This presentation was prepared for the Lawline.com presentation given on September 24, 2015 regarding contract management, trademarks and non-disclosure agreements for farmers/ranchers, agri-businesses and food companies.

1. Protecting the Agri-Business:
Managing Contracts, Trademarks and
Non-Disclosure Agreements
Lawline.com
September 24, 2015
By Cari B. Rincker, Esq.

2. My Background
• Grew up on a beef cattle
farm in Central Illinois
• Education
– A.S. in Agriculture from
Lake Land College
– B.S. in Animal Science from
Texas A & M
– M.S. in Ruminant (Beef
Cattle) Nutrition from
University of Illinois
– J.D. from Pace Law School
(2007)

3. My Background
• Chair of the American Bar
Association, General Practice,
Solo & Small Firm Division’s
Agriculture Law Committee
• New York & Illinois Offices
• My food and agriculture client
base
– Farmers to ranchers
– Small to mid-size agri-business
– Food entrepreneurs

4. Overview
• Confidentiality and
Non-Disclosure
Agreements
• Contract management
• Trademarks and other
Intellectual Property
Concerns

5. Non-Disclosure Agreements (“NDA’s”)

6. Non-Disclosure Agreements
Applicability
Types of NDA’s
Anatomy of an NDA
Alternative Provisions
Maintaining Records
Practical Pointers

7. Applicability
2 Common Situations:
– When a farm or agri-
business is entering into
business discussions with
another party
– When a farm or agri-
business wants to bind its
employees or independent
contractors to maintain
confidentiality

8. Is it a One-Way or Two-Way Street?
2 Types:
• Mutual or Bilateral
• Most NDA’s are bilateral –
business discussions are usually
a two-way street
• One-sided or Unilateral
• NDA’s with employees and
independent contracts are
usually unilateral

9. Anatomy of an NDA
The following broad issues
should be addressed:
• Who will be exchanging
confidential information?
• What is the purpose of the
exchange of confidential
information?
• What type of information is to
be considered “confidential” for
protection under the NDA?
• How can this confidential
information be used and by
whom?

10. Anatomy of an NDA
The following broad
issues should be
addressed:
• How will the secrecy of the
confidential information be
maintained?
• How long will the
confidentiality of the
information be maintained?
• What are the consequences
of a breach or misuse of the
confidential information?

11. Anatomy of an NDA
Contact Information
– The NDA should use the
parties’ legal name,
address, and state of
incorporation (if
appropriate).
• It may be prudent to ask the
other party for a Certificate
of Good Standing from its
Department of State.
• Should it include the
SSN/FEIN of each party?

12. Anatomy of an NDA
Purpose of the NDA
– The purpose of the NDA
should be properly
identified to help narrow
what information is to
be considered
confidential.
– The NDA should state
that usage of
confidential information
should be limited to this
purpose.

13. Example Purpose Clause
The Receiving Party has shown interest in the
__________ [farm/agri-business] processes of
the Disclosing Party, and in the Disclosing Party’s
ability to utilize these processes to meet the
commercial needs of the Receiving Party (the
“Purpose”).

14. Anatomy of an NDA
Depending on the
Purpose of the NDA,
it should state that
there is no obligation
to enter into
business relationship
which they are
exploring.

15. Example Provision
Mutual Obligations. Neither Party shall
assign this Agreement without the prior
written permission of the other Party.
Neither Party shall have the obligation to
purchase from or furnish to the other Party
any products or services under this
Agreement.

16. Anatomy of an NDA
Permitted Parties
– Who may or may not be privy
to any disclosed confidential
information should be clearly
identified.
– This may include employees
and independent contractors
on a “need to know” basis so
long as they are bound by
written agreement to
maintain confidentiality.

