Protecting the Agri-Business: Managing Contracts, Trademarks and Non-Disclosure Agreements


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I developed this presentation for the Ohio Agriculture Law Symposium. It mostly delves into Non-Disclosure Agreements ("NDA") but also talks about trademarks and contract management for the farm or agri-business.

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  • For example, if a farmer approached a website developer about his or her proposed online agri-business, that farmer may wish to have a NDA with the website developer to keep the business plan confidential.Alternatively, a farm may wish for a bookkeeper to maintain confidentiality on the operation’s finances.
  • Discussion today is primarily on the mutual or bilateral NDA
  • Almost every NDA address these 7 issues
  • Almost every NDA address these 7 issues
  • SSI’s
  • SSI’s
  • Intellectual rights is not information – better to enumerate  Don’t say “new” products
  • Publically known, or so-called “public domain” or information that later becomes publically known through no fault of the recipient  “The phrase publically known” means readily accessible to the public in a written publication and shall not include information which is only available by substantial searching of the published literature and information, the substance of which must be pieced together from a member of different publications and sources.” What if blended? In Canada, if blended, recipient must take special care to use only the parts that are publically available  “Confidential Information shall not be deemed to be information in the public domain merely because any part of such information includes individual features, components or combinations that are now or become known to the public.”“Confidential information does not include information that is or comes into the public domain otherwise than by disclosure or default by the Recipient.”“Confidential Information does not include information that is or becomes generally available in the public domain through no fault of the Recipient (but only after it so becomes generally available).” Information that is already in the possession of the recipient May require that prior possession be documented“possession” can be problematic – “known?”“Confidential Information shall not include information that was already known to the Recipient as evidenced by written record pre-dating such disclosure”“Confidential Information shall not include information that the Recipient can prove was known to it at the time of disclosure by the Disclosing Party”“For the Recipient to rely on this exception, it must give notice within 30 days of the disclosure of the disclosure of the subject information within 30 days of the date of its disclosure.” Received by a third-party who is not under any obligation of secrecy to the discloserMay require that the recipient can document the independent receipt of information from a third party “Confidential Information shall not include information that was or is lawfully obtained or available from a third party who was lawfully in possession of the same and free to disclose it.”“Confidential Information does not include information that is or becomes available on a nonconfidential basis from an independent third party who, to the Recipient’s knowledge, was not under a duty of confidence to the Disclosing Party (but only after it becomes so available) Independently developed by the other party Compelled by a subpoena, court order, securities laws or other legal requirement, to produce the discloser’s confidential informationRecipient should be required to notify the disclosing party in advance of the required disclosure so that the disclosing party has the opportunity to seek a protective order or confidential treatmentNDA should contain a provision stating that unauthorized disclosures will cause irreparable harm and allow the discloser to seek a court injunction barring potential or further disclosure  “If the Recipient is required to disclose all or any part of the Confidential Information to any court, tribunal or government authority (i) if legally permitted to do so, it shall as soon as possible give written note of such requirement to the Disclosing Party a reasonable opportunity to seek protective order or equivalent; and (ii) it shall make a reasonable effort to obtain a protective order requiring that the Confidential Information so disclosed be kept secrete by protective measures appropriate for the sensitivity of the subject information and that the Confidential Information be used only for the purposes for which the order was issued. If such disclosure be obliged, then it shall not be deemed to be a breach of the Recipient’s obligations under this Agreement.”
  • Should the information be used on smartphone devices?Should it be used in the cloud?
  • (a) Was noted previously
  • It is always better for the disclosing party to have the longest term possible; however, with mutual NDA’s it is best to pick a reasonable term length that is not overly burdensome.
  • Discussing feedback exception later- this may hinder open dialogue
  • Choice of LawChoice of ForumAttorneys’ Fees
  • Most states have a free mediation program for the agriculture community funded in part by the USDA (e.g., New York State Agriculture Mediation Program).
