Trademarks, Trade Secrets, Copyright & IP Assignments

TRADEMARKS

What Trademarks Protect

A trademark protects brand identifiers that distinguish your goods or services from others:

• Company name (the word mark)
• Logo (design mark)
• Tagline (word mark)
• Product name (word mark)
• Color, sound, or trade dress (non-traditional marks — harder to register)

Trademark vs. Copyright vs. Patent

• Trademark: Brand identity (names, logos) — "Who made this?"
• Copyright: Creative expression (code, content, design) — "This is my creative work"
• Patent: Inventions and processes — "This is my novel invention"

Trademark Search — Do This Before You Launch

Before investing in a brand:

Step 1: USPTO TESS Search (Free)

• Go to: tmsearch.uspto.gov
• Search for: Exact name, phonetic equivalents, similar spellings
• Search in the relevant class(es) — see International Classes below
• A conflicting registration in your class = risk of infringement

Step 2: Common Law Search

• Search Google, LinkedIn, Crunchbase for companies using the name
• Common law rights exist even without federal registration
• A senior common law user can block your registration or force rebranding

Step 3: Domain and Social Media

• Check domain availability (GoDaddy, Namecheap)
• Check Twitter, LinkedIn, Instagram, Facebook handles
• Secure these before announcing your brand

Step 4: Attorney Opinion (Recommended for Investment-Stage Names)

• A trademark attorney can give a clearance opinion: risk level (low/medium/high)
• Cost: $500–$1,500
• Worth it before spending on branding

International Classes — Which Ones to Register In

You must specify classes when filing. Most SaaS/tech startups register in:

Filing fee: ~$350 per class (TEAS Plus filing, electronic)

Federal Trademark Registration Process

Step 1: File Application
→ File at: teas.uspto.gov
→ Choose: TEAS Plus ($350/class) or TEAS Standard ($450/class)
→ Include: Mark, owner info, class(es), specimen of use (or intent-to-use)

Step 2: USPTO Examination (3–4 months after filing)
→ USPTO examiner reviews for conflicts and technicalities
→ May issue Office Action requiring a response

Step 3: Publication for Opposition (1 month)
→ Published in Official Gazette
→ Third parties have 30 days to oppose

Step 4: Registration or Notice of Allowance
→ In-use application: Certificate of Registration issued
→ Intent-to-use: Notice of Allowance; must file Statement of Use within 6 months (extensions available)

Total time: 8–18 months
Total cost (1 class, no issues): $1,500–$3,000

Trademark Symbols

• ™ — Unregistered trademark; can use immediately upon use in commerce
• ® — Registered trademark; can use ONLY after federal registration is granted

Trademark Maintenance

• Renewal due: Between years 5–6 (Section 8 Declaration) and every 10 years after
• Continued use required: Trademark can be cancelled for non-use after 3 years
• Watch service: Monitor for conflicting new filings ($200–$500/year through watch services like CompuMark, TrademarkNow)

TRADE SECRETS

What Trade Secrets Protect

Any confidential business information that gives you a competitive advantage:

• Source code and algorithms
• Customer lists and pricing
• Business processes and methods
• Formulas, recipes, compositions
• Training data sets
• Financial projections
• Undisclosed product roadmaps

Key requirement: You must take "reasonable measures" to keep it secret. If you don't protect it, you lose protection.

Trade Secret Protection Checklist

LEGAL PROTECTIONS
[ ] NDA signed by all employees (include in offer letter / employment agreement)
[ ] NDA signed by all contractors before any work begins
[ ] NDA signed by anyone who sees confidential information
[ ] Employee IP assignment agreement covers trade secrets
[ ] Exit interviews remind departing employees of ongoing obligations

PHYSICAL AND DIGITAL ACCESS CONTROLS
[ ] Confidential documents marked "Confidential" or "Trade Secret"
[ ] Access to sensitive systems on need-to-know basis
[ ] Separate credentials for sensitive systems
[ ] Audit logs for access to proprietary code and data
[ ] Source code in private repositories (not public GitHub)

OPERATIONAL PRACTICES
[ ] Don't share trade secrets with investors before NDA is signed
[ ] Don't publish details of proprietary methods in blog posts, patents, or papers
[ ] Clean up public job postings that reveal technology stack or methods
[ ] Regular employee training on what information is confidential
[ ] Off-boarding process revokes all access within 24 hours

Trade Secret vs. Patent Decision

Algorithm example: Google's search algorithm is a trade secret (better than a patent — no disclosure, no expiration). Many startup algorithms should be trade secrets.

