By Kimra Major-Morris, Esq.
What are your business’ assets? Computers, office furniture, and vehicles are wonderful to own, but we know those things quickly depreciate. This is the main reason why intellectual property is one of the most valuable assets a business can own. More importantly, licensing intellectual property rights is a great way to create an exit strategy, build generational wealth, and leave a legacy to be proud of. Yet, an overwhelming number of business plans don’t even address intellectual property as a potential asset. A basic understanding of copyrights, trademarks, trade secrets, and patents can go a long way, and a lack of understanding can rob future generations.
First, copyrights are unique expressions of ideas in tangible form. The company’s website copy, photos, brand designs, and newsletters are examples of copyrightable content. Proprietary processes, formulas, and mailing lists that are the driving force of the company’s success are potential trade secrets. KFC’s blend of herbs and spices is an example. A business might also have its own software app or other novel technology that qualifies for patent protection. Finally, trademarks are the face of the business – the logo, the business name, the slogan, and other brand identifiers. Properly vetting the trademark is key to a strong brand, ownership, enforcement, and monetization.
When selecting a strong trademark, be arbitrary. It’s tempting to use the name that best describes you or what you’re selling. However, if there is ever a time to be random, it’s during the brand naming process. When have Apple or Amazon, two of the strongest brands known, ever explained the meaning behind their company names? These names are arbitrary, more memorable, and more easily protected. Explaining a business’ services or products in the title weakens the mark because others who sell the same products or services use the same descriptors, and enforcement is difficult. The confusion over commonly used names for social justice causes (such as Black Lives Matter Global Network rather than The Black Lives Matter Foundation) has led to donors contributing to the unintended groups. Charitable organizations are at risk of losing financial support when there’s brand confusion.
Vetting the name before moving forward with applying for a federal trademark is critical to preserving the business’s integrity in the event of accidental infringement. Accidental infringement can occur when an unvetted trademark sounds too similar to an existing mark and is used in association with the sale of similar goods or services. Also, making a word plural, changing vowels, and adding extra consonants will not change an infringing name to a non-infringing name. The worst-case scenario is where a business owner gets it wrong, is sued for trademark infringement, and is forced to rebrand. It’s embarrassing and expensive. These are often public disputes and a business’ reputation may not recover. On the other hand, a strong brand identity can create opportunities for franchising, exclusive rights deals, and co-branding.
Along with carefully selecting the brand name, business owners should make room for growth when locking in trademark classifications. The initial business might be set up for charitable services, but perhaps there will be digital products, apparel, and printed books. Growing the IP portfolio to reserve and leverage those rights sooner rather than later should be considered.
If a logo will be used to promote the brand, business owners should be sure to acquire copyright ownership of the artistic work with the necessary agreements signed by the artist who created the work. A common misconception is that the business owns logos, graphics, photographs and other creative work it pays for. Not so, under copyright law. A copyright assignment from the artist who designed the logo to the business is necessary to establish clear title. It’s also a great idea to have the artist sign off on warranties and representations to protect the business in the event the artist infringed on a third party’s rights. Only after the business acquires the copyright by registering it with the Copyright Office, should it move to acquire federal trademark rights (for the logo) through the United States Patent & Trademark Office (USPTO). One registration is protecting the art and the other is protecting the use of the art in association with goods and services.
Successful businesses have great teams. Protecting intellectual property in the team-building process means having strong non-disclosure agreements, independent contractor agreements, partnership agreements that address intellectual property, and policies and procedures that preserve the business’ rights.
A well-developed plan to leverage intellectual property can fund business projects, investments, college tuition, real estate, weddings, and other huge expenses that might otherwise require loans or create debt that passes to the business owner’s estate. However, a lack of education on ‘the what and how’ contributes to the wealth gap in marginalized communities.
History tells us that even when there has been knowledge about the need for intellectual property protection, systemic racism prevented an even playing field. More than thirty years would pass, after U.S. patent laws became effective, before patent registrations could be owned by black inventors. Instead, slave owners and their heirs reaped the benefits. Perhaps the most widely known intellectual property theft is in the entertainment industry. Artists with little to no knowledge of copyright law stripped or substantially persuaded out of their creative rights while their music, names and likenesses made millions for others has been common practice for decades.
Intellectual property laws exist because they promote art and innovation by providing incentive through the owners’ exclusive rights for a limited time. Business owners must be aware of their intellectual property assets and adopt a proactive approach to securing and leveraging them for the benefit of their bottom lines and legacies.
About Kimra Major-Morris
Kimra is a top-rated intellectual property attorney licensed to practice in Florida, a nationally published author on the subject of trademarks, and the television host of “Legal Connections” in conjunction with FAMU College of Law and Orange TV. As the Principal Attorney at Major-Morris Law in Central Florida, Kimra represents national business owners, celebrity talent including professional athletes, international music artists, tv personalities, and entertainment industry executives for intellectual property matters. As an award-winning author on the subject of intellectual property law, Kimra’s published articles and features appear in the American Bar Association’s Landslide Magazine, Forbes Magazine, Essence Magazine, The Huffington Post, Small Biz Trends, The Florida Bar, and Orange County Bar publications.
In 2012, Kimra was thrust into the national spotlight when she was retained by the parents of Trayvon Martin to register, protect, and license their intellectual property. Her intellectual property services for The Trayvon Martin Foundation helped to secure copyright and trademark registrations and licensing deals that fuel the Foundation’s support for families of senseless gun violence victims. She was the first black Chair of The Florida Bar’s Intellectual Property Committee and is an active member of the Florida Bar and the Black Entertainment & Sports Law Association. Kimra earned her Bachelor of Science in Broadcast Communications at Florida International University and is a proud alumnus of Florida A&M College of Law. Kimra has been rated by Super Lawyers since 2015, a distinction held by no more than 5% of Attorneys in Florida. She is “AV Preeminent” rated by Martindale-Hubbell® with the highest rating for her professional excellence and ethical standards.