You’re starting a new biz. Congratulations! No doubt you’ve spent time figuring out your logo, the design of your website, etc. Have you thought about your intellectual property and doing some IP planning? It seems a little chicken-before-the-egg (do you register first or launch first?). And, yes, it’s a little less “sexy” than web design. But, IP planning for a new business could be one of those things where your future self will thank you if you actually sit down and do it.
Note: Of course, this list is not exhaustive, and there can be many other legal issues that crop up when starting a new business. (Maybe patent law affects you. There are also employment laws, HIPAA, tax laws, or others that can affect new businesses). Always consult with an attorney prior to acting or deciding not to act!
A copyright assessment may come naturally for businesses in creative fields such as photography, film-making, painting, and music. Remember, though, that copyright covers creative works. It can even apply to things you might not think of. (Think: powerpoint presentations, free downloads that you distribute, and the content of your website). There are advantages to timely registering your creative works with the Copyright Office. That includes the potential to recover attorneys’ fees, and the possibility of recovering statutory damages (which range from $750 to $30,000 per work infringed — or up to $150,000 for willful infringement!).
IP planning for a new business should take into consideration the creative works owned by the business. Also, look at any agreements that need to be in place in order to ensure that the business actually owns those works (not a contractor or freelancer) and whether the works should be registered.
Aside from “Isn’t the name of my new business awesome?” trademark protection is not something that’s always at the forefront of a new business owner’s mind. While the awesomeness factor is a big one, so should be availability, protectability, and the ability to be registered. (Don’t forget the benefits of trademark registration.) If someone else is already using a mark similar to yours in connection with a similar offering, it’s better to come up with a new name before launching. When it comes to registration, should you start using it first, or should you register first? You’ve got options: you can file after you’ve begun using your mark, or on an intent-to-use basis (before you’ve started using the mark, which requires an additional filing later on).
On the trademark and branding side, IP planning for a new business might consist of doing a thorough trademark search (or having one performed for you) in connection with any trademarks or service marks your business is using or has a bona-fide intent to use in commerce, considering trademark registration, educating your employees (or just yourself) as to the proper use of the marks and use of the TM symbol versus the ® symbol, and getting any necessary trademark licenses in writing.
No discussion of IP planning for a new business would be complete without a discussion of trade secrets. Trade secret information is valuable, secret information that can pertain to your business methods, marketing plans, customer lists, and even recipes. IP planning in the context of trade secrets should include determining what trade secrets your business has (if any), limiting access to trade secret information, designating documents that contain trade secret information as CONFIDENTIAL or TRADE SECRET INFORMATION, and determining whether and when to use a non-disclosure or similar agreement.
Starting a new business is incredibly rewarding. A little preparation and planning on the front end can go a long way!