Effective Strategies to Protect Your Intellectual Property

By Josh Gerben, Esq.

As a business owner, establishing an intellectual property portfolio that consists of the trademarks, copyrights, and patents that are relevant to your business should be at the forefront of your mind. These valuable assets not only protect your products and branding from competitors, but are often considered highly valued investments that represent the consumer goodwill and growing reputation associated with your company. In order to unlock that potential for your business, it is imperative that you begin building your intellectual property portfolio on a solid foundation.

Leverage the following steps on how to protect various IP:

1. Protect trademarks by clearing, then registering with the USPTO

From the beginning, it is necessary to select a strong trademark. This means finding a name, logo, or catchphrase that is not immediately descriptive or generic for the goods and services that will be offered under the trademark. This strategic choice is most advantageous in that it can decrease the likelihood that another company may coincidentally use the same mark for similar products or service offerings. If you are unsure of where to start when selecting a trademark, utilize the services of a professional trademark attorney–trademark attorneys can conduct clearance searches to determine which of your possible trademarks will have the greatest chance of securing a registration.

Once you have chosen a trademark and submitted the application, the timeline to registration typically spans about eight to ten months. Should you receive a refusal, also known as an Office action, or an opposition from a third party, the process may be extended. Once your application has been filed, it will take approximately three months to be reviewed by an examining attorney. From there, if no Office action is issued, the application is forwarded to the publication period, which is thirty days in which other parties can oppose the application should they have grounds to believe a registration may infringe upon their trademark. Following publication, the application returns to the examining attorney for a final review. Depending on the initial filing basis of the application, the application owner will need to prove use of their mark for the registration certificate to be officially issued.

To learn the full trademark registration process, click here.

2. Protect copyrights by filing for copyright registration with the US copyright office

Copyrights protect creative works, which includes writing, photography, audio, video, code, and other forms of art or original expression. They are limited in that they do not protect the overarching idea within a work; rather, they are effective in safeguarding the expression of the creator’s idea in that specific medium. A copyright registration can prevent unauthorized copying of an author or an artist’s creative works, and it also entitles its owner to damages if infringement occurs after the copyright is granted.

Federal copyright applications are filed with the US Copyright Office and, while the timeline varies depending on the application’s content, applicants are protected as of the date of the application once the registration is granted. Copyrights enable the owner to enforce their registration both online and in court, and with the evergrowing virtual marketplace, they are increasingly valuable to artists, authors, and creatives who use those talents within their businesses.

Learn more about US Copyright law here.

3. Protect patents by conducting patent searches and then filing applications

One of the first steps when determining your business’s need for a patent registration is deciding what kind of patent best fits your product or idea. The two most common types are design patents and utility patents. Design patents are often ornamental and focused on non-functional appearance, such as the silhouette of an athletic shoe. However, in order to be patented, this aesthetic must be inseparable from the actual product. If the applicant also wants to protect the functionality of their invention, they must also file for a utility patent. This type of patent is the most frequently applied-for and covers processes, manufactures, and machines. These patents are also granted for improvements upon known, existing machines and processes. In short, a design patent protects how your creation looks, while a utility patent protects how that invention works.

While not all inventors utilize a patent search, this oversight can turn into a costly mistake. Patents are only issued for ideas that are novel and new, and if you are unaware that your invention is already patented or in use, your application will be denied. Patent searches are not completely exhaustive and an application’s success is never guaranteed–however, a search can reveal patents similar to the potential application, thus allowing the applicant to hone in on the most unique features of their invention and giving them the best chance of success to obtain a patent. Need help conducting a patent search? Start here.

Ultimately, finding effective ways to protect your intellectual property is essential to your company, and therefore establishes that these investments are both safe and productive. To assist with the maintenance filings, clearance searches, and managing your overall portfolio, having the assistance of an experienced attorney can be incredibly beneficial. If you need assistance with your intellectual property, the IP attorneys at Gerben IP are ready to help. If you have questions regarding your trademark filings and the strategies you can use to protect them, please reach out to an attorney at Gerben IP for a free consultation.

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Josh Gerben, Esq.

Josh Gerben, Esq. is the founder and principal of Gerben IP. In 2008, Mr. Gerben started the firm to provide high-quality trademark services at reasonable prices. Today, he is recognized by the World Trademark Review as a top trademark filer, having registered over 7,500 trademarks. The contents of this blog are for informational purposes only and may not be relied on as legal advice.