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
314-238-2400
dchurovich@patpro.com
www.polsterlieder.com
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.
© 2010 Douglas D. Churovich
What
Copyrights– Whatare
are Trademarks
Trademarks &&Copyrights
how are
from Patents
howthey
aredifferent
they different
from and
Secrets?
PatentsTrade
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
© 2010 Douglas D. Churovich
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
© 2010 Douglas D. Churovich
WHY SHOULD I CARE
ABOUT Trademarks?
I’m a ________________ practitioner.
Corporate
Domestic Law
Bankruptcy
Property Law
Labor Law
Personal Injury
… (fill in the blank)
© 2010 Douglas D. Churovich
Spotting Trademark Issues Is Very
Important To Your Practice
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…)
© 2004 Polster Lieder Woodruff & Lucchesi LC
Spotting Trademark Issues Is Very
Important 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. **
© 2010 Douglas D. Churovich
Trademarks = Part of Valuable
Intellectual 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 billion
Working 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)
© 2010 Douglas D. Churovich
Examples Of TM “Red Flags”
(there is no magic list!)
A.
“I just got a letter that accuses me of _____________ infringement!”
patent
trademark
copyright
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 buy
just 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…)
© 2010 Douglas D. Churovich
Examples Of TM “Red Flags”
(cont.)
G. TM Basics for Starting A New Business
Initial trademark issues and needs
Employee agreements – protect company’s TM rights
Websites – may involve multiple TM concerns
Any 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…)
© 2010 Douglas D. Churovich
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.”
© 2010 Douglas D. Churovich
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.
© 2010 Douglas D. Churovich