Saturday, June 02, 2007
Patents, Trademarks And Copyrights Oh-My
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Like the dread of lions, tigers and bears in the Wizard of Oz, small business owners face an equally intimidating journey as we consider protecting our intellectual property. Logo's, brand names, tag lines, even processes, layouts and distribution can be protected and made to become part of the equity of the company. Taking the time as well as spending the money can also prevent others from diluting your brand or having your great idea lost to competitors.
The American Heritage Dictionary defines intellectual property as:
intellectual property n.
A product of the intellect that has commercial value, including copyrighted property such as literary or artistic works, and ideational property, such as patents, appellations of origin, business methods, and industrial processes.
I have had many discussions about trademarks over the years with clients, partners and friends. I've always felt that it was important to invest heavily in the branding, graphics, colors and all aspects of corporate identity. I have always checked and double checked name availability with the state, registered trademarks, domain names, copyrights and patents when developing my own brands. Now, I'm facing the need to protect what I have created. The idea of protecting a brand identity with a trademark has always been something I felt was important and, like many small business people, it has always been one of those things that were put off for later.
For me money, or the lack thereof has been the primary reason for not applying for a trademark, patent or copyright. In hindsight I must admit that my 'reason' could have been more costly in the long run than the initial investment. More costly if and when another business person tries to copy my creative work.
Using the TM on a logo.
I have a client who approached me last October with the question about trade marking their logo. They asked many questions and my first point to them was, "I'm not an Intellectual Property Attorney, they are the best source for the correct answers to your questions." I made sure to make it clear that I am not "authorized" nor trained to offer legal advice, all I could do is share my opinion. Once that was clear we continued the discussion. (Note: This blog should not be interpreted as legal advice. I'm not a lawyer nor have I any capacity to offer legal counsel. I am sharing my opinion only.)
This client of mine is through the web company. They have a wonderful brand established and their logo is very unique. They were considering putting the logo on "Trick-or-Treat" bags and wanted to know if they could put a "TM" next to the logo. Again, I reminded them that I was woefully unqualified to answer the question, then I simply asked, "Have you trademarked the logo?"
They explained that they had considered trademarking their logo but the company who offered to do it for them wanted $3,000 for the service. They said because it was so expensive, they decided not to have it trademarked yet. I replied simply, putting the service mark, trademark or reserved sign next to an unregistered logo seems wrong and advised them that I would not do it if it were me.
I'm a simple guy so I typically revert to simplicity when faced with decisions like this. It's not trademarked? Then no, putting the symbol that indicates it is trademarked is wrong. Perhaps I over simplify things but in the end, I hold to my integrity above skirting the fringe. I've been brutally criticized for this, yet I stick to my guns because I seek to do what is right.
Since that time, I have learned that my advise was not entirely accurate. I learned from my most recent research that the use of TM or SM are not so tightly regulated. My client could have used the TM if they wanted. (sorry guys)
When can I use the trademark symbols TM, SM and ®?
Any time you claim rights in a mark, you may use the "TM" (trademark) or "SM" (service mark) designation to alert the public to your claim, regardless of whether you have filed an application with the USPTO. However, you may use the federal registration symbol "®" only after the USPTO actually registers a mark, and not while an application is pending. Also, you may use the registration symbol with the mark only on or in connection with the goods and/or services listed in the federal trademark registration.
Do I "NEED" a lawyer?
I remain convinced that a small business should seek out the services of a good... no... great law firm who will be able to answer questions relating to the many legal issues facing small business. I know, I know, they are expensive and they tend to bring up things we would rather not think about, but in this day and age of "sue first, ask questions later," one would do well to invest in a strong relationship with a good attorney.
TIP: Talk to your peers, networking associates, other small business people, read the local newspaper, Google your local area attorney's names for case files and by all means, conduct interviews with potential attorney's. The goal is to find an affordable yet capable firm that you can work with for years. Look at it like hiring a member of your senior staff, it's that important. Make sure and discuss fees, expectations, parameters and scope of representation. You will be faced with a contract that covers the agreement between you and the law firm, you might even consider having that contract reviewed by another attorney just in case.
