November 23, 2011
In Episode 41 of The Wendel Forum (originally aired on November 19, 2011 on Green 960 AM radio), show host Dick Lyons speaks with attorney Eugene Pak about issues related to protecting trademarks and other types of intangible assets. Both Dick and Eugene are partners in Wendel Rosen’s Intellectual Property Practice group.
They explain the basic differences between patents, trademarks, copyrights and trade secrets and then dig into a deeper discussion regarding some of the issues that entrepreneurs should consider as they develop their young companies and new products.
What makes a good strong trademark? Gone are the days when the U. S. Patent and Trademark Office (USPTO) is readily willing to allowing marks that include “Green” “Eco” or “Solar” in the name. Those terms have become so commonly used within the green industry that they are now considered descriptive, rather than distinctive. Descriptive marks are extremely difficult to register. Dick and Eugene offer a little guidance on how to approach the selection of a name likely to be approved by the USPTO.
Even a trademark registration that goes undisputed will take nearly a year to file, so businesses should plan early for how to protect their company and product names. You won’t want to start over with your design, packaging, marketing and advertising materials if your mark is rejected or disputed, so it’s important to set out on the right path from the beginning.
Copyright issues, which can cover materials ranging from screenplays to software design, can be even more complex than many companies realize. Who owns the work product created by consultants and independent contractors? You might think you do, but don’t be too quick to assume. What about work for hire (WFH)? Just because you call something work for hire, doesn’t necessarily mean that you own it. The laws around this are tricky, so be careful. It’s best to have a contract that includes a clear assignment of rights. Who owns the work product and ideas of employees? That might not be so clear either.
What if you have a license to use software, technology or other work product created by a third-party? Is there such a thing as an implied license? Is your license exclusive, non-exclusive, assignable? The clearer that you can make these issues at the onset, the better chance you have of protecting the value of your company’s assets and avoiding costly negotiations or nasty litigation to protect your company’s future.
If you plan for your company to be wildly successful (and, let’s be honest, who wouldn’t), you’ll want to give proper attention to your intellectual property portfolio. How you handle these issues from the beginning can have a big impact on your ability to get funding from investors later. Being able to demonstrate clean ownership rights and clear marketplace value of your intangible assets will put your company in the best position possible.
Listen to the discussion of Intellectual Property for Green Businesses: Episode 41 of The Wendel Forum(27:40 min, mp3)
Eugene Pak’s online profile: www.wendel.com/EPak
About Wendel Rosen’s Intellectual Property Practice: www.wendel.com/ip
United State Patent and Trademark Office website: http://www.uspto.gov/
Dick Lyons website bio: www.wendel.com/rlyons
Green 960 AM radio website: www.green960.com