March 2016

Intellectual Property (“IP”) is an increasingly valuable asset to the modern business, and appropriate steps must be taken to protect it from unwarranted use now and in the future.  IP comes in many different forms, each with its own process and body of law.

Trademarks.  A trademark is a word, phrase, symbol, and/or design that identifies and distinguishes the source of the goods of one party from those of another.  In other words, a trademark is used to protect your company and product names, packaging, logo, and slogans.  You should not limit yourself to your company name.  Register any brand names, DBA’s, audio marks, and domain names that you are using too.  Trademarks can be registered at the Federal level and the state level.  While registration provides the maximum amount of protection for your brand, you still may gain some level of protection merely by using the unregistered IP in commerce.  If you choose not to register, use the ™ symbol, since it is free of cost to do so.

  • Place the ™ mark (Ctrl Alt T) on all of your IP once you have begun using it in commerce, or if you have only registered it with the state.
  • File a Federal trademark application with the USPTO. Once approved, place the ®   mark (Ctrl Alt R) on all IP.

Copyrights.  A copyright protects original works of authorship including literary, dramatic, website design, musical, photographic, and other types of artistic expression.  Copyrights are of particular importance for content producers.  In situations where employees or independent contractors are creating content for the company, the law can be tricky about IP ownership, so strong contracting is recommended.  While registering with the US Copyright Office is not necessary for protection, it is highly recommended.  Always put the © mark on your work, it’s easy.

  • File a registration with the US Copyright Office as soon as your work is published.
  • Use the © mark (Ctrl Alt C) with the author’s name and date on all examples of your original work.
  • Use “work for hire” contracts, and be sure that all IP rights are transferred to you.

Patents.  A patent protects a new design new process, machine, design, or technology for a limited period of time.  Registration with the USPTO is required in order to gain patent protection.  Unlike copyrights, patent rights will generally stay with an employee or independent contractor that creates the patentable design on your behalf, unless you have a contract to the contrary.  Be careful; do not disclose your design without at least a provisional patent.

  • File a provisional patent application as soon as feasibly possible.
  • File a patent application once your creation is complete.
  • Ensure timely payment of maintenance fees to the USPTO; generally, three times during the life of the patent.
  • After you have filed a patent application, label “Pat. Pend.” on your invention.
  • Once the patent is approved, label the Patent Number on the creation.

Trade Secrets.  A trade secret is a legally protected formula, practice, list, strategy, process, or method that creates a competitive advantage for you and is not known by competitors.   In order to get protection for the trade secret, you must be able to show that you actively tried to keep it a secret.  Using trade secret law is an alternative to filing a patent if you do not wish to make your information public.  For many industries, such as the food industry, the disclosure required for a patent can be problematic.

  • Ensure that all employment agreements acknowledge receipt of trade secrets, and include non-disclosure and non-compete clauses specific to trade secrets.
  • Ensure that independent contractors sign non-disclosure agreements.
  • Formulate an in-house policy to protect trade secrets, and carry it out.

Taking these minimum steps at the beginning of your business will allow you to fully capture the value of your IP throughout its life, and give you a much stronger hand should issues arise later.  Do not hesitate in protecting your IP since it is so important to your business.  If someone else registers, claims, or protects it before you do, you may not be able to use it.

DISCLAIMER:  This Advisor is one of a series of business, real estate, employment, estate planning and tax Advisors prepared by the attorneys at Buynak, Fauver, Archbald & Spray, LLP. This Advisor is not exhaustive, nor is it legal advice. You should discuss your particular situation with us or with your own attorney. Our legal representation is only undertaken through a written engagement letter and not by the distribution of this Advisor.