deskWe often write and discuss what we here at Traklight believe to be the biggest or most common intellectual property (IP) and risk issues facing entrepreneurs, but such an endeavor is inherently presumptive. That's why it's great to hear real issues and questions that people are tacklihg in their businesses. During Mary's recent SCORE webinar "IP 101" attendees had so many questions there wasn't time to address them all in the allotted time. And as someone who was exceedingly reticent in school, I can safely say that for everyone who asked a question, there are those who shy away from asking for fear of embarrassment, of asking the dumb question. So for the benefit of those who prefer to get their answers from blogs and articles, I'll be answering those questions over a series of posts.

What's the best way to prevent employees from stealing the company's client lists, marketing, and proprietary information and starting a competitive company or work for a competitor?  I've used non- compete and non-disclosure employment contracts but doesn't seem to hold much weight.

It's difficult to stomach having your valuable IP stolen by someone that you trusted. It's even more galling to see them run off to compete with you directly. To try and prevent this, it's important to know what you need to do with trade secrets. Laws regarding trade secrets differ from state to statem but the idea is generally the same: if you have secrets, whether they be customer or supplier lists, recipes, processes, or general knowhow, you need to identify them as trade secrets and make them known as such to anyonme who has access to them. And it is important to have things like non-compete and non-disclosure agreements in employment and contractor agreements. But the onus falls on you to enforece these agreements, unfortunately. 

Is IP stolen when it is registered with the Patent Office?

The fear of having IP stolen is what prevents some entrepreneurs from taking the step of protecting it. And while being concerned over the security of your IP is well founded, that shouldn't prevent you from seeking out legal protection. If you register your Ip by filing for a provisional patent with the U.S. Patent and Trademark Office, your IP isn't stolen. It's important to remeber that U.S. patent law is now first-to-file, meaning that even if someone were to obtain the information in your filing and try to claim it as their own, you would still have priority. 

I am a franchisee of a very popular tourist map in over 100 locations. I own Martha's Vineyard and there is a direct "copy map" that has a plagerized product and my frachisor didn't sue because I wasn't losing money. He has done nothing to support me. I pay 10% royalties and a flat $2000 for the website. Is there any legal recourse that I as a franchisee should seek ?

The issue of ownership when it comes to franchisees and IP can be complicated. It's a good idea to first check your franchisee agreement to see what it says in regards to IP ownership and obligarions between franchisor and franchisee. As far as the "copy map" competitor, you can see if you're allowed to write a cease and desist letter, with permission from the franchisor and ideally with assistance of a legal professional. As with any IP issue involving individuals or companies you work with, it's a good first step to go back an read our document and contracts to see what rights you have and seek out legal guidance as necessary.

I have seen someone else using my product name on Instagram, but without a TM. My product does — does it mean I have more protection over theirs? 

This doesn't seem to be a matter of degrees of protection but rather priority. In this instance it would be advisable to seek legal advice to try and determine who was first using the mark and any other ownership issues.

Check back Wednesday for the next installment in the series.


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