Presented By:
Maria Crimi Speth
Jaburg & Wilk, P.C.
Avoiding Litigation:
Top Tips for Identifying & Mitigating Common Lega...
#1: What Is Intellectual Property
 Trademarks
 Copyrights
 Trade Secrets
 Patents
Not sure where to start?
Visit Trakl...
Trademarks
Anything that identifies the source of goods or
services
Sometimes called service mark when it
identifies you...
#2: Top Valued Brands
 Coca-Cola $70,452 million
 IBM $64,727 million
 Microsoft $60,895 million
 Google $43,557 milli...
#3: Branding
Who makes this soup?
#4: What Can Be a Trademark?
 Names
 Words (tag lines)
 Pictures
 Trade Dress
 Colors
 Sounds
 Smells
#5: Trademark Symbols
 Use ™ after a trademark or service mark that
is not registered with the USPTO
 Use SM
after a ser...
#6: Avoid Trademark Infringement
It’s Costly!
 Is the use of the trademark likely to cause a
reasonable consumer to be co...
BONUS TIP: Choosing a Trademark
 Arbitrary/Fanciful
 Suggestive
 Descriptive
 Generic
Protectio
n
Ad campaigns
 Xerox Corp.’s “You can’t Xerox a Xerox on a Xerox. But we don’t mind at
all if you copy a copy on a Xerox® ...
#7: Why Register with the USPTO
 Constructive use throughout the U.S.
 Presumed Valid
 Prevent Others from Registering
...
#8: Trademark Searches
 Identify your potential TMs and:
– Search engine
– Preliminary -- www.uspto.gov
– Domain name
– P...
#9: Document Your First Use When
You Use It!
 Invoices
 Marketing materials
 Website capture
 Record dates & store
– E...
#10: Don’t be Pennywise & Pound
Foolish
 Consider using your attorney to:
– Register
– Proper Timing, Class
 Mistakes ca...
#11: Copyrights
– Paintings
– Sculptures
– Books
– Poems
– Songs/Music
– Software Programs
– Web Sites
– Trade Articles
– ...
#12: Legal Rights As Copyright
Owner
 Exclusive right to:
– copy
– create derivative works
– distribute
– publicly displa...
#13: How to Properly Mark with a
Copyright
©2006, 2012 Jaburg & Wilk, P.C.
BONUS TIP: Just because it isn’t
marked, doesn’...
Exceptions
• Assignment or transfer of the copyright in
writing
• Works for hire
• A work prepared by an employee in the s...
#14: Why File Copyright
Registration?
 Must be registered to file a lawsuit
 Presumption that you are the owner
 Statut...
#15: “Fair Use” Defense to
Infringement
 Fair use defense is very limited
– Can not in any way interfere with author’s ab...
#16: Patent Rights
– 20 year monopoly
– Public disclosure
– No renewals
– Does not create a right to sell
 What Can Be Pa...
#17: Patent requirements
 Must be new or novel
– Filed within one year of public disclosure/publication
– Demonstrably di...
#18: Trade Secrets
 Proprietary Information
 Software Code
 Customer Lists
 Formulas
 Financial Information
 Busines...
#19: How to Handle Trade Secrets
 If you don’t want your competitors to see it then
treat it as a trade secret
 Share on...
How Traklight Can Help:
 ID your IP
– Identify your potential intellectual
property
– No prior IP knowledge required
– Cu...
Questions?
10% OFF
A Collaborative IP Vault
Visit Traklight.com
Use the coupon code WEBINAR05
offer ends 5/31
Get started on IP Ident...
Maria Crimi Speth
Jaburg & Wilk, P.C.
mcs@jaburgwilk.com
602-248-1089
Avoiding Litigation:
Top Tips for Identifying & Miti...
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Avoiding Litigation with Maria Speth

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Maria Speth walks us through how to avoid litigation and common legal mistakes.

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Avoiding Litigation with Maria Speth

