Companies have all kinds of intellectual property (IP), including trademarks, but just how important is that IP to a company? As a business attorney for nearly 40 years, Professor Patricia Lee of Loyola can tell you that trademarks and other forms of IP are hugely important and becoming more important every day.
As the director of the Loyola Business Law Clinic, Prof. Lee and her students find that trademark and other IP issues are a natural part of assisting and counseling the clinic’s clients. “Trademarks are very important to business startups and non-profit organizations,” said Prof. Lee.
So, where is Prof. Lee from and how did she get into business?
From Corporate Counsel to Law School Clinic
Prof. Lee is a native Chicagoan and began her legal career working as a corporate counsel for a Fortune 500 company.
However, after a decade of doing such work, she wanted to take her experience to a new place. “I decided to bring those values to urban areas and assist those who were starting grassroots organizations to succeed,” said Prof. Lee. Consequently, for the past 22 years, Prof. Lee has performed much of her work in business law clinics. She has worked with entrepreneurs, small businesses and not-for-profits. She has counseled them in a variety of areas of law, such as transactional, administrative, intellectual property, and contracts law.
After spending a number of years away from Chicago, Prof. Lee came back two years ago to join the Loyola Law School faculty in running the Business Law Clinic.
Trademarks for Startups
In her experience working with business law clinics, Prof. Lee saw how vital trademarks were to even with the clinic’s small clients. The trademarks of these small startups and non-profits protect their brand identity. Trademarks help companies identify themselves as the source of their goods or services to consumers. And, they provide some protection against copycats. Basically, trademarks for small organizations do all the same things that trademarks do for big companies.
Startups also have to avoid violating the IP rights of other companies.
“Our clients need to protect their name and to make sure they are not infringing on other parties’ trademarks,” said Prof. Lee.
But what is trademark infringement, one might ask? Basically, infringement occurs when a company uses someone else’s trademark without their permission. Infringement can also happen if a company uses a trademark that is too similar to someone’s trademark on good or services in commerce in a way that confuses consumers. If a small startup was to use the same name as a Fortune 500 company, an infringement action could be immediate, costly and potentially destructive towards the startup. As a result, the clinic attempts to steer its clients clear of such a situation.
To assist clients in avoiding a trademark infringement suit, Loyola’s Business Law Clinic assists its clients in choosing a proper name that is available at the state level rather than at the national level, since the clinic’s clients are usually small businesses that are not looking to expand nationally. The clinic also does trademark research and reviews Illinois state trademark filings of business in the state. The clinic does some consulting around the clients’ brand strategy, or, in other words, their client’s plan to market their trademarked brand.
Importance of Trademarks
Prof. Lee’s experiences working with businesses’ trademarks in her time in business law clinics demonstrates just how important knowledge of trademarks and other forms of IP is for a business attorney. Prof. Lee noted that many new business owners “may not totally understand some [IP] concepts.”
Prof. Lee explained some of the confusion. “The different types of intellectual property are often confused. There could be patents, trademarks, copyright, and trade secrets involved in any growing business. Confusing these concepts would be detrimental to the business.”
If a business owner were to confuse trademarks with an entirely different form of IP, they could be going about the wrong way in how to protect its trademarks. In order to fill this knowledge gap, business attorneys with an IP background should advise their clients in how the business owners’ trademarks are different from other forms of IP and what must be done to protect their trademarks.
Consequently, Prof. Lee notes that IP knowledge is essential for business attorneys as well as other attorneys. “We may come to a point as lawyers, whether for those practicing transactional, litigation, administrative or legislative, that intellectual property will be a part of all of it. The more we witness technological movement, intellectual property, in all of its facets, will be necessary.”
With this emerging reality, Prof. Lee encourages business law students at Loyola to take IP classes. As she explains, an IP knowledge is “definitely important” for their careers. “Business law students should have access to IP-related courses for them to represent the businesses of the future.”
Knowledge of both trademarks and other forms of IP is going to be an important asset going forward for lawyers and, according to Prof. Lee, now is the time to begin accruing that knowledge.
Brendan Zdunek Associate Blogger
Loyola University Chicago School of Law, JD 2023