Starting Your Business with a Clean Slate

Breaking up is hard to do. That's true for relationships and also for ending your contract with an employer.

Whether you're moving on to start your own business or have been hired at a company that could be considered a competitor, you'll want to make sure you can start your new job with a clean slate.

A lot of the following issues might be covered in your employee contract. It's worth discussing with an experienced lawyer to make sure you can get up and running without a potential lawsuit slowing you down. 

Here's what to look out for:

Intellectual Property

It is obvious that anything you created or invented during work hours for your company is owned by that company. This would be considered intellectual property. Where it gets fuzzy is any work you did on the side during off hours. Things could be further complicated if you used any type of company equipment like a computer or software for your own inventions. There could be a strong claim for that property you created.

Non-Competition

It stands to reason that if you're good at your current job, then your start-up would be related to your skill set. That might be cause for concern if you are going to be in direct competition with your current employer. Most contracts have a non-compete clause that can last up to a year. It might take that long to line up your investors and launch your business but you'll you might be restricted from doing any kind of work that is deemed "the competition." Worst-case scenario, you sit out the year and spend it planning.

Non-Solicitation

This is often referred to as the "poaching clause." Just because you've created solid working relationships with a lot of clients doesn't mean you can "steal" them all for your new business. It's a tricky area. A client can go to any business they want as long as they don't violate a contract. The mere fact that you're starting up on your own might be enough incentive for the client to jump ship. From a legal standpoint you'll be covered if you don't actively solicit that client.

If you have doubts about any of these areas then you'll be better off checking with a lawyer. Additionally, you should consider your future plans when accepting any job. If your goal is to become your own boss then a restrictive employee contract which prevents that from happening might not be worth signing.

There is nothing wrong with negotiating. Just make sure you're not getting trapped into a contract which will stop you from pursuing your dreams.

Registering Your Trademark in Canada

Standing out from the crowd is important for small businesses to get ahead and grow their customer base.  A great way to do that is to come up with a distinctive word, symbol, or design to brand your company.  But how do you keep that distinctive identity that differentiates between you and your competitor?  Trademark it.

A registered trademark legally protects your intellectual property from misuse and imitation.  But keep in mind that if you register your trademark in Canada, it is only protected by law in Canada.

A good trademark consists of distinctive terms which are often arbitrary and fanciful, rather than suggestive, descriptive or generic. Maximize the likelihood of registration by trademarking something completely invented or that makes only the slightest reference to the nature of the wares or services provided.

A trademark will not be registered by law if it is:

• the name or surname of a person (e.g., "Jane Smith");

• clearly descriptive of the wares or services in relation to which it is used (e.g., "Perfectly Clean" in relation to dry-cleaning services);

• a word in another language which describes the wares or services (e.g., "Gelato" - the Italian term for "ice cream" - in relation to ice cream products);

• deceptively mis-descriptive (e.g., "Air Courier" in relation to ground transportation services); or

• an official symbol, coat of arms, badge, crest, emblem or name (e.g., the Canadian flag, the letters "R.C.M.P.", the name "United Nations", the symbol of the Red Cross).

If there is a design component, you may wish to register both the language and design separately to get maximum legal protection.

Be prepared to wait for response to your registration application.  In Canada, the process can take up to 8-10 months to complete.  If there is opposition, the process can take much longer.  Fees are $250 for each trademark request and non-refundable, so make sure your trademark is distinct and original in order to have a successful registration.

For more information on trademarks, please visit CorporationCentre.ca!

The Google Patent Search Tool - Does This Affect Your Intellectual Property?

A patent is all about protection for your intellectual property. The United States provides patents to give inventors the right “to exclude others from making, using, offering for sale, or selling their invention throughout the United States or importing their invention into the United States.”

Every country can grant a patent which would govern that property in that country. It is conceivable that a patent granted in the U.S. or Canada doesn’t necessarily offer protection against infringement in a country like China or Russia.

Still, it is advisable for a business that has a piece of intellectual property to have it patented in as many countries as possible.

Google has created a patent search which is becoming a huge asset to many businesses. When you consider that there are 8 million approved patents and 3 million pending patent applications in the U.S. alone then you can see the need for a search engine. Now Google has put that database of the United States Patent and Trademark Office online for easy access. How can this help you protect your intellectual property? Consider these benefits:

Clearing the Field

The first obvious benefit of a Google patent search is to see if somebody beat you to the punch. In other words, has your brilliant idea already been developed? This is a search that really should be conducted once the plans for an item are ready to go to the prototype stage. If you find that your idea has been patented you’ll either have to rethink it entirely or scrape the project. Better to learn that in the early stages of development.

Borrowing Innovations

Suppose you’re in the kind of business that needs to create a machine to make the perfect widget. You’re really selling the widget but it has to be mass produced to be cost effective. That special machine you design to make the widget could be patented. However, you might find that another business has a similar machine you can adapt. There’s no need to go down the expensive patent review process when you can license the right to use that technology from the original patent holder. Remember, you want to get to your “widget” and the most affordable and stress free path to that goal is the way to go.

Getting Inspiration

There aren’t a lot of secrets when it comes to granting a patent. If you’re working through a challenging design you might do a patent search for similar products to see how other inventors overcame their hurdles. Who knows? You could be inspired to take your idea in a new direction that no one has thought of.

