August 21, 2007
How To

Legal Spotlight: Copyright & Trademark Primer - 6 Tips to Protect Your Assets

SUMMARY: You’re a busy marketer, constantly developing new marketing messages, graphics and supporting documents. When was the last time you checked to make sure you’re protecting that intellectual property according to trademark and copyright regulations?

We talked to an expert to find out what you should do to safeguard your hard work. Includes how to conduct an internal copyright audit and take action against infringement. Plus, numerous links to government forms, fees, current legislation and filing information.
“A lot of people assume that if they’ve incorporated as a business, that’s sufficient in and of itself. That doesn’t give them any protection whatsoever as a trademark,” says Hazel Espinar, Attorney and Founder, Espinar & Associates, which specializes in intellectual property.

While many marketers have registered trademarks for their company name or product names, as well as copyrights for major materials they produce, the pace of online business makes it essential that you continually revise and update those registrations. With the ease of content sharing and copying and pasting, online assets -- such as domain names, advertising copy and graphics and Web site design elements -- are frequently used without permission.

Still, many companies overlook the need to register their assets for copyright or trademark protection. To guard against unfair competition and brand dilution that comes from such intellectual property misuse, we asked Espinar for advice on a sound trademark and copyright strategy.

Here are six tips on what you can do right now to protect yourself:

-> Tip #1. Recognize threat of brand dilution

Marketers in particular should be concerned about the potential dilution of their company’s goodwill that can come from trademark or copyright infringement.

Dilution often happens when competitors create a similar business based on your established company or product names, but sell goods or services of lower quality. Those sub-standard offerings can create a negative impression of your business with consumers.

Also, if you’ve worked hard to develop brand identifiers, such as logos and tag lines, these can be used without your permission by other marketers hoping to cash in on your reputation in the marketplace. In such cases, a trademark or copyright holder can make a claim of unfair competition against the companies trying to use protected pieces of intellectual property.

The problem is often seen online, thanks to cybersquatters who buy domain names that are variations of established URLs. Users who misspelled a company name or leave off the “s” on a plural word find themselves on a page trying to market a similar product or providing links to a range of different products and services.

These sites can create confusion about your company or create the false impression that your brand is associated with the links provided. But if your domain names are included in your corporate trademarks, you can request that unauthorized parties stop using those domain names and turn them over to you.

-> Tip #2. Conduct internal copyright audit

The first step in protecting your intellectual property is to review the different elements of your marketing and advertising strategy. By looking at all the external and internal marketing pieces you’ve created, you can see which ones are eligible for copyright protection and which are at greatest risk of being co-opted by competitors.

Copyright protection is available to anything that’s defined as an original creative expression and is available in a fixed form, such as a brochure, a blog entry or a graphic. “The moment you put pen down the pen after creating any document, it’s able to be copyrighted.”

During a copyright audit, pay close attention to online elements that could be used in a way that infringes on your rights. They include:
o Online graphics
o Web site layout
o Online text
o Domain names
o Meta tags

Also look carefully at anything you distribute online, including:
o Brochures
o Manuals
o White papers
o Case studies
o Research reports
o Advertising images
o Advertising copy

-> Tip #3. Determine your trademarks status

Trademarks and service marks (applicable to services) offer protection for unique elements of your business identity, including:
o Company names
o Logos
o Product designs
o Symbols
o Product or packaging shapes

Trademarks give you the exclusive right to use those assets for selling goods and services. They also offer statutory remedies, such as the ability to collect damages when infringement has occurred.

But not all assets can be trademarked. Take company names, which fall into four categories:

Category #1. Generic. When a company name is a common term for a product or service, it can’t be trademarked. For example, a store selling furniture can’t trademark the name “Furniture”

Category #2. Descriptive. Names that use a common word to illustrate the type of goods or services they are selling also can’t be trademarked. A consulting firm couldn’t trademark “technology consulting,” since the word technology is merely a description of the services they offer.

