US Armed Forces Step Up Efforts to Enforce Trademarks

USMC
As reported by the New York Times, branches of the US armed forces are increasing their efforts to enforce military trademarks.

Numerous commercial products and services not actually associated with the military make use of military logos and mottos.

These products include insignia for the “Star Fleet Marines,” sold on a Star Trek fan site, as well as Marine-logo underwear and “Leathernecks” toilet wipes.

The fan site agreed to remove the Marine logo from its products but continued to use the marine name, as seen above.  (The name “marine” is descriptive of a type of military unit and is not unique to the US Marine Corps.)

The Pentagon has responded to the use of military-related marks by having its trademark attorneys send “cease-and-desist” letters to infringers.

The Marines already hold at least 68 registered trademarks and are continuing to get more, at an increasing pace: one mark in 2003, four in 2008, and nine from 2010 to 2011.

See Also:  US Navy Tops Fortune 500 Companies in Patents

In 2013 The Marines licensed the trademark, “Pain is weakness leaving the body,” for use on water bottles.

See Also: What Is A Trademark? 

Walt Disney Co. tried to register the mark “SEAL Team Six” for items including toys, videogames, snow globes, and Christmas stockings – two days after the unit’s mission to kill Osama bin Laden became public.

Disney said it was considering producing a TV series about the elite unit.

In response to Disney’s application, the Navy filed its own trademark registrations for “SEAL Team” and “Navy SEALs.”

Disney later agreed to withdraw its trademark application, “out of deference to the Navy.”

Registering military marks allows the US government to collect licensing revenues.  The Marines have collected $5.4 million in trademark licensing fees since 2009.

The Army increased its number of licenses from 120 in 2011 to 265 in 2013.

If you have questions about the use of military-related logos, symbols, or slogans, or if you are interesting in licensing government-owned intellectual property for consumer use, it’s always best to consult with an attorney to avoid potential trademark infringement.


Leech Tishman’s Intellectual Property attorneys are dedicated to the protection and monetization of your ideas and innovations. Many of our registered patent attorneys have advanced degrees enabling them to truly understand the complex technical details of your idea. Several bring engineering expertise, others molecular biology, manufacturing and business acumen to your trademark, copyright, patent prosecution and litigation and trade secret issues, both domestic and international.
Our clients range from individual inventors, authors and owners of creative works to entrepreneurial enterprises, government entities, mid-sized corporations and Global 500 companies with operations throughout North and Central America, Europe, South Asia, the Far East and Australia.
We have serviced a vast array of industries including automotive, cosmetics, e-commerce, electronics, entertainment, fashion, food and beverage, furniture, internet, manufacturing, networks, optics, publishing, software, technology, toys, and wireless.
We are committed to providing you with strategic counseling and personal attention throughout the entire life cycle of your project.
We are proud of our longstanding relationships with local innovation communities and enjoy working with entrepreneurs and businesses who wish to protect their ideas and good names.
Please contact us today for a free consultation at (855) UR- IDEAS or (626) 796-4000.

Disclaimer: We fully comply with all laws related to attorney marketing and this posting is considered an advertisement.

Photo Attribution: Seal of the United States Marine Corps. As a work of the U.S. federal government, the image is in the public domain.

Get the Facts About Patent Infringement

UNMPatent Co-Owner’s Refusal to Join Lawsuit Results in Dismissal

The US Court of Appeals for the Federal Circuit recently affirmed the dismissal of a patent infringement suit for lack of standing due to the failure to join a patent co-owner as plaintiff.

The case involves a US patent for a “Method for Manufacture of Quantum Sized Periodic Structures in Si Materials.”  The invention is intended for use in connection with manufacturing semiconductors and was derived from the contributions of four people, three of whom were employed by the University of New Mexico at the time of the invention. The fourth inventor, Draper, was employed by Sandia Corp.

In 1996, the four inventors executed a joint assignment of the invention to UNM.  In 2002, UNM assigned its own interest in the initial patent, US Patent S/N 5705321 (or the ‘321 patent) and a related patent, US Patent S/N 6042998 (or the ‘998 patent) to its wholly-owned licensing arm, STC.UNM.

