intellectual property lawyer, foster, swift, collins & …...2018/02/08 · intellectual...

Growing & Securing Your Business: Intellectual Property Protection Strategies“Legal Essentials to Export” Toolkit – May 4, 2017

1 2016, Foster Swift Collins & Smith PC

Zachary W. Behler

Intellectual Property Lawyer, Foster, Swift, Collins & Smith, P.C.■ [email protected]

mailto:[email protected]



What is IP

Trademark■ A word or symbol that acts as a source identifier for goods or services.

Copyright■ A work of original authorship fixed in a tangible medium of expression.

Patent■ A legal right granted by the government of giving the patent owner the

right to exclude others from making, using, selling the invention in the patent.

Trade Secrets■ (1) information (2) that has independent economic value (3) from not

being generally known or readily ascertainable by proper means and (4) is the subject of reasonable efforts to maintain secrecy.



How Can IP Work for You?

Trademarks■ Protects names, symbols, and phrases used to

represent a company or its products.▪ Microsoft, Nike swoosh

■ Trademark law protects product design or packaging style – known as “trade dress.”

■ Prevents others in your industry from using your name or goodwill.▪ Identifies your company’s brand and secures the rights to

the name.



Trademarks

Securing Rights

■ Offense: Prevent others from using the mark

■ Defense: Prevent others from stopping your use of the mark.



Trademarks

How to Register your trademark■ State vs Federal / International■ Selection Process

▪ Strong Mark – a very distinctive mark or unique.▪ Strength– Fanciful: no dictionary meaning– Arbitrary: neither describes or relates to goods or

services offered.– Suggestive: describes characteristics of goods or

services– Generic: directly describes the goods or services

sold



Trademarks

Search & File

■ Comprehensive state and federal search

▪ Identifies existing companies in the U.S. using your name and similar names– Adjust your name or

– Pursue registration of the name.

■ File trademark application with USPTO– Takes approximately 12 to 18 months to move through

registration process.



Trademarks

International IP Protection■ Selecting an area of the world

▪ Trademark rights are jurisdictional

Consider adopting a distinctive design or logo that can be registered widely throughout the world

▪ Avoid Translation and literacy issues



Trademark

Search and Clearance■ Nearly all countries use a “likelihood of confusion”

standard.

■ Utilize search agents that perform common law and registered rights searches.

■ Engage local counsel in countries where use and registration is planned.



Trademark

Filing■ The Madrid Protocol

▪ Before and After

■ Seek registration in member jurisdictions through means of a central filing system, using:▪ One application

▪ Prepared in one language

▪ Fees paid in one currency



International IP Protection

Filing

■ United States Patent and Trademark Office (USPTO)

■ United States Copyright Office

■ Chinese Trademark Office (CTO)

■ China’s State Intellectual Property Office (SIPO)

■ China’s National Copyright Administration (NCA)

■ World Intellectual Property Organizations (WIPO)



International IP Protection

Enforcement of IP Protection

■ Monitoring

■ Cease and Desist

■ Administrative or Court Proceedings

■ Customs Protection



Copyrights

“Writings” or “works of authorship”

■ Expression of original ideas and thoughts in words, sentences, paragraphs, computer programs, sketches, pictures, graphs or other methods of conveying ideas.

▪ (Unlike a patent, a copyright does not protect the idea –it protects the manner in which the idea is expressed).



Copyrights

Creation of Rights■ Copyright protection exists from time work is “fixed

in any tangible medium of expression.”

Notice■ © and the year of first publication.

Term■ Life of last surviving author + 70 years.

■ Work made for hire: 95 years from publication or 120 years from creation, whichever expires first.



Copyrights

Workplace implications

■ Who owns the rights?

▪ Website, manuals, marketing plans, business plans.

▪ Who created the work?

▪ Joint work?

▪ Employee vs. Consultant/Independent Contractor

▪ Work-Made-For-Hire– Execute work-made-for-hire before a person outside the

business creates copyrightable work.



Intellectual Property Protection Methods

Business Protection Strategies - Today

■ Registration of Brand

■ Employment Agreement

■ Non-Compete

■ Confidentiality / Nondisclosure Agreement

■ Work-Made-For-Hire

■ Assignment



Enforcement

Enforcement of IP Protection■ Monitoring

■ Cease and Desist

■ Administrative or Court Proceedings

■ Customs Protection



IP Protection Tips

What can you do right now?

■ Educate employees and business partners

■ IP Audit

■ Compartmentalize production process

■ Keep newest technologies in home country

■ Classify information and manage access



IP Protection Tips – cont’d

■ Conduct due diligence on suppliers and distributors

■ Select partners with brand and reputation of their own to protect

■ Include IP protection clauses in all contracts and agreements

■ Understand how other country views contracts

■ Send representatives to industry trade shows to look for infringing products

■ Register your IP in home country and in countries you are or plan to do business



Parting Thoughts

Taking control

Protecting your business identity

Maintaining the invisible security fence



Red Flags

Shipping product without protection

Distributor without IP clauses

Joint Venture without specification who owns past, present and future IP

Brand, Trademarks, Domain ownership

Patent disclosure

Website screen scrapes



Presentation Terms of UseFoster Swift Collins & Smith, PC presentations are intended for our clients and friends. This presentation highlights specific areas of the law. This communication is not legal advice. The information provided is current as of the date of the presentation. Those viewing the presentation should consult an attorney to determine how the information applies to any specific situation.

Copyright © 2016 Foster Swift Collins & Smith, PC



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intellectual property lawyer, foster, swift, collins & …...2018/02/08 · intellectual...

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