IP is a commonly used term short for intellectual property, which refers to property rights arising from works of the mind.
Intellectual Property is a category of property that covers creations of the mind, such as: inventions, literary and artistic works, music, designs, symbols, names and images used in commerce.
IP is not inherently tangible, unlike real estate or personal property such as a watch or a car. It is fundamentally based on ideas, knowledge and ingenuity.
There are many types of intellectual property; however, the best-known include: trademark, copyright, patent, right of publicity, and trade secrets.
IP is protected by law, which enables people to earn recognition or financial benefit, and give the creator an exclusive right over the use of their creations which prevents unauthorized use by others.
Intellectual property attempts to strike a balance between rewarding content creators and incentivizing the creation of new content. Trademark, specifically, exists to benefit both the public and trademark holders alike, by preventing consumer confusion.
Copyrights cover creative artistic works such as paintings, films, drawings, music, poetry, books, computer programs, maps, sound recordings, photographs, etc.
Trademarks cover names, logos, symbols, phrases, designs, or images that a company or individual uses to identify and distinguish their company, products, or services from another.
Trade Dress is a subcategory of Trademarks which covers the look and feel of a product from its visual appearance to its packaging.
Patents cover inventions such as new or improved processes, tools, machines, or products.
Rights of Publicity cover a person's name, image, likeness, and other indicia of that person's identity.
There are a variety of ways you can get value out of your Intellectual Property. In fact, just having Intellectual Property already increases the overall valuation of a business. Ideas for getting the most out of your IP include marketing and licensing strategies, brand recognition and identity, consumer perception, and quality association.
IP infringement is when a third party uses the Intellectual Property of another in an unauthorized manner.
An unauthorized manner could include the following scenarios:
Protecting your intellectual property is one of the best means to secure an economic advantage for your business, and guarantees that you can defend your ideas, products, and services.
There are a variety of ways to protect your intellectual property. The first, and best, way to start protecting your IP is through registration. Registration puts the public on notice that you are the owner of a certain trademark and/or copyright, and provides the owner with various exclusive rights to enforce that mark/work.
IP-holders should create and enforce a stringent IP monitoring system, to actively patrol the market, searching for and identifying infringers, and taking action against those using their IP without authorization.
Trademark registration holders should keep accurate and up-to-date records about the use of their marks in commerce, and should be sure to meet any and all filing deadlines, in order to maintain their registration. Failure to comply with the USPTO’s renewal deadlines could result in the loss, or abandonment, of their marks.
Apart from registration, creators and owners of intellectual property can take other preventative measures in order to protect their IP. For example, non-disclosure agreements, digital rights management (DRM) systems, document retention policies, watermarks, and so on.
Unfortunately, while IP-holders can take steps and implement procedures in an attempt to prevent IP theft, it is almost impossible to prevent infringement entirely. Having an active policy on policing your IP, and a gameplan for when infringement does occur helps IP-holders be prepared in the event of infringement.
Additionally, the more an IP-holder enforces their IP, the less likely it is for would-be-infringers to use their IP. In other words, having a good offense is often the strongest defense.
IP infringement occurs when another business or individual uses or copies your IP without your permission or knowledge. In order to check if someone is infringing on your IP, it is important to do regular checks with the copyright office, USPTO, across the Internet, and among your competitors.
If someone is using your IP without your authorization, or outside the scope of their authorization, there are a variety of options and remedies available in order to protect your IP. Remedies range from sending cease and desist letters to filing a lawsuit.
If no one is infringing your IP, you are in an advantageous position. Now is the time to take proactive steps to ensure that infringement doesn't happen to you in the future.
These steps include: registering and monitoring your trademarks and copyrights, doing regular searches with the USPTO, Copyright Office, and across the Internet, and creating an action plan in the event an infringement is found.
Strategically, this is the best approach for your business.
Yes. Enforcing your IP against infringement is not only in your best interest in order to maintain the value of your IP, some courts have held that trademark holders, specifically, must enforce their trademarks against infringement, otherwise they may risk losing their marks. Simply put, your IP rights could be a “if you don’t use it, you lose it” situation.
A trademark, generally speaking, is a designator of source. A trademark can be any word, phrase, symbol, design, or a combination of these things that identifies your goods or services. It is how customers recognize a brand in the marketplace and distinguish that brand from its competitors.
The word “trademark” can refer to both trademarks and service marks. A trademark is used for goods, while a service mark is used for services.
A trademark:
A trademark can be any word, name, phrase, symbol, design, device, or combination. This can be an imagined word such as Pepsi or a dictionary word like Google.
Additionally, shapes, sounds, scents, and colors can be trademarked as well.
Not everything can be trademarked. A trademark has to serve the function of uniquely designating a product or service source from that of others operating in the same space in commerce.
