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.
1. If there is profit to be made in the distribution of products on a national or international scale, Amazon may become your private label competitor in addition to being a means to sell through the company’s online marketplace. This may adversely affect profit margins because Amazon can afford to run a new venture at a loss while driving the competition out of business.
2. Small business owners can profit by private labeling too. According to Attorney Young, entrepreneurs should find products and services to private label and sell in addition to their existing lines. “There are always opportunities to upsell and cross-sell products and services that complement what you’re already selling,” he said.
3. Private labeling should expand upon your existing business model rather than going off into unrelated areas, both as to what is being sold and the price points. If you sell electronics, private label power cords, batteries, chargers, and even extended warranties may be a natural fit because they logically flow from the original reason customers are buying from you in the first place. However, trying to sell a private label suit to a customer who came to your pet store to buy a dog collar makes no sense because there is no logical connection between the two items and the suit is at a significantly higher price point than basic pet accessories.
Naturally, if you expand your venture through private labeling you’ll want to protect yourself with written contracts with your private-label manufacturers and suppliers. According to Attorney Mike Young, an experienced business lawyer can prepare or review private label agreements to ensure you’re minimizing your legal risks as you create and grow your own brands.
Are you using technology contracts to protect your intellectual property?
Today’s ecommerce heavily depends upon intellectual property (IP) primarily consisting of patents, trademarks, and copyrights.
Whether you’re buying, selling, or licensing technology, it makes sense to protect your IP rights with a professionally prepared technology contract that’s designed to achieve your goals.
Internet Lawyer Mike Young helps clients get what they want by drafting technology contracts customized for their unique needs. Here are few examples of the types of tech agreements he can prepare for you.
Software Licensing Agreements
Whether you need an end user license agreement (EULA) for your software or a software distributor license, Mike can create one designed to protect your IP and provide you with legal remedies in case someone attempts to steal your intellectual property or a licensee quits paying for it.
Note that your tech license needs will be different depending upon how your software is being used. For example, the terms of a EULA for a mobile app will be different from those of a browser-based software as a service (Saas).
Work-for-Hire Tech Development Contracts
It’s common these days for software and other technology to be created for your business by others on an independent contractor basis.
When doing so, it’s important to put into place at the beginning a binding contract that ensures you own the intellectual property you’re paying to have created. This can included a written assignment of IP rights from your independent contractor.
The failure to put the right software development contract or other tech agreement in place beforehand can be costly after the fact.
For example, if you pay for a mobile app to be developed but don’t secure the IP rights as part of the deal, you may find that your app developer is demanding a cut of your app revenues or selling a competing version of the app you paid the developer to create for you.
It’s also important to include a comprehensive scope of work with technical specifications so that it’s clear exactly what you’re paying to be created for you. Incorporating this statement of work with tech specs into your outsourcing contract creates a blueprint that’s easy for you and your developer to follow, including milestones, payment schedules, and other key terms.
Tech Consulting and Maintenance Agreements
Information Technology (IT) consulting contracts and tech maintenance agreements are frequently needed in order to successfully grow and operate a business.
Whether you’re an IT consultant, a tech maintenance provider, or run a business that pays for such services, it’s important to put into place a professionally prepared contract that protects your rights and helps reduce the risk of misunderstandings that lead to lawsuits.
Whether you’re dealing with independent contractors, employees, prospective software distributors, or even potential buyers of your business, it’s important to prevent IP theft by using a confidentiality agreement that’s designed to reduce the risk your intellectual property will be misused.
A good written NDA can make it clear to those that you do business with that you’re serious about protecting your IP while at the same time including provisions that make it unlikely the party you’re dealing with will misappropriate your technology.
How to get Internet Lawyer Mike Young to help you protect your technology
When your Internet business lawyer is drafting business-to-business (B2B) ecommerce agreements and technology contracts, each deal will have unique clauses discussing such things as the product/service sold, and terms of payment.
However, there will be common provisions you will see repeatedly in your contracts because they’re designed to make the deal easier and/or protect you from legal liability if things go wrong during performance of the contract.
Here are 11 topics that are frequently covered in ecommerce contracts and tech agreements.
1. Multiple Counterparts.
Because the parties to ecommerce B2B contracts are often located in different parts of the world, econtracts can authorize different copies of the same agreement to be signed by the parties. The clause will typically permit electronic signatures.
2. Independent Contractor Status.
To avoid the risk of being held liable for employment taxes, workers compensation, and unemployment compensation, a clause is often used that makes it clear that any services performed by a party is on an independent contractor (freelancer) basis rather than as an employee.
Because of the competitive nature of ecommerce and technology, Internet business owners will usually insist on a provision where the parties agree to keep the terms of the agreement confidential, i.e. not disclose trade secrets, details of the contract, and other information that could be used by competitors.
With it so easy to smear a business in social media these days, entrepreneurs often insist that their business-to-business contracts include provisions that prevent negative statements being made by any party (or their employees) during and after performance of the agreement.
To limit potential liability, disclaimers are typically included in ecommerce and technology agreements to prevent one party from making claims for damages beyond the scope of risk the other party is willing to assume. For example, it’s common for an ecommerce entrepreneur to disclaim any warranty that a particular product covered by the agreement (e.g. software) is fit for a particular purpose.
6. Liquidated Damages.
Internet entrepreneurs frequently include paragraphs in their B2B contracts that provide for a certain amount of damages in the event that there is a breach of the agreement during performance. Such clauses will encourage the other party to perform to avoid paying such damages.
7. Intellectual Property Ownership.
It’s common to include paragraphs that address which parties own what intellectual property (IP), such as ownership of copyrights, trademarks, and patents. This is important to cover any IP sold/licensed as well as ownership of IP created under a services agreement.
8. Applicable Law.
Because online businesses are frequently headquartered in different cities, states/provinces, and even countries, it is important to include a contract clause that decides which law governs any disputes between the parties.
9. Dispute Resolution.
With an exception for masochistic entrepreneurs who enjoy spending their time in court and money on trial lawyers, most entrepreneurs want to handle any serious disputes without a lawsuit. This means that the agreement will usually include one or more paragraphs that provide for alternative dispute resolution through mediation and/or arbitration.
10. Indemnification and Defense.
As an online business owner, if the other party to an ecommerce contract or technology agreement does something really stupid that results in your becoming a defendant in a lawsuit, you’re probably going to want to include contract clauses that require the other party to indemnify and defend you in the lawsuit.
11. Assignments and Subcontracting.
Most ecommerce B2B contracts and technology agreements will address situations where a party wants to assign or subcontract out some or all of its performance responsibilities. In some cases, there is a complete prohibition on delegating out the work to others. In others, B2B contract provisions can permit subcontracting or assignment under limited circumstances, such as with prior written consent of the other party.
Now, naturally, there are other contract clauses that your Internet lawyer will use to help you make a business deal go smoothly and protect you from liability in the process. However, the 11 areas discussed above are very common topics that you will want to consider addressing in most of your B2B technology and ecommerce business contracts.
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.