VOL. 126 | NO. 78 | Thursday, April 21, 2011
Getting The IP Message
WILLIAM S. PARKS
Editor’s Note: This is one of a series of occasional law columns on intellectual property. More often than I like to remember, I have found myself in the unenviable position of “bad news messenger,” particularly for entrepreneurs who handled their own patent, trademark or copyright applications without understanding the complexities and difficulties involved. My role as a counselor too often turns to one of consoler due to a client’s inexperience. Sometimes, though, I can remedy their problems, but at great cost.
For instance, one individual sought a trademark registration for a product logo. When she alleged infringement of her product name, she was confused and upset when I explained to her that her registration (thus, the benefit of constructive notice for infringement damages purposes) was limited to her distinct logo. Since she did not protect the name through trademark registration specifically, the only way she could accrue any monetary damages was through actual notice of infringement to the other party. Once the alleged infringer stopped selling under the same name, and before she was able to actually notify of such alleged trademark infringement, all claims for monetary damages were lost. What she learned after seeking legal advice is that she could have protected her product’s name and logo – if only she had known that on the front end.
Another example is an inventor who came up with a brilliant idea, filed his patent application, and relocated to another city to find better marketing opportunities. He invested nearly all of his money and time into his development before realizing there was a product on the market that looked exactly the same as his. That’s when he sought legal advice.
Compounding his problem was that his application was merely pending and no enforceable patent existed. I determined a long-standing patent already existed for the “infringing” product and the other party actually had taken out a license. By bypassing legal help on the front end, this inventor invested everything he had into a product that he may never be able to patent. In summary, simple intellectual property education for local entrepreneurs can help to prevent a lot of legal problems and costs.
To meet this challenge, and instead of relegating ourselves to being the “bad news messengers” after the fact, the Memphis legal community now has taken a proactive approach with intellectual property issues. The Memphis Bar Association recently established an Intellectual Property/Entertainment Law Section. Not only does it provide legal instruction, but it provides guidance and referrals to businesses, artists, musicians and entrepreneurs, as well.
Whether it concerns the difference between a trademark and a copyright, or the importance of utility versus design patent protections – and everything in between – hopefully, the Mid-South will hear the message and take advantage of this valuable educational resource, and enjoy reaping the maximum benefits available from commercializing their own innovations.
William S. Parks is counsel to the regional law firm Wyatt, Tarrant & Combs LLP, and is a member of the firm’s intellectual property service group and the inaugural chairman of the Memphis Bar Association’s Intellectual Property/Entertainment Law Section.