It is never too early to start thinking about intellectual property protection. Keeping a conscious eye on these assets is a critical part of a business’s success. Business owners are likely to face the following key issues during the early stages of their enterprises.
Trade Name vs. Trademark
Many business owners mistakenly believe that a company name is synonymous with a trademark. A trade name is the legal name of a business entity, which appears on the articles of incorporation or bylaws filed with a secretary of state’s office (e.g., The Coca-Cola Company.) A trademark, however, is a word or design or a combination thereof that serves as a source identifier of a particular product or service (e.g., Coke®). Companies do not own trademark rights in a name simply because they registered it as part of their business name.
Trademark Clearance
Great care should be taken when selecting a trademark. The U.S. Patent and Trademark Office website allows viewers to search for existing trademarks. A clear search, however, doesn’t necessarily mean that the desired name is available. As trademark rights are acquired through use of the mark, companies should consider conducting a comprehensive trademark search in order to uncover not only marks filed with the USPTO but any uses of the mark.
A trademark attorney can help interpret the search report and provide an opinion on the availability and infringement risks associated with the adoption of the mark. While a business owner may feel the cost of a comprehensive search does not fit the budget, it may be a worthwhile investment. Neglecting this step could result in a legal dispute that could mandate pulling products from shelves, rebranding and becoming embroiled in a lawsuit facing damages.
Trademark Registration
If a company wishes to prevent competitors from using its trademark, it should seek a federal registration for it. Trademark applications can be filed online with the USPTO, and applicants do not need an attorney to do so, although legal advice may help a business avoid several pitfalls. A federal registration generally gives its owner exclusive rights to use the trademark throughout the country with the goods and services covered in the registration. By not seeking trademark protection, a company runs the risk of someone else adopting its brand, which could diminish the mark’s value
and the company’s ability to use it.
Internet Presence
Nowadays, it is imperative to have a strong Internet presence to promote one’s business. After securing the domain name of choice, companies should consider acquiring domain names with alternative extensions (.com, .net, .biz, .us, etc.) as a defensive measure to prevent others from doing so. Depending on the company’s budget, it is also advisable to register hyphenated versions of the domain name, common typos or even “(insert business name)sucks.com.”
It is not uncommon for companies to incorporate text and images found on the Internet onto their own websites. Just because something is available on the Web, however, doesn’t mean it can be freely used. Companies should make sure the content displayed on their websites does not infringe upon third parties’ rights and should seek authorization to use any materials that they don’t create in-house.
Another common misstep concerns ownership of the copyright in the website itself. If a company hires a Web designer to create its website, it should ensure that the service agreement establishes that the company owns all copyrights in it. Under federal copyright law, if the agreement fails to include a provision identifying the company as the copyright owner, the author of the work (in this case the Web designer) retains ownership.
Also, most companies don’t realize that if they collect information from viewers of their website (e.g., via cookies, asking for personal data or credit card information) they must display a privacy policy. An attorney can help draft policies that comply with current laws.
Conclusion
It makes little sense for a company to invest time and resources developing its intellectual property and then fail to protect it. With many other forms of IP to keep in mind (patents, trade secrets, non-disclosure and confidentiality agreements, to name a few), it’s worth considering a preliminary consultation with an attorney. This can help businesses identify which items merit consideration, saving them money and avoiding problems along the way.
Flavia Campbell is a partner with Lewis and Roca’s Intellectual Property practice. Focusing in the areas of trademarks and copyright, she helps clients across the world protect their valuable IP assets.
