I know that you have your own legal firm, Cohn Legal, PLLC. How did it all start for you?
Abe Cohn: Principally, I am an attorney with a special expertise in property law and Internet law. I went to Benjamin N. Cardozo School of Law, which specializes in intellectual property law. I worked for a small boutique for about 10 months after law school, then after that I launched my own legal practice. The type of intellectual property services that I counsel the clients of Cohn Legal, PLLC is trademark law. Trademark covers all things brand related. We have an office in New York and also one in Boston.
Why did you decide to do that?
Abe Cohn: I suppose it’s because I’m an entrepreneur at heart. I didn’t want to work for anybody else. Frankly, I wanted to launch a lucrative career (laughs) – which, on a working salary is challenging, unless you have a large salary. Even then, the hours demanded of lawyers working at large corporate firms are more than I was prepared to invest. Running my own legal practice helps me live a more balanced lifestyle.
Can you give us an eagle’s eye view of Intellectual Property Rights in the US right now?
Abe Cohn: Unlike “real property”, intellectual property consists of ideas, conceptions, and creative works. Patents cover material inventions. For our purposes, when we say Intellectual Property, particularly trademark law, we’re talking about a company’s brand identity. A company has a name, logo, and slogan – none of these are real in a sense that a real estate property is physically real. Intellectual property covers ideas, property of one’s intellect.
In the United States, the two main governing bodies that administer property rights are the United States Patent and Trademark Office, and then there is the Copyright Office. Brands in the United States need to focus on protecting their brand identity, their name, their logo, and their slogan. Depending on the company, they may have other forms of intellectual property rights that need to be protected.
Just to set an example: if you think about J.K Rowling, she has both trademark rights to the name Harry Potter and other brand identities associated with that brand.
You also wouldn’t be allowed to copy her book or write a derivation of them and publish it as your own. That’s covered by copyright laws.
Small businesses and entrepreneurs should sit down with an attorney and determine their intellectual property rights given their assets. Then, they need to develop a strategy to protect these assets.
What do you think are the most important challenges that small businesses face when it comes to trademark and IP protection?
Abe Cohn: The biggest challenge is not understanding the fundamental legal principles undergirding intellectual property law, including of course trademark law. So, for example, let’s say you’re a start-up business in the food industry and you wanted to develop a new type of Laffy Taffy. A company that doesn’t understand how trademark works might mistakenly spend 10,000 dollars in branding their company as “The Best Laffy Taffy”, without knowing that they don’t have any rights to that name and they can’t protect that.
Companies that don’t fully understand the ramifications of intellectual property run the risk of infringing on other company’s intellectual property, and or simply not tooling themselves with the ability to protect their own intellectual property.
So, it really starts with education.
Abe Cohn: Absolutely.
When it comes to trademark protection, I’ve learned that you have to constantly renew your trademark rights, right?
Abe Cohn: Yes, between the 5th and 6th year, and then every 10 years.
A lot of small companies hit by the pandemic are postponing renewals. What advice can you give them when it comes to protecting their trademark?
Abe Cohn: There’s a famous adage that goes, “If you don’t use it, you lose it.” Trademark law prescribes that you have to continuously use your mark or else they’ll go abandoned. The cost to keep one’s trademark is fairly quite cheap. The renewal is around 125 dollars. Look, if you’re a company and you can’t spend 125 USD, you have bigger problems than protecting your intellectual property rights.
Working from home is a whole different environment from working in an office. If every facet of your business has to be conducted online, then how should people or businesses think in terms of keeping their intellectual property rights safe?
Abe Cohn: With everything that happened in 2020, one can more readily understand just how important it is to have a strong trademark identity. The more virtual we get, the more that people are going to rely on the brand identity of a company and the reputation that it carries.
What do you think small businesses need to do to develop a strong trademark?
Abe Cohn: Companies need to focus on developing a strong brand identity – having a strong company name, a strong company logo, and a strong company slogan. Equally as important for companies that are developing proprietary products, is to make sure that they name those products in an interesting and unique way. That will enable them not only to sell the products, but to sell the idea behind them.
