For example, what is "IKEA" aside
from the Swedish store we all know?
Nothing. It is simply an amalgamation
of the initials of the founder's name, his
home village and a nearby village. In
our hypothetical, we might try something
arbitrary like Hammer Head beer or
something fanciful like Dunding beer,
inspired by our firm's name Dunlap
Codding.
Available?
before using it. You must have a
trademark clearance search conducted
to determine whether someone else is
already using the same or similar name.
You want to be able to answer these
questions: "Can my start-up company
use the proposed mark on my products or
services with reasonable risk?" and "Can
my mark be registered with the United
States Patent and Trademark Office
(USPTO)?"
A trademark search involves
searching USPTO records for registered
and pending marks as well as searching
the Internet and many other databases
for unregistered marks. If there are
businesses already using a mark similar
to your proposed mark (e.g., you find
"Hammer Hand" used in connection with
beer), there may be a conflict. It is best to
uncover these risks before you invest in a
particular mark. Conduct a search before
you adopt a mark, or be prepared to lose
money, time and a bit of your reputation
when you have to re-brand.
Presumably, anyone can manufacture
and sell a product, but manufacturing
and selling "bare," that is, without
proprietary rights, invites more
competition. However, when a company
is armed with a patent, it can limit
competition. Start-ups, in particular, can
benefit from patent protection; a patent
products and services already available
and gives them the ability to exclude
others from using their same patented
product or service.
Carefully
share their latest venture with friends,
family and potential investors must be
tempered to avoid disclosing information
pertinent to patentability (as well
as trade secret information). Once a
start-up shares its secret weapon for
success (i.e., its potentially patentable
product or service), the patentability
clock starts ticking in the United States.
After disclosing an idea to the public
or offering it for sale, an inventor has
one year to file a patent application. If
a start-up is thinking about marketing
and selling its product or service
internationally, it is even more important
to keep a tight lid on an invention
because many non-U.S. countries do
not grant inventors the one-year grace
period. Instead, any single disclosure
can be cited as prior art against a patent
applicant and therefore destroy the
chances of patenting the idea.
Risks for Infringement
manufacture and unleash a product or
service to ensure that someone else's
rights will not prevent or limit you from
operating your business. Conducting
a "prior art search" is the best way to
investigate the proprietary landscape.
This involves searching issued patents
and applications which involve
technology or components similar to
those that your business is attempting to
commercialize.
From an offensive standpoint, prior
art searches assess whether the invention
has a high potential for patent protection
by evaluating whether an invention is
new, useful and non-obvious in light of
the prior art. Prior art generally includes
applications, and evidence of prior sales
and use. From a defensive standpoint,
prior art searches identify current patents
upon which a start-up's proposed product
or service could infringe, if implemented.
In other words, a start-up company needs
to ask itself whether it even has the right
to manufacture and sell its proposed
product or service and therefore whether
it is truly free to operate within its vision.
Even if a prior art search does reveal
a problematic patent, businesses are able
to further assess high-risk patents e.g.,
to determine if they are valid. In the
event a determination is made that the
identified patents are not valid, then the
business is in a more secure position to
move forward with its proposed product
or service without risking infringement.
Agreements
emphasize enough how important it
is to be aware of the work for hire
doctrine and the rights of independent
contractors. Typically, the owner of a
creative work is who you might think
it is the author. Under the work for
hire doctrine, employers own the works
created by their employees within the
scope of employment. The situation
often not considered is one involving
independent contractors. Independent
contractors own the works they create
unless there is a written agreement
stating otherwise. Therefore, it is crucial
to have documented, clear agreements
in place specifying ownership of
copyrightable works before the creative
process begins.
help you spot and avoid some key risks
for your start-up company.