By Jack Lander with Karla Hunter, Esq.
The patent is the main form of protection sought by most inventors. A patent is essential if you hope to license your product, and it may be valuable if you plan to manufacture and market your invention.
What about the other forms of intellectual property or IP? Other forms of IP include trademarks, logos, trade secrets, copyrights and Web sites. Yes, even Web sites are included as intellectual property, because often your Web address should reflect your brand name and vice versa.
Suppose you selected a brand name, spent $2,000 on a trademark and logo and then learned that the very same name was already in use as someone else’s Web address? That’s exactly what happened to an inventor friend of mine.
The most popular patent is the utility patent. It protects almost everything except pure appearance, which is covered by a design patent. A utility patent processed by a patent attorney typically costs between $4,000 and $10,000. A design patent usually is much less expensive because it requires practically no writing.
An early patent date may be obtained by filing a provisional patent application or PPA. To claim the PPA date on an issued patent, you must follow through with the utility patent filing within one year of filing the PPA. The PPA does not result in an issued patent, but you may state “Patent Applied For” or “Patent Pending” on the product and literature. The PPA is valuable because it offers the “applied-for” warning that enables you to cautiously expose your invention for market research with less risk.
A trademark is important to protect when dealing with competition. Trademarks mainly help your customers avoid mistaking similar products as yours. A trademark is valuable mainly when your product is on the market. And if you’re planning on licensing, your eventual licensee will usually prefer to come up with its own trademark. A trademark adds a touch of professionalism and enables you to coordinate your Web site name and product brand. Without registration, the TM symbol can be used, but to use the ® symbol, your logo or trademark must be registered with the U.S. Patent and Trademark Office.
You can and should trademark your Web site name. Not only does it add a touch of sophistication to your brand, but it also gives you the legal right to forbid anyone from claiming your name if you forget to renew it on time.
Trademarks are issued by the USPTO for between $500 and $1,000 if you process it yourself.
Logos, like trademarks, are protected in the same way. Logos are generally distinctive branding symbols, such as Volkswagen’s famous superimposed “V” and “W” enclosed in a circle.
Trademark searches should cover your state’s trademarks and what are called “common law” trademarks, as well as federal trademarks. Of course, you can file on the basis of a federal search alone, but you run the risk of your application being limited because of an existing state or common law trademark.
A common law trademark comes into use without registration and is limited to the geographic area of the product’s distribution. A state trademark is similar.
Burger King, Mattoon style
For example, the Hoots family started a hamburger stand named Burger King in Mattoon, Ill., and registered the name with the state. When the famous Burger King chain expanded into Illinois, the Hoots family sued in state court, and Burger King responded by suing in federal court. The resulting court decision limits the big chain from starting a Burger King in Mattoon within a 20-mile radius of the Hoots’ site, and limits the Hoots family from branching out and using its name beyond Mattoon.
Inventors also can protect their trade secrets, formulas, fabrication techniques and all other confidential matter from would-be copycats with a confidentiality agreement. To maintain your trade secret, at the very least you need to have your vendors and employees who are privy to your proprietary information sign this agreement. The confidentiality agreement helps to prevent your secrets from falling into the hands of a competitor.
Copyrights are registered with the Library of Congress and cover the verbiage in your sell-sheet, instructions for use, ads and other written material. Competitors can get around your wording by using synonyms and changing the order of the wording, but at least they are forbidden from using exact copies of your written materials.
Technically, you own the copyrights to whatever you write. But to take meaningful legal action, you must register your writing and, of course, include the © symbol, your name and date of filing to warn would-be infringers.
IP is defined as property that results from creative thought. So, when building your brand you should protect your Web site, logos, brand names, trade secrets, and more.
Whatever your intellectual property protection needs, it’s best to see an IP lawyer to be sure that you are doing the right thing and doing things right. Many patent attorneys also handle trademarks and trade secret work, but check before visiting.
Editor’s note: This story appears in our September ’09 issue.
