Transcript Brand Identity Trademark Strategy 101

IP=Increased Profits
How to Make Your IP
Work For You
Rachel Lerner
COSE
Fall 2006
IP…….Who Knew?
Intellectual Property (“IP”) is often one of
a company’s most valuable assets
--Builds brand identity
-Fosters consumer confidence
-Distinguishes you from competitors
-Protects Company investments
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What Is Intellectual Property?
IP is intangible property that is the result
of creativity such as –
-trademark
-copyright
-patents
-trade secrets
What is a Trademark?
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A trademark is a word, symbol, design, or
combination of a word and design which
serves to identify and distinguish the
goods or services of one source from
those of another.
Can be a sound (Harley Davidson)
Smell (Yarn)
Color (insulation)
Examples of Trademarks
Trademarks: What They Do
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Identify and designate the source and origin of
products or services
Represent a particular standard of quality
Distinguish products and services bearing a
company’s marks from those of other companies
Symbolizes the GOODWILL of a company
Protects a company’s investment in the
development and promotion of its products
Ensures consumers who want a company’s
products get that company’s products
TM Agreements
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TM License In; Use of 3rd party mark
TM License Out; 3rd party uses your mark
Advertising/Marketing Agreement
Co-Brand Agreement
Partnership Agreement
Joint Development Agreement
What Is Copyright?
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Original work of authorship
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Fixed in a tangible medium of expression
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Not idea only
What Works Are
Protected Not Protected
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Literary Works
Musical Compositions
Sound Recordings
Visual Arts
Audiovisual Works
etc.
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Unfixed works; ideas
Titles, names, short
phrases, slogans
Words with no
original authorship
etc.
Internet and Wireless Content
CONFIDENTIAL AND PROPRIETARY INFORMATION OF AmericanGreetings.com  2003
This work contains information that is confidential, privileged and proprietary information to AmericanGreetings.com. Removal of this notice, and use, examination,
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Copyright Owner Has
Exclusive Rights
“Bundle of Sticks”
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To reproduce the work
To prepare derivative works
To distribute copies of the work
To perform the work publicly
To display the work publicly
To perform sound recordings publicly
by digital audio transmission
Copyright AGREEMENTS
Independent Contractor
 Content License
 Content Ownership
 Advertising
 Sponsorship
 Web Development
 Software Development
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PATENTS
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The exclusive right of a creator to
manufacture, use, license or sell an
invention for a number of years.
Granted for a process, act or method that
is new, useful and non-obvious
Patent rights may be licensed, sold or
assigned
Patent Requirements
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Applicant must satisfy at least 4
conditions for US PTO
1. patentable subject matter
2. novelty; high threshold
3. useful; low threshold
4. No Prior Art: not obvious to one of
ordinary skill in the art of having in mind
earlier work of others
Types of Patents
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Plant Patents; distinctive plants
Design Patents; ornamental designs
Utility Patents; machine or process
Business Method Patents; methods of doing
business
Computer Software
Cannot patent natural elements; mathematical
formulas; abstract ideas
Patent Licenses
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Patentee has exclusive right to license
patent and to exclude others from using
invention
Can license rights to (1) make; (2) use;
and (3) sell separately
Potentially enormous revenue stream
(especially for business method patents;
technology patents)
Patent Agreements
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Patent License
Patent Assignment
Development Agreement
Joint Development Agreement
Technology Agreements
Trade Secrets Are Unique
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Unlike patents, trademarks and copyrights, there
is never a registration or certificate to tell others
a company is claiming info as a a trade secret
The only definitive way to determine whether
something is trade secret is to have a court
ruling
This makes it difficult for business planning but
there are steps a business should take to protect
info as a trade secret
No Single Definition
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Trade secret Law is State driven; Each state has its on definition
@43 states have adopted UTSA (including Ohio)
Factors Courts consider:
How widely known is the info?
What security measures has company taken to protect info?
How many people know the info?
How valuable is the info to a business and its competitors (cocacola)
How much $ has company invested to develop the info?
How hard is it for a competitor to duplicate the info using proper
methods?
How To Protect Trade Secrets
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Trade secret protection program to protect
trade secrets against misappropriation
Business premise security
Restrict disclosure only to those who have
need to know
Mark confidential info as confidential
Non Disclosure Agreements
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Employees
Third Parties
consultants/developers/service providers
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Potential Business Partners
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Venture Capitalists
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Bankers/Advisors
IP Agreements
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TM License; Company name
Copyright License; Company content
Patent License; Company invention
NDA; Confidential information
Employment Agreement
Non-Compete
Agreements with 3rd parties
How Do I Remember All of This
Stuff?
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Develop an IP Strategy including:
-Plan to Identify Company IP
-Plan to Register Core Company IP
-Plan to Implement Company IP Policy
-Use of Template Agreements for use of
Company IP
Thank You!