As entrepreneurs, we often think about protecting our assets by taking out insurance, getting bonded or creating a Tax ID number, but one thing that many business owners forget to do is to protect their intellectual property.
The World Intellectual Property Organization (WIPO) describes intellectual property (IP) as “creations of the mind, such as inventions; literary and artistic works; designs; and symbols, names and images used in commerce.” IP can be a concern if you have developed or are in the process of developing a product, service, process or concept that you wish to take to market, and if you want to protect your business' name and identity.
Trademarks, patents and copyrights protect different types of IP. A trademark typically protects logos and brand names used on goods and services; a patent protects an invention; and a copyright protects an original literary or artistic work. For example, if you invent a new type of air conditioner, you would need to apply for a patent to protect the invention itself. Then, you would need to register a trademark to protect the brand name of the air conditioner. Finally, you might want to register a copyright for the jingle you used in a TV commercial marketing the air conditioner.
So whether you’ve invented something, developed a software code, written a book or even crafted a jingle, you need to legally protect your work.
What is a Trademark?
As defined by the United States Patent and Trademark Office (USPTO), “A trademark is a word, phrase, symbol and/or design that identifies and distinguishes the source of the goods of one party from those of others.” A service mark affords the same protection rights to services, rather than goods. The word “trademark” is typically used in reference to both trademarks and service marks. Trademarks can be used for brand names, slogans and logos, among other things.
In simple words, a trademark helps people differentiate between the goods or services of one company from those of other companies. Trademarks date back to ancient times, when artisans used to put their mark or signature on their products.
In general, marks fall into one of four categories: fanciful or arbitrary, suggestive, descriptive or generic. The category your mark falls into significantly impacts both its registrability and your ability to enforce your rights in the mark. The strongest and most easily protectable types of marks are fanciful marks and arbitrary marks, because they are inherently distinctive and essentially have no dictionary meaning.
Registered Trademark: While registering a trademark is not mandatory, a federally-registered trademark has several advantages, including a legal presumption of ownership nationwide, the exclusive right to use the mark on or in connection with the goods or services set forth in the registration and a notice to the public of the registrant's claim of ownership of the mark. The USPTO has only 45 trademark classes for goods and services. This means that similar items are usually combined into a class.
There are three commonly used trademark symbols: “TM,” “SM” and “®.” The federal registration symbol “®” can only be used once federal registration is granted, and it can only be used in connection with goods and services listed in the federal registry. It has many legal benefits as opposed to the “TM” or “SM” symbols, which have very little legal significance. However, you can use the “TM” and “SM” symbols to indicate that you have adopted these as “common law” trademarks or service marks.
It is a good practice to use the correct symbol on your trademarked words, phrases, symbols and/or designs. If registered, use the ® symbol (either as a subscript or superscript) after the mark. But if unregistered, use TM for goods or SM for services, to indicate that you have acquired this as a trademark or service mark, respectively, regardless of whether you have filed an application with the USPTO.
How to Register a Trademark: This is an overview of the steps of how to apply for federal registration of your trademark with the USPTO:
- Select the mark you wish to trademark. Remember that not every mark is registrable with the USPTO, nor is every mark legally protectable.
- Prepare and file your trademark application online through the Trademark Electronic Application System (TEAS).
- After the USPTO decides that you have met the minimum filing requirements, an application serial number is assigned to your case. Your application is then forwarded to an examining attorney, who reviews your application to determine whether it complies with all applicable rules and statutes, and includes all required fees. Work with the examining attorney and promptly respond to any queries they may have.
- If the examining attorney raises no objections to your registration, your mark will be approved for publication in the Official Gazette of the USPTO. You will also receive a notice of publication stating the date of publication. Any party who believes it may be damaged by registration of the mark has 30 days from the publication date to file either an opposition to registration or a request to extend the time to oppose.
- If you receive a notice of allowance, you need to file a statement of use (SOU) within six months, along with evidence showing that you’ve used the mark. You also need to pay a filing fee with the SOU.
- Once the examining attorney approves the SOU, your mark will be registered and a certificate of registration will be issued.
- To keep the registration active, you need to file specific maintenance documents. Failure to do so may result in cancellation and/or expiration of the registration, and you will have to start the entire process all over.
The whole process may take a number of months. Monitor the progress of your application through the Trademark Status and Document Retrieval (TSDR) system. Check the status of your application at least every three months to ensure you don’t miss a filing deadline.
