Most clients come to me after their products reached the market. In fact, that’s when you know for sure that your product has the potential to be something. If not, why invest in registering trademark?
On the other hand, most big companies register their intent-to-use (“ITU”) marks months before they actually develop or start selling an item. Why? It’s simply much safer to invest their money into marketing and so on once you know that nobody else has or can have a trademark registration on your potential mark.
Does this mean you also need to act fast? Probably not. Simply put, many new products or services eventually fail. This is not because of some poor planning or lack of insight but because of the nature of the market.
Then, when is the right time to register a trademark? The answer depends on the type of your mark.
Is it your company name?
Maybe you intend to use a certain mark for every single product you would produce in the future. This is sometimes called a Parent Brand. For example, under parent brand Apple there are sub-brands such as iPhone, Mac, and iPad. But everything is still Apple. Well, in this case, what are you waiting for? Go ahead and register unless you’re counting days for the demise of your company.
Is it a logo?
Now you be cautious. Once you register a mark, you can’t change the registered mark. This includes minor changes and renewals that most companies eventually do on their logos. It might be a slight change of color, or it could be a modernization of some characters or graphic. The law is clear: no change is allowed.
Hence, if your logos are still in development, I’d suggest you to wait till you have the final version. Nonetheless, there is some benefit from acting fast. If you have a logo registered, other people are stopped from registering similar logos. In other words, you would claim the priority, and priority is always good.
I suggest you act fast if you’re concerned that someone else might be taking your idea or concept of a logo. If the current version of your logo includes all elements that you consider important, registering it would give you priority for those elements.
On the other hand, if your logo is pretty unique and unlikely anyone else would be interested, then don’t hurry into registering a draft in order to avoid incurring unnecessary cost.
Is it a phrase or a combination of words?
Now, this is a business decision. Think about how valuable your trademark would become in months or even years. There is possibility that you might not be using the phrase or words ever. Do you still want to take the risk of spending your money for a trademark certificate, which can become a piece of paper if things go the wrong way?
Is it a made-up word?
This is a real advice you would get it from this article. You go ahead and register a domain name YOUR_TRADEMARK.com. Sure, domain names are the same as trademark registration. On the other hand, it costs only $12 a year. Trademark application on the other hand costs you $250 (after discount for doing everything including filing and amending your application on TEAS) just for application fees alone.
I’m not saying domain names can somehow replace trademark protection. However, it just makes economic sense to get a domain registered first and then think about getting trademark registered later.
This article contains
fictional scenarios that include facts and legal issues that are created for an
explanatory purpose. Any of those facts and legal issues including legal
conclusions may not be true when applied to your case. Please seek a legal advice
or counsel if you need any help.
In past articles, we discussed how to name your products and register the names with respect to a trademark protection.
To briefly summarize, we discussed the followings.
1. Most of all, you need a good name for a trademark.
Avoid any name that is similar to competitor’s.
Do not use a generic name that is commonly used in the industry.
If possible, you try minting a term that describes your product.
2. If you anticipate a possible trademark infringement,
registration is a must.
Search the internet using internet search engines like Google for any taken names out there.
You can also use USPTO’s Trademark Electronic Application System to register your trademark by yourself.
Don’t forget to pay maintenance fees once every 10 years.
Let’s see how it works out in the business environment.
1. Antique Metal Zig-zag Hair Band
Mike has been in the beauty supply industry for 15
years. He experienced sales and retail management to a good extent, so he is
good at forecasting consumer trends and popularity of new items.
He realized at some point that zig-zag hair band is a
next it-item for 2018. He did some research and found out zig-zag hair bands
available in the market are mostly made of plastic. Based on this, he came up
with a premium zig-zag hair band with oil-rubbed bronze finish.
He had a Chinese supplier mass-produce the product and
has been receiving increasing number of orders for the product, which he named
“Antique Metal Zig-zag Hair Band”. It is about to become a huge success, and
then he finds out a wholesale is selling “Antiquity” Metal Zig-zag Hair Band,
replacing Antique with Antiquity, with basically an identical product as they
are produced in the same manufacturing line.
Q: How expensive would a lawsuit be?
A: It will be decided by hours. In certain areas of the law,
attorneys offer a legal service for a contingency fee, but trademark
infringement is not one of those special circumstances. The legal bill will be
largely dependent upon the hours your attorney spends for a lawsuit including
following up court proceedings, negotiate with your opponents, and so on.
