It’s all FUN and GAMES until someone ends up in a LAWSUIT™

ARE YOU READY TO ENTER THE U.S. MARKET?

Have you ever asked yourself, “Wouldn’t it be great to sell my product or brand in the U.S.?” Then you think, “What should I do first?” “Who do I have to know?”  “Will I be successful?” Before you dive head first, you should look before you leap and find out what steps you can take to help set yourself up for success. You’ve worked hard and spent a lot of time and money on your brand or product, so don’t let it go to waste.

Brand and product protection is one of the first things you should consider. Ideally, you should tackle this before you approach potential partners in the U.S., but it is never too late to take some action. This article will explore some of the ways you can protect yourself legally in the U.S.

Not surprisingly, each country typically has its own rules on intellectual property and licensing; and just because you have protection in one country or territory does not necessarily mean you have that protection in other places. That is why it is essential to find local professionals who understand that jurisdiction’s laws, rules and norms…so you can find out what you need to do in order to validly protect your valuable assets.

Why should you care about getting protection in the U.S.? Because if you want to sell or license your product or brand in the U.S., that may be one of the only ways to prevent a third party from “taking” – yes, I mean stealing – your idea. Protection may be different in each case, but I think it will be helpful to review some of the basics. Of course, this short article cannot possibly cover all the steps you can take before entering the U.S. market – this is just an overview so you have an idea where to start and some of the things to think about.

What is a trademark, and why is it important? 

A trademark is a word, phrase, symbol or design, or a combination of words, phrases, symbols or designs, legally registered or established by use as representing a product or service. Trademarks protect brand names, logos and slogans that help consumers identify your unique brands and products. Having a trademark registration is a powerful tool in the quest for brand protection and puts others on notice that you are claiming rights to your brand. If you don’t consider trademark protection, then you may end up infringing on a third party, or someone may infringe on your brand.

Think of the Coca Cola name and logo, the Nike name and swoosh and also Disney’s Mickey Mouse.

What is a copyright, and why is it important?

A copyright is the exclusive right, given to a creator or an assignee, to control original works of authorship, including photographs, artwork, books, movies, paintings, songs and more. Effectively, copyrights protect logo designs, artwork that you put on packaging and products and even the photographs you use in connection with your products. Having a copyright registration establishes a public record of the copyright claim and can get you statutory damages and attorney’s fees in some cases. Believe it or not, even the tattoo on Mike Tyson’s face is a protectable copyright.

What is a patent, and why is it important?

A patent is the exclusive right granted by the U.S. Patent and Trademark Office to an inventor to manufacture, sell or use an invention for a certain number of years. This allows the owner of a patent to exclude others from using, selling or otherwise commercializing the protected invention. For our purposes, there are two main types of patents: (i) utility patents that protect function; and (ii) design patents that protect appearance and design. Think of Super Soakers, Dyson vacuums and Spanx.

Having any or all of the above legal protections gives you an edge and makes it harder for third parties to take your ideas without compensating you for them.

Do you own your intellectual property? Surprisingly, the answer is probably “No!”

You want to make sure you know who owns what when it comes to your brands and products. Unless there is a signed agreement to the contrary, ownership of copyrights and sometimes other intellectual property vests with the creator of any given work…yes, even if you have paid for it! You cannot control what you do not own; and if you don’t own your art, designs, photographs, text, etc., then that means a third party can stop you from using their contribution on your brand or product because they still own their portion of your brand or product. Can you imagine if you hire someone to take a photograph for you, but then that person doesn’t let you use it? Of course not…but it happens more often than you think. I could fill pages with cautionary tales about intellectual property ownership.

Bottom line is make sure you own your intellectual property!

Don’t you want to make money from your brand or product in the U.S.?

One great way is by licensing your brand, product or idea to a third party. Finding companies to license products and services using your protected intellectual property allows you to make money without taking on the risk of manufacturing yourself.

By identifying your intellectual property, properly protecting your intellectual property and owning your intellectual property, you open the door to a world of opportunity.

It is important to have someone knowledgeable, like an experienced licensing attorney, draft or review your licensing contracts before you sign anything. Not only can she (or he) help identify legal issues, but also help determine whether the business terms seem fair. One size does not fit all when it comes to agreements. Every deal is different, and one word can make the difference between keeping and losing your valuable rights so know what your contract says before you sign it!

What else can you do to protect yourself?

