As we have discussed in the past, it’s critically important for founders to know where they stand with their intellectual property (or IP, for short). But where do you begin?
We sat down with Tucker Cottingham, one of the IP gurus at Bend Law Group, and asked him to provide some insight into how startups should evaluate their IP situation. You can view the webinar in the embedded video, or read a recap below.
WHAT ARE TRADEMARKS?
They are source indicators. Recognizable signs, designs, or expressions that identify the source of goods or services. For early-stage companies, this includes company name, logo, special patterns/sounds, or a symbol that creates an association with your existing or potential customers. This is important, ground-floor brand development.
Some great and well-known trademarks include the Nike and Apple logos.
WHAT IS A COPYRIGHT?
When it comes to early branding for your company, there’s a two-pronged approach. One being trademarks, the other being copyrights. Copyrights are another form of legal protection that protect original forms of authorship that are fixed in a tangible form of expression. For example, if you create a unique way for your company name to appear in print, you can file for copyright protection.
BEST PRACTICES FOR CHOOSING A COMPANY OR PRODUCT NAME
The most basic intellectual property that you may already own is your company name or product name. But if you’re choosing company or product names for the first time, here’s where you should start:
Do a basic search
Determine whether someone else already is using your proposed name to sell goods or services. Search Google, Bing and other search engines with your actual target names. Then move to actual state databases for entity searches. Be sure to search for both LLC and C-Corp companies.
Check domain availability
Whois.net is a great, free starting place to check for a target domain.
Search for trademark conflicts
Use the Trademark Electronic Search System (http://tess2.uspto.gov). Great database for registered trademarks, with a lot of different levels of complexity. If there’s a conflict, it may still be worth contacting an attorney.
Order a comprehensive trademark report
Generated by third parties, usually several hundred pages that represents every possible trademark conflict. Valuable, because the test for trademark infringement is “likelihood of confusion.” For example, if you start a shoe company called, NIKEY, the likelihood for confusion is very high with NIKE. Sight, sound, look and feel are all taken into account when evaluating potential conflict. An attorney should then review the report. Most useful for companies that are about to roll out an expensive branding or communications campaign – anything that requires investment of a lot of money and resources.
Consult a trademark expert
After everything else above is done, it’s really worth having a conversation with an attorney. Trademark attorneys deal with issues around consumer confusion and the potential for liability every day. The more information you can put together via the steps above, the more efficient the meeting with this attorney will be.
HOW TO REGISTER YOUR INTELLECTUAL PROPERTY
You’ve identified your company/product name. The due diligence is complete. Your attorney has given you the green light. It’s time to register the trademark. We’ll talk specifically about federal registration, which presumes you are the rightful owner of your target trademark in the entire United States. In order to qualify, you need to have used the mark in interstate commerce (normally over state lines or on the internet).
Apply to register your marks with the USPTO
In use v. Intent to use. Using “Intent to use” is great, in that it allows you to plant your flag in the ground. You should make a bonafide attempt to use the mark. If you have already been using the mark, you can file for an “In use” application.
Determine the scope of protection
You can’t use the mark for just anything…you must register in specific classes, which costs money to file (around $300 or more per class). When thinking this through, identify all the things you are going to do – in plain English. Then tie these things into classes. Be aware of how are you using the mark in regards to the classes where you’d like to register.
Possible exchanges with USPTO Examiners
Your filed application is assigned to an examiner. You will typically hear back after about three months or so once the examiner has evaluated it. At which point you’ll receive an Office Action Letter, which can include a refusal with reasons for one or more of your applied classes. You have an opportunity to respond to the examiner to present your rebuttal, and then make any amendments as needed.
Publication in Official Gazette
Once you have overcome all examiner objections, your application is approved, and you are published in the Official Gazetter. There is a 30 day opposition period for anyone to challenge your application.
If no one challenges your application, you will receive your certificate and will be on the official USPTO registry. This part of the process usually happens eight to ten months after the original application was submitted…provided everything else in the process goes smoothly.
® or either the legend “Registered in the U.S. Patent and Trademark Office” or “Reg. U.S. Pat. & TM Off.”
FINALLY: POLICING THE MARK
Now you have your registered mark. You have the USPTO certificate. You are out in the world using your mark. You have a duty to police your trademark. That means you monitor how your trademark is used in the world. One low-cost, convenient way to manage this is using a trademark monitoring service. The most common way to show you are policing your trademarks is to issue “cease and desist” letters to those improperly using your mark. Whatever your strategy is, the important thing is to HAVE a strategy in place.
Disclaimer: This article discusses general legal issues and developments. Such materials are for informational purposes only and may not reflect the most current law in your jurisdiction. These informational materials are not intended, and should not be taken, as legal advice on any particular set of facts or circumstances. No reader should act or refrain from acting on the basis of any information presented herein without seeking the advice of counsel in the relevant jurisdiction. Bend Law Group, PC and Early Growth Financial Services expressly disclaim all liability in respect of any actions taken or not taken based on any contents of this article.