Gatorade actually does a very good job with this. If you’ve ever had a Gatorade energy drink, each one of their colored drinks is tagged with a special product name. Do people know the difference between Powerade and Gatorade? Probably not. But what they understand is the name Gatorade and Arctic Blitz. That resonates with them and that’s why they buy it.
Does this mean they have to apply for a trademark for each and every product that they come up with?
Abe Cohn: Precisely.
For businesses who are exploring the idea of outsourcing or making their trades abroad, what do they need to consider when it comes to intellectual property?
Abe Cohn: For companies that intend on purchasing, selling or expanding their brand outside of the country should get an international trademark. The best way to do that is through the Madrid Protocol application, which is a central application where a company can extend their trademark rights to different countries that are party to this international treaty.
The next thing is to understand that with intellectual property, it’s only as good as it can be enforced. That’s why we’re having such a big problem with China because the government over there just doesn’t care about enforcing intellectual property theft and in fact actively encourages it. That’s something to be mindful about when you’re putting your intellectual property in other countries. Your only recourse is to sue. And the likelihood and ability to sue in those other countries is rather challenging.
It’s great that you raised the reality of enforcement. When you’re thinking of hiring and creatives from other countries, whether that’s in the Philippines, India or Mexico, how effective are non-disclosure agreements or specifying clauses that this person is hire-to-invent or in a work-for-hire arrangement?
Abe Cohn: Non-disclosure agreements are unfortunately rather weak, but still necessary simply because of how challenging it is to enforce them.
Work for hire agreements, on the other hand, are more readily enforceable and tremendously important. It’s critical that any creative who is hired for a job must sign a work-for-hire agreement. The work-for-hire agreement must explicitly outline what the work is that is for hire. And it’s important to keep all this on record because as U.S. applicants apply for different IP protections in the copyright office, you might have to display some sort of proof that the IP that you’re submitting for copyright production is, in fact, work-for-hire. So, it’s important to have all that carefully outlined, on paper, and carefully recorded.
On the side of vendors who provide the labor, what do they need to ensure to make sure that they’re also protecting the IP of the companies that they work for?
Abe Cohn: Vendors need to make sure that they’re being paid appropriately for the IP that they’re creating. For the vendor, they’re creating IP. Either on a per project basis or they’re selling their IP after the fact, which happens through assignment agreement. Vendors don’t have to be concerned with the IP because they’re giving it away ultimately for a price. For a vendor, they just have to make sure that they’re appropriately compensated.
With everything you’ve pointed out, small companies seem ill-equipped to chase down IP thieves at a global level. What policies can businesses turn to in order to strengthen their own capacities for protecting their intellectual properties?
Abe Cohn: Some IP are more challenging to replicate, some less so. Overall, it’s definitely harder for smaller businesses that don’t have the capacity to do much about it.
For large companies, they often turn to a robust cyber security policy in place in order to shore up their secrets. That includes closed servers, closed networks, firewalls – it’s definitely more of a technical question when it comes to protection. On the legal side, they can protect it by suing somebody. But is that always a practical option? No.
But that’s the risk of putting your IP out there. That’s why some people don’t even want to have a patent issued.
Really? Why would companies not want to be protected?
Abe Cohn: While it’s true that patents give companies proprietary IP rights up to about 20 years, the moment that the IP is published at the USPTO, anybody could look at it. Any time you put a piece of tech or product on the market, you’re leaving it vulnerable to theft. Other people are gonna see your IP, they’re going to recognize the value in it, and they’re going to try to replicate it in some way.
So, disclosing your IP is not always the best thing.
Think of trade secrets, for example. If you think about the Coca Cola recipe, how has no one ever been able to replicate the Coca Cola recipe? The recipe is called a trade secret, which is something good for food companies to have in general.
Companies need to have tightly controlled measures of the people within the company who have permissions or access to the trade secrets. One person knows half of the recipe, the other person knows the other half of the recipe. Companies can protect their intellectual property by keeping secrets rigorously contained and compartmentalized.
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