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

1. Presented By:
Maria Crimi Speth
Jaburg & Wilk, P.C.
Avoiding Litigation:
Top Tips for Identifying & Mitigating Common Legal Mistakes

2. #1: What Is Intellectual Property
 Trademarks
 Copyrights
 Trade Secrets
 Patents
Not sure where to start?
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3. Trademarks
Anything that identifies the source of goods or
services
Sometimes called service mark when it
identifies your services

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. #3: Branding

6. Who makes this soup?

7. #4: What Can Be a Trademark?
 Names
 Words (tag lines)
 Pictures
 Trade Dress
 Colors
 Sounds
 Smells

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. #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. BONUS TIP: Choosing a Trademark
 Arbitrary/Fanciful
 Suggestive
 Descriptive
 Generic
Protectio
n

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. #7: Why Register with the USPTO
 Constructive use throughout the U.S.
 Presumed Valid
 Prevent Others from Registering
 Other Statutory Benefits

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. #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. #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. #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. #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. #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. 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. #14: Why File Copyright
Registration?
 Must be registered to file a lawsuit
 Presumption that you are the owner
 Statutory damages
 Attorney fees

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. #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. #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. #18: Trade Secrets
 Proprietary Information
 Software Code
 Customer Lists
 Formulas
 Financial Information
 Business Processes
 Training methods

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. 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. Questions?

28. 10% OFF
A Collaborative IP Vault
Visit Traklight.com
Use the coupon code WEBINAR05
offer ends 5/31
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Protection Today!
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29. Maria Crimi Speth
Jaburg & Wilk, P.C.
mcs@jaburgwilk.com
602-248-1089
Avoiding Litigation:
Top Tips for Identifying & Mitigating Common Legal Mistakes