IP Strategies for Your Online Business

Transitioning into an online business may feel daunting. From operations to technology, there are so many potentially new processes. Business owners currently operating online can also benefit from a review of their operations and how they can best protect their work. Don’t let your intellectual property strategy hinder your success! Here are five perspectives of what you need to consider when engaging online:

Advertising and Marketing 

  1. Marketing your product or service is an integral part of any business, especially when operating online. Creating an advertising strategy that abides by legal guidelines may sound confusing but there are a few easy tips.
  2. Firstly, make sure that all claims are truthful and substantiated. If you’re selling socks, don’t say that they can fix a broken bone.
  3. Don’t forget that this also applies to social media. Not only you and/or your business, but anyone you may work with such as content influencers, with must adhere to these rules.

Trademarks

  1. Select a strong name and/or logo for your business. What is a strong name? A good rule of thumb is, if it describes what you’re selling, it’s probably not distinct enough.
  2. Make sure you take steps to decrease the likelihood of infringement. Before committing to a name to use commercially, consult with a legal team to search existing marks and assess potential risks.
  3. Will you conduct business in multiple countries? Keep up to date with individual country’s trademark requirements so you understand how to file.
  4. Lastly, make sure to review your contracts to be aware of which rights you have and which rights you are granting. You cannot grant any rights that you don’t have! If you need help deciphering a contract, reach out.

Copyright

  1. Is there content that you use on your website, social media, or mobile apps? Make sure you know whether you can use media like music, text, photos, art, video, or other content in various ways- personally, commercially, within whatever geographic restrictions. Additionally, follow “proper credit and/or attribution” requirements for the content.
  2. Are third-parties able to post content on your website? You may want to limit your liability against their potential copyright infringement by taking advantage of the Digital Millennium Copyright Act (DMCA)’s Safe Harbor. Let us know if you need help navigating these requirements.
  3. Is there a person whose name, likeness, or image you are using in connection with your business? There are right of publicity laws that you must follow as well as applicable state laws.
  4. An online entrepreneurs’ website is like their online storefront. Do you have a clear agreement with your website or software developer? Make sure any other tools created for the operation of your business, like mobile apps, are included in your strategy. A well-written contract is a good way to take preventative measures before the work is done to avoid later infringement or theft.

Privacy and Other Legal Considerations

  1. Be in the know when it comes to changing data privacy and internet laws. Specific state laws may apply to your business even if you are not physically located there.
  2. The California Consumer Privacy Act (CCPA) and Californica Public Records Act (CPRA) grants California residents greater control over their personal data and how businesses use that information. If you want to prepare your businesses for CPRA compliance, start by reviewing how your company collects data, and then contact a professional about how to make sure everything is above board and complies with the new laws.
  3. Virginia recently passed similar legislation known as the Consumer Data Privacy Act (CDPA). There are some differences compared to California’s legislation such as which businesses apply to the regulations.
  4. Finally, set up your online presence to comply with other regulations such as the Americans with Disability Act (ADA). For example, make online offerings available to those with disabilities. Other important legislation includes the Children’s Online Privacy Protection Act (COPPA) and the Communications Decency Act (CDA).

Protection Strategies

  1. Last but certainly not least, educate yourself and pursue all routes to protect your content.
  2. Seeking registration with the Copyright Office and/or the USPTO is a great first step in protecting your business and intellectual property.
  3. Another strategy which helps to prevent improper use is to include notices on your website, social media, and /or mobile applications.
  4. If you are concerned about improper use, explore all monitoring tools and consult with your legal team.

Whether you already conduct business online or not, the internet is here to stay. It’s become an invaluable economic resource, especially with the need for remote options in the past year. As such a fast and accessible way to work, make sure you take into account all your legal and commercial options as an intellectual property owner.

(This is not intended as legal advice. Contact a lawyer for assistance in your particular situation.)

Protect Your Brew: National Beer Day and IP

It’s no secret that Virginia loves a good brew. Virginia boasts an impressive selection of craft breweries and cideries, with more than 30 breweries in Richmond alone! But, did you know that several other states have an even higher proportion of breweries per capita? Vermont, Maine, and much of the Pacific Northwest carry an even denser selection of craft beer.  With so many small and mid-size independent brewers emerging in Virginia and across the country, it’s important for those in this increasingly competitive industry to understand their intellectual property rights. This National Beer Day, we wanted to share important legal considerations for those in the industry.

Our legal team tailors our established expertise in the field of intellectual property to assist in the protection and success of brewery-specific concerns.  From business formation to naming your brews, to protecting specialty artwork and maintaining local partnerships we offer assistance so you can focus on your craft.

