A Minnesota employee or independent contractor who conceives of a successful trademark or trade name may conclude that the mark is personal, not employer, property. As a matter of law, however, if the employer has used the mark, the employee has little or no claim to ownership of it. Unlike patent law, rights in trademarks and service marks are not gained through discovery or invention, but only through actual use.87 The person who first conceives the idea of using a given symbol as a mark does not automatically receive trademark priority. An employer who uses a mark conceived by an employee, or a client who uses a mark conceived by an independent contractor such as an advertising agency, ordinarily acquires the trademark rights.
In some cases, however, an employee or independent contractor who, by contract, establishes ownership of trademarks, ideas or concepts will be able to take them with her when he or she departs, depriving the employer of its investment in the good will attached to the trademark.88 For complete protection, an employer should require each employee or independent contractor to assign in writing any trademark rights in marks or titles that he or she has created.
CREDITS: The content of this and any related posts has been copied or adopted from from An Employer’s Guide to Employment Issues in Minnesota, provided by the Minnesota Department of Employment and Economic Development & Linquist & Vennum P.L.L.P., Tenth Edition, 2009. Copies are available without charge from the Minnesota Department of Employment and Economic Development, Small Business Assistance Office.
This post is also part of a series of posts on how employers can protect intellectual property through non-compete and non-solicitation agreements.
87. Minn. Stat. § 338.18 et seq. (2007).
88. Connelly v. Valuevision Media, Inc., 73 U.S. P. Q.2d 1843 (D. Minn. 2005).