NOTE: I have found an attorney that I hope will be the last one I ever have to hire. She is eager and willing to listen. Though my decision is based on a present need, I can see now that having her on the team will be a good thing for my business. Our relationship began after I had accomplished many of the tasks relating to the trademark, copyright and patent work, but she will be on the team should I need to protect my rights.
One more thought about lawyers. I have researched many issues on the Kentucky government website. I have searched for definitions, laws and regulations that apply to my business and that of my clients. I seek diligently to understand what rules affect my business.
Let me tell you, the number of laws on the books just in our great commonwealth are too numerous to count, (though I'm working on that through a database of statutes) and trying to memorize those while conducting day to day business is impossible. Having the dreaded lawyer on the team might hurt financially or even cause more detail oriented work, but in my opinion they are a necessity in this day and age. Consider it at least.
On with the show..........
I registered my first trademark this week.
I was inspired by my own desire to protect a new company and brand as well as a recent article on the front page of the June Entrepreneur Magazine website. ("In the Know" ~ Find out all you can about patents, trademarks and copyrights now--your business will thank you later. Article. ) After investing nearly every waking hour of the past 2 months on a new company, I thought the time is right to make the investment in my own intellectual property.
I had done a little research back in 2004 into trademarking another brand I was interested in protecting. The price was fair but the decision was not mine alone so we did not accomplish it. This time, I didn't have the same influences on the decision in that it was my decision to make.
The starting point, www.uspto.gov. A great site with lots of easy to understand information produced by the United States Patent and Trademark Office. The site is an essential first stop for searches as well as useful tips and guidance. I was able to learn everything I needed to know prior to registering my trademark and finally, apply for the trademark and even pay for it right from the site.
There is a workflow document on the USPTO website that spells out everything you need to know to get through the process yourself. http://www.uspto.gov/web/trademarks/workflow/start.htm
The bottom line: Once I figured out my industry codes, formatted my images and other files properly and found the proper application on the website, I was able to describe, upload and complete the entire application in less than an hour. The final step was to pay for the application and I even received an immediate receipt and guidance for the TM usage. The cost? $2,725 less than my friends were quoted. Yep, only $275 and a couple hours of my day.
I decided to register the logo and word mark and included the tag line of the company. I would have liked to have some counsel to help decide, but sometimes a small business person has to make decisions on their own. I expect that I would have been advised to register several versions but in the name of "budgetary oversight" I opted for a single option that included everything.
Turning to Copyrights
After celebrating my business prowess and ability to register the trademark all on my own, I turned to copyright protection. I read a good deal of advise from the Small Business Administration, online magazines and the official website of the U.S. Copyright Office. www.Copyright.gov The process revealed a number of considerations for my new company and was happy I spent the time on the website.
The basics, simply put and quoted verbatim from that site:
What Is Copyright
Source: http://www.copyright.gov/circs/circ1.html#wciCopyright is a form of protection provided by the laws of the United States (title 17, U. S. Code) to the authors of “original works of authorship,” including literary, dramatic, musical, artistic, and certain other intellectual works. This protection is available to both published and unpublished works. Section 106 of the 1976 Copyright Act generally gives the owner of copyright the exclusive right to do and to authorize others to do the following:
- To reproduce the work in copies or phonorecords;
- To prepare derivative works based upon the work;
- To distribute copies or phonorecords of the work to the public by sale or other transfer of ownership, or by rental, lease, or lending;
- To perform the work publicly, in the case of literary, musical, dramatic, and choreographic works, pantomimes, and motion pictures and other audiovisual works;
- To display the work publicly, in the case of literary, musical, dramatic, and choreographic works, pantomimes, and pictorial, graphic, or sculptural works, including the individual images of a motion picture or other audiovisual work; and
- In the case of sound recordings*, to perform the work publicly by means of a digital audio transmission.
In addition, certain authors of works of visual art have the rights of attribution and integrity as described in section 106A of the 1976 Copyright Act. For further information, request Circular 40, Copyright Registration for Works of the Visual Arts.