In 2010, STC filed suit against Intel for infringement of the ‘998 patent. Intel asserted that STC could not enforce the ‘998 patent under the terms of the terminal disclaimer, which required identical ownership of both the ‘321 and ‘998 patents. STC contended that Sandia owned the ‘998 patent by reason of an assignment by Draper. Sandia refused to join the case, preferring “to take a neutral position with respect to this matter,” and the district court granted Intel’s motion to dismiss for lack of standing.

According to patent attorney, Laura Lloyd:

Researching all the inventors and owners of a patent before an infringement case is filed can prevent dismissals which are costly for the Plaintiff.

The district court reasoned that ownership rights must derive from inventorship, and because Draper did not co-invent any claims of the ‘998 patent (as distinct from the ‘321 patent) he had no interest in that patent to assign.

The district court explained that when a patent is co-owned, a co-owner seeking to enforce that patent must join all other co-owners as plaintiffs to establish standing. Without this joinder, a plaintiff cannot pursue a patent infringement suit. Accordingly, the Federal Circuit affirmed the district court’s dismissal for lack of standing.

If you have questions about patent ownership, please call today for a free initial consultation: 1 (855) UR-IDEAS or (626) 796-4000.


Leech Tishman’s Intellectual Property attorneys are dedicated to the protection and monetization of your ideas and innovations. Many of our registered patent attorneys have advanced degrees enabling them to truly understand the complex technical details of your idea. Several bring engineering expertise, others molecular biology, manufacturing and business acumen to your trademark, copyright, patent prosecution and litigation and trade secret issues, both domestic and international.
Our clients range from individual inventors, authors and owners of creative works to entrepreneurial enterprises, government entities, mid-sized corporations and Global 500 companies with operations throughout North and Central America, Europe, South Asia, the Far East and Australia.
We have serviced a vast array of industries including automotive, cosmetics, e-commerce, electronics, entertainment, fashion, food and beverage, furniture, internet, manufacturing, networks, optics, publishing, software, technology, toys, and wireless.
We are committed to providing you with strategic counseling and personal attention throughout the entire life cycle of your project.
We are proud of our longstanding relationships with local innovation communities and enjoy working with entrepreneurs and businesses who wish to protect their ideas and good names.

Photo Attribution: “The campus of the University of New Mexico, Los Alamos branch in Los Alamos, New Mexico” by Danski14 is licensed under CC A 3.0.

Disclaimer: We fully comply with all laws related to attorney marketing and this posting is considered an advertisement.

 

Proposed Lower Fees for Trademark Registrations May Save You Money

 

trademark lawFind Out How Potential Changes to Trademark Registrations    May Affect Your Business

The US Patent and Trademark Office (USPTO) is proposing a reduction of certain trademark fees.

The proposal includes a $50.00 reduction in filing fees for trademark, certification mark, collective membership mark, and collective trademark applications filed using the Trademark Electronic Application System (TEAS) if applicants authorize email communication and file electronically throughout the process. This will be known as a TEAS Reduced Fee (RF) application.

Currently the per-class filing fees for the registration of a trademark is $375 for a paper application, $325 for electronic filing using TEAS, $275 for using TEAS Plus, and $400 per-class for renewals.

The proposal includes reducing fees for filing TEAS Plus registration applications and TEAS renewal applications of trademark registrations.  The reduction in fees for a TEAS Plus application would be $50 and a TEAS renewal by $100 and the filing fees for paper filings would not be changed.

According to the USPTO, filing through TEAS and communicating via email expedite processing of trademark applications, shorten the pendency of applications, minimize manual processing and the potential for data entry errors, and increases efficiency for both applicants and the USPTO resulting in an operating reserve.

Trademark Attorney, Laura Lloyd advises

While the proposal to reduce fees will be a benefit, I would advise clients not to wait to file a trademark in the hopes of getting a reduced filing rate because the date of filing can be crucial in future disputes.”

If approved, the new rates would take effect in 2015.

Please contact us today for a free consultation at (855) UR- IDEAS or (626) 796-4000.


