Intellectual Property – Understanding and Protecting Your IP

Generally, we talk about intellectual property (IP) when it comes to protecting intangible assets. Our unique thoughts and ideas. This affects just about anyone:

  • Creative people wanting to copyright their work. Anyone from a writer or musician, to a photographer or architect.
  • A business promoting their brand using trademarks.
  • The coding whizz with an exciting app or computer program.
  • Have you come up with a really cool invention, or innovative method? Then you probably want to know more about patents and trade secrets.

Intellectual property has become one of the most valuable commodities. No matter who you are, a good understanding of the topic is going to give you the edge.

What is Intellectual Property?

If you ask the learned academics, you’ll get an answer like this:

“In general terms, intellectual property is any product of the human intellect that the law protects from unauthorized use by others.”

Source: Legal Information Institute Cornell University

This doesn’t exactly give regular folks, like you and me, a good idea of what IP is actually about. They will go on to explain the difference between tangible and intangible assets, using complex legal terms.

My aim is to explain intellectual property in a way that normal intelligent people can understand, without going to law school to do so. It isn’t that tough when we cut through all the legal jargon.

If you buy a house, you get a title deed. You have a registration for your car. This proves that you are the legal owner of this property. Copyrights, trademarks, and patents, provide the same rights of ownership for ideas or creative work.

It’s all about the value of human creativity and your right to protect this. Because there is basically no limit to our imagination, things can get complicated. It’s not too easy combining the rigid confines of law with the freedom of unrestricted thought.

My great idea might be very similar to yours. Who came up with a concept first? Who owns that idea? Can any invention or creative concept be owned?

Intellectual property laws exist so that anyone can own their creative work or unique ideas, without unnecessarily restricting the rights of others. So it’s a two-way street.

When it comes down to it, defining ownership of intangible assets is a good deal more complicated than signing the deed to a house.

To provide a full picture, I’ll be discussing intellectual property under the following headings:

  • Copyright: The ownership of original content. This includes books, internet publications, ph
  • Trademarks: Identify a brand. This can be logos, words, phrases, or anything used to make your brand distinguishable.
  • Patents: Designs or methods associated with an invention or process.
  • Trade Secrets: Non-disclosure of secret information related to products and methods.

Copyright

I’m sure you have a good idea what the © copyright symbol means. We see it in every publication from books to websites.

Most of us have a basic understanding of how copyright works. Then there’s the finer details. Stuff you may not be aware of.

All sorts of urban legends exist, like the “poor man’s copyright”. Most of these are false or misleading. Only partially true, at best.

If you’re serious about understanding copyright, best stick to the facts.

What is copyright?

I like the way Copyright Alliance answers this question:

“A copyright is a collection of rights that automatically vest to someone who creates an original work of authorship – like a literary work, song, movie or software.”

While this is a pretty basic definition, there’s one important word that should be highlighted: Automatically.

When a creative work exists in tangible form, the author has automatic copyright.

As I type these words, I own them. When I save the document, it becomes tangible and can be shared. The copyright now automatically belongs to me. I don’t have to register it to own it.

I can use this intellectual property as I see fit. I can sell this work... If anyone is willing to pay for it.

A video clip or audio recording on your phone enjoys the same privilege. Even words or sketches scribbled in a notepad.

Now for the big question: Since I already own my creation…

Why do I need to register a copyright?

No country in the world requires registration as a condition to recognizing your copyright in the work you created. Where things differ is in those countries’ approach to your ability to enforce your copyright without registration.

Most countries don’t have a government-approved agency in charge of copyright registration, and provide no substantive or procedural benefits to informal registrations you could get through commercial entities. Yes, you can use your registration as evidence that your work (and your claim to it) existed at a certain time, but that’s pretty much it.

In some countries, your options as the owner of an unregistered copyright will be limited. The United States is a prime example of a country where copyright registration, albeit not required in terms of ownership, comes very handy in case someone steals your work.

Say you find your prized Instagram pic on someone’s site. You get mad. You want those scumbags to pay for stealing your IP. This is when things could get nasty.

My first bit of advice would be to take a moment to calm down. Litigation is expensive. Going to court is no fun and could go on for months, even years. Carefully consider this before you proceed.

You can send those despicable thieves a cease and desist letter. Then hope they comply.

If you’ve lost money, or they have profited from the IP theft, you can sue for actual damages. This can be tricky, as it’s not always easy to prove.

In the United States, that’s about all you can do if your copyright has not been registered.

A registered copyright is proof of ownership. This can come as a great advantage in court. Your lawyer will have more options when suing for damages.

It doesn’t take much effort to register a copyright, nor is it particularly difficult or expensive. A registered copyright can be worthwhile if these things are important to you:

  • You want your copyright to be Public Record. Your original content is placed on a database. Anyone can search for it. They will see that you have a registered copyright for that work.

