IP Legalese – Translating for Startups

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At our March Workshop held at Eastside Incubator we had a lively discussion on the following topics:

  • Basics of IP – how to know the difference between trademarks, copyrights, and patents.
  • IP Management – how best to protect your IP on a startup budget.
  • IP Ownership – learn what agreements you should have in place to keep your IP in house.
  • IP Taxation – a brief overview of IP Tax considerations for the startup entrepreneur.

Thanks to all for participating.  See you next month.

Why should I get a trademark registration?

 

Clients often ask me why they should bother with getting a trademark registration.  Heck, it’s a good question!  Do you have to have a trademark registration to get legal protection?  Or, is simply using the brand enough?   (As a quick preface, the answers to these questions are based SOLELY on U.S. law.  Believe me, things work very differently in other parts of the world.)  

In the U.S., you have have trademark rights in a brand as soon as you start using that brand in connection with a good/service in commerce.  Brand + goods or services + commerce = trademark rights.  So then, why register?

Here’s an important difference between “common law” rights (simply using the mark without a registration) versus having a registration: without a registration, your rights only extend as far as the reach of your brand.  With a federal registration, your rights are nationwide.  Let’s look at an example.  You are the purveyor of “Homework is Awesome” robots – small robots that will do your math homework for you.  (Come one kids, let’s dream big here.)  You’re bootstrapping, so right now you’re only selling your robots in “educational” (ahem, “toy”) stores in Washington, Oregon, and Idaho.  Without a trademark registration, you’ve only got rights to “Homework is Awesome” robots in those three states.  Someone in New York could start selling “Homework is Awesome” robots in Brooklyn and you’d have a tough time stopping them.  Now, with a federal registration, you get nationwide exclusivity to that brand.  See the difference?

Some other important reasons to register, per the United States Patent and Trademark Office’s “Basic Facts About Trademarks” guide:

  • Public notice of your claim of ownership of the mark;
  • Listing in the USPTO’s online databases;
  • The ability to record the U.S. registration with the U.S. Customs and Border Protection Service to prevent importation of infringing foreign goods; 
  • The right to use the federal registration symbol “®”;
  • The ability to bring an action concerning the mark in federal court; and
  • The use of the U.S. registration as a basis to obtain registration in foreign countries.

Got questions!  Drop me a line at ashley@emberip.com

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When can I file a trademark application?

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Brand owners often wonder when they are permitted to file a trademark application.  Do they have to file it before they launch the brand, or wait until after they’ve launched?  The answer is…either!  There’s no “have to” when it comes to timing on a trademark application filing.  You can file after you’ve launched.  You can file before you launch.  The “when” depends on your brand and your IP strategy.

There are two types of trademark filings for U.S. based applications: use based and “intent-to-use.”  (We’ll touch on the overseas applicant options in a future post.)  The first filing type is for those trademarks whose goods or services are already moving through  interstate commerce.  Pay attention to the “interstate” requirement.  You cannot file a use based application unless your goods/services are available to consumers in more than one state.  

The second type of filing is the “intent-to-use” (“ITU”) basis.  This means that you are filing for a mark which you intend to use in interstate commerce within a reasonable amount of time of the filing date.  (Without getting into too much legalese, think no more than 3 years from the application’s filing.)  The ITU filing goes through the same process as a use based filing.  However, a registration for an ITU application cannot issue until you provide the USPTO with confirmation that the mark’s goods/services are moving through interstate commerce.  

What if you’re close to launching your brand?  Should you wait to file a use based application, or get underway with the ITU option?  This is where the IP strategy discussion comes into play.  The answer depends on your specific brand and the products/services associated therewith.  If in doubt, ask for help from a trademark expert.  Remember, it’s better to spend a little bit of time getting the job done right in the first place than in is to spend a whole lot of time (and $$$) fixing problems down the line.  

Does my U.S. trademark registration protect me in other countries?

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Trademark rights are determined on a country by country basis.  As such, your registration in the U.S. will not protect your trademark rights in the EU, Canada, etc.  Furthermore, simply using your trademark in another country doesn’t necessarily mean you have rights to the mark there.  More often than not, foreign registrations are required to protect your mark abroad.

Most countries in the world are “first to file” countries.  No evidence of use is required before a registration can issue.  Quite simply, the first applicant to apply for a mark is the first to registration.  (Take, for example, the recent iPad dispute in China.)  Trademark rights in the U.S. are developed on a “first to use” basis.  You can’t obtain a registration for a trademark in the United States until that mark is moving its product or service through interstate commerce.  However, unlike the U.S., you may not be able to enforce your trademark rights in other countries absent a government issued registration for the mark.  

