This is a guest post by Anthony Verna.
I always advise clients and potential clients to worry about intellectual property from before the intellectual property is created.
Thinking about proper planning, starting early is necessary.
The due diligence that should be performed before filing a trademark is needed in order – having a trademark search performed and an opinion letter drafted – is done because there is a lack of data in filing a trademark. A trademark should be chosen based upon its marketability, but also upon its ability for the owner to protect it. If the owner cannot protect the mark or if the owner risks a trademark infringement lawsuit, then the trademark chosen may not be worth the time or effort.
So, the time to worry about a trademark is before the product is ready, in order to find a brand that is marketable and protectable. One of the worst feelings for any trademark owner is the need to pivot and find a new mark after the product is on the market and sales are accumulating.
In searching for domain names through which to sell its product, a business must be cognizant of the trademark matters. If a trademark is not protectable or is subject to a trademark infringement lawsuit, then the domain name may be subject to a complaint alleging a registration in bad faith and possible damages of loss of the domain name. (Domain name proceedings have different standards than trademark infringement lawsuits, but if there’s a problem with the trademark, there’s a good chance there is a problem with the domain name.)
A business must be aware of what works from the business fall under copyright law. Under American copyright law, an author is the person who creates a work. Works can have multiple authors and the owner of the copyright is an author, unless the author agrees otherwise or the work is made in furtherance of employment. If the work falls under an independent contractor relationship, then an agreement for a work made for hire is required. (And that agreement must be written.) One example that is often cited is that most businesses do not create their own websites, so this work-for-hire agreement is needed with the website development company in order for the business to own the rights in its own website. Every business has different copyright matters, especially dependent on the type of business.