The Center for Health and Wellness Law, LLC helps a lot of start-ups. The founders of these newly formed businesses often have methods or devices that they have invented, or logos, slogans or business names that are unique. Should they protect those inventions, logos, slogans or names?
The short answer is yes. But the long answer requires diving into whether the wellness professional is willing to invest their resources in obtaining such protection. It can be a long, expensive, and grueling process, particularly for patents, and particularly if you go it alone.
Here are some examples of intellectual property wellness professionals might want to protect:
- Weight loss devices or methods
- Exercise devices or methods
- Coaching device or method
- New dietary supplement
- Business or invention logo
- Business or invention slogan
- Business or invention name
- New recipe
- Fitness video or music
- Wellness book
According to the Legal Information Institute at Cornell Law School, intellectual property is “any product of the human intellect that the law protects from unauthorized use by others. The ownership of intellectual property inherently creates a limited monopoly in the protected property.”[1]
There are several types of intellectual property: trademarks, patents, trade secrets and copyright. It is important to know which intellectual property concept protects which unique creation so that you seek the correct type of protection. See Table below. It is also a good idea to hire an intellectual property lawyer to assist in seeking such protection.
Types of Protection for Various Creations
| Creation Type | Copyright | Trademark | Service Mark | Patent | State Business Registration Department |
Website
Domain Name |
Trade Secret |
| Business Name | X | X | |||||
| Invention (new technology or tool) | X | X | |||||
| Business Slogan | X | ||||||
| Product Slogan | X | ||||||
| Business Logo | X | ||||||
| Product Logo | X | ||||||
| Book | X | ||||||
| Music | X | ||||||
| Recipe | X | ||||||
| Formulas | X | ||||||
| Product Design | X | X | |||||
| Pricing Schedule | X | ||||||
| Customer list | X | ||||||
| Manufacturing Technique | X | X | |||||
| Marketing Strategy | X |
Trademarks and Service Marks
Trademarks protect words or symbols that identify goods, and service marks protect words or symbols that identify services, but people often use the term “trademark” in reference to both goods and services. Entrepreneurs may use trademarks to protect the name, slogan and/or logo of their products or programs they create.
As long as the trademark is used in commerce (i.e., for business purposes), it has common law protection. This means that if someone else tries to use your trademark for a similar product or service within your geographic area, you might be able to stop them by using state unfair competition laws and the common law. Unregistered trademarks use TM for goods or SM for services, to indicate “common law” protection for the trademark or service mark.
To obtain further protection for trademarks, business owners can register the trademark or service mark with the United States Patent and Trademark Office (USPTO). Federal registration of a trademark with the USPTO provides notice to the public of the registrant’s claim of ownership of the mark, a legal presumption of ownership nationwide, and the exclusive right to use the mark on or in connection with the goods or services set forth in the registration. Registered trademarks use the ® symbol for the mark.
Patents
A patent is a limited duration property right relating to an invention, granted by the USPTO in exchange for public disclosure of the invention. Patentable materials include machines, manufactured articles, industrial processes, and chemical compositions. Patents protect the product or process between approximately 15 to 20 years, depending on whether it is a design, utility or plant patent.
Patentable inventions must be “novel” and “nonobvious.” What this means is that the invention must not have existed before and must not be an obvious improvement or alteration of a previous invention.
A design patent protects how a product looks, not how it functions, and offers such protection for 14 years. A design patent allows you to prevent others from making, using, selling or importing your design.[2]
To protect a product’s unique function, you need to apply for a utility patent. Utility patents are more common in the marketplace than design patents. Applying for a utility patent is usually much more expensive and time consuming process compared to the design patent application process. Utility patents can take years to obtain and cost tens of thousands of dollars before the USPTO issues the patent. By comparison, it is reasonable to expect obtaining a design patent within a few months to a year and possible to only spend less than $1000 to obtain. However, if you obtain a utility patent, you can stop others from making, using, selling and importing the invention for 20 years, instead of the 14 year timeframe for design patents.
Trade Secret
A trade secret exists if all three of the following elements are present:
- You have information that has economic value by virtue of it not being generally known to the public;
- You have information that has value to others who cannot legitimately obtain the information; and
- You have exerted reasonable effort to maintain the information’s secrecy.