Upon hearing this news, many brand owners shudder and ask, “Does that mean I have to get a trademark registration in every country I want to use my mark?”  No, not necessarily.  For example, the EU has agreements in place which allow a brand owner to file one application to obtain a registration covering the entire EU.  Other regions throughout the world provide similar multi-country filing structures.  Also, those entities with a commercial presence in the U.S. can utilize a filing system known as the Madrid Protocol, which allows the brand owner’s U.S. counsel to file applications throughout the world based on the applicant’s original U.S. filing.  This can result in a significant costs savings to the brand owner.  

Developing your international IP portfolio can be a complex task for a brand owner.  Though DIY legal work can be tempting for a startup business, international trademark filing is not something that should be undertaken by a non-lawyer.  Compare it to, say, remodeling your bathroom.  With enough time, money, and patience, you might be able to do it right.  But, how will you know if you’re doing it wrong?  Probably not until you realize you forgot to seal your bathtub and you’ve now got a wading pool instead of a nicely tiled (dry!) floor.*

Questions?  Feel free to call or email me at ashley@emberip.com

 

*Not based on personal experience.  I’m the daughter of a plumber.   My father would disown me if I engaged in such shenanigans.

Is having the .com enough to secure a trademark?

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No.  Absolutely not.  

Since I get asked this question quite often by very smart people, I figure it’s time to dispel this particular myth.  Securing the .com for the brand name you’re targeting is not enough to secure trademark rights in that brand.  Sure, you’ve got the domain name, but let’s discuss what you haven’t got.

Availability as a Brand:  Having nabbed the .com does not mean the brand name itself is actually available for your product or service. Someone else could have already established rights in this brand without ever needing to grab the domain name.  Let’s look at a hypothetical.  You secure the domain name www.daffodilsattack.com for your new iPhone game.  However, you didn’t think to check Steam to see if someone else was selling a game with the same name.  Turns out Big Corp Studio is already selling Daffodils Attack as a brand new RPG.  You get a cease and desist letter from Big Corp Studio, who thinks you bought the domain name in hopes of getting $$$ from BCS.  Mayhem ensues.  

Just because the .com/.co/.whatever is available doesn’t mean that you’re free to run with the name.  Always conduct a clearance search of relevant databases (USPTO, internet, etc.) to make certain you’re the first one to the party.

Rights in the Brand:  Check out www.daffodilsattack.com.  Nothing but a landing page.  This lack of content means that you having presented the necessary elements to turn Daffodils Attack website into a brand: words + goods = source.  You’ve got the words, but no goods to attach to them, and no indication of who you are so that consumers know you’re behind Daffodils Attack.  Trademarks are source identifiers.  Words are just words.

Questions?  Contact me at ashley@emberip.com.

Do I have a trademark or a copyright?

You know you’ve got IP, you’re just not sure what kind.  Fear not!  People often confuse copyrights and trademarks.  Here’s some simple information that every entrepreneur should know so that they can accurately identify their intellectual property:

Copyright: A copyright is an expression of something – software code, sculptures, photographs – in a tangible medium.  Legalese aside, what does that mean?  The “expression in a tangible medium” refers to that place and time when an idea makes the leap out of your head and into the real world for all to see.  An idea is just that: an idea.  It’s the act of expression which gives you intellectual property ownership rights.

Trademark:  A trademark is something – a word, image, sound, smell (!) – that identifies a good or service with its provider.  For example, the “Swoosh” symbol is an image placed on athletic apparel that allows consumers to identify Nike as the provider of those goods.  The word “trademark” is often misused in everyday language.  Someone can claim they have a trademark on a certain phrase (e.g. “Cowboy Up!”), but until that phrase becomes a source identifier for a certain good or service, it in no way functions legally as a trademark.  It’s just the meme of the day.

The Intersection Between Copyright and Trademark:  Sometimes a thing can start as a copyright and then evolve into a trademark.  Let’s say I (poorly) draw a picture of a flame.  As soon as I’ve committed that image to some format – whether it be digital or paper – I now have a copyright in that image.  Now, let’s say that I like that image so much that I start using it wherever I advertise Ember IP’s legal services.  Now that flame image is used to help consumers identify Ember IP as a source of legal services.  It’s the transition from being a stand alone image to representing something more that is the dividing line between the copyright and the trademark.

Questions?  Please contact me at ashley@emberip.com.