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Starting Start-Ups: Leveraging Technology to Protect IP

December 10, 2019

Suffolk alum Lauren Sabino discusses her classroom work using the community.lawyer tool to create an automated platform directed at providing cost-effective support to emerging start-up companies seeking to protect their intellectual property. 

 

As a student at Suffolk University Law School I have been fortunate to have been exposed to legal technology and the opportunity to take courses that have taught me the important role of technology in the future of the legal profession. During my 3L year I enrolled in a course called Lawyering in the Age of Smart Machines and I’ll admit it, I was a bit skeptical at first. I consider myself technologically savvy in that I feel comfortable and confident using computers and other smart machines. That being said, I had never even heard of the vast majority of the programs and software programs that I was introduced to in this course. The course’s final project, which consisted of creating a technological innovation and building an app, was certainly out of my comfort zone. With the help of an encouraging professor, I chose to build a trademark cease and desist letter document assembly tool using the Community.lawyer [1] platform.

 

My final project focused on the basic idea of helping those who can’t afford expensive legal services gain access to legal help. Particularly, my project aimed to provide a solution to protecting intellectual property (IP) rights at a much lower cost than hiring an attorney. Startups and their founders have a lot on their plates. They’re looking for the best employees to help their vision become a reality, they’re looking to clear out of the garage and into new office space, they’re busy creating an interesting, functional website, and they’re looking for customers, of course. So, where does protecting IP fall on the list of priorities?  Perhaps somewhere in the middle if the business has some knowledge or awareness on the topic. But maybe at the bottom (or off the list completely) if the business is of the creative kind that would rather leave business logistics to someone else.  Too often startups and their founders think of IP as something they can deal with later, when they’re a little more established and have a little more cash. However, ignoring IP is a mistake. 

 

IP is the foundation of hard work, the backbone of a business and often a business’s most valuable asset.  For example, the trademark, the name, or logo created to identify a business to the consuming public is often worth a lot of money.  Any tagline or phrase used in connection with a company’s goods or services is also valuable IP. All these assets serve to identify the business and its owners or contributors, including customer good will and satisfaction. Notably, trademarks account for an average of one third of corporate value.  The top ten trademarks in the United States are all worth billions of dollars. [2] Google’s trademark is worth $44.3 billion, Microsoft’s trademark value is $42.8 billion, and Walmart has a trademark value of $36.2 billion. [3] Thus, protecting and developing a trademark is an investment worth making early in the collaborative process. Unfortunately, the cost of prosecuting a trademark can run a client thousands of dollars in attorney’s fees. Further, the cost of enforcing IP rights after obtaining them can also be costly. 

 

What many people don’t know is that once you have a registered mark, it is extremely important to enforce that mark diligently. While there is no hardline rule as to what constitutes “enough” enforcement, ignoring infringers can cost a trademark owner their rights. Equally as significant, infringement can result in damage to the business in the form of lost profit and loss of the investment (time and money) made to build the brand, create the mark, and market a product or service. 

 

The document assembly tool I built is geared toward startups and was built with startups in mind. The app starts off with a series of questions with the intent to provide information and educate the user on their rights. My idea was to create a technically useful tool but also a learning tool to help startups understand their rights. Using the knowledge of U.S. trademark law that I gained throughout my time as a law student, I began to brainstorm what basic information I would need to draft a cease and desist letter, such as the name of the mark, the name of the mark’s owner and a potential USPTO registration number. 

 

From there, I began to think of information that would be helpful in determining the scope of a potential mark owner’s rights (i.e. federal rights via registration with USPTO or common law rights based on use). A common misconception is that you must register your trademark with the USPTO to have enforceable rights. While my tool doesn’t specifically meet the needs of a common law rights holder, it was important to me that the app inform that user of their rights and encourage the protection of their mark. 

 

The app is very simple and user-friendly. The user is prompted to enter requested information manually and at other times is asked a question and provided with a simple “yes” or “no” button to guide them to the next appropriate question or statement of information. The app begins with the threshold inquiry of registration. So, for example, if the user answers “no” to the initial question of federal registration, the following questions help the user come to a preliminary conclusion regarding common law rights. One of the many great things about the tool is that it can also provide guidance to individuals and serve larger businesses and firms. The app integrates U.S. trademark laws and regulations in a way that would empower an IP attorney to feel confident using it but is simple enough to assist someone with the most basic level of trademark knowledge. It could also be used by paralegals or other legal staff if they are provided the pertinent information. The tool still has a long way to go. I have several ideas to improve the app and make the tool more useful for the user and for the legal community. Some of these ideas include incorporating a specific tone as chosen by the user and creating an additional document to help those with common law rights enforce their rights as well.

 

Coincidentally, the week I submitted this final project for the Lawyering in the Age of Smart Machines course I was given an assignment at work where I was asked to contribute to a unique software application that provides trademark searching and monitoring services and provides the user with help registering a mark. The service specifically targets small businesses to inform them of the importance of registering their mark and subsequently monitoring the mark. The assignment allowed me to talk about my tool and share with my colleagues what I now know about the legal tech space. I am grateful to Suffolk Law for introducing me to legal tech, providing me with a safe space to be creative, and encouraging me to take on a challenge.

About the Author

Lauren Sabino Lauren is a 2019 graduate of Suffolk University Law School.

 

 

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