You can label your intellectual property to put others on notice that you are claiming ownership. In the U.S., TM may be used without filing a federal trademark application so long as you are relatively certain you own the mark and aren’t infringing on others’ marks; ® may only be used after your mark is granted a federal trademark registration by the U.S. Patent and Trademark Office; you may use © without filing a federal copyright application with the U.S. Copyright Office; and you may only use Patent Pending if you have actually filed a patent application with the U.S. Patent and Trademark Office.

Final Thoughts

You’ve worked hard and spent a lot of time and money on your brand or product. Find someone who can help you identify what is protectable in the U.S. and help guide you along the way as you build, grow and expand your brand.

Wishing you good luck and much success in your ventures!

Stephanie Pottick is a U.S. licensing, business and intellectual property attorney based in California. Stephanie spent many years working in the toy industry before becoming an attorney and understands business. She routinely works with companies and entrepreneurs to help them protect their brands and businesses. Her trademarked slogan is “Legal Advice Before You Need A Lawyer®” because whatever you do up front to protect yourself legally can save you money and pay off in dividends in the long run.   

Contact information: E-mail: Stephanie@PottickLaw.com • Web: PottickLaw.com 

The above is general information and not intended as legal advice. It is only a glimpse into some of the steps you can take to protect yourself and get your brands and products ready for the U.S. market.

This may be considered Attorney Advertising in some jurisdictions.

Don’t lose your trademarks!

Did you know that you need to renew your trademark registrations with the U.S. Patent and Trademark Office (USPTO) in order to keep them active?

Well, it’s true; and unfortunately, not all trademark owners know this. Instead, many believe that getting a trademark registration is the end of the process and that there is nothing further to do, but registration is only one step in getting and keeping your valuable trademark registration rights.

Your trademark registration date determines when your registration needs to be renewed. For reference, a registration must be renewed between the 5th and 6th years after registration, between the 9th and 10th years after registration, and every 10 years thereafter. There is typically a grace period during which you can still renew the registration, but at an additional fee.

Why does renewing your trademark registration matter? Because once you lose your registration, it’s gone; and someone else can swoop in and take it. Then, in order to try and get it back, you’ll have to spend money and hire an attorney to find out what your options are. Remember, there is no guarantee to prevail in any legal action so once a registration has expired, it may be gone forever. My point is that you can prevent this situation by being proactive and making sure your registrations are being renewed on a timely basis.

Have questions? Contact Stephanie Pottick, Esq. at Stephanie@PottickLaw.com

The above is general information and not intended as legal advice. This may be considered Attorney Advertising in some jurisdictions.

Pottick Law PC. Legal Advice Before You Need A Lawyer®.

HOW TO PROTECT YOUR BRAND IN 3 SIMPLE STEPS

Like most business owners, you work hard every day to make your business a success. You probably spend countless hours working on the obvious areas: sales, marketing, research and development to create new and innovative products or services. But what are you missing? What you don’t know can hurt your business, and you’re probably missing some key considerations when it comes to brand protection.

Don’t worry, you’re not alone. Many business owners don’t know what risks and exposures exist, or even what valuable assets they have, until it’s too late. Don’t wait until someone sues you or winds up taking advantage of your hard work. There are things you can do today to help fortify the health of your brand, and consequently your business. The goal of this article is help you identify and protect some valuable assets your business may have, which may help generate additional revenue and minimize the risk of costly lawsuits.

You’ve worked tirelessly and spent a lot of time and money on your brand and products or services, so don’t let those resources go to waste. There are three simple steps you can take to protect your brand, and they are:

·       Step 1: Identify What You Have That’s Protectable

·       Step 2: Make Sure You Own Your Intellectual Property

·       Step 3: Protect Your Intellectual Property

What Is A Brand? 

Before we get started, let’s first answer the question: What is a Brand? In the simplest terms, a brand is your reputation and what your customers think of you. Your brand is the reason customers buy your products or use your services. Therefore, it makes sense to think about how you can make your brand unique and stand out in a crowd. This includes how your brand is positioned in the marketplace. Part of the success you strive for is to create a brand that is reliable, consistent, dependable and any number of other attributes you believe are relevant to your customers. A strong brand delivers the same quality of product or service every time, and a strong brand lets customers know what to expect when doing business with you.

So if the above is true, don’t you think it’s important to build a great brand and protect it?

Step 1: Identify What You Have That’s Protectable

Is your business name protectable? Do you have a tagline? Does your business have a logo? Do you know if you own that logo? We’ll address that below. Do you have proprietary methods of doing business or a unique software? If so, what’s preventing third parties from “taking” – yes, I mean stealing – your stuff?

