Intellectual Property 101 for California Founders

Brand, Trademarks & Clearance

A defensible name is distinctive, available, and properly filed. Before design work or launch campaigns, run a fast but structured clearance, then choose the right filing path to lock in priority.

The Distinctiveness Spectrum

Run a Smart Clearance (10–20 minutes)

1. Web test: Search the exact phrase and close variants. Look for similar products/services.
2. USPTO (TESS): Check live applications/registrations in likely classes; read the goods/services wording for relatedness.
3. California registry: Quick scan of state registrations for obvious conflicts.
4. Common‑law sweep: News, Crunchbase, app stores, LinkedIn, GitHub—unregistered use can still create risk.
5. Domains & socials: Core TLDs (.com/.io) and key handles (X/Twitter, LinkedIn, Instagram, YouTube). Watch for squatters/misspellings.
6. Confusion pass: Would consumers think the source is the same? Compare sight, sound, meaning, and channels of trade.

Filing Path: Use‑in‑Commerce vs. Intent‑to‑Use

• Use‑in‑Commerce (1(a)): You’re already offering/selling across state lines. File now with a proper specimen.
• Intent‑to‑Use (1(b)): Not live yet but committed to the name. File to lock priority, then submit a Statement of Use (SOU) when you launch. Up to five 6‑month extensions are generally available after the Notice of Allowance (maximum ~36 months).

Classes & IDs: Claim what you actually offer. Over‑claiming invites Office Actions; under‑claiming narrows protection. Keep goods/services language accurate.

Specimens, TEAS Choices & Usage

• Specimens (services/SaaS): A live webpage/app screen showing the mark next to the described services with a way to sign up or buy (not just a coming‑soon splash).
• Specimens (goods): Labels, packaging, or a product page where the mark identifies the goods with a purchase path.
• TEAS Plus vs. Standard: Plus has lower fees but stricter ID wording; Standard costs more but is more flexible.
• ™ vs ®: Use ™ anytime for unregistered marks. Use ® only after federal registration and only for the covered goods/services.
• State vs. Federal: State filings are narrow. Most growth companies prioritize federal filings for nationwide protection.

Founder Heuristics

• If your name is descriptive or the class is crowded, rename early—rights will be thin and enforcement costly.
• File an ITU when you’re serious about a name to stake priority, then convert when you launch.
• Escalate to counsel when a similar live mark exists in a related class, you’re considering consent/coexistence, or planning multi‑country filings.

Copyright in Product & Marketing

Copyright is the fast, inexpensive way to lock down ownership of your code, UI, copy, images, audio, and video. The playbook: make sure you own it (via assignments), register quickly so you qualify for strong remedies, and use lightweight enforcement when needed.

What’s Covered (and what isn’t)

• Protected: Source code (including structure/sequence/organization), UI copy and layouts, illustrations, graphics, photos, videos, audio, marketing copy, design files.
• Not protected: Ideas, procedures, methods, algorithms as such, and facts. (Your selection/arrangement or expression of facts can be protectable.)
• Datasets: Raw facts aren’t protected; curated selections/annotations usually are. Contracts and access controls matter more here.

Post‑Launch Registration Plan (90‑Day Sprint)

• Code: Register the initial public release and major versions. For the deposit, submit the first and last 25 pages of source with trade secrets redacted (black out variable names, salts/keys, etc.).
• Product UI: Register a compilation of representative screens (core flows, dashboards, pricing, checkout).
• Marketing Pack: Hero copy, landing pages, long‑form posts, and original graphics you rely on for acquisition.

Agencies & Contractors: Fix Ownership Now

In the U.S., the creator owns the work unless it’s (a) an employee within scope, or (b) a work made for hire in a narrow category and with a written agreement. Logos and most marketing assets from a contractor usually aren’t works made for hire—so you need an express assignment.

“Agency agrees the deliverables are works made
for hire for Company.”

“To the fullest extent permitted by law, Agency
agrees the Deliverables are works made for hire
for Company. If any Deliverable does not qualify,
Agency hereby assigns to Company, exclusively
and worldwide, all right, title, and interest in and
to the Deliverables, including all copyrights and
renewals. Agency will execute further documents
to effectuate the foregoing at no additional charge.”

(No waiver of moral rights)

“To the extent any moral rights exist, Agency
waives and agrees not to assert them against
Company or its assigns.”

Marketing Assets: Releases & Licenses (CA‑specific notes)

• Right of publicity: In California, get a signed model/voice release before using a person’s name, image, voice, or likeness in marketing.
• Music & fonts: Verify license coverage for commercial use, the channels you’ll use (web/app/ads/video), and, for fonts, web embedding.
• Stock platforms: Save proof of purchase and the license PDF/Image ID in your asset tracker.

Practical Enforcement Ladder

1. Screenshots & evidence: Capture URLs, timestamps, and comparison images.
2. Platform takedown: File a DMCA notice with the host/platform; it’s fast and free. Expect possible counter‑notice.
3. Reach‑out letter: A concise, factual note with proof of registration and a concrete ask (takedown, credit, $$).
4. Escalate: If the infringement is material to your business or fundraising, discuss litigation posture with counsel.

Patents: Provisional vs. Non‑Provisional vs. Trade Secret

Patents make your invention public in exchange for a time‑limited monopoly. Trade secrets keep it secret as long as you maintain reasonable measures. Choose intentionally and time your filings around demos, sales, and publications.

Pre‑Demo / Pre‑Publication Checklist

• File at least a US provisional if you’re about to disclose publicly (conference, sales deck, launch post, arXiv/paper).
• Remember many countries have absolute novelty rules; public disclosure before filing can kill foreign rights.
• Mark slides and pilots under NDA until filing; scrub repos and public issue trackers.