    Note that when you register copyright in Canada, all you do is register your claim to a title of a work, without any mechanism to submit the actual work to the registrar, which renders this first benefit of little use.

  • You may want to file a Copyright Infringement Lawsuit. A registered copyright is valid proof of ownership in court.
  • Apply for Statutory Damages. In the United States and Canada, the general rule is that to get the court to order the defendant to pay, you would need to prove not only that the defendant did something bad, but also that you have suffered a loss as a result. The amount of the payout is directly linked to the severity of your loss (typically referred to as actual damages).

    Statutory damages, on the other hand, are an exception from the rule. Once you’ve proven that the defendant did something bad, you are automatically eligible for an amount of money prescribed by law. Statutory damages can be claimed in addition to actual damages, and can be up to $150,000 for each instance of willful infringement.

How much does copyright registration cost?

Copyright registration fees will depend on what you are applying for—and where.

For example, registration of a single-author work costs about $45 in government fees in the U.S. It should be roughly the same in other countries.

If you use a lawyer to file the application, they will usually charge around $300 - $400 for a basic application.

Electronic filing is the cheapest option, and you avoid standing in endless queues.

Copyright Requirements

You really don’t have to jump through too many hoops to obtain copyright protection. The bar is set pretty low.

You need to meet three basic requirements:

  • Original: While your work does not need to be unique, it needs to be your “independent creation.” Essentially, if it is not copied, you should be okay.
  • Creative: When it comes to copyright, creativity is not judged from the subjective perspective of “great vs. horrible.” All that’s needed is a “modicum of creativity,” meaning that your work must result from an attempt of a human mind to create something that hadn’t existed before. While nothing prevents you from using computers in your creative process, a work cannot be purely computer-generated or so mechanical that no amount of creativity is needed to create it. Copyright is seldom rejected for being uncreative.
  • Fixed: This requirement is more about the ability of others to objectively perceive the work outside of the author’s head than it is about fixation. It simply means the work must exist in a tangible form that can be shared.
What is protected by copyright?

It is easier to start with what is not protected by copyright. Copyright does not protect ideas, facts, or methods.

Harry Potter author, J.K Rowling, cannot own the idea for a school of magic. Anyone can write their own book using the same idea.

Only the actual content is protected. This would be the way it is written. No one can copy a paragraph from that book and claim it as theirs.

As the owner of the work, you own an “exclusive right to use” your work. In context of intellectual property, it means you can do three things:

  • Exploit your work on your own;
  • Allow others to use your work through sale or licensing; and
  • Stop others from using your work without your permission.

Copyright owners have the exclusive right to use and allow others to use their works in any of the following ways:

  • Publish
  • Make copies of the work or any substantial part from it
  • Distribute such copies (for free or for a fee, for sale, through rental or otherwise)
  • Create derivative works based upon it
  • Perform or display in public
  • Broadcast
  • Make available online
Moral rights

The concept of moral rights revolves around the idea that even when an author licenses out or sells his economic rights to his creative work to someone else, it would be fair for the author to retain some degree of control and recognition over the work he created.

The two more universally established moral rights are:

  • the right to be recognized as the author of the work. For example, just because a composer got paid in exchange for allowing an artist perform and record a song doesn’t mean that the artist can now claim that the song was written by the artist.
  • the right to prevent use and other modifications of the work that would damage the author’s reputation. For example, a writer who allows a film company to adopt her book into a movie, would typically have the right to block such use if it turned out, as a surprise to her, that the film was pornographic.
Works for Hire and Works Created Within The Scope of Employment

Typically, the author of the work is deemed to be the first owner of copyright in that work. For example, if you write a song, you own copyright to it. If you create an app, you own copyright to the code. If you shoot a video, you own copyright in the video. And so on.

However, when you create the work within the scope of your employment duties, whatever you created is owned automatically by your employer. So as long as you’re creating content as part of what you’ve been hired to do, even though you remain the author of your content, the first owner of copyright in that content is your employer.

Notice that this only applies to formal employment arrangements and does not cover independent contractors. Now that the world is moving towards the gig economy, more and more content is being created on demand outside of a formal employment relationship.

So what about situations when you pay someone to create something for you without formally hiring them as your employee?

You need a contract that would state that the creator assigns all their rights in whatever they will create for you over to you. In that case, the creator is considered to be the first owner of copyright but the copyright is then transferred to whoever paid the contractor to create the work.

In the U.S., there are several categories of works where the copyright can initially vest in the person who pays a contractor to create a work outside of a formal employment relationship. Called “works for hire,” these works must fall under one of the nine limited categories of works:

  1. a contribution to a collective work
  2. a part of a motion picture or other audiovisual work
  3. a translation
  4. a supplementary work
  5. a compilation
  6. an instructional text
  7. a test
  8. answer material for a test
  9. an atlas.
What is copyright infringement?

