For many businesses, the future may appear a bit different, including virtual meetings, employees working remotely, staff reductions, etc. However, as business and market conditions evolve, protecting your intellectual property and corporate brand should remain a significant part of your firm’s[1] ongoing planning process.
Investing now in your firm’s existing and future intellectual property will better equip your organization to plan for upcoming maintenance and possible intellectual property opportunities. To do so effectively, it is imperative that the different intellectual property options are understood so they can be assessed for alignment with your firm’s business plans.
This month’s legal risk management tip provides an overview of the various types of intellectual property protections and summarizes possible action steps for a company that is beginning to seek formal brand protection.
Identify the Type of Intellectual Property for Registration:
Intellectual Property covers several valuable business assets, including but not limited to, slogans, logos, designs, processes, and software, among others. To secure ownership rights and enforce a company’s continued ability to use such intellectual property, you may register your intellectual property with either the United States Patent and Trademark Office (“USPTO”) or the United States Copyright Office. These government-regulated agencies handle specific forms of intellectual property, and the distinction is fundamental to understand the registration and protection process.
A. Trademark Protection
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 others.[2] Some examples include brand names, slogans, and logos (e.g. the Nike swoosh is a globally recognized logo). Before you obtain ownership rights of a particular trademark, you must consider the threshold question of whether or not you have priority claim over other intellectual property owners. In order to have a priority claim, the standard measure is whether or not you were the first in time to use your trademark in connection with the particular goods and/or services that you are offering. If you satisfy this initial consideration, there are two primary avenues for securing ownership – (i) establishing common law rights; (ii) or obtaining federal registration by filing with the USPTO.[3]
Common law rights arise without any formal registration and attach based on a firm’s use of a trademark in commerce within a particular geographic area. This approach has limitations, including limited range of protection – the owner of a such a right can only enforce a common law trademark in the geographical area in which the trademark is used. This is a significant consideration because it means that a different organization may freely use your trademark in a nearby region without violating your ownership rights.
On the other hand, federal registration is obtained by filing certain documents with the USPTO. Successfully registering at the federal level is more complicated than the common law approach, but provides greater protections, including (1) creating a presumption of ownership of the trademark throughout the United States; (2) providing notice to the public of your ownership claim over the trademark; and (3), allowing use of the trademark in connection with particular goods or services on a nationwide scale. Once you secure federal trademark registration, your ownership rights do not expire after a set number of years. Protection continues without interruption so long as the owner of the trademark files all necessary post-registration forms and continues to demonstrate “actual use” of the trademark. This means that, to keep your intellectual property protection intact, your firm has to be able to demonstrate that the trademark is being used in commerce and in connection with the registered source of goods or services.
Moreover, since registration in the United States does not protect your trademark in any other country, there are several treaties that may be utilized to obtain additional protections in non-United States jurisdictions. For example, there are 106 members states that belong to the Madrid Protocol, which allows a trademark owner to complete a single application and secure registration in any or all 106 locations.[4]
B. Copyright Protection
A copyright protects original works of authorship including, but not limited to, literary, dramatic, musical, and artistic works, such as poetry, novels, movies, songs, computer software, and architecture. To secure copyright protection, registration is not mandatory as ownership rights attach the moment that the work is created. However, in the event you are required to enforce copyright ownership rights by bringing a lawsuit, then registration of the copyright material is necessary.
In the event you proceed with copyright registration, the duration of copyright protection depends on several factors. For example, if the original work is created by an individual, protection lasts for the life of the author, plus 70 years. Or, for a “joint work” (i.e., work that is prepared by two or more authors who did not perform the work for hire), the protection lasts for 70 years after the last surviving author’s death.
Similar to trademark protection, there is no “international” copyright protection. However, most countries offer protection for foreign works so long as certain conditions have been met. These conditions are detailed within the applicable treaty or agreement and may be a valuable tool to ensure protection of your work on a global scale.[5]
C. Patent Protection
A patent consists of a limited property right relating to an invention, granted by the USPTO[6], in exchange for public disclosure of an invention. Patentable materials include, but are not limited to, business methods and processes, machines, devices, manufactured articles, and chemical compositions.
The duration of patent protection depends on the type of patent granted. For example, if you secure a new design patent[7], a patent-holder’s protection will last for 15 years from the issuance. On the other hand, protection of a utility patent[8] will last for 20 years from the date of filing of the patent application in the United States.
Due to the complexities in securing patent protection, a number of arrangements are being discussed to streamline the protection process amongst multiple countries. For example, in January of 2020 a work-sharing agreement was finalized between the USPTO and the Mexico Institute of Industrial Property, which will accelerate the process of obtaining a patent in Mexico for those already in possession of a corresponding patent in the United States.[9]
Create Your Plan
Once you have secured ownership over your intellectual property, the steps involved in understanding and ensuring continued protection of your intellectual property may be daunting. To keep the process as streamlined as possible, an “IP Audit” may be a useful tool to compile a list of your firm’s immediate intellectual property business needs and create a five-year plan. For example, an IP Audit may list your company’s registered intellectual property, such as your business logo, and any immediate or future costs required to maintain registration (i.e., upcoming USPTO post-registration filings and payment of mandatory filing fees). Additionally, if your organization licenses its intellectual property, an IP Audit may list software that your firm has licensed out to a third party, and verify whether or not all agreed upon fees have been collected under this license.
On the other hand, an IP Audit may also include those areas that you desire for the growth of your business, such as a domain name or social media account that has recently become available. By including these additional items, your firm can assess certain gaps in your brand and establish potential revenue opportunities for the future of your business.
Conclusion
Overall, each business has different specific needs for the protection of its brand and intellectual property. To assist, our team at JLG can walk you through the nuanced process for intellectual property protection and help you secure your sought-after registrations. For more information on this topic or to find out more about how we can help you, please contact us at (619) 298-2882 or at [email protected].
JLG works extensively with investment advisers, broker-dealers, investment companies, private equity and hedge funds, banks and corporate clients on securities and corporate counsel matters. For more information, please visit https://www.jackolg.com/.
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[1] This article refers to a company obtaining intellectual property protection. Such protection is available for individuals as well.
[2] See https://www.uspto.gov/sites/default/files/documents/tmlaw.pdf
[3] There are a number of states that permit state-wide registration of a trademark (e.g. in California, you may apply for registration with the California Secretary of State). However, the owner of a federal registration will have superior rights over any state trademark registration claim – thus, a federal registration is recommended when available to secure.
[4] See https://www.wipo.int/madrid/en/forms/
[5] See https://www.wipo.int/treaties/en/text.jsp?file_id=283698
[6] The JLG team would like to point out that the patent application process is a lengthy and complex undertaking. The scope of available patent protection is outside the scope of this Risk Management Tip. More information may be obtained by contacting our office.
[7] With a design patent, the subject of the patent application is in connection with a claimed design in or applied to an article of manufacture, or portion thereof, and is not the article itself. See https://www.uspto.gov/web/offices/pac/mpep/consolidated_rules.pdf
[8] With a utility patent, the subject of the patent application is in connection with the way an article is used and works. See https://www.uspto.gov/web/offices/pac/mpep/consolidated_rules.pdf
[9] See https://www.uspto.gov/about-us/news-updates/uspto-and-mexican-institute-industrial-property-launch-new-worksharing
