This article ties into what we discussed this week, as it relates to protecting your business’ intellectual property.
How To Protect Your Intellectual Property The Right Way
I cover career and personal growth, leadership and women’s issues.
Opinions expressed by Forbes Contributors are their own.
I am a women’s career and personal success coach, writer, TEDx and keynote speaker, and leadership developer dedicated to the advancement of women worldwide. My career consulting firm, Ellia Communications, offers a wide array of assessments, resources, videos, courses and training programs to help women “dig deep, discover their true self, and illuminate the world with it.” In my work and writing, I draw on my former experience as a corporate executive and trained marriage and family therapist, as well as my 11 years of coaching to help professionals break through their current limitations and challenges to build more impactful, rewarding and meaningful lives and work. Along with contributing to Forbes.com, I write on Huffington Post, LinkedIn, and my own blog at kathycaprino.com. My book Breakdown, Breakthrough and my TEDx talk “Time To Brave Up” share what I believe are critical steps to rise up, speak up and stand up boldly for yourself, and transform your life. For more information, visit kathycaprino.com and my TEDx Talk “Time To Brave Up.”
The author is a Forbes contributor. The opinions expressed are those of the writer.
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If you’ve ever developed a new product or formulated a new business idea, you’ve most likely grappled with the question of whether you should to protect it legally in some way. It can be a confusing issue, for sure, and many of the small business owners and entrepreneurs I meet don’t seem to have a solid grasp of how, why and when to protect their products, or if it’s even necessary.
To learn more about the right steps to take to protect our intellectual property, I caught up with Ashley V. Brewer, Business & Branding Attorney at BrewerLong. Her primary practice is the development and management of intellectual property portfolios to help businesses protect their company names, product brands and ideas, along with related licensing, non-disclosure, and non-competition agreements.
Here’s what Ashley shares:
Kathy Caprino: How can business owners know when to protect an idea?
Ashley Brewer: Protect early. Protect creatively. Protect carefully. As soon as you start taking steps to implement a business or product idea, such as incorporating, obtaining state or federal licenses, or securing production of a product, you should identify which aspects of your business and products are protectable by trademark, copyright, patent, or trade secret. Each of these types of intellectual property requires different procedures to protect them from unfair competition and copycats, which is why it is important to consult a professional. You or your attorney will need to research whether anyone else already has exclusive rights to the brand names or products you want to develop. A conflict search should include a thorough search of the U.S. Patent & Trademark Office’s (“USPTO”) searchable database, or for copyrights, the U.S. Copyright Office’s searchable public catalog.
You should also search your state’s registries, if they have them. For instance, Florida has a searchable online trademark registry, but for California state trademarks, you must call the office of the California Secretary of State and ask them to conduct a search via phone. A thorough search must also include the internet and social media, for potentially competing uses that started before you. Even if they are not registered, they could still have certain rights that supersede yours.
Caprino: What are some of the common reasons why business owners don’t move forward to protect their intellectual property?
Brewer: There are a many reasons people hesitate to make intellectual property protection a priority when they are just starting a new business. They include:
1. It is another startup cost, one which is sometimes viewed as “non-essential,” simply because it is not legally required to operate the business.
2. They are unsure whether the business or product will “take off,” so they think they might not even need it.
3. They don’t anticipate anyone attempting to copy them.
4. They do not know what types of protections may be available for their products or brands.
5. They seek to keep costs down by utilizing free or inexpensive online resources.
Protecting intellectual property correctly is not simple, and many times the examining attorneys at the government agencies have questions or raise unexpected issues on the applications. That is why professional help is so important. It can be costly or limiting in the long run to skip these steps. I have worked with clients who wished they had taken protective steps sooner.
Caprino: Why is it so important to take affirmative steps to protect your intellectual property?
Brewer: First, people do not usually expect that their business name, products, or product brands will be copied, but it happens frequently, and you can lose income from it. Second, sometimes you cannot bring an enforcement action if your intellectual property is not registered. Third, if you do not protect your intellectual property proactively and early, you might have to protect it defensively later.
