What should I be thinking about when selecting a name for my company or new product?
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Cover Your IP Assets
What should I be thinking about when selecting a name for my company or new product?
The statute of limitations for copyright infringement is three years. However, there is an important three-month bar date that can be the death knell for some cases.
To be eligible for statutory damages and attorney fees under 17 USC §& 504 and 505 pursuant to 17 USC §412, you must register your creative work within three months from the date of publication.* Otherwise, you may only plead for actual damages and profits in all future cases. Depending on the type of creative work, actual damages and profits may be hard to prove, or may prove to be minimal.
Statutory damages range from $750 to $30,000 per work. Where willful infringement can be proven, statutory damages may be increased to up to $150,000 per work. As for attorney fees, even modest copyright litigation can cost tens of thousands of dollars. Loss of statutory damages and attorney fees can render a suit worthless.
This three-month bar date is limited to creative works that have been published. No statutory damages or attorneys fees are awarded for unpublished works, where the infringement commenced before the effective date of the registration. 17 USC § 412(1).
Please promptly inform your IP attorney if you intend to publish your creative work. The date of publication triggers the three-month period by which your work will need to be registered with the U.S. Copyright Office. To avoid this IP pitfall, a best practice is to have a regular program for monitoring the publication of your creative works.
* Publication is defined as the distribution of copies of a work to the public by sale or other transfer of ownership, or by rental, lease, or lending. The offering to distribute copies to a group of persons for purposes of further distribution, public performance, or public display, constitutes publication. A public performance or display of a work does not of itself constitute publication, i.e. the work being displayed in museum. See 17 USC § 101.
Obtaining a patent is a resource-intensive process. Your patent attorney can advise you on the best course of action to obtain protection of your IP. However, it is in your best interest to provide truthful information to your patent lawyer. Communications with your lawyer are protected as confidential because of the attorney-client privilege.
A patent may be held invalid for a variety of reasons. This is especially relevant if the patent is litigated. Opposing counsel will scrutinize the patent for invalidity issues. It is your patent lawyer’s job to help you avoid these pitfalls. To do so, your patent lawyer must know the facts. The more upfront you are with your patent lawyer regarding potential issues, the better he can advise you and possibly remedy the situation.
When discussing your invention with your patent attorney, you should be ready to provide:
In the United States, inventors lose the right to obtain a patent if an application is filed more than a year after first public disclosure of the claimed technology.
Furthermore, there is a duty of disclosure to the U.S. Patent and Trademark Office under 37 C.F.R. . § 1.56. The duty applies to all known information that is material to patentability. While the duty of disclosure does not require you to perform a search, it does require you to provide information currently in your possession. A patent may be invalidated if the duty of disclosure is violated.
Applicants are also subject to a duty of candor. The duty is breached by inequitable conduct, or “affirmative misrepresentation of a material fact, failure to disclose material information, or submission of false material information, coupled with an intent to deceive.” Molins PLC v. Textron, Inc., 48 F.3d 1172, 1178 (Fed. Cir. 1995). A patent may be invalidated for inequitable conduct.
By default, works of authorship are owned by the author upon creation of the work. This often comes as a surprise to most business owners. Works of authorship include designs, written materials, websites, and even source code! To protect yourself, make sure your independent contractors have agreed that you own the material you are paying them to produce.
A work for hire agreement executed BEFORE the work is created resolves this issue. The agreement should also protect you from infringement of your own intellectual property by the independent contractor while he is working on your behalf. If a work for hire agreement is not executed, an assignment agreement is needed for your company to own any right to the work of authorship. Your IP lawyer can assist you in preparing a work for hire agreement tailored to your specific needs.
Once you have selected a good trademark, it is important to conduct a trademark search to ensure no one has prior trademark rights to the desired mark. The best practice is to conduct both a “Knock Out search” followed by a full trademark search before you start associating your products or services with the using the trademark.
A Knock Out search is a preliminary search of the United States Patent and Trademark office’s trademark database and the Internet to see if your desired mark is already in use by another party. A full trademark search covers all federal and state trademark registrations, domain names, business names, and common law use. The full search covers many additional sources that are not included in the preliminary search. For example, each state has its own trademark registrar that is independent from the U.S. Patent and Trademark office’s database.
The investment in clearing your mark is minimal compared to the costs of promoting a mark that later gets opposed, refused, or cancelled by another party holding prior trademark rights. If you do not adequately protect yourself, you may find yourself in a situation where you must rebrand your products, services, or even your company. Moreover, adequately clearing a trademark is the best way to avoid costly litigation for trademark infringement.
Selecting a good trademark is a critical step in starting up a new business or launching a new product. Trademarks identify products or services originating from a unique source. Most businesses gravitate toward names that are catchy, easy to remember and descriptive of a product or service. However, it is important to remember that descriptive terms cannot be protected from use by others.
The strength of a trademark depends on how clearly it may be identified with a particular source of goods and/or services. From strongest to weakest, marks are classified as distinctive (often referred to as fanciful or arbitrary), suggestive, merely descriptive or generic.
When selecting a name for a product or business, it is wise to involve a trademark lawyer early in the process to make sure that an appropriate trademark is selected. A trademark lawyer can provide legal advice to help maximize your trademark protection.
On October 1st, 2010, a jury awarded Mirror Worlds LLC $625.5 million in a patent infringement lawsuit against Apple Inc. over three patents. The three patents at issue include the prominent “Cover Flow” feature in Apple’s iPod, iPhone and Mac operating systems. Mirror Worlds is a small technology company founded by Professor David Gelernter of Yale University. The Mirror World patents are directed to the display of documents on a computer screen.
Mirror Worlds LLC v. Apple Inc. highlights the importance of protecting intellectual property, especially in small companies. A comprehensive patent portfolio brings value to emerging technology companies. In the United States, inventors lose the right to obtain a patent if an application is filed more than a year after first public disclosure of the claimed technology. To obtain international protection in most other countries, a patent application must be filed before any public disclosure. It is important to develop a strategy early in order to retain your intellectual property rights.