What Small Business Owners Need to Know About Protecting Their Intellectual Property
Many forms of intellectual property (IP) provide for a broad range of protection, including patents, trademarks, and copyrights – just to name a few. You may have heard about IP generally, or even about these specific kinds of IP before, but you may not know how to best utilize them to effectively protect your brand, logos, slogans, inventions, and other important business assets.
Here is an overview of what you need to know about IP law at both a federal and state level:
What are Patents, Trademarks, and Copyrights?
Patents
A patent is a right or title to use an invention for a set period. The two most common kinds of patents are utility and design patents. Utility patents protect new inventions, including the way the invention works and its structure (i.e., how it functions). Design patents provide protection for the design and unique look of newly invented products, but do not provide any protection for the functionality of products (that is what utility patents are for).
Trademarks
A trademark can consist of words, names, symbols, designs, slogans, logos, or any combination thereof, which are generally used to identify and distinguish the characteristics or source of goods or services. In other words, a trademark is a source-signifying mark that differentiates the brand, products, and services of a business from its competitors.
Copyrights
A copyright is a legal right to use, or “copy”, a piece of original work. The author of that original work—including, for example, literary, musical, and artistic works—owns the copyright and therefore the ability to allow others to copy that original work. A copyrighted work cannot be copied, used, or distributed without the permission of the original creator.
What IP Might a Small Business Owner Have to Protect?
If you are a small business owner, you likely have at least some IP assets that are protectable under patent, trademark, and/or copyright law. For example:
- Your brand name, logo, and any catchphrases used in connection with your business are trademarks that you can seek to register federally with the United States Patent and Trademark Office (USPTO) and in the State of Arizona with the Secretary of State.
- If you have recently invented a new product and plan to bring that product to market, the utility and/or design of that invention could be patentable.
- Lastly, many business owners overlook material that may be eligible for copyright protection, including logos, packaging, hangtags, and product design and labels. However, keep in mind there is overlap between the various types of IP, and therefore you might be able to seek both trademark and copyright protection for your brand name and logo.
It Is important to consider what aspects of your small business may qualify as IP. Identifying your IP assets is the first step to adequately protecting your IP rights.
How to Protect Your IP
As an Arizona business owner, you can register your company’s IP yourself, or depending on your comfort level and the complexity of the application, you can associate with professionals—including attorneys—to assist you. How you choose to proceed is up to you.
Patents
You start by applying with the USPTO to obtain a patent. Before submitting that application, you should search to determine whether any patents already exist for similar inventions or designs. You may use the Patent Public Search function on the USPTO website (Patent Public Search | USPTO) to conduct this search. If there are no similar preexisting patents, the next step is to prepare your application and proceed with filing it online with the USPTO using the Patent Center portal (Home – Patent Center – USPTO). After filing your patent application, you should continue to check its status regularly. Your application will be assigned to the USPTO patent examiner who will be in charge of reviewing your application throughout the application review process, and you should be prepared to receive and respond, where applicable, to correspondence from the USPTO patent examiner throughout the application review process. If the patent examiner ultimately determines that the invention or design is patentable, a patent will be issued after the appropriate fees are paid.
Trademarks
Trademarks may be registered federally with the USPTO and with Arizona’s Secretary of State office, protecting at a federal and state level.
Before taking any steps to register your trademark in Arizona, you should start by investigating whether your desired trademark is available and distinguishable from other already registered trademarks. Arizona’s Secretary of State website (Trade Names and Trademarks | Arizona Secretary of State (azsos.gov)) allows you to search an online database to determine whether your trademark is distinguishable from other marks already on file with the Secretary of State. If your trademark is distinct from other marks already registered, your application will likely be denied. After you are comfortable that your trademark is distinct, registering your trademark in Arizona is relatively simple, and you can utilize the Arizona Secretary of State’s website to file a trademark application online. The application primarily requires you to provide a written description of the trademark. If your application is approved, you will need to pay a small filing fee, and will thereafter receive a certificate of registration for your trademark. However, please keep in mind that successfully registering your trademark with Arizona’s Secretary of State office only gives you the exclusive right to use that trademark within Arizona. If you want to protect your trademark on a wider basis, you need to register for a federal trademark.