Trademark Law:

How much have you attached to your brand’s name and logo? A trademark represents all the hard work you have put into your business and sets you apart in the field.  We can assist you with protecting your business/brewery name, beverage names, and taglines or slogans and enforce your rights in the same.  It is important to take steps to solidify your brand and ensure that your product is not confused with others.  Additionally, working with counsel prior to using a new trademark can help protect you from infringing upon others’ rights, and could avoid a costly infringement scenario.

Trade Secret Law:

How important are your recipes to your business? The recipes for your unique ciders and brews are only as valuable as they are kept in confidence. Trade secrets can be vital to a company’s survival, and are often among a business’s most valuable corporate assets.  Failing to properly protect trade secrets (for example, by filing a patent for a recipe that then discloses the details to the public) can prove disastrous for businesses.  Trade secret law provides an avenue to protect your valuable intellectual property while allowing it to be kept secret and potentially protected forever (while a patent only lasts for 20 years, a trade secret will last for as long as it is kept secret). Fortunately, there are measures you can take as well as policies and contractual provisions we can help you put in place to help protect your trade secrets.

Copyright Law:

Do you have artwork on your label? Did an artist create your logo or website? Alcohol brands dabble in copyright law more than you may expect. Brands should recognize the importance of filing and registering copyrightable subject matter to protect their hard work. Copyright registration and strong contracts and/or copyright assignments when necessary can help avoid preventable issues such as ownership disputes and infringement actions.  For example, under copyright law the author of the artwork, logo, website, etc., could own that material instead of the business unless the business has agreements in place that state otherwise. Our team can help ensure rights to commissioned works are transferred appropriately and provide the best copyright enforcement approach.

Licensing Law:

Do you want to partner with a local bakery for a wheat beer? How about a local coffee place for a stout? These kinds of deals can involve the sharing of proprietary information, and the parties may need to obtain permission to use the other’s trademarks and/or copyrights to market the product. Ensuring that proprietary information is kept confidential, and that certain guidelines are followed by the other business using your trademark, are smart measures to take.

Contract Law:

One of the best ways to safeguard against the various intellectual property issues mentioned above, as well as other legal issues impacting breweries, is a well drafted contract. Do your existing contracts cover all the bases with your vendors, business partners, or other third parties? How about your employment agreements?  Are they protective enough of your company in the event of a disgruntled employee? Thinking through these issues and contacting an attorney for assistance is not cynical – it’s a smart step towards safeguarding your business and ensuring its success.  Companies in the alcohol industry have significant need of contracts due to the many moving components needed to operate, and there is no one-size-fits-all contract.  Notably, brewers conducting business in certain states including California and Virginia should consider whether data privacy laws apply to their businesses that may impact their contractual requirements (The forthcoming  Virginia Consumer Data Protection Act may affect your business, which you can learn more about here.)

Celebration of National Beer Day on a brewery patio in Richmond, VA

This National Beer Day, we would like to raise a glass to the love and dedication that Virginia brewers pour into their craft.  Craft breweries, cideries, and wineries in any state should explore how considering these legal issues and putting protections in place can benefit their business. No matter what your specialty is, we want to help you protect it.

(This blog post is not intended as legal advice.  Please contact us for more information and assistance regarding your particular situation.)

 

 

Celebrating St. Patrick’s Day the Trademark Way

Although St. Patrick himself is steeped in hundreds of years of legend, there are a few remaining things that we know today. Many scholars credit him with bringing Christianity to the Irish people. We celebrate him on the 17th of March, the date that supposedly marks his death. One of the most common legends that most people may know revolves around the shamrock, a symbol of Ireland frequently used with the holiday and with Irish products and services. The tale holds that St. Patrick used the three leaves on commonly found Irish clover, the shamrock, to explain the Holy Trinity of Father, Son, and Holy Spirit. Since his death, the tales of St. Patrick’s life have grown and become strongly tied with Irish culture.

The modern holiday began on the small island years ago but it has now grown into a major celebration with economic opportunity. No shortage of green items are available to enhance the festivities. This St. Patrick’s Day, our team took some time during our regular Thursday afternoon meeting to host a Skribll.io tournament. The Irish theme meant drawing prompts such as shamrock, rainbow, pot of gold, and the classic green beer.

Speaking of Irish symbols, there are several Irish and St. Patrick’s-related examples of protected intellectual property. The U.S. Trademark Office has thousands of registrations and pending applications that feature a shamrock as part of the design. One product somewhat synonymous with the holiday is the classic pint of Guinness. Guinness first trademarked its iconic harp in 1876. The same type of Irish harp is actually the Republic of Ireland’s official national emblem. In order to differentiate between the two, the Irish government turned the harp the opposite direction! Trademark complexity is as old as the protections themselves, but that’s where we can help. Gavin Law Offices is here for all your trademark needs.

