Protecting intellectual property is the hallmark of a commercial law practice. In many cases, a company's intellectual property represents the lion's share of the company’s underlying value. Therefore, it is essential to ensure that items such as copyrights, trademarks and confidentiality agreements are in place and are binding. In that regard, our firm advises its clients respecting:
- corporate audits regarding the client's intellectual property;
- copyright registration filings;
- trademark and servicemark registration filings and appeals;
- contractual protection of trade secrets;
- non-disclosure agreements;
- litigation to enforce intellectual property rights;
- litigation of disputes related to trade secret theft and unfair competition;
- review and negotiation of license, assignment and royalty agreements;
- litigation of cybersquatting claims;
- patent licensing and assignment agreements; and
- representation before the Federal Trademark Trial & Appeal Board.
There are a number of misunderstandings in this area. For example, many clients assume incorrectly that if their employee or independent contractor creates intellectual property and is compensated, that automatically means the client owns it. Unfortunately, that is incorrect. There are various legal standards that have to be met, and the more prudent way of handling such a situation is to have the employee or independent contractor sign an assignment or other such transfer of property rights.
Another example would be clients who assume that registering a domain or filing incorporation papers with the state, implicitly confers trademark and copyright protection. Once again, that is not true. While the use of a trademark can confer certain common law rights, the enhanced protections afforded under the trademark statute are solely available through adherence to the appropriate procedures. One of those procedures is filing with the United State Patent and Trademark Office. Likewise, protection under the copyright statute involves a filing with the United States Copyright Office.
A final example of a misunderstanding in this area is the concept that filing an Intent to Use application with the United States Patent and Trademark Office is the equivalent to filing the actual trademark application. The reason that sometimes leads to a misunderstanding is that there are a number of advertisements for discount trademark filings at a very low price. It is only when one reads the fine print that it becomes clear that the service is only offering to file an Intent to Use application, rather than that for the actual trademark. Simply put, the Intent to Use application solely reserves the trademark for a very limited time and is not a substitute for a formal trademark application.