Every lawyer who practices in the intellectual property area is asked frequently how to go about protecting a unique or creative idea that someone fears is at risk of being stolen by a prospective investor, partner or advisor to whom early disclosure is necessary. During the dot-com bubble, everyone walked around, it seemed, with an NDA (non-disclosure agreement) ready to be beamed from his Palm. Is an NDA still the answer? This post is actually about trademark registrations — but let me briefly reiterate my views about NDA’s, and, as we say, “connect up” the two seemingly unrelated topics.
I usually have a couple of points to make in response to the NDA question:
- Most people to whom you are considering making disclosure are in the driver’s seat, and will not sign a non-disclosure agreement because doing so almost invites a claim if they end up getting involved in someone else’s similar project years later. Or they won’t sign just because you need them more than they need you.
- Your idea isn’t really all that hot. Successful new businesses owe far more to (a) entrepreneurs’ focus and dedication, (b) adequate capitalization, (c) great timing and (d) the grace of God (not in that order), than to having come up with truly original concepts.
These and similar arguments are well developed in an article from a few years ago called “The Cult of the NDA,” written (I think) by a fellow named Peter Leppik, which article lawyer readers of this blog should bookmark.
Comes now an entertainment lawyer named Barry Neil Shrum who has written a pretty thoughtful piece on some approaches that actually might work. It’s worth taking a look at. But I must note disagreement with his advice about trademarks, which unfortunately will reinforce, unintentionally, a number of common misconceptions about trademarks that are “out there.” And that means it’s time again to try to set things straight.
Early on Barry presents a fair summary of what you need to get trademark protection, though more on his allusion to securing trademarks for “titles” below. He helpfully makes it clear that federal trademark registration is “tedious, complicated and costly,” but doesn’t explain why, or explicitly address the concept of the Intent to Use application, which seems central to his ultimate advice.
And that leads to my beef — the following recommendation that Barry puts first on his list of otherwise very good, otherwise endorsed-by-LIKELIHOOD OF CONFUSION® suggestions:
(1) First, trademark all slogans, titles or name, at the very least your state level, but preferably at the federal level;
Unfortunately, this suggestion is densely packed with problems because Barry has not elucidated some fundamental facts about trademarks. Read More…