Intellectual Property

Protecting your intellectual property may protect your ability to stay in business.  Dennis Zink interviews Joseph Long, a patent attorney and licensed professional engineer, who tells us how and when to protect these assets with trademarks, copyrights, patents and trade secrets.

Intellectual property and the small business

Published: Monday, June 16, 2014.

Are you aware that your small business may be able to protect its business trade name from misuse by others? Can you and should you use “TM,” for trademark, for your product or service? When can you use the “R” in the circle?

In our small business podcast series, “Been There, Done That!,” I interviewed local patent attorney and licensed engineer Joseph Long in his area of expertise. Here are some excerpts.

Q: What are the different types of intellectual property?

A: There are four basic types: copyright, trademark, patents and trade secrets. Copyrights are rights and original works and creative expressions held by their creator. Ideas and discoveries aren’t generally protected by copyrights, but the way in which they are expressed may be. Trademarks are names or designs that identify a product or a service as being from a particular provider; examples might be McDonald’s or Ford Mustang. Patents protect ideas or inventions. The rights are held by the inventor, and the rights are to prevent others from making, using, selling, or importing the invention. Trade secrets are generally confidential information controlled by the owner for their benefit. A popular example is the formula for Coca Cola.

Q: How should a business protect its copyright interests?

A: A work is protected under copyright the moment that it’s created and fixed in a tangible form. Examples of tangible work may be drawings, physical models, graphic designs, written text, photographs, videos, or computer code. In general, registration of copyrights is completely voluntary; however, you have to register your copyright with the government if you wish to bring a lawsuit for copyright infringement. Generally, only the author or creator of a work has a rightful claim to its copyright. An important exception to this is a notion of works made for hire. When a work is made for hire, an employer is considered the author, even if an employee actually created the work. Employment, contractor agreements, or contracts, generally including explicit agreement that works created as part of a work for hire are the rights of the employer. A business should seek to retain the copyrights to all materials generated in relation to its products or services through such agreements.

Q: How should a business protect its trademarks?

A: Rights in a mark can be established simply based on using the mark in commerce without having to register it. However, like copyrights, federal trademark registration can provide numerous legal advantages. When you merely claim the rights to a mark, you can mark it with a symbol “TM,” often applied as a superscript. This is a designation to put the public on notice or to alert the public that one is claiming ownership of the mark. Regardless of whether you’d ever file an application, you can use this TM designation. You can only use the federal register trademark symbol, which is a capital R in a circle, after the United States Patent and Trademark Office has actually registered the mark. Registration is achieved by filing an application and going through a small procedure. The purpose of a trademark is to prevent an unapproved source from providing a good or service in a way that might confuse the consumers as to who the actual source is. Accordingly, a business that’s operating with a trademark should always seek to protect the inappropriate use of the mark by others to retain its value.

Q: What types of things can be patented?

A: Generally, anything that anyone conceives can be patented. It can be any useful process, machine, manufacture or composition of matter. A process can be any act or method, a machine is fairly obvious, a manufacture refers to any articles that are made, and a composition of matter generally relates to chemical compositions or mixtures. These categories taken together include pretty much everything that can be made by man or any processes for making any products. A process or method can include a method implemented on a machine. Such a machine may include a computer, and this is generally the basis for claiming inventions that may be implemented using computer software, or instructions executing on a computing machine. Abstract ideas and laws of nature are generally not afforded patent protection.

Q: Could you explain the difference between a design patent and a utility patent.

A: A design patent generally covers the physical appearance or the form of a product, while a utility patent covers what the product actually does. These are two different types of patents. Design patents can be very limited in their value at times, simply because competitors can get around infringing. A competitor might get away with infringing a design patent by simply making something look a little different, whereas a well-drafted utility patent or claim will spell out exactly what it is that a thing does. Then anything, no matter what it looks like or how it’s made, falling within that definition of what is being usefully done will infringe the patent. This generally provides stronger and more valuable protection.