The following is a checklist to help your company in the new year with intellectual property issues to investigate or protect. For additional information, please visit our website at www.cislo.com and use our IPSEARCH and IPNEWS tabs for links to numerous IP resources. If we can be of any assistance, please feel free to call us for an appointment to discuss your situation.
Trademarks
___ File for federal and/or state trademark registration for product names, packaging, slogans, and logos.
___ File for service mark registration of company name where possible.
___ Check to see that Affidavits of Use have been filed for any existing registrations.
___ Record existing trademarks with United States Customs to block importation of infringing goods.
___ Use the “®” symbol only with federally registered marks, and use “™” for unregistered marks or state trademark registrations.
___ Arrange for a trademark watch service to see if others are trying to register similar marks.
Patents
___ File provisional or utility applications to protect unique product designs, formulations, or technologies, file as early as possible to avoid filing deadlines that will bar the granting of a patent.
___ File design patent applications to protect ornamental designs of products.
___ Pay maintenance fees on existing patents.
___ Use “Pat. Pending” where applicable, and mark all patented products with Patent Number.
___ Have all employees and outside designers sign agreements assigning all patent rights for any inventions to the company.
Trade Name
___ File Fictitious Business Name Statement.
___ Check renewal date for existing Fictitious Business Name Statement.
Trade Secrets
___ Develop written trade secret policy to maintain secrecy, have employees read and sign.
___ Physically secure trade secret information and matters.
___ Have employees and vendors sign non-disclosure agreements.
Copyrights
___ File for copyright registration for any website, written works, graphics, design, or any other work that might need protection from direct copying.
___ Use the “©” symbol, author’s name, and date of the work on all original materials, including catalogs, advertisements, websites, unique product designs, graphics, etc.
___ Have all employees and outside designers assign their rights to any original works to the company, and affirm that that all such works are “works for hire.”
Domain Names
___ Register all company names and popular product names.
___ If feasible, register all variants and common mis-spellings of main domains.
___ Check renewal dates for existing registrations, and sign up for auto-renewal.
Avoiding Infringement
___ Conduct Internet searches to find possible competitors and competing products/services to determine if there are any potential infringement issues.
___ Perform patent searches for new and existing products and services offered for sale.
___ Perform trademark searches for all trade names and product names.
___ Register an agent with the Copyright Office for Online Service Providers to receive immunity for online copyright infringement.
___ Check your Comprehensive General Liability insurance policies to see if they cover infringement, consider obtaining an intellectual property insurance policy.