 

(This is not intended as legal advice. Contact a lawyer for assistance in your particular situation.)

 

 

Trademark Modernization Act: What You Need to Know

Congress passed the Trademark Modernization Act of 2020 on December 27th. It will become effective one year after its passage and aims to support businesses’ marketing and branding decisions in relation to their trademark registrations. As it introduces significant revisions to the Lanham Act, it provides new ways to challenge pending applications and existing registrations at the Trademark Office.

Because courts across the country took various positions regarding whether infringement created irreparable harm, the Act clearly restores a rebuttable presumption of irreparable harm to obtain injunctive relief for a trademark violation. The Act also establishes new procedures for third parties to challenge fraudulent applications and registrations.

Trademark owners will have new options in their brand protection arsenal but should also be aware that these procedures could open their trademark applications and registrations to new types of challenges from competitors. This stands as a pertinent reminder of the importance of trademark preclearance, monitoring, and enforcement.

For any questions about trademark filing procedure and the best path to protect your trademarks, please contact Gavin Law Offices, PLC. As a team that specializes in trademark filing and maintenance, we’re here when you need us.

(This is not intended as legal advice. Contact a lawyer for assistance in your particular situation.)

Will Trademark Holders Lose Rights in the UK?

By Elionas2 from Pixabay

While the United Kingdom formally withdrew from the European Union early last year, the Brexit transition period officially ended on December 31, 2020.  During the transition period, European Trade Mark Registrations (EUTMs) still extended to the UK and provided EUTM owners protection in the country.  Although as of January 1, 2021 EUTMs are no longer protected in the UK, the UK Intellectual Property Office (UK IPO) has created “comparable trade marks” for all registered EUTMs.  These comparable trade marks have the same legal status as if they were originally applied for and registered in the UK.  Owners of registered EUTMs did not need to request that any such comparable rights were created – this process was automatic.  Moving forward, the below points may be helpful in navigating trademark protection in the UK:

  • Pending EUTM applications – Any EUTM applications still pending on January 1, 2021 will need to be re-filed as new UK trade mark applications. Applicants may file new UK applications by September 30, 2021 to maintain the filing date and priority date of their EUTM applications.  The UK trade mark must be identical and cover the same goods and services as the EUTM.  UK trade mark application filing fees will apply, and the UK application will be subject to the same review process as any other UK trade mark application.
    • Because filing dates are important outside of the US, applicants with pending EUTM applications should aim to file within the 9 -month period after January 1, 2021 to ensure they are able to claim the same filing/priority dates in the UK as their EUTM applications. This process will not be automatic and requires action by applicants/counsel.
  • Address for Service in the UK – Those wishing to apply to register a trade mark in the UK should note that an address for service in the UK is required for new applications. Under the UK IPO’s new rule, owners of UK comparable trade marks will not need to change their address for service for 3 years if their new comparable trade marks were created from registered EUTMs.  After January 1, 2024, comparable trade mark owners will need to change their address for service to the UK only if their right is subject to proceedings (if your right is challenged and your address for service is outside the UK, the UK IPO will ask you to provide an address in the UK to engage in those proceedings).  Interestingly, this 3-year exception for comparable trademarks does not apply to comparable trade marks created from international registrations designating the EU under the Madrid Protocol.
    • This rule will limit businesses/individuals from filing UK trade mark applications themselves if they do not have a UK address. Owners of comparable UK trade marks may want to look into whether their existing EU counsel has an office in the UK.  Otherwise, such owners will need to appoint a new representative in the UK by January 1, 2024.  If your comparable UK trade mark was created from an EU designation under a Madrid Protocol application, the 3-year exemption period does not apply and you may need to appoint a representative with a UK address for service now.
  • Use Requirements – For EUTMs, an owner may use a mark in any member state of the EU to demonstrate use across the EU. Because the UK is no longer part of the EU, those applying for a UK trade mark will need use the mark in the UK in order to demonstrate use and may not rely on use in the EU.  For those with existing EUTM registrations that created comparable UK trade marks, the UK IPO will consider previous use in the EU.  However, owners of new UK comparable trade marks should note that marks become vulnerable to cancellation proceedings in the UK on the grounds of non-use after five years.  Thus, owners should put their marks to use in the next few years in the UK (if not already in use) if they wish to maintain their UK trade mark registrations and to avoid becoming vulnerable to cancellation proceedings.

For other questions, Gavin Law Offices is glad to advise on EU and UK trademark matters.

– Courtney Reigel, Esq.