The Perils of Intellectual Property

Intellectual Property

Don’t let your great idea turn into a horror story

By Douglas Lineberry

Intellectual Property is not often associated with horror movies and tragic tales. However, failing to protect intellectual property can lead to the demise of your business’ valuable assets. Even though summer is approaching, businesses need to be mindful that failing to care for your intellectual property can lead to an early Halloween full of tricks, but no treats.

Let us begin our tale with understanding that United States trademarks and patents are first-to-file. If someone files a trademark or patent application with the U.S. Trademark and Patent Office that is similar to your IP before you file to protect it, they may prevent you from not only protecting your trademark or invention, they can possibly prevent you from even using it with your business. The wooden stake for this situation is to file your trademarks before you open your business. And file a provisional patent application when you can readily explain the invention.

First things first

If a business has a nonemployee designing or inventing for it, such as someone designing your business’ logo or helping to create a new product, the ownership rights to the logo or product must be assigned to your business. The best practice here is to secure any such assignments prior to filing your trademark, patent or copyright registration. Failing to do so results in the nonemployee now owning at least a portion of, if not all, the logo or invention. Do not become Faust with nothing to sell.

Purchasing business paraphernalia, websites, signage, etc., without first conducting a trademark clearance search is fraught with peril. You may be using someone else’s name or a name so close to their brand that they will pursue legal action against you. Instead of sealing the windows and doors with salt, the best way to avoid this situation is to conduct a thorough search of the name at both the Secretary of State and the U.S. Trademark Office before using it. Without such a search, your brand may be a haunted house built on quicksand.

Next steps

Once created, use your trademarks precisely. Improper marking of a trademark, such as using the ® symbol for a mark not registered at the U.S. Trademark Office constitutes fraud. Further, use your trademark with the goods or services for which your registered it. Failing to do so can result in losing the mark after registration. Indeed, do not let your trademark become the Invisible Man by significantly changing its design. This can result in the Trademark Office refusing to register or renew the mark if it bears little resemblance to what you filed initially.

Another intellectual property house of horrors is copying items from the internet and using them without a license or permission. While the internet seems like a wonderful place full of great pictures, sound bites, music, articles, and designs, if these are not yours, stay away. Infringement comes in many forms, such as patent, trademark, and copyright. If you do not have a license or written permission to use another person or entity’s material, abandon all hope ye who enter here.

Deadlines, no pun, can absolutely wreak havoc on intellectual property. Failing to respond to USPTO or Copyright Office Actions will forfeit your intellectual property protection. Silver bullet: be sure to create an IP portfolio for all business IP and docket all IP deadlines. Unsure about the content of your IP communication or when something is due? Reach out to an intellectual property attorney. S/he will be glad to help you.

Doug Lineberry is a partner at Burr & Forman LLP where he assists clients with protecting intellectual property through patent, trademark, and copyright prosecution, as well as intellectual property litigation. For more information email [email protected]