Selecting
and Protecting a Business Name
We are often asked
about how to select and protect a business name. Following is a short
summary of the process. We help with any number of the steps.
1. Brainstorm (or hire a marketing firm) to come up with at least a few possible
names. Decide whether the business’s name will be essentially the
same as the trademark or service mark of your primary product or service.
Be careful not to pick a name that is too descriptive. (Part of it can
be descriptive, but not the whole thing. For example, for a marketing business, “Business
Marketing Co.” would probably be considered highly descriptive, whereas
only part of “XYZ Marketing Co.” would be.)
2. Check on the
Internet to see if the domain name (e.g., www.McDonalds.com) you want
is available. Decide whether you want to reserve the name (through
your web designer or host or through a registrar such as Network Solutions,
Inc. www.networksolutions.com).
3. If yours will
be a corporation or an LLC, contact the Secretary of State’s
office regarding name availability. (The Illinois Secretary of State’s
office is online at www.sos.state.il.us/departments/business_services/corpnames.html.)
Decide if you want to pay to reserve it while you’re clearing
the trademark.
4. Conduct a trademark
search. There are two levels:
a. Quick computer
searches check just for federal (or possibly state) applications and
registrations that are extremely close to the proposed mark. They are
not as extensive as (and therefore not generally a substitute for)
full searches.
b. Full trademark
searches are provided by a trademark search company and are usually
analyzed by your trademark attorney. They are much broader than quick
searches in terms of the range of marks that will come up and in that
they also include searches of common law databases such as phone books,
industry directories, and press releases.
5. Once you’ve
cleared the name, decide whether you wish to register it as a trademark
at the state and/or federal level. If you will register it federally,
decide whether to register it before you start using it, as an “Intent
to Use” trademark.
Who
Owns It?
by Jeff Wilson, Chair of NSBA IP Committee
Let’s assume
that one of your clients is having a logo and an advertising campaign
created for it by a marketing firm. Or, take the example of a law firm
that uses a web design firm to create a website for the law firm. Who
owns the copyright in the creative work being done?
Answer: Chances are,
it’s the independent contractor, not the client or law firm.
Why is this? Under
the United States copyright laws, the copyright in a work created by
a non-employee is owned by the non-employee, rather than the customer.
Why is this important?
Well, first, if you don’t own the copyright, you can’t register
it. Second, if you don’t have a registered copyright, you can’t
sue an infringer.
How can you get around
this? Written assignments of copyright and (in some cases) work-for-hire
agreements.
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Intellectual Property
Primer
(Or, Do I Have A Trademark, Copyright,
Patent, Or Trade Secret?)
[This is an article
Jeff wrote several years ago. A revised version was published in the
Illinois State Bar Journal.]
In the past few
years, Congress has dramatically changed the federal trademark and
copyright laws. During the same period, our state legislature passed
the Illinois Trade Secrets Act. For the most part, the new laws make
it easier for you to protect your intellectual property interests.
But what types of interests merit protection, and what kind of protection
should you seek?
DEFINING YOUR INTERESTS
Many people are
uncertain of the differences among the various intellectual property
rights. Here are some general guidelines.
Trademark laws protect
goodwill in the name of a product, service, or line of products; in
a design logo used to distinguish a product; or in a slogan used with
a product or service. These laws can also protect trade dress, which
is the overall image presented to purchasers, including such elements
as the label, packaging, ornamental features, or advertising of a product.
Copyright laws protect
original written expressions and works of visual art. Books and movies
are the most common subjects of protection, but such things as catalogs,
computer software, and sculptures may be protected as well.
Patent laws protect
inventions, new processes, and ornamental designs.
Finally, trade secret
laws protect processes, inventions, and other information of value
to a business, provided reasonable measures have been taken to ensure
secrecy.
Because these rights
often overlap, it is possible to have multiple protectable interests
associated with a single product. Imagine, for example, that you have
created a bicycle with a new linkage mechanism that you have patented.
The logo on the bike, which is protected by a trademark, contains a
picture of you that is the subject of a registered copyright. Finally,
to paint and polish the bike you use a special method that creates
a highly lustrous finish and is a closely guarded company secret.
. PROTECTING
YOUR INTERESTS
The procedures for
obtaining protection vary according to the interest involved.
Trademarks. Rights
in a trademark stem from “first and continuous use”. To use
a trademark, you must affix it to the goods being sold. When it is impractical
to physically attach the mark to the goods, you may affix it to the material
in which they are packaged for sale. For services, it is sufficient to
use the mark in connection with the services -- for example, on business
cards, stationery, or advertisements.
Mere use of a trademark
gives the user certain common law rights, including the right to employ
the designation “TM” (for a trademark) or “SM” (for
a service mark).
Common law rights,
however, provide incomplete protection. It is generally advisable to
take additional steps to protect your mark by applying to register it
with federal and/or state authorities. Registration in Illinois (as in
many other states) is a simple process. A state registration, however,
provides little protection outside of the issuing state. Federal registration
is a more involved process -- taking approximately one year -- but affords
much greater protection against conflicting users. Only federal mark
holders may use the ® symbol.
As noted above, trademark
rights are generally based on use. Now, however, federal law allows an
applicant to file for registration of a mark before actually using the
goods or services for which application is made. This new process, called “intent-to-use” registration,
is particularly useful if you have a new product in the pipeline and
want to bar competitors from using the name on similar items before your
product can be brought to market. Before the registration will issue
you will actually have to use the mark in commerce, but you can save
a great deal of delay with this new procedure, and you will get credit
for constructive use back to the date you applied for registration.
Copyrights. Copyright
protection is also available at common law, without registration. And,
as a result of recent amendments to the Copyright Act, it is no longer
necessary to give would-be infringers notice of your copyright. But --
and this is a big but -- to avoid potential problems, you are well-advised
to use copyright notice and to promptly submit your materials for registration.
Giving notice of your
copyright is as simple as labeling the object, in a fairly conspicuous
place, with the word “copyright” (or “copr.” or
the symbol ©), the year of first publication, and the name of the
copyright owner. Such notice will discourage potential copiers from claiming
they didn't know the work was protected.
Securing registration
for an original expression is also easy. Simply fill out a short form
and send it to the Copyright Office along with $20 and copies of the
writing or photographs of the work of art for which protection is sought.
You will need copyright registration in order to sue someone who is copying
your work. Moreover, you should register before the copying ever starts,
because if you wait to register until after the infringement begins,
you will lose the right to recover attorneys' fees in your suit and you
will have to provide enhanced evidence of damages.
Patents. Without a
federal patent, patent rights do not exist. Moreover, to obtain a patent,
an inventor must apply within one year of starting commercial use of
an invention.
While your application
is pending before the Patent and Trademark Office, you may use the notice "patent
pending". This notice, however, is without legal effect. Once the
patent has been issued, you should use the notation "Patent" or "Pat.," along
with the patent number.
You may also have
trade secret rights associated with inventions that are patented, as
well as those that were not patented or whose patent has expired.
Trade Secrets. In
some ways trade secret protection is broader than patent protection,
in other ways narrower. For example, customer lists are not patentable,
but may be protectable as trade secrets. However, a patent protects you
from reverse engineering, while trade secret laws do not.
Unlike the other forms
of intellectual property, there is -no formal registration process for
trade secrets. The fundamental prerequisite for trade secret protection
is secrecy. The more restricted the information is, and the less readily
ascertainable, the better.
Intellectual property
laws and practices very widely in other countries. Given the importance
of safeguarding your ideas and goodwill, it is advisable to confer with
an attorney early in the process. |