  • Waiver. Any waiver by the non-breaching Party of a breach of this Agreement does not waive any right to enforce a subsequent breach. 10. Validity. If any part of this Agreement is deemed invalid, it shall not invalidate the remainder of the Agreement. 11. Entire Agreement. This Agreement constitutes the entire agreement between the Parties and shall only be modified in writing by the Parties. This Agreement supersedes all prior agreements, written or oral, between the Parties relating to Confidential Information for the Purpose of this Agreement. This Agreement shall be binding upon the Parties, their respective successors and assigns. 12. Execution. A scanned or faxed copy of this Agreement shall be deemed to be an original. The Parties may execute this Agreement in counterparts.
  • The disclosing party may attempt to include an indemnity for any breach or threatened breach of the agreement by the interested party. If the indemnity applies only in the event of a breach, the practical result likely will be to require that a court determine whether a breach has occurred before the disclosing party will be able to enforce the indemnity, so it is questionable what benefit the disclosing party receives from this language. Nevertheless, the interested party should resist the inclusion of any indemnities and, if that is unsuccessful, at the very least make them reciprocal.  
  • Outlook calendar remindersCalendar to follow-up with client.
  • Link scanned contracts to the excel spreadsheetWith the excel document, I use separate spreadsheets for NDA’s and specific types of contracts
  • NDA’s – Mutual NDA or Unilateral NDA
  • Term- there might be some contractstah
  • BrandingMakes you difference
  • There are three types of patents: utility patents, design patents, and plant patents. The word "process" is defined as an act or method, and primarily includes industrial or technical processes. The term "manufacture" refers to articles that are made. The term "composition of matter" relates to chemical compositions and may include mixtures of ingredients, as well as new chemical compounds. These classes of subject matter taken together include practically everything that is made by man and the processes for making the products.Utility patents may be granted to anyone who invents or discovers any new and useful process, machine, article of manufacture, or composition of matter, or any new and useful improvement thereof.  Design patents may be granted to anyone who invents a new, original, and ornamental design for an article of manufacture.  Plant patents may be granted to anyone who invents or discovers and asexually reproduces any distinct and new variety of plant.Patent law specifies the general field of subject matter that can be patented and the conditions under which a patent may be obtained.
  • Client’s previous lawyer missed renewal deadlines
  • With the Word Mark, distinguish between Word Mark and Standard Character Mark
  • #agchatLast names
  • Protecting the Agri-Business: Managing Contracts, Trademarks and Non-Disclosure Agreements

    1. 1. Protecting the Agri-Business:Managing Contracts, Trademarks andNon-Disclosure AgreementsFifth Annual Ohio Agricultural LawSymposiumJune 24, 2013By Cari B. Rincker, Esq.
    2. 2. Who I Am• Food and agriculture lawpractice in New York• Chair of the ABA, GeneralPractice, Solo & SmallFirm Division’s AgricultureLaw Committee• Client bases ranges fromlivestock producers & foodentrepreneurs to mid-sizeagri-businesses
    3. 3. Overview• Confidentiality andNon-DisclosureAgreements• Contract management• Trademarks and otherIntellectual PropertyConcerns
    4. 4. Non-Disclosure Agreements (“NDA’s”)
    5. 5. Non-Disclosure Agreements• Applicability• Types of NDA’s• Anatomy of an NDA• Alternative Provisions• Maintaining Records• Practical Pointers
    6. 6. Applicability2 Common Situations:– When a farm or agri-business is entering intobusiness discussions withanother party– When a farm or agri-business wants to bind itsemployees or independentcontractors to maintainconfidentiality
    7. 7. Is it a One-Way or Two-Way Street?2 Types:– Mutual or Bilateral• Most NDA’s are bilateral –business discussions areusually a two-way street– One-sided or Unilateral• NDA’s with employees andindependent contracts areusually unilateral
    8. 8. Anatomy of an NDA• The following broad issuesshould be addressed:– Who will be exchangingconfidential information?– What is the purpose of theexchange of confidentialinformation?– What type of information is tobe considered “confidential” forprotection under the NDA?– How can this confidentialinformation be used and bywhom?
    9. 9. Anatomy of an NDA• The following broad issuesshould be addressed:– How will the secrecy of theconfidential information bemaintained?– How long will theconfidentiality of theinformation be maintained?– What are the consequencesof a breach or misuse of theconfidential information?
