Florida Intellectual Property FAQs
Our brand protection attorneys are here for the life of your business and all of its intellectual property. We register copyrights and trademarks and protect your trade secrets and all IP from unfair competition and infringement. See below for answers to some of your most frequently asked questions, and learn about the many ways we can help you establish, secure and maximize your valuable intellectual property. If you have other questions, need to schedule an IP audit, start the process of a trademark or copyright registration, or require immediate assistance with an intellectual property litigation matter, contact Perkins Pershes, PLLC for a consultation with our experienced and professional intellectual property lawyers.
What is a trade secret, and how is it protected?
A trade secret may be a formula, process, method or other piece of information which is not generally known outside your company and gives you a competitive edge by being in possession of the information. The recipe for McDonald’s French fries and the formula for Coke are trade secrets, but a trade secret may also be something as simple as a customer list with proprietary information you have developed which retains its value to you only so long as it is kept confidential. There are many different ways to protect trade secrets depending on the nature of the material. Our brand protection attorneys take the time to understand your needs and create the appropriate strategy to keep your trade secrets secret, including carefully negotiating licensing agreements which may require you to divulge trade secrets while still retaining their value to your business.
Is it too late to send a cease and desist letter if I’ve already suffered damages? Am I waiving my right to pursue those damages?
A properly-worded cease and desist letter does not act as a waiver of any rights you may have to collect damages or losses that have already been incurred. We’ll make that point clear in the letter as appropriate. A cease and desist letter does show a good faith effort to avoid litigation and to minimize or mitigate your damages by stopping the infringing activity as early as possible. In this way, a cease and desist letter serves as a preliminary step to any litigation which may be necessary and puts you in a better position for success and to recover all the damages you may have suffered.
What is a contributory infringer?
Sometimes a person can be liable for infringement without actually engaging directly in infringing activities. This activity is commonly known as contributory infringement or secondary liability. For instance, federal law on patent infringement says that “Whoever offers to sell or sells within the United States or imports into the United States a component of a patented machine, manufacture, combination or composition, or a material or apparatus for use in practicing a patented process, constituting a material part of the invention, knowing the same to be especially made or especially adapted for use in an infringement of such patent, and not a staple article or commodity of commerce suitable for substantial noninfringing use, shall be liable as a contributory infringer.”
U.S. copyright and trademark law do not expressly include contributory infringement in their statutes, but the United States Supreme Court has recognized the possibility of secondary liability in these situations as well. For instance, knowingly inducing copyright infringement by another or intentionally supplying a product to someone the manufacturer or distributor knows is infringing on a trademark may be sufficient for a claim of contributory infringement.
What does an IP audit entail?
Our brand protection attorneys will custom tailor a comprehensive IP audit that meets your needs and matches your business and industry. Typical activities will include reviewing policies and procedures, interviewing key staff, conducting an on-premises inspection, and preparing and reviewing questionnaires for employees, managers and business associates. An IP audit touches every aspect of your business and business dealings.
There is no exhaustive list of everything that may be considered intellectual property. Some of the most typical types of IP include:
- Trade secrets
- Formulas, processes, blueprints, drawings and designs
- Customer lists and related information about customers
- Lists of vendors and suppliers and related information about them
- Sales forecasts, budgets
- Business plans
- Employment agreements, policies
- Franchise agreements
- Operating manuals
An IP audit involves identifying all of your intellectual property and determining whether it is currently well-protected or unprotected. If not well-protected, the audit will also include a plan for protecting those assets and maximizing their value through licenses or assignments, to the extent they are currently being underutilized.
How do I keep a licensee from learning trade secrets?
It may not be possible to keep a licensee from learning certain trade secrets as part of an assignment or licensing agreement. You can take steps at the outset to keep as much of your confidential information private as possible, while still allowing a licensee to have the most economic success for the benefit of you both. If trade secrets will be divulged to the licensee, we can help you by drafting strong nondisclosure agreements, confidentiality agreements and other documents that should help protect you from misappropriation. If theft of trade secrets is threatened or suspected, our experienced intellectual property litigators can represent you as needed to protect your rights and recover for any monetary damage, from seeking compliance through cease and desist letters to engaging in full-blown litigation as appropriate.
This is not intended to provide legal advice, as each circumstance is fact specific as to how the law applies. Advice from a knowledgeable attorney should be obtained.
What is a trademark?
A trademark is the words, symbol, logo, design or slogan that identifies your goods or the source of your goods (your brand) and distinguishes them from other products.
What is a service mark?
A service mark is similar to a trademark in the use of words, symbols, logos, designs or slogans that identify and distinguish your service.
