This is the eleventh in a series of brief articles that Moye White is sending to its clients and friends to provide practical advice about the opportunities and challenges presented by today's economy.
The current state of the economy has left many businesses with tough budgeting decisions for 2009. However, protecting your business’ intellectual property is an important part of your business’ health and vitality. Below are some ways to protect your intellectual property without going over budget.
- Trademarks. A trademark is a word, phrase, symbol, logo or design that identifies and distinguishes the source of your business’ goods or services from those of others. Before selecting your business name or brand names for your products or services, you should conduct a search to make sure that your potential trademark will not infringe trademarks held by others.
- Once you have settled on and cleared a strong trademark, you should take certain steps to protect it. Federal registration can provide tremendous protection for your business’ trademark, but if trademark registration is not in the budget at the moment, you can still obtain “common law” rights to the trademark by using the trademark continuously and consistently. If you have a federal registration, it is crucial to use the official registration symbol (“®”) with your trademark. If you do not have a registered trademark, place the “TM” symbol after your trademark to alert the public that you are claiming trademark common law rights. Such notice may help to deter others from using a trademark the same as or similar to your business’ trademark.
- Carefully monitor the use of your trademark by other parties. Professional “watching” services are available to monitor federal and/or state trademarks, or you can monitor the mark yourself through periodic Internet searches and reviews of industry publications. Failure to stop unauthorized use of your trademark may lead to confusion with your brand and may limit your ability to stop the use of your mark by others later on. If you learn that another company is using a trademark similar to your business’ trademark, contact your legal counsel immediately so that you and your counsel can determine the most effective strategy to protect your business’ rights.
- Copyrights. Copyright protects authors’ “original works of authorship,” including literary, dramatic, musical, artistic and certain other intellectual works such as marketing materials, computer software and website content. While your business has some copyright protection for its original works without registration, if such works are vital to your business, copyright registration with the U.S. Copyright Office is an easy and inexpensive ($35 filing fee per application) way to obtain invaluable protection. Further, to alert the public of your business’ copyrights, place the copyright notice (“© followed by the year of first publication and the author’s name”) on all of your business’ works of authorship, whether registered or not, including designs, websites and written material.
- Domain Names. Today, a business’ website is a vital marketing tool. Just as securing the proper domain name is important, preventing others from purchasing similar domain names and using them in a manner that is confusing or deceiving to consumers is also necessary. Registering many domain names using various generic top-level domains (e.g., .com, .net, .org, .info, etc.) and using common misspellings of your business name or trademark (e.g., wallmart.com) are inexpensive and can provide further protection for your business’ trademarks.
- Internet Corporation for Assigned Names and Numbers (“ICANN”), the organization dedicated to coordinating the Internet’s addressing system, plans to expand the available generic top-level domain names, currently limited to twenty-one, by allowing individuals and companies to apply for customized domains (e.g., .coca-cola). Later this year ICANN intends to finalize the applicant guidebook and begin the application process. The expansion will allow for more innovation and choice for companies, and it is sure to affect the way companies police and protect their names and trademarks online.
- Independent Contractor Agreements. An independent contractor who creates original works of authorship for your business generally owns the copyrights in those works unless there is a written agreement that those works are deemed “works made for hire” or that the contractor has assigned its interest in the works to your business. Make sure you have written agreements regarding ownership of intellectual property with all independent contractors who will create or develop technology, logos, designs, advertising, websites, or other intellectual property for your company.
- Non-disclosure Agreements. Confidentiality and non-disclosure agreements are crucial to protect your company’s proprietary information, including sensitive personal and financial information, trade secrets, know-how and competitive business information. Failing to protect this proprietary information may cause confusion concerning the ownership of the information and can limit your ability to prevent others from using the information.
- Non-Competition Agreements. Colorado law permits non-competition covenants in employment agreements when such covenants are for the protection of trade secrets. Similar to non-disclosure agreements, non-competition agreements can help your business protect its trade secrets from being used in competition against it by former employees, which in turn can help to increase the value of your company.
- Patents. Some inventions and business processes can be protected by patent registration. Patent applications must be filed within one year of the first public disclosure in the United States or before any public disclosure for most world-wide patent protection. Patent registration can be an expensive process, so if it is not feasible to file for a patent application in the near future due to budget constraints, be diligent about using nondisclosure agreements to protect your confidential information as much as possible.
For more information contact: Lindsey Rothrock, Charles Luce or Ted White, Chair, Transactions Section at (303) 292-2900.
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Moye White LLP has prepared this bulletin to provide general information, however this bulletin does not provide legal advice and does not create an attorney-client relationship between the reader and Moye White. No legal or business decision should be based solely on the content of this bulletin.
ABOUT THE AUTHOR
Charles F. Luce, Jr.
Edward D. (Ted) White
Co-Chair, Business Section