January 2007 / Issue 13

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Legal Briefs

Safeguarding Your Intellectual Property At Global Pet Expo

by Shari L. Klevens

As most APPMA members are aware, attendance at trade shows can present problems associated with the infringement or loss of intellectual property rights.  To avoid these issues, members should take steps to ensure that disclosure of intellectual property at Global Pet Expo and other public forums does not weaken the value of any intellectual property assets. 

Types of Intellectual Property

There are four legally recognized categories of intellectual property:

(1) patents
(2) trademarks
(3) copyrights
(4) trade secrets

Below is a summary of each of these types of intellectual property, which are likely to be implicated at trade shows, and the specific issues related to disclosures in those settings.

1. Patents

A patent is an invention, registered with the government, that gives the owner a monopoly for a fixed period of time to exclude others from making, using, selling, or importing the claimed invention.  A patent generally lasts for twenty years from the filing date of the application.  In exchange for this limited monopoly, the patentee must publicly disclose certain details of the invention to the public.  However, the patent “on sale bar” provides that a person is not entitled to a patent if the invention was described in a printed publication, is in use, is offered for sale, or is sold, more than one year before the person files a patent application for the invention.  The on sale bar applies to printed publications whether inside or outside the United States, but only applies to products used, sold, or offered for sale within the United States.  Although the body of law related to on sale bars is very complex, it is clear that an invention disclosure or offer for sale at a trade show can result in an on sale bar.  Specifically, members likely attend trade shows to stimulate interest in new products so that customers will buy them.  If the member takes orders for the product at the trade show, it is more likely that the product is “on sale” resulting in the beginning of the one year grace period.  It does not matter whether any customers actually buy the product at the trade show.  Rather, the grace period can begin simply by offering the product for sale.  If, however, the product is not ready to be sold but is merely marketed and described at the trade show while the product is still being developed, it is possible that the one year grace period has not begun.  

To avoid an on sale bar, the safest practice is to file patent applications early, and make no public disclosure, use, offer for sale, or sale of an invention prior to filing of a patent application.  If early disclosure of potentially patentable technology must be made, however, the safest course of action is to employ confidentiality agreements that can be signed by individuals who will receive detailed information about a potentially patentable invention.

2. Trademarks

Trademarks and service marks are words, names, symbols, or devices used by manufacturers of goods and providers of services to identify their goods and services, and to distinguish their goods and services from goods manufactured and sold by others.  Examples of trademarks include words (Kodak®), designs (logos), slogans (We love to fly and it shows®), characters (Pillsbury® Dough Boy), sounds (the Harley-Davidson® motor sound), and product shapes and configurations (the Coca-Cola® bottle).  It is important to note that trademark rights generally arise out of the use and/or registration of a mark in connection only with specific products or services.

While trademark registration is not required to claim trademark rights, there are several advantages of trademark registration with the United States Patent and Trademark Office.  First, registration establishes a public record of the trademark right.  Second, registration of a trademark gives the owner nationwide priority over all other trademark users, even outside the geographic area in which the owner uses the mark.  Third, after five years of continuously using a mark, a party can apply for incontestability status, which if granted, eliminates most challenges to the mark by third parties.  Fourth, registration creates a presumption in favor of the trademark owner that the mark is valid.  Fifth, with a federal trademark registration, a trademark owner is eligible to recover an infringement award for triple the amount of its actual damages, plus attorneys fees.  Sixth, registration allows the owner of the trademark to record the registration with the U. S. Customs Service for protection against the importation of infringing copies.  Finally, a registered trademark provides a tool to stop cybersquatters from taking your trademark for a domain name.

Whether a mark is registered or not, trademark marking can be used to either identify a word, logo, slogan, design or other source indicator as a trademark or to describe some aspect of the mark (e.g., its ownership).  For instance, certain symbols, when used in conjunction with a mark, give notice to the public that the owner is claiming trademark rights in the material preceding the symbol.  The TM symbol may be used when a party claims trademark rights in a mark, but the mark has not been registered with the United States Patent and Trademark Office.  The  ® is used to indicate that the mark has been so registered.  Either symbol is typically placed in the top left- or right-hand corner of a mark. While marking is not mandatory, it is recommended.  Marking serves as notification of your rights to the mark and informs others that any use of the mark by another may be considered unauthorized.  However, it is unlawful to use the ® symbol in association with a mark when that mark is not registered.

Failure to mark a trademark limits the remedies available to a trademark owner in a lawsuit.  In addition, marking is required for a party to recover damages and profits in a suit for infringement under the Lanham Act, unless the defendant had actual notice of the registered mark.  Remember, however, that trademark rights vary from country to country, so before using a mark or asserting rights in any country, take steps to verify these rights.  Proper use of trademark symbols should reduce the risk that materials subject to trademark rights will be unlawfully copied.

3. Copyrights

Copyright protection is afforded to any author of a work, where such work is an original work of authorship that is fixed in a tangible medium.  Examples of work subject to copyrights are brochures, marketing materials, and other written products.  Copyrights do not protect an underlying invention, but merely the documents that are used to describe the invention.  Only the author or those deriving their rights through the author can rightfully claim copyright.  If any employee creates a work within the scope of his or her employment, the employer and not the employee is considered to be the author.  Generally, an owner of a copyrighted work need not register the work with the United States Copyright Office to receive copyright protection.  The copyright in the work of authorship immediately becomes the property of the author who created the work.

