Whether you sell goods and/or services, you want to protect your business brand by preventing others from misusing it to hurt your image. In many cases, a trademark lawyer can help you get maximum legal protection for your brand.
What Is A Trademark?
Your trade mark is your brand name for one or more goods that you sell. You can express this brand in multiple ways, including a name, symbol, words, device, or a combination of these with the purpose of identifying your good(s) separately from competitors.
If you have not registered your trademark with the U.S. Patent & Trademark Office (USPTO), you may assert your unregistered mark as your brand by adding a superscripted “TM” to it.
However, to reduce the risk of getting into legal hot water, it’s a good idea to have trademark attorney review your unregistered mark and have a search performed to see if there are competing claims to the mark or one similar to it.
What Is A Service Mark?
Just as a trademark is a brand for your good(s), a service mark is a brand for one or more services that you sell. If you don’t have a registered service mark with the USPTO, you may assert your unregistered service mark by adding a superscripted “SM” to it.
However, just like an unregistered trademark, you’ll probably want to have an experienced trademark attorney review your unregistered service mark to see if there are legal risks, including potential competing claims to the mark by others.
A good patent lawyer will be able to help you determine whether your invention can be protected by registration with the U.S. Patent & Trademark Office (USPTO). As part of the process, you’ll learn the type of patent you’ll want to get to for your intellectual property.
What Is A U.S. Patent?
If the USPTO ultimately determines your invention a “new and useful process, machine, article of manufacture, or composition of matter, or any new and useful improvement thereof,” then the federal government will grant you the exclusive right to make, use or sell your intellectual property for 14 to 20 years, depending upon the type of patent. If others want to legally use your invention during that time, they have to pay you for the privilege (license) of doing so.
What About A U.S. Provisional Patent?
Like a unicorn, that really doesn’t exist. However, there are some circumstances justifying the need to file a provisional patent application (PPA) for your invention with the USPTO first, especially as the U.S. has now adopted a “First to File” (and no longer a “First to Invent”) patent system, in order to establish priority.
Note that if one files a PPA, it must be “converted” to a regular, non-provisional application within 12 months of filing the PPA, else the PPA is automatically deemed abandoned, i.e. you’ll lose the benefits of filing the provisional app and be statutorily barred from filing the non-provisional application thereafter.
Although a provisional patent does not exist (just a PPA), there are 3 types of patents the USPTO can issue depending upon what you’ve invented. Your Registered Patent Attorney will be able to identify the kind of patent you should seek and prepare the application for the USPTO to examine.
This may be the most critical part of a patent: the patent application!
It’s the properly drafted application that can maximize your property and legal rights.
Most patents are utility patents. In rare circumstances, a proposed invention may qualify for more than one type of patent, and/or qualify for copyright protection and/or trademark protection. A Registered Patent Attorney can help.
What Is A Registered Patent Attorney?
Not all lawyers can practice patent law before the USPTO. An attorney must pass a very difficult patent bar exam in order to become a Registered Patent Attorney (RPA). Although there are 1.3 million lawyers in the United States, only about 2% are Patent Attorneys registered with the USPTO.
The average length of time for a patent to be approved is almost 30 months from filing, but the actual time can vary greatly depending on many factors, like the complexity of the proposed invention.
What If Your Invention Doesn’t Qualify For A Patent?
You may learn from your patent lawyer or the USPTO that your intellectual property can’t be protected by a patent.
If that happens, your attorney can advise you on other possible ways to protect your IP, including steps to shield it, for example, as a trade secret. In other words, you still may be able to profit from your invention without having a patent for it.
If you already have an enforceable patent but someone is using a part of your invention without your permission, you should seek legal help from a registered patent attorney (RPA) immediately. Your patent lawyer may be able to enforce your exclusive rights via a court order (an injunction) to stop the infringement, force the infringer to pay you royalties and/or award you damages.
On the other hand, if you’ve been accused of infringing someone else’s intellectual property, you should immediately seek legal advice, preferably from an RPA, as one may be subject to the additional damages (up to three times compensatory damages) from “willful infringement.”
What About Trademarks?
Trademarks can be the most important asset of a company, e.g., one study determined that trademarks make up about 1/3 of corporate value. So, coming up with and then protecting your distinguishing word, logo, shape, sign, expression, etc., that distinguishes your products or services from others, may be a necessary and invaluable business decision.
Can A Patent Lawyer Also Help You With Copyrights?
Copyrights can be invaluable intellectual property for the creator of an original artistic or literary work, e.g., a movie, a song, a book, computer programs, photos, etc. Copyrights include the exclusive right to make, publish and sell your copyrighted property. There are distinct advantages to timely federally registering your copyright.
Your agreements should provide for a multi-step process for solving problems without going to court.
Common stages of dispute resolution include informal discussions between the parties, mediation, and arbitration (binding or non-binding). Many business attorneys who are not trial lawyers prefer binding arbitration for their clients because it typically saves time and is cost-effective.
2. Applicable Law
Make sure that the law governing your agreement generally favors you. This is particularly important when the other party is located in another country whose laws on contract enforcement are lax or nonexistent.
Even if you’re not heading to court, you’ll want the location of your dispute resolution process to be in a location that’s convenient for you. Ideally, that will mean having the contract provide that mediation and arbitration occur in the same geographic area (e.g. city or county) as your company’s headquarters. In the alternative, if the other party insists, agree in the contract to resolve disputes at a neutral location that’s mutually convenient.
