This month I attended the South by Southwest (SXSW) film, interactive, and music festival in Austin, Texas, along with my colleagues Ryan McCarthy (Principal in Austin) and Heather Flanagan (Patent Agent in Austin). Together, we hosted “Fish Office Hours” at SXSW Interactive, where we met with hundreds of companies and entrepreneurs who had pressing questions about inventorying, securing, and managing their intangible assets, including trademarks and copyrights. As the representative of our Trademark & Copyright practice, I helped guide these entrepreneurs in creating short- and long-term strategies, contemplating co-founder agreements, and dodging common pitfalls. Here are just a few of the pointers I gave.
Build & Protect Your Brand!
- Pick a trademark that is clever and unique! Words that describe what your product or service does generally aren’t protectable, and trying to build a brand with such words will prove to be an expensive uphill battle, with very little chance of realizing any value.
- Search before you invest! If you have the resources, it is best to conduct a comprehensive availability search through a vendor, which will scour federal and state filings, trade names, and domain names, and other uses in the marketplace. But, at a minimum, you should at least conduct a preliminary search of filings with the United States Patent & Trademark Office. If you don’t search, you could be investing heavily in a brand that is infringing somebody else’s rights and will later have to re-launch with a different brand, resulting in significant expense for you and loss of the goodwill you tried hard to build.
- Use the brand, or lose it! Trademark rights are built from using a brand in the marketplace; but, don’t stay local – to protect yourself in the best way possible, you should use the mark in different states. If you haven’t used it yet, but plan to in the next three years, you should apply to register the mark with the United States Patent & Trademark Office to put your stake in the ground and make others aware of the rights you’re claiming.
Protect the Copyright in Your Works!
- If you have multiple people contributing to a piece of work, you should decide very early on who will own the rights in the work, and have all rights assigned to the owner.
- Register the work with the U.S. Copyright Office. It’s inexpensive to register, and the registration is invaluable to have. You can’t enforce your copyright against an infringer in federal court if you don’t have the work registered. Plus, a registered work means you can seek statutory damages from an infringer and you don’t have to prove harm, which can be an uphill battle.