  1. 1. Presented By: Maria Crimi Speth Jaburg & Wilk, P.C. Avoiding Litigation: Top Tips for Identifying & Mitigating Common Legal Mistakes
  2. 2. #1: What Is Intellectual Property  Trademarks  Copyrights  Trade Secrets  Patents Not sure where to start? Visit Traklight.com to ID your IP today! Stay online for limited time offer.
  3. 3. Trademarks Anything that identifies the source of goods or services Sometimes called service mark when it identifies your services
  4. 4. #2: Top Valued Brands  Coca-Cola $70,452 million  IBM $64,727 million  Microsoft $60,895 million  Google $43,557 million  GE $42,808 million  McDonald’s $33,578 million  Intel $32,015 million  Nokia $29,495 million  Disney $28,731 million  HP $26,867 million --Interbrands
  5. 5. #3: Branding
  6. 6. Who makes this soup?
  7. 7. #4: What Can Be a Trademark?  Names  Words (tag lines)  Pictures  Trade Dress  Colors  Sounds  Smells
  8. 8. #5: Trademark Symbols  Use ™ after a trademark or service mark that is not registered with the USPTO  Use SM after a service mark that is not registered with the USPTO  Use ® after a trademark or service mark that is registered with the USPTO BONUS TIP: Use the correct one!
  9. 9. #6: Avoid Trademark Infringement It’s Costly!  Is the use of the trademark likely to cause a reasonable consumer to be confused about the source of the goods or services or about sponsorship of the goods or services?
  10. 10. BONUS TIP: Choosing a Trademark  Arbitrary/Fanciful  Suggestive  Descriptive  Generic Protectio n
  11. 11. Ad campaigns  Xerox Corp.’s “You can’t Xerox a Xerox on a Xerox. But we don’t mind at all if you copy a copy on a Xerox® copier.”  Chrysler LLC’s “They invented ‘SUV’ because they can’t call them Jeep®.”  Kimberly-Clark Corp.’s “ ‘Kleenex’ is a brand name…and should always be followed by an ® and the word ‘Tissue.’ [Kleenex® Brand Tissue] Help us keep our identity, ours.”
  12. 12. #7: Why Register with the USPTO  Constructive use throughout the U.S.  Presumed Valid  Prevent Others from Registering  Other Statutory Benefits
  13. 13. #8: Trademark Searches  Identify your potential TMs and: – Search engine – Preliminary -- www.uspto.gov – Domain name – Professional Trademark Search  BONUS TIP: Do this BEFORE you visit an attorney- visit traklight.com to get started!
  14. 14. #9: Document Your First Use When You Use It!  Invoices  Marketing materials  Website capture  Record dates & store – Example: Traklight’s IP Vault  Time-Stamped  Third-Party Verification  Meta Data
  15. 15. #10: Don’t be Pennywise & Pound Foolish  Consider using your attorney to: – Register – Proper Timing, Class  Mistakes can mean complete “do-over” costing $275-325!
  16. 16. #11: Copyrights – Paintings – Sculptures – Books – Poems – Songs/Music – Software Programs – Web Sites – Trade Articles – Videos – Your business Plan – Your Company Logo – Your Corporate Image • Original expression of an idea • Fixed in a Tangible Form
  17. 17. #12: Legal Rights As Copyright Owner  Exclusive right to: – copy – create derivative works – distribute – publicly display  Who owns the Copyright – The creator owns the copyright – It does not matter who paid for it  Terms – Author’s life +70 years – Work for hire lasts 95 years from publication or 120 years from creation whichever comes first – After expiration- work is in the public domain
  18. 18. #13: How to Properly Mark with a Copyright ©2006, 2012 Jaburg & Wilk, P.C. BONUS TIP: Just because it isn’t marked, doesn’t mean it’s fair game!
  19. 19. Exceptions • Assignment or transfer of the copyright in writing • Works for hire • A work prepared by an employee in the scope of employment • A work specifically commissioned in one of nine specific categories when there is a written agreement stating that it is a work for hire Example: Logo design, software code
  20. 20. #14: Why File Copyright Registration?  Must be registered to file a lawsuit  Presumption that you are the owner  Statutory damages  Attorney fees
  21. 21. #15: “Fair Use” Defense to Infringement  Fair use defense is very limited – Can not in any way interfere with author’s ability to benefit from the work – Small portions – Educational Purposes – Parody  Note: Doesn’t always work!
  22. 22. #16: Patent Rights – 20 year monopoly – Public disclosure – No renewals – Does not create a right to sell  What Can Be Patented? – Processes – Machines – Chemical compounds/formulas – Software program
  23. 23. #17: Patent requirements  Must be new or novel – Filed within one year of public disclosure/publication – Demonstrably different from publicly available ideas, inventions or products  Must be useful  Must be non obvious
  24. 24. #18: Trade Secrets  Proprietary Information  Software Code  Customer Lists  Formulas  Financial Information  Business Processes  Training methods
  25. 25. #19: How to Handle Trade Secrets  If you don’t want your competitors to see it then treat it as a trade secret  Share on a need-to-know basis  Use NDAs when possible  Label as a trade secret  Identify Trade Secrets to your employees/contractors
  26. 26. How Traklight Can Help:  ID your IP – Identify your potential intellectual property – No prior IP knowledge required – Custom strategic report  IP Vault – Secure storage for IP – Time-stamped – Collaborative Vaults available
  27. 27. Questions?
  28. 28. 10% OFF A Collaborative IP Vault Visit Traklight.com Use the coupon code WEBINAR05 offer ends 5/31 Get started on IP Identification & Protection Today! Stay informed about IP! Become a Traklight member- it’s free! @traklight facebook.com/traklight
  29. 29. Maria Crimi Speth Jaburg & Wilk, P.C. mcs@jaburgwilk.com 602-248-1089 Avoiding Litigation: Top Tips for Identifying & Mitigating Common Legal Mistakes

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