Q: How long does it take to get an injunction?
A: This is a non-registered trademark, so you will first
prove that you own the trademark. This involves whether the opponent have used
the trademark prior to your use, among other things. Later on, it will
ultimately come to a finding of likelihood of confusion among consumers
regarding two trademarks. Another difficulty in this situation is that you
cannot claim an exclusive use of the “Metal Zig-zag Hair Band”. Even an
exclusive use of “antique” can be contested at court. As there are
many legal issues, legal actions may cost you more than thousands of dollars.
Q: How likely we prevail?
A: The knockoff at issue has not only a similar name but
also an identical packaging, color, style, and so on. As long as we can prove
that we have priority (e.g. we used it first), we will likely prevail.
2. Bear Tooth Hair Band
Mr. Lee has entered the field of beauty supply at his
late career, but his previous job at a retail service company made him aware of
the importance of trademark.
Just like Mr. Kim, he also foresaw a zig-zag hair band
trend this fall and had “Bear Tooth” trademark registered with the
USPTO via an Intend-To-Use Application. He thought the crooked shape of bear
tooth would suggest a zig-zag shape of a hair band. He had no idea what
material to be used, but later he noticed that Antique’s oil-rubbed bronze
finish products are received very fairly in the retailers. He placed an order from
a Chinese supplier.
The product was only launched in July, but in a few months,
customers started looking for “bear tooth hair band” since the name
was very catchy. Not long after, people started to call any zig-zag hair band
made of metal “bear tooth”. In turn, many retail stores are
displaying and selling Antique and Antiquity products as if they are all Bear
Tooth Hair Bands.
Q: What can be done legally?
A: Bear Tooth is a registered trademark of Mr. Lee, so any
use of the name to sell a similar product is unlawful. You can send letters
asking for cooperation, and if a retail store continues to use the trademark
illegally, then you can bring a lawsuit.
Q: What would be a legal cost for lawsuit?
A: In this case, the trademark is registered with the USPTO,
and the infringement is clear and obvious. More than likely, the retailers will
cooperate upon receiving letters. Therefore, the cost would be attorney’s fee
for drafting a cease and desist letter plus administrative cost including
postage and handling, which could run a few hundreds of dollars.
Q: What about similar names like Black Bear Tooth? What can
be done?
A: Thanks to the ITU Application, the trademark is
registered with the USPTO by now. There is no need to prove priority as it is
given by the fact that the trademark is registered. You can just let retailers
know of the registration and proceed with other legal measures such as
injunction prohibiting import. After the acknowledge of registration, any
profit made through illegal use of your trademark becomes recoverable upon
trademark infringement lawsuit. There is very little incentive to continue
illegal use of a trademark for retailers and distributions alike.
What about the retail store owner’s liability?
Q: Can a retail store advertise and sell another product as
Bear Tooth Hair Band?
A: Of course not. It is a trademark infringement. Bear Tooth
is a registered trademark of Mr. Lee. He
has an exclusive right to commercially use the name. Technically, no one can
use Bear Tooth mark on a hair band packaging, retail display, brochures,
advertisements without Mr. Lee’s consent. Of course, you can use the mark in
association with the original Bear Tooth Hair Band. However, you may not place
another product in a section you marked with Bear Tooth mark. This would lead
your customers to believe any product in the section is Bear Tooth products,
which results in a trademark infringement. Not only civil liability but also
criminal penalties can be imposed based on the intent of using the mark.
Q: If I had no idea about the trademark infringement, am I
okay?
A: There is no intent requirement for trademark
infringement. On the other hand, you may be subject to a lesser punishment if
you did not know about it. Often, trademark owners will send letters to retail
stores regarding a trademark infringement. If the retail owners keep infringing
trademark after receiving the letters, they cannot later argue that they did
not know. Knowingly violating other’s trademark rights will make you liable for
all loss of profit for the trademark owner plus other damages.
Q: How do you know what is a trademark of others?
A: Registered trademark owners can use ® mark to notify the public of
their rights. Even if not registered, TM is available for marking any
trademark. Beware that because TM mark does not require registration, it can be
abused for marking non-trademarks as trademarks.
Let’s compare the two scenarios.