 

Leech Tishman’s Intellectual Property attorneys are dedicated to the protection and monetization of your ideas and innovations. Many of our registered patent attorneys have advanced degrees enabling them to truly understand the complex technical details of your idea. Several bring engineering expertise, others molecular biology, manufacturing and business acumen to your trademark, copyright, patent prosecution and litigation and trade secret issues, both domestic and international.
Our clients range from individual inventors, authors and owners of creative works to entrepreneurial enterprises, government entities, mid-sized corporations and Global 500 companies with operations throughout North and Central America, Europe, South Asia, the Far East and Australia.
We have serviced a vast array of industries including automotive, cosmetics, e-commerce, electronics, entertainment, fashion, food and beverage, furniture, internet, manufacturing, networks, optics, publishing, software, technology, toys, and wireless.
We are committed to providing you with strategic counseling and personal attention throughout the entire life cycle of your project.
We are proud of our longstanding relationships with local innovation communities and enjoy working with entrepreneurs and businesses who wish to protect their ideas and good names.
Disclaimer: We fully comply with all laws related to attorney marketing and this posting is considered an advertisement.

Photo Attribution: “The south side of the James Madison Building in Alexandria, Virginia” by Coolcaesar under CC-SA by 3.0.

 

Court Says Patent Mediators Are Subject to Same Neutrality and Disclosure Rules as Judges

mediation alternative dispute resolutionThe US Court of Appeals for the Federal Circuit ruled that a mediator in a patent infringement dispute has a duty to disclose a relationship with the law firm representing one of the parties.

In the case of CEATS, Inc. v. Continental Airlines, et al., CEATS brought a patent infringement suit against Continental and other airlines and parties for alleged infringement of its patents.  After the parties failed to settle the case during court-ordered mediation, the case went to trial.

A jury found that CEATS’s patents were infringed but invalid.

CEATS filed a motion for relief from the judgment based on an undisclosed relationship between the court-appointed mediator and the law firm representing one of the defendants.

Previously, the law firm that one of the parties’ lawyers worked for had arbitrated a case before the same mediator and he had made an award of $22 million to the firm’s client.  Discovery in that case also disclosed an “enduring social relationship” between the mediator and one of the firm’s attorneys involving “expensive outings and gifts.”

The district court denied this motion and CEATS appealed.

The Federal Circuit disagreed with the district court’s finding that the mediator had no duty to disclose his relationship with one of the firms, but found that this did not warrant relief from judgment.

The Circuit Court noted:

Courts must feel confident that they are referring parties to a fair and effective process when they refer parties to mediation. And parties must be confident in the mediation process if they are to be willing to participate openly in it. Because parties arguably have a more intimate relationship with mediators than with judges, it is critical that potential mediators not project any unreasonable hint of bias or partiality. Indeed, all mediation standards require the mediator to disclose any facts or circumstances that even reasonably create a presumption of bias.

The court noted that this duty was similar to the recusal requirements imposed on judges.

The court found that the mediator should have disclosed his involvement in the previous case but that this was not an “extraordinary circumstance” where relief from judgment was warranted.

The court noted that CEATS was able to fully and fairly present its case to an impartial judge and jury and thus suffered no injustice as a result of the mediator’s failure to disclose.

If you are considering mediation or another form of alternative dispute resolution for your patent dispute, contact our office to arrange a free initial consultation with one of our attorneys.

Please Like us on Facebook and Follow us on Twitter for the most current intellectual property news.


Leech Tishman’s Intellectual Property attorneys are dedicated to the protection and monetization of your ideas and innovations. Many of our registered patent attorneys have advanced degrees enabling them to truly understand the complex technical details of your idea. Several bring engineering expertise, others molecular biology, manufacturing and business acumen to your trademark, copyright, patent prosecution and litigation and trade secret issues, both domestic and international.
Our clients range from individual inventors, authors and owners of creative works to entrepreneurial enterprises, government entities, mid-sized corporations and Global 500 companies with operations throughout North and Central America, Europe, South Asia, the Far East and Australia.
We have serviced a vast array of industries including automotive, cosmetics, e-commerce, electronics, entertainment, fashion, food and beverage, furniture, internet, manufacturing, networks, optics, publishing, software, technology, toys, and wireless.
We are committed to providing you with strategic counseling and personal attention throughout the entire life cycle of your project.
We are proud of our longstanding relationships with local innovation communities and enjoy working with entrepreneurs and businesses who wish to protect their ideas and good names.
Please contact us today for a free consultation at (855) UR- IDEAS or (626) 796-4000.

