Protecting Intellectual Property: Letters

Vol. 1, No. 7

Jean L. Batman founded Legal Venture Counsel, Inc. in 2004 to provide outside general counsel services to investors, entrepreneurs, and small businesses. Prior to forming Legal Venture Counsel, Ms. Batman was a Partner in the San Francisco offices of Duane Morris LLP, one of the country’s 100 largest law firms. Ms. Batman Chaired the ABA Business Law Section’s Small Business Committee from 2001 to 2005, served as a Board Member of the ABA Business Law Section’s Publications Board from 2001 to 2005, cofounded and Co-Chaired the ABA’s Private Placement Broker-Dealer Task Force in 1999, and is a member of The State Bar of California and the National Association of Development Companies.

 

From Letters for Small Business Lawyers

 

  • See below for letters about 1.) Trademarks, Trade Names, and Trade Secrets; 2.) Fictitious Business Names; 3.) Forwarding Form NDA to Help Protect Trade Secrets; and 4.) Copyright Protection for Software

 

Intellectual property (or IP) is often the single most valuable asset of an early-stage business and encompasses everything from business plans to patentable inventions. The sample letters in this chapter are designed to help small businesses recognize and protect all of their intellectual property through a variety of circumstances, such as starting a new business and hiring or firing employees.

Start-up companies will benefit from correspondence explaining the differences between trademarks, trade names, and trade secrets, and providing information about how to protect each and when a fictitious business name filing may be required. Providing clients with a good form of nondisclosure agreement (NDA) and explaining when to use it helps a client protect its trade secrets and offers terms for the resolution of disputes.

Sample letters in this chapter also help explain copyright law, determine when and how to register a copyright, and provide reminders for updating copyright claims on client materials.

Some of the intellectual property issues that arise in connection with changes in employment are addressed in Chapter 7 (Directors, Employees, and Equity Compensation), but this chapter also contains sample letters for employment-related IP issues, such as:

  • Reminding former employees of their ongoing obligations to the client company with regard to its intellectual property rights;
  • Notice to a new employer of a former employee’s ongoing obligations to the client company; and
  • A cease and desist letter to a person who is violating his or her ongoing confidentiality or other obligations to the client company.

Finally, this chapter includes sample correspondence regarding the process of obtaining U.S. and international registrations for a trademark or service mark designed to help a client understand how an application progresses toward registration and the requirements for maintaining a registration once it is obtained.

 

 

Trademarks, Trade Names, and Trade Secrets

{Date}

{Name}

{Company Name}

{Address}

{City, State, Zip Code}

 

RE: Trademarks, Trade Names, and Trade Secrets

 

Dear {Salutation}:

Now that you have formed COMPANY and are embarking on a new venture, it is important that COMPANY’s trademarks and trade names be registered in COMPANY’s name with the U.S. Patent and Trademark Office.

In addition, COMPANY’s trade secrets should be carefully protected by obliging its employees to sign confidentiality agreements, among other things.

Please call me at your earliest convenience to schedule a meeting to consult with us to adopt appropriate forms and procedures to protect COMPANY’s trademarks, trade names, trade secrets, and other intellectual property. In the meantime, please refrain from disclosing COMPANY’s trade secrets to anyone.

Very truly,

FIRM NAME

Lawyer Name

Enclosure

 

Fictitious Business Names


{Date}

{Name}

{Company Name}

{Address}

{City, State, Zip Code}

 

RE: Fictitious Business Names

 

Dear {Salutation}:

As we discussed in our recent meeting, there are some additional filing and publication requirements if COMPANY intends to transact business using a name other than that specified in its Certificate of Incorporation. First, COMPANY must file a fictitious business name statement with the clerk of the county in which it has its principal place of business and in any other county in which it intends to transact business.

Next, the fictitious business name statement must be published in a newspaper of general circulation in the county of each filing once a week for four consecutive weeks.

Finally, within 30 days after publication, an affidavit of publication must be filed with the county clerk’s office in the county of each filing.

Please let me know if you decide to use a fictitious business name so I can assist you with the appropriate filings.

Very truly,

FIRM NAME

Lawyer Name

 

Forwarding Form NDA to Help Protect Trade Secrets


{Date}

{Name}

{Company Name}

{Address}

{City, State, Zip Code}

 

RE: Form Nondisclosure Agreement to Protect COMPANY Trade Secrets

 

Dear {Salutation}:

It was good to hear from you the other day. Enclosed please find the form Nondisclosure Agreement (or NDA) we discussed.

Please note that use of a nondisclosure or confidential information agreement for your employees is just one step you should be taking to ensure that your customer list and other sensitive information is afforded legal protection as “trade secrets” in the event a former employee tries to use it without your permission.

For information to receive protection under the law as “trade secrets,” the owner needs to take steps to keep the information secret, such as locking the information up (and/or password-protecting it) when it is not being used, keeping employee access (paper and electronic) on a need-to-know basis, and having employees sign confidentiality agreements concerning such information.

Please do not hesitate to call me with any questions or changes.

Very truly,

FIRM NAME

Lawyer Name

Enclosure

 

Copyright Protection for Software


{Date}

{Name}

{Company Name}

{Address}

{City, State, Zip Code}

 

RE: Copyright Protection for Software

 

Dear {Salutation}:

Pursuant to our recent telephone conversation, here is some initial information about obtaining a registered copyright for your computer software product.

Copyright protection extends to all of the copyrightable expression embodied in the computer program. It is best to register the copyright within three months of first publication (and prior to any infringement) so that you will be entitled to statutory damages in the case of infringement.

Copyright protection is not available for ideas, program logic, algorithms, systems, methods, concepts, or layouts. Therefore, you may also wish to consider obtaining one or more patents to fully protect the intellectual property reflected in the program. Please note that a patent application must be filed within one year of publication of the software or it will be statutorily barred.

To complete an application for copyright registration, I will need to know the year of creation and the exact date of first publication of the program. The filing fee is nominal, so most of the cost is in the preparation of the application and materials to be submitted for registration.

In general, copies of all or a portion of the program source code must be submitted with the application for registration. To determine how much of the program source code must be submitted and the appropriate format, you need to decide whether the program contains any trade secrets.

If the program does not contain trade secrets, we will submit one copy of the identifying portions of the program (i.e., the first 25 and last 25 pages of source code) in human-readable form, together with the page or equivalent unit containing the copyright notice, if any. If a published user’s manual or other printed documentation accompanies the computer program, we will include a copy of the user’s manual along with the identifying portions of the program. In addition, if the program is embodied in a CD-ROM, ordinarily the entire CD-ROM package must be deposited, including a complete copy of any accompanying operating software and instructional manual.

If the computer program does contain trade secrets, the requirements are similar, but the registrant may block out those portions of the code that contain trade secrets. There are some limitations here, so if this pertains to your product, we should discuss this further.

If you are also seeking to protect screen displays (i.e., the visual component of the program), we will reference them in the application and submit identifying material for the screens.

I hope this answers some of your initial questions. I look forward to further discussion with you.

Very truly,

FIRM NAME

Lawyer Name

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Letters for Small Business Lawyers

 

Pages 81–87 from Guide to Representing Religious Organizations, 2011, by Jean L. Batman, published by the American Bar Association General Practice, Solo and Small Firm Division. Copyright © 2011 by the American Bar Association. Reprinted with permission. All rights reserved. This information or any or portion thereof may not be copied or disseminated in any form or by any means or stored in an electronic database or retrieval system without the express written consent of the American Bar Association. Click here to order the book.

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