    10. 10. Anatomy of an NDAContact Information– The NDA should use theparties’ legal name,address, and state ofincorporation (ifappropriate).• It may be prudent to ask theother party for a Certificateof Good Standing from itsDepartment of State.• Should it include theSSN/FEIN of each party?
    11. 11. Anatomy of an NDAPurpose of the NDA– The purpose of the NDAshould be properlyidentified to help narrowwhat information is tobe consideredconfidential.– The NDA should statethat usage ofconfidential informationshould be limited to thispurpose.
    12. 12. Example Purpose ClauseThe Receiving Party has shown interest in the__________ [farm/agri-business] processes ofthe Disclosing Party, and in the Disclosing Party’sability to utilize these processes to meet thecommercial needs of the Receiving Party (the“Purpose”).
    13. 13. Example Purpose ClauseWHEREAS, [Farm/Agri-Business Client] andCompany wish to exchange information of aproprietary and confidential nature relating tothe business of [Farm/Agri-Business Client] andCompany’s current and future products andproduct plans (collectively the “ConfidentialInformation”) for the purpose of determiningthe usefulness of the [Farm/Agri-BusinessClient] products to Company (the “Purpose”).
    14. 14. Anatomy of an NDADepending on thePurpose of the NDA, itshould state that thereis no obligation to enterinto businessrelationship which theyare exploring.
    15. 15. Example ProvisionMutual Obligations. Neither Party shallassign this Agreement without the priorwritten permission of the other Party.Neither Party shall have the obligation topurchase from or furnish to the other Partyany products or services under thisAgreement.
    16. 16. Anatomy of an NDAPermitted Parties– Who may or may not be privyto any disclosed confidentialinformation should be clearlyidentified.– This may include employeesand independent contractorson a “need to know” basis solong as they are bound bywritten agreement tomaintain confidentiality.
    17. 17. Anatomy of an NDAPermitted Use– NDA should state thepermitted use to ensureConfidential Information islimited to this use• Important to have anaffirmative obligation not todisclose the discloser’sconfidential informationexcept for the use• Usually restricted toemployees and advisors on a“need to know” basis for thedefined purpose of the NDA
    18. 18. Examples “Permitted Parties” ClauseUpon receiving Confidential Information from the Disclosing Party, the Recipient shalllimit its use of the Disclosing Partys Confidential Information to the PermittedPurpose, and permit the Disclosing Partys Confidential Information to be viewed andused only by Permitted Parties for Permitted Purposes.(a) “Permitted Parties” means:(i) those of Recipients employees and consultants;(A) who are directly involved in the Recipients use of the Disclosing PartysConfidential Information;(B) who have been advised of the Recipients obligations of confidence inrespect of the Disclosing Partys Confidential Information; and(C) who have agreed in writing to honor personally those obligations ofconfidence.(ii) the Recipients professional advisors who have by their profession a duty ofconfidence, or who agree in writing to hold the Confidential Information inconfidence
    19. 19. Example “Permitted Use” ClauseThe Parties agree to hold the othersConfidential Information in trust and not tomake each others Confidential Informationavailable in any form to any third party or touse each others Confidential Informationfor any purpose, other than in connectionwith the performance of this Agreement.
    20. 20. Example “Permitted Use” ClauseUpon receiving Confidential Information fromthe Disclosing Party, the Recipient shall limitits use of the Disclosing Partys ConfidentialInformation to the Permitted Purpose.
    21. 21. Example ClauseObligations of the Receiving Party. Except as set forthhereto, Receiving Party agrees that it shall:(a) not publish, copy, or disclose any ConfidentialInformation other to disclose said ConfidentialInformation to third parties except the Receiving Party’semployees and independent contractors that need toknow in order to use and/or evaluate the ConfidentialInformation for the Purpose and are bound by a writtenagreement with the Receiving Party not to disclose anyConfidential Information that comes into their possessionthrough their employment or independent contractoragreement.
    22. 22. Anatomy of an NDAIdentification ofConfidential Information– Special attention shouldbe made to how“ConfidentialInformation” is definedin the NDA to ensure itproperly includes everypossible disclosure.– This may include ideas,concepts, know-how,trade secrets,intellectual property,business plans andfinancial information.
