Legal Strategies for Brand Building Competitive Business Leverage through
Intellectual Property
 ITIPress.org
- Gerald S. Duty/ Attorney At Law
It
is common for small businesses to underestimate the value of trademarks,
copyrights and other intellectual property and their role in creating
business opportunities and enhancing an enterprise’s valuation. Most
businesses, whether they are selling goods or services, have invested
heavily in building a reputation. Such a reputation can become a valuable
business asset and just like any asset, should be protected and managed to
maximize its value.
The main purpose of creating intellectual property is to
create brand loyalty and differentiate products or services. However,
these properties, successfully used, can also create opportunities for
franchising or licensing agreements, the creation of joint ventures, the
sale of assets to other firms or even opportunities to obtain financing
based on the value of the marks or other properties. Such opportunities
begin with a marketing plan and a strategy to legally protect and maintain
the marks.
Federal Registration of Trademark
In
the United States, trademark rights arise from the use of the mark in
commerce rather than its registration. However, there are significant
benefits that companies receive from registering their trade or service
marks with the US Patent and Trademark Office (“USPTO”). Obtaining such a
mark grants the owner national priority over all but prior local users and
guards the door to your expanding throughout the United States. It also
protects against competitors utilizing confusingly similar marks anywhere
in the country. Failing to register may confine your use of the mark to
its present scope.
It
is best to register a mark before it is used in commerce. It is much less
costly and time consuming than redesigning logos or changing names after
discovering that somebody already has registered a similar mark. Once you
have successfully registered a mark, it is important to maintain the
registration by continuously using the mark in commerce, policing the
market for violators and reviewing the use from time to time to ensure
that the mark has not evolved in such a way that it is no longer protected
by the original registration.
Trade Secrets
Almost every business has proprietary confidential information that gives
the business a competitive advantage in its markets, be it client lists,
business methods or other trade secrets. These secrets cannot generally
be protected through patents or trademarks, but sufficient effort should
be expended to ensure that such matters stay within the company through
the use of confidentiality agreements, non-compete agreements or other
contractual methods.
International Protection
If
you wish to expand your company’s activities to foreign markets,
international protection should be sought. Since trademark registration
in multiple countries is quite costly, one should determine the type of
protection needed based on the company’s business plan. If manufacturing
activities will be undertaken in one country but the products will not be
sold or marketed in that country, less protection is needed in that
country than in one that will be the target of marketing efforts, for
example.
The Madrid Protocol
Many countries are signatories to various multinational
intellectual property accords that allow for multi-country registrations.
One of the most important of these is the Madrid Protocol. Companies
established in nations that have ratified this treaty may apply for
registration in any number of member countries though a fairly simple
procedure. The
United States recently ratified the Madrid Protocol, effective November
2003, opening this option to American companies. Other member countries
include those of the European Union, Australia, China, Japan, some Eastern
European and African countries among others. The only member countries in
the Americas at this time are the United States, Cuba and Antigua and
Barbuda. The absence of most Latin American countries is said to be due
to the fact that the permissible languages for Protocol filings are
English and French. Spanish may be added in the future.
The basic procedure for Madrid Protocol applications is as follows. The
registrant begins by either filing a conventional trademark application in
his home country or by relying on an existing registration there. The
registrant then files an international application with his home country,
(for American companies at the USPTO), designating one or more member
countries in which trademark protection is sought. This application is
forwarded to the World Intellectual Property Office which grants the
international registration and forwards the application to the national
offices of the appropriate countries. These offices then process the
application, treating it as a national trademark application and
conducting the typical procedures required under national law.
When the day comes to sell out of a business, many business
owners find that the most valuable part of their business is the
intellectual property rights they have registered, maintained and
exploited. As traditional streams of commerce expand due to technological
advances and the lessening of legal barriers to markets, the importance of
intellectual property should only increase and business owners who take
adequate steps to build a strong brand will be duly rewarded.
"Don't do business
with your friends. Make friends with the people you do business with."-
Unknown |