Disclaimer: We fully comply with all laws related to attorney marketing and this posting is considered an advertisement.

Photo Attribution: “A logo for Mediation Cabal. Arm cropped at circle boundary” by Atyndall is licensed under CC-A-SA 3.0.

Tomato? Tomahto? Is There One Right Way to Pronounce a Trademark?

Tomato Trademark PronunciationFederal Circuit Says No When Trademark is Not a Recognized Word

The case arose out of a dispute between StonCor and Specialty Coatings, competitors in the market for “epoxy coatings used on concrete floors.”

In 1992, StonCor registered the mark STONSHIELD with the US Patent and Trademark Office in connection with “floors and flooring systems comprised of epoxy resins . . . for use in industrial and institutional applications,” among other products.

In 2008, Specialty Coatings applied to register the trademark “ARMORSTONE” in connection with “[e]poxy coating for use on concrete industrial floors,” among other products. StonCor opposed registration of the ARMORSTONE mark on six grounds.  Among other things, it argued that:

  • The USPTO should not allow registration of the ARMORSTONE mark because consumers would likely confuse it with STONSHIELD when used in connection with epoxy floor products.
  • ARMORSTONE is not eligible for registration because the mark is merely descriptive.

The Trademark Trial and Appeal Board (TTAB) analyzed the likelihood of confusion based on thirteen factors, the relevant ones being:

  • The similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation and commercial impression, and
  • The number and nature of similar marks in use on similar goods.

With regard to the first factor, the TTAB considered how consumers would pronounce “STONSHIELD.”

StonCor presented evidence that “ston” would be pronounced like “stone.”

However, the TTAB reasoned that the spelling of the word and “ordinary rules of English” dictated that the word would be pronounced with a short “o” as in “on.”

Taking this and other factors into consideration, the TTAB found there was no likelihood of confusion.

See Also:  Monetize Your Ideas — Trademarks

StonCor appealed.

The Federal Circuit found that the TTAB had erred by failing to credit StonCor’s evidence that consumer would pronounce “STON” as “stone”:

Where a trademark is not a recognized word and the weight of the evidence suggests that potential consumers would pronounce the mark in a particular way, it is error for the Board to ignore this evidence entirely and supply its own pronunciation.

However, the court concluded that this was harmless error and that other factors supported the TTAB’s conclusions.   The Federal Circuit held that there is no single correct way to pronounce a trademark that is not a recognized word.

If you have questions about your whether your trademarks would be considered confusingly similar to a competitor’s, contact our office for a free initial consultation.


Please Like us on Facebook and Follow us on Twitter for the most current intellectual property news.

Leech Tishman’s Intellectual Property attorneys are dedicated to the protection and monetization of your ideas and innovations. Many of our registered patent attorneys have advanced degrees enabling them to truly understand the complex technical details of your idea. Several bring engineering expertise, others molecular biology, manufacturing and business acumen to your trademark, copyright, patent prosecution and litigation and trade secret issues, both domestic and international.
Our clients range from individual inventors, authors and owners of creative works to entrepreneurial enterprises, government entities, mid-sized corporations and Global 500 companies with operations throughout North and Central America, Europe, South Asia, the Far East and Australia.
We have serviced a vast array of industries including automotive, cosmetics, e-commerce, electronics, entertainment, fashion, food and beverage, furniture, internet, manufacturing, networks, optics, publishing, software, technology, toys, and wireless.
We are committed to providing you with strategic counseling and personal attention throughout the entire life cycle of your project.
We are proud of our longstanding relationships with local innovation communities and enjoy working with entrepreneurs and businesses who wish to protect their ideas and good names.
Please contact us today for a free consultation at (855) UR- IDEAS or (626) 796-4000.

Disclaimer: We fully comply with all laws related to attorney marketing and this posting is considered an advertisement.

Photo Attribution:  “Flash-lit Macro Tomatoes” by The Ewan is licensed by CC BY-SA 2.0 Generic.

