In an increasingly knowledge-driven economy and online trading environment, Intellectual Property (IP) is a key consideration for any type and size of organization. Trademarks, patents, copyright and designs are fundamental to the protection of an organization’s investment into research and development, marketing and creativity.

IP can open the door to new revenue streams through licensing, franchising and joint ventures. On the other hand IP owned by other organizations may be a trap for the unwary. It is therefore critical for businesses and marketers to know:

I. What IP do you own.

1. Patent

2. Trademark

3. Copyright

II. How to protect that property.

1. Patent – The new America Invents Act (Patent Reform Act of 2011," Pub.L. 112-29), relating to Patent was signed by the President on Sept. 16, 2011, so it’s anyone’s guess if it will make things better or worse.

However, under the new system it would advisable to:

A. File as soon as possible.

B. Keep your invention secret.

C. Get a partner.

2. Trademark – Trademark in the US is governed by the Lanham Act (15 USC §1051 et seq), which establishes right to the exclusive use of trademarks, services marks and trade names. It establishes a registration process and a process to stop infringing use of your trademark, service mark or trade name. It also provides for triple damages as a measure of damages and provides for attorney fees and costs to be awarded to the prevailing party.

It is advisable to:

A. Retain a qualified trademark attorney to perform an extensive search to ensure that your proposed trademark is not already in use.

B. Register your trademark as soon as possible. While registration alone does not equal ownership it puts you in a far better position to stop others from using the proposed trademark and provides severe penalties for those who infringe.

C. Use your trademark in commerce as soon as possible.

3. Copyright – Copyright Act (17 USC §101 et seq.)

Copyright protection extends to "original works of authorship fixed in any tangible medium of expression, now known or later developed, from which they can be perceived, reproduced, or otherwise communicated, either directly or with the aid of a machine or device." The Act defines "works of authorship" as any of the following:

A. literary works,

B. musical works, including any accompanying words,

C. dramatic works, including any accompanying music,

D. pantomimes and choreographic works,

E. pictorial, graphic, and sculptural works,

F. motion pictures and other audiovisual works,

G. sound recordings, and

H. architectural works.

The copyright law provides for exclusive rights to the copyright holder. This means that the copyright holders have the right to:

A. the right to reproduce (copy),

B. the right to create derivative works of the original work,

C. the right to sell, lease, or rent copies of the work to the public,

D. the right to perform the work publicly, and

F. the right to display the work publicly.

III. What steps they can you take to avoid falling foul of the rights of others:

1. Copyright

Do not develop an original work based upon a prior work (called a derivative work) without an appropriate license.

A. Publish only original works.

B. Register your copyright.

2. Trademarks – (registered and unregistered) which protect signs that distinguish the goods and services of one trader from those of another

A. Make sure your trademark is original and not confusingly similar to another.

B. If your ad or marketing suggests a competitor make sure it is in parody or another exception for the use of a trademark.

C. Register the company or product name as a trademark. While not an absolute defense it will act to put the world on notice that you are operating with that company or product name, logo, or slogan.

3. Industrial Design rights – (registered and unregistered) which at their most fundamental level, protect the way things look.

A. U.S. design patents last fourteen years from the date of grant and cover the ornamental aspects of utilitarian objects. Objects that lack a use beyond that conferred by their appearance or the information they convey, may be covered by copyright for a much longer duration.

B. In some circumstances, rights may also be acquired in trade dress, but trade dress protection is akin to trademark rights and requires that the design have source significance or "secondary meaning." It is useful only to prevent source misrepresentations; trade dress protection cannot be used to prevent others from competing on the merits.

4. Patents

A. Do not market and sell your product until you have done a patent search.

B. Search for similar designs and if your design is based upon anothers prior design, obtain a license.

C. If your design is original, obtain a patent.

IP rights may be categorized in a number of ways:

1. Some IP, such as patents, patents and registered design rights must be registered in order to be protected

2. Other IP, such as copyright and trademark come into existence automatically on a work’s creation and use in commerce and therefore, do not depend on any formal registration process. However, I recommend registration as it acts as notice to the world that you are laying claim to the IP and it also gives you access to federal court system, which includes attorney fee provisions as well as statutory damages.

For more information regarding trademark or copyright please contact us directly.