Intellectual Property Lawyers for San Francisco, California

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!

As a legal entity, a joint venture (JV) can own a patent. Given the temporary nature of JVs and the fact that there will be multiple owners of any patents, there is a complex mix of intellectual property (IP) ownership rights, dispute resolution, and enforcement issues that need to be agreed upon in order to properly protect everyone's intellectual property rights. Consideration will need to be given to what IP ownership and rights will look like during and after the JV and it may be easier to have both companies listed as the patent authors for inventions from the outset (versus naming the JV as the author). A joint IP agreement is the best solution to outline the rights of each party, the process for developing patentable technologies sufficient to be a patent author, filing and prosecuting patents, and future licensing and exploitation of the patent.

You’re not the first to confuse a KISS Note with intellectual property protection, and you definitely won’t be the last. It’s a common mix-up in the startup world. But here’s the truth: A KISS Note has nothing to do with protecting your software. It’s a financing instrument created by 500 Startups, designed as an alternative to convertible notes and SAFEs for early-stage fundraising. It’s a way for investors to give you money now in exchange for equity later. It does not offer any legal protection for your code or ideas. So What Do You Actually Need to Protect Your IP? If you're building software in California, there are several key legal tools you’ll want to have in place. Start with the ones that offer immediate protection and work your way toward longer-term strategies. Always Start with NDAs If you're showing your software to anyone (whether it's a co-founder, a contractor, an investor, or a beta tester) you need a solid non-disclosure agreement in place before you share anything. It’s your first line of defense, especially if you want to preserve trade secret protection. Your NDA should spell out exactly what you consider confidential. This might include your source code, algorithms, user data, business plans, or any other proprietary information. The agreement should also state how long confidentiality lasts and what the other party can and cannot do with your information. One important note here: California law prohibits non-compete clauses under Business and Professions Code Section 16600. Do not include one in your NDA. It won't be enforceable. Instead, focus strictly on confidentiality and use limitations. Copyright is Automatic, but Registration Matters As soon as you write your code, it’s protected under federal copyright law. That protection applies to the actual expression (the specific code) not to your underlying ideas, functionality, or algorithms. Even though protection is automatic, registering with the U.S. Copyright Office gives you significant legal benefits. You can’t file a federal lawsuit without registration. And if your copyright is registered before infringement occurs, you may be eligible for statutory damages of up to $150,000 per work and recovery of attorney’s fees. The process usually costs between $65 and $85 and takes a few months. Trade Secrets Require Real Effort to Stay Protected If your software includes proprietary algorithms, confidential processes, or unique technical methods that provide a competitive edge, you may be eligible for trade secret protection under the California Uniform Trade Secrets Act. But here’s the catch. That protection only lasts as long as you actively protect the information. This includes limiting access to your source code, using secure development environments, marking documents as confidential, and having everyone involved sign NDAs. You need to treat your trade secrets like actual secrets if you want the law to do the same. Considering Patents? Proceed Carefully Software patents are complex, especially following the Supreme Court’s 2014 Alice decision. You can’t patent abstract ideas, mathematical formulas, or generic computer processes. Your software needs to solve a specific technical problem in a novel, non-obvious way or improve the functionality of a computer system itself. If you've developed something truly unique — like a new data compression algorithm, a better machine learning architecture, or a new way to optimize networking — a patent might be worth exploring. Just keep in mind that the process is expensive, often costing $10,000 to $15,000 with legal fees. It can also take several years. Many software companies choose to rely on trade secrets and copyrights instead. How to Put All of This Into Practice Begin with what you can implement right away. Create a strong NDA template and use it consistently. Register your copyright as soon as your codebase is developed enough to be meaningful. Protect your trade secrets by putting real technical and legal safeguards in place. Track your development process carefully. Version control, timestamps, and contributor logs can all serve as useful evidence in a legal dispute. If you’re working with employees or contractors in California, be especially cautious. The state has employee-friendly laws, so your contracts must clearly state that all work product belongs to your company and that all confidential information stays confidential. When Should You Talk to a Lawyer? Once you’re dealing with patents, investor negotiations, infringement threats, or user data privacy, it’s time to bring in professional legal help. These are complex areas, and the risks are too high to wing it.

When you're reviewing a Developer Agreement, it’s really important to make sure it covers the basics while also protecting your rights and interests. Here’s a breakdown of what you should look out for in plain terms: Hello! My name is Dolan and I am happy to help. First off, the agreement should clearly describe the scope of work (often called the "SOW") This means it needs to explain exactly what you're expected to do, including the features or functionality of the app, the timeline for delivery, and any milestones. Make it specific. It has to be clear what is defined as intellectual property and then who owns it. Compensation is another big one. The agreement should spell out how much you’re being paid, whether it’s a flat fee, hourly rate, or based on milestones. I Confidentiality clauses are pretty standard, but you’ll want to make sure they don’t go overboard. Termination clauses are also super important. These should say under what conditions either of you can end the agreement. Make sure that if the company decides to end things early, you’ll still get paid for the work you’ve done up to that point. We can always draft these things for you or look over what you've drafted. Best of luck! Dolan