Trade Secrets: South Korean Chemical Firm to Pay $2 Million Penalty

trade secretsSouth Korean Company Attempts to Steal Trade Secrets from DuPont

The US Department of Justice said that Toray Chemical Korea, Inc. agreed to pay the penalty and cooperate with a US government investigation of its activities.

Toray also agreed to implement an improved compliance and ethics program for its company. In return, the Department of Justice agreed to drop the case in two years if Toray abides by its agreement.

The criminal complaint against Toray was filed at the same time as the deferred prosecution agreement.

DuPont and Toray have also agreed to resolve any potential civil claims DuPont might have for attempted trade secret theft.

The Justice Department said that Toray, formerly doing business as Woongjin Chemical Co. Ltd., attempted to steal trade secrets from DuPont so that it could develop a product to compete with DuPont’s Nomex fiber.

Nomex is a fire-resistant material used in firefighting gear (such as the hood shown in the photo) and other applications.

The US Attorney’s office said that during 2011 Woongjin sought to improve its own Arawin fiber product by hiring, and attempting to hire, former DuPont employees as consultants.

The office said that two former DuPont employees met with Woongjin management in South Korea.  The managers asked the former employees to reveal details about DuPont’s processes.

One of the former employees offered to obtain the information from a current DuPont employee when he returned to the US.  However, he apparently did not actually do so.

A Woongjin executive reportedly also told an employee to obtain a sample of the short-cut fiber, called “floc,” used to make Nomex paper, by either legal or illegal means.

DuPont became aware of these efforts and contacted federal authorities.  FBI agents then interviewed the former DuPont employees who had met with Woongjin.

If you have questions about seeking a criminal investigation of trade secret theft, contact our office for a free initial consultation.


Please Like us on Facebook and Follow us on Twitter for the most current intellectual property news.

Leech Tishman’s Intellectual Property attorneys are dedicated to the protection and monetization of your ideas and innovations. Many of our registered patent attorneys have advanced degrees enabling them to truly understand the complex technical details of your idea. Several bring engineering expertise, others molecular biology, manufacturing and business acumen to your trademark, copyright, patent prosecution and litigation and trade secret issues, both domestic and international.
Our clients range from individual inventors, authors and owners of creative works to entrepreneurial enterprises, government entities, mid-sized corporations and Global 500 companies with operations throughout North and Central America, Europe, South Asia, the Far East and Australia.
We have serviced a vast array of industries including automotive, cosmetics, e-commerce, electronics, entertainment, fashion, food and beverage, furniture, internet, manufacturing, networks, optics, publishing, software, technology, toys, and wireless.
We are committed to providing you with strategic counseling and personal attention throughout the entire life cycle of your project.
We are proud of our longstanding relationships with local innovation communities and enjoy working with entrepreneurs and businesses who wish to protect their ideas and good names.
Please contact us today for a free consultation at (855) UR- IDEAS or (626) 796-4000.

Disclaimer: We fully comply with all laws related to attorney marketing and this posting is considered an advertisement.

Photo Attribution: “2007 Toronto Fire Service” by Sherurcij is licensed by Creative Commons Attribution 2.5 Generic.

Federal Circuit Kills Patent Based on Inequitable Conduct

Blood Pressure Patent

The Federal Circuit Court of Appeals upheld a ruling that a patent for a method for making blood pressure drugs was unenforceable due to inequitable conduct by the founder and chairman of the company that owned the patent.

The patent at issue was granted in 2004. Dr. Bernard Charles Sherman, the founder and chairman of Apotex, wrote the application and is the sole inventor on the patent.

Dr. Sherman has written about 100 other patent applications for Apotex and directs all of its patent litigation activities.

The patent covers a process for making tablets used to treat hypertension (high blood pressure). Specifically, the process includes a method for stabilizing ACE inhibitors.

The court noted that several other methods for stabilizing ACE inhibitors were known in the prior art before Dr. Sherman filed his patent application. The application was rejected three times at the US Patent and Trademark Office for reasons of obviousness.

Dr. Sherman then submitted an expert declaration from a Dr. Michael Lipp that a person “skilled in the art” would not find the method claimed in the patent to be obvious. The challenged claim in the patent was modified and the patent was finally granted.

