Choosing & Protecting Your Brand

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CHOOSING AND PROTECTING YOUR BRANDINTELLECTUAL PROPERTY-201 SERIES

Premier Date: September 23, 2016

Premier Date: September 23, 2016

IP-201 2016 SERIES

CHOOSING AND PROTECTING YOUR BRAND

© 2016 DailyDAC, LLC d/b/a/ Financial Poise™ 2

WE WOULD LIKE TO TAKE THIS OPPORTUNITY TO THANK OUR SPONSORS



meet the facultyPANELISTS

Eric Curtin Crawford Maunu, St. PaulMichael Kelber Neal Gerber & Eisenberg, ChicagoKal Shah Benesch Friedlander Coplan & Aronoff, Chicago

MODERATOR Cory Spence

SpencePC


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NOT BE CONSIDERED LEGAL ADVICE. YOU SHOULD CONSULT WITH AN ATTORNEY TO DETERMINE WHAT MAY BE BEST FOR YOUR INDIVIDUAL NEEDS.

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about this webinar

A business’s brand defines it in the market and allows consumers to identify products associated with the business. As such, in today’s competitive marketplace, businesses must carefully choose which brands to develop, and how to protect those brands from competitors. This webinar discusses some of the challenges that business are likely to face when initially choosing a brand. It also discusses the legal issues that businesses will likely encounter when protecting that brand.


about this seriesIn today's economic environment, intellectual property (IP) rights have become increasingly important assets for both individual and corporate entities. More and more, both are recognizing the economic importance of IP rights--whether those rights consist of a single patent--or whether they consist of an entire portfolio also including trademarks, copyrights, and trade secrets.

This information-packed webinar series focuses on the intricacies of IP rights as they relate to the specific areas of brand protection, IP transactions, internet marketing, and other IP issues that are critical when representing innovators and inventors. Join some of the leading attorneys in the World, as they discuss—in plain English for the non-expert—some specific IP challenges that individuals, businesses, and those who represent them are likely to face.

As with all Financial Poise webinars, each episode in the series is designed to be viewed independently of the other episodes, and listeners will enhance their knowledge of this area whether they attend one, some, or all of the programs.


episodes in this series

EPISODE #1 Choosing & Protecting Your Brand

9/23/16

EPISODE #2 Buying & Selling IP 10/21/16

EPISODE #3 Setting Up a Website 11/18/16

EPISODE #4 Legal Issues for Innovators & Inventors 12/16/16

Dates above are premier dates; all webinars also available on demand


Types of Intellectual Property RightsA business may use the following intellectual property rights to protect its brand:• Trademarks identify the source of a good or service used in commerce.• Copyrights protect original works of authorship, including literature, music,

artistic works, and computer software.• Patents grant property rights on inventions, allowing the patent owner to

exclude others from making, selling, or using the invention.• Trade Secrets are formulas, processes, devices, or other business information

that companies keep secret and out of the public domain.


Types of Intellectual Property Rights• What do you want your brand to convey?• Primary principals to follow when choosing a

brand:• Functionality – describes the nature of the business (e.g.,

Facebook, IBM, Microsoft).• Memorability – a name that “sticks” in consumers’ minds (e.g.,

Google, Amazon, Twitter).• Simplicity – a name that is both simple to spell and pronounce.

• Test the name with potential customers.


Choosing Your BrandMost importantly, choose a brand name that can be trademarked.• A successful brand name will create a strong link between the business

name and the good or services that the business provides.• Trademarks that have no relation to the product or service offered are

often times the strongest types of marks (e.g., Google, Apple, Amazon) • On the other hand, descriptive marks provide less protection because if

term is descriptive, it can be used by anyone else selling similar goods or providing similar services (e.g., Grocery Store, Shopping Mall, Gas Station).

