Happy New Year, and welcome to 2023! I consulted with Mitch Ghaneie, our patent attorney, and Logan McEwen, our trusty and brilliant associate Intellectual Property attorney, to put together our handiest list of intellectual property suggestions for business owners as we start a new year. These recommendations are based on our experiences with clients and potential clients, plus the challenges we face as IP attorneys.
Protect All Intellectual Property (IP) Assets
Make sure your company owns all the IP assets used by the company – not you as an individual. If one owner of the company registers trademarks, copyrights and/or patents in their name, they become open to lawsuits for infringement, unfair competition, and counterfeiting.
Instead, if IP assets are registered under the company name, the individual owners are less likely to face exposure through possible lawsuits. Also, IP assets bring value to the company and should be considered when reviewing the value of a company for possible mergers or acquisition.
Double check all trademark and patent registrations to confirm that contact information is current. If the contact person has changed, and the USPTO or IP lawyer is not notified, email reminders for maintenance filings may get lost – and filing deadlines missed.
Set a schedule to check for infringements of IP assets. You can do so by searching online and in your community for competitors who may be using similar trademarks, copying materials from your website, or developing a similar invention. We recommend doing this check quarterly or semi-annually.
Trade Secret Protections
Identify all company trade secrets – such as recipes, client lists, and original software code – then implement information controls. These will limit who has access to the trade secrets and provide proper procedures for access and use of the trade secrets.
Check the trademarks your business currently uses against the trademarks registered with the US Patent and Trademark Office (USPTO). If the trademarks that are being used in commerce are substantially different from your registered trademarks, you will encounter problems in maintaining the registration with the USPTO. You may have to file new trademark applications.
Has your business developed new products or services that are being offered to consumers? If so, consider registering company trademarks in the new classes or goods/services. For example, if the company started as a restaurant and registered in the class for restaurants but is now selling homemade hot sauce and vodka, the trademarks should be registered in the classes for hot sauce and vodka.
Be Proactive About Patents – Public Disclosure/First Sale Bar
A patent application cannot be filed more than one year after it is publicly disclosed, sold, or offered for sale. There are no exceptions to the rule. So, if you have an invention that is novel, non-obvious, and useful – talk to a patent lawyer before you start sharing your new invention with family members, potential investors, and consumers.
Be aware that a design patent application cannot claim priority over a provisional patent application. This issue in combination with the first sale bar causes problems for uninformed independent inventors.
Trade Dress (AKA “The Forgotten IP”)
Determine if your company has developed consistent packaging and product design that is distinctive in the marketplace (i.e., Klondike ice cream bars, Coca Cola bottles). If so, consider registering the packaging or shape of the product as trade dress through the USPTO.
Also, developing a consistent color scheme with the company brand can help establish the company brand in the marketplace. This would also be considered a part of the trade dress and trademarks.
Stop using photographs and images from the internet for your websites, blogs, and presentations without obtaining permission from the owners! Pay licensing fees for the use of the images and photos. Just because you like a photo on the internet does not mean you can download it for your own use without obtaining permission from the owner of the copyright.
Ready, Set, Go for 2023
These are just a few important tips that all business owners should be aware of as they build their businesses and brands. Logan, Mitch, and I, the Intellectual Property team at Marks Gray, hope you experience peace of mind and success in 2023! If you encounter any IP problems, we are here to listen and guide you.