Apotex sued UCB for patent infringement.

The district court ruled that the patent was unenforceable due to Dr. Sherman’s inequitable conduct. The court found that he misrepresented the nature of the defendant’s drugs, that he withheld prior art references, and that he submitted “results” of experiments he never actually conducted.

Dr. Sherman admitted at trial that the experiments “were made up in his head.”

The court noted that Dr. Sherman failed to inform Dr. Lipp of the true facts and thus knowingly perpetuated his mischaracterizations of the prior art.

Apotex appealed the court’s holding that the patent was unenforceable.

The Federal Circuit upheld the lower court’s decision, finding that Dr. Sherman had “breached his duty of candor, good faith, and honesty before the PTO.”

According to Patent Attorney, Laura Lloyd:

This case illustrates how important it is to keep the Patent Office (USPTO) informed of any prior references that an inventor knows of.

Inequitable Conduct after Therasense

Invalidating a patent based on inequitable conduct before the USPTO has been relatively rare since 2011, when the Federal Circuit’s ruling in the Therasense case made such conduct more difficult to prove.

The Federal Circuit had become concerned that defendants in patent cases had overused the defense.

Under Therasense, a defendant must show that a patent holder deliberately withheld prior art from the USPTO and that the disclosure of the prior art would have led the USPTO to disallow the patent claim.

The Risks of Withholding Prior Art

Intentionally withholding information from the Patent Office is unethical, usually self-defeating, and often fruitless.

Undisclosed prior art can be uncovered by various parties and at various stages.  It may be uncovered during the patent examination process or during litigation after a patent has been issued.

Some companies have even turned to crowdsourcing to detect prior art, as in contests run by Patexia.

If you are ready to prepare a patent application for your invention, contact our office to arrange a free initial consultation.

Please Like us on Facebook and Follow us on Twitter for the most current intellectual property news.


Leech Tishman’s Intellectual Property attorneys are dedicated to the protection and monetization of your ideas and innovations. Many of our registered patent attorneys have advanced degrees enabling them to truly understand the complex technical details of your idea. Several bring engineering expertise, others molecular biology, manufacturing and business acumen to your trademark, copyright, patent prosecution and litigation and trade secret issues, both domestic and international.
Our clients range from individual inventors, authors and owners of creative works to entrepreneurial enterprises, government entities, mid-sized corporations and Global 500 companies with operations throughout North and Central America, Europe, South Asia, the Far East and Australia.
We have serviced a vast array of industries including automotive, cosmetics, e-commerce, electronics, entertainment, fashion, food and beverage, furniture, internet, manufacturing, networks, optics, publishing, software, technology, toys, and wireless.
We are committed to providing you with strategic counseling and personal attention throughout the entire life cycle of your project.
We are proud of our longstanding relationships with local innovation communities and enjoy working with entrepreneurs and businesses who wish to protect their ideas and good names.
Please contact us today for a free consultation at (855) UR- IDEAS or (626) 796-4000.

Disclaimer: We fully comply with all laws related to attorney marketing and this posting is considered an advertisement.

Photo Attribution: “Digital Blood Pressure Monitor” by Solaris2006 is used under the GNU Free Documentation License.

 

Risk Management Assessment & Your IP

IP Risk Management

Risk Management Assessment for Your Business

America is a litigious society. Businesses limit their business-related risks through insurance. However, for most business professionals, dealing with risk management still remains fraught with uncertainties.

Insurance Policies and Contract Language

In this environment, it is imperative that business executives develop a working knowledge of the various insurance policies on-hand, and find out whether there are gaps in coverage that have to be closed.

Furthermore, contracts with clients and vendors contain clauses that can shift major risks to or from your company and interplay with your policies.  Both your insurance policies and contracts need to be thoroughly reviewed to ensure that you close any gaps in coverage.

This is especially true in the intellectual property arena.

Risk Management Assessment

cropped-lt-twitter1.jpg

Leech Tishman offers a variety of insurance-related legal services to fit your needs. We recommend that each company undergo a periodic Risk Management Assessment by our insurance coverage attorney, Ray Hughes.