In order to qualify, the mark must not be descriptive or generic. A descriptive mark would include words that merely describe the product or its qualities/characteristics. A generic mark would be a common term that the public has already come to associate with a certain product. For example, one would not be able to trademark the word "salty" to describe salt, or trademark "shoes" to sell shoes.
Additionally the mark cannot be misleading, offensive, or obscene, identify a living person without their consent, nor depict flags or seals of states or countries. A limitation to trademark protection specific to trade dress is that the mark must not be functional in nature.
The mark must also be used in commerce in order to qualify for trademark protection – while one can reserve their trademark before they begin using it in commerce (by filing an intent-to-use application), a mark will not register if it is not being used as a source designator in association with a product or service being offered in commerce.
You become a trademark owner as soon as you start using your trademark with your goods or services. While rights are established in a trademark through the use of that mark, those rights are limited, and they only apply to the limited geographic area in which the goods or services are provided. In order to obtain stronger, nationwide rights, you must register your trademark with the USPTO.
While you are not required to register your trademark, a registered trademark provides broader rights and protections than an unregistered mark including the ability to enforce against infringement and request damages from the court.
Not everyone is required to have an attorney represent them before the USPTO. If the trademark applicant is domiciled in the United States, the applicant may apply for a trademark without an attorney. If the trademark applicant is a foreign-domiciled applicant, they must be represented by an attorney licensed in the United States.
However, even if you can file a trademark application without an attorney, the United States Patent and Trademark Office recommends applicants to hire an attorney, as having legal representation can help applicants both obtain a registration and maintain that trademark.
Benefits of hiring an attorney include:
The trademark registration process consists of six main stages:
1.) Pre-application – conduct market analysis and a trademark clearance search to ensure there are no other existing marks that would either prevent your mark from registering and/or would conflict with your mark
2.) Application – draft and prepare trademark registration application, including drafting the language for the goods and services designation, preparing specimens (examples of your product being used in commerce), etc.
3.) Examination – your trademark application will be assigned to a trademark examiner for the USPTO. The examiner will review the application and either reject the application, grant the application, and/or suggest modifications to the application. If modifications are suggested, or the application is rejected, the applicant can attempt to remedy any defects in the application by submitting a response to the office action.
4.) Publication – once the application is approved by the examiner, the mark will be published in the official trademark gazette, allowing anyone who believes your mark should not register for any reason the opportunity to oppose the registration.
5.) Registration – once your mark is accepted, and the publication period is over, your mark will be issued a registration certificate
6.) Maintenance – while the length of trademark protection can be indefinite, a trademark holder is required to file certain forms in order to maintain and renew the registration.
Protection over a registered trademark can last indefinitely, so long as the trademark is being used continuously in commerce. However, a trademark registration must be renewed every 10 years.
The purpose of these symbols is to notify third parties that the owner is claiming exclusive rights to a trademark.
TM - The initials TM are a recognized abbreviation for trademark. The ™ symbol, which is usually placed behind the mark, indicates that the owner claims exclusive rights to the term as a trademark. It is not necessary to have a registration, or even a pending application, to use this designation.
SM - If a trademark is used with services instead of goods, the mark owner may use the SM symbol to designate a term as a service mark. A service mark is simply a trademark used to identify a service rather than a product. As with TM, it is not necessary to have a registration, or even a pending application to use this designation.
® - If the trademark is federally registered, the owner may use the ® symbol next to the term. The registration symbol, ®, should not be used until the United States Patent and Trademark Office has issued a Certificate of Registration for the mark. The ® symbol should not be used if the trademark is only registered at the state level.
In all cases, the trademark and associated symbols should be used consistently to enable it to develop significance as a “source indicator.”
Some of the benefits of registering a U.S. mark is that it grants nationwide protection, it gives notice to others that mark is in use, it gives owners the right to request customs officials to bar the importation of goods bearing infringing trademarks, it allows trademarks owners to sue in federal courts, it allows remedies in civil actions for infringement, and it makes the mark incontestable after five years.
Trademark infringement is when a third party uses a similar or identical trademark to a federally registered trademark. Trademark litigation often hinges on the likelihood of confusion among consumers as to the source of the goods and services.
Gray market goods are products that are being sold outside of the parameters allowed by the IP holder. Typically, they are products purchased in one market (e.g., India) and sold into another (e.g., U.S.) without permission of the brand. Gray marketers commonly undersell U.S. distributors causing lost sales. Also, IP holders suffer from reputational losses as many of the gray market goods differ in characteristics and quality from domestic goods, leaving their customers unhappy and disappointed.
It is almost impossible to prevent gray market goods, but there are steps that can be taken to mitigate the damage. Companies should educate their customers on the importance of purchasing products from trusted authorized dealers and the risks associated with shopping on gray market websites. Many customers already follow their favorite companies on social media, which is the perfect opportunity for brand owners to raise awareness.
Counterfeiting is essentially when someone manufactures, distributes or sells goods that are not genuine but are designed to appear to be genuine. They are fake versions of well-known brands or products. A common example is designer handbag knock offs. Counterfeiting falls under the umbrella of trademark and/or trade dress infringement.
