IS MY NON-COMPETE ENFORCEABLE?
One way to protect your trade secrets from your competitors is to have non-compete agreements with key employees. In New Mexico, there has to be consideration for a non-compete, meaning you have to give the employee something in return for their signature. If you can time the request to coincide with their annual review accompanied by a raise or bonus, that should be sufficient. Or you can give them cash. How much cash would be considered “sufficient” depends on what they are being paid. Also the non-compete has to be limited in scope, time, and geography. The scope should be limited to what their role is and what the sensitive, confidential information is. The duration can be one to three years and the geography should be something like 50 miles from any of your business locations or maybe statewide, but that would be pushing it. Something like 10 years anywhere in the US will never be enforceable. That is why the non-compete should also have a provision that allows a court to narrow the non-compete to make it enforceable.
HOW MUCH DOES IT COST TO GET A TRADEMARK?
The cost for a trademark registration is the trademark office filing fee plus my time. The filing fee will vary depending on whether we can find a canned description of goods and services in the trademark ID manual. If we can, then the filing fee is $225. If we decide to draft our own description, the filing fee increases to $275. For an in-use application, I tell clients to budget $1,200 to $1,500 which includes the filing fee, my search of the trademark database for confusingly similar marks, drafting the application, preparing the specimens proving use, and following the progress of the application, which takes about seven months total. For an intent-to-use application it will cost more because while the examination process is the same, if it is approved, you have to file a Statement of Use within six months and there is another filing fee associated with that. For additional fees, that six-month deadline can be extended five times. So it’s harder to predict what an intent-to-use application will cost versus an in-use application.
WHAT’S THE DIFFERENCE BETWEEN PRINCIPAL AND SUPPLEMENTAL TRADEMARK REGISTER?
Registration on the Supplemental Register is limited to marks that are in use as opposed to marks that are applied for on the basis of intent to use. The mark will still appear in trademark searches and can be used to bar registration of confusingly similar subsequent applications. Also, you can still use the ® symbol in connection with the mark. After continuous use for a five-year period, we can then request that it be moved to the Principal Register. If you are going to sue an infringer, being on the Principal Register is best for a variety of reasons, but being on the Supplemental Register is the next best thing.
WHY SHOULD I GET A FEDERAL COPYRIGHT REGISTRATION?
An author owns the copyrights in any original work that is fixed in a tangible medium. The “tangible medium” can be paper, canvas, fabric, a hard drive, etc. So say you create a document and save it to your computer. You immediately own the copyrights (literally, the exclusive right to make copies). Copyright notices generally take the form of the circle-c symbol followed by the year of creation and the owner. For instance, if I created a document today, the notice would be: © 2023 Constant Law, LLC. The purpose is to put the world on notice that I claim copyright ownership of the document and to contact me if someone wants a license to the document.
You do not need a federal copyright registration to own the copyrights because, as previously explained, the copyrights in an original work exist as soon as it is fixed in a tangible medium. However, one can only sue for copyright infringement of a federally registered work. The Copyright Act provides for attorneys’ fees and statutory damages, but only if the copyright application was filed prior to knowing about the infringer. If the copyright owner knows of the infringer and then applies for a copyright registration, they can still sue for infringement but attorneys’ fees and statutory damages are not available.
WHAT IS A DERIVATIVE WORK?
A derivative work is a modification to a copyrighted work. The authors of the derivative work are the author of the original copyrighted work and the author of the modifications. However, the creator of the derivative work needs to have permission from the author of the copyrighted work or it is considered copyright infringement.
WHAT IF A COPYRIGHT OWNER WAITS YEARS TO SUE ME FOR INFRINGEMENT?
One affirmative defense to copyright infringement is the doctrine of laches (“affirmative defense” means yes, I did it, but you still lose). To prevail on a laches defense you must show that (1) the copyright owner delayed in initiating the lawsuit, (2) the delay was unreasonable, and (3) the delay resulted in prejudice to the alleged infringer. Delay is measured from when the copyright owner knew or should have known of the allegedly infringing conduct until the initiation of a lawsuit. When the delay is less than the statute of limitations, which is three years, there is a strong presumption that there was no unreasonable delay. If the lawsuit is filed more than three years after the copyright owner knew or should have known about the alleged infringement, the doctrine of laches may prevent the copyright owner from succeeding on a copyright infringement claim.