Antique Metal Zig-zag
Bear Tooth
Trademark
“Antique” and “metal” is generic terms for the
material and design.
Weak
trademark rights
“Bear Tooth” is a unique, suggestive term for the
product.
TM
rights immediately available
USPTO Registration
None
Need to prove your rights
Intent-to-use Application
ITU provides priority
Similarity of Marks
Antiquity Metal Zig-zag is very similar to Antique
Metal Zig-zag
Other
factors like color, font, and design are considered.
Black Bear Tooth is just a black Bear Tooth.
Obvious
infringement
Legal Action
Unlikely to succeed without a substantial time and money
Affordable options available: letters, reporting to law enforcement,
etc.
When a product becomes a success, it is rather expected that
similar products start to crowd the market. Nonetheless, it is forbidden by the
law that second comers to deceive consumers with a confusingly similar mark or
product package.
As we saw in the above Bear Tooth scenario, a good planning
of trademark protection often helps more efficiently dealing with any
infringement activities.
I guess you can file a trademark application yourself, which will cost a bit over $200 in government fees (for a long-term cost analysis, see https://www.ipfever.com/how-much-does-a-trademark-registration-cost/ ). Here, the worst case scenario is you get a rejection letter (called Office Action). If there’s a mistake, you can amend it. In other cases, you can probably go around the problems. These will cost extra time and fees, but still you save money by not paying service/attorney fees.
Or you can use an online service, adding extra service fees (like $69 seen on today’s Google Search ads) to the calculation. Here, you will likely save a good amount of time, and the process will be much enjoyable than filling out the government-designed application. Yup, it’s fine printed and for online versions, you will meet the old internet. Long story short, I think any help is better than no help. Don’t expect a legal guidance though. You can hope the computer will one day replace the attorneys; it’s not today guys. There are other reasons, too. For example, the service would constitute an Unauthorized Practice of Law if it renders a legal advice without a license.
Alternatively, you can find a licensed attorney and pay much more. Well, you saw this coming, right? An attorney defending the merit of legal counsel! Don’t worry. That’s not the point. I totally believe that you can DIY. The problem is that you will never know if you’re doing it right. Starting from “Is my name/logo/mark trademarkable?” to “What’s the best way to protect my business interest?,” all entrepreneurs come across questions regarding trademark. However, lawyers typically don’t like answering piecemeal questions. Thankfully, IPfever is where you can ask questions and seek help from attorneys; you do everything you can do yourself and leave only the rest to the attorneys.
Zara, which is a
Fast Fashion brand like Forever 21, boasts that it takes only 10 to
15 days for an initial product design to reach their retail stores
through international manufacture and logistics. In this fast-paced
environment where a product can be copied within a few days and mass
produced, a superb product design and packaging warrants only half
the success.
Turning a
customer satisfaction from a superb quality and brand into a
repurchase requires marking of the product with a unique and legally
protected name. Such name is called a trademark, and it includes not
only brand names and product names but also logo images, patterns,
phrases, colors, and so on.
Then, how you
decide what to use as a trademark? In this article, brand and product
names are discussed.
1. Try to Stand Out from Competition
If your beauty supply store is named “ULTA”
or “SEPHORA”, you are clearly in trouble. Likewise, you
should avoid choosing a name that creates a confusion among consumers
even if it is newly minted by you. “Rihanna’s Beauty” is
a good example of such confusing tenor.
To prevent this
kind of trouble, you must conduct a market research beforehand. By
far the most effective and economical way is using internet search
engines. You can use Google, Naver, and so on to scheme through names
and marks that are used in your relevant market.
Avoid names that
are similar to existing ones, and you should not use an identical one
to other’s trademark at no circumstance.
2. Avoid Generic Names
Those words and
phrases commonly used in your field of expertise lack the potential
to be a good trademark.
Words such as
“3X”, “16-inch”, “Braid”, “Ghana”,
and “Pageboy” are general terminologies referring a number
of goods in a single package, hair length, product type, hairdo, and
so on. These general terminologies must be preserved for a free use
among all commercial actors, and the trademark law accordingly limits
trademark rights in such cases. Hence, you should not use generic
terms unless it is necessary.
Oftentimes, using
a general term is easy to memorize and facilitates a quick
understanding of the characteristics of goods, but there are
different ways to achieve the same.