Trademark litigation is when the trademark owner sues the infringer to recover damages caused by the misconduct and/or to obtain injunctive relief, which stops future misconduct.
A copyright is a creative work of art fixed in a tangible medium of expression.
Copyright protection extends to any creative work, so long as it is “fixed” in a tangible medium of expression. Examples include: photographs, paintings, compositions, musical works, drawings, movies, and so on.
Copyright protection is quite broad; however, in order to obtain a copyright registration, there are certain requirements that must be met. The work must have some level of creativity, or originality – it cannot be a direct copy of an existing work, nor can facts or ideas be copyrighted (however, if the creator is compiling facts in a creative way, that may qualify for copyright protection).
To register a copyright, an application needs to be filed with the U.S. Copyright Office.
Copyright protection exists the moment the author creates the original work; however, copyright registration provides copyright owners with exclusive rights, and can greatly help to enforce those rights against infringement through litigation, and allows owners to seek monetary damages and attorneys fees.
Anyone who believes that their work could be used by a third party without their permission, and who wants to prevent others from doing so, and/or who wants to be able to recover the profits and damages from that infringement, should register their copyrights. If you have no intention of profiting off your work and you don’t mind if others might use it, then you don’t need to be concerned with registration.
The length of copyright protection depends on who owns the copyright:
Individuals - if the owner is an individual, and the creator of the artistic work, copyright protection will last for the lifetime of the creator, plus 70 years.
Co-authors - if there are co-authors, copyright protection will last for 70 years after the last surviving author’s death.
Company - if the owner is a company, copyright protection will last for 120 years from creation or 95 years from publication, whichever is shorter.
A copyright notice lets the public know that the work is protected by copyright. It is placed directly on the work and contains the year of first publication and the name of the owner. Copyright notices are not required; however, if they are used and someone infringes your copyright, the infringer will not be successful in asserting that their use was innocent. This is significant as the damages awarded to the copyright holder may be more substantial given the willfulness of the act.
Copyright infringement is when a third party reproduces, displays, performs, or distributes a copyrighted work without the permission or authorization of the copyright holder.
Monetary damages can only be sought when the copyright is officially registered with the U.S. Copyright Office.
Fair use is a doctrine which, in some conditions, allows a third party to use your copyright without authorization. Those uses include educational purposes, criticism, comment, news reporting, teaching, scholarship, parody, and satire. Such use does not rise to the level of infringement.
Whether or not Intellectual Property is needed is not really a question anymore in the growing digital age. The amount of content businesses need to put out to compete and distinguish themselves in the current marketplace, makes Intellectual Property a necessity.
Every business and individual has some version of intellectual property - a logo, social media posts, websites, blog posts, services, creations, inventions, designs, books, music, company names - all intellectual property assets that should be protected.
Everyone benefits from IP.
Business owners are able to distinguish themselves in the market and create a distinct brand identity which increases the value of their company and leads to recognition among the public.
Consumers are able to associate businesses with certain qualities and values and make choices accordingly.
Competitors can be distinguished from each other and there is fairness in the market.
The best benefits are going to come to those businesses and individuals that understand how Intellectual Property works and how they can best protect themselves.
The simple answer is of course. There are multiple resources like the U.S. Copyright Office and the USPTO, as well as those found through a quick Internet search, where you can find strategies and checklists to set up Intellectual Property. However, given the increasing intricacies of the legal landscape and the growing importance of IP, it is important to ensure that your searches are thorough, and your applications are properly executed. IP attorneys are going to be able to guide you through each of the nuances from registration to issue resolution, and have strategies that might not be so clear to you at the outset.
If you have a business and are placing yourself in the marketplace, you should talk to an IP lawyer. They can work to help you create a portfolio of assets for your company that will drive growth and increase your valuation. Everything from choosing a name, a logo, a website, to the products and services that you sell - all should be protected, and it is better to create those safeguards from the beginning. Otherwise you risk leaving your business exposed and you lose out on the incredible value that IP creates. The sooner you can protect these intangible assets the better.
A smaller IP law firm will give your company the focus and attention that many large firms won’t be able to provide. With large firms, there will always be a chance that you get lost in the sea of other clients. A smaller firm is going to be more dedicated and available to you when you need them.
Additionally, small firms are oftentimes more knowledgeable as they tend to be boutique firms solely focused on one area of law, like IP, whereas large firms tend to practice broadly in multiple areas and may not have the depth of experience to guide clients through the intricacies that exist in that area of law.
SCIP is a boutique Intellectual Property law firm. IP is all we do, and it's what we do best. We have the experience and dedication that you won't find anywhere else.
We love working with our clients to define and reach their goals, optimize their assets, and increase their value. Unlike other firms that are concerned only with their own financial gain, protecting our clients' Intellectual Property is our bottom line.
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