Imitation is the finest form of flattery. Yeah, tell that to somebody that has been ripped off creatively and we highly suggest you bring some body armor to protect yourself (and a bottle of bubbly to quickly apologize).
The truth is, creative copy cats are soul crushing. They are bandits of all the hard work, sweat and tears somebody poured into their beloved idea, business or brand.
If you've dealt with this, we are so sorry. We have too and it stings. But -- after the initial anger and annoyance -- there are some upsides: Challenging yourself to drum up fresh ideas. A burst of energy to take a new direction or try something out of your comfort zone. Or finding the right lawyer to protect your passion and assets moving forward.
We tapped our personal trademark attorneys at Munck Wilson Mandala to help you navigate the confusing waters of intellectual property and trademarking. Our all-female team within the large company is approachable, easy to talk to and understands the creative brain.
Let's start from the beginning. When somebody is starting a business, what are the most important things for them to do legal-wise?
Understanding the importance of how branding directly affects your business and your reputation is critical. Protecting your business starts by protecting your most vital elements – your ideas, your people and your capital.
What should people do to protect their creative property?
First, entrepreneurs should plan ahead and think of where they will want to eventually end up with their product and or services. Second, business owners should find and work with experienced IP attorneys to devise and implement various IP protection strategies, including licensing, marketing, distribution, and franchise or co-branding agreements to adequately guard and enforce their brand. This can be in the way of patents, copyrights and of course trademarks.
What should people think about when trademarking?
If you make it easy for others to steal your ideas, you can ultimately end up washing away your own path to success. Devising an IP strategy that is in-line with your vision for the company’s future is essential. You need to figure out which elements of your work need to be legally protected – from there, trademark, patent and/or copyright filings should flow. The following three questions are good to ask yourself before starting the process:
(a) Where you plan to use the mark (locally or globally?)
(b) How important the mark is (is it your house mark or a sub-brand?)
What should somebody expect to pay to trademark?
A typical trademark will run anywhere from $2,500 - $3,500 from start to finish. Pricing varies depending on how straightforward prosecution is. More complicated cases obviously will cost a little more.
What are some non-legal things they can do to be smart and protect themselves to avoid getting in sticky situations?
In the realm of trademarks, some non-legal ways to protect your mark is using the TM symbol for your trademark and/or the SM symbol for your service mark. This will give notice to the public that you are using a particular word, logo or phrase as your trademark. Also, using your trademark will help you accumulate common law rights in the mark. However, it is always better to seek federal registration of your trademark, if possible.
When should somebody trademark?
ASAP. You don’t want to pour money into marketing and advertising without protecting what your brand is showcasing – ideas, images, etc. It’s a lot cheaper to protect your brand identity from the beginning. An ounce of prevention is worth a pound of cure, especially in the IP game. The right attorney will guide you through the selection, strength and registrability of trademarks and service marks, the advantages of registration, and the maintenance and exploitation of trademark, trade dress and domain name rights.
Trademarking doesn’t mean your brand is protected. Talk to us about how you protect your brand once trademarked and the effort/money it takes to do so.
Trademark rights confer a right of exclusivity of use of a trademark for particular goods and/or services. However, it’s a right, not a mandate; there are no trademark police offers patrolling to protect and serve trademark owners. As a trademark owner it is your responsibility to police and protect your trademark from infringers and careless use of the mark once you identify the problem.
While trademark enforcement efforts often require significant resources and rarely provide an immediate monetary return, the costs of policing your mark must be balanced against the long term value of having a strong, protectable symbol of your goodwill, reputation and identity associated with your products or services.
Any tips for people creating a logo or brand name to think about trademark-wise?
Before adopting a trademark or investing significant sums into a branding strategy it is important to determine if the name you wish to use is available for use. The tools you use to make this determination depend on your plans for the name. You can run a quick search of the USPTO database on your own. However, again, we advise using an experience trademark attorney to help in the searching process.
How can people protect themselves from copy cats?
Trademark registration is not for everyone, but most trademark owners are better off with a trademark registration than without one. A trademark registration can be used defensively as a shield to help ensure that your use of a trademark is not easily challenged. But a trademark registration is often most useful as an offensive tool, or sword, to prevent would-be users of the same or similar mark from encroaching into your territory and preserving the uniqueness of your brand.
If a trademark owner finds someone using/infringing on their trademark, we recommend contacting an experienced trademark attorney to discuss options to protect your trademark. Waiting too long to take action can sometimes benefit the infringer.
If they’re dealing with that problem, what can they do about it legally?
Trademark policing usually includes at least two fronts:
(1) Stopping infringers (and counterfeiters)
(2) Maintaining proper and consistent use of the trademark
The latter front requires education of authorized users and the media as to the correct use of your mark. The former front requires vigilance in the marketplace and a willingness to take quick action against wrong-doers when necessary. If you fail to police your trademark the strength of your trademark rights will erode and may be lost altogether.
Finding the right lawyer isn’t easy for creative minds. What are some things they should seek out or think about during the interview/shopping process to find the right fit and somebody that understands the small business/creative world?
Look for a firm that specializes in your particular industry & niche – meaning if you need trademark assistance, finding a firm with a dedicated, skilled trademark attorney team can be crucial to success. Take advantage of free consultations, too! You wouldn’t buy a car without test driving it first – your attorney should be no different. Don’t be afraid to ask questions and ensure you’re getting the best advocates for your business.
THE TRADEMARK PROCESS STEP BY STEP
Step 1 – Decide if a trademark application is right for you. Trademarks, patents, copyrights, domain names and business name registrations all differ so it’s important to understand whether a trademark is appropriate for your needs.
Step 2 – Get ready to apply by selecting a mark. You must identify your mark format, identify the precise goods and/ or services to which the mark will apply and search to determine whether anyone is already claiming trademark rights in wording/ design similar to yours. Since each of these elements is so important, you should consider hiring a trademark attorney to help you with the intricacies of the application process.
Step 3 – Prepare and submit your application. File your trademark application and monitor the progress of your application.
Step 4 – Work with the assigned USPTO examining attorney. After the USPTO determines that you have met the minimum filing requirements, an application serial number is assigned and the application is forwarded to an examining attorney. This may take around 3-4 months. The examining attorney reviews the application to determine whether it complies with all applicable rules and statutes, and includes all required fees. Filing fees will not be refunded, even if the application is later refused registration on legal grounds.
Step 5 – Receive approval/ denial of your application. If there are no objections raised to registration, the examining attorney will approve the mark for publication in the “Official Gazette,” a weekly publication of the USPTO. Marks are published for 30 days.
Step 6 – Maintain your registration. To keep the registration active, the registrant must file specific maintenance documents and monitor registration status to adequately protect their rights. Within the first 10 years of obtaining a trademark, a declaration of use must be filed at the 5-6 year mark and a renewal must be filed at the 9-10 year mark. Subsequent renewals are every 10 years.
Munck Wilson Mandala is located at 600 Banner Place Tower at 12770 Coit Road in Dallas. Please note that the company's answers above do not constitute legal advice in any way and do not form an attorney client relationship between MWM with any third parties.