Choosing, Building, & Protecting Your Brand (Series: Intellectual Property 201 2020)

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Practical and entertaining education for
attorneys, accountants, business owners and
executives, and investors.

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 that information it publishes is accurate,
Financial Poise™ makes no guaranty in this regard.
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Meet the Faculty
MODERATOR:
Eugene Goryunov - Haynes & Boone
PANELISTS:
Brent Ray - King & Spalding
Kristin Garris - Scarinci Hollenbeck
Darren Spielman - Law Offices of Kain Spielman, P.A.
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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 201
In today's economic environment, intellectual property (IP) rights have become increasingly important
assets for both individual and corporate entities. More and more, both are recognizing the economic
importance of IP rights--whether those rights consist of a single patent--or whether they consist of an
entire portfolio also including trademarks, copyrights, and trade secrets.
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. Join some of the leading attorneys in the World, as they
discuss—in plain English for the non-expert—some specific IP challenges that individuals, businesses,
and those who represent them are likely to face.
Each Financial Poise Webinar is delivered in Plain English, understandable to investors, business owners, and
executives without much background in these areas, yet is of primary value to attorneys, accountants, and other
seasoned professionals. Each episode brings you into engaging, sometimes humorous, conversations designed to
entertain as it teaches. Each episode in the series is designed to be viewed independently of the other episodes so that
participants will enhance their knowledge of this area whether they attend one, some, or all episodes.
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Episodes in this Series
#1: Choosing, Building, & Protecting Your Brand
Premiere date: 4/23/20
#2: Buying & Selling IP
#3: Legal Issues for Innovators & Inventors
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Episode #1
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.
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Types of Intellectual Property Rights
 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.
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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)
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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.
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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)
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Choosing Your Brand
 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)
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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
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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.
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Trademark Registration
 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.
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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
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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.
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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.
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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.
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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.
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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.
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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.
 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.
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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.
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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.
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Patents vs. Trade Secrets
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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
 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?
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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.
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IP Enforcement
 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.
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About The Faculty
Eugene Goryunov - eugene@poligenes.com
Mr. Goryunov is an experienced trial lawyer that represents clients in complex patent matters involving
many diverse technologies. He is deeply involved, as trial counsel, in all aspects of cases pending in
Federal courts, at the U.S. International Trade Commission involving Section 337 investigations, and in
appeals at the U.S. Court of Appeals for the Federal Circuit. He also regularly serves as first-chair trial
counsel in post-grant review trials, on behalf of both Petitioners and Patent Owners, pending at the U.S.
Patent & Trademark Office. To date, he has been involved in over one-hundred post-grant review trials.
Mr. Goryunov is a regular contributor to intellectual property publications, including the Intellectual
Property Magazine, The Patent Lawyer, and the IPO Law Journal. To date, he has published more than
sixty articles, many of which discuss post-grant review trial practice. Mr. Goryunov also speaks about
diverse issues of patent law and post-grant review trial practice. He also teaches patent law and
intellectual property litigation at the Columbia University and previously at the University of Notre Dame.
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About The Faculty
Brent Ray - bray@kslaw.com
Brent Ray is a trial lawyer who has first-chaired multiple cases to verdict. He has served as lead counsel
for industry-leading clients, such as IBM, JP Morgan Chase, Citibank and Kemper Insurance. Brent’s
work has taken him to a wide variety of venues, including federal court, state court, the United States
Patent and Trademark Office and the United States International Trade Commission.
As a result of his diverse experience, Brent has been called upon to advise clients on the intellectual
property and litigation aspects of corporate merger agreements and product acquisitions, and to develop
and manage patent portfolios. Brent has also argued before the Court of Appeals for the Federal Circuit
to defend a grant of summary judgment that he won below.
Brent is an Adjunct Professor at Chicago-Kent School of Law teaching advanced Legal Writing focused
on Intellectual Property issues. Brent is a member of the trial bar of the Northern District of Illinois.
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About The Faculty
Kristin Garris - kgarris@sh-law.com
Kristin G. Garris, Counsel at Scarinci Hollenbeck in New York City, has a broad range of experience in handling
trademark and copyright litigation and enforcement, as well as Internet and domain name enforcement matters. She has
advised a wide range of clients for nearly 12 years on numerous intellectual property issues including IP ownership and
protection, branding procedures and management, copyright protection, licensing, privacy policies and website terms of
use, IP-related risk management, IP due diligence, data privacy regulations, and much more. She has significant
experience with trademark proceedings before the Trademark Trial and Appeal Board of the U.S. Patent and Trademark
Office. Ms. Garris has created and implemented comprehensive trademark and copyright policing and enforcement
programs for both U.S.-focused and international clients. Ms. Garris regularly counsels clients on the clearance of
trademarks, protection and registration strategies for trademarks and copyrights, enforcement goals and business-
friendly enforcement methods, the purchase and sale of IP (trademarks, copyrights, domain names, social media
handles), IP monetization, and IP considerations for employment agreements, asset purchase agreements, master
services agreements, and non-disclosure agreements. Ms. Garris has been honored with three awards for her pro bono
volunteer work in connection with organizations such as Start Small Think Big, Inc. and Her Justice, Inc. She is involved
with the New York State Bar Association’s Entertainment, Arts, and Sports Law Section (Fashion Law Committee) and
the Association of the Bar of the City of New York (Copyright and Literary Property Committee), and is a member of the
International Trademark Association (INTA). Ms. Garris received her undergraduate degree from Davidson College, an
M.A. from the University of Virginia, and a J.D. from Wake Forest University School of Law.
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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. Awards & Accolades: Darren has been honored as AV
Rated with Martindale Hubble 2015-2018 and with the Super Lawyers Rising Stars Award for 2009-2011, 2013-
2018 and Top Attorneys Florida Outstanding Young Lawyers Award for 2011, 2013-2017; America’s Most
Honored Professionals Top 1%, 2016-2018. Darren is a also a frequent presenter and public speaker on
Intellectual Property and First Amendment topics.
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Questions or Comments?
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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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