When copyright material is used without the owner’s permission, this is an infringement.

If you intend using copyright-protected IP, you need written permission from the author, unless such use can be excused as Fair Use (or “Fair Dealing” in Canada).

The Fair Use clause allows you to use copyrighted material for any of the following purposes:

  • Criticism
  • Comment
  • News reporting
  • Teaching
  • Scholarship
  • Research

In addition to having a fair purpose, in order for your unauthorized use to be considered fair, the amount of such use should also be fair. You cannot repost the entire new episode of Star Wars on your website under the guise of “news reporting.”

Also, unauthorized use excused under the fair use doctrine does not remove the requirement for the use to acknowledge the author.

Traditionally, you are required to state the author’s name and the publication. This applies to print media, like a published book.

If you’re going to use a quotation from another source on your website, I recommend providing a link to the original webpage. You are acknowledging that the content is not yours. The link provides a reference to the original content.

How long does copyright protection last?

The general rule in most countries is that copyright automatically belongs to the author for their lifetime plus a period of 70-years after their death. This is the international standard, used by most countries.

In Canada the period is the life of the author plus 50 years.

The copyright does not need periodic maintenance and cannot be renewed beyond the initial term.

Of course, as always, there will be exceptions for specific types of works (for example, for audiovisual works or works for hire), specific situations (unpublished works or works published under a pseudonym), or just different rules in different countries.

In either case, once the copyright over a work expires, the work is said to be in the public domain, which means that anyone can use the work without asking permission. Note that derivative works based on a work that is in the public domain may still be protected under copyright. For example, plays by Shakespear are in the public domain but Al Pacino’s Merchant of Venice, filmed in 2004, is very much protected by copyright.

Is your copyright recognized internationally?

The main international treaty that governs copyright is the Berne Convention that came into force in 1886. Back then, a bunch of clever guys got together to set international standards for copyright law.

Most countries have joined over the years making copyright pretty much an international thing.

A copyright in one of these countries is accepted by all of them. And yes, if, let’s say, an American writer writes a book in English, he would have the rights to Norwegian translations of that book in Norway (and elsewhere).

With the exception of a small (and largely irrelevant) group of non-member countries, your copyright is internationally recognized.

You can check the list of Berne Convention member countries here.

Trademarks

Dealing with trademarks has everything to do with establishing brand identity. Marketers can be really creative with these concepts.

As a result, the topic can become a little complex at times. Rest assured, I’ll be taking you through this labyrinth, one easy step at a time.

What is a trademark?

The World Intellectual Property Organization (WIPO) offers us this definition:

“A trademark is a sign capable of distinguishing goods or services from those of other enterprises”

Doesn’t seem like much at first. That is until we look at how all the pieces fit together.

While we may hardly notice the effect it has on our decisions when buying a product or using a service, branding is an unavoidable part of our everyday lives.

Price can certainly be important. Yet, we often make these choices based entirely on our perception of the brand. I’m blown away by the crazy money some people are prepared to spend, simply because they think a particular brand is cool.

It’s all about placing your brand head-and-shoulders above all others. Making it sexy, appealing, desirable. Trademarks are the tools used to achieve this.

Trademarks are Assets

Any definition of intellectual property will use the phrase intangible assets quite a bit. Now that we’re talking about trademarks, those words are going to get real—in a big way.

Successful trademarks often become iconic.

When you see the words “Just Do It”. The first thing that comes to mind is the Nike “Swoosh” logo. Right?

In modern business, trademarks are often more valuable than all other assets owned by a business. Worth more than buildings, and traditional high-value assets.

The Google brand is worth over 323 billion dollars. That’s almost 30% of Google’s net value. When we’re talking about this kind of money, trademarks start to take on a completely new meaning. An asset with such potential must be protected—and long before it reaches anywhere near that value. Most big brands were trademarked before anyone hardly knew them.

If you’re serious about obtaining trademarks for your business, you will probably end up using a trademarking expert, someone who’s been there and done that—a lot.

But even before embarking on this journey, you want to know what you’re talking about. Get on top of all that confusing legal mumbo-jumbo.

I’m going to help you with this. So that you can approach this mission with total confidence.

What can be registered as a trademark?

Quick answer: just about anything you can think of—as long as it helps the market distinguish your products and services from identical or similar products and services of everyone else.

When you go to a supermarket, what do you look at when you go about picking your ketchup, AA batteries, or shampoo? These would be your prime candidates for trademarking.

The most obvious would probably be your company name or your personal name.

Note that trademarking your business name is very different from incorporating your company or registering an LLC. Corporate registries responsible for your corporations and LLCs deal with names of legal entities, whereas trademarks focus on products and services marketed under certain names. Trademarks are federal whereas most incorporations are done on a state (or provincial, if you’re in Canada) level.