Founder Heuristics

• Patent when the feature is visible to competitors, core to valuation, and non‑trivial to design around.
• Trade secret when the value is in the hidden method (e.g., scoring functions, data curation, prompts/tuning, recipes) and you can maintain robust secrecy.
• On software patent eligibility: focus claims on specific technical improvements, not abstract results.

Trade Secrets & Operational Hygiene (CUTSA)

A trade secret is information that (1) derives independent economic value from not being generally known, and (2) is subject to reasonable measures to keep it secret. In California, misappropriation is actionable under the California Uniform Trade Secrets Act (CUTSA).

Reasonable Measures (Practical Program)

• Access control: Role‑based access, MFA, least privilege; no personal email repo invites.
• Labeling: Mark docs/code as CONFIDENTIAL where appropriate; segregate crown‑jewel repos.
• NDAs: With employees, contractors, vendors, and pilot customers.
• On/Off‑boarding: Prior‑inventions disclosure, clean‑room reminders, device return/certification, immediate access revocation.
• Clean room: If hiring from a competitor, document a process to avoid taint (no old code, no “remembered snippets”).
• Incident playbook: Steps for suspected leaks (pull logs, snapshot access, preserve evidence, notify counsel).

Employees, Contractors, and Assignment (CA‑Specific)

Your chain of title lives or dies here. Investors diligence signed assignments, not promises.

Employees: PIIA Essentials

• Use a Proprietary Information and Inventions Assignment (PIIA) with “hereby assigns” present‑tense language.
• Include the California Labor Code §2870 notice (and obtain employee acknowledgement): inventions developed entirely on the employee’s own time without company resources are excluded, except those that relate to the company’s business or result from the employee’s work.
• Attach a Prior Inventions schedule (blank if none). Train HR to ensure it’s completed on day one.
• Non‑competes are generally void under CA law; focus on confidentiality and conflict‑of‑interest covenants.

Contractors & Agencies

• Contract must include both (a) a “work made for hire” attempt and (b) an express assignment fallback: “Contractor hereby assigns…”
• Deliverables should be defined; acceptance can trigger the assignment clause if you prefer.
• License back any contractor tools/templates they need for future clients; you own the deliverables, not their generic know‑how.

On/Off‑Boarding Checklist

• Collect signed PIIA/contractor agreements and prior‑inventions schedules.
• Provision least‑privilege access; document devices; restrict personal cloud syncing.
• Exit: confirm return/deletion of confidential info; obtain certification; shut off access same day.

Open Source & Third‑Party Assets

Open source accelerates development—and can accidentally “open” your own code if you choose the wrong license. Track it from day one.

License Families (Very Short Map)

Third‑Party Assets

• Fonts, images, music, video: Keep license files and IDs; ensure commercial/ad/web embedding rights.
• SDKs/APIs: Review ToS for attribution/brand use, data rights, and audit clauses.

OSS Hygiene

• Run software composition analysis (SCA) and maintain a bill of materials (SBOM).
• Centralize approvals for GPL/AGPL/LGPL; involve counsel for AGPL or GPL in server‑side code.
• Publish required notices for your distributions; automate NOTICE file generation.

IP in Your Commercial Contracts

Your MSA/SaaS terms should preserve your IP, manage customer data rights, and fence in indemnity risk.

Key Clauses to Get Right

• IP Ownership: You own your platform and improvements; customer owns their data. Grant a limited license to host/process customer data.
• Feedback: Customer grants you a license to use feedback without obligation (no IP trap doors).
• Deliverables: If you do custom work, specify whether it’s licensed (preferred) or assigned (priced accordingly).
• Indemnity: Standard vendor IP indemnity for third‑party claims; include process (notice, control of defense) and remedies (modify/replace/refund cap).
• Open‑source disclosures: Reserve the right to use OSS in the service and to provide required notices.
• Publicity: Permission to use name/logo unless customer opts out.

Domains, Handles, and Brand Enforcement

Own the namespace around your brand, secure it, and know your takedown routes.

Ownership & Security

• Register domains in the company’s name (not a founder). Lock at the registrar and enable 2FA.
• Set SPF/DKIM/DMARC to protect outbound email reputation.
• Secure core social handles early; store recovery emails and phones in a shared vault.

Enforcement Options

• Platforms: Use in‑platform trademark/impersonation tools for quick wins.
• Domains: Consider a UDRP complaint for bad‑faith registrations; escalate to litigation for cybersquatting if needed.
• Marketplaces/Ads: Trademark program portals can remove misleading listings/ads.

Enforce & Defend (Practical Ladder)

Start cheap, escalate only when needed. Document everything.

Ladder

1. Evidence pack: Screenshots, timestamps, whois, traffic impact, confusion examples.
2. Platform routes: DMCA, trademark, impersonation portals; often fastest.
3. Letter: Short, factual, with attachments (registrations, comparisons) and a concrete ask and deadline.
4. Registries/TTAB: Oppositions/cancellations for trademark conflicts; UDRP for domains.
5. Litigation: Reserve for material harm (injunctions/damages). Evaluate insurance.

Common Defenses You’ll See

• Trademark: Descriptive/fair use, lack of likelihood of confusion.
• Copyright: Fair use, independent creation, license.
• Trade secret: Not secret/no reasonable measures; independent development.

Investor/M&A Diligence Readiness

Buyers will test whether you own what you say you own. Make it easy to say yes.

IP Data Room (Suggested Index)

Pre‑Diligence Sweep

• Confirm every contributor has a signed assignment (map contributors → agreements).
• Run an OSS scan; mitigate GPL/AGPL risks; produce a clean SBOM.
• Align your brand filings with what you actually sell today.
• Ensure all domains/socials are company‑owned and 2FA‑protected.

Action Checklists

Use these at key stages. Keep them in your ops wiki and check quarterly.