Registering your trademark with the USPTO requires a similar process. Before you apply for federal trademark registration, you should search the USPTO’s trademark database, TESS (Search trademark database | USPTO), to determine whether any trademarks similar to your trademark have already been registered. If no similar marks have been registered, the next step is to proceed with filing an online application with the Trademark Electronic Application System (TEAS) (Apply online | USPTO), which will also require payment of a non-refundable registration fee. You can then monitor the status of your application via the Trademark Status and Document Retrieval (TSDR) system.
Your application will likely remain pending for several months, while the application is examined by an examining attorney. If the examining attorney determines that the mark is not registerable (for various reasons, including similar trademarks already registered), you will receive a letter explaining on what grounds registration of your mark is being refused. If the examining attorney determines that your mark can be registered, they will approve the mark for publication in the Official Gazette and you will receive notice of publication. If no one challenges the registration of your mark after it is published, your mark will become officially registered and you will receive a certificate of registration.
Copyrights
The author of an original work automatically owns the copyright for that work – this can be referred to as common law copyright. Even if you can claim protection under a common law copyright, formally registering your copyright gives you additional protection and further solidifies your ownership by providing public notice. To register your original work for copyright, you can submit an online application with the electronic Copyright Office (eCO) (U.S. Copyright Office | U.S. Copyright Office). You must submit with your application at least one copy of the work you are seeking to register, which is non-returnable. You must also pay a registration fee, which may vary depending on the kind of work you seek to register for copyright. If the application is approved, you will receive a certificate of registration. You will also be notified if the copyright office has questions about the application or if the application is rejected.
While the above is only intended to serve as a brief overview of how to apply for a patent and register your trademark/copyright, if you are uncomfortable with the process, have a complicated situation, have questions, or just prefer to associate with someone well-versed in these areas, consulting with an experienced business attorney will ensure that your applications are properly filed and that any issues with your applications are addressed promptly and accurately.
How to Enforce Your IP Rights
Registering your IP is merely the first step to protecting your IP rights. Once you have properly registered your IP, you must continue to protect your IP by monitoring the use of your IP for potential infringement.
If you become aware that an individual or business is infringing upon your patent or registered trademark or copyright (i.e., using your patented product, trademark, or copyrighted work without your permission), you should consider sending the infringer a Cease-and-Desist Letter. This letter should explain to the infringer:
- that you have legally protected IP rights in the patent, trademark, and/or copyright being infringed upon
- identify the infringing conduct and
- demand that the infringer ceases all infringing activity immediately.
If the infringer is unaware of your patent, trademark, or copyright, the Cease-and-Desist Letter will put them on notice and give them a fair chance to cease any further infringing activity. If the infringer is intentionally infringing on your IP rights, the Cease-and-Desist Letter is still a good first step to putting a stop to any further infringement. If the Cease-and-Desist Letter is unsuccessful, however, you may ultimately be required to seek court intervention by filing an infringement action against the infringer. If you don’t protect your IP, you risk losing your rights.
Alternatively, if the infringer wishes to legally use your patented, trademarked, or copyrighted material, you can consider entering into a License Agreement with the infringer. A License Agreement allows a third party to legally use your IP. You should consult with an experienced business attorney to assist in drafting any License Agreement to ensure that your IP remains adequately protected.
Why Register and Protect Your IP?
The process of registering and protecting your IP might sound overwhelming, which is why you might be reading this and wondering if protecting your IP is worth it—it is. As a small business owner, registering and protecting your IP can protect your emerging brand, help build your reputation, and convey to customers that your business is reliable and trustworthy. As you likely know, these things can give you a competitive advantage.
If your IP is not registered, and thus not protected to the full extent of the law, larger competitors have much more freedom to use your brand name, logo, product design, inventions, and other similarly styled IP as their own without legal consequence. This might negatively impact the value of your business, cause confusion among your customer base, affect your reputation, and prevent your ability to further grow your business in a meaningful way.
Protecting your IP can be invaluable. If your goal is to grow a successful brand and business in Arizona, we highly recommend protecting your IP assets as part of any business growth strategy.
Takeaway?
IP is an integral part of any business, particularly for small but growing businesses. The sooner you identify what IP assets your business may have, the sooner you can seek the protection of that IP under the law. While IP law is complex, it is one of the best ways to protect the brand and business you have worked hard to build.
TALG stands ready to consult with and advise our clients on these issues. Please do not hesitate to reach out if you have any questions or if you need assistance.
*Not intended to constitute legal advice to be relied upon. We recommend that you consult with legal counsel to receive tailored advice suitable to your circumstances.