COPYRIGHT

Automatic Protection

Copyright attaches automatically when you create an original work:

• Source code
• Written content (blog posts, documentation, marketing copy)
• Design assets (logos, UI, graphics)
• Audio and video

You don't have to register for copyright to exist. But registration provides enforcement advantages.

Copyright Registration (When It Matters)

File copyright registration if:

• You want to sue for statutory damages (up to $150,000 per willful infringement) vs. actual damages only
• You want to publicly record your ownership
• You're in a creative business where infringement is a real risk

Cost: $35–$55 per registration (online at copyright.gov)

What to register:

• Core product UI/UX design elements
• Written content if it's a significant revenue driver
• Marketing materials and brand design

Work-for-Hire Rule

When you hire an employee, their work product is owned by you (company), not them — if:

• Created within the scope of employment
• IP assignment agreement is in place

When you hire a contractor, copyright defaults to the contractor — NOT to you, unless:

• There is a written work-for-hire agreement, AND
• The work falls into one of the 9 statutory categories for work-for-hire, OR
• The contractor signed an IP assignment transferring copyright to you

This is critical: Without a written IP assignment, a contractor who built your core product may own its copyright.

IP ASSIGNMENTS

Why IP Assignment Is the Most Important IP Document You'll Sign

The scenario that kills deals:

• Founder 1 builds the product before the company is formed
• Company is incorporated
• Founder 1 never formally assigns the IP to the company
• Investor does due diligence and discovers the company doesn't actually own its own product
• Deal dies or requires restructuring

This happens more often than founders realize.

Founder IP Assignment Checklist

Every founder must sign an IP assignment that transfers to the company:

• All inventions, discoveries, and works created before or after founding that relate to the company's business
• All proprietary information and trade secrets
• All copyrights in work created for the company
• All patent rights in inventions created for the company

When to sign: At incorporation — before any code is written, before any IP is created.

Form: Typically embedded in the Founders' Agreement, Employment Agreement, or a standalone IP Assignment Agreement.

Employee and Contractor IP Assignment — Required Language

For employees (include in offer letter or employment agreement):

IP ASSIGNMENT

As a condition of employment, Employee agrees that:

1. All inventions, works of authorship, developments, discoveries, and improvements
   ("Inventions") that Employee creates, conceives, reduces to practice, or develops,
   alone or with others, during the period of employment that (a) relate to Company's
   business or actual or anticipated research or development, or (b) result from or
   relate to work performed for Company, are the sole property of Company.

2. Employee assigns to Company all right, title, and interest in all such Inventions,
   including all patent, copyright, trade secret, and other intellectual property rights.

3. Employee will promptly disclose all Inventions to Company and execute all documents
   reasonably necessary to evidence Company's ownership.

4. This assignment does not apply to Inventions that Employee can document were
   developed entirely on Employee's own time without using Company equipment, supplies,
   facilities, or trade secret information, and which do not relate to Company's business.

Employee's prior inventions excluded from this assignment: [List or "None"]

For contractors (include in SOW or standalone agreement):

WORK FOR HIRE / IP ASSIGNMENT

All work product, deliverables, inventions, and works of authorship created by
Contractor in connection with this engagement ("Work Product") shall be considered
"work made for hire" to the maximum extent permitted by law. To the extent any
Work Product does not qualify as work made for hire, Contractor hereby irrevocably
assigns to Company all right, title, and interest therein, including all IP rights.

Contractor represents that Work Product will be original and will not infringe
any third-party intellectual property rights.

Prior Employer IP Claims — A Real Risk

Before hiring a founder or key employee:

• Ask: Did you sign an IP assignment with your prior employer?
• Ask: Does any of your work at your prior employer relate to what we're building?
• Ask: Does your prior employer agreement restrict what you can work on now?

Why it matters: Several high-profile startups have had claims from prior employers arguing that the founder's invention belonged to the prior employer.

Mitigation:

• New employees should review their prior employer's IP agreement with an attorney
• Founders should be clean from prior employer claims before company incorporation
• Document what a founder brought to the company vs. what was developed after