Recently, I’ve been meeting with many small business owners who have many good questions about intellectual property and whether the federal IP protections apply to them. The answer is a resounding YES! If you are a business of any size with something unique to offer your consumer base, then you likely have some sort of brand, logo or slogan that you can market as a competitive advantage (this is, after all, the purpose of trademark law.) Protecting and enforcing your IP assets is very important. These assets are valuable if you ever want to sell your company or license the IP. Consider these basic tips:
1. Seek Legal Counsel Early
If you’re going to be in business, budget accordingly, and this includes for legal resources, especially for important assets to your company like intellectual property. Do you have a patentable idea? You want to be sure you seek advice on this before you start commercializing your product or technology to be sure you do not compromise the ability to properly patent the idea. As for seeking trademark protection, while it is possible to seek this protection at any time during the operation of your company, if you start operating under a brand name, logo, or slogan before it is properly vetted, it is possible you may later have to rebrand. Is this a risk you are willing to take? Only you can answer that question. Find an experienced intellectual property lawyer you can grow with and who can be a part of your team. In my experience, these are my most satisfying client relationships, and I believe clients who have these type of trusted advisor relationships with their legal counsel would agree that they get far more out of these relationships when they treat their attorneys as valued member of their teams.
2. Your Company Name and Your Trademark Do Not Have to be the Same
Consider The Procter & Gamble Company – they are the manufacturers of many well-known brands including TIDE laundry detergent, CREST toothpaste, HERBAL ESSENCES shampoo, and CHARMIN toilet paper to name a few. The same is true for the S.C. Johnson & Son, Inc., makers of RAID insect repellants, GLADE air fresheners, WINDEX window cleaner, PLEDGE cleaner, and more. Whatever company name and product or service name you choose, make sure each is properly searched as a trademark to be sure it is not infringing on any third party’s prior rights. See our blog post regarding searching here. Also, before choosing your company or brand name, be sure to consider what domain names are available before you commit to a name.
3. Choose a Distinctive Trademark
Many businesses, regardless of size, choose brand names and trademarks that are descriptive and as a result, these names are not eligible for trademark protection or are difficult to enforce against third parties. Resist the temptation to describe what your business does and instead get a bit creative. The most protectable trademarks are those terms that are completely made up, what we call fanciful trademarks (EXXON and KODAK are examples). We see less of these types of trademarks any more, as it takes a lot of marketing expenditure to create a connection in the mind of consumers between the coined trademark and your company (the source identifier). The next highest level of protection belongs to arbitrary trademarks. These are words that exist in the English language but are applied arbitrarily to another category of goods or services. APPLE computers, VIRGIN airways, KIND snack bars, BLACKBERRY devices all fall into this category. The last level of protection is for suggestive trademarks. These marks are one step above descriptive marks in that they require some level of imagination between the mark and the goods or services in the mind of the consumer. They are evocative of the goods or services. Some examples include: COPPERTONE sunscreen, LONDON FOG rain coats, METRO LIVING for real estate services.
4. Apply for Federal Trademark Protection as Soon as Possible
If your budget allows, work with your trademark attorney to apply for federal trademark protection for your goods or services as soon as you have searched and cleared your mark. Under the U.S system, you may apply for a federal trademark so long as you have a “bonafide intent to use the mark in interstate commerce.” You must demonstrate actual use before the registration issues. Your trademark attorney can advise as to what kinds of use will satisfy the requirements but secure your priority date to protect your mark from subsequent users. Beware of filing your trademark application on your own. Although the USPTO filing system is an open system, this does not mean it is meant for non-lawyers to use. Trademark law, like the other branches of IP law, is a sophisticated area of law with nuances that trademark attorneys spend their careers mastering. When you as a business owner file a trademark application, this is the start of a legal proceeding, and you should treat it as such. If you make a mistake, a qualified trademark attorney can certainly step in and assist you, but whatever mistakes were made at the filing stage cannot be undone, and all filings are a matter of public record. It’s in your best interest to get everything right from the get go.
5. Make Sure you Own Your IP, Especially When Working with Vendors
It’s common for businesses of all sizes to work with creative agencies, graphic designers and the like to help them develop logos, website content, and the like. However, the U.S. Copyright Act bestows certain rights to the creator of “original works of authorship,” regardless of who foots the bill. Most businesses want to own all their intellectual property at all times. Your IP attorney can help advise you as to what documents you need to ensure that the proper assignments are in place to be sure that all creative content is owned by you at all times.
Of course, every business’ situation is different and unique, and it’s impossible to provide a full overview of every aspect of the Lanham Act and the U.S. Copyright Act in a blog. If you require specific advice or wish to learn more about how we can become a valued member of your team, please feel free to contact us.