Here’s a simple example that illustrates the difference. Let’s say, you start an accounting firm in New York. You register a corporation as XYZ123 Accounting Inc. It means nobody else in New York will be able to incorporate their business as XYZ123 Accounting Inc. But this incorporation will not help you stop a Texas company, ABC987 Accounting Inc., from offering their services online under XYZ123 Accounting brand.

Because from the trademarking perspective, you are not protecting the name of a company. You are protecting a name under which the company is making its products and services known to the world.

That’s why the second common thing to trademark would be the names of your products and names of your services.

Think about it. Apple did not start a separate company to sell iPhones. Yet, Apple owns multiple trademarks that cover the iPhone brand. iPhone is a trademark that protects the name of one of Apple’s products. Similarly, iTunes is a trademark that protects the name of one of Apple’s services.

Next branding asset to consider trademarking is your logo. If you have a recognizable design that makes people think of you when they’re thinking of your products and services, you want to be the only one out there who can use the logo to market products and services in your niche.

Catchy slogans are always a winner. Unless your competition uses them, too. Just imagine if Adidas and Reebok could also use “Just Do It” to sell their sneakers…

A unique font, shape, device, or design.

Coca-Cola, arguably the king of branding, has some of the best examples of these. Everything from the shape of the Coke bottle and dynamic ribbon device used in their branding, to their fonts.

Sounds, like the Windows startup tune, MGM’s roaring lion, and Nokia ringtone, are also trademarks.

Even a smell or color can be trademarked. Magenta for a cell phone operator or turquoise for jewelry, or red for shoe soles ring any bells?

Trade dress, which can be the product packaging or a unique display cabinet. Possibly even the configuration of the product. Distinctive décor can be a trademark for service providers, like a restaurant franchise, or hotel.

Cartoons and Fictitious Characters: like Mickey Mouse, Mr. Clean, or Ronald McDonald.

Trademarks are all about goods and services

Despite a common misconception, trademarks don’t give you a monopoly over words, images, phrases, colors, and sounds.

That’s why it’s perfectly OK for someone to trademark dictionary words.

Trademarks are not limited to newly invented words.

And no, there is no risk that “greedy corporations” will appropriate our language.

The reason behind it is that trademarks are designed to give you a monopoly over the mental association between your brand (words, images, phrases, colors, sounds, etc.) and specific products and services you want your brand to be known for.

Once again, Apple does not own the word “apple”—except in connection to products and services it offers to the marketplace.

McDonald’s does not own the phrase “I’m Lovin’ It”—except for restaurant services.

UPS does not own color brown—except for delivery services.

That’s why several companies can own the exact same trademark—as long as they operate in completely separate industries.

That’s why you can have an airline and a faucet company share the same name, Delta.

That’s how you can have a medical insurance company and a welding services firm share the same name, Blue Shield.

To make navigation between products and services a little easier, most countries agreed to a classification that puts all possible products and services into 45 categories, called classes.

There are 34 classes of goods (physical products) and 11 classes of services.

The most notable classes are:

  • Class 005: Meds and supplements
  • Class 009: Gadgets and downloadable software
  • Class 014: Jewelry
  • Class 025: Clothing and footwear
  • Class 032: Beer and non-alcoholic drinks
  • Class 033: Alcoholic drinks
  • Class 035: Advertising and business development services
  • Class 036: Insurance and finance
  • Class 041: Education and entertainment
  • Class 043: Food & hotel services
  • Class 044: Medical services
  • Class 045: Legal services
Service marks vs. trademarks

You may have heard the term “service mark.” For many years, it has now been fully interchangeable with the term “trademark in association with services.”

YouTube is a service that provides a platform for streaming video content, and as such, the brand YouTube is both a service mark and a trademark.

In other words, every service mark is a trademark but not every trademark is a service mark, because there are a great many trademarks in association with physical products.

What cannot be trademarked?

With trademarks defined as a “sign capable of distinguishing goods or services from those of other enterprises,” you might be misled into thinking that you can trademark pretty much anything.

Not too fast!

Let’s talk about what cannot be used as a trademark.

While the definition is broad, it contains a key limitation that is crucial for understanding of how trademarks work.

I’m talking about the words “capable of distinguishing.”

If what you’re hoping to trademark is not capable of distinguishing your products and services from identical or similar products and services of everyone else, you can’t trademark it.

While there are many specific rules around what is not trademarkable, they all fall under two groups:

  1. You can’t trademark something that by its nature could not help the market distinguish your products and services from everyone else’s.
  2. You can’t trademark a brand that is too similar to a brand already owned by someone else.

Let’s go through these two broad categories.

