Ensuring eSignature Lawfulness for Trademark Assignment Agreement

How to eSign a document: e-signature lawfulness for Trademark Assignment Agreement

hi my name is Savannah de Barros I'm the principal attorney at SL de barros law firm LLC and today we'll be discussing trademarks and contracts are you protecting your clients intellectual property the right way there are six quick tips that you should keep in mind when representing business clients why well sometimes business clients may come to you and wish to hire an employee or independent contractor to do a particular job for them and maybe they're wondering do I just need an employment agreement for this individual maybe not maybe there's more that needs to be done and so these six quick tips will help you to guide your business client on the right path to ensure that their intellectual property remains theirs and is protected tip 1 has your client previously filed a registration to protect their mark this is important because your business client should always understand that they need to protect their intellectual property prior to entering any agreements with any individual whether it be an employee independent contractor or some form of business relationship tip 2 you should be able to advise your client that simply filing a federal registration may not be enough to completely protect the intellectual property rights why well this takes us to tip 3 because the assumption of ownership is not enough to create an exclusive right and intellectual property if particular measures weren't put in place business owners must be advised that their intellectual property rights although created under the umbrella of their business simply may not belong to them and that is a scary thought tip 4 you should always advise your business client the necessity of contracts when working with employees or independent contractors it is important that your employee or independent tractor signs a contract titled assignment of inventions why well if the employer independent contractor is hired to do a particular job that enhances the brand of the business owner and they have not assigned all of their inventions or interests in the product that they are creating well that intellectual property would not belong to the business owner it would belong to the employee or the independent contractor and thus a major issue would ensue tip 5 you need to advise your business client that any contract needs to be supported by sufficient consideration if you have an employee or independent contractor who is hired to build out a process or product for that business client well you want to ensure that when they sign the assignment of inventions that that agreement states that but for hiring them for this product or this process they would not have been considered for the position if the independent contractor or employee signs an agreement after they have already been hired to do a particular job for the business owner with in additional sufficient consideration what needs to be provided and this can be done by providing an additional bonus stock in the company or something similar that will help to support that agreement tip 6 and this is more so a best practices tip the business client should always be advised that the employee or independent contractor should write a list of all of the things the intellectual property rights that they believe they have an interest in and then that employee or independent contractor as they're working with the business owner should be advised to keep a list of all the intellectual property assignments that they are conducting while working under the business client this is important for a number of reasons one the business owner one to ensure that the intellectual property rights the employer independent contractor had prior to their relationship remains that individuals rights but the business client also wants to be able to identify throughout the relationship with the independent contractor or employee whether business resources and time have been used to create other intellectual property rights that actually may be the sole ownership of the business owner I want you to keep in mind the ethical rule 1.14 competence although it's important to ensure that your business client protects their marks by federally registering them it's also important that you understand and find the proper competence to advise them on contracts or other issues that may loom outside of these trademarking contract issues when dealing with employees or independent contractors for more information on intellectual property please visit is bas website again my name is Savannah de barros I hope you enjoyed these six quick tips on trademarks and contracts thank you for watching