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.