For example, iPad, a tablet computer from
Apple, Inc., uses the word “pad” to depict a “tablet
computer”. Despite being a common word referring to a book of
thin sheets, a “pad” was not associated with a tablet
computer at the time.
This is how you
should go when you are considering a common word for your trademark:
distancing from its original meaning or using an untraditional
spelling.
A billionaire Tesla CEO Elon Musk
established a construction company specialized in tunneling, the
Boring Company, in which boring means digging a tunnel. At the same
time, it could also mean a company that are not interesting, poking
some fun.
3. Unique Wording that Describes Your Product
When it comes to
a Samsung smartphone Galaxy Note, the word “note” denotes
that this particular type of smartphone has a bigger screen and
includes a stylus pen. Again, “note” was a terminology that
mobile computer industry did not find a common use, so this could be
a good choice.
To explain
further, let’s use an imaginary wig product, 100% Hand-tied Human
Hair Pageboy Lace Wig as an example.
First of all, there are obvious characteristics of goods that a trademark needs not contain, such as the product type wig.
While 100% Hand-tied and Lace are important features of the product, the wording is a poor choice for a trademark. You can have a much stronger trademark by devising unique phrases such as Artisan’s Lacework, Tied-on-Lace, On-lace-handywork, and so on.
A fanciful name can be used instead of human hair. Keratin, a type of protein found in hair, is already familiar with consumers, and words like natural and organic can set a positive tone for your product.
Pageboy is a style that could be more efficiently and accurately illustrated by a drawing or photo. However, you may develop variety of unique wordings that sets your brand apart from the pack, such as Pagegirl instead of Pageboy and Peige instead of Page. Note, Peige may signal a specific color Beige.
While product
names can tell what kind of product a good is, they should serve as a
source identifier. In other words, consumers should be able to learn
from which manufacturer, distributor, or seller a certain good is
originated.
Ideally, a good
trademark should tell a consumer that the product in her
consideration is this “Artisan’s Lacework – Peige” among
many other Pageboy style 100% human hair hand-tied lace wigs.
4. Tips
Be creative when naming a product. “Kodak” is a word created by its founder to serve as a trademark. Unique and easy to memorize.
A common word has a potential to be a great trademark. Office electronics company “Brother” transformed a common word into a great and distinctive trademark.
You may consider a terminology uncommon in the technical field or a spelling variation. Lyft, a Uber service competitor, uses a misspelled common word “lift” which means giving a ride.
Words or phrases including ARTISAN’S LACEWORK, TIED-ON-LACE, ON-LACE-HANDYWORK, KERATIN, NATURAL, ORGANIC, PAGEGIRL, and PEIGE, appearing in this article, were created to explain relevant legal concepts and may be inappropriate for use as a trademark. All content and information in this article does not constitute a legal counsel or advice at any circumstance.
How do you react to a sight of a retail store that just launched? Early adopters enjoy using a product or service before other people do, but most of the consumers tend to be a lot less passionate about embracing a new store although its sight might pop among aging stores.
That is why many businesses spend fortune to run commercials on TV and place advertisements on publications to familiarize their trademarks to customers. Since an excessive amount of advertisements is pouring in through various media, most modern consumers consider the ads as something they want to avoid as much as possible.
Accordingly, alternative marketing tactics, including internet marketing, is considered much more efficient than those traditional advertisements nowadays. In addition to running official websites and social network accounts, many businesses are employing even newer internet marketing tactics including sponsoring popular bloggers or social network accounts in an effort to expose their products and trademarks to their customers.
These methods do not expose the trademarks to potential consumers who are involuntarily watching the commercials but make them actively seek the contents containing their trademarks. As a result, even though the content might be identical, which may be a summary of product feature, it becomes the information that was researched by themselves instead of an empty statement by the one who wants to sell products or service to them.
In fact, many consumers utilize internet search to research the information about or the reputation of an unfamiliar business or a new product, and they typically type in a trademark for the search. If you google a trademark of a business, it is likely that the official website of the business appears on the first page of the search results, which might not be true when keywords are used for the search of the business.
When the business has no official website, a review post by popular review sites such as Yelp and Google Maps would populate the top results. As opposed to an official website, the contents of review websites cannot be controlled by the business, so they can be easily tainted by few unfair reviews that are written by angry customers.
