Protecting Intellectual Property by Lindy Laurence of Lumin Law from Laser Focused Sept/Oct 2023

As a small business owner, you invest a significant amount of time, energy, and effort into your products and services. Naturally, you want to protect your business. This two-part series provides an overview of the main types of intellectual property (IP) your business could have, and discusses some best practices to avoid infringing on the IP rights of others. In the second part, we’ll discuss trade secrets and how you can protect the competitive advantage your trade secrets give you.

Types of Property

Most businesses own three types of property: real property (office building and parking lot), personal property (office equipment, computers, furniture, inventory), and intellectual property (information, technologies, formulas, brands, logos, designs, photos, and music).

Real and personal property are rights in tangible things – the right to physical possession of a building (real property) or a book (personal property). IP rights are rights in intangible “things” – the design of a building or the expressive content in a book.

What is Intellectual Property?

The four main types of IP are patents (protecting rights in useful inventions and discoveries, like machines and processes), copyrights (protecting expressive works, like art, music, dance, and literature), trademarks (protecting brands, logos, and package designs), and trade secrets (protecting commercially valuable confidential information, like business and financial plans, formulas, recipes, and customer information). We’ll discuss trade secrets in the second part of this series, so tuck it away for now while we focus on the other types of IP.

What is Infringement?

Infringement occurs when a person uses another person’s IP without permission. The infringement doesn’t need to be an exact copy, or intentional. When you infringe on someone else’s IP, the consequences can be severe, and you may have to pay the IP owner damages as well as attorney’s fees.

What is a Patent?

Inventors obtain patents for their new inventions. Patents grant exclusive rights to the inventor, and companies often seek patents to keep competitors from producing “copycat” versions of their inventions. I will leave discussion of patents to the experts. If you think you have a novel invention you want to protect, here’s the most important piece of advice I can share: DON’T TELL ANYONE ABOUT IT. Protect the secrecy of your invention by consulting with a patent attorney FIRST, and avoid any type of disclosure until you’ve secured legal protection for your invention.

What is a Trademark?

A trademark indicates which company is the source of a product, and distinguish the trademarked items from those made by others. Trademarks can include names (GEORGE FOREMAN ® grills), brands (COKE® soft drinks), designs and symbols (Nike’s “Swoosh” design), and slogans (De Beers’ slogan A DIAMOND IS FOREVER ®). They can also take the form of colors (Owens-Corning’s pink fiberglass insulation), sound (NBC Universal Media’s chimes), scents (the smell of Play-Doh), and package, product, or store design (typically known as “trade dress,” the shape of a COKE® bottle or the interior design of a restaurant).

Trademarks are protected through state or federal law. Federal protections apply only to federally registered trademarks, which use the ® symbol, while unregistered or state marks use ™. Federal trademark protection lasts for 10 years and can be renewed indefinitely as long as the mark remains active in commerce.

Preventing Trademark Infringement

Before using a mark, follow these steps to avoid infringing on someone else’s protected material:

• Conduct an internet search to find businesses using the same name or slogan.

• Check state and federal trademark registers, paying close attention to the states where you operate.

• Search the USPTO database (https://www. uspto.gov/trademarks/search) for federally protected marks. Keep in mind that the database will only display exact matches.

• Use the likelihood of confusion checklist ( https://www.uspto.gov/trademarks/search/ likelihood-confusion) to assess the potential for infringement. Even if not identical, a mark is similar if it sounds or looks like another mark for the same goods or services. For example, if “Blue Bell” is federally trademarked for ice cream, another ice cream company named “Blew Bell” could be considered trademark infringement. However, a referee whistle company could use the name “Blew Bell” without infringing on Blue Bell’s rights.

Remember: You don’t need to exactly copy a trademark to infringe on it! Infringement can be remote, so it’s essential to avoid using anything resembling another business’s trademark without permission. This includes team logos and mascots, corporate logos and designs, famous cartoon characters, and anything similar to protected and well-recognized brands. IP is valuable, and companies invest millions of dollars to develop distinctive brands. They have an obligation to protect their IP, and they will vigorously do so! Don’t make yourself a target.

What is a Copyright?

Copyright protects an author’s original works in tangible mediums, such as art, novels, motion pictures, screenplays, sound recordings, and even social media content. This protection happens automatically; registration is not required to establish federal copyright ownership. The “author” may be one or more person. When a work is specially ordered or commissioned by another person, then it’s considered a “work made for hire” and the person who commissions the work is the owner of the copyright. For example, if you hire a graphic designer to develop a social media campaign for your business, the copyright in the layout, text, and design belongs to you.

Preventing Copyright Infringement

Copyright infringement is rarely unintentional and is commonly known as plagiarism. Copying and pasting text from a website you do not own to your own website, using someone else’s photos, using music in a promotional video – these are all examples of copyright infringement. Some exceptions exist, such as free-use websites like Creative Commons (https://creativecommons.org/ ), and the Getty Research Institute (https://www.getty. edu/research/ ).

STAY TUNED The second part of this series will focus on trade secrets: what they are and how you can protect them. We’re also hosting a live Q&A session (Sept. 14, 2:00 PM (ET), 1:00 PM (CT), 11:00 AM (PT) for anyone who wants to learn more about the interesting and complex topic of intellectual property protections. Register at https://bit.ly/LFIPDiscussion