Tag Archives: IP Ownership

Why Should I Register My Trademarks?

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TrademarkIn the United States, trademark rights are based on (1) priority (who used the mark first), (2) territory (the geographic area(s) where the mark has been used), and (3) use (whether products or services are actually provided under the mark).

Generally, the first to either use a mark in commerce or file an intent-to-use application with the United States Patent and Trademark Office (USPTO) has the ultimate right to use and registration of the mark.

Common law rights arise when products or services are offered for sale in connection with the mark.  However, common law rights are limited to the trade area in which you actually use the mark and those rights may be limited or even prohibited by prior senior uses of the same or confusingly similar marks.

A trademark owner may also register a mark in one or more individual states through Secretary of State Offices.

Although registering your mark with the USPTO is not required to establish rights in a trademark, there are many important benefits of federal trademark registration with the USPTO.  For example, upon registration of a federal trademark, the registrant obtains rights to the mark throughout the United States retroactive to the date of filing of the application. The registrant also obtains the right to stop junior users from adopting confusingly similar marks in overlapping trade areas or anywhere the registrant has acquired goodwill in such mark.

Here are some of the benefits of registration:

  • Registration provides constructive notice nationwide of the mark owner’s claim in the mark and evidence of ownership of the mark.
  • The mark owner has the exclusive right to use the mark on or in connection with the goods or services set forth in the registration.
  • The mark owner may bring lawsuits for infringement in federal court.
  • The mark owner may be entitled to recover profits, damages and costs of infringement, attorneys’ fees and treble damages.
  • Registration can be used as a basis for obtaining registration in foreign countries.
  • The mark can obtain incontestable status after continuous use for 5 years after the date of registration on the Principal Register (which limits third parties’ rights to contest your mark).
  • Registration may be filed with U.S. Customs Service to prevent importation of infringing foreign goods.

An application for trademark registration requires: (1) a completed application form, (2) a nonrefundable filing fee ranging from $225-$375 per class of goods/services, and, for marks already being used in commerce, (3) specimens of the mark showing use of the mark in connection with the applicable goods/services.

Click here for more information about how to select and protect a trademark.

 

Intellectual Property Audits: Taking Stock of Your Intangibles

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Most companies routinely perform inventory audits of their physical assets…but — even though it’s not always on the radar — performing audits of intangible assets is equally (and perhaps even more) important.

The objective of an IP audit is to identify and protect intellectual property assets that provide you with Audit Rubber Stamp Shows Financial Accounting Examinationa competitive advantage and promote the goodwill of your business.  By creating a process to identify and take steps to protect intellectual property at least once a year (and perhaps more frequently if IP is a major component of your business), you can ensure that valuable assets are not made public, or otherwise lost or compromised, prior to taking the appropriate actions to protect them.  An intellectual property audit and due diligence review should also be performed in connection with mergers and acquisitions and other buy/sell transactions, as well as financing transactions that affect IP assets.

Typical intellectual property assets include product, service and company names and logos (trademarks), website content, written materials, and creative works (copyrights), formulas, processes, product designs and inventions (patents), and proprietary customer lists and other confidential information, such as pricing data and vendor information (trade secrets). Depending on your industry and the types of products and services you offer, there may be other intellectual property assets to consider.  These items should be identified and reviewed on a regular basis.

An audit should include a variety of information, such as:

  • Name/Description of IP – Identification of mark or domain name, title of copyright or patent
  • Subject of IP – List of goods/services, copyrighted material, description of patent
  • Status of IP – Application and registration number(s), intent-to-use or actual use-based mark, upcoming filing deadlines, IP not protected, related litigation or other disputes or issues
  • When/How/Where the IP Has Been Used – Dates of first use/publication, where/how IP used/published, U.S./International use, and any licenses or agreements regarding the IP
  • Chain of Title – IP owner(s), list of all IP transfers, note any transfers that have not been recorded, note any gaps in the record of ownership

Once your intellectual property has been itemized, you should determine whether any additional protections or updates to existing protections are necessary.  You should also review company policies and agreements with employees, independent contractors and licensees regarding the creation, use and protection of your (or third party) IP assets, as well as confidentiality and non-compete protections.  Additionally, your social media, website and insurance policies should be reviewed, as well as your advertising and marketing materials.  You may also consider whether you need to implement systems to monitor unauthorized use of your IP assets by others and address how to approach infringement scenarios.