• From a legal standpoint, the best marks are either fanciful or arbitrary• Fanciful marks are names that have been invented for the sole purpose of functioning

as a trademark (e.g., Exxon, Kodak, Xerox)• Arbitrary marks are names that have a common meaning, but possess no relation to

the good or service being provided (e.g., Apple, Camel, Lotus)


Brand Protection With Trademarks• Perform a trademark clearance search to see which brand names are

already protected.

• Register the mark and protect the brand name with a “TM” while waiting approval from the U.S. Patent and Trademark Office (USPTO).

• Upon approval, label each mark with an ® to indicate full ownership of the mark.

• Enforce the trademark


Trademark RegistrationRegistration of a trademark is not necessary, but registration provides benefits to the owner. • Nation-wide notice and constructive use. A registered mark is deemed to have been in

use throughout the United States as of the application filing date such that it will have priority over a confusingly similar mark.

• Right to use the registered trademark symbol ®.• Discourage others from using the trademark. • Allows the U.S. government to block knock-offs and imports that unlawfully use the

mark. • Provides benefits related to foreign registration. • Validity of ownership, heightened protection after five years, and a possibility of the

mark becoming “incontestable.” • Right to obtain enhanced damages and attorneys’ fees in some cases.• Provides the ability to obtain statutory damages in counterfeiting cases.


Trademark PolicingPolice the mark to monitor for misuse• Decide where to police the mark• Develop a proactive system to learn of misuses• Periodic web searches, including the TESS database• Google alerts• Trademark watching services


Brand Protection With Copyrights• Register the copyright with the U.S. Copyright Office.

• Clearly mark ownership of any written material with a © or the word “copyright” along with the material’s publication date.

• Establish clear ownership of copyrighted material with all third-party publishers.

• Police the copyright.


Copyright RegistrationSimilar to trademarks, registration of a copyright is not necessary, but registration provides benefits to the owner.

• Required before an owner can bring a lawsuit for infringement.

• If done within 3 months of publication, it provides the ability to obtain statutory damages and attorney’s fees.

• If done within 5 years of publication, it will constitute as prima facie evidence in court that the copyright is valid and that all the facts stated in the certificate of registration are true.

• Provides notice of ownership to the public.


Brand Protection With Patents• Employment Agreements should be drafted to assign ownership of all

employee inventions, done in the normal course of business, to the business.

• Establish policies wherein all engineers and scientist in the company maintain meticulous notebooks of their research.

• Patent the invention as soon as possible.• File a provisional application to preserve the priority date of the

invention.• Protect pending applications from reaching the public domain until the

application is officially published by the USPTO.• Properly mark each product with the required patent numbers. • Police competitors products for possible infringement.


Protecting Software With Patents• The recent Supreme Court Case, Alice Corp. v. CLS Bank

has muddied the waters as it relates to software patents.• Test: Is the claim directed towards an abstract idea? If so,

does the claim contain an “inventive concept” sufficient to transform the abstract idea into a patent eligible application?

• Adding the language “via a computer” may not be enough to add an “inventive concept” to the application.

• In some circumstances, a business may want to consider copyright protection for its software.


Brand Protection With Trade Secrets• A trade secret is any valuable business information that is not generally

known to the public, such as business methods, manufacturing processes, and chemical formulas.

• In order for information to be deemed a trade secret, the owner must take active steps to protect the information.

• A trade secret will be protected from exploitation by those who – • obtain access through improper means; • obtain the information from one who they know or should have known gained

access through improper means; or• breach a promise to keep the information confidential.


Patents vs. Trade SecretsPatents Trade Secret

Advantages •Protection regardless of what competitors may subsequently develop•Grants exclusive rights to make, use, sell, offer to sell, or import the invention

• Invention need not be patent eligible•Protection not limited in time• Immediate effect•Low cost

Disadvantages

• Invention must be patent eligible•Protection only last 20 years•Not effective until patent is granted, which could take 3-5 years from the filing date•High prosecution cost and maintenance fees

•Does not prevent others from acquiring and using trade secrets, it merely protects acquisition by improper means.•Business must take active steps to keep the information secret, such as restricting information within the company and labeling information as confidential


Patents vs. Trade SecretsThe following factors may determine whether a business chooses to patent their invention or keep it a trade secret:

• Is the invention patentable?