    23. 23. Anatomy of an NDAIdentification ofConfidential Information.– Keep in mind thatdisclosures may be eitherwritten or oral; thus, theNDA should state how theConfidential Informationwill be identified in eitherform.– Some NDA’s requirewritten confirmationwithin thirty (30) daysafter oral disclosure.
    24. 24. Example Definition of“Confidential Information”Confidential Information. For the purposes of this Agreement,Confidential Information shall mean any information communicated,whether written or verbal, disclosed by the disclosing party, itsaffiliates, employees or agents (the “Disclosing Party”) to the otherParty, its affiliates, employees or agents (the “Receiving Party”),pertaining to or regarding the services or business or business plans,financial condition, sales, research, strategies, products,developments, methodologies, techniques, processes, plans,customers, distributors, suppliers, properties, operations, prospectlists, trade secrets, proposed trade names, know-how, ideas,,concepts, designs, drawings, flow charts, diagrams and otherintellectual property relating to the Purpose furnished and identifiedas being confidential by the Disclosing Party to the Receiving Party.Disclosing Party shall identify Confidential Information verbally whenin discussion and in written form when exchanging documents.
    25. 25. Example Definition of“Confidential Information”For purposes of this Agreement, “ConfidentialInformation” means nonpublic ideas, discoveries,designs, trade secrets, technology, productinformation, specifications, software, business andmarketing plans, business methods, costinformation, forecasts, customer information,supplier information and other businessinformation of or relating to the Disclosing Partyand shall include all notes, analyses, compilations,studies, or other material prepared by the ReceivingParty.
    26. 26. Anatomy of an NDAExceptions (or “Carve Outs”). Typical exceptionsto confidentiality include the following:– if known prior to the date of disclosure,– is in the public domain,– was lawfully communicated to the recipient by athird-party,– was independently developed by employees,– written release by the disclosing party, and– when the law requires disclosure (e.g., court orderor subpoena) allowing the disclosing partyreasonable notice to obtain a protective order.
    27. 27. Example “Carve Outs” ProvisionWhen Receiving Party Has No Obligations of Confidentiality. Not withstanding the foregoing, the Disclosing Partyagrees that the Receiving Party shall have no obligations for the non-use or concealment of Confidential Informationwhen said Confidential Information:(a) was known by the Receiving Party free of any obligation of confidence prior to the date of such disclosure asevidenced by the Receiving Party’s written records and Receiving Party promptly notifies Disclosing Party in writingidentifying said written records;(b) was in the public domain, and reasonably known to have been public, prior to the time that it was received;(c) becomes reasonably known to the public subsequent to the date it was received not through an act or failure toact on the part of the Receiving Party;(d) was rightfully communicated by a third party to the Receiving Party having a bona fide right to discloseConfidential Information subsequent to the time of the Disclosing Party’s written or verbal communication to theReceiving Party;(e) was developed by employees or agents of a Party independently of and without reference to any ConfidentialInformation or other information that the Disclosing Party has communicated in confidence to the Receiving Party;(f) is approved for release by written authorization from the Disclosing Party; or,(g) is disclosed pursuant to an order of any court having proper jurisdiction or as required by any agency ofgovernment having proper jurisdiction, under its applicable laws and regulations and Receiving Party gives DisclosingParty written advance notice of any disclosure or planned disclosure in order to permit Disclosing Party to makeobjections to the disclosure.
    28. 28. Anatomy of an NDASecurity– The parties to a NDAshould take reasonablesafeguards to protect theConfidential Information.– The other party shouldbe promptly notified inwriting if there has beena breach ofconfidentiality.
    29. 29. Example “Security” ClauseEach party shall ensure that the other partysConfidential Information is not disclosed ordistributed by its employees or agents in breachof this Agreement.
    30. 30. Example “Security” ClauseObligations of the Receiving Party. Except as set forth hereto, Receiving Party agrees that it shall:* * *(b) limit its use of the Confidential Information to the Purpose unless it obtains the prior writtenconsent of the other Party to any other use;(c) take all steps reasonably necessary to prevent the disclosure of Confidential Information to thirdparties for the Time Period defined in Paragraph X, but in any event exercising not less than the level ofcare exercised to safeguard its own confidential information or the standard in the community;(d) not make copies of any of the Confidential Information received by it in writing from the DisclosingParty and shall return promptly to the Disclosing Party, upon its request, any and all of the ConfidentialInformation, including, but not limited to, writings, software or other documents furnished under oathor in connection with this Agreement;(e) not remove any propriety, copyright, or trade secret from any form of the Confidential Information;and,(f) not use nor exploit for commercial or non-commercial use any of the Discloser’s Information exceptas expressly authorized in writing by the Disclosing Party.