Let alone an official website, even a review of the business could be missing on the first page of the search result, in which case customers might feel very suspicious about the legitimacy of the business. More often than not, it gives a bad impression to customers. If you carefully examine those instances, you find problems within the trademarks themselves.
For example, a bad trademark may only include a name of the town or a common term used in the trade, like “Chicago”, “beauty”, and “supply”. You can easily expect that the search result for “Chicago beauty supply” would include all beauty supply stores in the region. There are other instances such as using a description of the product or service as a trademark such as “Luxury Beauty Supply”. These names will unlikely be distinguished by search engines from common keyword searches and return generic information that are not specific to the business.
Considering the bad impression to internet savvy consumers caused by choosing an inappropriate trademark, you should determine whether your choice of words could bring about a strong trademark even before you start using it. Even if you have already started using it, you should continuously monitor whether other businesses are misappropriating your trademark or there are similar trademarks causing confusion among customers. Regular monitoring helps laying a solid foundation for your trademark.
You can start monitoring by simply typing in your trademark in the Google search box. The result will not only reveal whether the mark you want to use can become a strong trademark in the future but also whether the trademark you are using is being misappropriated by others.
Although Amazon is reigning in the online retail market, if you compare the annual retail sales figures of 2016, Walmart’s $363 billion in annual revenue overshadowed Amazon’s $77 billion. This is a meaningful success in the offline retail market where many retail giants are fiercely competing.
What in the earth makes Walmart to score such a high annual sales revenue which is more than twice the combined number of (a) $70 billion by Target, a discount store like Walmart and (b) $86 billion by Costco, a membership store like Sam’s Club by Walmart?
Walmart is well known for its rigorous standard for choosing suppliers, efficient logistics and store management, and a simple but effective business principle of serving the customers with a lower price, among others, that are all contributing to the success of Walmart. Surprisingly, it is a less known fact that Walmart played a major role in the retail adoption of barcode technology.
Anyone who remembers the days when barcodes did not exist would easily appreciate how much the barcode technology saves time and effort in sales of goods. Without the Universal Product Code (“UPC”) which was introduced to the retail business by Walmart, barcode could have been just a type of machine-readable code for a proprietary computer system. In parallel, Walmart recently began to require all suppliers to use radio frequency identification (“RFID”) smart tags to display product information on their shipment. Smart tags convey product information over the air more efficiently than barcodes and allegedly improves the flow of the logistics as well as the inventory management in the retail stores. Of course, barcode is not invented by Walmart. Just like smart tags, Walmart is on the side of adopting and utilizing the technology developed by a third party. That is not a surprise considering that standardization leads to cost savings for the entire retail industry and that an exclusive technology developed and adopted by a retailer would not likely benefit the entity in the market competition.
Nevertheless, Walmart is allocating a lot of resources in procuring patents, which is unprecedented in its 50 years of history.
Based on the publication date of patent applications, Walmart applied for only 26 patents for the two-year period from 2012 to 2013 whereas it already applied for 201 patents from 2016 to date. Simply put, patent is a legal right to an exclusive use of a technology invented independently, so the sudden increase goes against the very idea of standardization.
The phenomenon can be understood by taking a closer look at Walmart’s patents. For an example, one of the Walmart’s patents issued in 2017, the U.S. Patent No. 9,470,532, claims an exclusive right to a navigation system that help customers to find goods in a store.
This navigation system provides an assistance to shoppers by (1) allowing customers to input product information they are searching via mobile devices; (2) displaying the location of the product on a store map; and (3) marking locations of comparable or associated goods on their route. Once this technology is commercialized, Walmart could make up for its shortage in the staff on the retail floor, improving shopping experience significantly. That is not to say that this kind of service requires an investment in advanced technology as it only requires common smartphones and inventory management applications readily available to small and midsize businesses. Notwithstanding, for about 20 years, any business who wants to adopt the navigation system in their store would have to obtain license from Walmart or just sit and wait till the patent expires.
There are other examples such as a mobile app validating the age of purchasers of age-restricted items (U.S. Pat. No. 9,665,896) and a system delivering shopping carts upon the request by shoppers via a mobile app (U.S. Pat. Application No. 6,619,546). In sum, Walmart patents of recent involve not the profound principles of science but ideas for a better shopping experience.
These ideas could have been the technology of the future, but with the internet and personal mobile devices, you can bring them to life without dedicated devices or extra infrastructure. Walmart is now expanding its patent portfolio to exclude others from using some of them.
