Intellectual Property Matters:

Protecting Your Client’s Intangible A

ssets

Presented at: C

onnecticut Bar Association Law

Center

N

ew Britain, C

onnecticut

D

ate: O

ctober 15, 2012

Presented by:

Walter B. W

elsh

The M

ichaud-Kinney G

roup

Middletow

n, Connecticut

w

elsh@m

kgip.com

© 2011-12 W

alter Welsh

2

What is a Tradem

ark?

yA w

ord, name, sym

bol, or device that identifies and distinguishes goods of one party from

those of others.

3

Types of Trademark P

rotection

yFederal Registration

yState Registration

yCom

mon Law

Protection

4

Benefits of Filing for Federal R

egistration

yPresum

ption of ownership &

validity. y

Attorney's fees and enhanced damages.

yN

ationwide notice to all later users of a m

ark. y

Eliminates the defense of innocent adoption w

hich may

permit geographically rem

ote users to continue to use the m

ark. y

After five years, a federal registration may becom

e "incontestable.”

yConclusive evidence of the exclusive right to use the m

ark. y

U.S. Custom

s Service. y

Registration outside of the United States.

5

State Trademark Protection

y

Must register in each state w

here the m

ark is use.

yEnforce in State Court.

6

Com

mon Law

Trademark Protection

y

Lack of registration is not a bar to enforcem

ent.

y

Rights in Trademarks are created

by trademarks’ adoption and use.

7

Selecting A

Mark -Types

Protection available under

federal, state, and comm

on law upon a show

ing of secondary m

eaning

Protection available

Under federal, state,

and comm

on law

No protection

is available

Arbitrary/Fanciful -- no link betw

een the m

ark and the goods or services (e.g., X

EROX

). Suggestive -- the m

ark requires thought, im

agination and perception to reach a conclusion as to the nature of the goods (e.g., STA

PLES). D

escriptive -- the mark conveys an

imm

ediate idea of the ingredients, qualities or characteristics of the G

oods (e.g., QU

ART

ER PO

UN

DER

). G

eneric -- refers to the genus of which

the particular product is a species (e.g., SA

ND

WIC

H).

8

Selecting A M

ark - Availability

yConduct a thorough search, particularly in your class of goods and services.

yInclude state tradem

arks, comm

on law

marks, business nam

es, internet dom

ain names.

9

Registration P

rocess �Principal R

egister �

Intent to Use A

pplications �

Use-based A

pplications

�Supplem

ental Register

10

Opposition / C

ancellation

11

Proper U

sage y

TM and ®

Symbols.

yD

o not use the mark as a noun or a verb.

◦Correct: M

ake 6 copies on the XEROX

® Copier ◦

Incorrect: Xerox that report

yAlw

ays use the mark as an adjective, follow

ed by a generic term

. ◦

BAND

AID®-brand Bandages

◦KLEEN

EX®

Tissues ◦

GARM

IN® G

lobal Positioning System

yD

o not make the m

ark plural. y

Do not alter the m

ark.

12

Coexistence A

greements

yCoexist in m

arketplace with third party

using same or sim

ilar mark.

13

Copyright

•C

opyright protects “original works of authorship”

that are fixed in a tangible form of expression.

•C

opyright does not protect ideas.

�

14

Copyright

•Copyright is secured autom

atically when the w

ork is created, and a w

ork is “created” when it is fixed in a

tangible medium

of expression. •©

2011-12 Walter W

elsh •“no person is entitled to any such right . . . under the com

mon law

or statutes of any State” S

ec. 301 •W

hy Register?

•P

ublic Record.

•N

ecessary to file infringement suit.

•P

rima facie evidence of validity.

•S

tatutory Dam

ages / Attorney’s Fees.

•R

ecord with U

.S. Custom

s Service

15

Copyright Infringem

ent O

wnership of a valid copyright m

ust be shown.

C

opying of elements of the w

ork that are original must

also be shown.

The allegedly infringing w

ork must be substantially

similar to the registered w

ork. Independent creation is a valid defense to a charge of copyright infringem

ent.

16

The Clinton D

ecoy

�

17

Trade Secrets

“Trade secret” means inform

ation, including a formula,

pattern, compilation, program

, device, method,

technique, or process, that: •

(i) derives independent economic value, actual or

potential, from not being generally know

n to, and not being readily ascertainable by proper m

eans by, other persons w

ho can obtain economic value from

its disclosure or use, and

•(ii) is the subject of efforts that are reasonable under the circum

stances to maintain its secrecy.

18

Is Information Protectable A

s A Trade S

ecret - Six

Factors

•The extent to which the inform

ation is known outside

of the business;

•The extent to which the inform

ation is known by

employees and others involved in the business;

•The extent of m

easures taken to guard the secrecy of the inform

ation;

•the value of the information to the business and its

competitors;

•the am

ount of money or effort expended in developing

the information; and

•the ease or difficulty with w

hich the information could

be properly acquired or duplicated by others.

19

Examples O

f Trade Secrets

•Com

plex Technology •C

ircuits on integrated chips •M

anufacturing Techniques •B

usiness Methods

•Cost &

pricing data •U

npublished promotional m

aterial •M

arketing techniques & dem

ographic data •Food m

anufacturing and preparation processes •C

ustomer Lists • S

alesperson route information

•Mail order lists

•Characteristics and dem

ographic breakdown of custom

er traits •B

usiness Know

ledge •Lead tim

es in component supply

•Nam

es of customer's key decision m

akers •P

ending Patent A

pplications (until published)

20

Trade Secret Protection Plan

•Establish a trade secret plan. •C

onduct an initial audit •E

mployee confidentiality agreem

ents. •N

on-disclosure agreements.

•Mark sensitive docum

ents confidential. •Lim

it use of email and internet.

•Control access to inform

ation. •Im

plement internet and online policy.

•Limit access to visitors.

•Conduct exit interview

s.

21

Trade Secret

Enforcement

•The Uniform

Trade Secrets A

ct ("UTS

A”).

•The Lanham A

ct. •C

omm

on law. •R

emedies

•Injunctive Relief.

•Royalties.

•Unjust Enrichm

ent •P

unitive Dam

ages •A

ttorney’s Fees