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March 9, 2022
It’s easy to think of the physical aspects of your organization’s personal property. The computers, the desks, the chairs, the awards on the wall… those all belong to your business. Intellectual property, on the other hand, may not come to mind as quickly when evaluating business assets. “Intellectual property covers a number of assets that aren’t your conventional property, like personal or real property, but the law treats and recognizes as having a lot of property-like qualities,” intellectual property attorney Andy Nelson says. These assets can include inventions, literary and artistic works, symbols, images, names, logos used in commerce and more. Here’s what intellectual property rights are and how you can protect your brand.
Intellectual property rights typically fall into four major categories, including patents, trademarks, copyrights and trade secrets. Patents are a type of intellectual property that affords protection to your invention and can include your brand’s machinery, ornamental features, devices, new useful products or even methods of doing things. Copyrights are protections afforded to an author’s creations and can range from literary written works, graphic arts, photography, architectural drawings, audiovisual works and more. “Copyrights cover creative endeavors and give the author the right to control copies and adaptations of those products,” Nelson says.
Trademarks are a part of a brand’s commercial identity. “Trademarks are the distinctive things that connect your brand to your consumer,” Nelson says. “These can include visual representations, slogans and audio.” And finally, a trade secret is something a business keeps secret that gives them a competitive advantage over others – think The Colonel’s secret Kentucky Fried Chicken recipe, Google’s search algorithm, Mr. Krabs’ secret formula in Spongebob (kidding) or the New York Time’s Best Seller List (not kidding).
These four categories of intellectual property are the building blocks for securing your brand. Combine them with the following seven tips and you’re on your way to protecting your brand’s intellectual property!
Before you put fences around your property, you have to know what property you have. This can be achieved through a self audit and inventory. “You’re looking for audiovisual content, brand identifiers and your ‘secret sauces,’” Nelson shares. “Think about what you have, write them out and then define them.” This process will help you identify what’s trademark law, copyright law and patented.
There are two different ways to formally register your brand name. The first is through a state trademark registration, which registers your trademark and its rights in one specific state. The second is through a federal trademark registration, which registers your trademark with the United States Patent and Trademark Office (USPTO) and creates rights through the entire United States and its territories. Federal registration also includes your trademark in the USPTO’s publicly accessible database and allows you to use the ® symbol. The decision to register your brand name depends on what you plan to do with your brand, Nelson says. If you’re planning to make large expansions in the future on your own or through a brand acquisition, a federal registration may be the way to go.
So, what about global trademarking rights? As the USPTO website states, “while there is no such thing as a ‘worldwide trademark’ or ‘worldwide trademark registration,’ you can register your trademark in multiple countries.” This is done through an international treaty called the Madrid Protocol, which allows you to file a single application that can be applied to over 100 member countries.
No matter which trademark registration you pursue, you’ll need to do your due diligence and conduct an appropriate search to avoid potential infringement, a cease and desist letter or even a lawsuit from another brand. This peace of mind can be found by searching the web or USPTO trademark database for uses of the images and words you want to claim. When searching for brand names, you want to look for a variety of spellings. “Look to see if others are using a mark that you want to use or something very close to it in connection with similar goods or services,” Nelson shares. “Break compound words in two, put two words together into one compound word.” If what comes up in your search is completely unrelated to your industry, it’s likely not something to worry about.
Another way to claim ownership over your trademarks is through your website. You can state your trademarks on the “About” page that states that your brand name and design are trademarked. The terms and conditions on your website should also be updated to include a statement that all intellectual property, such as your brand name, logo, slogan and other branded elements, are owned by your business, Nelson says. You’ve likely seen this done by many popular brands. Here are a few examples from Nike, Target and Hoag.
You may work with an attorney to set up your legal trademarks and terms/conditions, or find/develop a template that works for you. Not a one-and-done solution, these terms should be checked and updated regularly.
Once your brand’s trademark is registered, it’s up to your company to monitor unpermitted uses. As stated on its website, the USPTO is “not an enforcement agency, so you will be responsible for pursuing any infringing users.” One strategy that Nelson recommends to monitor your brand name is to set up a Google Alert that notifies you every time your brand name or slogan is mentioned. This form of social listening, or identifying and assessing what’s being said about your company online, can prevent brand damage caused by consumer confusion and also help you evolve your brand strategy. Examples of this include Expedia’s decision to change its Vrbo vacation rentals brand name stylization to match the way fans were pronouncing it: “ver-boh” instead of the acronym VRBO. Another example of social listening includes General Motors going from an internal memo to solely use the name “Chevrolet” to create brand consistency and then eventually leaning into the “Chevy” nickname and even creating a “Chevy Truck 100” Pandora radio station. This process of paying attention to variations of your brand name may also lead to another trademark registration: your brand’s nickname or slogan, as was done with Pizza Hut’s “No One Outpizzas The Hut” or Coca-Cola’s “Diet Coke” registrations.
Logo creation, phrases to represent your brand, jingles and more… If you’re hiring independent contractors or freelancers to design any of your brand assets, make sure your company maintains ownership of these brand elements. This can be done through a written agreement that describes the terms and ownership, and is signed by both the commissioning party and the creator. If a project qualifies as a “work made for hire,” and is created by an employee as part of their regular duties or as an expressly written agreement between a creator and commissioner, the copyrights are retained by the organization, The U.S. Copyright Office states.
You can also protect your brand’s sounds through a service mark. In order to function as a service mark, record must show that there is a direct association between the asserted mark and the service. It’s important to note, per the USPTO, that “it is the perception of the ordinary customer that determines whether the asserted mark functions as a service mark, not the applicant’s intent, hope, or expectation that it do so.” In very rare instances, this service mark can include sound, as well! You know NBC’s iconic three-chime sound? Those three musical notes, G-E-C played on chimes, have been continuously renewed as a service mark since its registration on July 13, 1971—after NBC had already used the sound since the 1920s. Other recognizable noises that have gone through the review process and been accepted as sound marks include ESPN’s six-note introduction, AOL’s online chime and even the Pillsbury Doughboy’s giggle. Auditing your brand on what that “secret sauce” is as Nelson describes it and what characteristics are uniquely your own will allow you to have an idea of what could be licensed.
With ever-changing elements of social media, Nelson shares that legalities aren’t always straight-forward and typically occur on a case-by-case basis. One area to explore is fair use, which the U.S. Copyright Office evaluates in four major ways, including:
Using in-app audio for videos like Instagram reels or TikToks, seeing which memes are frequently used and making thoughtful risk assessments can help brands navigate the evolving social media landscape when it comes to copyright and fair use.
While there are numerous factors to protecting your brand’s intellectual property, the payoff is worthwhile. It’s common for people to confuse the different factors and categories of intellectual property, Nelson shares, and that’s why being proactive in your process to meet with a legal team can set your brand up for continued success. When it comes to social media and strategy, brand naming and campaign creation, establishing an agency relationship can also help keep you organized and secure. To learn more about intellectual property, tune into our upcoming podcast with attorney Andy Nelson. Subscribe to our newsletter below to receive a reminder!
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