Developing an IP Plan

Published September 29, 2023 in Blog

Intellectual property is one of the most often overlooked assets on the balance sheets of businesses today. The intangible nature of these assets leaves them susceptible to being out of sight, out of mind, and, therefore, unprotected. The following 3-step assessment is a great start toward identifying and protecting your intellectual property asset portfolio:

Step 1: What do you own?

• Identify all logos, slogans, designs, keyword advertising, and other identifiers that are used in marketing your products and services. Be comprehensive in your analysis. Even things like colors and sounds are potentially protectable.
• Immediately assign the “TM” or “SM” symbol, as applicable, to all identifiers.
• Consider developing the distinctiveness of any identifier that is descriptive and additional branding efforts where identifiers are generic or otherwise not capable of registration.
• Identify literary, musical and dramatic works, choreography, pictorial, graphic, sculptural, sound, computer programs and architectural works, which are all accorded common law copyright protection immediately upon creation and are further protectable through federal copyright registration.
• Investigate any new or useful inventions that you have created.
• Identify pricing, marketing methods, supply sources, and technical know-how. All of these are protectable as trade secrets.

Step 2: Now that you know what you own, how will you protect it?

• Review current contracts and company policies to determine what confidentiality protections you have and/or need in place with employees, vendors, customers and others that interact with your assets on a daily basis.
• Review employment agreements, independent contractor agreements, and vendor/supplier agreements to verify that they address and protect your trade secrets and include work for hire provisions where appropriate.
• Determine whether you are insured properly.
• Search the internet for infringing content and counterfeit products.
• File applications for state and/or federal protections (trademark, copyright, or patent) where feasible.

Step 3: Turn the analysis back on yourself and ask, are you infringing?

It is just as important to assure that you are not infringing on others’ intellectual property rights as it is to protect your own. Take the following steps to avoid conflicts:

• Search the United States Patent and Trademark Office databases and the U.S. Copyright Public Records portal for live registrations that might be confused with your identifiers.
• Jump onto your favorite search engine to look for potentially confusing common law uses.
• Assure that any of your uses of others’ materials are permissible under the fair use doctrine, licensure, or authorization from the owner of the material.

If you haven’t developed a plan for protection and enforcement of your intellectual property, now is the time to start. If you’d like assistance in reviewing your IP portfolio, feel free to contact your Kotz Sangster relationship attorney. We’re happy to help.