• Can the invention be reversed engineered?

• Is the invention detectable and embedded in the product itself, or is it part of the manufacturing process?

• What is the “shelf life” of the invention?

• What is the industry norm for the relevant technology area?


IP EnforcementIf infringement is detected, a business may enforce its intellectual property via a variety of means:• Send a cease and desist letter to the infringer.• If a federal application of the infringing mark or patent is pending, oppose the

application at the USPTO.• Commence formal legal action by filing a lawsuit.

• A majority of IP cases take place in Federal Court.• Important to seek a preliminary injunction against the offending part.• Damages may include lost profits and reasonable royalties.• IP cases can stretch on for years, so a business may want to to exhaust all actions

before commencing formal legal action.

More About The Faculty D

WILLIAM [email protected]

William Spence assists individual and business clients to obtain their best possible outcome in contentious legal matters. He has extensive experience in litigation, arbitration, and mediation involving all areas of intellectual property law. A registered patent attorney, Mr. Spence serves clients by providing advocacy and advice in the areas of: patent infringement; trade secret misappropriation; unfair competition (including conspiracy, tortious interference, and related antitrust claims); breach of contract; post-grant patent proceedings (e.g., inter partes review) ; trademark infringement; and copyright infringement.

He has litigated claims in both state and federal courts throughout the United States. Additionally, Mr. Spence has extensive experience with patent monetization strategies and complex, international patent infringement litigation involving multiple parties and jurisdictions, most notably including Japan. He is a published author and frequent speaker on patent monetization and other intellectual property issues, and has been repeatedly recognized as an “Illinois Rising Star” and “Illinois Star,” in the area of intellectual property.

Mr. Spence is a graduate of the University of Notre Dame, where he obtained separate Bachelor of Science Degrees in Chemical Engineering and Biophysics (“Physics in Medicine”). As a student he received the distinction of Notre Dame Scholar and also earned the Monogram Award. Upon graduation from Notre Dame, Mr. Spence received his commission as a Second Lieutenant in the United States Air Force, Medical Service Corps. After completing his military service, he worked for several years in the chemical industry before pursuing his legal education at the University of Houston Law Center.

Prior to forming SpencePC, Mr. Spence spent twelve years practicing law with Kirkland & Ellis LLP in Chicago, IL and Tokyo, Japan.

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More About The Faculty D

ERIC [email protected]

Eric’s practice has included the preparation and prosecution of patent applications in the electronic, electromechanical, biomedical, chemical and optical technology areas, and further in the area of computer-implemented/software inventions. Eric also assists clients in the procurement of trademarks and copyrights, and with various aspects of trademark and copyright law including oppositions, cancellations, and license agreements. He maintains a robust practice in client counseling, including opinions of infringement/invalidity.Eric leads his firm’s legal education efforts, has authored multiple intellectual property articles, and serves as an expert on nationally-broadcast panels concerning patent, trademark and copyright matters. His recent article “Functional Claiming Under U.S. Patent Law” has been published by the International In-house Counsel Journal.

Technically, Eric has significant experience in various cross-disciplinary fields including those involving wireless communications technologies, semiconductors, medical/biological devices, thin-film transistors, solar cells, proteomics and nanotechnologies. He has worked extensively in the semiconductor design, physics and materials science fields, and in a variety of communications fields involving mobile electronics, video processing, and media content streaming.

Prior to entering the legal profession, Eric worked in engineering and research areas for the automotive and plastics industries. He is experienced in prototype modeling, failure analysis, and in the design, installation, and operation of electronic controls, robotics and communications systems.In addition to his legal and industry experience, Eric is involved with non-profit and community organizations, serving on the board of directors for two Minnesota-based non-profit organizations that promote youth athletics.

