Choosing, Building & Protecting Your Brand (Series: Intellectual Property Boot Camp)

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Practical and entertaining education for
attorneys, accountants, business owners
and executives, and investors.
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DISCLAIMER
The material in this webinar is for informational purposes only. It
should not be considered legal, financial or other professional advice.
You should consult with an attorney or other appropriate professional
to determine what may be best for your individual needs. While
Financial Poise™ takes reasonable steps to ensure the information it
publishes is accurate, Financial Poise™ makes no guaranty in this
regard.
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MEET THE FACULTY
Moderator:
Kimberly A. Berger – Miller Canfield
Panelists:
Darren Spielman – Kain Spielman, P.A.
Ada C. Nielsen – The Peregrine Maven Group
Sanjay Prasad – Prasad IP, PC
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ABOUT THIS WEBINAR:
Choosing, Building & Protecting Your
Brand
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
businesses are likely to face when initially choosing a brand, and later protecting
that brand.
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ABOUT THIS SERIES:
Intellectual Property Bootcamp
Intellectual property (IP) rights constitute an important asset class. Indeed, the
“information economy” and high tech have made this asset class go from one that few
understood and even fewer invested in to one watched and invested in by millions..
IP includes patents, trademarks, copyrights, and trade secrets. How do you create rights in
one of these assets? How do you protect those rights? How do you transfer them (or have
them transferred to you)? How do the interact with each other?
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.
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EPISODES IN THIS SERIES
2/7/19 Episode #1:
Introduction to Key Concepts
3/7/19 Episode #2:
Choosing, Building & Protecting Your Brand
4/4/19 Episode #3:
Buying & Selling IP
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Dates shown are premiere dates.
All webinars will be available
On Demand approximately 4 weeks
after they premiere.

Episode #2:
Choosing, Building & Protecting
Your Brand
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TYPES OF INTELLECTUAL PROPERTY RIGHTS
⚫ A 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
(cont’d)
⚫ 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.

WHAT IS A TRADEMARK?
⚫ A trademark identifies the source of a good or service used in commerce.
➔ Names, brands, words, or phrases (e.g., APPLE®, Apple’s iPod, or
McDonald’s slogan “I’m Lovin’ It”)
➔ Symbols or shapes (e.g., Nike’s Swoosh or GEICO’s Gecko)
➔ Trade-dress or product, package, or store design (e.g., 7-Eleven store
design)
➔ Sounds, scents, or textures (e.g., NBC chimes)

PURPOSE OF TRADEMARKS
⚫ Trademarks promote a consumer’s ability to identify a business’s goods
or services.
⚫ Trademarks protect a business’s goodwill, reputation, and brand
identity.
⚫ Trademark law prohibits a person or business from using the same or a
confusingly similar mark, preventing consumer confusion.

CHOOSING YOUR BRAND
⚫ Most 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)

CHOOSING YOUR BRAND (cont’d)
⚫ 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 REGISTRATION
⚫ Registration 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.

TRADEMARK REGISTRATION (cont’d)
⚫ 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 POLICING
⚫ Police 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

WHAT IS A COPYRIGHT?
⚫ A copyright is an intellectual property right that protects original
works of authorship fixed in a tangible medium. For example,
copyright protects literary, musical, and dramatic works.
⚫ A copyright protects the expression of ideas, not the underlying
ideas of the work. For example, an idea of a song is not protectable,
but the written sheet music is protectable.

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 REGISTRATION
⚫ Similar 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.

COPYRIGHT RIGHTS
⚫ A copyright gives its owner the exclusive right to:
➔ Reproduce the work – others cannot reproduce the work without permission.
➔ Prepare derivative works – others cannot create adaptations without
permission.
➔ Distribute copies of the work – others cannot distribute copies without
permission.
➔ Perform works – others cannot publicly perform certain works.
➔ Display works – others cannot publicly display certain works.

WHAT IS A PATENT?
⚫ A patent is a right granted by the U.S. government to an inventor for a
limited time to exclude others from:
➔ Making, using, offering to sell, or selling the patented invention; or
➔ Importing the patented invention into the United States.
⚫ Patents protect inventions and discovery, including new and useful
processes, machines, products, compositions, or manufactures. Types of
patents include design, utility, and plant patents. Generally, a patent
lasts twenty (20) years from the date of filing.

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.

BRAND PROTECTION WITH PATENTS (cont’d)
⚫ 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 SECRETS
Patents 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 lasts 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 SECRETS (cont’d)
⚫ The 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 ENFORCEMENT
⚫ If 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.

IP ENFORCEMENT (cont’d)
⚫ 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.