The idea that you can’t trademark something that by its nature can’t help the market distinguish your products and services revolves around the principle of fair competition.

Trademarks are not designed to help you gain a monopoly over your products and services. Trademarks are there to give you a monopoly over brand identifiers that help the market tell your products and services apart from everyone’s.

It’s fair that you shouldn’t be able to call your hamburger stand “McDonald’s” but it would be patently unfair if McDonald’s could trademark a picture of a burger to prevent you from making and selling hamburgers as such, under any name.

How would fast-food restaurants promote their burgers, if they weren’t allowed to use a descriptive image of their most popular product?

Hopefully, this makes sense, but let me give you a few specific examples of what, by its nature, cannot be trademarked:

Generic words relating to your product. No one selling apples can own the word “apple.” Others selling products that have anything to do with apples must be able to use this basic, but very necessary, word.

Hang on a minute, Apple is a registered trademark.

What gives? Did Apple bribe someone to trademark this forbidden generic word?

A manufacturer of electronic devices was allowed to monopolize this word because they are not in the grocery business. An Apple phone has nothing to do with the actual fruit. Apple’s trademark does not prevent apple growers from selling apples. Neither does it prevent other phone makers from selling phones (as long as they don’t refer to those phones as Apple or anything closely related to Apple.)

Descriptive words like cold beer.

Let’s face it, most of us enjoy a cold one but no one can have a monopoly on the word “cold” if they sell beer. Or soft drinks for that matter.

Before I continue, time to hit the pause button, and throw in yet another curveball.

When we talk about generic and descriptive words, it’s only in reference to the actual word that cannot be owned. That word can still be used as part of a trademark.

In 1958, Coca-Cola registered the trademark: “The Cold Crisp Taste of Coke”. This gave them exclusive ownership to the entire phrase, not the individual words.

I wasn’t joking when I said things could get complicated.

Deceptively misdescriptive words present a false representation of your product.

For example, you can’t trademark “Speed-Reading for the Blind” if your product doesn’t actually deliver on the promise.

Similarly, you can’t trademark “Miami Wine” if your wine does not come from Miami.

Personal Names: not only do different countries have different rules when it comes to trademarkability of personal names, they have different rules for your first name, last name, or full name.

The idea here is to prevent the use of trademarks to stifle competition from people who happen to have the same name you’re trying to trademark.

You aren’t supposed to trademark Bob Smiths out of existence.

That’s why you are generally not allowed to trademark purely only your last name (Smith) or full name (Bob Smith)—especially if it’s a common name.

But there are exceptions.

The more unique or well-known your name is, the better your chances of getting it trademarked.

That’s how Tommy Hilfiger, Bon Jovi, and Donald Trump managed to get their names trademarked. Oh, and while we’re on the topic of celebrities—you are not supposed to take a free ride on someone else’s fame, so are not allowed to trademark their name without their consent.

First names are fair game. As long as there are no prior confusingly similar marks, John, Peter, Paul can all be registered as trademarks.

A combination of several names is also trademarkable.

Here are a few famous examples: Procter & Gamble, Hewlett-Packard, Smith & Wesson. The list goes on and on.

Finally, a personal name combined with another term can also be trademarkable. Bob Smith’s Accounting is fair game.

But even in the case where personal names are trademarked, it doesn’t mean that everyone who happens to have the same name must immediately go and change their name to something else. If you happen to be a Tom Hilfiger, you can go about your life with no issues—unless you’re planning to start an apparel brand under your name. That, you will not be able to do—even if it’s legitimately your real name.

You are not allowed to trademark functional elements of a product.

For example, you can’t trademark the shape of a standard laptop in the hope that it would allow you to remain the only laptop manufacturer out there. You can’t trademark the black color for cameras.

In other words, you are not allowed to trademark something that would give you a monopoly over the product rather than an identifier that helps the market tell your products apart from everyone else’s.

In addition to things you can’t trademark because by their nature, they don’t help the market distinguish your products and services from everyone else’s, you can’t trademark a brand that is too similar to a brand already owned by someone else.

It’s common sense really. If someone else had already trademarked a brand and you would be allowed to trademark the same brand for the same or similar products and services, how would the mark be supposed to distinguish your products and services from those offered by the owner of the previously trademarked brand?

That’s why it’s crucial that you always do a comprehensive trademark search to check if your brand is available before you begin the registration process.

A comprehensive trademark search goes beyond spotting identical matches among registered trademarks. It will identify sound-alike, look-alike, and mean-alike marks among registered and previously applied-for marks.

Consider this example: a knock-out search for you would typically get from cheap online trademarking services would yield no results if you searched for “Micro-Soft Software Solutions”—simply because Microsoft never bothered to trademark a wrong spelling of their brand followed by two descriptive words.

