Clearing and Protecting the use of Brand Names, Logos, and Domain Names before Creating Value in Them
Louis Lehot, business lawyer and partner at Foley & Lardner LLP in Silicon Valley, and formerly the founder of L2 Counsel, P.C.
By Louis Lehot
The ability of a company to obtain robust and defensible trademarks and domain names, and avoid infringement of other parties’ trademarks, is of great importance to building its brands. All trademarks and domain names adopted for use by a company must be carefully selected, cleared for use, registered, and used appropriately to maintain their value to a Company. A small investment to vet and protect brand names and logos before their initial use will save resources over time.
If you can definitively determine a company’s business and brand names, logos, and domain names during the ideation stage, you benefit by avoiding potentially significant loss of time and resources required for making changes later, and the inevitable rounds of filings, or worse, in defending infringement cases filed in court or just a campaign of nasty-grams.
As you begin your journey, it is essential to clear the rights to the company’s business and brand names before you go to market. If there are any issues in this developmental phase, a company could face significant branding issues later on. By clearing the rights to the company’s branding early, a company has a green light to move forward unhindered.
First, let’s set the baselines. According to the United States Patents and Trademarks Office, or USPTO, a trademark is a word, phrase, symbol, and/or design that identifies and distinguishes the source of the goods of one party from those of others. A service mark is a word, phrase, symbol, and/or design that identifies and distinguishes the source of a service rather than goods. Some examples include brand names, slogans, and logos. The term “trademark” is often used in a general sense to refer to both trademarks and service marks. Unlike patents and copyrights, trademarks do not expire after a set term of years. Trademark rights come from actual “use”. Therefore, a trademark can last forever — so long as you continue to use the mark in commerce to indicate the source of goods and services. A trademark registration can also last forever — so long as you file specific documents and pay fees at regular intervals.
A patent is a limited duration property right relating to an invention, granted by the United States Patent and Trademark Office in exchange for public disclosure of the invention. Patentable materials include machines, manufactured articles, industrial processes, and chemical compositions. The duration of patent protection depends on the type of patent granted, which can be summarized as follows:
- Design Patents — 15 years from issuance
- Utility patents and plant patents — 20 years from the date on which the application for the patent was filed in the United States or, in special cases, from the date an earlier related application was filed.
Under certain circumstances, patent term extensions or adjustments may be available.
A copyright protects original works of authorship including literary, dramatic, musical, and artistic works, such as poetry, novels, movies, songs, computer software, and architecture. The duration of copyright protection depends on several factors. For works created by an individual, protection lasts for the life of the author, plus 70 years. For works created anonymously, pseudonymously, and for hire, protection lasts 95 years from the date of publication or 120 years from the date of creation, whichever is shorter.
A domain name is an identification string that defines a realm of administrative autonomy, authority or control within the Internet. Domain names are used in various networking contexts and for application-specific naming and addressing purposes. In general, a domain name identifies a network domain, or it represents an Internet Protocol resource, such as a personal computer used to access the Internet, a server computer hosting a web site, or the web site itself or any other service communicated via the Internet. In 2017, 330.6 million domain names had been registered.
In this post, we are going to focus on protecting your brand, which is only a subset of your intellectual property.
As to where to file for protection, it is important to focus your investment in all of the jurisdictions where you plan on developing, producing, marketing, and selling your company’s products or services and prevent others from adjacent or analogous businesses from infringing upon them.
There are numerous examples of a company or artist creating a valuable brand for themselves, only to have another artist or another company arrive and say that they had the rights to that same brand first. Sometimes it’s worse; a company will come by and infringe on the hard work that went into the building of the brand, going on to enjoy success built on the back of the original company. Filing for a copyright or trademark registration on your branding in advance is the surest way of achieving protection.
Filing proactively prior to commercialization in the US and only such other jurisdictions as where you foreseeably can expect to do business enable maximum protection. If you have a great e-commerce business for the U.S. market, think of down the line when you are going global. Why not extend protection of your brand, trademarks and domain names in other big e-commerce markets like China, the European Union, Brazil, India?
Startup companies should make a list of jurisdictions where the company plans to operate and decide where the company can afford to file. Following this guideline will allow the company to be organized and effective in the implementation of its plan for rights protections. Further, by doing extensive legwork beforehand, a company can move forward more securely.
An intent-to-use US trademark registration is another important tool that companies can use to protect themselves prior to its actual use, provided the company has a bonafide intent to use the trademark in connection with the production or sale of its products or services set forth in the application. Remember that most jurisdictions work on a first to file basis. It is common practice in some areas of the world for third parties to register the trademarks of growing companies to extort cash from those companies by selling the rights to these registered trademarks back to them.
This article was originally published here.
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