 

As part of the Assessment, we will perform the following tasks:

Speak to management about the industry it serves to gain an understanding of its risks.
Review loss runs from prior years to understand the scope of the risks faced by the company.
Review the company’s current insurance policies, declarations, limits, and endorsements and compare the coverage provided to the company’s risk exposure.
Review the company’s contracts with major clients and repeat vendors to ensure that those contracts contain the appropriate risk management language such as indemnification and insurance coverage provisions.
Review the overall costs of the company’s risk management program, including insurance premiums, deductible and SIR structures, and other factors to help manage its budget.
Review suitability of possible self-insurance, e.g., through captive insurance programs for tax benefits, risk management, and other benefits.
Answer specific questions and concerns from the company regarding its coverage and exposures.

 

Crisis Management

Another advantage of this service is that, by the end of the exercise,  you would have claims counsel that is already familiar with your business. You will be able to call upon us for initial advice in the event of a large loss during the policy period.

For large losses, it is important to understand the factors that need to be prioritized immediately, such as responding to media requests for information, preserving evidence, reviewing relevant contracts, notifying certain insurance carriers, and responding to investigations by regulatory entities.

Leech Tishman can also help with analysis of the claim itself, including any proposed settlements by performing a review of the purported liability and damages and seeing what coverage is out there for your loss.

Act Now

Our Risk Management Assessment can effectively be performed at any point during your policy period, but changes take time to plan and implement.  Therefore, it behooves you to act early.

Contact your Leech Tishman attorney today.


Leech Tishman’s Intellectual Property attorneys are dedicated to the protection and monetization of your ideas and innovations. Many of our registered patent attorneys have advanced degrees enabling them to truly understand the complex technical details of your idea. Several bring engineering expertise, others molecular biology, manufacturing and business acumen to your trademark, copyright, patent prosecution and litigation and trade secret issues, both domestic and international.
Our clients range from individual inventors, authors and owners of creative works to entrepreneurial enterprises, government entities, mid-sized corporations and Global 500 companies with operations throughout North and Central America, Europe, South Asia, the Far East and Australia.
We have serviced a vast array of industries including automotive, cosmetics, e-commerce, electronics, entertainment, fashion, food and beverage, furniture, internet, manufacturing, networks, optics, publishing, software, technology, toys, and wireless.
We are committed to providing you with strategic counseling and personal attention throughout the entire life cycle of your project.
We are proud of our longstanding relationships with local innovation communities and enjoy working with entrepreneurs and businesses who wish to protect their ideas and good names.
Please contact us today for a free consultation at (855) UR- IDEAS or (626) 796-4000.

Disclaimer: We fully comply with all laws related to attorney marketing and this posting is considered an advertisement.

 

 

Protecting Trade Secrets Is Crucial To Your Bottom Line

rollofbillsManaging your patents, trade secrets, know-how, copyrights and trademarks can make the difference between fortune and failure.

Protecting valuable expertise as a trade secret can sometimes be a better choice than seeking patent protection.

Following a trade secret protection program prevents competitors from using your information, or know-how, and allows you to own it perpetually.

Steps You Can Take

    • Identify Your Trade Secrets
    • Establish In-House Procedures for Handling Trade Secrets
    • Prepare Appropriate Employment and Confidentiality Agreements

How We Can Help

To enhance the return on your investment in trade secrets, we can help you negotiate the sale or license of your commercially marketable trade secrets under favorable terms.

Protecting your business against claims of trade secret misappropriation is an important aspect of our expertise.  To protect you, we can:

    • Analyze the potential for adverse claims of trade secret misappropriation
    • Advise you on appropriate courses of action
    • Possibly encourage you to develop parallel technology using “clean room” techniques
    • Negotiate a license to use competing technology
    • Use public domain technology to avoid trade secret claims

Consider the case of Hallmark’s PowerPoint Trade Secret Win Over Competitors

Court Affirms $31 Million Hallmark Trade Secrets Verdict

The Eighth Circuit Court of Appeals affirmed a $31 million jury verdict for Hallmark Cards, Inc. in a case against a private equity firm that Hallmark said misappropriated its confidential information.

The court said that the jury could properly conclude that Hallmark’s PowerPoint presentations were trade secrets.

