Patents, Copyrights & Trademarks – A Primer for Every Business
Provided by Dunlap, Grubb & Weaver
The USPTO estimates that piracy, counterfeiting and the theft of intellectual property (“IP”) costs businesses and individuals $250 billion and 750,000 jobs per year. IP theft and direct competition in the marketplace make IP protection of paramount importance in business planning, budgeting and marketing considerations for businesses of any size.
As a consequence of the proliferation of e-commerce as a primary transaction medium in the business world, more than ever small businesses in every industry are engaging in national and international transactions. In order to succeed in a global economy, all businesses depend upon their intellectual property assets, whether they realize it or not.
Intellectual property assets include every printed or electronic piece of advertising material, web-sites, information literature, contracts, proprietary business processes, good will, company logos and most importantly, the brand name and image of the company itself. Trademark, copyright, patent, non-disclosure agreements, works-for-hire contracts, non-competition agreements and a variety of other protections are available to business owners as safeguards against theft and piracy. Small businesses usually lack the experience to know where to turn and believe they lack the resources to protect themselves–or worse, they see intellectual property protection as an unnecessary “extra”. Failing to recognize the value of what is often the only real asset of the business, owners often deliberately or inadvertently avoid intellectual property protection in favor of additional advertising or other short term expenditures.
Performing a cost-benefit analysis is easy. Common ways small businesses waste money include: building a brand name for a name that can be copied or used by a competitor; creating original content for a website or a brochure and leaving it uncopyrighted; training employees in proprietary business methods or giving them proprietary business information, where the employee is not prevented from eventually competing with the business. In each of these instances, securing the exclusive rights to the IP is imperative.
How do you protect intellectual property?
Trademark (or servicemark) a name, slogan, brand or company logo by filing an application on the United States Patent and Trademark Office’s Principal Register. Trademarks can be renewed forever and provide the owner the absolute right to exclude others from the use of a “confusingly similar” name, logo or slogan within the same industry. When exploring this option, please beware of internet services with low prices that seem “too good to be true”. These search services are usually worthless because they will often file your mark, but because the filing was performed by non-attorney staff, the filing results in a USPTO “office action”. These services create additional work for the party seeking to protect the mark, but such non-attorney services are neither obligated nor capable of resolving the office action. This conundrum means that the IP owner actually loses priority (its place in line) and the fees paid for the filing. This often discourages the business owners and forces them having to hire an attorney to address the office action and/or correct the filing, which is often more expensive than the original filing.
Copyright a website, a brochure, photos, advertising literature of any kind, original information work. Copyrighting is achieved through the United States Archives and lasts for more than 70 years.
Patent a business process, a device, method or other process. Patents are filed at the United States Patent and Trademark Office. They are generally the most expensive form of registered intellectual property, but likewise may provide the most value–they provide a legal “monopoly” throughout the United States on the patented design or method for a period of 20 years.
Contract to prevent disclosure of sensitive information, business lists and methods. Carefully crafted contracts should be used by all employers either to prevent key employees from competing in a relevant market and geographic area for a period of time, prevent solicitation of customers and employees, and from using proprietary business methods. Contracts can be used to license other protected (trademarked, copyrighted or patented material), and to ensure that employee “original works” remain property of the company.
The damages for patent, copyright or trademark infringement of registered marks include injunctions, monetary relief (including profits, damages and costs), attorneys’ fees and the court ordered destruction of infringing materials. While some common law rights exist with respect to trademark and copyright, as a practical matter these rights are ineffective because the aggrieved party cannot recover its attorney’s fees or the costs of enforcement without registering the trademark or copyright.
Securing intellectual property protection outside of the U.S. typically requires registration on a country-by-country basis. While some countries have entered into treaties to ease the patent, trademark and copyright process, the treaties rarely provide rights that are enforceable by private parties in litigation.
In sum, business should ask themselves: What sets our business apart from our competition and provides us an edge in the marketplace? Is it a process, the look and feel of a logo or brand name, or our product designs? What is stopping someone from copying these things and taking advantage of your company’s advertising dollars and hard work? Are you infringing on someone else’s protected property? Business owners must answer these questions before gambling on their business.
Thomas M. Dunlap is an attorney practicing in the area of intellectual property law as a partner at Loudoun’s largest intellectual property and business law firm, with offices in Washington, D.C. and Rockville, MD, dealing in patent, trademark, copyright litigation, and business transactions.
ABOUT THE AUTHOR: Tom is the managing partner of Dunlap, Grubb & Weaver a boutique firm representing clients around the world in intellectual property disputes and transactions (patents, copyright, trademark, antitrust and unfair competition). Tom has represented local, national and international clients in a variety of complex litigation, including copyright disputes in the United Kingdom and multi-jurisdictional federal patent infringement and invalidity claims in Taiwan and Israel. Tom has appeared before the Supreme Court of Virginia where he successfully argued the application of the intra-corporate immunity doctrine as it relates to conspiracy claims.
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