17. Anatomy of an NDA
Permitted Use
– NDA should state the
permitted use to ensure
Confidential Information is
limited to this use
• Important to have an
affirmative obligation not to
disclose the discloser’s
confidential information
except for the use
• Usually restricted to
employees and advisors on a
“need to know” basis for the
defined purpose of the NDA

18. Examples “Permitted Parties” Clause
Upon receiving Confidential Information from the Disclosing Party, the Recipient shall
limit its use of the Disclosing Party's Confidential Information to the Permitted
Purpose, and permit the Disclosing Party's Confidential Information to be viewed and
used only by Permitted Parties for Permitted Purposes.
(a) “Permitted Parties” means:
(i) those of Recipient's employees and consultants;
(A) who are directly involved in the Recipient's use of the Disclosing Party's
Confidential Information;
(B) who have been advised of the Recipient's obligations of confidence in
respect of the Disclosing Party's Confidential Information; and
(C) who have agreed in writing to honor personally those obligations of
confidence.
(ii) the Recipient's professional advisors who have by their profession a duty of
confidence, or who agree in writing to hold the Confidential Information in
confidence

19. Example “Permitted Use” Clause
Upon receiving
Confidential
Information from the
Disclosing Party, the
Recipient shall limit
its use of the
Disclosing Party's
Confidential
Information to the
Permitted Purpose.

20. Example Clause
Obligations of the Receiving Party. Except as set forth
hereto, Receiving Party agrees that it shall:
(a) not publish, copy, or disclose any Confidential
Information other to disclose said Confidential
Information to third parties except the Receiving Party’s
employees and independent contractors that need to
know in order to use and/or evaluate the Confidential
Information for the Purpose and are bound by a written
agreement with the Receiving Party not to disclose any
Confidential Information that comes into their possession
through their employment or independent contractor
agreement.

21. Anatomy of an NDA
Identification of
Confidential Information
– Special attention should
be made to how
“Confidential
Information” is defined
in the NDA to ensure it
properly includes every
possible disclosure.
– This may include ideas,
concepts, know-how,
trade secrets,
intellectual property,
business plans and
financial information.

22. Anatomy of an NDA
Identification of
Confidential Information.
– Keep in mind that
disclosures may be either
written or oral; thus, the
NDA should state how the
Confidential Information
will be identified in either
form.
– Some NDA’s require
written confirmation
within thirty (30) days
after oral disclosure.

23. Example Definition of
“Confidential Information”
For purposes of this Agreement, “Confidential
Information” means nonpublic ideas, discoveries,
designs, trade secrets, technology, product
information, specifications, software, business and
marketing plans, business methods, cost
information, forecasts, customer information,
supplier information and other business
information of or relating to the Disclosing Party
and shall include all notes, analyses, compilations,
studies, or other material prepared by the Receiving
Party.

24. Anatomy of an NDA
Exceptions (or “Carve Outs”). Typical exceptions
to confidentiality include the following:
– if known prior to the date of disclosure,
– is in the public domain,
– was lawfully communicated to the recipient by a
third-party,
– was independently developed by employees,
– written release by the disclosing party, and
– when the law requires disclosure (e.g., court order
or subpoena) allowing the disclosing party
reasonable notice to obtain a protective order.

25. Example “Carve Outs” Provision
When Receiving Party Has No Obligations of Confidentiality. Not withstanding the foregoing, the Disclosing Party
agrees that the Receiving Party shall have no obligations for the non-use or concealment of Confidential Information
when said Confidential Information:
(a) was known by the Receiving Party free of any obligation of confidence prior to the date of such disclosure as
evidenced by the Receiving Party’s written records and Receiving Party promptly notifies Disclosing Party in writing
identifying 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 to
act 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 disclose
Confidential Information subsequent to the time of the Disclosing Party’s written or verbal communication to the
Receiving Party;
(e) was developed by employees or agents of a Party independently of and without reference to any Confidential
Information 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 of
government having proper jurisdiction, under its applicable laws and regulations and Receiving Party gives Disclosing
Party written advance notice of any disclosure or planned disclosure in order to permit Disclosing Party to make
objections to the disclosure.

26. Anatomy of an NDA
Security
– The parties to a NDA
should take reasonable
safeguards to protect the
Confidential Information.
– The other party should
be promptly notified in
writing if there has been
a breach of
confidentiality.

