We spoke with Richard Mandaro, Senior Counsel at the intellectual property law firm Amster, Rothstein & Ebenstein about the changing domain and intellectual property (IP) landscape in the U.S. Here’s what he told us about intellectual property basics for startups.
Tell us about your specific areas of practice. I litigate patent, trademark, copyright, trade secret and unfair competition cases. I work with a wide range of clients, from Fortune 500 companies to smaller companies involved in technology, retail, apparel, toy as well as the restaurant businesses. I work with them on trademark and brand development, protection, enforcement and anti-counterfeiting. I have a background in electrical engineering, which allows me to dig into cases involving consumer electronics. I also perform due diligence searches and valuation of intellectual property for financial services companies.
What advice do you give startups about their IP and how to manage/secure it properly? Startups have a lot on their plate – but they need to be disciplined and organized with their intellectual property. Because they usually have limited resources, they need to prioritize and consider what is most important to their business. For example, is it branding, marketing or protection? Are their goals long or short-term? Once I know a company’s business goals, I can provide a cost-effective strategy for managing their IP.
Are your clients having issues with domain names, or other types of online security issues? I see frustrated clients all the time who are upset because there is someone else online with a similar domain that can confuse the public. There are now all these new top level domains, allowing for different permutations and suffixes. We’re seeing instances of phishing and use of keywords to steal customers or redirect people to sites that sell similar products.
What advice do you give startups about choosing a name for their business, and are you typically brought in to consult before a name is chosen? What I want for my clients is for them to have a clean runway toward their launch and development. The best way to do this is to pick a brand name that resonates with your audience, and make it yours. The best names are not always the most obvious, but rather something different or obscure that a business can grow into and become a source of identification for a startup. You need to be careful not to fall in love with a name before doing the proper due diligence through searches. It’s always best when a client speaks with me first before deciding on a name – it saves time, money, and in the worst case possible lawsuits.
Should intellectual property (IP) lawyers know about what’s happening in the domain space? It’s a very specialized area and not everyone is up to date on all the technology and how the new top level domains (TLDs) may be affecting their clients’ reputations online. For the general intellectual property attorney who doesn’t deal with domain issues on a daily basis, getting a handle on the expanding domain universe, and monitoring who is buying domains with a client’s brand or trademark can be a headache. But it’s a key area for IP lawyers to understand, it can’t be ignored.
Has DomainSkate been helpful to your practice? Yes, without a doubt. It’s helpful to have tools that allow you to dig deeper and to find out who is out there and causing the problems. Is it an industry competitor looking to siphon your business or does the person do something unrelated? It adds a level of understanding to the space that I can use to save time and money. Clients appreciate that.
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