What contract disputes should your business lawyer encourage be resolved by a court instead?
Unfortunately, sometimes it’s necessary to sue to protect your company’s legal rights. Because of this, your corporate legal counsel will want to carve out exceptions to mandatory alternative dispute resolution to cover issues like intellectual property infringement, violation of a non-competition clause, and related matters where equitable relief from a court may be needed.
Whether you’re a developer or a client, one of the most important things to cover in your software development agreement is who owns what intellectual property (IP) rights.
Surprisingly, most developers and their clients either don’t know or having conflicting views on the subject.
Imagine you’re a client that’s just obtained an advantage in the marketplace with new software. Then you discover your developer now works for one of your biggest competitors on a similar software project.
Or, let’s say you’re a software developer. At the end of a project, the client is happy with your work but makes an off-the-cuff remark about owning the new software lock, stock, and barrel. You wonder if the client understands that’s not the case.
According to Dallas Software Lawyer Mike Young, there are two competing interests at play. “The client wants ownership while preventing the developer from re-selling the software to others,” he said. “On the other hand, the developer wants to keep ownership because some code can be recycled and used on projects for other clients instead of having to reinvent the wheel from scratch.”
So, how do you balance these competing interests in a software development agreement?
One method is to use a combination of licensing with non-competition provisions.
How does this work?
The developer retains IP ownership, licenses the software to the client, and agrees to restrict the purposes for which the code can be recycled. Often, this means the developer is agreeing that for a period of time, the developer will not use the software to compete with the client or recycle the code and sell it to one of the client’s competitors.
What if the developer doesn’t own some of the code used in the software?
The general rule of thumb is you can’t convey what you don’t have.
When it comes to software development, there’s often is some code the developer does not own. For example, a developer’s license has been purchased from a third party, the developer is using open source licensed code (e.g. GNU General Public and Creative Commons licenses), or some of the code has been taken freely from the public domain.
In other words, there may be multiple tiers of intellectual property rights associated with a single piece of software. And if those are not clearly identified in the software development agreement, it’s a recipe for confusion, hard feelings, and litigation.
What if the developer is the company’s employee?
Even if employees are doing software development for an employer, it’s risky to assume the software is the employer’s intellectual property as a work made for hire for two primary reasons.
First, certain criteria must be satisfied before the software is considered a work made for hire.
Second, the employee(s) developing the software may have licensed some of the code, used open source code, or taken code from the public domain.
Employers can reduce these risks by taking preventative steps before development begins. These actions can include written employment agreements that cover works made for hire, implementing employment guidelines to ensure the work-for-hire criteria is satisfied, and establishing a clearly defined project scope of work to identify the coding resources for the project and related intellectual property rights.
IP Ownership Is Negotiable
Whether you’re an independent contractor, client, or an employee involved with a software development project, it’s important to understand the intellectual property rights are frequently negotiable, i.e. there’s no one-size-fits-all standard to apply across all projects.
Before negotiating, work with your software lawyer to identify what you must have, what would be nice to have, and what you can live without. This makes it easier to cut a deal where each party gets what they want from the project.
There’s a well-known fashion designer who’s currently suing for breach of a licensing agreement because she alleges, among other things, that the licensee is hurting her brand by selling inferior merchandise.
Whether or not that’s true, the key takeaway from this lawsuit is that when it comes to protecting your brand as a licensor, your licensing agreement must contain specific terms and conditions that makes it difficult for the licensee to harm your service marks and trademarks through misconduct.
Important Brand Licensing Agreement Clauses
Some of the key provisions you may want to include in the contract are:
Limit the scope of the license (e.g. term, geographic, revocable, nonexclusive, etc.);
Choice of law and forum for resolving disputes (preferably your home territory, not the licensee’s);
The ability to obtain injunctive and other equitable relief to protect your brand;
Significant liquidated damages per violation;
Alternative dispute resolution (mediation and arbitration) for most issues unrelated to protecting your intellectual property (IP);
Award of attorneys’ fees and court costs to the prevailing party in a dispute (loser pays); and
Confidentiality and non-disparagement clauses.
According to Texas Internet Lawyer Mike Young, unequal bargaining power may become an issue when interpreting a license agreement because courts (particularly juries) are inclined to favor the underdog if one party is significantly larger than the other.
If you have all of the leverage (e.g. the licensee is a micropreneur), it’s important that your company’s attorney draft language that mitigates this disparity in bargaining power while protecting your interests so that there’s a perception of fairness when it comes to enforcement.
Using simple plain English will prevent many common disagreements as to your respective rights and obligations under a licensing agreement. When each party clearly knows what he is supposed to do, the odds increase that your deal will be profitable while protecting your brand too.
A good way to get what you want when licensing your brand is to have an experienced business transactional lawyer draft the contract based on your unique needs and use that draft as the starting point for all negotiations with prospective licensees.
MATERIAL CONNECTIONS DISCLOSURE
Unless otherwise expressly stated, you should assume that all references to products and services at MikeYoungLaw.com are made because material connections exist between the Law Office of Michael E. Young PLLC and the providers of the mentioned products and services. This may include: (1) an attorney-client relationship; (2) and/or monetary or other compensation.