But it doesn’t mean you would be able to get away with it if you chose to move forward with trademarking that.

Only with a comprehensive trademark search, will you have a good picture of whether you have a chance to get your brand trademarked—before you waste time and money.

How long does a trademark last?

Theoretically, as long as you renew it every 10 years, it can last forever.

Coca-Cola has been renewing the same trademark since 1892.

However, you have to be very careful not to miss the renewal deadlines. If you do, your trademark will be canceled and you would need to start the process all over again—assuming no one else jumps you to it.

In addition to the regular 10-year cycle, in the U.S. you need to prove to the USPTO that you are still using your mark between the 5th and 6th anniversary of the registration. Once again, miss that deadline, and they will cancel your mark. We’ve seen countless examples of business owners losing their brands because they didn’t pay attention to these deadlines.

Is your trademark recognized internationally?

With very few exceptions, a trademark is not recognized outside the country where it has been registered.

It means that to obtain world-wide protection, you would need to register your trademark in all world countries.

There are international (Madrid Agreement and Protocol) and regional (EUIPO in Europe and OAPI/AIPO in Africa) treaties that make registration in several countries at once a little cheaper and easier, but as a general principle, trademarks remain a country-per-country affair.

How do you register a trademark?

Filing a trademark application is very easy.

But it’s just a tiny (and the simplest step) of a process that usually takes over a year. In some cases, it takes 2-3 years to get your trademark registered.

That’s why there are so many cheap services out there that will gladly take your money to get your trademark filed… only for you to learn, months later, that they did it incorrectly.

The statistics are very telling.

68% of all trademark applications filed are initially rejected.

It gets even worse for trademarks filed by self-represented applicants. 81% of such applications are initially rejected. And unless your trademark application has an assigned attorney of record—which you will certainly not get with most online services that charge you a couple of hundred dollars to file your trademark,—you are considered a self-represented applicant.

If you don’t value your brand and want to take a gamble, go ahead.

But if you are determined to get it done right, make sure to ask the following five questions when you are shopping around for someone to help you get your trademarks registered:

  1. Does your fee cover a comprehensive trademark search with a registrability opinion?
  2. If your search reveals any issues with registrability of my brand, can I get a full refund if I choose not to move forward?
  3. Assuming I decide to move forward with my trademark, will your attorneys handle my application from start to finish, from filing to registration? Will my trademark have an attorney of record?
  4. Do you offer a fixed price that will cover unlimited responses to any and all office actions, including likelihood of confusion and descriptiveness? What’s the most will I pay for the whole thing in the most complicated scenario?
  5. Will I get my money back if the Trademarks Office rejects my trademark application?

At Trademark Factory®, we are very proud to answer yes to all these 5 questions.

In fact, if you find any other firm that does all this for one flat fee with a 100% money-back guarantee, we will gladly file your trademark for free.

Simply let us know.

We’ve been in business for 7+ years, and so far, nobody dared to copy our offer.

It’s still the “trial-and-error” services—and us.

How much does trademark registration cost?

Regardless of who does it for you, there will always be the government filing fees. In some cases, there will be government post-allowance and registration fees.

In the U.S., the government filing fees are now $350 per class of goods and services if you are filing your application using their TEAS Standard system, which offers enough flexibility for you. If you file your trademark application based on intent-to-use basis, there will be an additional post-allowance fee of $100 per class to get your trademark registered.

In Canada, the government filing fees are CAD $330 for the first class and CAD $100 for each additional class.

In the EU, the government filing fees are EUR 850 for the first class, EUR 50 for the second class, and EUR 150 for each class after that.

In fact, we’ve created a free government filing fees calculator that helps you determine how much you would be paying to get your trademark filed and registered.

The rest depends on who helps you with your trademarking process.

You can easily find someone to file your trademark for next to nothing. But with attorneys’ hourly fees piling up with every email they send you and with every response they file on your behalf, the whole thing can easily end up costing you $5k, $10k, or even more.

If you are looking for a way to trademark your brand with a guaranteed result for a guaranteed budget, check out our three packages to see what works best for you.

THINKING OF TRADEMARKING YOU BRAND?

Patents

A new invention can be really valuable. Even if it’s just a concept. A better way of doing things.

You’ve come up with an invention or concept that could be the next big thing. You’re probably super excited at the prospect of millions coming your way.

Before you make your next move, you’d best understand what patents are all about. It’s the only sure way of protecting this type of intellectual property.

What is a patent?

Let’s see what the international authority, WIPO, has to say:

“A patent is an exclusive right granted for an invention, which is a product or process that provides, in general, a new way of doing something.”

This kind of sums it up pretty well. Basically, there are two types of patents.

  • Product Patents protect the innovation behind a product or its specific feature. This type of patent protects the “what” of your invention.

