A federal law known as the Lanham Act is often used for a variety of unfair competition claims brought by competitors, including infringement of unregistered trademarks. (At the state law level, most states have some version of a Deceptive Trade Practices Act that also prohibits unfair competition.) You should never assume that a cursory search of exact matches in the USPTO or Secretary of State databases can provide the all-clear to proceed with a brand idea.
Being an entrepreneur requires you to wear many hats. Not only do you have to provide a great product or service, but you’re also responsible for all of the financial details like setting prices, learning how to use accounting software, managing expenses; long term strategic planning, especially if you plan to grow the business; and human resources and the never-ending challenging of managing people. But no matter what kind of business you run, it seems like your “real” job is sales and marketing. After all, none of the other staff matters if you can’t get customers or clients to buy what you’re selling.
As a law firm, we can’t solve all of your marketing problems. But we can make sure your marketing plan doesn’t land your business in legal trouble. Like most things legal, advertising isn’t covered by a single law with simple rules but instead by a complex framework created by federal, state, and local laws, industry regulations, and common law restrictions on commercial speech. In this series, we’re looking at just what small businesses should know about advertising laws.
If your product or service is built around a particular brand identity, then you probably already understand the importance of registering your trademark with the USPTO. And if you’ve already made it through the long and painstaking registration process, then congratulations! But all too often, our small business and nonprofit clients assume that receiving the registration certificate is the end of the story. How do you make sure the time and expense you just went through to get your trademark registered in the first place doesn’t go down the drain? What do you need to know to avoid losing your trademark rights?
Trademark infringement is the unauthorized use of a trademark on or in connection with goods and/or services in a manner that is likely to cause confusion, deception, or mistake about the source of the goods and/or services. But what does this mean for your small business? How can you avoid receiving a nasty cease and desist letter accusing you of infringing someone else’s trademark? And how much can a trademark mistake cost you?
We’ve talked before about the importance of conducting a thorough trademark search before launching a brand name or logo or slogan. You might be surprised to learn about similar trademarks that are already in use. You might learn that your proposed trademark would be considered relatively weak. Even if trademark registration simply isn’t in the budget yet or a federal registration doesn’t make sense for other reasons, you still need to know what trademarks your competitors are already using.
Whatever the reason for not moving forward with a trademark registration, that still leaves an important question—What rights do you have if you don’t or can’t register your trademark? Is there anything you can do to protect your unregistered trademark?
Too many small business owners assume that just because something is on the internet, it must be free to use. For example, have you ever:
In each of these instances, your business is likely to receive a nasty cease and desist letter accusing you of copyright infringement and demanding the immediate payment of money damages.
When you are working hard to build a brand, it’s easy to say “just trademark everything…name, multiple logos, slogans.” And in a perfect world, you should trademark every aspect of your brand. But in the real world, trademark registrations are not cheap, especially on a start-up budget. And multiple trademark registrations won’t matter if you aren’t also making sales, hiring staff as you grow, and improving your product or service.
So if budget is an issue, what should you trademark first? Your name or your logo?
A licensing agreement is a contract in which you, the licensor, gives someone else, the licensee, permission to do something that they otherwise would not have the right to do. There are many situations in which a small business might use a licensing agreement:
While licensing agreements need to be customized to fit your particular business situation, there are some common terms that most licensing agreements should address.
The bundle of rights associated with the concept of “copyright” exists from the moment a work is created in a fixed form. However, those rights generally belong to the creator or author of the work. So what happens when that author is someone you are paying to create the work for you, your business, or non-profit?
Enter the concept of “works made for hire.” If a work meets the legal requirements to be considered a work made for hire, then the employer will be considered the author of the work even if an individual employee was actually the original creator.
What are the legal requirements for works made for hire?
"Just because you call it a 'work made for hire' doesn't make it so."
We’ve previously discussed protecting your brand by registering and enforcing your trademarks. But what about the unique content you create? Enter copyright law. Copyright protects “original works of authorship.” This can be anything from written works like books and articles, to musical and artistic creations, even computer programs and architectural plans. Copyright is an important area of law, not just for creatives, but any entrepreneur who creates content or uses content created by someone else.
Just what does copyright protect? And why should you register your copyrights?