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Best IP Practices for the Small Business Owner

I often get trademark and copyright questions from startups or small business owners. Though one size doesn’t fit all, there are some common things to think about when getting your IP house in order.

1. Consider registering your trademarks. You can expand the automatic common law rights that arise through using your trademarks if you register them with the U.S. Patent and Trademark Office (yielding national rights) or secretary of state’s office (yielding statewide rights). Your top priority is probaby your business name, followed by your logo, followed by your tag-line. Getting a registration confirms you are the owner and gives you the legal presumption of being the exclusive owner throughout the U.S. (if you get a federal registration) or state (if you get a state registration) for the goods and services you sell under the brand. These expanded rights give you a powerful tool to keep imitators of your brand(s) at bay. Registration isn’t required, so weigh the expected benefits against the cost.

2. Consider registering your copyrights. Copyright law protects against copying. Registration with the U.S. Copyright Office isn’t technically required, but you can’t enforce your rights without at least having an application for registration in the pipeline (if you’re on the West Coast/in the Ninth Circuit). Moreover, if the copying occurrs after your registration issues, you can elect statutory damages and seek attorney’s fees in a copyright infringement lawsuit, which you can’t do if copying occurs before registration. Even if you don’t foresee going to court, having these remedies available gives added heft to a cease-and-desist letter you might send which, by itself, can deter and stop copying. As with trademarks, you should critically consider whether you would get enough bang for your buck before deciding to file.

3. Assignments from vendors. A related copyright consideration is making sure that any vendor or independent contractor that has done creative work for you has assigned their rights to you. This goes for website development and any other writing, audio, or visual work you may have commissioned. Since the “work for hire” doctrine only applies to employees, everyone else who does creative work needs to assign their copyright interest to you in a signed writing. Otherwise, they will continue to own rights in their work and may throw your ability to use, adapt, and sell the work into question.

4. Keep your secrets secret. If your employees or contractors need access to your competitive intelligence to do their jobs, you should consider making sure it doesn’t walk out the door when your relationship ends. You should protect your formulas, customer lists, product ideas, pricing strategies, and other commercially-sensitive information by limiting access to such information to those with a genuine need to know. You can also protect such information with nondisclosure agreements, noncompetition agreements and nonsolicitation agreements. There are limitations to such agreements, but you can minimize the chance of losing exclusive rights in your trade secrets by learning the universe of tools available to protect them.

5. Talk with a patent lawyer. Your invention, method, and design may be patentable. Similarly, they could be covered by someone else’s patent. A patent lawyer can tell you what you need to know to understand your rights, including maximizing your protection and minimizing the risk of receiving a claim against you.

6. Understand the limits of IP law. Lastly, you should realize that intellectual property law doesn’t cover everything — not by a longshot. Trademark law only protects against similar brands in the context of similar goods or services. Copyright law only protects against the copying of original forms of expression (text, photos, videos, code, and the like). It doesn’t cover ideas, functional aspects, or common means of expression. Trade secret law only protects against the misuse of information that is valuable because it is secret, and that you have taken reasonable steps to keep secret. Reverse-engineering can be ok, and in some cases, intentional copying can be ok. Many other limitations exist. The sooner you learn your rights, the sooner you can plan accordingly.

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