When you're selling your business in Texas and that sale includes registered trademarks, getting the Trademark Transfer Agreement right isn’t just paperwork. It’s what protects you and the buyer from serious legal headaches. Here’s what you need to understand about how it all works and what to include. FIRST, THE LEGAL BASICS Let’s get clear on where the law comes into play. If your trademarks are registered with the USPTO, federal law applies, specifically 15 U.S.C. § 1060. If you’ve registered marks at the state level in Texas, those fall under Section 16.061 of the Texas Business & Commerce Code. A lot of businesses have federal trademarks, but some have both, and each needs to be handled the right way. Here’s a critical point: you can’t transfer a trademark by itself. Legally, it has to go with the goodwill tied to it. That means the reputation, customer trust, and market recognition associated with your brand. Courts take this seriously. If you try to assign a trademark without transferring the goodwill behind it, that assignment can be ruled invalid. The trademark has to stay connected to its original source, or the legal protection starts to fall apart. KEY PARTS OF THE AGREEMENT Identifying the Parties and Background Info Start simple. Spell out who’s selling and who’s buying, using full legal names and business addresses. Include a quick explanation in the recitals that you own the trademarks and plan to transfer them as part of the business sale. Detailed Trademark Descriptions List every trademark included in the transfer. For federal marks, include things like registration numbers, any pending application serial numbers, filing dates, and the international classes they fall under. For Texas marks, include the state registration numbers and any other relevant details. Don’t forget common law marks either. If you’ve been using a brand name or logo in business without registering it, it still has value and legal protection. The Assignment Clause Itself This is where the actual transfer happens. The language needs to make it crystal clear that you’re transferring all rights, title, and interest in the trademarks, and just as important, the goodwill that goes with them. That’s not optional. For federal trademarks, this clause has to meet the standard set by 15 U.S.C. § 1060. For Texas marks, the law requires that the transfer include “the goodwill of the business in which the mark is used.” Be sure to include language that talks about transferring the reputation, customer recognition, and market value of the marks. That’s what keeps the assignment legally valid. Purchase Price and Who Pays for What Spell out what the trademarks are worth as part of the overall deal. If the value is rolled into the full business sale price, say that clearly. Also note who’s responsible for any filing fees with the USPTO or Texas Secretary of State, legal costs, and whether there’s any money going into escrow. Warranties and Representations You’ll need to confirm that you’re the sole owner of the trademarks, that they’re valid and enforceable, and that there are no liens, disputes, or infringement claims you know of. You can qualify some of these with “to the best of your knowledge,” especially if you're not sure about everything. The buyer will also need to make some promises, like having the ability to maintain and protect the trademarks going forward. Indemnification Terms This is how you divide up risk. You should agree to cover any trademark issues that started before the sale, such as pending legal disputes or past infringement claims. The buyer takes on anything that happens after the transfer. Be sure to include who will handle any legal defense and how costs are covered. What Happens After the Sale You’ll probably need to sign additional paperwork later to finalize the transfer, especially for filing purposes. You also need to agree to stop using the trademarks after closing. If you’re going to help the buyer with trademark maintenance or recordation, lay that out clearly. Cooperation after closing is often what makes the legal side go smoothly. WHAT IF THERE'S A TRANSITION PERIOD? If you’ll still be involved in operations temporarily or helping during a handoff, add quality control provisions. This matters because if the buyer is using the trademark on the same goods or services you used to provide, the quality needs to stay consistent. Without oversight during that period, trademark rights can actually be lost. That’s called naked licensing, and it’s something you want to avoid at all costs. RECORDING THE ASSIGNMENT Federal Marks To make the transfer legally solid, you’ll need to record it through the USPTO Assignment Center. Right now, it costs $40 for the first trademark and $25 for each additional one in the same document. You have three months from the assignment date to record it to protect against third-party claims. Texas Marks For state trademarks, the process goes through the Texas Secretary of State. The fee is $25, and Texas gives you 90 days to record the assignment. That’s different from the federal timeline, so don’t mix them up. Common Law Marks Since these aren’t registered anywhere, there’s no official filing to do. Just make sure your agreement clearly spells out the transfer and ties it to goodwill. That’s your legal foundation for common law marks. A FEW EXTRA LEGAL PROTECTIONS Include standard contract language too, such as Texas law as the governing law, a venue for disputes, integration clauses, and a method for resolving disagreements. You might want to get the agreement notarized. It’s not legally required in Texas, but it adds a layer of security. If you're staying involved during the transition and helping the buyer keep up with trademark deadlines, make sure that’s written into the deal. COMMON PITFALLS TO AVOID Don’t treat all your trademarks the same. Some may be federal, some state, and some common law. They each need different handling. And never forget the goodwill piece. Without it, your trademark transfer isn’t valid. Also, make sure you stay on top of deadlines. You have three months to record federal assignments and 90 days for Texas. Missing either one could leave the buyer exposed to claims from someone else down the road. THE FINAL ANALYSIS Getting this agreement right helps avoid future disputes and protects the trademark value you’ve built over time. Trademarks are often one of the most valuable pieces of a business, so it’s worth taking the time to spell out exactly what’s being transferred, what the responsibilities are, and what happens next. Because trademark law is detailed and the consequences of mistakes can be serious, it’s smart to work with an experienced IP attorney. They’ll help you match the agreement to your specific situation and avoid costly errors. Mistakes in this area can lead to total loss of rights. If you've built a brand worth selling, make sure it's protected when you pass it on.