Internal IP audits are a great start, but you should consider consulting with an IP attorney to ensure all of your IP has been identified and is protected.

 

Why Should I Register My Copyrights?

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CopyrightThe moment you create and write down, record, photograph or otherwise “fix” your creative work in “any tangible medium of expression,” you automatically have copyright protection in that work under the United States Copyright Act.  Although filing an application for registration of your work with the U.S. Copyright Office is not required for this protection, the benefits of registration could be substantial.

For example, if you wait until your work has been infringed and the infringement occurs more than 3 months after you first made the work publicly available, then you will not be able to obtain statutory damages or attorney’s fees for the infringement, and you’ll have to prove actual damages instead.  This can make or break your chances of recovering any money from the infringer, as actual damages can be difficult to prove and may not exist in certain situations.

Additionally, before you can bring a lawsuit for copyright infringement, you must have a copyright registration for the work that has been infringed.  This means that you could end up filing a copyright application after the infringement occurs and end up paying a much higher filing fee without the main benefits you would have had had you filed the application before the infringement occurred.

Here’s a list of some of the benefits of registration:

  • If registration is made within 3 months after publication of the work OR prior to an infringement of the work, statutory damages and attorney’s fees will be available to the copyright owner in court actions. Otherwise, only an award of actual damages and profits is available to the copyright owner.
  • Before an infringement suit may be filed in court, registration is necessary for works of U. S. origin.
  • Registration establishes a public record of the copyright claim.
  • If made before or within 5 years of publication, registration will establish prima facie evidence in court of the validity of the copyright and of the facts stated in the certificate.
  • Registration allows the owner of the copyright to record the registration with the U. S. Customs Service for protection against the importation of infringing copies.

Registration may be made at any time within the life of the copyright. An application for copyright registration contains three essential elements: (1) a completed application form, (2) a nonrefundable filing fee ($35-$55), and (3) a nonreturnable deposit—that is, a copy or copies of the work being registered and “deposited” with the Copyright Office.

As the U.S. is a member to a number of international treaties related to copyright protection, your U.S. copyright rights will be recognized in most countries throughout the world, and vice versa.

 

Why You Should Have Agreements with Your Independent Contractors

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bulb-40701_1280A work prepared by an employee within the scope of his employment is owned by the employer (which is known as a “work made for hire”).

However, just because you pay someone to create something for you doesn’t mean it’s a “work made for hire”.

If you hire an independent contractor (such as a freelancer, consultant or third party company) to create something for you (e.g., design a website, create advertising materials, take photographs, etc.), if you want to own the materials created – and not just have limited rights to use the materials –you will need a signed, written agreement transferring the intellectual property rights to you.

Independent Contractors own the copyrights in their creations unless the rights are transferred by a signed, written agreement.

Even if you aren’t going to own the intellectual property rights in the materials created by an independent contractor, an agreement is still a good idea to clarify what rights you have to use (and potentially modify) the materials.

 

How to Protect Titles of Creative Works

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Although movies, TV shows, art, books, musibooks-498422_1280c, lyrics and recordings are protected by copyright, the titles, names and tag lines associated with these types of creative works do not qualify for copyright protection. However, in certain instances, titles of creative works may be protectable as trademarks.

For example, you cannot register a trademark for the title, or a portion of a title, of a single creative work (such as a book, a television episode, a film, a live theatre production, or a phonograph record).  [NOTE: Computer software and computer games are not treated as single creative works.]

However, if the title has been (or will be) used in connection with a series of creative works (e.g., a series of books, the second edition of a book with significant changes, a periodically issued magazine, a television or movie series, a series of live performances [such as by a musical artist], educational seminars, or a continuing radio program), it may constitute a mark for either entertainment or educational services.

For more information about how to protect titles, here’s an article I wrote entitled “A Different Kind of Title Insurance: How to Protect Titles of Creative Works” that was published in Bloomberg BNA’s Patent, Trademark and Copyright Journal.