27. Example “Security” Clause
Each party shall ensure that the other party's
Confidential Information is not disclosed or
distributed by its employees or agents in breach
of this Agreement.

28. Anatomy of an NDA
Notification of Breach
of Security
– Receiving Party should
disclose any breach of
security to Disclosing
Party

29. Example “Notification of Breach” Clause
The Recipient shall notify the Disclosing Party
immediately upon discovery of any loss,
unauthorized disclosure or use of the Disclosing
Party's confidential information attributable to
the Recipient.

30. Anatomy of an NDA
Term
– A typical term for NDA’s
in the business
community is three to
five years.
– Please note that some
NDA’s measure this term
from the date of
disclosure

31. Example Term Clause
The parties agree to hold each other's
Confidential Information in the strictest
confidence during the term and for a
period of three (3) years after the
Effective Date of this Agreement (the
“Term”).

32. Anatomy of an NDA
Procedures Upon
Termination.
– The NDA should discuss
how confidential
information should be
treated at the end of the
term.
• For example, should the
recipient return copies or
destroy all written
materials?
• May the recipient maintain
a copy of all written
materials?

33. Example Clause
At the written request of the Disclosing Party,
the Receiving Party shall return all Confidential
Information, except for a single copy thereof
which may be retained for the sole purpose of
determining the scope of the obligations of the
Receiving Party.

34. Anatomy of an NDA
Ownership
– It is paramount that the
NDA state that the disclosing
party retains ownership to
the Confidential
Information.
– Some NDA’s include a
“feedback exception”
identifying ownership of all
suggestions made during
business negotiation

35. Example Ownership Clause
Rights of the Disclosing Party. Disclosing Party
shall retain title to all forms of its Confidential
Information, including but not limited to, written
documentation disclosed for the Purpose of this
Agreement and all copies thereof. It is understood
that the Disclosing Party has not construed to grant
or to convey to the Receiving Party, expressly or
impliedly, any right or license or any other right
under any copyrights, patents or patent
applications or any other proprietary right of the
Disclosing Party of the Confidential Information.

36. Anatomy of an NDA
Relationship of the
Parties
– The NDA should note
the relationship
between the parties.
– For example, it should
likely state that the
parties are not in a
joint venture, agency
or partnership.

37. Example Clause
No Joint Venture. The Parties have no intent whatsoever
to create a joint venture, partnership or other formal
business association. The Parties are not part of, and
expressly disclaim the existence of, any enterprise, trade
or 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 or
create any debts or obligations, express or implied, on
behalf of or in the name of the other party, or to bind the
other party in any manner whatsoever. Neither Party will
claim the existence of any such joint venture, partnership,
or other formal business association as a result of this
Agreement.

38. Anatomy of an NDA
How Disputes Will be
Settled
– The NDA should
address how a
dispute will be
settled, under what
state’s law, and
whether attorneys’
fees and costs can be
recovered for a
prevailing party.

39. Anatomy of an NDA
How Disputes Will be
Settled
– The NDA should
memorialize any
preferences towards
Alternative Dispute
Resolution (“ADR”)
including mediation or
arbitration.
– If the parties wish to
litigate a dispute or
emergency, the NDA
should identify which
state’s courts may be
used.

40. Anatomy of an NDA
Miscellaneous Provisions
• Prohibition of Assignment
• Waiver Clause
• Severability Clause – If court
holds one clause invalid the
remaining NDA will be valid
• Integration Clause - Is it the
“Entire Agreement” and
supersedes all prior agreements?
• Will it be signed in counterparts
via fax?

