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I see that entrepreneurs are often confused by what intellectual property means. Some think that it includes real estate/property. Others get the terms all mixed up – they want to patent a brand name, or trademark a product.

As an Intellectual Property Law attorney, it is my job to explain that brand names are protected by trademarks and products by patents.

Entrepreneurs may develop and own brands, logos, taglines, designs, products, processes, formulae, etc. in their business. All of this together is known as intellectual property. A business can own intellectual property in the form of trademarks, copyrights, patents, or trade secrets.

Each intellectual property right can be secured through a formal registration process. The risk of not securing these rights is that you could lose them to someone who registers them first and then have to fight to get them back.

The danger of not securing your intellectual property rights

Case in point – Susan. Susan not only lost her brand name because she failed to register it as a trademark, but ended up losing thousands of dollars in the process.

Susan is a fashion designer. She started her company called Clarity, Inc. and registered it as a corporation with the New York Dept. of State. She also used Clarity as her brand, and invested a substantial sum of money in creating, developing, and promoting it.

Two years later, Cynthia, who is also a fashion designer, was also using Clarity as one of her brands and registered it as a trademark with the United States Patent and Trademark Office (USPTO). Now this created a problem because customers started getting confused between Susan’s and Cynthia’s “Clarity” brand.

Even though Susan was first in using the Clarity brand, Cynthia beat her to the trademark registration process. Trademark registration is a first to file system and the subsequent filer ends up having to fight to secure trademark rights.

In this case, Susan would have had to have fought Cynthia in court or before the USPTO and show that she was using Clarity before Cynthia. Or, Susan could rebrand. But with each of these options, she would end up spending or losing a lot of money.

Ultimately, Susan decided to rebrand. She lost her Clarity brand plus the money and time she spent building and promoting it.

Now that you know the importance of securing intellectual property rights by registering them, let’s look at the different forms of intellectual property rights and what each one covers.

Trademark

Trademarks protect any symbol that indicates the source or origin of the goods or services to which it is affixed. Trademarks can be:

  • Brand names (“Apple”)
  • Product names (“iPad”)
  • Logos/Symbols (Apple’s Apple logo)
  • Taglines (Nike’s “Just Do It”)
  • Drawings
  • Sounds (Chime of Apple’s Mac computers powering on)
  • Colors (Christian Louboutin’s red outsoles)
  • Scent (Verizon’s “flowery musk” scent that perfumes select stores)

The USPTO decides whether to grant trademark registrations. Trademark law and courts have set forth many factors that help the USPTO determine whether a trademark is registrable. For example, a weak mark that is generic will be refused registration. Similarity with other existing trademark applications or registrations will also bar registration.

Once registered, it confers federal protection over a brand, logo etc. i.e. it gives countrywide protection. A registered owner of a trademark can then use ® to notify others that they have a registered trademark.

Copyright

Copyrights protect original artistic, literary, and creative works such as paintings, sculptures, architectural works, photographs, graphic designs, fabric designs, jewelry designs, books, written works, software, and websites. In order to have copyright protection, each work must be fixed in a tangible medium of expression. Mere ideas cannot be protected.

A copyright automatically attaches to artistic and creative works once they are created. Registration with the U.S. Copyright Office enables enforcement of copyrights against those who copy registered works.

The standard for copyright registration is a minimum degree of creativity. But it excludes from its purview useful or functional items, such as clothing or furniture.

Patent

Patents protect novelty or inventions, such as biological, mechanical, internet, games, and jewelry. Patent registration provides exclusivity in the market and prevents competition for the time that the patent registers.

Utility patents are valid for 20 years from the date of patent application, and design patents are valid for 15 years from the date of issuance.

Trade Secret

Trade secrets are valuable assets proprietary to businesses. They can be recipes, formulae, marketing techniques, customer lists, business methods, or anything that gives the business an opportunity to obtain an advantage over competitors who do not know it or use it.

This is the only form of intellectual property right that does not require registration. In order to maintain trade secret protection, it must be kept secret by having a trade secret protection plan, educating employees, and having non-disclosure agreements in place.

While intellectual property rights seem neatly compartmentalized, there is some overlap. For example, while a logo may serve as a trademark indicating the source of the products, it can also be copyrighted because it is a creative/artistic work.

There are many nuances to intellectual property rights and entrepreneurs should consult an attorney to determine the most strategic way to protect them.

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PLEASE NOTE: THIS POST DOES NOT CONSTITUTE LEGAL ADVICE AND DOES NOT ESTABLISH AN ATTORNEY CLIENT RELATIONSHIP WITHOUT THE EXISTENCE OF AN INDIVIDUAL ENGAGEMENT LETTER

At Nupur Shah Law, P.C., we work with start-ups and businesses to create customized legal solutions. We develop business agreements and help setup a legal structure so that businesses are fully protected. We also advise and assist clients in securing their brands, designs and inventions with trademarks, copyrights and patents. We personally take the time to understand our clients' business and tailor legal arrangements specifically suited for their company. As the daughter of two entrepreneurs, Nupur Shah knows how difficult running a company can be. Nupur Shah Law provides ongoing legal support so business owners can focus on doing what they love.


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