New Business Intellectual Property FAQs

Choosing a trademark or brand name for your business is a challenging exercise. Making sure your website has all the right policies and best practices is something you need to do when developing your business. There are a few general rules or procedures that you should consider. Chief among those is the need to check on your best practices and online policies, such as your terms of use and privacy policies, at least twice a year to protect against problems and risks from impactful changes. Those changes can include new laws passed by Congress; or modified regulations handed down by federal, state, and local governments; or federal agencies like the Copyright Office, Patent and Trademark Office, Federal Trade Commission (FTC) or Food and Drug Administration (FDA).

To select a brand, product name, or logo that’s terrific, memorable, and useful, businesses old and new should coordinate marketers and graphic designers with the product or service team at an early stage. Before significant changes are made, every branding decision — from logo to Twitter username choice — needs to be cleared by your legal team. Too many times, we have seen public relations catastrophes on social media — such as marks that go unregistered until someone else infringes on them and takedown-notice problems — therefore we strongly recommend that you confer with one our attorneys who can help you get everything in place and who can write policies and practices suited specifically for your needs.

• Are any other companies using the same mark and/or logo we want to use?
If they are using the same mark or logo for similar goods or services, there’s a large risk in adopting it, but if the goods or services are completely unrelated and the mark is somewhat descriptive, the risk is smaller. Even though Best Buy uses the term “Geek Squad,” there are many other marks out there that use the term “Geek”.

• Are any other companies using something similar?
Even similar marks can be likely to be confused – PLATINUM SERIES and PLATINUM PAK were found by the PTO to be too close. With a full trademark search performed by an attorney, you’ll have a better understanding of what the risks are in choosing the trademark you want.

• What are the overlaps between our goods/services and theirs? Are they sold in the same stores?
Just because two kinds of products – like pizza stones and headphones – are both sold in “big box” stores – doesn’t mean there is likelihood of confusion. But if someone is using a mark for pizza stones and you want to use it for a cheese graterthat might be too close for the Trademark Office or the courts. An experienced trademark lawyer can lay out the risks.

• Do any companies have an application to register something similar or identical at the U.S. Patent and Trademark Office?
Trademark rights develop through use, not registration, but a registered mark gives its owner extra protections, and a presumption of ownership throughout the U.S.

• Do any companies have such a registration? If so, are they still using the mark?
Even if a mark is registered, if the company that owns it is out of business or has abandoned the mark for a number of years, they may have lost their trademark rights. A lawyer should always analyze such a situation because any determination of risk is case-specific.

• What about companies doing business outside the U.S.?
If a company is doing business in other countries, they may still hold a trademark application or registration, or other intellectual property rights. A worldwide trademark search can uncover international usages of others’ trademarks.

• Do we have an informational sheet so our team can use our trademarks and logos correctly?
How do you connect with your staff and outside PR companies, graphic designers, packaging team, social media experts and website designers about how your mark is used? An informational sheet prepared by your attorney can ensure that everyone is on the same page. That includes addressing the following issues:

• Does the website designer have the right to use all the images they’re using on the website, either by way of license or pursuant to fair use?
• What about the text or videos on the website?
If they don’t, it’s likely that Getty Images or another photographer, graphic artist, or video production company, or ASCAP or a music publisher, may say that your website is infringing on their copyright. Penalties and fines for copyright infringement can reach into the hundreds of thousands of dollars, although it can be considerably less – such as a few hundred dollars — when a settlement can be worked out. You may also have the right to use, or refer to others’ copyrights and trademarks, because your use is a “Fair Use.” An attorney can help you make sure your website doesn’t infringe on others’ copyrights and trademarks, and work things out with the copyright and trademark owners if it is.

• Do we have a registered Digital Millennium Copyright Act (DMCA) Agent?
Only by registering a DMCA Agent with the U.S. Copyright Office can you take advantage of all the “safe harbor” protections if others upload infringing content onto your website.

• Have our terms of use, privacy policy, and children’s usage policies been customized for us?
Don’t take someone else’s policy; they hold the copyright in the portions of it that were customized for them.
Don’t use a policy provided by your trade association, Chamber of Commerce or other organization, because it will not meet your needs. An expert on privacy policies, terms of use, and children’s privacy issues can create a policy that’s right for you – and generally for under $2,500.

• If people are allowed to post on our website or Facebook page, how do we monitor their content and respond if there are violations of our terms of use or other issues?
• What are our best practices for our social media and website/community team?
Do your best practices work for you or against you? Even if you had a set of policies in place a year or three ago, are they still suitable in an economy and marketplace where everyone has smartphones, flash drives and pseudonyms? How do we monitor and manage everything? A lawyer can work with you to write best practices and internal policies that work for you.

• Is all the software we’re using on our office computers properly licensed?
If it isn’t, and the Business Software Alliance finds out about it, they will charge you significant fees for your past infringement. An attorney can help you set up a system to monitor against infringement.

• How can employees/contractors use our logos or talk about the company online?
If you don’t have a page on your website, and a page for your press and marketing teams, you may be restricting use of your logo, business name and brands too much, which limits people’s ability to promote you on social media, including on Facebook.

• Do we have a public relations crisis policy in place?
Now that everyone is on Facebook and Twitter and Instagram, etc., any business, no matter how large or small, can have a PR crisis at any time. If you don’t have a crisis management policy in place, you’ll be like BP during the Gulf Oil spill, or The Onion during the 2013 Oscars, and nobody will know the best way to help you recover. An attorney with PR experience can work with you to develop plans and have them in place should you ever need them – even though we all hope such a time will never come.