Protecting your intellectual property: what the court expects of your business – Trademark

“Court victories” in commercial litigation require the company filing the lawsuit (the “plaintiff”) to overcome numerous factual and legal hurdles. However, a lawsuit brought to protect a company’s intellectual property rights from infringement by other companies also presents a unique and important obligation that the plaintiff must meet: you will need to satisfy the court that your company has taken reasonable and timely measures to protect its intellectual property. (“IP”).

In other words, US courts will not help a company protect its intellectual property rights if the company itself has not taken reasonable and customary steps to protect that intellectual property. This means that intellectual property disputes are often won or lost long before a lawsuit is filed. Winning a case to protect your intellectual property from infringement by other companies requires you to establish practices and policies
today it will actually show the world – and a court – that you value your intellectual property and have taken the necessary steps to protect it.

There are basically four categories of commercial intellectual property:

  • Trademarks;

  • Materials protected by copyright laws;

  • trade secrets; and

  • Patents

We will ignore patents for the purposes of this brief article, because the rules that apply to the enforcement of patents are very different from the rules that apply to the protection of the other three categories of intellectual property.

Monitoring your brands. You are probably aware that common law marks and trademarks are words, phrases, symbols, and images used to help the public identify your company’s products or services. An easily recognizable brand can be worth millions of dollars because it instantly conveys to your customers the products you sell or the services you offer and effortlessly reminds them of your reputation in the industry and the level of quality they can expect. of your products and services.

But if you want a court to stop another company from using your mark or something deceptively close to your mark, then you will need to monitor unauthorized use of your mark and actively prevent companies from such use without your permission. This even includes preventing distributors, sales representatives and other “friendly” sales agents from using your marks in connection with the sale of your products, unless you have given them express permission (or license) to use your marks in their marketing materials. Courts generally don’t look kindly on companies that used to ignore certain unauthorized uses of their marks, but are now asking the court to stop a specific infringer.

Protect your copyrighted material.Companies often miss the opportunity to protect important product information and product descriptions by not acknowledging and enforcing their “copyright” in these materials. While we typically think of books, movies, and video games when we think of copyrighted materials, in business “copyrighted” materials may include original product descriptions of your products or services, photos or drawings of those products that the company paid for, detailed installation manuals, and even product names if the name is creative and not descriptive. You are not required to register your “original works of authorship” with the United States Patent and Trademark Office (the “USPTO”) in order to own copyright in such materials. But copyright registration allows the owner the right to recover additional damages and attorneys’ fees for copyright infringements. Again, courts will be less likely to recognize a claim of copyright infringement if the copyright owner has been lax in enforcing their copyright. Therefore, consistently enforcing your copyright in original company documents against all infringers, large and small, is essential to a legal action to enforce that right in the courtroom.

Protect your trade secrets. Protecting your trade secrets requires an even greater effort than the law enforcement action required for your trademarks and copyrighted materials. This is because trademarks and copyrighted materials are meant to be distributed openly – you want the world to see these items and be influenced by them. Trade secrets, on the other hand, generally consist of confidential business information that you want to prevent the general public (especially your competitors) from seeing. Trade secrets often include marketing plans, price information and pricing formulas, new product designs, production methods, customer profiles and, in limited cases, supplier information.

The definition of a trade secret varies from state to state, and US courts are inconsistent in their determination of what constitutes a legitimate trade secret. For example, many courts have ruled that pricing information cannot be a trade secret because potential customers regularly receive quotes without first being asked to sign a non-disclosure agreement (a “NES”). Therefore, some courts have concluded that pricing information – although crucial to a company’s sales strategy – cannot be considered a trade secret because it is openly shared with customers and customers. potentials.

But almost every US court agrees on one important point: your company won’t be allowed to claim confidential information as a trade secret unless it has established a clear policy to limit access to your confidential information and that it has implemented this policy rigorously. This means that every reasonable effort should be made to limit confidential information to only those employees and agents who need it to perform their job duties. This means not only marking confidential documents as “Confidential, Not for General Distribution” and requiring passwords to access such confidential information, but also limiting access to computer files and drives, so that confidential information is not not accessible to all employees or departments. So, for example, the annual marketing plan is kept on a secure drive accessible only to the sales department, while the product development plans are kept on a separate secure drive to which only members of the engineering department have access.

When it comes to protecting your company’s intellectual property, you need to make sure you’re in the best possible position to ask the court to stop infringers and infringers from harming your company and its reputation. To do this, you need to put in place a practical and effective plan today to enforce your intellectual property rights.

For more information about protecting your company’s intellectual property, please register to attend the firm’s in-person seminar scheduled for October 20, 2022 in Novi, Michigan. Two separate sessions of the seminar will take place on October 20. The morning session will be conducted in English and the afternoon session will be conducted in Japanese.

The content of this article is intended to provide a general guide on the subject. Specialist advice should be sought regarding your particular situation.

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