Trademarks, Copyrights and the Small Firm Practitioner © 2010 Douglas D. Churovich.

Trademarks, Copyrights

and the Small Firm Practitioner

© 2010 Douglas D. Churovich

Speaker – Doug Churovich, Esq.

Polster, Lieder, Woodruff & Lucchesi, LC

12412 Powers Court Drive, Ste. 200

St. Louis, MO 63131

[email protected]

Doug is a licensed patent attorney whose expertise includes patents, trademarks, copyrights, trade secrets, internet and domain names, computer law, as well as licensing and litigation of all intellectual property matters. Doug is a member of Polster Lieder. Polster Lieder is a boutique firm that specializes in intellectual property law.


®

What are Trademarks & Copyrights – how are they different from Patents and

Trade Secrets? Trademarks – Identify the Source of Goods and/or

Services; Federal, State and Common Law TM’s; can last indefinitely.

Copyrights – Protect “original works of authorship in a tangible medium”; Federal law only; last for decades

Patents – Protect Inventions; Federal law only; last 20 years after filing (14 years for design patents)

Trade Secrets – Protect Secret Methods; State and Common Law; last as long as kept Secret

What are Trademarks & Copyrights - how are they different fromPatents and Trade Secrets?


TRADEMARKSTM/®

What Are They?(logos ’n slogans ‘n jingles, oh my!)

TM can be a word, symbol, device, sound, color, smell - or combinations

TM’s identify goods and/or services, and distinguish them from those of others

Duration = perpetual, so long as the TM is being used (theoretically lasts forever)

Trademarks; Service Marks; Trade Dress

“tm” / ® - warning signs


WHY SHOULD I CAREABOUT Trademarks?

I’m a ________________ practitioner.Corporate

Domestic LawBankruptcy

Property LawLabor Law

Personal Injury… (fill in the blank)


Spotting Trademark Issues Is VeryImportant To Your Practice

© 2004 Polster Lieder Woodruff & Lucchesi LC

Avoid Potential Malpractice.

TM tribulations – a sole practitioner’s fable.

Keep Your Clients Happy - Knowing when to say, “I know.”

Clients come to attorneys for legal support – most will not understand or recognize subtle distinctions between different areas of law.

Clients look to and rely upon “their” attorney for advice and direction.

These relationships are even stronger and more important to Small/Solo firms - they are the very foundation of your practice.

If you do not understand or recognize TM issues – you cannot provide any guidance to your clients who rely upon you.

(continued…)

Spotting Trademark Issues Is VeryImportant To Your Practice (cont.)


Helping Your Clients Grow Helps Your Practice Grow.

If they build it, they will come.

Keep Your Clients.

If you can’t guide them, someone else will.

Remember –

** YOU are your clients’ legal “GO TO” Guy/Gal. **

Trademarks = Part of ValuableIntellectual Property Portfoli0s


Recognize Trademarks = “Property”

Have legally defined scope Can be licensed, sold, loaned, traded, parceled

Property – Whether “Intellectual”, “Real” or “Personal” – has VALUE.

Trademarks = Limited Monopolies

Even without “real” substance, Trademarks can be VERY valuable.

Example: 3M (as of Dec. 31, 2006) – Market Value = $60 billionWorking Capital = 2.7 %Real Estate = 9.7%Other Investments = 1.9%Intangible Assets* = 85.7%

* defined as “patents, trade names, and other intangible assets”(source: 2006 3M annual report)

Examples Of TM “Red Flags”(there is no magic list!)


A. “I just got a letter that accuses me of _____________ infringement!”patenttrademarkcopyright

B. “We just started a new website – let me know what you think.”

C. “Our company ______________ a product line from another company.”just bought/wants to buyjust sold/wants to sell

D. “My ‘ex’ thinks he can use our name to sell his junk!”

E. “I’m trying to start a business on the side; I’m still working for now.”

F. “We’re just using it to raise money for charity.”

(continued…)

Examples Of TM “Red Flags”(cont.)


G. TM Basics for Starting A New BusinessInitial trademark issues and needsEmployee agreements – protect company’s TM rightsWebsites – may involve multiple TM concernsAny agreements with former employers?

H. “I thought you’d like to see the new earings I’m making - aren’t they cute

– they look just like little Coke bottles …” I. “I didn’t copy my logo from theirs – I made sure mine was different.”

J. “Its my name and I want to use it!”

K. “I already checked the Secretary of State’s website – no one is using the name.”

(continued…)

Examples Of TM “Red Flags”(cont.)


L. More Issues for Existing Companies“I’m expanding my business and I need to talk to you.”“We’re considering a joint venture – what do we need to cover ourselves?”

- Who will own the trademarks?- What agreements need to be prepared for the trademarks?

“We need to review our tax liabilities – we just changed the way we operate.”

“I think one of our employees is crooked.”- Protection of client’s confidential/proprietary information- Can he/she use my trademarks?

“We’re getting new signs and letterhead!”“We’re anticipating growth because of our new product line.”“We have a new marketing plan for the business.”

What Can/Should I Do?


Understand the Dangers & Opportunities

Keep abreast of changes in basic trademark law. Recognize that competitors’ TM’s can cause problems;

but TM’s for your clients can be a boon!When in doubt – remember: TM’s = ID Source of Goods/Services

Be Vigilant & Listen Carefully - Look for TM “Red Flags”

When discussing matters with your client, keep your mind open to TM issues.

When you later review client matters, look again for “hidden” TM issues.

Advise your client of your TM concerns and Ask More Questions

Help your clients avoid TM snares and pitfalls.Assist your clients take advantage of TM protections.

Ask An IP Attorney For Assistance (not a last resort)

Do not hesitate to consult with practitioners who specialize in IP.

Trademarks, Copyrights and the Small Firm Practitioner © 2010 Douglas D. Churovich.

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Transcript of Trademarks, Copyrights and the Small Firm Practitioner © 2010 Douglas D. Churovich.