When was the last time you took inventory of your assets? During this inventory analysis, did you include your non-tangible assets such as your intellectual property?
Intellectual property (“IP”) refers to creations of the minds that derive from human creativity. IP law was born out of the need to promote the furtherance of new technology, artistic creations and inventions by providing owners with rights to their IP. As such, IP law revolves around the (1) protection, (2) maintenance and (3) enforcement of an owner’s rights to the manifestation of their creations. IP protection extends to literary works, inventions, artistic works and names and symbol used in commerce and is rooted in the idea that by providing owners assurance that their work is protected, they are more likely to continue to proliferate their ideas for the common good.
There are four main types of IP Protection offered in various forms around the world. In this article, I will discuss (1) Trademarks (2) Copyrights (3) Trade Secrets and (4) Patents.
If you own a company, sell goods and/or offer a service, then you unknowingly already own a common law trademark. A trademark is word, name, symbol, device or combination thereof used by a person or entity to identify and distinguish their goods or services from those sold by others, and to indicate the source of goods, even if that source is unknown. Lanham Act §45, 15 U.S.C. §1127. Trademarks act as an informational shortcut for the consumer as to the source of the product or service. From the consumer perspective, trademarks are a time saving mechanism. For example, when you’re in the market for sneakers, it’s not hard to tell shoes apart—three stripes mean you’re looking at an Adidas sneaker, the swoosh for Nike and a large “V” for Vans. Based on those trademarks alone, a consumer can immediately recognize the producer of those sneakers and the reputation associated with that respective sneaker company. Besides for the instant source recognition, trademarks also benefit the consumers in that it provides incentive for companies to (1) inform the public regarding the nature, origin and quality of the goods and to (2) maintain quality consistent with reputation.
In order to protect and enforce a trademark in the United States, an individual or company can file for federal trademark protection with the United States Patent and Trademark Office. A federal trademark registration provides the owner of the trademark with the following benefits: (1) provides nationwide notice of ownership of the trademark; (2) grants the owner with exclusive nationwide rights to use the trademark in commerce; (3) grants the right to sue in federal court to obtain treble damages and attorneys fees; (4) entitlement to certain statutory damages in the case of counterfeiting; and (5) Provides a basis for foreign registrations.
Looking to apply for federal trademark registration? Look out for upcoming articles.
If you have a company logo, website, electronic or print content, then you unknowingly already own multiple copyrights. A copyright is a form of protection for original works of authorship fixed in a tangible medium of expression. What this means is that the moment you create an original piece of work and it is fixed in a tangible form for more than transient time, your work is automatically under copyright protection. For example, your doodles on your notepad have automatic copyright protection and the same applies for songs, movies, poetry and even computer software. Copyrights grant the owner the following: exclusive right to (1) reproduce and distribute copies of the work, (2) prepare derivate works and (3) perform, display and broadcast the work publicly. It’s important to note that while copyright does not protect the idea itself, it does protect the expression of the idea. In order to enforce a copyright against a third party, copyright registration is required with U.S. Copyright Office. By acquiring federal copyright registration, the owner has the ability to file a lawsuit to enforce/protect its copyright and is eligible to collect statutory damages, attorneys’ fees and costs of the suit.
Looking to apply for federal copyright registration? Look out for upcoming articles.
If you’re looking to create an invention or have created an invention in the form of a process or product, then a Patent is what you would seek to protect your invention. In order for an invention to be patentable, the invention must be (1) statutory (2) novel; (3) useful and (4) non-obvious. Patents come in three different forms: (1) Utility Patent; (2) Design Patent; and (3) Plant Patents; all of which have various lifespans. In order to acquire a patent, an owner must file patent application with the United States Patent and Trademark Office. It’s important to note that Patents have a lengthy registration process ranging from 13 months to 31 months depending on the type of patent filed. The benefits of Patents greatly outweigh the burden it takes to acquire one as Patent protection provides the owner the exclusive right to make, use, sell/offer for sale or import the claimed invention for a limited term.
If you have confidential customer information, confidential supplier information or a top-secret recipe, then trade secret protection is a mechanism to protect your proprietary information. Trade secrets protect commercially valuable proprietary information that provides a competitive advantage based on the fact that the information is kept secret. Unlike trademarks, copyright and patents, there is no central agency to file and register for trade secret protection. Additionally, unlike copyrights and patents, a trade secret’s lifespan can be indefinite as long as the information remains secret. The most famous trade secret is the Coca-Cola recipe that to this day remains a trade secret. It’s important to note that not everything that provides you with a competitive advantage can be deemed a trade secret. Steps must be taken to ensure that a piece of information is deemed a trade secret. For example, designating information a trade secret on your company’s system, password protecting the information and utilizing other electronic security systems to access the information, locking the information in a vault, etc. Up until 2016, trade secret law varied from state to state making it difficult to decipher which state’s law applied, especially if you were a multi-state company. In 2016, the Defend the Trade Secrets Act (the “DTSA”) passed, creating a federal trade secret law that does not trump state law, but works in conjunction with state law. The DTSA provides federal protections and federal remedies for misappropriation of trade secrets under certain conditions.
Without proper protection, businesses leave room for third parties to stake their claim in their IP. IP protection, in its various forms, goes farther than protecting a business’s ideas and concepts, it protects the business’s core assets. For this reason, identification, inventory, and protection can be critical. Please contact us should you require assistance with this process.