    Here are a few examples: bluetooth headphones, a self-driving car, intermittent windshield wipers, touch screen, etc.

  • Method Patents protect the innovation behind a process of doing or making something. This type of patent protects the “how” of your invention.

    A few examples: a method for wirelessly transmitting sound, a method of operating an automobile that does not require driver’s active steering, a method of keeping the windshield clear during rain, a special method of manufacturing a touchscreen, etc.

You infringe on a product patent if you make or sell a product described in the patent, regardless of what method you use to manufacture the product.

You infringe on a method patent if you use the method described in the patent, regardless of what product you end up with.

Patent Requirements

Patents are extremely complicated. The general rules for patents are similar in most countries, but not exactly the same.

A patent may be accepted in one country and denied in another.

If you thought trademarks were complicated, we’re about to open up a whole new can of worms. Hold on tight.

I strongly suggest using an experienced patent lawyer for your application. Things will get tricky.

I’m going to list the general requirements for patent applications. This is pretty much an accepted international practice.

Worldwide novelty of the idea tops the list. Essentially, this means that the invention has to be new. It was not public knowledge anywhere in the world before the patent was filed.

Important tip #1: Don’t disclose any information before filing for a patent.

Speaking about your invention publicly, writing about it, or selling the product before the patent application is filed, may render your idea no longer novel.

Some countries allow a grace period for public disclosure by the inventor. In the U.S., you can apply for a patent within a year of you making your own invention public.

Important tip #2: Since patents require worldwide novelty, your own patent in one country can prevent you from getting the same patent in another country. According to the Paris Convention, you have a short window to file your patent in the countries you’re interested in after you file your first patent. Outside of that window, your invention becomes unpatentable—by you and everyone else.

Non-Obviousness / Inventive Step: The invention must not be obvious to a skilled person in the relevant field. It must require a good deal of out-of-the-box thinking.

This is where the most back-and-forth between inventors, lawyers, and the Patent office happens. The battle between “This looks obvious to me!” and “If it’s so freaking obvious, why hasn’t anyone come up with it before?” can go on and on and on...

Finally, the invention must be useful. It must be practical. It must work. It must be something that can be replicated on an industrial scale by people without unique superpowers.

It’s not enough that you think it would be a good idea if it worked. You need to prove that it actually can work. That’s why you can’t patent a time machine.

That’s why you can’t patent most skills that require professional judgement in each case— such as how to win a lawsuit.

Patenting requires full disclosure of your invention sufficient for people to make use of your intellectual property after the patent expires.

The patent application must contain detailed descriptions and diagrams or technical drawings.

What cannot be patented?

Again, this may differ from one country to the next.

Here’s the list of common patent exceptions:

  • Discoveries, scientific theories, mathematical methods
  • Aesthetic creations
  • Inventions contrary to morality or public order
  • Therapeutic and diagnostic methods
  • Plants or animals (other than microorganisms)
  • Software, except when such software is a necessary part of a product or process.
How long does a patent last?

In most countries, a patent is valid for 20-years from the date of filing.

It can take up to 5-years for a patent to be approved after it is filed. This means that the effective lifespan of the patent will be less than 20-years.

A patent cannot be renewed. After 20-years, anyone can use it.

This is how we end up with generic versions of pharmaceutical drugs. Big pharma invents the drug, gets the patent on it, markets the hell out of it, makes a killing, and then anyone can use the same formula to sell essentially the same drug. Except they can’t use the same name for the drug. Why? Because of the trademarks that the original drug is still covered by.

Is a patent recognized internationally?

A patent is only valid in the country where it has been registered.

International treaties like the Paris Convention and the Patent Cooperation Treaty (PCT) have rules for member nations, making it a little less complicated to obtain international patents. But in the end of the day, you will still need to obtain individual patents for each country.

How much does a patent cost?

A patent is never cheap. Costs vary greatly, depending on how complicated the method or invention is.

You will probably have to pay a bunch of different government fees and the inevitable lawyer bills.

The best I can offer is a basic guide to patent registration costs. This is roughly what you can expect to pay a reputable law firm to register your patent based on how complex the idea is:

  • Simple idea: $5,000 to $10,000
  • Average idea: $10,000 to $20,000
  • Complex idea: $20,000 to $40,000

Most people tend to think their idea is pretty simple. Usually, it turns out to be way more complicated than we imagined.

Talk to the guys in the know. Compare the services offered by different lawyers before you make a final decision.

This is a complicated and expensive endeavor, but the rewards can be huge. A really useful patent can be worth millions of dollars.

So do your homework thoroughly. It could be the biggest decision of your life.

What about a provisional patent?

In the United States, before you file for a real patent, you can file what’s called a provisional patent application. It’s basically a placeholder that gives an inventor a year to fully disclose their invention in a properly filed patent.