Category #3. Suggestive. Trademarks or names that suggest the character of goods or services being offered are eligible for copyright protection. An advertising firm called “Pure Imagination Advertising,” could trademark its name, since the combination of words suggests the nature of the service.

Category #4. Distinctive or fanciful. These are names that have no meaning outside the company that created them. Kodak is a famous example of a distinctive or fanciful trademark.

-> Tip #4. Register your trademarks and copyrights

Once you’ve audited your creative materials and identified the assets you want to trademark, you can work with an intellectual property attorney to file the necessary registrations.

- The process typically starts by determining whether company names, logos, taglines and other assets are either suggestive or distinctive -- and, therefore, eligible for trademark protection. If a mark is determined to be merely descriptive, an attorney can work with you and your design team to develop tweaks that might make it suggestive or unique, such as adding new words or design elements that still fit with your overall branding strategy.

- Once marks are settled, the filing process starts with a search of the federal registry to make sure there’s no other company holding a trademark on that asset.

- If the trademark is unclaimed, your attorney will file the application for you. The date of filing can be an important piece of future defenses against trademark infringement, showing when you asserted that mark as a piece of your business identity.

- Copyright applications can be submitted for individual pieces of intellectual property or for a group of related materials can be submitted together under a bulk application. The rules governing what can be submitted in a bulk application are tricky, though, so it’s best to consult an attorney before attempting a bulk application. If you make a mistake and have to refile, your date of application for those copyrights will be pushed back.

- The trademark and copyright registration process typically takes six to nine months, says Espinar. The cost will vary widely depending on the complexity of the registration, the rates charged by attorneys in your geographic region, and other factors. Espinar charges a flat fee for trademark applications, which helps eliminate uncertainty about the final bill based on unforeseen challenges in the application process.

-> Tip #5. Monitor your copyrights and trademarks for infringement

Trademarks and copyrights offer legal protection against infringement, but it’s up to you spot the offenders. “You need to be active,” Espinar says.

Here are four tactics to protect your intellectual property:

- Place a Terms and Conditions link on your Web site that clearly lays out the rights you hold over your intellectual property. Identify the trademarks and copyrights you hold and spell out how people may and may not use those protected images, text, logos, graphics and other elements of your site or marketing materials.

- Hire a trademark monitoring service that can search online and offline sources for trademark infringement and dilution.

- Be alert at industry trade shows. Keeping watch on your competitors’ marketing materials frequently turns up cases of trademark infringement, Espinar says.

- Conduct periodic online searches. Searching for company names, taglines, key words from marketing materials and other intellectual property can often uncover improper use of your trademarks and copyright protected material.

-> Tip #6. Take action against infringement

When you uncover a case of trademark or copyright infringement, immediately contact an intellectual property attorney to determine the best course of action.

- The first step is to compile a dossier laying out the alleged infringement. Collect all the artwork, text, names or other materials that your competitor is using and compare them side-by-side with your own intellectual property.

- Comparing those materials, determine whether there actually is infringement that constitutes unfair competition or brand dilution. For example, a company may be using a similar trademark, but selling different types of goods or services that won't cause confusion with your brand and, therefore, doesn’t threaten your business."

- If there appears to be intentional use of your trademarks or copyrights, or there is an overlap between the goods and services you and the competitor are selling, work with your attorney to determine how to stop the infringement.

Steps can include:
o A cease-and-desist letter or legal notice
o Filing a complaint in federal court, requesting an injunction against the competitor and requesting damages.

“It depends on goal of client. Some clients just want to do some preliminary work without stepping into court. Others want to go straight into court and take a much more aggressive approach.”

Useful links related to this article
Creative samples from copyright and trademark documents:

U.S. Patent and Trademark Office copyright information site:

U.S. Copyright Office:

Current copyright legislation:

Copyright fees:

U.S. Patent and Trademark Office trademark information site:

Trademark fees:

Trademarks: Where do I start?

International Trademark Association:

International Trademark Association's checklist of registered trademarks:

Espinar & Associates:

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