Can You Protect You??

One of the questions that has come up a lot with clients and also in my column is, “How do I protect my idea?”

This can be a super frustrating aspect of a great invention. Unfortunately, while we pay the big bucks to the lawyers to file Patents, Trademarks and Copyrights, if you don’t have the cash to put up on the back end, they can be rendered useless by an infringer. I am not saying to bypass this step if you have an invention worth protecting, but I am saying to be wise about what can happen. New ideas are created all the time from existing ideas – that’s what makes the world go round. You see something cool and think, “If only it did this, or closed like this instead,” and voila, you have a new idea. It’s almost impossible to know if your Patent is impenetrable. You can only do the best you can do and hope for a winner, or at least for a long run, before someone else figures out a twist on your idea. Be sure to see or speak to a reputable attorney about whether or not you can protect your idea one way or another.

When I launched my first handbag line, as you know it all started with my Pinked edge bag, I didn’t file anything to protect it as didn’t warrant anything official. After a few years and hundreds of boutiques under my belt, I was trying to get into Bloomingdales and other dept stores. I was sending catalogs, calling the buyers, offering the order on consignment…..anything I could think of. One day a friend calls and says, “Wow, I just saw your bags in Bloomies! That is so cool.” Of course I blurted out that it wasn’t my stuff and asked what they looked like, etc. She couldn’t remember much except that they looked just like mine, so I called Bloomingdales right away. It turned out that a very large company had knocked off my bag – EXACTLY – and was selling them for about 60% less. I was livid. I had worked so hard to build my brand and now someone else was taking money out of my hands. I immediately ordered one to get to my attorney. I was going to show them a thing or two right? I started to photo copy all the press I had gotten of the Pinked Bag over the years, magazine interviews of me talking about the bag, copies of old invoices showing sales, and samples of my bags. I even pulled out some old videos of my interviews on Access Hollywood with tons of bags around me. I was sending him my army – the biggest box of proof he’d ever gotten. Of course I didn’t have any formal or legal documents pertaining to my design, just my mountain of proof that I pulled together. I was SURE that I was going to win (whatever that meant) and they’d have to pay me some kind of royalty and remove the bags from the stores. I had BIG dreams of how this was going to play out. So I got the box off to my attorney a couple days later and he calls me a few days after that. I was seriously delirious by this time, sitting on the edge of my chair waiting to hear how we were going to demolish them. I swear I had dreams of a front page WSJ story – I clearly needed a valium.

My attorney was a very proper southern gentleman and had a soft way of delivering a hard blow. His slight accent always made everything sound better to me, except this time. He said gently, “I hope you didn’t have your heart set on a specific outcome, but what worries me about broaching this subject with XX company, is that they can say they had the idea for 20 years and that YOU are infringing on their idea and owe them a royalty on every bag you’ve ever sold.” My heart sank. I was devastated. I knew they had stolen my idea – the bag was the same size as mine millimeter by millimeter. That was no coincidence. But I listened to my lawyer and let it go because I didn’t have the money to fight a big legal battle and XX company had bottomless wells. It ate at me for a while, until I accepted that imitation is the sincerest form of flattery. Luckily for me, they only made them that one time.

The best part was that a couple months later, I got the order from Bloomingdales and my bags sold really well.

It is beyond important to protect yourself when possible from anyone being able to use what you worked so hard to build. These next suggestions are only suggestions and it does not take away from the validity your product. You do not have to do any of these steps to proceed. They are only precautions to protect you. I personally trademark all my company names.

a. Copyrighting your work

Copyrighting is a very simple process and can be done at http://www.copyright.gov. When being used to protect artistic or literary work a copyright is usually the way to go. The general cost can vary from do it yourself for about $35 to $500 with an attorney. You can also check out http://www.legalzoom.com or http://www.mycorporation.com for help with questions as well.

b. Trademarks
What is a trademark or service mark?

A trademark is a word, phrase, symbol or design, or a combination of words, phrases, symbols or designs, that identifies and distinguishes the source of the goods of one party from those of others.

A service mark is the same as a trademark, except that it identifies and distinguishes the source of a service rather than a product. Both marks are identified by the symbols ™ (not yet registered) and ® (registered)

To begin I suggest going to the http://www.uspto.gov website and do a basic search of the term you want to trademark. If you are certain that the mark is available from your research, then I suggest going the less expensive (Bootstrapping) route through http://www.mycorporation.com or http://www.legalzoom.com. They can walk you through the process for a nominal fee of around $300. The cost to file per class of goods or service is $375 each. You will need to determine how many classes you need to protect your mark.

c. Patents

A patent is not required or essential to take your product to market. You will find many products that do not have a patent are highly successful. You will need to determine the effectiveness of a patent for your product with your attorney. I highly recommend retaining a savvy attorney for this important step. No one can afford costly mistakes in this arena. While a patent is designed to protect you from infringement (others illegally manufacturing and selling your product) on your product, upholding the patent in court can be very costly and difficult to enforce. There is no “Patent Police” nor does US Customs protect your patent from importers. (US Customs does however protect Trademarks at the borders).

What is the Difference Between “Utility” and “Design” Patents?

In general terms, a “utility patent” protects the way an article is used and works, while a “design patent” protects the way an article looks. Both design and utility patents may be obtained on an article if invention resides both in its utility and ornamental appearance.

Be smart in your choices and wise in your decisions.

Good luck!

Sarah Shaw is an information “junkie” and is the ultimate go-to girl for everything– from which stores are the best to approach first, to how to calculate your margins to best manufacturer. Translating ideas into action is her strength, and she lends her wisdom willingly to those who have brilliant ideas and want to turn them into gold. Sarah has had her products sold in over 1200 stores nationwide and has been in magazines such as Instyle, People, WWD, Elle, Marie Claire and Lucky. You can visit her website at http://www.entreprenette.com.