In other words, a provisional patent application is akin to the inventor telling the USPTO, “I might be filing a real patent application for this invention with you in a short little while. Don’t tell anybody about it but if anyone files their application between now and my filing date, please tell them I was there first.”

It doesn’t mean that the inventor’s invention is patentable.

It doesn’t mean the inventor has an obligation to file a real patent.

All it is is just a placeholder in case the inventor wants to move forward that gives the inventor an opportunity to talk about his invention with investors or try to bring his product to the market.

Provisional patents require significantly less legalese, and are therefore much cheaper.

But if you fail to file your full patent application while the window is open, you lose your priority date.

So be careful!

Trade Secrets

There are two use cases for trade secrets.

On the one hand, trade secrets can be a much cheaper alternative (or addition) to patents.

If there is something about your product or service that has potential commercial value because nobody can figure out how it works, you can protect it as a trade secret, a know-how.

The good thing about patents is that once you have secured one, it’s relatively easy to enforce it because you have a piece of paper that confirms exactly what you own and what nobody but you can do.

The problem with patents is that in order to get one, you need to disclose your invention to the world, and the patents only last 20 years from the filing date.

If you came up with a know-how that you can preserve in secrecy for more than 20 years, you might as well want to protect it as a trade secret.

Coca-Cola’s recipe is one such secret.

The second use case for trade secrets is your general confidential information—your brilliant marketing ideas, your customer lists, your business plans, etc.

It’s not something you would otherwise patent. It’s something you don’t want others to know.

There are only two ways to preserve your trade secrets:

  1. Keep your confidential information secret. As in, don't tell anybody and make sure you take sufficient measures to prevent accidental disclosure.
  2. If you need to share it with someone else, make sure they sign a Non-Disclosure Agreement (NDA) that prevents people from using and sharing your secret information.

The great thing about trade secrets is that unlike patents, you don’t need to disclose them to anybody to get protection.

Quite the opposite.

If someone independently figures out your secret, any protection you might have had around your know-how disappears.

A curious guy might decide to take your product apart to see how it works. There is nothing to stop him from copying your idea. He can manufacture his own version and sell it anywhere he chooses.

And the big drawback of NDAs is that they only apply to people who actually sign the document. An NDA will not help you safeguard your know-how from the general public.

Trade secrets are a viable means of protecting your confidential information but you need to be very strategic about it.

It’s not enough to simply state that patents are too expensive so you decided to protect your invention via a trade secret.

In order for your trade secrets to have any legs (and any value), you have to take effective steps to keep your know-how confidential and to make sure you can generate enough value from your trade secrets during the time you can enforce your unique position on the market as someone with access to your secret.

Conclusion

Intellectual property is a very powerful tool when used properly.

No wonder, IP is the most valuable asset of most successful businesses.

The brand alone can account for almost half of the company’s valuation.

If you don’t treat your intellectual property seriously, know that someone else will—and it won’t be your intellectual property for much longer.

Here’s a quick summary for you.

A framework, if you will.

If you are in the business of content creation, know that whatever content you create is already protected by copyright. Automatically.

Having said that, if you are in the business of licensing or selling content, you may consider registering your copyright to broaden the scope of enforcement strategies available to you.

If you come up with a genius idea for something new and unique, ask yourself:

  1. Is it valuable?
  2. If it is valuable, can I protect it by any means other than a patent?
  3. If I can’t protect it other than through a patent, is it patentable?
  4. If it’s patentable, is it really-really-really valuable?

    If it’s patentable and really-really-really valuable, find the money and file for the patent. Otherwise, don’t bother.

  5. If you’re not patenting it, can you protect at least some part of it as a trade secret?

    If you can protect it as a trade secret, make sure you institute measures sufficient to keep your confidential information secret.

How important is your brand to you? If it adds to your bottom line or if rebranding would be a serious problem, protect your brand by registering trademarks.

But remember that the initial protection offered by IP laws is just the beginning. The important play starts with you signing the right contracts and taking the right steps to protect your rights.

Once you know what your goals are—both from the general business perspective and from the IP perspective, it’s time to see a specialist. But don’t let the lawyers press you into buying services you don’t need.

I cannot emphasize this strongly enough: make sure that the lawyer’s advice is in line with your strategy.

Share your vision with the lawyer. Let him see how the services you are ordering fit in with your overall strategy.

And be bold enough to ask the lawyer how his advice gets you closer to your overall goal if you don’t readily understand it. Don’t buy into the usual nice-to-haves that lawyers are so quick to offer.

Don’t ask “Why should I do it?” Ask “How will it help me accomplish this particular goal?”

There might be many good reasons to do certain things, but these reasons may not all be relevant to you and your business.

And here’s the final tip for you.

There’s a reason you work so hard creating your intellectual property.

Protect it so it can work for you!