What is the process to register a trademark?
A trademark can be registered with the Florida Department of State or other specific states, as well as nationally with the United States Patent and Trademark Office (USPTO). This exhaustive process includes preparing, filing and reviewing your application; drafting letters and responses, and publishing your application in the Official Gazette of the USPTO. Registration can be for Intent to Use or Use in Commerce throughout the United States, and if your market is international as well, you’ll want to pursue Madrid Protocol and foreign-based applications to protect your brand in foreign markets or globally.
What is trademark infringement?
According to the USPTO, trademark infringement is the unauthorized use of a trademark or service mark on or in connection with goods and/or services in a manner that is likely to cause confusion, deception, or mistake about the source of the goods and/or services.
What is the difference between a registered and unregistered trademark?
Having a registered trademark means you registered the mark with the USPTO or one or more state trademark offices, such s the Florida Department of State. You can select and use a trademark without registering it, but your rights to go after infringers or defend yourself from claims of infringement are limited.
Do I need to register my trademark?
Registering a trademark provides strong protection against infringement and protects your brand, but you are not required to register a trademark to select and use a mark. As an unregistered first user of a trademark, you may have some limited rights to enforce your trademark against infringement by others in the particular geographic area where you operate.
What are common law trademark rights?
Common law trademark rights are the rights you may have under state law regarding an unregistered trademark. These laws can protect you from unfair competition or deceptive business practices, such as a competitor opening a store across the street and copying your name or logo.
I think someone infringed upon or used my trademark. What should I do now?
Sometimes a phone call or e-mail may be sufficient to stop the infringing activity. Other times, a more formal cease and desist letter may be called for. Still other times, immediate and direct court involvement is necessary. If potential infringement is suspected or threatened, a preliminary injunction or a temporary restraining order may be sought. Obtaining an injunction or TRO is not a simple matter, and you must be prepared to show a likelihood of success on an infringement action at trial before a judge will restrain another entity from engaging in commerce or commercial activity.
What kind of damages might I receive if someone infringes upon or uses my trademark?
You can redress infringement by seeking money damages along with an injunction to prevent further infringement. Money damages can include compensation for the actual harm which has been done as well as forcing the infringer to disgorge any profits they obtained through their infringing activity. In some cases, statutory damages are available as an alternative to actual damages. Rather than having to prove the amount of actual loss, it may be easier and satisfactory to opt for statutory damages, which can be as much as $30,000, or even $50,000 if willful infringement can be proven.
What can be trademarked?
Words, symbols, logos, designs or slogans that identify your product or service (your brand) and distinguish it from other products or services can all be trademarked.
When can I use the SM or TM symbols?
These symbols can be used whenever you have created a trademark ™ or service mark (SM) that you use in commerce, but you have not registered the mark with the USPTO. Using the mark puts the public on notice that the mark represents your brand and should not be copied or used by others.
When can I use the ® symbol?
You can use this symbol whenever you have registered your mark with the USPTO. If you have to bring an infringement action, the fact that you used the ® symbol establishes that the alleged infringer had knowledge your mark was registered.
Does a federal trademark registration ever expire?
Trademark protection lasts for as long as it is continuously used in connection with the trademarked good or service.
What is a copyright?
A copyright gives the creator or an original work the exclusive right to make commercial use of the work, such as by printing, publishing, performing or recording, or licensing the work to others.
Do I need to register my copyright?
A copyright is created at the time the work is created, by virtue of the creation of an original work. Registering a copyright is not necessary to enforce the copyright. However, it does establish an official record and date of the copyright and can be very useful in prosecuting or defending a claim of copyright infringement.
Who can register a copyright?
The owner of a copyright can register the copyright. This is most often the creator of the work, although ownership rights can be transferred by contract, through inheritance, etc. Also, someone who has received an assignment of rights from the copyright holder may register the copyright.
What is copyright infringement?
Copyright infringement means that someone other than the owner of the copyright has reproduced, performed, displayed or distributed the work without the owner’s permission. Creating a derivative work without permission is also copyright infringement.
What kind of damages might I receive if someone infringes upon or uses my copyright?
You can recover your actual damages, such as lost revenue or missed business opportunities. If the infringer made money off of your copyright, you could also force the infringer to “disgorge” those profits to you. If you don’t have a lot of actual damages or profits to recover, you can choose to receive statutory damages instead. Statutory damages range from $750 to $30,000 per act of infringement. Intentional infringement can be assessed as high as $150,000 for just one infringing act.
Is it legal to download copyrighted materials on my computer?
