Wen Xie, Partner at Global IP Counselors, LLP in Washington, D.C.
Obviously, it’s important to market no matter what business you’re in. But your marketing department should not exist in a vacuum. Ideally, marketing and intellectual property protection should work in tandem to grow the strength of your brand and product sales.
Sometimes what may seem like effective marketing in the short term may end up damaging your brand in the long term as some marketing practices can undermine the strength of your company’s intellectual property (IP).
From my time as a partner for an IP counselor, here are some things your IP department likely would like your marketing department to know.
Trademarks And Trade Dress
One of the biggest mistakes that marketing can make is trumpet the functional aspects or uses of a product that you seek to protect with a trademark or trade dress. It may sound absurd to steer away from marketing a product’s functionality or usefulness, but if your company has sought out trademark or trade dress protection for an item’s appearance or look, talk of functionality is the kiss of death because you cannot obtain trademark or trade dress protection over something that is functional.
Think of aspects like the identifying color or shape of your product or its unique product packaging and styling. If you want to protect any of these components either now or in the future, you don’t want to run ads or manuals about how useful or functional these characteristics are as these can be used to preclude or invalidate your trademarks or trade dress.
For example, you don’t want to market about how some of your products are color coordinated to help user identification if you’re trying to trademark those colors. Or that the shape of your product is great for handling or storage if you’re trying to trademark the shape.
Copyrights
Your company may be one of many now employing generative AI for producing texts and images to be used in advertisements, manuals, pamphlets or to be displayed on your website. It’s important to know that under the current copyright laws, AI-generated works are not copyrightable.
If your work includes a mixture of AI- and human-inputted content, the AI-generated component must be disclosed and disclaimed to the U.S. Copyright Office. Often, disclaiming the AI-generated component significantly dilutes the appeal of your work.
Perhaps your pamphlet or manual includes a combination of AI-generated images but the descriptions of those images were written by a human. You would have to disclaim the images to the copyright office and the copyright would only protect the textual descriptions, which may not end up being that useful from a business standpoint.
The matter of protecting AI-generated works with intellectual property is still in flux right now so things may change in the future. For now, it’s important to know before you invest significant resources into developing extensive texts or images, that work is only deemed to be copyrightable if created by a human, not AI.
Patents
Businesses often update their products over time. If these products are sold online, many businesses find it more convenient to update the original source of their online sales rather than creating a new sales link for the updated time.
For example, if your business sells products over Amazon and you have developed or improved your product, it’s usually more convenient to update the product using the original stock-keeping unit (SKU) number for a prior version of your product without creating a new one for the updated product.
Since customers have already been conducting searches for the product’s name, you do not want to create duplicates, or it probably has good reviews garnered over time that you want to maintain.
Conducting sales online poses somewhat of a unique challenge because online sales set a one-year bar date for patents. That is, online sales are considered public disclosures within the one-year timeline to file a patent application. Most businesses are aware of this already from a patent-filing standpoint, but if you are updating an older sales link with a new item that you are trying to patent, the patent office might then mistake the newer item for having been on sale for more than one year due to it having the same link.
You will then have to go through the burden of proving that the prior sales do not apply to the updated version of your product that you are trying to patent, which can be difficult and expensive.
There is no right or wrong way to conduct marketing if there is a conflict between marketing purposes and intellectual property protection purposes. The main thing is to be aware of potential conflicts and to know the risks of certain marketing strategies so you can avoid pitfalls before it is too late.
The information provided here is not legal advice and does not purport to be a substitute for advice of counsel on any specific matter. For legal advice, you should consult with an attorney concerning your specific situation.
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