How Long it Lasts: The USPTO defines that “rights in a federally-registered trademark can last indefinitely if you continue to use the mark and file all necessary maintenance documents with the required fee(s) at the appropriate times.” The documents required for maintaining a trademark registration are:
- Declaration of Continued Use or Excusable Nonuse under Section 8
- Combined Declaration of Continued Use and Application for Renewal under Sections 8 and 9
What is a Patent?
A patent is a limited duration property right relating to an invention, granted by the USPTO in exchange for public disclosure of the invention or discovery. Patentable materials include machines, manufactured articles, industrial processes and chemical compositions.
These are the three types of patents:
- Utility patents, which may be granted to anyone who discovers or invents any new and functional machine, process, article of manufacture or compositions of matters, or any new useful improvement thereof. Most applications filed at the USPTO are for utility patents.
- Design patents, which may be issued to anyone who invents a new, original and ornamental design for an article of manufacture.
- Plant patents, which may be granted to anyone who discovers or invents, and asexually reproduces any new and distinct variety of plant.
The statute states that as long as a patent is valid, it grants the holder of the patent “the right to exclude others from making, using, offering for sale or selling” the invention or discovery in the US or “importing” the invention into the US.
How to Obtain a Patent: It is advisable to hire an experienced patent attorney when filing for a patent, in order to avoid mistakes that could cost you later on. But in general, here are the steps.
- Search the USPTO to ensure that your work hasn't already been patented.
- Determine the type of patent you need — utility, design or plant.
- File a provisional patent application. This will protect you in case someone claims that they had the idea before you did. The US patent law works on the basis of the First to File system, and not First to Invent.
- Sign up to become a Registered eFiler. The easiest way to do this is online, but you can also file your patent application by mail or by fax.
- Collect and submit all relevant information for your formal application. This includes an abstract, background, summary, a detailed description and your conclusion, including the ramifications and scope. You also need to define the legal scope of your patent.
- Complete and review your formal application. The average time for a patent application to process is one to three years. Make sure you get it as close to right as possible the first time.
- A patent examiner will be assigned to your case. They will communicate with you for any requests, concerns or information. Respond as promptly as possible.
- If the examiner finds your application satisfactory, you will receive a notice of allowance. This notice lists the issue fee and the publication fee that you need to pay before the patent is issued.
- Pay the maintenance fee, which is needed to maintain the patent in force beyond f. Non-payment of the maintenance fee or any applicable surcharge can lead to the expiration of the patent.
How Long it is Valid: According to the USPTO, utility and plant patents expire 20 years from the date on which the application was filed in the US or, in special cases, from the date an earlier related application was filed.
Design patents expire 15 years after the date they are granted for applications filed on or after May 13, 2015, or 14 years from the date of issuance if filed before May 13, 2015. Under certain circumstances, patent term extensions or adjustments can be made.
What is a Copyright?
According to The US Copyright Office of the Library of Congress, “Copyright is a form of protection grounded in the US Constitution and granted by law for original works of authorship fixed in a tangible medium of expression.” This means that any creative work can be copyrighted if it can be saved in some permanent (tangible) way, so that it can be communicated to someone else at another time.
Original works of authorship include literary, dramatic, musical and artistic works, such as poetry, novels, movies, songs, computer software and architecture. Copyright covers both published and unpublished works. It, however, does not protect facts, ideas, systems or methods of operation, although it may protect the way these things are conveyed.
A copyright comes into existence as soon as a product/service is created, whether it is registered with the US Copyright Office or not. However, registering it with the federal government grants federal protection to your IP. The symbol for copyright is “©.”
Copyright protections extend to many other countries other than the US. The federal government maintains copyright agreements with several other nations, which state that the governments will respect the IP of each others' citizens.
How to Register Your Copyright: To register a copyright, submit the following to the US Copyright Office:
- A completed application form
- Filing fee
- Copies of the work you are registering
Once your work is certified by the Registrar of Copyrights and sealed with the seal of the Copyright Office, it is admissible as prima facie evidence in all courts without further proof or production of the original, as per Chapter X of The Copyright Act of 1957.
How Long it Applies: The Copyright Act of 1976 states that copyright protections expire after the author's lifetime plus 70. 95 or 120 years, depending on the nature of authorship.
Whether you need a trademark, a patent or a copyright depends on the type of IP you’re trying to protect. So whether it’s a new product, logo or creative work, registering your idea with the appropriate body can help ensure you enjoy the fruits of your labor.