41. Alternative Provisions
Residual Memory Clause
• Gives Receiving Party the right to use any
Confidential Information retained in the unaided
memories of their employees who had access to
to the information
• Typical with large technology companies due to
fear of getting sued if they develop similar
technology
• Inappropriate in most cases

42. Alternative Provisions
Obligation to Provide Complete and/or
Accurate Information
• Impose an obligation to disclose complete and/or
accurate information
• Most parties will resist a warranty of completeness
or accuracy, especially if trade secrets and know-
how are involved
• Reasonable that inaccurate or incomplete
information will be exchanged

43. Alternative Provisions
• Feedback Exception
– In a bilateral NDA where
the Receiving Party offers
suggestions to improve the
value of the confidential
information, can the
Disclosing Party freely use
that information? Is the
feedback confidential?
• Most NDA’s are silent on this
issue
• May dampen open dialogue

44. Alternative Provisions
• Non-Compete Clause
– Should be stricken out
unless it is an
employment NDA
– Must be reasonable in
time, scope and
geography

45. Alternative Provisions
Indemnification
– Disclosing Party should
indemnify for any
breach or threatened
breach of the NDA
– Rarely see this in NDA’s
but recommended in
some situations

46. Maintaining Records
• Keep all scanned copies
of NDA’s in an “NDA File”
• Keep an excel
spreadsheet with NDA
info
– Link to electronic scan of
NDA with excel
spreadsheet
– Calendar deadlines

47. Maintaining Records
Keep 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 been privy to
the confidential information
• Duty to return confidential information
• Choice of Law
• Dispute Resolution
• Special Notes

48. Practical Pointers
• After taking time to learn
NDA’s, I can review a NDA
very quickly for clients
• Trying to sell standard NDA
agreements for clients on
flat-fee basis (hourly for
negotiation and edits).
• Under-utilized in the food
and agriculture industry,
especially with farms
• Whose NDA form is used in a
negotiation?

49. Practical Pointers
Small to mid-size agri-
businesses may have several
NDA’s
If hired to do NDA/contract
management, try to point out
problematic NDA’s to client
and note these issues in the
excel spreadsheet

50. Contract Management

51. Contract Management
• Scanning Contracts
(including NDA’s)
• Making an excel
spreadsheet
• Calendaring contract
expiration dates (ample
notice) and automatic
renewal dates
• Note issues with
existing contracts

52. Contract Management on Excel
• Parties
• Type of Contract
• Contract Name
• Effective Date
• Date(s) signed by
Parties
• Is the contract on file
signed by both Parties?

53. Contract Management on Excel
• Term of the contract (if
specified)
• Expiration Date
• Automatic Renewal Date
and Term
– Notice Period before
automatic renewal (30 to
60 days written notice)
• Whether the
contract/NDA has expired

54. Contract Management on Excel
• Purpose of the
Contract/NDA
• Material Terms
• Choice of Law
• Indemnification clause?
• Is there a confidentiality
clause in the Contract?
If yes, material terms

55. Contract Management on Excel
• Dispute Resolution
• Notes/ Issues
• Mark on the
spreadsheet that it was
prepared by an
attorney
– Mark Confidential and
Attorney-Client Privilege

56. Practical Pointers
• Can be a big project,
depending on how
long the farm or agri-
business has been in
business and how
many contracts can be
located
• Only looking for major
points
• Issue spotting for
potential problems

57. Practical Pointers
• Helps give you a greater
understanding of client
and business relationships
• Helpful for both you & the
client to see big picture
– Know what contracts have
expired (may need to be
extended)
– Has obligation for
confidentiality already
expired?

58. Practical Pointers
• Add new contracts and
NDA’s on the
spreadsheet
• Calendar reminders to
review certain contacts
within X days before
they automatically
renew or expire?

59. Trademarks and Other Intellectual
Property Concerns

60. Overview
Overview of
the Types of
Intellectual
Property
More on
Trademarks
Trademark
Applications
Trademark
Renewals
Trademark
Management

61. Overview of the Types of
Intellectual Property
Copyrights
• Provided to the authors of "original works of authorship," including literary,
dramatic, musical, artistic, and certain other intellectual works, both published
and unpublished.
• Under the statute, these “original works of authorship” include the following
categories:
• literary works;
• musical works, including any accompanying words;
• dramatic works, including any accompanying music;
• pantomimes and choreographic works;
• pictorial, graphic, and sculptural works;
• motion pictures and other audiovisual works;
• sound recordings; and
• architectural works.
© Rincker Law, PLLC, 2015

62. Recipes & Copyright Law
Importantly,
copyright
protection does not
protect an “idea,
procedure, process,
system, method of
operation, concept,
principle, or
discovery,
regardless of the
form in which it is
described,
explained,
illustrated, or
embodied in such
work.”
Courts and the U.S.
Copyright Office
have historically
held that recipes
that do not receive
copyright
protection because
it fits under this
exception.

