Trademarks, Copyrights & Trade Secrets

Webinar SeriesTrademarks, Copyrights &

Trade Secrets Deborah Sweeney, Esq.

CEO, MyCorporation.com

For more information, visit www.mbwomen.org.

About You

• CEO, MyCorporation.com• Purchased MyCorporation from Intuit in 2009 after running the division for 5 years

• JD/MBA Pepperdine University• Serve on University Boards • 2 sons & lots of sports!


Overview of Trademarks & Copyrights

• A trademark is a word, phrase, symbol or design, that identifies and distinguishes the source of the goods.

• Trademarks, copyrights and patents all differ. A copyright protects an original artistic or literary work; a patent protects an invention.


Trademarks and the Internet

• Why would a business need a trademark?– Protecting the identity of the business on the web.– Preventing use by infringers or third parties.– Claiming nation-wide use of the logo or phrase

• Trademarks are the life of a business – without them, customers cannot identify their products or services with a particular provider. – Think of:


Trademarks and Searches

• What are the benefits of searching before application and registration?– A trademark search is critically important to ensure the availability of

the name before it is used.– Make sure you are not infringing on a third party.– Ensure no investment in marketing until you are the mark holder.


Business Names v. Trademarks

• Is a business name the same as a trademark?– A business can use its name and its trademark interchangeably, but

many times the two are different.

• Is a Domain Name the same as a trademark?– Domain names can often be the same as a trademark, but they may

actually be an assumed name. Think of MyCorporation.com v. our corporate name of MyCorporation Business Services, Inc. Both brands/names are protected.

• Is Registration of the LLC or Corporation with the Secretary of State sufficient to protect a name?– Registration within a state for a corporation or LLC is unique from

trademark registration at either the state or the federal level.


Trademarks for Business Owners

• What are the benefits of federal registration?– Nationwide protection, right to bring legal actions, on the Internet, your brand is king.

• What are the types of tm apps?– Intent-to-use– In-use

• What is the process?– Applying does not mean it’s registered…Trademarking takes time…

• Is a mark registered once it is filed?


Copyrights & the Internet

• Protect your copyrightable content– Copyright protection is a form of protection provided by the laws of

the United States (title 17, U.S. Code) to the authors of "original works of authorship" including literary, dramatic, musical, artistic, architectural and certain other intellectual works.

– Register your copyright before an infringement so that you can get attorneys' fees and statutory damages from an infringer.

• Many times it is difficult or impossible to prove substantial monetary damages when content on a website is infringed.

• The advantage of having the right to claim statutory damages is that there is no need to prove lost profits or the infringer's profits because the court has the discretion to award statutory damages to the infringer of up to $30,000 for each copyrighted work infringed.

• If the infringement was willful, the court can award statutory damages up to $150,000.


Web Pages and Copyright/Trademarks

• The unique underlying design of a Web page and its contents, including: – Links, original text, graphics, audio,

video;– websites compiled by an individual or

corporation;– unique elements that make up original

nature of the material.


Benefits to Copyright Registration for Business Owners

• United States copyright law provides the following valuable benefits to web sites that register their copyrights:

– By registering your copyright, you create a public record of your work and your copyright claim.– If somebody infringes on your web site copyright, you may sue for copyright infringement.

Copyright registration is a prerequisite for filing an infringement claim in federal court with respect to works that originate in the United States. If you want to sue an infringer and you have not registered your web site, it will take four months or more after receiving your registration application before the U.S. Copyright Office issues a Certificate of Registration.

– If you register your web site copyright before or within 5 years of publication, the registration is prima facie evidence in court as to the validity of your web site copyright and of the facts stated in your U.S. Copyright Office registration certificate.

– If you register your web site copyright within three months after publishing it or before an infringement occurs, you may seek statutory damages and attorney's fees in an infringement lawsuit. For web sites that are not registered timely, the infringer is only liable for your actual damages and the infringer's profits.

– If you registered your web site copyright, you may record the registration with the U. S. Customs Service and obtain its help in protecting against the importation of infringing copies.


What is a Trade Secret?

• A trade secret is a formula, practice, process, design, instrument, pattern, or compilation of information which is not generally known or reasonably ascertainable, by which a business can obtain an economic advantage over competitors or customers.

• The precise language by which a trade secret is defined varies by jurisdiction (as do the particular types of information that are subject to trade secret protection). However, there are three factors that, although subject to differing interpretations, are common to all such definitions: a trade secret is information that:

– is not generally known to the public;– confers some sort of economic benefit on its holder (where this benefit must derive specifically

from its not being generally known, not just from the value of the information itself);– is the subject of reasonable efforts to maintain its secrecy.

• Trade secrets are by definition not disclosed to the world at large. Instead, owners of trade secrets seek to protect trade secret information from competitors by instituting special procedures for handling it, as well as technological and legal security measures.


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