    31. 31. Anatomy of an NDANotification of Breachof Security– Receiving Party shoulddisclose any breach ofsecurity to DisclosingParty
    32. 32. Example “Notification of Breach” ClauseThe Recipient shall notify the Disclosing Partyimmediately upon discovery of any loss,unauthorized disclosure or use of the DisclosingPartys confidential information attributable tothe Recipient.
    33. 33. Example “Notification” ClauseThe Recipient shall notify the Disclosing Party promptlyupon the discovery that any of the Disclosing PartysConfidential Information has been, or is reasonablybelieved to have been, or there is a reasonable likelihoodthat it will be accessed or otherwise acquired by anunauthorized person and there is a reasonable risk thatsuch information has been or will be misused.“Promptness” for the notification shall depend on thenature of the loss or unauthorized access and the natureof the information lost or accessed as well as the severityof the loss or harm that the Disclosing Party could sufferas a result of such a loss or misuse.
    34. 34. Anatomy of an NDATerm– A typical term for NDA’sin the businesscommunity is three tofive years.– Please note that someNDA’s measure this termfrom the date ofdisclosure
    35. 35. Example Term ClauseThe parties agree to hold each othersConfidential Information in the strictestconfidence during the term and for aperiod of three (3) years after theEffective Date of this Agreement (the“Term”).
    36. 36. Anatomy of an NDAProcedures UponTermination.– The NDA should discusshow confidentialinformation should betreated at the end of theterm.• For example, should therecipient return copies ordestroy all writtenmaterials?• May the recipient maintaina copy of all writtenmaterials?
    37. 37. Example ClauseAt the written request of the Disclosing Party,the Receiving Party shall return all ConfidentialInformation, except for a single copy thereofwhich may be retained for the sole purpose ofdetermining the scope of the obligations of theReceiving Party.
    38. 38. Anatomy of an NDAOwnership– It is paramount that theNDA state that the disclosingparty retains ownership tothe ConfidentialInformation.– Some NDA’s include a“feedback exception”identifying ownership of allsuggestions made duringbusiness negotiation
    39. 39. Example Ownership ClauseRights of the Disclosing Party. Disclosing Partyshall retain title to all forms of its ConfidentialInformation, including but not limited to, writtendocumentation disclosed for the Purpose of thisAgreement and all copies thereof. It is understoodthat the Disclosing Party has not construed to grantor to convey to the Receiving Party, expressly orimpliedly, any right or license or any other rightunder any copyrights, patents or patentapplications or any other proprietary right of theDisclosing Party of the Confidential Information.
    40. 40. Anatomy of an NDARelationship of theParties– The NDA should notethe relationshipbetween the parties.– For example, it shouldlikely state that theparties are not in ajoint venture, agencyor partnership.
    41. 41. Example ClauseNo Joint Venture. The Parties have no intent whatsoeverto create a joint venture, partnership or other formalbusiness association. The Parties are not part of, andexpressly disclaim the existence of, any enterprise, tradeor venture over which they share mutual ownership,control or profit, or otherwise derive a common benefit.Neither Party has the right or responsibility to assume orcreate any debts or obligations, express or implied, onbehalf of or in the name of the other party, or to bind theother party in any manner whatsoever. Neither Party willclaim the existence of any such joint venture, partnership,or other formal business association as a result of thisAgreement.
    42. 42. Anatomy of an NDAHow Disputes Will beSettled– The NDA shouldaddress how adispute will besettled, under whatstate’s law, andwhether attorneys’fees and costs can berecovered for aprevailing party.
    43. 43. Anatomy of an NDAHow Disputes Will beSettled– The NDA shouldmemorialize anypreferences towardsAlternative DisputeResolution (“ADR”)including mediation orarbitration.– If the parties wish tolitigate a dispute oremergency, the NDAshould identify whichstate’s courts may beused.
