The Top Five Intellectual Property Inquiries From Consumer Product Businesses at the ASD Market Week and SourceDirect Trade Shows

May 1, 2018

I recently had the opportunity to speak about intellectual property (IP) issues at ASD Market Week, a twice-yearly B2B trade show featuring a wide range of retail merchandise, and SourceDirect, a wholesale trade show for global sourcing professionals such as importers, distributors, wholesale manufacturers and product development companies. Topics covered included domestic and international IP filings, clearing products to avoid IP infringement, IP litigation and indemnification for IP infringement.

During the conversations I had with attendees at ASD and SourceDirect, I noticed that many of them had similar questions. Here are the top five questions that I was asked along with their answers.

1. What is the difference between (a) a patent and patent pending, (b) a utility patent and a design patent and (c) a "TM" and "Ⓡ" designation?
a) Patent pending means that the application is filed but no patent has been issued yet. This distinction is important since one can't sue for infringement until a patent is issued.

b) A utility patent covers the functional aspects of an invention, while a design patent covers the ornamental aspects of the invention. Some products may only be covered under one type of patent while some may be protected by both.

c) The "TM" symbol means that trademark rights are claimed by a party (they may or may not have filed) but such rights may be limited to certain geographic territories, and the "Ⓡ" symbol means that a federal trademark has been granted, providing national protection as well as other rights.

2. If we don't make anything novel, do we need to worry about intellectual property issues?
Yes - clear the product. Not only is it important to protect and file for your own IP protection, but you must also ensure you are not infringing any third party's trademarks or patents, including both utility and design patents. Even innocent infringement is infringement. Do this as early as possible in your product development stage.

3. I filed for my trademark. Do I need to do anything else?
Yes - if you didn't conduct a trademark search, do one now to make sure that the mark is available for use and federal registration. Then, if the mark is clear, use it properly. Trademark rights in the U.S. arise from use, not registration.

4. Is filing your trademark only in the United States sufficient?
Not always. Depending on where you are manufacturing, it can be critical to clear and file in other nations. Filing a U.S. trademark only protects you in the United States, not globally. Without trademark rights in the countries in which you manufacture, you could possibly be prevented from shipping your goods to the United States.

5. My competitor's product is patented so I cannot sell it, but I see so many other companies selling something similar and making money. How?
Many times, patents are not as broad as companies believe. It is critical to speak with a patent attorney to understand exactly what a patent covers. That discussion may show you how your company can sell a similar, non-infringing product.

A solid and accurate understanding of IP is essential for any business, from a start-up to a well-established company, and working with an IP lawyer can add value to the bottom line without breaking the budget.

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