Should You Get a Registration for Your Intellectual Property?

by Richard Rimer | Jun 12, 2023 | Brand Protection 101, US Registration, Warning Signs, Education

Should You Get a Registration for Your Intellectual Property?

Like many things in life, the answer to this question is “it depends.” There is no black & white answer to whether you should apply for a registration. Registering a patent is necessary if you want to enforce your rights in that patent. Registering a trademark or copyright enhances your rights. However, that doesn’t mean you should always register every piece of intellectual property you own.

A quick story might help. I had coffee with an old friend recently. He learned I practiced IP law and wanted to understand what he could do to protect his

IP. After discussing several items related to his brands and websites, he closed with what he thought was a simple question about applying for a copyright registration himself.

My friend is a real estate broker and has created a formula that gives his company a competitive advantage. This formula can calculate an optimum list price and help the seller understand how spending money on something (e.g., a repair or staging) would change that price. He planned to copyright this formula and do this himself since the form is so easy to use.

Select The Type of Registration Very Carefully

HOLD THE PHONE! Registering his copyright in the formula would be a misstep for so many reasons. First, formulae are not eligible for copyright protection, so his request would fail. Second, filing the application would make his formula publicly known, which may have been a bad result.

I explained that his formula was likely best protected by trade secret law. One of the keys to claiming rights under trade secrets is (you guessed it) keeping the item a secret. We discussed ways to place safeguards around this formula so that no one else would have unauthorized access to the formula. So yes, he likely could have filed the copyright application himself. If he had, he would have given away a competitive advantage. I’m so glad we talked.

Copyright 101

by Richard Rimer | Jun 7, 2023 | US Registration, Infringement, Education

Copyrights 101

A Copyright is a type of intellectual property that covers expressive works. While most people associate copyrights with the arts, copyrights also cover items ranging from content on websites and social media to software code. Copyrights are owned by the author, that is, the person who creates the “expressive work” controls the right to use and duplicate the work.

There is an exception when the author is acting as an employee—then the company is the owner. This ownership begins the moment the author fixes the work in a tangible medium (e.g., actually places pen to paper). The company needs to get all other works it has created assigned to the company.

Copyright Registration

You do not need to register your copyright to own it. In fact, very few countries have a registration system for copyrights. The US is one country that does, and you get additional rights if you get a registration. First, you must have a registration to sue someone for infringing your rights in a copyright. Second, if your registration issues before your work is infringed, you have the ability to claim statutory damages.

The explosion of social media and other online forums has made copyright more important to almost any type of company. The companies that rely most heavily on copyright tend to be creative companies such as studios, production houses, publishers, etc.

Understanding what is controlled by copyright is step one in reviewing your reliance on copyright. You would want to make sure that the copyrightable material your company uses does not infringe on someone else’s rights, and then you would want to see what material you own so that you can consider registering and/or enforcing your rights in that material.

Check out this post on Taylor Swift’s legal issues regarding her intellectual property.

Trademarks – Own Your Brand

by Richard Rimer | Jun 5, 2023 | Brand Protection 101, US Registration, Education

Trademarks are the type of intellectual property that covers brands. While a “trademark” and a “brand” are technically different things, trademark is as close as the law gets to describing a brand.

A company gains rights in a trademark simply by using any commercial symbol to identify the company’s goods or services being sold. The rights based on use are limited, but they can be enhanced by getting a registration for the trademark. A registration gives the owner the legal presumption that it has the rights to use the brand/ trademark.

Trademark rights are limited geographically. If you have not registered your trademark, your rights are limited to the market areas you serve. If you have registered your trademark, you are limited to the country(ies) in which the trademark is registered.

Nearly every company relies on trademarks. If nothing else, the name of the company is often used as a trademark, as are the names, logos and taglines used in connection with the goods and services the company sells.

Understanding what brands are important to your company is step one in reviewing your reliance on trademarks. You next would want to ensure that your company’s use of these items does not infringe on someone else’s rights. Finally, if available, you may want to register your rights in the brand to authenticate your rights in that brand.

Patents as a Valuable Asset

by Richard Rimer | Jun 2, 2023 | US Registration, Education, Other

Patents are a type of intellectual property that cover inventions. Well, that is a simplistic view of patents.

In reality there are 3 types of patents: utility, design and plant. Most people think of utility patents, which covers a new or improved product, process, or machine. Design patents protects the way a product looks. Plant patents cover the production of a specific type of plant (i.e., flora).

One odd thing about patents is that you MUST have a registration to be able to enforce your rights. This registration gives you the right to exclude others from making, using, offering for sale, or selling the patented item. Of course this could be a huge competitive advantage. Since this right is so powerful, there are bars on what can be patented and when you can request a patent. Patent rights are jurisdictional in nature, which means that a patent in the US does not grant rights in other countries.

Almost any type of company could rely on patent rights. Patents tend to be more common (and therefore more valuable) in the manufacturing space or other places where machines are heavily relied upon.

Understanding how your company uses products, processes or machines is step one in reviewing your reliance on potentially patentable material. You next would want to ensure that your company’s use of these items does not infringe on someone else’s rights. Finally, if it’s available, you may want to register your rights in the patent. This will exclude others from using it (or creating a supplemental source of licensing income).

Is a Search of the USPTO Database Enough?

by Richard Rimer | May 31, 2023 | Brand Protection 101, US Registration, Warning Signs, Infringement, Education

No. Just, no.

Searching the USPTO database is a very important step when you are trying to clear your brand for use. Finding a direct hit in this database could be damning.

But what is a “direct hit?” Are direct hits always damning? What about those “indirect hits?”

Finding records in the database is not hard. (I’ll post a link to the database in the comments—poke around!) Knowing how to interpret the information you find in the database is the most important skill in clearing a brand.

Many people have told me about a “direct hit” that they thought would prevent the from using their preferred brand; many others have told me that there were no hits, so their brand was clear for use. I have confirmed many of these findings, but I also find many situations in which some other fact makes me give a different opinion.

Brand counsel uses various tools specifically engineered to find useful information about the brand rights of third parties. Once they digest this targeted information, they can then form opinions about the risks of your brand, and the opportunities that may be present.

So go ahead, perform that USPTO Database search. Learn all you can about the brand you want to use. Then call me to share this as I begin a professional search for you. (Still just $275.)

The phrase “but I didn’t know” is the reason I started my firm. I heard this phrase so many times from small companies when I worked for big firms and represented the large companies. These small companies were taking chances by operating in unknown conditions. This risk was not necessary, and I want to show them the way to certainty.

My mission is to inform, educate and represent small and mid-sized companies in the world of intellectual property, and specifically brand rights. Informing and educating are so important, because IGNORANCE IS NOT AN EXCUSE!

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