The Top 5 Intellectual Property Mistakes

Taking a new business from the idea phase to a working operation is a huge undertaking in effort, time, and money. Too many times, new businesses overlook protecting their intellectual property. Like most things, a proactive defense can prevent headaches down the road. We have included the top 5 Intellectual Property Mistakes to avoid when starting your new business.

1. Failing to Understand What Patents, Trademarks, and Copyrights Protect

Even though most people have heard of patents, trademarks, and copyrights, they may not know or understand what these terms are.

What is a patent? A patent is a form of intellectual property that gives its owner the legal right to prevent others from making, using, selling, offering to sell, or importing an invention into the U.S. without the patent owner’s permission. There are 3 types of patents – utility patents, design patents, and plant patents. Utility patents protect new and useful machines, systems, methods. This category is typically what you think of when you think of a “patent” – it covers cars, airplanes, pens, golf gloves, etc. Design patents protect the ornamental appearance of the invention, such as unique jewelry designs, furniture, and beverage containers. The final category of patents is plant patents, which protect new strains of asexually reproduced plants.

What is a trademark? A trademark is a recognizable word, design, or expression that identifies the source of a product or services. A trademark gives the owner the exclusive right to use the trademark, and also allows the owner to prevent others from using that mark or anything confusingly similar.

What is a copyright? Copyrights protect original works of authorship that are fixed in tangible form. What does this mean? Copyrights cover artistic expressions, such as books, paintings, photographs, movies, architectural drawings, etc. that are in tangible form. So as long as the painting is on a canvas or the book is written on your computer, the work can be protected with a copyright.

2. Failing to Trademark Your Business/Product Name Properly

Why do I need a trademark?

When you start your business or create a new product line, it makes sense to protect them by filing for trademark protection. Why? You put a lot of time and thought into selecting your trademark, so it is wise to take steps to prevent a 3^rd party from using the same or a similar trademark for competing products or services. You also develop goodwill when you run a business – customers associate your business with quality products and good customer service. Registering your trademark would prevent a 3^rd party from adopting a trademark similar to yours, and benefiting from your business’ good reputation.

Choose a strong trademark. Trademarks can be fanciful, arbitrary, suggestive, descriptive or generic. Fanciful trademarks are one of the strongest types of trademarks, and include made up or invented words (e.g., Pepsi, Clorox, and Exxon). Arbitrary trademarks include a known word that does not suggest anything about the owner or the products/services (e.g., Apple Computers). Suggestive trademarks suggest something about the associated goods/services (e.g., Greyhound Buses, for example, suggest speed by including the name of a known breed of fast dogs). Descriptive trademarks describe the associated goods/services (e.g., Seattle’s Best Coffee) and are not entitled to as much trademark protection as fanciful, arbitrary and suggestive marks. Generic trademarks include common terms and not entitled to trademark protection (e.g., a shoe company called “Shoes.”)

Conduct a Trademark Search. Before you file a trademark application, it is a good idea to conduct a search of the U.S. Trademark Office records to determine whether there are any prior-filed trademark applications that would prevent you from registering your mark. Make sure the search is thorough and you search not only exact matches of your trademark, but partial words and alternate spellings.

File a Trademark Application with U.S. Patent and Trademark Office. Once you’ve selected a strong trademark and you’ve conducted a search of the Trademark Office records, you’ll want to file a trademark application. In the application, you will identify the mark, the owner, and the associated goods/services. If you are currently using the trademark in commerce, you will also need to submit a specimen showing use of the mark, along with the dates of first use

3. Failing to File for Patent Protection

Why do I need a patent?

A patent will afford the patent owner the right to prevent others from making, using, selling, or importing the invention into the U.S. If you develop a new product and begin selling it without securing patent protection, a competitor could also make and sell your product without you being able to stop them.

Conduct a search. Much like the trademark, prior to filing your patent application you should conduct a thorough search of the Patent Office records to make sure there are no roadblocks to patent protection. It’s a good idea to search the USPTO records, along with performing a Google search.

File a patent application. Once you’ve conducted your patent search, it’s time to file your patent application. A patent application is a legal document that is usually prepared by a patent attorney. The application will describe your invention, what it does, how it works, and the benefits of the invention compared to the prior art. There should be enough detail in the patent application to allow a reader to make and use the invention. The patent application also includes formal drawings that show the invention in detail.

Timing. When is the best time to file your patent application? As soon as possible! In the U.S., it is a race to the Patent Office – the owner that files their patent application first is awarded the patent over later-filed applications. For example, if you have an invention, but wait several years to file your patent application, a 3^rd party that independently develops the same invention who files their patent application before you will be awarded the patent – even if you invented first! The lesson here is, file your patent application as soon as possible!

4. Failing to File a Copyright

Automatically created. Unlike patents and trademarks, copyrights are automatically created once the author has the work in tangible form. After an artist finishes his painting, for example, he has a copyright in the work. However, there are clear benefits to registering your copyright with the Copyright Office.

Public Notice. Registering your copyright puts the public on notice that you have secured copyright protection for your creation, which will dissuade copycats.

Ability to Sue for Copyright Infringement. Further, you cannot sue a 3^rd party for copyright infringement unless you’ve registered the work with the Copyright Office. What does this mean? If you notice that a 3^rd party is using a painting your created for their own advertising campaign, unless you’ve got a registered copyright on the painting, you cannot sue the advertiser for copyright infringement to force them to stop using your creation.

5. Not Using an Intellectual Property Attorney

U.S. Patent and Trademark Office employees cannot give legal advice. If you try to file your trademark, patent, or copyright application on your own and run into trouble or have questions, you will not receive much (if any!) guidance from the USPTO. At best, the employee will point you to a specific rule and allow you to interpret it on your own.

Comprehensive patent and trademark searching. Intellectual property attorneys deal with patents, trademarks, and copyrights on a daily basis. They know the tips and tricks to get the best and most relevant search results. An IP attorney can also coordinate professional patent searching if desired.

Conclusion:

Attorneys provide invaluable counseling services. Another benefit of using an intellectual property attorney is that you get the benefit of their experience and expertise to help answer your questions. The attorney can help avoid roadblocks during the prosecution of your applications, and can further optimize the chances of successful registration.

Registration maintenance. Finally, an intellectual property attorney can help ensure that your maintenance documents and payments are up to date so that your patent or trademark does not unintentionally go abandoned.

If you have questions or would like a free consultation please contact our office in Raleigh at (919) 576 7612 or in Wilmington at (910) 612-7027