Atlanta, GA asked in Copyright and Trademark for Georgia

Q: If I created Itty Bitty Bites and its now abandoned by Earth Fare, can I claim it?

I worked for Earth Fare from 1994-2010. I created the characters and content used by Earth Fare for this program while an employee. When I left, they let the program die. If they have abandoned trademarks, can I now claim the characters and content back for my own?

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1 Lawyer Answer
Griffin Klema
Griffin Klema
Answered
  • Trademarks Lawyer
  • Tampa, FL

A: It probably depends on if you had an employee agreement with the company, or whether you assigned your rights to the company.

Even if the company "mothballed" the program, your status as a former employee could complicate your desire to use the exact same marks (or other intellectual property) because the company may feel betrayed or threatened if it learns about your reviving the program yourself now that you left the company. But, if the marks are formally abandoned with the USPTO, and the company terminated the program, that helps support your legal claim to use the trademarks. On the other hand, an employment contract may prohibit you from using the marks, or from competing against the company, or from possibly using the company's confidential information or trade secrets--regardless of whether the company terminated the program or abandoned the marks.

Also, it sounds like copyright may be involved and, if so, there is a different answer for that kind of intellectual property (again depending on your employment and employment agreement).

Unfortunately, a more precise answer to your question depends largely on the facts. If you desire to proceed with using the marks and other IP, and assuming you're still on good terms with the company, consider contacting your former employer to secure its voluntary written commitment that they have no interest in the IP, and that you are free to use it. Otherwise, consider engaging an attorney who can evaluate your question with full knowledge of all the facts, and formulate a strategy to negotiate with the company, if necessary.

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