This act is only legal if you have permission from the copyright holder or have purchased the right to download the material.
What is fair use and how does it apply to copyright law?
The doctrine of fair use allows you to use a portion of a copyrighted work for certain purposes without violating copyright law, even if you have not obtained permission from the holder of the copyright or paid for the right to use the work. For instance, teachers may want to make copies of an excerpt from a poem or play to use in class. Other uses that may be fair use include parody, criticism and commentary. Determining fair use is actually quite complicated and involves the analysis of many different factors.
When can I use the © symbol?
This symbol, aka the “copyright symbol,” can be used on any copyrighted work. You do not have to use this symbol to protect a work that was created on or after March 1, 1989, but using this symbol offers valuable protection by putting the public on notice that the work is protected by copyright. In the case of copyright infringement, the infringer cannot claim that the infringement was “innocent” if the copyright symbol was used. An innocent infringer can get out of paying a large portion of damages, so using the symbol helps ensure you can recover the full amount of damages available. Proper use of the copyright symbol includes using the symbol, the owner’s name and the year of first publication in some order in close proximity to one another.
How is a copyright different from a patent or trademark?
Copyrights, patents and trademarks all protect your rights in intellectual property. In particular, they protect your right to profit commercially from your property and keep people from profiting off of your property without your permission. A copyright is used to protect original works such as works of art (literary, visual, auditory), as well as computer software and architecture. A patent protects an invention, ornamental design, or method or process of manufacturing. A trademark protects logos, designs, words and slogans that uniquely identify your product or brand.
What is a patent?
A patent is the right to keep others from making, using, selling or importing your invention for a limited time (such as 20 years) within a limited territory (such as the US).
What is a provisional patent?
A provisional patent application provides a period of protection before a non-provisional patent application is filed. Provisional patent applications last for 12 months, giving you time to prepare and file your patent application.
Are there disadvantages to filing a patent?
Obtaining a patent is a complex, time-consuming and expensive process. Also, filing a patent potentially gives your competitors insight into your invention. If you are in a rapidly-evolving industry, your patent could quickly become obsolete. Filing for one or more patents should be done in consultation with a patent attorney and only after considering the risks, costs and benefits a patent would provide.
What is patent infringement?
Patent infringement happens when someone else makes, uses, sells or imports your invention without your permission. Also, actively inducing another to infringe a patent is itself a form of patent infringement.
Is there a deadline to file for a patent?
Yes. Your application must be filed within 12 months of when you first used, disclosed or offered your invention for sale. If you filed a provisional patent application, you have a 12-month window to file your non-provisional patent application.
How long does it take to get a patent?
Although you can get certain patents in as little as six months, it typically takes around 22 months to obtain a patent. The process can take much longer, however.
How long can I receive protection for my invention under a patent?
A utility patent for an invention lasts for 20 years from the date the patent application was filed.
I think someone infringed upon or used my patent. What should I do now?
Contact an intellectual property law firm, preferably one with experience in patent litigation. The infringing conduct may be stopped with something as simple as a cease and desist letter, or other measures may be more appropriate or necessary, including patent litigation. You’ll want to stop the infringement as soon as possible and recover money damages for any harm done to you.
What is unfair competition?
Unfair competition refers to a broad category of wrongful or deceptive trade practices and business practices by one company that harm the business of another. Trademark infringement may be considered as a form of unfair competition, but most often, unfair competition is governed by state law. For instance, the Florida Deceptive and Unfair Trade Practices prohibits unfair methods of competition such as “bait and switch” advertising, misrepresenting used goods as new, or drafting advertisements that look like news stories and placing them alongside actual news items on a website.
What should I do if I get a cease and desist letter?
Contact a lawyer. You may need to immediately stop an infringing activity to mitigate damages and limit your exposure to liability. Alternatively, you may not actually be infringing, and a response to the sender of the letter may be in order. It may also be that the sender of the letter is actually the one infringing on your brand or intellectual property.
How do I know if I can protect my business information as a trade secret?
If the information is not generally known outside your company and gives you a competitive edge by virtue of being in possession of the information, it likely qualifies as a trade secret, and you can protect it as such so long as you maintain its secrecy. State law may also provide clarity. For instance, Florida has adopted the Uniform Trade Secrets Act, which defines a trade secret to include information that derives independent economic value from not being generally known or ascertainable by others. Florida law also allows you to protect “valuable confidential business or professional information that otherwise does not qualify as trade secrets.” Call our office for an IP Audit, so we can help you identify and protect all of your company’s trade secrets and other valuable intellectual property.