DEFINING AND PROTECTING YOUR BRAND

2016 SIA SNOW SHOW – DENVER, CO

DON’T LET SOMEONE ELSE POACH YOUR LINE

Branding started simply…

primary purpose was unique identification

of your property

Photo: Andreas Praefcke

but got more complicated…

Now, branding involves additionalconsiderations…and some care is required

multi-faceted/intangible - may embrace, e.g., goodwill, reputation, consumer perception (vs. reality), AND intellectual property (IP)

dynamic - your brand may change over time

not fully in your control – your reputation, and consumer perception

This more complex ‘brand’ model, while powerful, has given rise to a variety of possible threats…

Such threats may include…

Use of confusingly similar marks etc. by others to leverage your goodwill/reputation

Copying of the look/feel of your products, website, etc.

Copying of your product packaging

Copying of your digital content – e.g., website, social media

Consequences can be significant…

Damage to your reputation

Dilution of your trademarks and service marks

Loss of revenue $$

Loss of market share

So it is important to take precautions to protect your business and your brand…

Preparedness includes protecting your IP…

You’ve found ways to set yourself apart from the competition..AND

You want to realize the benefit of, and protect, your investment in time/effort/$$..

So…your branding strategy must include a plan to protect your intellectual property…

Benefits to protection of your IP rights include…

Competitive advantage -IP rights are ‘exclusionary’ – they can serve as a tool to prevent others from copying or stealing your work…

Revenue source - IP rights can be sold or licensed…

Company asset - IP rights can be attractive to an acquirer or investor…

So how can I protect my intellectual property..?

Various routes are available to potentially protect the following ‘brand’ elements …

Marks – trademark, service mark registration Ornamental design of products – design patent Product packaging/design – trade dress; copyright Creative expression, including web and social media

content - copyright

Some of these may touch/overlap…

Why are trademarks/service marks/trade dress important?

Trademarks/service marks & trade dress…

Identify you as a source of good/services

Establish and preserve your reputation

Help cultivate consumer goodwill

Avoid confusion in the marketplace

Distinguish you from competitors

Prevent others from using similar marks

Trademark/service mark (examples)

Why should I consider design patents?

design patents can enable the owner to prevent others from…

Making, Using, Selling, or Importing…the patented design

strength/value of design patents has been increasing…(see Apple v. Samsung)

Design patent (example)

Design patent can protect aspects that may contribute to your overall brand, such as… Ornamentation

Shape

Appearance

Proportions

Overall look

Design patent does not protect function

Trade dress...product appearance and/or packaging can serve as source indicator

Trade dress infringement

Copyright registration…

Protects expressionfixed in a tangible form…generally excludes others from using, copying, distributing, displaying, reproducing, performing….

Examples of protectable works include:

website look and feel

Photos/video/art

product packaging

social media content

documents

Where do I start?…A checklist for laying your IP foundation…

Record keeping (e.g., TM usage)

Non-disclosure agreements

Confidentiality

Employment agreements

Assignment of rights

Website developer & contractor agreements

Social media policy

Domain name(s)

Due diligence – acquisitions

ID patentable designs

As part of your IP foundation, scope the line before you commit, and avoid a face plant…

E.g., perform TM and design patent searches before investing time and $$ in your brand; check copyrights

Search USPTO/other records – identify what others are doing; may help you to avoid infringement

Cannot patent designs that have already been patented

Make sure you’re not copying someone else’s work

Cannot register marks confusingly similar to marks already in use

Fanciful marks are strong - made up mark (e.g., ‘Kodak’ for film)

Arbitrary marks are strong – mark with no connection to the goods/services – e.g., ‘Apple’ for computers

Descriptive marks may not be registrable – marks that describe an aspect of your products/services – use of the mark ‘apple’ for selling apples (policy basis)

Building an IP strategy for your brand– some key internals in deciding what to protect…

What are key products and services?

Who are your customers?

Where are your customers?

Where are your products manufactured?

Might you sell or license your IP?

Your budget

Building your IP strategy – some key externals in deciding what to protect…

What do you want to prevent your competitors from doing?

Who are your competitors?

Where do your competitors manufacture and/or sell?

What do your competitors manufacture and/or sell?

What competitor activities would most concern you?

This all sounds great, but how much is it going to co$t??

Short answer….it depends….

No one has unlimited funds…

Your IP attorney should work with you to help you identify a route that fits your situation and budget…

Some considerations:

Country/countries where protection needed

Type/scope of protection sought

USPTO small entity discount

You’ve secured your IP rights, now, monitor and enforce them…

Register marks with Customs and Border Protection

Use watch service for your marks

Monitor competitor activities

You’re in! Now what…?

But also… Keep tabs on what your

competitors are doing

Keep tabs on the marketplace

Adjust IP strategy as necessary to suit changes in business strategy, market conditions etc…

Keep IP counsel up to date…

Have fun and enjoy the ride!

You’ve done everything right, but problems can still occur…

What if I get a cease and desist letter?

What if someone is using my name in a spam/phish scheme?

What if someone steals/uses my graphics or marks?

What if I see a knockoff of my product?

What if I’m accused of patent, TM or copyright infringement?

…be careful how you respond…

Don’t panic! Resist the temptation to

respond to the letter/email, or to send a flaming letter/email –you may do more harm than good…

Instead…consult with your IP attorney as soon as possible to determine an appropriate strategy…

Finally, a (self-serving) tip…

Consult with an IP attorney sooner rather than later…its easier/cheaper to avoid problems up front, than to try to fix them afterwards…

Some useful resources…

www.uspto.gov (patents and trademarks)

http://www.copyright.gov/ (copyrights)

www.wnlaw.com (Workman Nydegger PC)

Questions…??

Pete MalenSalt Lake City, UT

(801) 321-8871 (direct)pmalen@wnlaw.com

www.wnlaw.com

© 2016 Workman Nydegger PC. All rights reserved(this information is not intended as legal advice – views expressed are those of the author alone)