When you set up a new business venture, it’s common to focus on rapid growth without thinking about who owns the assets. This is particularly true when it comes to intellectual property (IP).
For example, you might form an limited liability company (LLC) or corporation but forget to transfer the company’s domain name registration to the business entity instead of owning it personally.
Or have employees and independent contractors doing creative work for you, such as software development or Web content creation, but don’t get in writing that the company owns these assets from those getting paid to do the work.
Who owns intellectual property is important to the long-term viability and value of your startup. Because it’s hard to get experienced investors, go public (IPO), or sell the company in a private acquisition if it’s unclear what the venture actually owns.
If you need help getting your IP ownership handled correctly for your company, it’s time to schedule a phone consultation with with Registered Patent Attorney Herbert Joe. Attorney Joe handles patents, copyrights, trademarks, and other startup intellectual property issues.
There’s a lot of confusion as to when to use trademark symbols — and which symbol to use for a particular mark. Here’s a brief overview of the role of each symbol in protecting your brands for goods and services.
TM – Trademark Symbols
If you have a mark to brand goods that’s not been federally registered, a superscripted “TM” is typically attached to the mark to assert you’re using it as a common law trademark.
SM – Service Mark Symbols
Like trademarks for goods, you can use a mark to brand services. A superscripted “SM” is typically attached to the mark to claim it as a common law service mark if the mark has not be federally registered.
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.
If your trademark or service mark qualifies under federal law, you can apply to register it with the U.S. Patent & Trademark Office (USPTO) for extra legal protection under U.S. law. For a registered mark, you add a superscripted “R” inside of a circle.
A registered mark receives special protections under U.S. federal law that are unavailable to unregistered marks. For example, a registered mark creates a legal presumption nationwide that you own the mark with exclusive right to use it for the goods and/or services for which you registered it with the USPTO.
If you are building a brand for products and/or services, this is why it typically makes sense to take advantage of USPTO registration for your mark if it is eligible.
Most mark owners retain an experienced trademark lawyer to handle the application process.
This typically includes preliminary work to determine whether you should apply for registration, such as a comprehensive search of federal, state and common law marks that may conflict with the mark you want to register. This search is important because the federal database of registered marks, the USPTO Trademark Electronic Search System (TESS), does not include state and common law unregistered marks that may conflict with the mark you want to register.
In addition, your trademark attorney will use the USPTO Acceptable Identification of Goods and Services Manual to properly classify and describe the goods and/or services for which you’re seeking registration. This is very important because you want the registration to protect your brand but not be overbroad so that it inaccurately covers goods or services unrelated to what your brand. For example, if your mark is the unique name of your restaurant chain, the description shouldn’t be so broad that it covers children’s swimwear you don’t sell in your restaurants.
The application itself will be reviewed by an attorney who works as a trademark examiner for the USPTO. Although this attorney may answer some procedural questions if you file the application yourself, as a USPTO employee the examiner will not give you legal advice.
Trademark Registration Renewal and Abandonment
How do you maintain the federal registration for your mark?
Generally, after between 5 and 6 years after your registration date, you’ll need to file a maintenance document with the USPTO (Declaration of Continued Use or Excusable Nonuse).
In addition, every 10 years after your registration date, you’ll want to renew your registration by filing a maintenance document with the USPTO (Combined Declaration of Continued Use and Application for Renewal).
An experienced trademark lawyer can handle these maintenance documents for you.
What happens if you fail to file to timely file these documents?
The USPTO will deem the mark to have been abandoned (cancelled or expired) and you will lose all of the advantages of having a registered mark. However, you may still have lesser legal rights for it as an unregistered mark.
If someone unlawfully uses your mark (e.g. counterfeit goods), you may have a claim for infringement against them.
Your available remedies will vary depending upon a variety of factors, including whether your mark is registered or unregistered, the nature of the infringement (how the mark was unlawfully used), and applicable law.
If your mark is registered with the USPTO, you may be entitled to significant statutory damages and an award of attorney’s fees under federal law. For an unregistered mark, you are likely to collect less to compensate you for the infringement.
You may choose to license your mark for others to use. This is often done in exchange for licensing fees.
It’s important to use a qualified trademark lawyer to prepare your licensing agreements so that they protect your legal rights and don’t conflict with each other. Otherwise, the benefits of licensing are outweighed by the lawsuits filed against you by angry licensees when they discover you’ve sold them conflicting rights.
On the other hand, you may wish to license a mark owned by another business or individual. If the mark’s owner is willing to license it to you, your attorney can protect you by ensuring the agreement protects your rights as a licensee.
Where Do You Find A Good Trademark Lawyer?
An experienced Registered Patent Attorney can help you with your trademarks and service marks, including federal registration with the USPTO if they qualify.
Good Internet transactional attorneys can also help you with trademark issues, such as preparing licensing agreements that boost the income you receive from your marks while protecting your intellectual property.
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.
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.
What are the lessons you can learn from these Internet lawsuits?
1. Copyright infringement issues continue to bedevil the heck out of website owners and the Internet attorneys who represent them.
2. Social media contains a court of public opinion that is sometimes more effective than a court of law.
3. There are no winners when a lawsuit gets filed. At best, you’re dealing with mitigating damages. Often, it’s a case of digging a deeper hole.
This is not the first case where an Internet lawyer ended up with an online backlash. For example, there’s an Internet attorney who asserted a copyright for the HTML on his website and apparently was Google bombed for it.
One of the great things about my Internet law practice is that I focus exclusively on Internet business transactional law instead of lawsuits. Although it means occasionally crossing swords with Internet scam artists, that doesn’t involve hostile social media responses and lawsuits. After all, Internet con men don’t want their dirty laundry aired in court.
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