Trademark Lawyer and Managing IP Strategically

by Michelle Bomberger | October 6, 2015

As you plan for your business, I expect you look at your financials and plan the needed adjustments to marketing, staffing, capital purchases, and other operational activities to meet your goals for the coming year and beyond. In addition, there’s a component of strategic planning which includes review of your bigger goals (BHAGs for those who know Jim Collins’ work) and what incremental steps should be taken during this year and the next to maintain focus on the bigger achievements of the company. How often is intellectual property considered in the strategic planning conversation? I expect it rarely is, yet IP can have both an immediate and strategic effect on a business’ position and competitive advantage in the marketplace.

What kinds of IP exist? The purpose of granting IP rights is to enable a creator to exclude others from copying or using the IP without permission; so it’s important that you understand how to protect the IP you have created. This is a complex area and all the nuances cannot be explained here, but below is a simple description of each the four IP categories and how protection is secured:

IP Class	Definition	Method for Protection
Copyright	A copyright is an original work of authorship.   We commonly think of this in the creative sense – music, art, literature.   However, for your business, it’s anything you create that you believe adds value to your business and you want to protect it from others’ use or reproduction. Examples are templates, questionnaires, graphics, and logos.	The author is granted copyright rights in the work as soon it’s put into a tangible form. The author has the right to exclude others from using the copyrighted materials.   The author may file for federal copyright protection which provides statutory penalties for infringement.
Trademark	A trademark is a word, graphic or other item that the customer identifies with your business. We usually think of this as a “brand.”	The trademark holder is granted trademark rights in the mark as soon it’s used in commerce in connection with particular goods or services. The holder has the right to exclude others from using the trademark within the industry and geography where the mark has been used. The holder may file for federal trademark protection which provides greater protection and statutory penalties for infringement.
Patent	A patent is an invention for which you have been granted exclusive use.	A federal patent is essential to protect the innovation during development and exclude others from using the innovation.
Trade Secret	A trade secret is valuable commercial information that gives your business an advantage because you have it and others do not.	The only protection for a trade secret is to maintain its secrecy.

What IP do I have? The first step is to determine what IP you have and what value it offers your business. You should also determine whether it is fully protected or whether additional protection is needed. You may have a well-recognized logo but have never pursued federal protection for the trademark. You should understand whether you are able to file for federal protection under the law. Similarly, you may have an innovation you have been contemplating and are unsure whether a patent is worth pursuing. The IP you’ve built already brings value to your business through the goodwill your customers and other stakeholders find in doing business with your brand or buying your unique product. It stands for something and should be treated as a valuable asset and protected to the best of your ability.

What’s the ‘strategic’ part? There’s the IP you know you have and the IP you can create. The value of your business will improve if you have unique, valuable assets that no one else has. Consider what makes your business unique and build IP to support that unique value proposition. What materials, branding, or inventions are you known for – or should you be known for? Create a plan to build these assets so they are a part of the value you can offer to your clients and transfer to a buyer in the future.

How do I ‘manage’ my IP? Strategically managing your IP includes a few essential steps. First, you need an inventory of what you currently have and what you plan to create. This inventory should be updated regularly as new ideas are generated and new assets developed. Decisions should be made as to the role of IP in the business and how best to protect it. Consider a company like Starbucks. Starbucks has dozens of trademarks which include variations on the logo and newly branded products. Each time something new is launched, they make a decision as to how that brand will be managed – what name is appropriate, is it available, how quickly should a federal trademark application be filed. Patents are similarly planned, especially since secrecy is critical and a patent has a limited life. The content of the patent application should be planned so that it can be leveraged and built upon for the future. These decisions are part of a bigger plan to ensure the company’s IP continues for its benefit as long as possible. Doing this right is essential because the consequence of an error could be the loss of protection and value to the company. It’s smart to engage legal counsel in this process.

Conclusion. IP is often an afterthought in business planning. It’s a reaction to something the business does rather than a forward-thinking part of creating value for the enterprise. Instead, it should be a part of the strategic planning conversation because it’s all about how IP can add value to your customers and your business.