship or expressions of ideas. Ideas themselves generally cannot be protected, but the embodiment of the ideas can. Examples of copyrightable works: literary works, musical compositions (even jingles), paintings, sculptures, software code, fabric patterns, designs, packaging, ads, graphics, architectural plans.

Some practical protection tips:

  • Register your works. While not mandatory, copyright registration is inexpensive and provides powerful benefits in the event of an infringement or misappropriation, such as statutory damages.
  • When working with third parties (like photographers, ad agencies, or website developers), get the copyrights assigned to you, in writing, before the project gets underway.
  • Consult an attorney before you use someone else’s work. “Sampling,” clipart, parody, free speech rights, and popular notions of “fair use” have created a false sense of security about the use of other people’s music, photos, words, and other creative works. Don’t inadvertently infringe someone’s copyright.
  • Even if it’s not registered, use a copyright notice in this format: © 2014 [Name of company or individual].

Patents and Trade Secrets

Patents must be registered; otherwise, the innovation is a trade secret (if you’ve kept it secret!). Utility patents protect novel, useful, and non-obvious inventions. Design patents cover new, ornamental, and original designs or outer configurations.

  • In the U.S., there’s a one-year grace period within which to file a patent application after a public disclosure or offer for sale, BUT most countries require absolute novelty before a patent application, i.e. you can’t have had ANY disclosures or offers for sale yet.
  • Keep careful notes about the development of your invention.
  • Trade secrets have to be kept secret, so lock them up, restrict access to them, label them “Confidential,” and bind your employees and third parties to non-disclosure agreements.

More Practical Advice

  • One of the keys to protecting IP is to keep documents evidencing developments, sales, marketing, and protection efforts.
  • Your company needs a social media policy, a privacy policy, a document retention policy, and an e-mail usage policy.
  • Train employees how to write, what to write, and what NOT to write.
  • Don’t mark every document as “Confidential”; it only dilutes the strength of your claim.
  • Get agreements involving IP rights in writing BEFORE work begins.
  • Develop a set of company policies on intellectual property protection.
  • Re-evaluate your IP portfolio periodically. Don’t rest on your laurels; your competitors aren’t.
  • Seek counsel from an experienced attorney.

Image by AlmonrothLicensed under the Creative Commons Attribution-Share Alike 3.0 Unported license. Image has not been modified.

About the Author

Arthur J. DeBaugh

Art DeBaugh focuses his practice on trademarks, marketing/advertising/promotions issues, copyrights, trade dress, trade secrets, and business and corporate matters. 
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