Hallmark, the greeting card manufacturer, retained Monitor, a consulting firm, to research consumer behavior in the greeting card business.  Monitor created a series of PowerPoint presentations containing its findings.

Confidentiality agreements between Hallmark and Monitor prohibited the consulting firm from sharing its findings with anyone else.

Monitor was associated with Clipper, a private equity firm.  Clipper’s investment strategy was “explicitly predicated on harnessing Monitor’s network of consulting clients.”

Shortly after Hallmark hired Monitor, Clipper became interested in acquiring RPG, another greeting card company.  Clipper asked several Monitor consultants to provide the research on the greeting card market that Monitor had compiled for Hallmark.

The consultants provided five of the PowerPoint presentations, and Clipper used that information to price its bid for RPG and to finance its bid.

Clipper told investors:

[T]hrough [Monitor's] unparalleled experience in the greeting cards industry including the work they have done with Hallmark, [Clipper] can derive growth and produce high cash flow from RPG that others cannot.

After Clipper bought RPG, Hallmark became suspicious that Monitor had disclosed the proprietary research.  Hallmark then initiated arbitration.

Because Monitor and Clipper had taken pains to cover their tracks, there was only limited evidence available of how they had shared information.

The arbitrator initially found that Monitor had used Hallmark’s information “carelessly, although without bad motive” and awarded Hallmark $4.1 million in damages.  (This amount was the $3.2 million fee Hallmark had paid Monitor for its work, plus $900,000 to account for the risk that Hallmark’s other trade secrets might be compromised in future due to Monitor’s breach of the NDA.)

The arbitrator also ordered Monitor to hire an independent forensic investigator to search its computer logs for Hallmark’s proprietary information.

This search turned up emails containing five of the PowerPoint presentations, and this showed that Monitor had willfully provided the information to Clipper.

The court re-opened the arbitration.  Hallmark and Monitor eventually settled for $16.6 million.

Hallmark then sued Clipper in federal court.  A jury awarded it $21.3 million in compensatory damages and $10 million in punitive damages.

Clipper argued on appeal that the PowerPoints did not meet the Missouri definition of trade secrets, but the Eighth Circuit disagreed.

If you have questions about what types of information can be considered trade secrets, contact our office for a free initial consultation.


Please Like us on Facebook and Follow us on Twitter for the most current intellectual property news.

Leech Tishman’s Intellectual Property attorneys are dedicated to the protection and monetization of your ideas and innovations. Many of our registered patent attorneys have advanced degrees enabling them to truly understand the complex technical details of your idea. Several bring engineering expertise, others molecular biology, manufacturing and business acumen to your trademark, copyright, patent prosecution and litigation and trade secret issues, both domestic and international.
Our clients range from individual inventors, authors and owners of creative works to entrepreneurial enterprises, government entities, mid-sized corporations and Global 500 companies with operations throughout North and Central America, Europe, South Asia, the Far East and Australia.
We have serviced a vast array of industries including automotive, cosmetics, e-commerce, electronics, entertainment, fashion, food and beverage, furniture, internet, manufacturing, networks, optics, publishing, software, technology, toys, and wireless.
We are committed to providing you with strategic counseling and personal attention throughout the entire life cycle of your project.
We are proud of our longstanding relationships with local innovation communities and enjoy working with entrepreneurs and businesses who wish to protect their ideas and good names.
Please contact us today for a free consultation at (855) UR- IDEAS or (626) 796-4000.

Disclaimer: We fully comply with all laws related to attorney marketing and this posting is considered an advertisement.

Photo Attribution:  “Hallmark Cards logo” by Andrew Szoeke is in the Public Domain.

In Case You Missed It

Weekly Round Up          

Week of September 1 -September 5

Each Saturday we provide links to the previous week’s posts for your convenience.

Trade Secrets: Toyota Says Former Contractor Took Data Hostage

Fossil Told to Pay Attorneys’ Fees for Frivolous Trademark and Patent Defense

When Does Trade Secret Theft Become a Federal Crime?

International IP:  Victoria’s Secret Loses “Pink” Trademark Case in UK

Trade Secret Theft: Feds Seek Sentencing for Drone Leak