    44. 44. Anatomy of an NDAMiscellaneous Provisions– Prohibition of Assignment– Waiver Clause– Severability Clause – If courtholds one clause invalid theremaining NDA will be valid– Integration Clause - Is it the“Entire Agreement” andsupersedes all prioragreements?– Will it be signed incounterparts via fax?
    45. 45. Alternative ProvisionsResidual Memory Clause– Gives Receiving Party the right to use anyConfidential Information retained in the unaidedmemories of their employees who had access toto the information– Typical with large technology companies due tofear of getting sued if they develop similartechnology– Inappropriate in most cases
    46. 46. Alternative ProvisionsObligation to Provide Complete and/orAccurate Information– Impose an obligation to disclose complete and/oraccurate information– Most parties will resist a warranty ofcompleteness or accuracy, especially if tradesecrets and know-how are involved• Reasonable that inaccurate or incomplete informationwill be exchanged
    47. 47. Example Provision(i) The Disclosing Party shall provide theRecipient with all information in thepossession of the Disclosing Partyreasonably necessary for the Recipient toassess the merits of the Purpose of theAgreement.(ii) The Disclosing Party warrants that theinformation disclosed to the Recipient willbe accurate.
    48. 48. Alternative Provisions• Feedback Exception– In a bilateral NDA wherethe Receiving Party offerssuggestions to improve thevalue of the confidentialinformation, can theDisclosing Party freely usethat information? Is thefeedback confidential?• Most NDA’s are silent on thisissue• May dampen open dialogue
    49. 49. Example Feedback ExceptionConfidential Information shall not include information that constitutesFeedback, where “Feedback” is defined as suggestions, comments, orother feedback to the Disclosing Party with respect to ConfidentialInformation provided originally by the Disclosing Party. It isacknowledged that the Recipient may from time to time provideFeedback, and it is agreed that all Feedback is provided entirelyvoluntarily. Feedback, even if designated as confidential by the partyoffering the Feedback, shall not, absent a separate written agreement,create any confidentiality obligation for the recipient of the Feedback.Subject to any separate agreement between the parties, the recipientof Feedback shall be free to use, disclose, reproduce, license orotherwise distribute, and exploit the Feedback as it sees fit, entirelywithout obligation or restriction of any kind on account of intellectualproperty rights or otherwise.
    50. 50. Alternative Provisions• Non-Compete Clause– Should be stricken outunless it is anemployment NDA– Must be reasonable intime, scope andgeography
    51. 51. Alternative ProvisionsIndemnification– Disclosing Party shouldindemnify for anybreach or threatenedbreach of the NDA– Rarely see this in NDA’sbut recommended insome situations
    52. 52. Maintaining Records• Keep all scanned copiesof NDA’s in an “NDA File”• Keep an excelspreadsheet with NDAinfo– Link to electronic scan ofNDA with excelspreadsheet– Calendar deadlines
    53. 53. Maintaining RecordsKeep an excel spreadsheet with all NDA’s– Parties/ Contact Info– Purpose of NDA– Effective Date– Term/ Expiration Date– Material Terms– Duty to identify confidential information– Employees/independent contractors who have beenprivy to the confidential information– Duty to return confidential information– Choice of Law– Dispute Resolution– Special Notes
    54. 54. Practical Pointers• After taking time to learn NDA’s, I can review aNDA very quickly for clients• Trying to sell standard NDA agreements forclients on flat-fee basis (hourly for negotiationand edits).• Under-utilized in the food and agricultureindustry, especially with farms• Whose NDA form is used in a negotiation?
    55. 55. Practical Pointers• Small to mid-size agri-businesses may haveseveral NDA’s• If hired to doNDA/contractmanagement, try topoint out problematicNDA’s to client and notethese issues in the excelspreadsheet
    56. 56. Contract Management
    57. 57. Contract Management• Scanning Contracts(including NDA’s)• Making an excelspreadsheet• Calendaring contractexpiration dates (amplenotice) and automaticrenewal dates• Note issues withexisting contracts
    58. 58. Contract Management on Excel• Parties• Type of Contract• Contract Name• Effective Date• Date(s) signed byParties• Is the contract on filesigned by both Parties?
