Presented By:

Maria Crimi Speth

Jaburg & Wilk, P.C.

Avoiding Litigation: Top Tips for Identifying & Mitigating Common Legal Mistakes

#1: What Is Intellectual Property

Trademarks

Copyrights

Trade Secrets

PatentsNot sure where to start? Visit Traklight.com to ID your IP today!Stay online for limited time offer.

Trademarks

Anything that identifies the source of goods or services

Sometimes called service mark when it identifies your services

®

#2: Top Valued Brands

Coca-Cola $70,452 million IBM $64,727 million Microsoft $60,895 million Google $43,557 million GE $42,808 million McDonald’s $33,578 million Intel $32,015 million Nokia $29,495 million Disney $28,731 million HP $26,867 million

--Interbrands

#3: Branding

Who makes this soup?

#4: What Can Be a Trademark?

Names

Words (tag lines)

Pictures

Trade Dress

Colors

Sounds

Smells

#5: Trademark Symbols

Use ™ after a trademark or service mark that is not registered with the USPTO

Use SM after a service mark that is not registered with the USPTO

Use ® after a trademark or service mark that is registered with the USPTO

BONUS TIP: Use the correct one!

#6: Avoid Trademark Infringement It’s Costly!

Is the use of the trademark likely to cause a reasonable consumer to be confused about the source of the goods or services or about sponsorship of the goods or services?

BONUS TIP: Choosing a Trademark

Arbitrary/Fanciful

Suggestive

Descriptive

Generic

Protectio

n

Ad campaigns

Xerox Corp.’s “You can’t Xerox a Xerox on a Xerox. But we don’t mind at all if you copy a copy on a Xerox® copier.”

  Chrysler LLC’s “They invented ‘SUV’ because they can’t call them Jeep®.

”

Kimberly-Clark Corp.’s “ ‘Kleenex’ is a brand name…and should always be followed by an ® and the word ‘Tissue.’ [Kleenex® Brand Tissue] Help us keep our identity, ours.”

#7: Why Register with the USPTO

Constructive use throughout the U.S.

Presumed Valid

Prevent Others from Registering

Other Statutory Benefits

#8: Trademark Searches

Identify your potential TMs and:– Search engine– Preliminary -- www.uspto.gov– Domain name– Professional Trademark Search

BONUS TIP: Do this BEFORE you visit an attorney- visit traklight.com to get started!

#9: Document Your First Use When You Use It!

Invoices Marketing materials Website capture Record dates & store

– Example: Traklight’s IP Vault Time-Stamped Third-Party Verification Meta Data

#10: Don’t be Pennywise & Pound Foolish

Consider using your attorney to:– Register– Proper Timing, Class

Mistakes can mean complete “do-over” costing $275-325!

#11: Copyrights

– Paintings– Sculptures– Books – Poems– Songs/Music

– Software Programs

– Web Sites

– Trade Articles

– Videos

– Your business Plan

– Your Company Logo

– Your Corporate Image

• Original expression of an idea

• Fixed in a Tangible Form

#12: Legal Rights As Copyright Owner

Exclusive right to:– copy– create derivative works– distribute– publicly display

Who owns the Copyright– The creator owns the copyright – It does not matter who paid for it

Terms– Author’s life +70 years– Work for hire lasts 95 years from publication or 120 years from creation whichever

comes first– After expiration- work is in the public domain

#13: How to Properly Mark with a Copyright

©2006, 2012 Jaburg & Wilk, P.C.

BONUS TIP: Just because it isn’t marked, doesn’t mean it’s fair game!

Exceptions

• Assignment or transfer of the copyright in writing

• Works for hire• A work prepared by an employee in the scope of

employment• A work specifically commissioned in one of nine

specific categories when there is a written agreement stating that it is a work for hire

Example: Logo design, software code

#14: Why File Copyright Registration?

Must be registered to file a lawsuit

Presumption that you are the owner

Statutory damages

Attorney fees

#15: “Fair Use” Defense to Infringement

Fair use defense is very limited– Can not in any way interfere with author’s ability to

benefit from the work– Small portions– Educational Purposes– Parody

Note: Doesn’t always work!

#16: Patent Rights

– 20 year monopoly– Public disclosure– No renewals– Does not create a right to sell

What Can Be Patented?– Processes– Machines– Chemical compounds/formulas– Software program

#17: Patent requirements

Must be new or novel– Filed within one year of public disclosure/publication– Demonstrably different from publicly available ideas,

inventions or products

Must be useful

Must be non obvious

#18: Trade Secrets

Proprietary Information Software Code Customer Lists Formulas Financial Information Business Processes Training methods

#19: How to Handle Trade Secrets

If you don’t want your competitors to see it then treat it as a trade secret

Share on a need-to-know basis Use NDAs when possible Label as a trade secret Identify Trade Secrets to your

employees/contractors

How Traklight Can Help:

ID your IP– Identify your potential intellectual

property– No prior IP knowledge required– Custom strategic report

IP Vault– Secure storage for IP – Time-stamped– Collaborative Vaults available

Questions?

10% OFFA Collaborative IP Vault Visit Traklight.comUse the coupon code WEBINAR05offer ends 5/31

Get started on IP Identification & Protection Today!

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Maria Crimi SpethJaburg & Wilk, P.C.

mcs@jaburgwilk.com602-248-1089

Avoiding Litigation: Top Tips for Identifying & Mitigating Common Legal Mistakes