Two well-known products with coveted trade secrets include Kentucky Fried Chicken and Coca-Cola. The recipes for those products are trade secrets, and have economic value to both the companies that own them, and to consumers who wish they knew those recipes.
Unlike patents or trademarks, trade secrets are not something you register with the U.S. Patent and Trademark Office. Rather, as the owner of a trade secret, you decide that your formula, process or recipe is valuable and should be kept a secret. And then you actually keep it a secret. If you do that, there are state and federal laws that can help you seek a remedy should someone try to steal your trade secret. Those laws include the Economic Espionage Act of 1996 (where the federal government prosecutes theft of trade secrets) and the Defend Trade Secrets Act of 2016, where you as the trade secret owner could sue someone for misappropriation of a trade secret.
Copyright
A copyright protects original works of authorship including literary, dramatic, musical, and artistic works, such as poetry, novels, movies, songs, computer software, and architecture. Copyrights can protect the original work of art for many, many years. For individual works of art (whether music or books, for example), copyright protects the work for the life of the author plus 70 years. Individuals can register their copyrighted material with the U.S. Copyright Office at https://www.copyright.gov/registration/. Examples of items one can register for copyright include literary works, performing arts (music, sound recordings, scripts, stage plays), visual arts (artwork, illustrations, jewelry, fabric, architecture), computer programs, databases, blogs, websites, motion pictures and photographs.
Copyright infringement occurs when someone uses copyrighted material without permission of the author/creator. For example, to reprint information from textbooks, it will necessary to obtain permission from the publisher prior to reprinting a portion of it in another publication. Also, regarding using music for your business, it will be necessary to purchase licensing agreements from Performing Rights Organizations (PROs) such as:
- Broadcast Music, Inc. (BMI): www.bmi.com
- American Society of Composers, Authors, and Publishers (ASCAP): www.ascap.com
- Society of European Stage Authors and Composers (SECAC): www.sesac.com
Some businesses may be exempt from paying these fees based on the Fairness in Music Licensing Act (FMLA). For example, restaurants may play music from a radio using one receiver without needing a license. Other exemptions may apply. Before using music, videos, software, or other forms of creations that are copyrighted, businesses need to consult with a competent intellectual property lawyer to be sure they are not violating any copyright laws, otherwise they may face costly penalties.[3]
Should I hire a lawyer (i.e., invest in intellectual property protection)?
I am glad you asked! Please excuse me while I get on my soapbox for a moment. As a practicing lawyer, I cannot tell you how many times people have called or emailed me asking me for my legal advice without any intention of paying me a dime. I’m not quite sure how these folks imagine my business model, but they clearly do not understand how lawyers or law firms earn income. As with many professions, what we sell is our judgment and advice. In order to be able to offer that judgment and advice, we spend years learning our craft, just like other types of professions. So, when you contact a lawyer, please do not expect them to give you free legal advice. They may give you a free consult to see if they are a good fit for your business needs, but they should not and most likely will not be giving away their legal advice for free.
That being said, when it comes to forming and protecting your business, a good lawyer can be a very good investment. I usually tell my clients that hiring competent legal counsel for your business is like purchasing insurance for your business: both aim to protect your investment from a potential disaster.
So, yes, I think you should hire a lawyer. Contact the Center for Health and Wellness Law, LLC to learn more how we can help your wellness business.
[1] Cornell Law School Legal Information Institute, Intellectual Property, available at https://www.law.cornell.edu/wex/intellectual_property (last visited June 20, 2020).
[2] See USPTO at https://www.uspto.gov/web/offices/pac/mpep/s1502.html (last visited June 20, 2020); see also Richard Stim, Types of Patents under U.S. Law, Nolo, https://www.nolo.com/legal-encyclopedia/types-patents.html, available at https://www.nolo.com/legal-encyclopedia/types-patents.html (last visited on June 20, 2020).
[3] See Trademark, Patent, or Copyright? U.S. Patent and Trademark Office, available at https://www.uspto.gov/trademarks-getting-started/trademark-basics/trademark-patent-or-copyright, accessed October 19, 2019; see also Registration Portal. U.S. Copyright Office, available at: https://www.copyright.gov/registration/, accessed January 12, 2020.