Published 12/08/2018 by Marin Cionca
IP Assets - Procurement, Enforcement, Monetization
This week, I had the pleasure to speak at a SCORE – Orange County event about IP (Intellectual Property) issues to an audience primary made of small OC business owners. The topic was IP Assets - Procurement, Enforcement, Monetization and the subtopic was what every entrepreneur should know about trademarks, patents, copyrights and other IP assets.
I talked first about a few foundational points regarding IP procurement. IP, of course, includes, trademarks, copyrights, patents, trade secrets and trade dress. As known, a business can acquire copyright (an IP asset) in the articles, logos, pictures, videos, website design, etc. that are created on their behalf by employees or by service providers.
One important consideration is for businesses to use agreements with strong IP provisions that clearly transfers all IP rights, that may be vested initially in the IP creators (the employees and the outside services providers), to the business. This is particularly important when dealing with service providers. For example, if the business hires a web designer/developer as an independent contractor to create a website, the copyright belongs to the designer unless the service agreement clearly states otherwise. This applies not only to copyrights, but also to trademarks (e.g., a logo created by an outside graphic designer) and patents (e.g., an invention conceived by a consultant) and to all other IP.
As known, copyrights can be registered with the US Copyright Office for additional benefits (e.g., right to sue in Federal Court, statutory damages). Trademarks can be filed with the Secretary of State office to obtain state registrations and, clearly a superior option, with the USPTO (United States Patent and Trademark Office) to obtain a federal registration, to constructively occupy all 50 states and for other benefits.
Patents as well can be filed for with the USPTO to obtain a 15 year design patent protection for new designs of new or existing products or 20 years utility patent protection for products, machinery, processes or compositions that are new in terms of structure or function.
One other thing I touched on included some observations regarding choosing a mark. As known, generic or descriptive terms cannot function as trademarks (e.g., APPLE for apples). Suggestive marks are typically OK, but arbitrary (e.g., APPLE for computers) or fanciful (i.e., made-up words such as Google) are much better.
Also, before adopting a mark, trademark clearing searches are strongly recommended. It can avoid a lot of headaches for the businesses down the line. This is true not only for an easy path to registration, but also for avoiding conflicts with other marks that may cause serious business losses later (legal expenses, costs with changing the mark, etc).
As the time was running out, due to the business owners asking many questions related to issues they were unclear about, the IP Enforcement and IP Monetization portions of the planned discussion were left for another time…
Disclaimer: The views and opinions expressed throughout this blog are the views and opinions of the individual author(s) and/or contributor(s) and do not necessarily reflect the views and opinions of our firm, CIONCA IP Law. P.C.
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