Eric has engineering and law degrees from the University of Wisconsin at Madison. He is licensed to practice law in several state and federal courts and is a registered patent attorney. 24

More About The Faculty:


MICHAEL [email protected]

Michael co-chairs Neal Gerber Eisenberg’s Intellectual Property practice group in Chicago.

He represents and counsels individuals and corporations in all aspects of intellectual property law and related transactions and litigation. He has represented clients in copyright, trademark and patent litigation, including seeking and defending temporary restraining orders, preliminary injunctions and summary judgment motions. He has prepared and prosecuted thousands of U.S. and foreign patent and trademark applications. Michael has also drafted and negotiated patent, trademark and software development licenses, and information technology outsourcing and development agreements, as well as music and book publishing agreements and film and video production and distribution agreements.

Before and during law school, Michael spent six years working for MCI Communications Corporation, where he managed the telecommunications needs for all of MCI’s internal offices from the Midwest to the Northeast regions of the U.S.

Michael is a member of the International Trademark Association and American Intellectual Property Law Association. He has been listed in The Best Lawyers in America since 2016 in the area of Trademark Law. Michael is also listed in the 2016 edition of Illinois Super Lawyers. Michael teaches a course at Chicago-Kent College of Law titled “IP Advocacy: Administrative & Appellate.”


More About The Faculty KAL SHAH

[email protected] K. Shah is a partner in the litigation group of Benesch, Friedlander, Coplan & Aronoff, representing clients in complex commercial and intellectual property litigation matters. On the commercial side, Kal represents clients in a variety of matters including multifaceted contract litigation, fraud defense, derivative actions and other business disputes. Kal also serves as Chair of his firm’s Patent Litigation Practice Group. Kal leads the firms efforts in patent litigation and represents clients in patent matters spanning a variety of scientific disciplines including computer science and internet applications, bioengineering, electrical technologies and lighting systems, mechanical systems and wireless technologies.

Kal handles matters in federal and state courts across the country, including in the Eastern District of Texas. Kal also represents clients in Lanham Act disputes, software license and copyright matters and other related cases.

Kal also served as an adjunct professor at Loyola University Chicago School of Law teaching patent litigation.Kal began his legal career at Kirkland & Ellis LLP where he worked his way from Associate to Partner in both intellectual property and commercial litigation departments. Kal subsequently joined Thompson Coburn LLP, then Locke Lord, before joining Benesch. During law school, Kal worked as an engineer at Abbott Laboratories.

Visit www.eisneramper.comEisnerAmper. Let's Get Down to Business®

EisnerAmper LLP is a leading full-service advisory and accounting firm, and is among the largest in the United States. We provide audit, accounting, and tax services, as well as corporate finance, internal audit and risk management, litigation services, consulting, private business services, employee

benefit plan audits, forensic accounting, and other professional advisory services to a broad range of clients across many industries. We work with high net worth individuals, family offices, closely held businesses, start-ups, middle market and Fortune 500 companies. EisnerAmper is PCAOB-registered and provides services to more than 200 public companies and to thousands of entities spanning the hedge, private equity, brokerage and insurance

space in the financial services marketplace. As companies grow we help them reach their goals every step of the way. With offices in New York (NY), New Jersey (NJ), Pennsylvania (PA), California (CA), and the Cayman Islands, and as an independent member of Allinial

Global, EisnerAmper serves clients worldwide.

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Important Notes

• THE MATERIAL IN THIS PRESENTATION IS FOR GENERAL EDUCATIONAL PURPOSES ONLY.

• IT SHOULD NOT BE CONSIDERED LEGAL, INVESTMENT, FINANCIAL, OR ANY OTHER TYPE OF ADVICE ON WHICH YOU SHOULD RELY.

• YOU SHOULD CONSULT WITH AN APPROPRIATE PROFESSIONAL ADVISOR TO DETERMINE WHAT MAY BE BEST FOR YOUR INDIVIDUAL NEEDS.

Choosing & Protecting Your Brand

Education

Transcript of Choosing & Protecting Your Brand