Protect Your Trademarks, Copyrights...

By Barbara Weltman October 20, 2005
Barbara Weltman While you can’t touch, see or smell them, our intellectual properties (IPs) may be your most valuable business assets. Unfortunately, piracy, counterfeiting and theft of intellectual property are, according to estimates from the U.S. Patent and Trademark Office (USPTO), robbing U.S. businesses of $250 billion per year. Small businesses often lack the resources and familiarity with the protection process to adequately safeguard this very valuable property. But there are things you can do to guard against unlawful use of your IP.

Start out on the right foot
Make planning for your intellectual property a priority in your business. The failure to gain adequate protection can, in some cases, be devastating to a small business. Incorporate your IP protection planning into your business plan.

Educate yourself
Understand the scope of government-granted monopolies affecting your IP. Assuming you follow proper application steps to secure protection, here’s how long that protection, which grants you the exclusive right to exclude others from using your property or license its use to others, lasts:

  • Trademark – indefinitely as long as you continue to use it in connection with your goods or services (registration is not required but provides advantages in doing so).

  • Patent – 20 years from the filing date of the patent application (14 years for design patents).

  • Copyright – the life of the author plus 70 years (for works originally created on or after January 1,1978). In the case of works made for hire, protection runs 95 years from publication or 120 years from creation, whichever is shorter. Note: Government registration is not required to obtain copyright protection, but doing so gives you advantages that are not otherwise available (e.g., registration is required in order to sue violators).

    Trade secret – state law protection (there is no federal right of protection or registration).

    Take advantage of free seminars by the USPTO that may be offered in your area (seminars were held in Austin, TX and Miami, FL in September).

    Apply for domestic protection
    Where appropriate, make sure to secure protection for your IP. You can do some or all of the registration process yourself, but the USPTO suggests that innovators work with an attorney who specializes in your area of IP protection (e.g., a patent attorney) to ensure compliance with all legal requirements.

  • Trademarks and Patents – The U.S. Patent and Trademark Office (www.uspto.gov)

  • Copyrights – The U.S. Copyright Office (www.copyright.gov)

    File electronically using the Trademark Electronic Application System (TEAS) to save on government charges for registration.

    Overseas protection
    Many small businesses do not confine their activities to the U.S. and actively sell overseas. International sales have been facilitated by online marketplaces, such as eBay and Yahoo! Make sure you understand the scope of IP protection outside the U.S.

    The USPTO conducted a study in the spring of 2005 that showed only 15% of small businesses selling overseas understood that U.S. protections have no effect outside this country. If you want to secure protection overseas you must do so on a country-by-country basis. If you fail to register your rights overseas, the U.S. government is unable to provide any assistance in helping you enforce your rights. For example, one small business that manufactured glue registered its trademark in China. When a Chinese company violated the U.S. business’s registration, a U.S. trade representative worked to stop the violation. For foreign protection:

  • Patents. Under the Patent Cooperation Treaty, you can submit one international patent application to seek protection in up to 128 countries (go to www.uspto.gov/go/pct).

  • Trademarks. Under the Madrid Protocol, you can file one application to seek protection in up to 66 member countries and you can submit an application in English (go to www.uspto.gov/web/trademarks/madrid/madridindex.htm).

    For more information about worldwide protection, see the World Intellectual Property Organization (WIPO) at www.wipo.int.

    Enforce your rights
    Obtaining protection is only half the battle. To win the war you must be vigilant to protect your rights, making sure that someone does not steal them out from under you. Here are some steps to follow:

  • Monitor regularly the use of your IP. For example, you can hire a professional trademark watch service and you can also search the Web to see if anyone is using your trademark without your permission. Search for sales of items made with your intellectual property.

  • Send a cease and desist letter. Contact any violators to put them on notice that they are infringing your protected property. Often violators do not steal your IP intentionally and will readily comply with your warning to stop using your property.

    have an IP attorney draft a form letter for you that you can then send to violators. The initial cost of the attorney’s work in this matter is well worth it.

  • File a civil action if a violator will not stop after your warning. If successful, the violator will be prohibited from further use of your property and liable to you for monetary damages (e.g., any profits the violator received through the illegal use of your IP).

  • Inform government authorities of violations. They may pursue criminal charges against violators, such as for counterfeiting and piracy.

    To learn more about what you can do to obtain and maintain IP protection, go to www.stopfakes.gov/smallbusiness. Or call 866-999-HALT to speak with an IP attorney who can answer questions and, where appropriate, direct you to other government resources, such as the Department of Justice or Homeland Security.

    Copyright © 2005 by BWideas.com, Inc.

    Category: Legal
    Print page