63. Recipes & Copyright Law
Simply put, recipes are
lists of ingredients
accompanied by a set
of instructions as to
how to mix and
prepare the
ingredients together.
Listing ingredients
does not qualify for
copyright protection

64. Recipes & Copyright Law
However, as in a cookbook,
descriptions, explanations,
or written materials
accompanying a list of
ingredients and composing
the entire “recipe” may
make the recipe as a whole
protectable.

65. Overview of the Types of
Intellectual Property
Trademarks
• Identifying mark for consumers in
connection with particular goods
or services.
• Can take place in many forms
including a word, name, symbol,
device, sound, fragrance or “trade
dress” of a food product
packaging.
• When this mark is used in
commerce, it helps distinguish the
origin of the goods or services.
Cari’s Cakes would be a trademark
but could I register it? ….

66. Overview of the Types of
Intellectual Property
• Inventions
• 3 types:
• Utility Patents
• Design Patents
• Plant Patents
Patents

67. Patents & Recipes
• Typically, it is difficult to patent a recipe
because it fails on two parts:
– Novelty – To patent a recipe, it must be
totally unique, which is difficult in the
food business because almost every
recipe has ingredients and processes
that are already known and used,
therefore there is nothing unique about
it.
– Obviousness – In order to get a patent,
such as a utility patent, the process
must yield a final product that is
unexpected in some way, which is
generally not the case in recipes
because mixing ingredients together
will usually result in a known final
product.

68. More on Trademarks
Trademark – goods
•TM
•Rincker Beef™
Servicemark – services
•SM
•Blackacre Ranch Photography℠
®mark only when registered

69. More on Trademarks
Wordmark
• Standard character
• Stylized
Design Mark
• Logo (with or without words)
• Can claim color(s) as part of
the mark
Sound Mark

70. More on Trademarks
To be registered with the
U.S. Patent and Trademark
Office, the mark should be
utilized in interstate
commerce
• Can file an “Intent to Use” if not
using it yet in interstate commerce
• Must state date that it was first
used and first used in interstate
commerce

71. More on Trademarks
Recommend
checking the USPTO
registry before
starting a business to
make sure it does not
infringe on another
mark
Run a basic search for
clients who wish file
a trademark
Also run a search on
Google for the word
mark and image
In some
circumstances,
helpful to hire a
professional searcher
(e.g., Corsearch)

72. More on Trademarks
“Common Law
Trademark Rights”
• First in Use, First in Right
• Simply because someone hasn’t
registered a trademark, doesn’t
mean that they don’t have
trademark rights for a certain
class of goods or services
• Registration gives a rebuttable
presumption that the owner
was the first to use the mark
• Can still be sued for
trademark infringement

73. More on Trademarks
“Principal Registry”
• Once a mark is on the Principal Registry for 15 years, it is no
longer contestable
“Secondary Registry”
• Surnames
• Trademarks that have secondary meanings
• Must show exclusive, continuous use for 5 years before getting
on Principal Registry
• Can still use ® and enforce trademark rights
• Don’t license the mark to another entity

74. More on Trademarks
Getting on the “Principal Registry”
• The mark must be distinctive
• Categories:
• Arbitrary or fanciful (e.g., Kraft cheese, Aunt Jemima syrup)
• 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”)

75. More on Trademarks
Getting on “Principal
Registry”
• Mark must be non-
functional in order to
distinguish it from patents
• Must be a brand identifier
• Use in interstate commerce
• Can file trademark with
state if used only in
intrastate commerce

76. More on Trademarks
Licenses
• Once on the Principal Registry, the
Owner may license the mark to
other entities using it within the
same class of goods or services
Assignments
• If a farms sells or buys another
business, including trademark
rights, the assignment must be
submitted to the USPTO

