Determining the most unique name
for your new business can take a
lot of time and effort. But what if,
after all that work, you find out you’re
not allowed to use that name because it
belongs to someone else?
“A lot of people, especially smaller
companies, come up with what they perceive to be a unique or ‘cool’ name,” says
Jonathan Polak, attorney and member of
the intellectual property group at Taft
Stettinius & Hollister LLP. “But sometimes that name is already in use.”
Smart Business spoke with Polak
about some of the biggest IP issues facing start-up companies and how you can
protect your name, ideas, Web presence
and other materials that define who you
are as a company.
What are some of the top IP issues facing
start-up companies?
Companies may not take the time at the
beginning to confirm they actually have
the right to use a name. Trademark protection can end up being several thousand dollars or more, depending on what
types of objections the name draws from
either the United States Patent and
Trademark Office (USPTO) or other
companies that might be using it or
something similar. A company can operate for six months to a year and then get
a letter saying, ‘You can’t operate under
the name you’re operating under,
because it infringes my rights.’ Then it
has to redo its marketing, change its
name and hire a lawyer, making the cost
exponentially more than what it would
have been had the company done what
was necessary when it first got started.
When creating the business plan, set
aside money as a monthly expense to pay
for these things at the outset.
How do you protect your name?
There are two processes. One is to go
to the Secretary of State’s office and
secure the name for organizational purposes, but that’s only half the battle. You
should also register that name as a trademark with the state and/or federal government. Filing with the USPTO will give
you (in most instances) nationwide coverage and protection for your name or
logo. State registrations are only good for
the state in which you register it. Before
going through any registration process,
we recommend our clients perform a
search to determine whether or not
there’s anybody else out there using that
name or something similar. In consultation with an attorney, you can get a pretty good idea whether or not that’s a name
you can use. Then you file your application, and that takes about a year to 18
months (but upon registration, your
rights relate back to the date of filing the
application).
Do start-up companies need to be concerned with protecting their ideas?
Yes. Protecting your ideas implicates
patent law and trade secret law, and it
applies to ‘start-up’ and mature companies alike. Patents give you the right to
exclude others from using a particular
technology. If your company is using a
new technology or has developed a new technology, you have a year from the first
date that you are publicly selling or disclosing that idea to file your patent application. The flip side is, maybe you have
an idea that you want to keep confidential, then patent protection isn’t what you
want. Once you disclose the technology
in a patent application, it’s there for
everyone to see. Instead, you should consider protecting your ideas through trade
secret laws. This can be tricky, and it is
important to have an attorney thoroughly advise you on how to best secure those
rights, such as through the use of confidentiality agreements with all employees
or interested persons.
How do you establish and protect your Web
presence and materials?
Even if you’re not immediately planning on having a Web presence, you
should still determine whether or not the
relevant domain names are available.
You should focus on registering your
company name as a domain and its most
important trademarks. Sometimes you
will find someone else has already purchased a domain name that is the same
as or substantially similar to your company name or trademarks. There are a
number of legal options available to you
if you want to fight those registrations.
For one, you can file suit in federal court.
That’s pretty expensive, so another
option is to initiate private arbitration
against whomever is squatting on your
name. You can’t recover damages or
attorneys’ fees, but you generally can get
an answer from the arbitrator within two
to three months of filing, and registered
trademark owners prevail in these proceedings more than 90 percent of the
time.
Also, you should make sure you place a
copyright notice on all of your marketing
materials and Web content. Copyright
registrations are relatively inexpensive
— about $35 per application.
JONATHAN POLAK is a member of the intellectual property group at Taft Stettinius & Hollister LLP. Reach him at (317) 713-3532 or
[email protected].
