You’re In Business, But Are You Protected? A Quick Overview: How to Make Sure Your Proprietary Information and Intellectual Property Remain Yours
By: Talin Haroutunian, Esq.
Business Counsel Group, P.C. · www.businesscounselgroup.com
August 5, 2015
Taking extra measures to protect proprietary information and intellectual property isn’t on most entrepreneurs immediate “To Do” list, but it should be. Your client list, marketing plans/strategies, the designs for the look and feel of your store/product, your logo/brand—these are all things that make up your business, and unless you’ve protected them, they may be taken right from under you.
Protecting Your Proprietary Information. Proprietary information is information that is secret to your business. It includes your client list, the recipe to your secret sauce, your method for production of a particular good, your pricing formula. There are many steps you can and should take to ensure this information stays secret:
- Keep the information to yourself. Don’t divulge information of this type to anyone unless you have to, and even then, only when you have signed non-disclosure agreements in place.
- Enter into non-disclosure agreements (“NDA”). Whether you’re speaking to possible business partners, investors, or independent contractors, keep information to yourself until NDA’s are signed. Even then there’s no guarantee that your information will remain protected, but at least you’ve taken the proper steps, and if push comes to shove, you can pursue legal action.
- Enter into proper agreements with your employees, independent contractors, and interns. In addition to NDAs, confidentiality agreements are key. You should also have appropriate employment policies and a handbook, outlining your proprietary information.
- Password-protect your computers and key documents. The harder you make it to access the information, the more shielded you are against corporate raiders. It happens all the time, you hire someone you think you can trust, then they steal away your trade secrets and set up shop across the way or join a competitor. Even with passwords, there’s no guarantee that your information will remain protected, but this step will ensure you have legal recourse against any person who misappropriates your proprietary information.
Protecting Your Intellectual Property. Intellectual property may be registered with the US Copyright Office and the US Patent and Trademark Office. Where to register depends on what it is you’re trying to register. Registration in the US isn’t mandatory, and common law rights to intellectual property exist. But if you want the ability to enforce your rights in a court of law against possible infringers, then you must register.
Depending on the type of business you’re running, registration in the US may be insufficient, and you may need to seek registration in foreign countries. For instance, if you sell in the US but manufacture abroad, it’s important to register in the US as well as the country where you manufacture. To protect against counterfeit goods, you should also register your registered marks with US Customs and Border Patrol, as well as the customs and border patrol agency in the country of origin. And of course, registration has no value unless you police your mark, sending cease and desist letters when necessary.
In addition to registration, you should enter into appropriate agreements with any third parties with whom you deal, including those in your supply chain, to ensure your registered intellectual property remains yours. Among other things, this may include NDA’s, distribution agreements, and manufacturing agreements.
Some famous brands that have benefited (and suffered) from having registered (or not registered) their marks include:
- Tory Burch: recently won a $41.2 Million in damages against infringers;
- Michael Jordan: recently lost a case in China against a Chinese entity who registered the Chinese equivalent name to Jordan prior to Michael Jordan having registered his mark, and consequently Michael Jordan doesn’t have rights to his own name in China;
- Gucci: filed numerous suits against Guess, claiming trademark infringement. Having won in some courts, and lost in others, the costly lesson learned is that vigilantly policing is key as some courts attributed the losses to Gucci’s failure to quickly pursue possible infringement; and
- Converse: filed numerous suits to protect its Chuck Taylor designs, winning some and losing others. The purpose of the numerous suits is to let businesses know they intend to police their registered marks to the fullest.
The above is a quick overview of various steps you can take, and is by no means exhaustive. What strategy to take to protect your business and brand depends on various factors. Understanding and mitigating the risks your business faces if you’re unprotected is a critical factor in building a successful long standing business.
Business Counsel Group is ready to assist in corporate and brand protection. You may reach Talin via email at Talin.Haroutunian@businesscounselgroup.com.
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