Protection may be different in each case depending on what your business has, but I think it will be helpful to review the three basic intellectual property protections: trademarks, copyrights and patents.

Trademarks protect brand names, logos and slogans that help consumers identify your unique services and products. Some examples of trademarks include Coca Cola, Nike and Mickey Mouse. Of course, you don’t have to be a famous brand to have trademark protection; I trademarked my tagline, “Legal Advice Before You Need A Lawyer.”  Imagine spending tens of thousands (or hundreds of thousands) of dollars on marketing, packaging and sales of your products or services, only to receive a cease and desist letter from a trademark owner claiming you’re infringing on them.  What would it cost to defend that lawsuit and have to rebrand? For some companies, it’s led to bankruptcy.

Copyrights protect original works of authorship, including photographs, illustrations, books, movies, paintings, songs and more. Believe it or not, even the tattoo on Mike Tyson’s face is copyrighted. If you use copyrighted images without permission, did you know you may be subject to $150,000 in damages per occurrence? And guess what? You may be liable for copyright infringement for just posting an image. Since damages for copyright infringement can be substantial, it makes good financial sense to evaluate your website, marketing materials and social media pages.

Patents grant the exclusive rights to an inventor to manufacture, sell or use an invention for a fixed number of years. For most companies, there are two main types of patents: (i) utility patents that protect function; and (ii) design patents that protect appearance and design. Think of Super Soakers, Dyson vacuums and Spanx. Patents can definitely help your company stand out from the competition.

Having any or all of the above intellectual property protections gives your company an edge and makes it harder for third parties to take your ideas without compensating you for them.

Step 2: Make Sure You Own Your Intellectual Property

Do you own your intellectual property? Surprisingly, the answer is probably “NO!”

You want to make sure you know who owns what when it comes to your brands and products. Unless there is a signed agreement to the contrary, ownership of copyrights and sometimes other intellectual property vests with the creator of any given work…yes, even if you have paid for it! 

Maybe you use third party graphic designers, marketing teams or social media firms; or maybe you use employees that work for your company. Either way, you should find out who owns what. Here’s why: you cannot control what you do not own; and if you don’t own your logos, designs, photographs, content, etc., then that means a third party can stop you from using their contribution to your brand or product because they still own the intellectual property to your brand or product. Worse yet, this may cost you current or future revenue.

Can you imagine if you hire someone to take a photograph for you, but then that person doesn’t let you use it any way you want? Or you hire someone to create a logo for your website, then that person objects and asks for more money because you’re selling shirts and hats using that logo? Of course, not…but it happens more often than you think…and it can happen to you. I could fill pages with cautionary tales about intellectual property ownership, or the lack thereof. Bottom line is make sure you know if you own your intellectual property!

Step 3: Protect Your Intellectual Property

Now that you know what your business has and whether you own it, you should have the tools to create an effective brand strategy. This means coming up with a plan to figure out what’s worth trademarking, what’s worth copyrighting and if it’s worth spending money on a patent. In my experience, I’ve found that it really helps to have someone knowledgeable, like an experienced attorney, help you navigate through the process and guide you along the way as you build, grow and expand your brands. I believe legal protection is the key to build and strengthen the foundation of your business, and the process costs less than you think.

By identifying your intellectual property, owning your intellectual property and properly protecting your intellectual property, you open the door to a world of opportunity. You create assets and good will that increase the value of your company while protecting it at the same time. Plus, you may be able to monetize your intellectual property by licensing your brand, product or idea to a third party.

Wishing you good luck and much success in your ventures! 

I’d love to hear what you think. Feel free to reach out with your comments or questions.

Contact information: E-mail: Stephanie@PottickLaw.com • Web: PottickLaw.com

Stephanie Pottick is a business, licensing and intellectual property attorney. Stephanie spent many years working in the toy industry before becoming an attorney and understands business. She routinely works with companies and entrepreneurs to help them identify what they have and how they can protect their brands and businesses. Her trademarked slogan is “Legal Advice Before You Need A Lawyer®” because whatever you do up front to protect yourself legally may save you money and pay off in dividends in the long run.   

The above is general information and not intended as legal advice. Of course, this short article cannot possibly cover all the steps you can take to protect your brand. This is just an overview so you have an idea where to start and some of the things to think about moving forward.

This may be considered Attorney Advertising in some jurisdictions.