Intellectual Property Lawyers for Arkansas

Hello! Thank you for posting this question. In your case, the other party may claim that you are infringing on their trademark, but proving it is a different case. The Lanham Act provides for a cause of action for infringement of both registered and unregistered trademarks. (15 USC Section 1114(1)(a); 15 USC Section 1125(a)(1)A).)  The 9th Circuit Court of Appeals has laid out some elements to help determine whether it creates an infringement lawsuit. 1. The complaining party has to prove they have a valid, protectable trademark and that they own that trademark; 2. The complaining party must prove that a mark is similar, and it was used without the consent of the moving party in a manner that is likely to cause confusion among ordinary consumers as to the source, sponsorship, affiliation, or approval of the goods.  The likelihood of confusion can occur at the time of the sale, when there is initial interest by a consumer, or even after the sale, if the confusion causes a consumer to no longer buy a service or product connected to the mark. The court considers things like the strength of the original mark, whether you are using it for some fair use purpose, the similarity, the proximity of the products and marketing channels, whether there’s actual confusion, the defendant’s intent, the quality of respective products, and the sophistication of the customers. (Polaroid Corp. v. Polard Elecs. Corp. 287, F.2d. 492, 495 (2d Cir. 1961.) So what this means is that it'd have to be litigated, but you can argue you are not trying to sell products or services using their mark, but rather you are using it for some other purpose, such as to educate people about their business practices. Best of luck!

Here’s how I’d approach structuring an Employee IP Agreement if your goal is to protect your company’s intellectual property without running into enforceability issues under U.S. law. Covering Core IP OwnershipCovering Core IP Ownership First, start with a “work made for hire” clause. It’s a good foundation, but it’s not enough on its own. Under U.S. copyright law (17 U.S.C. § 101), only certain types of work qualify as “made for hire,” and many employee-created assets may fall outside that definition. So you’ll want to pair it with a present-tense assignment clause. Be specific here. Use language like “the employee hereby assigns” rather than “will assign.” That slight shift matters. It ensures the company owns the rights immediately when the work is created. Also, define “intellectual property” broadly. Don’t just list patents or source code. Include software, algorithms, documentation, trade secrets, databases, and anything tied to your business. The scope should clearly include anything created during work hours, using company tools or systems, or connected to your current or future business operations. Disclosure and Documentation You’ll want to require employees to promptly disclose any inventions or creative works they produce. Put it in writing. This gives your company the chance to evaluate whether the work is covered under the agreement. It’s also a good idea to require them to maintain proper documentation. Accurate records can make a real difference in patent filings or if a dispute ever comes up. Pre-Existing IP and Legal Carve-Outs There should be a section where employees list anything they’ve developed or own before joining the company. If they don’t list anything, the agreement should include language confirming they’re representing that no such prior inventions exist. This prevents claims down the road that something developed during employment was actually theirs from before. Now, depending on your state, you may need to include statutory carve-outs. California, Illinois, and Washington all have laws that limit how far IP assignment clauses can go. For example, in California, you’re required to carve out inventions developed entirely on the employee’s own time, without company resources, and unrelated to your business (see California Labor Code § 2870). Without that carve-out, your entire assignment provision could be thrown out. Confidentiality Obligations Make sure there’s a strong confidentiality section. This should cover source code, technical documentation, designs, product plans, customer lists, financial data, and anything else proprietary. Make it clear that the obligation continues even after the employee leaves. You’ll also want to require that all company property and digital assets are returned at the end of employment, including devices, credentials, and files. Ongoing Cooperation and Enforcement Mechanisms Include a clause requiring employees to cooperate in IP protection efforts even after they leave. That could mean signing patent paperwork or providing testimony if needed. To make that enforceable, add a power of attorney clause. This gives the company the authority to act on the employee’s behalf if they’re unwilling or unreachable. It’s a simple way to prevent delays when you’re trying to secure or enforce rights. It’s also smart to include a waiver of moral rights where allowed. This is especially useful for creative works and software. It gives the company full freedom to modify or use the work without needing future approval. Legal Remedies and General Terms Be clear that the company can pursue equitable relief, like an injunction, if there’s a violation. Sometimes monetary damages aren’t enough to prevent harm. Include a severability clause so that if one part of the agreement is invalidated, the rest still stand. Don’t forget to specify the governing law and venue for any disputes. As for restrictive covenants, keep in mind that non-compete clauses are unenforceable in California and heavily restricted elsewhere. Non-solicitation clauses may still be allowed, but they need to be narrowly written. You should have your legal team confirm their enforceability based on your state. Finally, think about consideration. For new hires, the job offer itself usually counts. But for existing employees, you’ll likely need to offer something extra, like a bonus or promotion, to make the agreement stick.

Hello, I wanted to express my interest in helping you understand your trademark rights and the trademark transfer proposal you received. As brief background, I am a US-licensed trademark attorney and have helped clients in similar situations buy, sell, and otherwise transfer trademark rights through transfer agreements. I can also help you prepare and file a federal trademark registration to protect your unique brand name and logo throughout the US. I'd be glad to set up a brief call to learn more about your business and see how I can help. Thanks for your consideration. Best, Roman Vayner (c) 414.628.9099 (e) rvayner@vaynerlegal.com www.vaynerlegal.com VaynerLegal, LLC

Since the user uploaded copyrighted material to your website without your knowledge, generally you will not be automatically liable under the DMCA “safe harbor” provision. As you have already removed the content, make sure that your site has a published DMCA policy and that you have registered your designated agent with the U.S. Copyright Office. Generally, if you have everything in place, most of these matters are resolved without ongoing liability. Feel free to reach out if you need guidance on setting up a policy and agent registration.

Yes, you can achieve this through an IP license agreement versus a sale of your IP rights. In your license you would want to protect against gray market product manufacturing and also have provisions on how to handle defective products and components during the manufacturing process. I am available for a free consultation if you would like.