Beware of Trademark "Publication Services"

Beware of Trademark "Publication Services"

Trademark application information is public, and this information is often used by illegitimate services to take advantage of unsophisticated parties. The USPTO will only communicate via email (if the application was filed electronically), or through official snail mail. The USPTO does not use third parties for correspondence. Any correspondence which is not from the USPTO is likely misleading and can be ignored. The USPTO provides guidance on “potentially misleading” correspondence with examples misleading letters. According to the USPTO, if you believe trademark correspondence is misleading, you should file a complaint with the FTC. As always, if you are unsure about a letter or offer please contact an attorney.

Intent to Use versus Use Based Trademark Applications

Intent to Use versus Use Based Trademark Applications

Trademark rights are conferred upon a source identifying word, sound, smell, etc. which is being lawfully used in commerce, but can you reserve a mark before you use it?

Articles often say that companies, such as Apple, have registered several marks for a new product before they bring it to market. How are they able to reserve a product name without making a valid use in commerce? They reserve a mark by filing an intent to use application under section 1 (b) of the Lanham Act.

Trade Secret: what are they good for?

 
Photo by  RestrictedData  /   CC BY 4.0

When you think about protecting your idea, it’s likely that patents are the first thing that comes to mind. There is another option, however, which I make sure to explain to my clients: Trade Secrets.

what does trade secret protect?

Trade secret protects essentially any secret that has commercial value. The classic example is a recipe. For example, Coca Cola and KFC both have recipes that are protected under trade secret.

It’s important to note that you must select either patents or trade secrets prior to filing any patent application, because a patent application will be disclosed. If you idea is disclosed then it's no longer secret and trade secret protection cannot no longer applies.

Trade Secret and Code

Trade secret is useful in many areas, but a key area is computer code. Programmers can choose to keep the source code of their programs kept secret, while distributing the object code product. This allows the developer to market a product while keeping the nuts and bolts secret.

Had the developer filed a patent application for their code, the code would go into the public domain 20 years from the date of filing. Given the lifespan of computer programs, 20 years is not a long time. If the developer elects trade secrets instead protection can be perpetual.

how do you maintain secrecy?

Simply put, you maintain secrecy by employing reasonable security measures. Reasonable measures can include keeping the recipe in a safe, or restricting access to code. For example, contractually limiting disclosure of code or implementing strong password requirements and two factor authentication.

Downsides to Trade Secret

Trade secrets do have a major downside: your secret can be reversed engineered, and others are allowed to independently develop the same idea. If you have a patent, then no other party is permitted to make or use the patented invention, which means that reverse engineering and independent development are not permitted.

Conclusion

Trade secrets offer low-cost protection for your ideas; all you have to do is maintain secrecy. Trade secret protection can last forever, so long as the secret remains a secret. If you have any questions about trade secrets or how to protect your idea, you can contact me here.

 

Section 103 — Obviousness

Section 103 — Obviousness

Section 103 rejections are the most problematic to overcome. Section 103 prevents granting a patent where the claimed subject matter would have been obvious before the filing date of the claims at issue. In making a 103 rejection, the examiner combines references, taking elements from one reference and adding elements from other references to arrive at the claimed invention at issue.

Due to the fact that the examiner combines references, overcoming a 103 rejection can be difficult simply for the fact that not every element must be present in a single reference. This makes the pool of potential invalidating prior art much broader, and therefore more difficult to avoid.

Patent resources for small inventors.

Patent resources for small inventors.

The USPTO recommends that every inventor retain a patent attorney or agent to file their application, but this is impractical for some inventors. In recognition of this problem, the United States Patent and Trademark Office (USPTO) has compiled several pages of resources for inventors. I have outlined the most beneficial resources for inventors who want to know more about filing a patent. These resources include great information about the patent process, as well as assistance for inventors who want to file their own application.

Copyright–Always register your works!

Copyright–Always register your works!

Copyright rights exist the moment the work is created. These rights are weak, however, and a rights holder cannot sue for infringement or obtain certain remedies without registering their work. Without these remedies as a bargaining chip, the copyright owner will find it difficult to assert their rights. Therefore, every work–within reason–should be timely registered with the Copyright Office.

Section 102 - is your invention novel?

Section 102 requires that the invention be “novel.” This means that each and every element of the invention must not be present in a single, enabling reference. Under 102(b), certain disclosures are excluded from the prior art, but this section is very limited. For this reason, the inventor should file an application as soon as possible, ideally before any disclosure of the invention is made.  

Section 101 - Is your invention patent eligible?

Section 101 of the Patent Act requires that an invention be new and useful. In addition to the new and useful requirement, there are three judicial exceptions. Judicial exceptions prevent an application from being granted where the invention improperly captures a natural phenomena, abstract idea, or law of nature. For example, a patent cannot be granted on a new mathematical formula by itself, but might be granted if the invention ties the formula to a machine.