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Protection of Intellectual Property in Technology Startup
Aside from competence of management team, control of intellectual property is a major focus of investor scrutiny. The ability to identify and protect intellectual property directly reflects on investor confidence and the resulting access to capital available to technology start-up. Protection of intellectual property assets is available through the law of copyright, trade secrets, patents and trademarks.
Financing Technology Startup
Many startup companies, particularly in technology sector, require capital beyond the means of their founders in order to finance continued growth. Expenses quickly add up, and a business that cannot manage its cash flow will not survive. Because startup companies typically have a limited operating history and are considered to be risky ventures, obtaining even simple financing arrangements can be a difficult task.
Trademarks
Trade-marks are commonly classified as intellectual property, but there is nothing intellectual about them at all. It may be thought of independently, or it may be someone else's idea. None of this matters. Nor do any rights to a mark flow from mere creation. Only use or its surrogates - public recognition or an intention to use - create rights, and then not in the creator but in the person behind the use, intent, or creation of public recognition.
A trade-mark is a way of distinguishing one trader's product or service from that of another trader. Canadian law is based on the premise that the function of a trade-mark is to indicate the source or origin of a trader's product or services. Primarily a trade-mark distinguishes the products or services of one trader of those of another and protects the goodwill and reputation associated with a products or services. Trade-mark law provides essentially no protection for the ideas or concepts underlying the technology, product or service associated with the trademark except that certain well-known shapes may be protected as distinguishing guises.
Careful attention should be paid to the selection and design of trademarks. Unlike a patent that has a twenty year enforcement period measured from the filing date of the patent, trademarks (for goods) and service marks (for services) may remain in force indefinitely. The value of the mark thus increases each year and if the business that owns the mark is ever sold, a significant proportion of the sales price can be attributed to the mark. In the area of Trademark Law the Firm provides a full range of domestic and international trademark services including: clearance searches and risk analysis, registration, enforcement and litigation, licensing.
The Canadian Intellectual Property Office (CIPO) and United States Patent and Trademark Office (USPTO) maintain searchable databases of registered trademarks and pending applications for registration. Just because a similar trademark is shown on the CIPO or USPTO search result does not necessarily mean that the proposed trademark cannot be registered. It is possible the trademark registrant has abandoned use of the trademark even though it is still technically registered.
No amount of trademark searching can completely clear a proposed mark for use and registration. There are numerous factors that determine whether one trademark is confusingly similar to another under Canadian or United States trademark law. Although there is no “litmus test” the following thirteen elements, when relevant, must be considered:
1. Appearance, sound, connotation;
2. Goods or services;
3. Channels of trade;
4. Care that is used in purchasing;
5. Fame of any prior mark;
6. Similar marks in use with similar goods;
7. Nature and extent of any actual confusion;
8. Concurrent use without actual confusion;
9. Variety of goods on which a mark is used;
10. Agreements/relationship between mark owners;
11. Applicant’s right to exclude others;
Thomson & Thomson full search includes active U.S. Patent and Trademark Office trademark applications and registrations filed with the USPTO since 1884, and expired, canceled or abandoned marks since 1984. New applications and status changes are updated daily, and provide enhanced Trademark Trial & Appeal Board detail; state trademark databases including records from all 50 U.S. states, plus Puerto Rico and Guam. The Thomson & Thomson search is by far the most comprehensive and the only search report on which our office will base a formal opinion.