Insights and tips on developing and protecting your brand, with particular emphasis on intellectual property such as trademarks, trade dress, copyrights and design patents.

1. DEFINING AND PROTECTINGYOUR BRAND
2016 SIA SNOW SHOW – DENVER, CO
DON’T LET SOMEONE ELSE POACH YOUR LINE

2. Branding started simply…
primary purpose was unique identification
of your property
Photo: Andreas Praefcke

3. but got more complicated…

4. Now, branding involves additional
considerations…and some care is
required
 multi-faceted/intangible - may
embrace, e.g., goodwill, reputation,
consumer perception (vs. reality),
AND intellectual property (IP)
 dynamic - your brand may change
over time
 not fully in your control – your
reputation, and consumer perception

5. This more complex ‘brand’ model, while
powerful, has given rise to a variety of
possible threats…

6. Such threats may include…
 Use of confusingly similar marks etc. by
others to leverage your goodwill/reputation
 Copying of the look/feel of your products,
website, etc.
 Copying of your product packaging
 Copying of your digital content – e.g.,
website, social media

7. Consequences can be significant…
 Damage to
your reputation
 Dilution of
your trademarks
and service
marks
 Loss of
revenue $$
 Loss of
market share

8. So it is important to take
precautions to protect your
business and your brand…

9. Preparedness includes
protecting your IP…
 You’ve found ways to set yourself apart from
the competition..AND
 You want to realize the benefit of, and
protect, your investment in time/effort/$$..
 So…your branding strategy must include a plan
to protect your intellectual property…

10. Benefits to protection of your IP
rights include…
 Competitive advantage -
IP rights are
‘exclusionary’ – they can
serve as a tool to prevent
others from copying or
stealing your work…
 Revenue source - IP rights
can be sold or licensed…
 Company asset - IP rights
can be attractive to an
acquirer or investor…

11. So how can I protect my
intellectual property..?
 Various routes are available to potentially
protect the following ‘brand’ elements …
 Marks – trademark, service mark registration
 Ornamental design of products – design patent
 Product packaging/design – trade dress; copyright
 Creative expression, including web and social media
content - copyright
 Some of these may touch/overlap…

12. Why are trademarks/service
marks/trade dress important?
 Trademarks/service marks & trade dress…
 Identify you as a source of good/services
 Establish and preserve your reputation
 Help cultivate consumer goodwill
 Avoid confusion in the marketplace
 Distinguish you from competitors
 Prevent others from using similar marks

13. Trademark/service mark (examples)

14. Why should I consider design patents?
 design patents can enable the
owner to prevent others from…
 Making,
 Using,
 Selling, or
 Importing…
the patented design
 strength/value of design
patents has been
increasing…(see Apple v.
Samsung)

15. Design patent (example)
 Design patent can
protect aspects that
may contribute to your
overall brand, such as…
 Ornamentation
 Shape
 Appearance
 Proportions
 Overall look
 Design patent does not
protect function

16. Trade dress...product appearance
and/or packaging can serve as
source indicator
Trade dress infringement

17. Copyright registration…
 Protects expression
fixed in a tangible
form…generally
excludes others from
using, copying,
distributing, displaying,
reproducing,
performing….
 Examples of
protectable works
include:
 website look and feel
 Photos/video/art
 product packaging
 social media content
 documents

18. Where do I start?…A checklist for
laying your IP foundation…
 Record keeping (e.g.,TM
usage)
 Non-disclosure agreements
 Confidentiality
 Employment agreements
 Assignment of rights
 Website developer &
contractor agreements
 Social media policy
 Domain name(s)
 Due diligence – acquisitions
 ID patentable designs

19. As part of your IP foundation, scope the
line before you commit, and avoid a face
plant…

20. E.g., perform TM and design patent
searches before investing time and
$$ in your brand; check copyrights
 Search USPTO/other records – identify what others are doing;
may help you to avoid infringement
 Cannot patent designs that have already been patented
 Make sure you’re not copying someone else’s work
 Cannot register marks confusingly similar to marks already in use
 Fanciful marks are strong - made up mark (e.g., ‘Kodak’ for film)
 Arbitrary marks are strong – mark with no connection to the
goods/services – e.g., ‘Apple’ for computers
 Descriptive marks may not be registrable – marks that describe an
aspect of your products/services – use of the mark ‘apple’ for
selling apples (policy basis)

21. Building an IP strategy for your brand– some
key internals in deciding what to protect…
 What are key products
and services?
 Who are your
customers?
 Where are your
customers?
 Where are your products
manufactured?
 Might you sell or license
your IP?
 Your budget

22. Building your IP strategy – some key
externals in deciding what to protect…
 What do you want to
prevent your competitors
from doing?
 Who are your competitors?
 Where do your
competitors manufacture
and/or sell?
 What do your competitors
manufacture and/or sell?
 What competitor activities
would most concern you?

23. This all sounds great, but how
much is it going to co$t??
 Short answer….it
depends….
 No one has unlimited
funds…
 Your IP attorney should
work with you to help
you identify a route
that fits your situation
and budget…
 Some considerations:
 Country/countries where
protection needed
 Type/scope of
protection sought
 USPTO small entity
discount

24. You’ve secured your IP rights,
now, monitor and enforce them…
 Register marks with
Customs and Border
Protection
 Use watch service for
your marks
 Monitor competitor
activities

25. You’re in! Now what…?
 But also…
 Keep tabs on what your
competitors are doing
 Keep tabs on the
marketplace
 Adjust IP strategy as
necessary to suit
changes in business
strategy, market
conditions etc…
 Keep IP counsel up to
date…
Have fun and enjoy the
ride!

26. You’ve done everything right, but
problems can still occur…
 What if I get a cease and
desist letter?
 What if someone is using
my name in a spam/phish
scheme?
 What if someone
steals/uses my graphics
or marks?
 What if I see a knockoff
of my product?
 What if I’m accused of
patent,TM or copyright
infringement?

27. …be careful how you respond…
 Don’t panic!
 Resist the temptation to
respond to the
letter/email, or to send a
flaming letter/email –
you may do more harm
than good…
 Instead…consult with
your IP attorney as soon
as possible to determine
an appropriate
strategy…

28. Finally, a (self-serving) tip…
 Consult with an IP attorney sooner rather
than later…its easier/cheaper to avoid
problems up front, than to try to fix them
afterwards…

29. Some useful resources…
 www.uspto.gov (patents and trademarks)
 http://www.copyright.gov/ (copyrights)
 www.wnlaw.com (Workman Nydegger PC)

30. Questions…??
Pete Malen
Salt Lake City, UT
(801) 321-8871 (direct)
pmalen@wnlaw.com
www.wnlaw.com
© 2016Workman Nydegger PC. All rights reserved
(this information is not intended as legal advice – views expressed are those of the author alone)