Caprino: Based on your experience, what are the critical steps to take, to protect your business’s intellectual property?
Brewer: If you are a business owner, be sure your member agreement states that all intellectual property developed by members, shareholders, etc. belongs solely to the company and that members who develop any intellectual property will execute any and all documents necessary to protect the company’s rights. This is particularly important in smaller businesses where the owners are the ones developing most or all of the creative ideas. Also, be sure that any employees and independent contractors who will work with trade secrets sign strong non-disclosure and non-competition agreements, because there is no registration for trade secrets (such as recipes and non-patentable formulas). Trade Secrets are protected only as long as they remain secret.
For example, our firm has done corporate, regulatory, and intellectual property work for almost 100 start-up breweries. We prepare these types of agreements all the time, to protect their beer recipes and formulas. We also register trademarks for their brewery names and beer brands whenever possible.
Also if possible, register it with the USPTO, U.S. Copyright Office, or in some cases, your state’s trademark registry or international registries. In some cases, a trademark is eligible for an early application before your business even opens, so take advantage of obtaining that earlier filing date. Just be aware there will be subsequent filing requirements after your business opens.
Register your copyrights on written works, including computer codes, screenplays, and artwork, and register them early. Statutory damages and attorney’s fees are usually not recoverable in an infringement action if the copyright was not registered before the infringement occurred or within 3 months of publication.
If you developed an innovative product, speak with a patent attorney about whether the product qualifies for patent protection (only attorneys who have passed a separate patent bar exam are qualified to work with patents). If the product does not qualify for patent protection, find other ways to make your product stand out, including through strong trademark branding and enforcement.
Caprino: How can a business owner protect an unpatentable product from unfair competition and copycats?
Brewer: Only certain, new, innovative products qualify for patent protection, and the shape or design of a product usually cannot be trademarked. So, if your business sells a commonly available product – for instance, athletic wear, smartphone cases, or any of the many handmade items sold on Etsy (where copying is a very common issue) – restricting others from selling the same type of product may not be possible, but you can still make your brand stand out by developing a clever trademark-eligible name for your product, registering the trademark, and always using that trademark name in your marketing and product packaging.
Caprino: When can an owner of copyright or trademark use “notice symbols” on their products, such as ©, ®, or TM?
Brewer: For copyrightable works, the owner can place the copyright designation – the “C in a circle” © – on her work from the moment the work is created, and include the year and her name. For example: © 2017 Jane Doe. A copyright notice can be used whether or not the work is registered with the U.S. Copyright Office. The notice is not required, but it puts the public on notice of her intent to claim and enforce her copyright.
A trademark owner can always use the “TM” mark on its goods and services, to put the public on notice of his intent to claim and enforce his trademark rights. The “R in a circle” – ® – is reserved only for federally registered trademarks. If you register your trademark with your state trademark registry, but not the USPTO, you may only use the “TM” mark.
I always recommend using the appropriate symbols as soon as you put your product to market. Whether you have registered them yet or not, this gives the public notice that you have considered your intellectual property protections and are prepared to enforce them.
Caprino: When does a business owner not need to worry about registering its intellectual property?
Brewer: There are not many instances where I would suggest a business owner not worry about protecting their intellectual property. If a product is not a new, innovative product, there is no need to worry about a patent, but trademarking the brand may still be critical to compete and stand out.
If a business owner has a local shop with no plans for interstate expansion, and they do not care if someone in another state has a company with the same name, they may be satisfied with their state’s trademark registry, rather than the federal registry. However, an interstate competitor may have other ideas about expansion and enforcement of its own rights. In those cases, it matters who used the name in commerce first, but it also matters who registered the name first. The outcome can result in a geographic split, but these outcomes are usually the result of expensive litigation that could have prevented with earlier planning.
To learn more, visit BrewerLong.com.
For more from Kathy Caprino, check out KathyCaprino.com and How To Unlock Your Most Thrilling Life and Livelihood.