PRELIMINARY INTELLECTUAL PROPERTY AUDIT Trademarks and Service Marks
The protection of marks, including word marks, designs and slogans which you have adopted, or may wish to adopt, for use in connection with your goods and services is vitally important. You need to assure that your marks are protected from misuse by others. In addition, you need to assure, prior to making a commitment to a new mark, that your proposed mark may safely be used without challenge by a third party.
·Are you currently using the ® symbol in connection with marks which you have federally registered?
·Are you currently using ™ and SM in connection with trademarks and service marks which have not been federally registered?
·Does your organization routinely have proposed marks fully searched prior to the commencement of usage or the undertaking of other significant commitments? Bear in mind that state registrations, state licenses and articles of incorporation in no way provide either clearance or protection for your marks.
·Have efforts been taken to procure trademark registrations in foreign countries where you do business or intend to do business at some point in the foreseeable future? It is vital to bear in mind that in most countries trademark rights exist solely by virtue of being the first party to file an application for registration and that first usage of the mark in a foreign country, and even long usage of the mark in the U.S., will not likely provide you with rights abroad.
·Are you involved in the licensing of any marks, either as a licensor or a licensee? Bear in mind that permissions to or from a third party to use a mark without the acknowledgement of assurance of quality control over the goods or services offered under the marks will most often destroy all rights in the involved marks.
·Are your marks policed on a regular basis either internally or through a watch service? You need to put in place some mechanism whereby your market, and closely related markets, are policed in order to assure that your marks are not being used by competitors or third parties in the same or closely related business sectors.
To the extent that your business utilizes print or electronic advertising, photographs, film, images or other creative expressions which, if used by a competitor or third party, might result in a loss of business or other disadvantage to your enterprise, you should take steps to establish and protect your copyright in such materials.
·Do you include a copyright notice on such materials? This is a no-cost item as you may include the copyright notice even in those instances in which you have not federally registered your copyright.
·As to those creative works which might most likely be the subject of copying by others and as to which such copying might significantly harm your business, you should seriously consider the filing of an application seeking federal registration of your copyright. In almost all instances federal copyright registration is a relatively simple and inexpensive undertaking.
Trade Secret Protection
Your proprietary and confidential information, be it the composition of a unique product or your company’s marketing plans and customer lists, may well be the lifeblood of your enterprise. It is important that such information receive the attention and protection it deserves.
·Is access to such information closely guarded within your business?
·Are disclosures of such information to third parties, including consultants, limited and made only after obligations of protection and confidentiality are acknowledged by those who might receive such information?
·What internal safeguards are taken to assure the preservation of confidentiality in connection with such information and materials? The laws of virtually all states require consistent diligence in the treatment of proprietary and confidential information for such to be afforded the protection of state trade secret laws.
The unparalleled expansion of use (and misuse) of the Internet has provided enormous opportunities for virtually all businesses but also requires legitimate businesses to proceed cautiously.
·Does your website contain adequate copyright notice?
·Are your trademarks and service marks designated as such throughout your website?
·Are the written agreements entered into with those who may design or host your website specific in acknowledging your exclusive ownership in the website and in the content appearing at such?
·Are your marks and/or creative materials being used in impermissible manners by competitors or third parties?
·Are your marks being used as domain name addresses by competitors or others active in the same or related fields of endeavor?
A competitor’s lifting of your advertising materials or its use of photographs or other images of your goods in its advertising may well confuse potential purchasers or, at a minimum, provide your competitor with a “free ride”. Unsubstantiated product comparisons may also cost you business.
·Are your competitors’ promotional materials and websites periodically reviewed to assure that such do not make improper use of your marks or materials?
·Are your competitors’ promotional materials and websites periodically reviewed for the purpose of assuring that such do not contain unsubstantiated product or service comparisons?
Prior to any significant commitment to the manufacture, use, or sale of products in connection with your business you need to assure that your activities will not constitute patent infringement. In addition, you should seriously consider, early on, the possibility of obtaining patent protection for those products, improvements, and innovations generated by your business.
·Have you obtained an opinion of counsel in connection with the products made, used or sold by your business?
·Do the agreements you have entered into with suppliers, etc., provide indemnification to your business in the event that your manufacture, use, or sale of such goods renders you liable for patent infringement?
·Do you need a license under one or more existing patents in order to safely make, use, or sell your goods?
·Do you require assistance in connection with efforts to design around the claims of an existing patent of relevance to your business activities?
·Have you, very early on, in the development of a product or improvement, sought the advice of patent counsel in order to safeguard your potential right to patent your inventions both in the U.S. and abroad?
·Have you considered the possibility of actively licensing your businesses’ patented inventions and creating an additional royalty stream for your business by doing so?
·Have you considered the strength (or weaknesses) of a possible acquisition from the perspective of its patent portfolio?
Employee and Independent Contractor Issues
Written and unequivocal agreements with your employees and with outside parties who provide services to your business, entered into early on, will ordinarily avoid potentially damaging and unquestionably expensive disputes down the road.
·Do you have written and executed understandings with employees clearly delineating the employees’ obligations of nondisclosure and noncompetition within a reasonable period of time after leaving your employ?
·It is imperative that a written agreement be entered into with independent contractors acknowledging your exclusive ownership in copyrights in works and materials generated on your behalf by the independent contractor. Moreover, it is imperative that such agreements be entered into prior to the creation of the work in question. Do you routinely include in your agreements with independent contractors (which may include advertising agencies, software designers, etc.) language which will bestow ownership in the materials they create in your company?
Hopefully, you will find this preliminary IP Audit helpful. It is, of course, not intended to be exhaustive. Please consider those issues which are, or might become, relevant to your enterprise and call, write, or drop us an email in the event that you have questions or if we can offer assistance in connection with these or other matters.
Hall & Vande Sande Phone: (301) 983-2500 Email: firstname.lastname@example.org 10220 River Road, Suite 200 Fax: (301) 983-2100 Potomac, Maryland 20854