77. Trademark Applications
Practical Pointers
• You will need a specimen
showing use of the mark in
interstate commerce (unless it
is an intent to use application)
• Be careful about use of
advertising materials (e.g.,
brochures)
• Make sure the specimen
doesn’t have ®

78. Trademark Applications
• I always complete the initial
application and any responses
to office actions online
• It will be reviewed by an USPTO
attorney
– He/she will issue an office action
if corrections need made
– USPTO attorney can be helpful
in correcting application
– With design mark descriptions, I
usually just use the suggestion
from USPTO
• Will be published in the Official
Gazette

79. Trademark Renewals
Calendar
Renewal
Deadlines
•6 yrs
•10 yrs
•Every decade
thereafter
Explain renewal
deadlines to
client in cover
letter with the
USPTO
registration
certificate
Calendar in
multiple
locations
Warn client of
renewal spam
mail

80. Trademark Spreadsheet
General Trademark
Description
Design or Word
Mark?
Image of Design Mark
or Stylized Mark
Goods or Services?

81. Description Design or Word Mark Image Goods or Services
Agvance
Logo with C
Design Mark Goods
Agvance word Word Mark –
Standard Character
Goods
Agvance Logo Design Mark Goods
Form-U-Share Word Mark - Stylized Services
FUS Design
Mark
Goods
Software Solutions
Integrated, LLC – word
Word Mark –
Standard Character
Goods
SSI logo Design
Mark
Goods
SSI logo 1 – Intent to
Use
Design Mark Goods
SSI logo 2- Intent to
Use
Design Mark Goods
SSI logo 3- Intent to
Use
Design Mark Goods

82. Trademark Spreadsheet
Class
Description of
Goods/Services
First Use
First Use in
Commercial
Serial Number
(Application)
Filing Date

83. Trademark Spreadsheet
Filing Basis (e.g., Use in Commerce)
Date it was published for opposition
Attorney of Record (and contact info)
Registrant Owner
Current Owner
Date of Assignment with USPTO (if applicable)

84. Trademark Spreadsheet
Colors Claims
Description of the Mark (used
with application/ registration)
Design Search Codes
Wordmark (“AGVANCE, FORM-
U-SHARE, S SSI SOFTWARE
SOLUTIONS INTEGRATED, LLC”)

85. Trademark Spreadsheet
Disclaimer
• No exclusive right to use “Software
Solutions” or “LLC” separate from the mark
• No exclusive right to use “Breed” separate
from “Breed Lautner”

86. Trademark Spreadsheet
Date Registered
Registry
•Principal or
•Supplemental
Cancelation Date (if
applicable)
Status
•Live
•Dead

87. Trademark Spreadsheet
Renewal Date(s)
Notes on Office
Actions and
Responses
Links to scanned
documents on hard
drive, including:
•Application receipt
•Office Actions
•Specimens
•Registration certificate
•Client correspondence
Notes

88. Trademark Spreadsheet
• Make sure to mark it
attorney/client
privileged
• Great way to look at
big picture for client’s
registered trademarks

89. Questions on Being an Agriculture Lawyer
Fridays with Cari Skype
Calls
– First Friday of the
month at 2pm ET
– RSVP to
cari@rinckerlaw.com
– No charge

90. Oh, P.S. – I Wrote a Book!
Cari B. Rincker & Patrick B.
Dillon, “Field Manual: Legal
Guide for New York Farmers
& Food Entrepreneurs”
(2013)
Available at
http://www.amazon.com/Fi
eld-Manual-Legal-Farmers-
Entrepreneurs/dp/1484965
191
www.newyorkagriculturelaw.com

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: cari@rinckerlaw.com
• Visit My Website: www.rinckerlaw.com
• Read My Food, Farm & Family Law Blog:
www.rinckerlaw.com/blog
• Tweet Me: @CariRincker @RinckerLaw
• Facebook Me: www.facebook.com/rinckerlaw
• Link to Me:
http://www.linkedin.com/in/caririncker