    59. 59. Contract Management on Excel• Term of the contract (ifspecified)• Expiration Date• Automatic Renewal Dateand Term– Notice Period beforeautomatic renewal (30 to60 days written notice)• Whether thecontract/NDA has expired
    60. 60. Contract Management on Excel• Purpose of theContract/NDA• Material Terms• Choice of Law• Indemnification clause?• Is there a confidentialityclause in the Contract?If yes, material terms
    61. 61. Contract Management on Excel• Dispute Resolution• Notes/ Issues• Mark on thespreadsheet that it wasprepared by anattorney– Mark Confidential andAttorney-Client Privilege
    62. 62. Practical Pointers• Can be a big project,depending on howlong the farm or agri-business has been inbusiness and howmany contracts can belocated• Only looking for majorpoints• Issue spotting forpotential problems
    63. 63. Practical Pointers• Helps give you a greaterunderstanding of clientand business relationships• Helpful for both you &client to see big picture– Know what contracts haveexpired (may need to beextended)– Has obligation forconfidentiality alreadyexpired?
    64. 64. Practical Pointers• Add new contractsand NDA’s on thespreadsheet• Calendar reminders toreview certaincontacts within X daysbefore theyautomatically renewor expire
    65. 65. Trademarks and Other IntellectualProperty Concerns
    66. 66. Overview• Overview of the Typesof Intellectual Property• More on Trademarks• Trademark Applications• Trademark Renewals• TrademarkManagement
    67. 67. Overview of the Types ofIntellectual Property• Copyrights– Provided to the authors of "original works ofauthorship," including literary, dramatic, musical,artistic, and certain other intellectual works, bothpublished and unpublished.– Copyright protection comes into being as soon asan expression is recorded in some manner (inwriting, in audio recording, etc.).– These works may be registered with the U.S.Copyright Office.© Rincker Law, PLLC, 2013
    68. 68. Overview of the Types ofIntellectual Property• Trademarks– identifying mark for consumers in connection withparticular goods or services.– can take place in many forms including a word,name, symbol, device, sound, fragrance or “tradedress” of a food product packaging.– When this mark is used in commerce, it helpsdistinguish the origin of the goods or services.
    69. 69. Overview of the Types ofIntellectual Property• Patents– Inventions– 3 types:• Utility Patents• Design Patents• Plant Patents
    70. 70. More on Trademarks• Trademark – goods– TM– Rincker Beef™• Servicemark – services– SM– Blackacre RanchPhotography℠• ® mark only whenregistered
    71. 71. More on Trademarks• Wordmark– Standard character– Stylized• Design Mark– Logo (with or withoutwords)– Can claim color(s) aspart of the mark• Sound Mark
    72. 72. More on Trademarks• To be registered withthe U.S. Patent andTrademark Office, themark should be utilizedin interstate commerce– Can file an “Intent toUse” if not using it yet ininterstate commerce– Must state date that itwas first used and firstused in interstatecommerce
    73. 73. More on Trademarks• Recommend checking the USPTO registrybefore starting a business to make sure it doesnot infringe on another mark• Run a basic search for clients who wish file atrademark• Also run a search on Google for the word markand image• In some circumstances, helpful to hire aprofessional searcher (e.g., Corsearch)
    74. 74. More on Trademarks• “Common LawTrademark Rights”– First in Use, First in Right– Simply because someonehasn’t registered atrademark, doesn’t meanthat they don’t havetrademark rights for acertain class of goods orservices– Registration gives arebuttable presumptionthat the owner was thefirst to use the mark• Can still be sued fortrademark infringement
    75. 75. More on Trademarks• “Principal Registry”– Once a mark is on the Principal Registry for 15 years, itis no longer contestable• “Secondary Registry”– Surnames– Trademarks that have secondary meanings– Must show exclusive, continuous use for 5 yearsbefore getting on Principal Registry– Can still use ® and enforce trademark rights– Don’t license the mark to another entity