It is illegal for anyone to violate any of the rights provided by the copyright law to the owner of copyright. These rights, however, are not unlimited in scope. Sections 107 through 121 of the 1976 Copyright Act establish limitations on these rights. In some cases, these limitations are specified exemptions from copyright liability. One major limitation is the doctrine of “fair use,” which is given a statutory basis in section 107 of the 1976 Copyright Act. In other instances, the limitation takes the form of a “compulsory license” under which certain limited uses of copyrighted works are permitted upon payment of specified royalties and compliance with statutory conditions. For further information about the limitations of any of these rights, consult the copyright law or write to the Copyright Office.
*Note: Sound recordings are defined in the law as “works that result from the fixation of a series of musical, spoken, or other sounds, but not including the sounds accompanying a motion picture or other audiovisual work.” Common examples include recordings of music, drama, or lectures. A sound recording is not the same as a phonorecord. A phonorecord is the physical object in which works of authorship are embodied. The word “phonorecord” includes cassette tapes, CDs, LPs, 45 r.p.m. disks, as well as other formats.
The site helped me prepare for what will likely be a long and busy relationship with that office.
What about patents?
This was another interesting journey! I'm not quite finished with my research as I am waiting for a reply from the office. I would prefer not to get into detail relating to my strategy until my questions are answered and my application submitted.
The official definition of a patent from their website is:
What Is a Patent?
A patent for an invention is the grant of a property right to the inventor, issued by the United States Patent and Trademark Office. Generally, the term of a new patent is 20 years from the date on which the application for the patent was filed in the United States or, in special cases, from the date an earlier related application was filed, subject to the payment of maintenance fees. U.S. patent grants are effective only within the United States, U.S. territories, and U.S. possessions. Under certain circumstances, patent term extensions or adjustments may be available.
The right conferred by the patent grant is, in the language of the statute and of the grant itself, “the right to exclude others from making, using, offering for sale, or selling” the invention in the United States or “importing” the invention into the United States. What is granted is not the right to make, use, offer for sale, sell or import, but the right to exclude others from making, using, offering for sale, selling or importing the invention. Once a patent is issued, the patentee must enforce the patent without aid of the USPTO.
There are three types of patents:
1) Utility patents may be granted to anyone who invents or discovers any new and useful process, machine, article of manufacture, or composition of matter, or any new and useful improvement thereof;
2) Design patents may be granted to anyone who invents a new, original, and ornamental design for an article of manufacture; and
3) Plant patents may be granted to anyone who invents or discovers and asexually reproduces any distinct and new variety of plant.
The Entrepreneur Article I cited above offers some simple language and description of how patents can be used to protect the intellectual property of a small business.
In the Know
Find out all you can about patents, trademarks and copyrights now--your business will thank you later.
Entrepreneur Magazine - June 2007From page two
If you've created a new product, process or machine--or made a significant improvement on one--you might be able to obtain a utility patent, which protects your right to that invention for 20 years from the filing date. A design patent on original ornamental designs for manufactured items gives you 14 years of protection. It takes a long time to get either one, but you can file a provisional application that holds your place in line, in case someone else comes up with the same thing. You can file for a provisional utility patent online, but a provisional design patent has to be done through the mail.
Dreaming up the business is sometimes the easy part.
Creating the elements for branding, marketing and corporate image can be fun and creative. The process of creating the business model, setting accounting structure and even making the business plan can also be exciting as it helps make the dream a reality. Turning to the more intimidating details of patents, trademarks and copyrights can be a path easily avoided because of cost or lack of knowledge. It is part of the process none the less.
Think it through and build the business one brick at a time. This lends well to the advice to write out a comprehensive business plan that can be referred to as you are building. Many plans are created to seek funding, but a comprehensive plan will include a risk analysis, it is this analysis that will help identify any possible exposure to loss through lack of proper protection. I'm not suggesting that you drop everything and work on this exclusively, but start thinking about it, as time and resources allow you can bring it to the front burner, assign staff or contractors and shore up the foundation of your business.
How great is it to come up with a wonderful idea that is embraced by the market and sells well? The disappointment of seeing it taken by someone else is equally powerful but in the opposite direction. I believe a small business person should do what they can to protect their rights to great ideas, products and the associated intellectual property even if they have no desire for a fight... unfortunately, the battle is brought even to a peaceful, happy business. It's the world we live in.
Labels: branding, planning, research, small business
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