INTELLECTUAL PROPERTY
DEVELOPING AND PROTECTING YOUR
OVERLOOKED BUSINESS ASSETS

Almost all businesses have some form of intellectual property associated with their operations. Unlike a building or product inventory, these business assets are intangible and are often overlooked regarding adequate protection. However, more and more transactions (whether it be the sale of a business or obtaining important financing from a lender) are affected by how well a company has developed and maintained its intellectual property portfolio. The following list describes general categories of intellectual property and the process for their creation and protection:

• Patents: A patent grants the right to exclude others from making, using or selling a company’s invention. Obtaining these rights requires registration with the United States Patent and Trademark Office (“USPTO”). Failure to file the patent application within one year of the date that the invention is first disclosed to the public can be fatal to the ability to obtain a patent. Once a patent is granted, it is important to enforce patent rights against potential infringers to avoid a claim of abandonment of the patent registration.

• Trademarks: The names of businesses, products, logos and, in some circumstances, styles of design or packaging (trade dress) that identify the source of goods or services in the marketplace are common examples of trade and service marks. The right to a trade or service mark arises simply through usage of a distinct, non-functional name, phrase or logo. While registration of a trademark is not required to sue to prevent infringement and collect damages, the registration of the mark with the USPTO confers additional rights to the mark’s owner including the ability to recover attorney fees and treble damages. Registration with the USPTO requires a trademark to be unique (no one else is using it) and non-descriptive (does not merely describe the good or service). Failure to prevent others from infringing upon a trademark can result in not only the loss of the ability to recover damages but also prevent you from using the mark for your own purposes.

• Copyrights: This category of intellectual property is often mistaken with trade and service marks. Copyright protection applies to original works of authorship or art. Common examples include advertising photographs, the text within marketing or product description materials, music or drawings. This intellectual property right also originates from the creation of the original object. The ability to sue to prevent infringement arises only after registration with the Copyright Division of the U.S. Library of Congress. The term of protection is the life of the author plus 70 years, or, if the owner of the mark is a business, the term is 95 years from publication or 120 years from creation, whichever is earlier. Once the copyright is registered with the Library of Congress utilizing the appropriate registration form, it is important to protect the right to the work. A good example of protection is maintaining licensing agreements with vendors who may be using your original photos or marketing material in their catalog or website.

• Other Forms of Intellectual Property: Trade secrets (information your business keeps confidential and derives economic value from), domain names and rights of publicity (the right to use the name and likeness of your founder or spokesperson) are other intellectual property rights that may not otherwise fit into the above-listed categories. Each of these other forms of intellectual property are important business assets which should be properly maintained and protected as part of the company’s intellectual property portfolio.

Whether designing a new product, starting a new business, engaging in a merger, or evaluating collateral for a large business loan, the analysis and protection of your company’s intellectual property assets can greatly contribute towards your success. If you have further questions or would like to consult with us about your company’s intellectual property portfolio, please contact Randall L. Duncan, chair of our Closely Held Business team, and we would be happy to accommodate your request.

Closely Held
Business Team

The Closely Held Business Team - Dunn Carney is dedicated to assisting business owners in navigating through the opportunities and challenges the law presents to advance each owner’s success in business. They understand the multifaceted issues business owners face each day and the need for responsive and proactive legal counsel.

Team members include:
Randy Duncan, Team leader
Bob Allen
Ric Ashe
David Buono
Brian Cable
Del Clark
Todd Cleek
Jack Cooper
Ken Davis
Frank Hilton
Scott Howard
Robert Kerr
JoDee Keegan
John O'Neil
Kyle Stinchfield
Bob Winger
J. David Zehntbauer