ABOUT THE FACULTY
Kimberly A. Berger – berger@millercanfield.com
Kimberly A. Berger is a principal at Miller Canfield in its Detroit office. She specializes in domestic
and international trademark prosecution and intellectual property litigation, including domain
name disputes, trade secrets, unfair competition, false advertising, and trademark and copyright
infringement. Her practice includes managing domestic and international trademark portfolios;
trademark selection, clearance and prosecution; negotiating use agreements; U.S. Patent and
Trademark Office proceedings, including opposition and cancellation actions; and intellectual
property litigation in both state and federal courts. Kim is a member of the council of the
Intellectual Property Law Section (IPLS) of the State Bar of Michigan and currently serves on the
Internet Committee of the International Trademark Association (INTA). She has been recognized
as a Michigan Super Lawyer since 2010 and as a Top Lawyer in intellectual property by “dbusiness”
in 2013 and 2018.
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ABOUT THE FACULTY
Darren Spielman – dspielman@complexip.com
Darren Spielman is a Shareholder of Kain Spielman, P.A. He concentrates his practice in the field of intellectual
property, with an emphasis on trademarks, trade secrets, domain name disputes, copyrights, first amendment law
including slander, libel and defamation. Darren has a Bachelor of Science in Public Relations from University of
Florida. He also earned a Masters in Mass Communications degree from the University of Florida, as part of a joint
degree with the University of Florida Levin College of Law. Darren is admitted to practice in front of the U.S.
District Court for the Northern District of Florida, Southern District of Florida, and Middle District of Florida and
the Eleventh Circuit Court of Appeals.
Darren is a member of the Intellectual Property Committee, the Vice Chair of the E-discovery Committee and the
Computer Law and Technology Committee of the Business Law Section of the Florida Bar. He is also a Board
Member of the Federal Bar Association Broward Chapter. Darren is a member of the Intellectual Property Law
Association of Florida, the First Amendment Lawyers Association and the Broward County Bar Association.
To read more, click here https://www.financialpoise.com/financialpoisewebinars/faculty/darren-spielman/
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ABOUT THE FACULTY
Ada C. Nielsen – ada@peregrinemaven.com
Ms. Ada C. Nielsen is a member of newly-formed formed Xinova LicensingMasters and is Managing
Director of The PeregrineMaven Group. She created The PeregrineMaven Group to commercialize inventions,
& improve profitability for new & established businesses, products & services. In addition, she is launching a
consulting practice around sustaining the business/technical cultures of creating and protecting trade secrets.
She has commercialized dozens of inventions & created new ventures in chemicals, materials & energy – as
well as in other market areas. She has been successful working for major companies (such as Amoco, BP, Nalco
Chemical Company & Chemical Waste Management) in business development, finance, sales & marketing –
measured by commercial success & an improved bottom line.
She served on the board of the Association for Corporate Growth Chicago for 7 years), is a member of
Societe Chemie (NYC), & Private Directors Association. She served as president of the Licensing Executives
Society (USA& Canada) Inc. in 2010, as Wisconsin Chapter Chair for LES, and as president of the Commercial
Development & Marketing Association in 2004.
To read more, click here https://www.financialpoise.com/financialpoisewebinars/faculty/ada-c-nielsen/
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ABOUT THE FACULTY
Sanjay Prasad – sanjay@prasadip.com
Sanjay Prasad is a Principal at Prasad IP, PC in the San Francisco Bay Area.
Sanjay has practiced at the forefront of technology and intellectual property for over twenty years. He is
experienced in all business and legal aspects of intellectual property from developing IP strategy for senior
management to execution of the strategy, including patent portfolio development, deal development and
negotiation and monetization. His experience includes:
➢ As outside counsel, advising emerging and established companies on all aspects of patent matters including
portfolio development, infringement matters, patent studies, technology licensing.
➢ As chief patent counsel to a Fortune 100 company, leading the transformation of the patent strategy including
its approach to patent procurement, licensing and litigation, and multiple policy, standard setting and software
licensing matters.
➢ As licensing and business executive – deal development, negotiation and close, patent sales and acquisitions,
development of patent licensing programs, building and leading patent licensing/sales teams in the U.S. and
abroad.
To read more, click here https://www.financialpoise.com/financialpoisewebinars/faculty/sanjay-prasad/
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QUESTIONS OR COMMENTS?
If you have any questions about this webinar that you did not get to ask during
the live premiere, or if you are watching this webinar On Demand, please do
not hesitate to email us at info@financialpoise.com with any questions or
comments you may have. Please include the name of the webinar in your email
and we will do our best to provide a timely response.
IMPORTANT NOTE: The material in this presentation is for general educational purposes only. It has been prepared primarily
for attorneys and accountants for use in the pursuit of their continuing legal education and continuing professional education.
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