    76. 76. More on Trademarks• Getting on the “Principal Registry”– The mark must be distinctive– Categories:• Arbitrary or fanciful (e.g., Kraft cheese, Aunt Jemimasyrup)• Suggestive (“AgVance”)• Descriptive (“merely descriptive”) (e.g., “Red Apples”)– Will go on Supplemental Register until it gains distinctiveness– “Yellow Pages” and “Software Solutions Integrated, LLC”• Generic (“farm” “agriculture”)
    77. 77. More on Trademarks• Getting on “PrincipalRegistry”– Mark must be non-functional in order todistinguish it frompatents• Must be a brandidentifier– Use in interstatecommerce• Can file trademark withstate if used only inintrastate commerce
    78. 78. More on Trademarks• Licenses– Once on the Principal Registry,the Owner may license themark to other entities using itwithin the same class of goodsor services• Assignments– If a farms sells or buys anotherbusiness, including trademarkrights, the assignment must besubmitted to the USPTO
    79. 79. Trademark Applications• Practical Pointers– You will need a specimenshowing use of the mark ininterstate commerce(unless it is an intent to useapplication)• Be careful about use ofadvertising materials (e.g.,brochures)• Make sure the specimendoesn’t have the ℠, ™ or ®
    80. 80. Trademark Applications• I always complete the initial application and anyresponses to office actions online• It will be reviewed by an USPTO attorney– He/she will issue an office action if corrections needmade– USPTO attorney can be helpful in correcting application– With design mark descriptions, I usually just use thesuggestion from USPTO• Will be published in the Official Gazette
    81. 81. Trademark Renewals• Calendar Renewal Deadlines– 6 yrs– 10 yrs– Every decade thereafter• Explain renewal deadlines toclient in cover letter with theUSPTO registration certificate• Calendar in multiple locations• Warn client of renewal spammail
    82. 82. Trademark Spreadsheet• General TrademarkDescription• Design or Word Mark?• Image of Design Markor Stylized Mark• Goods or Services?
    83. 83. Description Design or Word Mark Image Goods or ServicesAgvanceLogo with CDesign Mark GoodsAgvance word Word Mark –Standard CharacterGoodsAgvance Logo Design Mark GoodsForm-U-Share Word Mark - Stylized ServicesFUS DesignMarkGoodsSoftware SolutionsIntegrated, LLC – wordWord Mark –Standard CharacterGoodsSSI logo DesignMarkGoodsSSI logo 1 – Intent toUseDesign Mark GoodsSSI logo 2- Intent toUseDesign Mark GoodsSSI logo 3- Intent toUseDesign Mark Goods
    84. 84. Trademark Spreadsheet• Class• Description ofGoods/Services• First Use• First Use in Commercial• Serial Number(Application)• Filing Date
    85. 85. Trademark Spreadsheet• Filing Basis (e.g., Use inCommerce)• Date it was published foropposition• Attorney of Record (&contact info)• Registrant Owner• Current Owner• Date of Assignment withUSPTO (if applicable)
    86. 86. Trademark Spreadsheet• Colors Claims• Description of the Mark(used with application/registration)• Design Search Codes• Wordmark (“AGVANCE,FORM-U-SHARE, S SSISOFTWARE SOLUTIONSINTEGRATED, LLC”)
    87. 87. Trademark Spreadsheet• Disclaimer– No exclusive right touse “SoftwareSolutions” or “LLC”separate from themark– No exclusive right touse “Breed” separatefrom “Breed Lautner”
    88. 88. Trademark Spreadsheet• Date Registered• Registry– Principal or– Supplemental• Cancelation Date (ifapplicable)• Status– Live– Dead
    89. 89. Trademark Spreadsheet• Renewal Date(s)• Notes on Office Actionsand Responses• Links to scanneddocuments on harddrive, including:– Application receipt– Office Actions– Specimens– Registration certificate– Client correspondence
    90. 90. Trademark Spreadsheet• Make sure to mark itattorney/clientprivileged• Add section for notes,including importantstatutory references• Great way to look atbig picture for client’sregistered trademarks
    91. 91. Please Stay in Touch• Send Me Snail Mail: 535 Fifth Avenue, 4th Floor,New York, NY 10017• Call Me: (212) 427-2049 (office)• Email Me:• Visit My Website:• Read My Food & Ag Law Blog:• Tweet Me: @CariRincker @RinckerLaw• Facebook Me:• Link to Me:• Skype Me: Cari.Rincker