The New York Law Blog: Protecting and Capitalizing on your Intellectual Property: IP Law Basics
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Friday, June 10, 2016

Protecting and Capitalizing on your Intellectual Property: IP Law Basics

Trademarks and IP Law
All businesses, including New York businesses, must take steps to protect their trademarks, brands and other IP.

Our international lawyers work throughout Asia and North America and have seen too many issues because of not implementing an IP Protection Strategy, not registering IP, not understanding the domestic value of IP and not considering the global value and differences in foreign law to U.S. law.

Here is what we recommend you must do, at a minimum, to secure your IP:
  1. Form an IP Audit Team.  Form a team to audit your intellectual property - trademarks, service marks, books, manuals, patents, etc. - to determine what assets you have and what needs to be protected. Your attorney should head, or at least, assist this team.
  2. Register your Intellectual Property.  Protect your trademarks by registering them with the USPTO (United States Patent & Trademark Office), which will provide your business, logos, symbols legal protection.  If you have technology that may secure a patent, consult with a Patent Attorney.  If you are not likely to work outside of New York and your IP is not used in interstate or foreign commerce, consider a state registered mark, which is quick and inexpensive to do in New York.
  3. Use TM/SM etc.  Use designations like "TM" and "SM" if your trademarks are not registered and consider using the designation even if the trademark is registered.
  4. Create an IP Protection Strategy.  Consult with your attorney and draft a comprehensive plan to protect your intellectual property to ensure your company has procedures in place to protect your IP and trade secrets.  A proactive lawyer is essential in assisting in this task.
  5. Look Internationally. The ABA Section of Intellectual Property Law Landslide Magazine (May/June 2015) has an excellent article entitled: Trademark Tips: Seven Experts Share Their Secrets.   Ashly Boeshe wrote a great comment that is essential for protecting your IP in Asia. Ashly notes, in part, that:

    "Trademark owners should take a global perspective when protecting their brands. Whether advertising their products or services online or manufacturing products in a foreign country, trademark owners should not only consider seeking trademark protection in their key markets, but also in countries where infringement runs rampant and relief may be difficult to come by. Unlike the United States where trademark rights are obtained through use, several other major economic markets are civil code or "first to file" countries. In these jurisdictions, trademark rights do not commence with use, but rather are granted to the first person or entity to file a trademark application or obtain a trademark registration."

  6. Consider Hiring a P/T In House Counsel.  Many attorneys will work for you based on a low monthly retainer.  The attorney can be used for the foregoing tasks and other essential monthly functions.  Any good attorney will add value to your enterprise and will be worth the small monthly expense.  
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*Gene Berardelli may be contacted at: GeneBerardelli@ipglegal.com

Gene is a New York street-smart attorney with an extreme passion for success. Gene specializes in litigation, arbitration and general corporate law for New York-based and international clients. He, also, is the host of a popular New York talk radio program.