The Fort Worth Court of Appeals recently examined an accelerated interlocutory appeal under the previous version of the Texas Citizens Participation Act (TCPA), ultimately determining that an allegation of misappropriation of trade secrets must be specifically proven.  In Phuong Nguyen v. ABLe Communications, Inc., 02-19-00069-CV, 2020 WL 2071757 (Tex. App.—Fort Worth Apr. 30, 2020, no pet.), the plaintiff ABLe Communications (ABLe) sued the three defendants, Phuong Nguyen (Nguyen), E2 Optics, LLC (E2), and Southwest Networks, Inc. (Southwest), after Nguyen left ABLe to work for Southwest. Continue Reading Fort Worth Court of Appeals Analyzes the Evidence for Misappropriation in a TCPA Trade Secrets Case

Collaborative Imaging, LLC v. Zotec Partners, LLC, No. 05-19-01256-CV, 2020 WL 3118614 (Tex. App.–Dallas  June 12, 2020, no pet. h.) is another example of the courts’ increasing unwillingness to apply the previous version Texas’s anti-SLAPP statute the Texas Citizens Participation Act (TCPA) to cases involving the Texas Uniform Trade Secrets Act (TUTSA).  In Collaborative Imaging, an employee of a healthcare practice management services provider quit his job with that provider and went to work for a company started by the doctors from one of the provider’s clients.  A few months after the employee made the change in employment, the client terminated its contract with the provider.  The provider sued the former employee and his new company, alleging that they disclosed trade secrets relating to billing practices that result in termination of the contract between the provider and client. Continue Reading Dallas Court of Appeals Rejects Application of TCPA to Trade Secrets Case

Title Source, Inc. v. HouseCanary, Inc., No. 04-19-00044-CV, 2020 WL 2858866 (Tex. App.–San Antonio  June 3, 2020, pet. granted) is a new case addressing the jury charge in Texas Uniform Trade Secrets Act (TUTSA) cases.  In my previous post about the case,  I discussed the Casteel problem in the misappropriation instructions that resulted in reversal of this multi-million dollar judgment.  (For a complete discussion of the facts, please see this previous blog post.)  The court, however, addressed more than the just the misappropriation question. Continue Reading More Lessons from Title Source v. HouseCanary

If trademark applications were Chinese food, the logo on the front of a shirt would be General Tso’s chicken.  It’s what “Piano Man” is to the bar crooner—a fan favorite, a crowd pleaser.  So it would make sense that familiarity with filing of trademarks would necessarily include familiarity with this particular process.  After all, you wouldn’t open a pizza restaurant without access to pepperoni. Continue Reading Just a Picture on a T-Shirt (Part 1): The Basics of the Most Common Trademark Application

Last fall, the Texas Journal of Business Law, the journal of the Business Law Section of the State Bar of Texas, published my colleagues Joe Cleveland and Kevin Smith‘s article A Practitioner’s Guide to the Texas Uniform Trade Secret Act.  It’s a great resource for any trade secret litigator.  Continue Reading A Practitioner’s Guide to the Texas Uniform Trade Secret Act

For the last few years, defendants in trade secrets and other commercial litigation claims have used the previous version of Texas’s anti-SLAAP statute the Texas Citizens Participation Act (TCPA) as a defense to those claims.  Langley v. Insgroup, Inc., No. 14-19-00127-CV, 2020 WL 1679625 (Tex. App.–Houston [14th Dist.] Apr. 7, 2020, no pet. h.) is another example of this strategy.  In Langley, an insurance salesman left his employer to work for a competitor.  The former employer accused the salesman of violating his non-compete agreement, tortious interference with the employer’s contracted clients, breach of fiduciary duty, and violation of the Texas Uniform Trade Secret Act.  The new employer was also a defendant to several of those causes of action. Continue Reading TCPA’s Commercial Speech Exemption Applies to Employer’s Claims Against Former Employee

Courts will not enforce non-compete provisions in employment contracts when the employer breached the employment contract, too.  That is the lesson of Insgroup, Inc. v. Langley, No. 14-18-01071-CV, 2020 WL 1679401 (Tex. App.-Houston [14th Dist.] Apr. 7, 2020, no pet. h.).  Continue Reading Employer’s Breach of Agreement Containing Non-Compete Provision Results in Court’s Denial of Request to Enforce Non-Compete Provision

 “Empire Records” (1995), A conversation between Ethan Embry (“Mark”) and Rory Cochrane (“Lucas”):

Mark: Oh! I’ve decided I’m going to start a band.

Lucas:  Really?  [Leaning in], the first thing you need, is a name.  Then you’ll know what kind of band you’ve got.

Mark: Yeah. I know.  I know.  I was kinda thinking about, umm, “Marc”.  What do you think of that?

Lucas:  Is that with a “C” or with a “K”?

Mark: Well, my name is with [checking his nametag], a “K”, so I was thinking maybe my band could be with a “C”.  So that way, its kinda like that psychedelic, you know, trip thing.

So Mark, in an effort to know what type of band he has, goes to the Trademark Electronic Search System and conducts a search of *Ma{“r”1:2}{“ckqxh”1:2}*[bi,ti] in International Classes 009 (downloadable music sound recordings) and 041 (Live performances by a musical group).  He believes the results to be promising and decides to move forward with his trademark application. Continue Reading Bona Fide Intent to Use as Applied to “Empire Records” (1995)

Congratulations to my colleague Angelique McCall.  She recently published two articles on Amazon’s Neutral Patent Evaluation in The Tipsheet, the newsletter of the Intellectual Property Section of the Texas State Bar.  You can also find the articles on IP Watchdog.  Continue Reading Navigating Amazon’s Neutral Patent Evaluation in Real Life

In the first Spiderman movie of the superhero era in which we still find ourselves, J. Jonah Jameson believed he thought of a catchy title for the bad guy.  To his assistant, he then said the following declarative: “Call the patent office, copyright the name “Green Goblin.” I want a quarter every time someone says it!”

This line demonstrates a mistake made by many, and it isn’t simply that the Library of Congress rather than the United States Patent and Trademark Office registers copyrights.  Instead, it illuminates a general misconception that through intellectual property protection, a common phrase can become the exclusive right of one individual or entity.  We see this belief personified in trademarks, when an individual or entity seeks to register a common—and arguably public—phrase.  Were such a registration to issue, the holder would have a legal presumption of ownership of the phrase and the exclusive right to use the phrase throughout the United States and any U.S. territory on or in connection with the goods/services listed in its trademark registration certificate.

A search of the USPTO’s Trademark Electronic Search System (TESS) reveals that the mark “BLACK LIVES MATTER” has been applied for thirty times.  The Office received its first of these applications in January 2015, and its most recent less than ten days ago.  Similarly, the mark “I CAN’T BREATHE” was first applied for in December 2014.  See U.S. Trademark Application No. 86479784.  Since May 29, 2020, the same phrase or slight alterations thereof have been applied for more than ten additional times, while applicants have applied to register the term “ALL LIVES MATTER” or iterations thereof eighteen times.

Unfortunately for the owners of these applications, all of whom have paid a filing fee of at least $225 USD—and in many instances more—most of the applications are unlikely to register.  Here is why . . .

Continue Reading Save Your Money: You Can’t Register that Social Movement Phrase