Inventor 411

It could be that you’re so impressed with a particular product or piece of intellectual property that you want to know more about the originator of that idea. The patent search will let you trace the inventor and find out what other ideas they’ve worked on.

Intellectual Property: Tips on How to Protect Your Business Online

Intellectual property is anything that you or your business creates that is the property of your business. Each of the super heroes in the smash hit movie, Avengers, are the intellectual property of Marvel Comics. This means you can’t use The Hulk to advertise your spring sale. When you or your company creates a piece of intellectual property whether it’s a slogan, a character, a recipe or logo you are well within your rights to make sure that property is protected. In this age of social media networking, keeping up with that protection can become a challenging and full-time job. The following are some insightful tips on how you can protect your intellectual property and what to do when someone steals it.

·         Patent, Trademark, and/or Copyright First

You really can’t make a claim against someone who is using your intellectual property unless you first register that property. This will require filing an official trademark or copyright application for your property. A trademark protects your company information from being used by another company. Going back to the Avengers example, the next Batman movie can’t have Spiderman in it because those are two separately trademarked characters and can only be used with permission from the trademark owner. Copyriting typically applies to a work that you intend to publish like a story, article or photo. These can also be created by your business as a way of promotion but can’t be used by other companies unless you give them permission. A lawyer who is familiar with these types of laws can advise you as to which is the best application to file for protection.

·         IP Monitoring

If you are serious about protecting your intellectual property then you’re going to have to invest into some time into monitoring your brand to see if your property is being inappropriately used. This isn’t just about checking into Facebook once a day, but instead dedicating time to conduct comprehensive searches across all kinds of social networking sites and other web portals.

·         Decide If Your Have Been Infringed Upon

Suppose your company creates a brand icon like the Pillsbury Doughboy. After trademarking this icon, it becomes very popular and begins popping up as people’s profile picture or on their blogs. Is that real infringement? Is your business being damaged? Your reputation being tarnished? Only you can make that call but just because someone might be using your icon or other intellectual property in the vast outreaches of cyberspace doesn’t mean your business will suffer. On some level, you can’t realistically chase down every infringement. You have to pick your battles wisely.

·         Taking Action

When it has been determined that your intellectual property is indeed being misused then you can take appropriate legal action. The first would be a cease and desist order. This would be a legal letter sent from your company’s attorney informing the user that they need to stop using your intellectual property immediately. Once you’ve put them on notice and they still keep using the property, you can sue them for trademark or copyright infringement. Proving damages in court can be tricky and costly for you. Often, the cease and desist order will do the trick.

CIPO Now Accepting Sound Trademarks

A ground breaking federal Court of Canada decision has allowed for the trademarking of sounds. CIPO (Canadian Intellectual Property Office) has been resistant to sound trademarks and, up until this point, only allowed words or designs to be trademarked, even though many other countries have already allowed for sound to receive the same protection.

The decision has come from a long and drawn out court case between Metro-Goldwyn-Mayer (MGM) Studios and CIPO. In 1992 MGM applied to trademark the sound of the lion’s roar that viewers hear before any MGM movie. CIPO, after years of delays, eventually denied the trademark application for MGM’s lion roar and MGM appealed the decision.  The case made its way at the federal Court of Canada where MGM won. Because of the ruling, CIPO announced that it will now be accepting sound trademark applications.

Sound trademarks can be considered a kind of “aural brand” in that the sound you hear can instantly trigger the thought of a brand. Besides the MGM lion’s roar, other sounds that have been trademarked by brands in the US include the NBC chimes, the Intel Pentium chord sequence, the 20^th Century Fox music and the Harlem Globetrotter’s theme music. However, in Canada the sound trademark does not extend to longer sounds like songs, which would instead be protected by copyright.

To submit a sound mark in Canada, your application must include:

a.      a statement that the application is for a sound mark registration;

b.     a visual depiction that graphically represents the sound;

c.      a description of the sound; and

d.     an electronic recording of the sound in MP3 or WAV format or on CD or DVD (5 MB max.)

The recording should not contain any looping or repetition of the sound. Types of media other than listed above, hyperlinks, or streaming locations will not be accepted.  New applications for sound marks can only be submitted through a paper application, and not by CIPO's online filing system.

For more information on sound marks visit the CIPO website.

Video Series - PatsyPie Trademark

PatsyPie - Trademark Application Filing Services

PatsyPie is a bakery specializing in gluten-free products such as cookies, brownies and biscotti. Started as a home business in St. Laurent, Quebec by Pat Libling, PatsyPie has grown tremendously, with products now being sold across Canada.

PatsyPie was started because Pat herself is celiac. Over the years Pat has tried practically every gluten-free product on the market but found that none of the products measured up to the quality and taste of regular baked goods. So Pat set out to perfect her gluten-free recipes and once she did, she was in business!

For Pat, finding a creative and original name for her company was easy - PatsyPie is a nickname her husband gave her years ago. As PatsyPie started to become a successful business, Pat knew she needed to protect her company name and logo, so she turned to CorporationCentre.ca to register her Trademark.

Check out Pat's story in the video above and for more information on PatsyPie gluten-free baked goods, please visit the website at www.patsypie.com!