Kenji

Intellectual Property

General Information

Intellectual property rights are a form of property rights granted for creations of a person’s mind. Typically, intellectual property rights give the creator an exclusive monopoly over the use of the creation for a specific period of time. For example, if you design a new logo for your business you could apply for and be granted a trademark, giving you the exclusive right to use the logo to distinguish your goods and services. The most common forms of intellectual property include copyrights, trademarks, and patents.

Intellectual property can be very valuable because it gives the owner exclusive control over the use of the creation. For brands, obtaining trademarks on their name, logos, slogans, and other distinguishing information prevents others from using the marks in an unauthorized manner. Patents give inventors the exclusive right to use their invention for a set amount of time, in exchange for publicly disclosing the invention or design. Copyrights protect creative works in a tangible form, such as books, movies, music, and other creative works, even software code.

Trademarks

A trademark is a word, name, symbol, or design, or any combination thereof, used to distinguish and identify goods of one seller from those of another, and to indicate the source of the goods. To be eligible for trademark protection, a mark must be in use in commerce and must be distinctive.

When applying to register a trademark there are five basic steps:

  1. Choose your trademark format. There are three types of formats a trademark may take on: standard format, stylized/design format, and sound marks. The standard format is the basic word, words, or numbers that make up the mark, without any stylization. A stylized/design format is used when a mark has specific design elements being protected, such as specific colors or fonts. A sound mark is used for sounds used as a unique identifier, such as the NBC chimes or MGM lion’s roar.
  2. Determine the industry that your trademark will apply to. Because trademarks are industry specific, there can be companies in different industries with similar marks. For example, “American” is registered and used by many companies, large and small, such as “American Express” and “American Apparel.”
  3. Decide which goods/services the trademark will apply to. In addition to the industry, you must describe all the products or services that the trademark will apply to. You want your description to be broad, but not too broad or the USPTO might reject the application.
  4. Conduct a trademark search. It is important to make sure that there are no existing trademarks in your industry that may prevent registration.
  5. Prepare and submit your trademark application. Once you have chosen the trademark format, determined the industry, decided on the goods or services, and conducted a trademark search, it is time to prepare and file the trademark application with the USPTO. An experienced attorney can help navigate the application process, which can be complex. Additionally, it is important to follow all the procedures and meet all deadlines or your trademark application could be rejected.

Before applying to register a trademark, it is important to do a trademark search. A good trademark search will uncover any potentially conflicting trademarks that may prevent you from registering your trademark. If there is a conflicting trademark, it's best to learn about it early, before you have spent time and money on not only the application, but also potentially building your brand. A standard knock-out search is the right option for many cases, but an experienced attorney can help determine if a more detailed search is appropriate.

When applying for a trademark registration, the USPTO may send an “office action.” An office action is sent by the USPTO when there is a problem with a trademark application. Office actions must be responded to within six months or the application will be abandoned. There are two types of office actions: procedural and substantive. A procedural office action is sent when there is a technical error in the application, such as a missing piece of information, and typically the response simply requires correcting the error. A substantive office action is sent when there is a potential basis for denying the application, often because there is a “likelihood of confusion.” Responding to a substantive office action is more complex, requiring convincing the USPTO that there is no likelihood of confusion.

Patents

A patent grants the holder a right to exclude others from making, using, or selling an invention for a set period of time. Inventions that can be patented include machines, manufactured items, compositions (such as pharmaceutical drugs), and processes and methods. Inventions must be novel, useful, and nonobvious in order to be patentable. If a patent is granted, the holder of the patent may exclude others from making, using or selling the invention, thus patents can be extremely valuable and can make, or break, a company. Because stakes are high and the process is complex, it is best to work with an experienced attorney to give your application the best chance of being approved.

The most common types of patents are utility and design patents. A utility patent is by far the most common type of patent because it covers a wide range of inventions, including processes and methods, manufactured items, compositions, and machines or an improvement of any of these things. Software patents fall in the utility patent category. Utility patents last for twenty years from the date of the initial patent application. A design patent covers original, ornamental designs for existing functional items, such as the Volkswagen Beetle’s distinct shape.

There are two types of patent applications: provisional and non-provisional applications. A provisional application is only available for utility patents and is not reviewed by the USPTO. Because the USPTO does not review the application, no patent is issued. A provisional application is used to set a patent’s priority filing date (i.e. the day the provisional patent application is filed). Once filed, the inventor has one year to decide whether to file a non-provisional patent. The inventor may also label their invention as patent pending. Provisional patents require less detailed descriptions and have lower filing fees. A non-provisional patent is the application used to obtain a utility or design patent. Non-provisional patent applications require more detailed descriptions, generally take more time to prepare, and have a higher filing fee.

Copyrights

A copyright is a bundle of legal rights granting the creator of an original creative work the exclusive control over how the work is used and distributed. The copyright holder has exclusive control over the right to produce and sell copies and reproductions, create derivative works, perform or display the work, and sell the rights to the work to others. Copyrights are commonly associated with written works, such as books or articles, music, and movies, but extend to things such as software code.

Although copyrights are automatically granted to the creator upon creation of the original work, by registering a copyright, the creator gains certain advantages. First, registration puts the world on notice about the creator’s copyright. Second, registration is required before an infringement lawsuit can be brought and if registration occurs prior to an infringement there are more remedies available to the copyright holder. Thus, it is best to register the copyright shortly after creation.

Trade Secrets

A trade secret is information which is not generally known or reasonably ascertainable by others, by which a business can obtain an economic advantage over competitors, such as a formula, practice, process, design, pattern, commercial method, or compilation of information. Unlike the information in patents, trademarks, and copyrights which is disclosed to the USPTO and world at large, trade secrets are by definition not disclosed to the world at large. They form a valuable, although relatively invisible, portion of a company’s intellectual property. Unlike patents, trade secrets have the advantage that they do not expire and can extend indefinitely, but once the information is uncovered by a third party there are no protections.

Non-Disclosure Agreements

Non-disclosure agreements, also known as NDAs or confidentiality agreements, are used by companies to manage and disclose confidential information. They are widely used by companies to help protect their intellectual property, especially in relation to developing patentable inventions. These agreements help ensure that employees, consultants, and others maintain the confidentiality of information disclosed during their relationship with the business. Non-disclosure agreements are frequently combined with invention assignment agreements to secure intellectual property rights developed by employees or contractors for the business.

Invention Assignment Agreements

Invention assignment agreements are used by companies to make it clear and ensure that the business has rights to intellectual property developed for the business by employees and contractors working for the business. Invention assignment agreements are also typically signed by all startup founders and employees to ensure that the newly formed company has rights to any intellectual property critical to the startup’s operations.

Costs

Cost vary depending on the type intellectual property, attorney rates, attorney experience, and necessary turnaround time, among other considerations. Generally, copyrights and trademarks are significantly less expensive than patents. In addition to the costs associated with the attorney’s work, there are also fees to file applications, make changes, and maintain intellectual property rights, among other things.

Since each business and agreement is unique, with Kenji you can now easily request custom proposals from vetted attorneys and find the best one for your business – saving you time and money.