SIX RULES FOR START-UPS

(Note that these aren’t all-inclusive!)

1. Do a search to confirm that no one has beaten you to your technology.

Do a thorough search of the Internet to see if anyone else out there is providing the services or goods that you intend to provide using the method or channel of trade that you intend to use. In some fields there can be multiple successful players and through your research you may determine if yours is a field where that can happen. Your search may also disclose the amounts of capital that have been invested in your potential competitors. While that is no guarantee of success for them, if significant monies were invested in your competition, that would suggest the amount of resources that you may need to successfully compete. Often, there can be more than one business in a particular field but generally one will turn out to be the market leader. For example, there can be an Uber and a Lyft but if the market leader builds widespread brand recognition, no matter how good #2 is, it may never be more than second best. See http://skift.com/2015/11/20/lyft-leak-of-financials-show-struggles-of-being-number-2-behind-uber/Also, if patentable subject matter is involved, you should check with a patent lawyer to determine if you can bring your product to market without fearing the possibility of an infringement claim. See http://www.uspto.gov/patents-getting-started/general-information-concerning-patents for a basic summary of patent law. See also https://scholar.google.com/ for a place where you can begin your patent search. Again, I recommend that you retain a professional, i.e., a patent lawyer, if you are developing patentable subject matter to make sure that you are clear of potential infringements.

2. Do a trademark search before selecting a domain name as domain rights are often determined based on ownership of a registered trademark.

I assume that you will want to use the same name for your product or services that you are choosing as your domain name and, therefore, you will need to ascertain if that name is available for your use. Also, note that in a domain name dispute, if the complainant owns a trademark registration, then it generally satisfies the threshold requirement of having trademark rights. If a complainant registers a domain name before it acquires trademark rights in that name it may be difficult to prove that that same domain name was registered in bad faith by the respondent under the Uniform Domain Name Dispute Resolution Policy. See http://www.wipo.int/amc/en/domains/search/overview2.0/ Under that Policy, a complainant challenging a domain name must describe the manner in which the domain name(s) is/are identical or confusingly similar to a trademark or service mark in which the complainant has rights. Again, I recommend that you seek out a professional, i.e., a trademark attorney, to conduct that search as that individual should be able to advise you as to what potential marks are stronger than others and, therefore, will be easier to enforce as well as are available for your use.

3. Register your trademark (ITU) and domain name simultaneously.

While you can get a domain name almost instantaneously, obtaining a trademark registration in the U.S. usually takes over a year and you will need to be offering your services over the Internet or shipping product in interstate commerce to do so. So, as soon as you have selected a name, get your trademark application on file with the United States Patent and Trademark Office. Note that you can file based on your intent-to-use that mark on products or services in the future.

4. Identify protectable IP (the kernel) of what you got, what gives your product protectable value and protect it using trade secret, copyright or patent law.

Sometimes, what is most valuable about your product may not be what you’re selling to your purchaser. For example, it may be the underlying computer code used to deliver your goods or services or to manage the applicable transaction.

5. Move fast or die!

Make sure that you have a market for your product and get it out there, in people’s faces quickly. The world is a fast-moving competitive place. If you determine that there is a market out there for your product or service, and that there is demand for it….this is important!…..no demand, no customers, be sure that someone else will figure this out too and if they get their product or service to market six months before you do, all your investment and efforts may go down the toilet as you may find that that other business has already acquired your customer base. Therefore, you better move quickly, make sure that your intellectual property is protectable and protected, and race your product to the finish line.

6. Don’t be sloppy.
As you race to the finish line, unless you are doing everything yourself, make sure the people that are working for you are aware that what they are working on is a trade secret, make sure that they sign non-disclosure and non-compete agreements, make them feel wanted, make them feel part of a team, and compensate them well. An unhappy employee, consultant or contractor will take your idea to someone else who will make them feel wanted, part of a team or better compensated and that someone else will then be where you are presently without having made the investment that you have and, therefore, be in a position to reach the finish line before you.

About ERIC WACHSPRESS

The material on this website is for informational purposes only. It should not be considered legal advice and is not intended to create an attorney-client relationship. If you have questions regarding any material presented herein, we recommend that you consult an attorney. This web site and information presented herein were designed in accordance with Illinois law. Any content in conflict with the laws or ethical code of attorney conduct of any other jurisdiction is unintentional and void. I am a Chicago attorney practicing in the areas of trademark, copyright and information technology law as well as general corporate law. Formerly a trademark examining attorney with the United States Patent and Trademark Office, I have been in private practice since 1987 representing clients in a wide variety of industries, including the consumer products, financial services, information technology and entertainment industries. You can contact me at markscounsel@gmail.com, by phone at 773.934.5855 or by mail at 417 S. Jefferson St., #304, Chicago, IL 60607 USA
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