While copyright registration is not required to claim copyright in a work, there are several benefits to registering a work with the Copyright Office in a timely manner.  First, registration establishes a public record of the copyright claim.  Second, in the United States, copyright registration is a prerequisite to filing an action for copyright infringement. A copyright owner cannot proceed with a copyright infringement lawsuit unless the work has been registered.  Third, the Certificate of Registration from the Copyright Office creates a presumption in favor of the copyright owner that the work is original and is owned by the registrant. This becomes especially important if it becomes necessary for the copyright owner to obtain a preliminary injunction against a copyright infringer, to ensure the immediate cessation of the distribution of the infringer’s work. However, the presumption of validity will only apply if the work has been registered within five years from the publication date.  Fourth, by registering a copyrighted work prior to an infringement taking place or within three months from the publication date of the work, the copyright owner will be eligible to receive statutory damages and legal costs and attorneys’ fees from a copyright infringer.  Finally, registration allows the owner of the copyright to record the registration with the U. S. Customs Service for protection against the importation of infringing copies.

Whether a mark is registered or not, an owner may use a copyright notice to inform the public that the work is protected by copyright, identify the copyright owner, and show the year of first publication.  Any copyrighted materials should contain a valid copyright notice on each page of the site.  The notice should contain the following three elements: (1) The symbol © (the letter C in a circle), or the word "Copyright," or the abbreviation "Copr."; and (2) The year of first publication of the work.  In the case of compilations or derivative works incorporating previously published material, the year of first publication of the compilation or derivative work is sufficient; and (3) The name of the copyright owner, or an abbreviation by which the name can be recognized, or a generally known alternative designation of the owner.  Moreover, an appropriate abbreviation for the company name may depend on the context in which the copyright notice is used.  (Example: On a brochure owned by Client, Inc., the copyright notice might read as follows:  © 2003 Client, Inc.).   Proper use of a copyright notice is recommended, as it reduces the risk that copyrighted materials will be unlawfully copied.

4 Trade Secrets

Trade secrets include formulas, patterns, practices, processes, designs, or compilations of information that grant the user a specific advantage over competitors within the same industry or profession.  Trade secrets are, by definition, not disclosed to the public.  A company can protect its confidential information through non-disclosure contracts with its employees. Because trade secrets are not registered, but rather are kept secret by the owner, the rights in trade secrets do not expire.  However, third parties are not prevented from independently duplicating and using the secret information if it is lawfully discovered.  Instead, owners of trade secrets must take steps to keep their trade secrets private through a variety of civil and commercial means.  For example, owners of confidential information can require employees to sign non-diclsosure agreements and non-compete clauses in exchange for the employment opportunity.  Such agreements require the employee to agree not to reveal his prospective employer’s proprietary information and often carry stiff financial penalties for breach of the agreement.  Owners of confidential information may also require representatives of other companies to sign non-disclosure agreements before information is disclosed, e.g. in licensing talks or other business negotiations. 

Steps to Protect Intellectual Property Rights

As a practical matter, it is not realistic to try to prevent all public disclosure of intellectual property, particularly because disclosure of some proprietary information may be necessary for marketing products and services.  Nonetheless, in addition to the steps outlined above, some other steps should be taken to minimize the potential risks associated with the marketing of products at trade shows, which members can take to protect their intellectual property.  
Establish a system for employees to disclose new inventions to appropriate company personnel who can consider whether the invention has intellectual property value and assess the need for intellectual property protection. (patent, trade secret protection)

File patent and trademark applications and copyright registrations, where appropriate. (patent, trademark, copyright protection)

Prepare non-disclosure and confidentiality agreements for employees to sign prior to attendance at trade shows. (patent, trade secret protection)
Consider whether it is appropriate for individuals outside of the organization to sign confidentiality agreements prior to disclosure of intellectual property to them. (patent, trade secret protection)

Advise employees in advance not to talk about sensitive business in public places.  Provide employees with concrete and precise examples of what can and cannot be disclosed. (patent, trade secret protection)

Work with marketing department to ensure that sensitive business information is not disclosed in written materials, whereby the risks of revealing sensitive business information may outweigh the benefits of obtaining new business.  (patent, trade secret protection)

Mark products with patent numbers, where applicable, and with trademark and copyright symbols, where appropriate, to show ownership of intellectual property.  (patent, trademark, copyright protection)

Police disclosure of intellectual property by employees at trade shows.  (patent, trademark, copyright, trade secret protection)

In any back rooms meetings at trade shows with vendors where proprietary new products are displayed, admit only select and important customers or potential customers and require anyone admitted to sign a non-disclosure agreement.  (patent, trade secret protection)

Summary

As explained above, attendance at trade shows can present unintended problems associated with the loss of intellectual property rights.  Such loss can have serious negative consequences.  To avoid infringement or loss of intellectual property rights, APPMA members can and should take steps prior to attendance at trade shows that will ensure that intellectual property rights are not forfeited unintentionally when disclosed in public forums.

Shari L. Klevens is an attorney in the Washington, D.C. office of McKenna Long & Aldridge LLP, where she practices intellectual property law.  She can be reached by electronic mail at sklevens@mckennalong.com.