In fact, from a design or packaging idea to a unique placement of goods in retail spaces and a promotional or loyalty program ideas, if it is noble, it has a potential to be patented. Once patented, you can have an edge in retail services and prevent others from misappropriating your own idea.
Often an amazing and groundbreaking idea becomes a mundane thing because everybody is copying it so fast. When you come up with a great idea, you should (1) determine whether the idea can develop into an effective and financially valuable patent, (2) find a way to protect the idea appropriately, and (3) acquire a legal right that can ensure a lasting success.
Approaching the 2017 holiday shopping season, the e-commerce giant Amazon’s stock price is heading to $1,200. Amazon.com, often quoted as “The Everything Store”, reportedly accounts for 46% of the entire online retail sales.
An interesting thing about shopping at Amazon.com is that you do not particularly notice the items sold directly by Amazon. All items sold at Amazon receive the same treatment, and the same format applies to all product pages. The product order is determined by objective statistics like sales, rating, and price. Quite often, items sold by third-party sellers are bestsellers or Amazon’s Choice.
As such, consumers can gather reliable product information and compare them conveniently, finding little reason to go another place to shop. In addition, since all the retailers who sell identical products are competing for the lowest price in real time, you will likely find a great deal.
On the other hand, the price competition among online retailers is not the merriest news for the manufacturers and offline retailers. Even worse, if a product sells well, then there appear hordes of copycats selling similar products with look-alike photos and descriptions. That certainly induces angry moments for companies who went all the way to market a new product.
In the Online Space, Branding is Especially Important.
Consumers do not possess means to tell whether an article was manufactured in the same production line or not, so they refer to brand labels. Without branding, there is no way to distinguish your products from others’ similar goods. Your investment on quality assurance and customer service will be rewarded only if you have a brand name that consumers remember.
For this reason, retailers let alone manufactures and wholesalers often create their own brands and sell branded items at Amazon.com. Especially, standardized products with little variation and goods that do not require special manufacturing technique or know-hows often get branded by retailers.
Amazon recognized the importance of branding early on and created “Amazon Brand Registry” to help companies to protect their brands. Once registered, the companies who own brands can efficiently monitor and control products marked with their brand names and logos; now Amazon is requiring brand owners to register their brands with the United States Patent and Trademark Office first, for which I get an increased number of inquiries.
Even if you sell only via offline channels, you need a U.S. trademark registration to protect your names in the online space. For example, if a retailer opens an Amazon Seller account in a name well known as a local beauty supply store, consumers in the local area may make online purchases relying on the local retail store’s good will. This is an outright trademark infringement, but without a trademark registration you may not stop them easily.
Trademark registration is a simple but important legal process.
If you understand the process and prepare accordingly, you can greatly reduce the cost of registration. You may visit the USPTO website to learn about the process. For your information, I estimated the typical cost and time required for the following hypothetical situations.
If you are registering a mark that is already in use,
You need one or two days to gather relevant information and evidences of your use. Most of all, you need pictures of your product, advertisements, and logo image, among others, and you need to confirm that the mark meets legal requirements.
Filling out an application form takes only minutes (up to an hour for a novice applicant) using the Trademark Electronic Application System by the USPTO for free1. You can use your credit card to pay online for the application fees, which are around $250 in most cases.
In three to four months, the examination begins, and in a month your trademark can be officially registered.
If you are registering a mark that you intend to use in the future,
Although the process is not too different, you probably want to consult a professional2 about the appropriateness of your intended mark i.e. whether the mark will be legally enforceable. A short consultation that costs only 20 minutes of your (and your attorney’s) time can be extremely productive.
You need to provide an evidence of your actual use within a required period, which is usually 6 months, to complete the registration process.
If you already have a USPTO registered trademark,
Trademark registration must be renewed, but many trademark owners fail to do maintenance and end up abandoning their rights.
Regardless of a continued use, the registration can be cancelled unless you pay maintenance fees (from $100 to $425) at 5-10 years interval as prescribed by the USPTO.
Now, small to mid-size retailers can reach the national market thanks to the advancement of logistics and order fulfilment services. This also means even if you are focusing on a local market, you need to compete with retailers and wholesalers across the country.
If you have not registered your trademark or only registered with the state government, you should take steps to protect your brand and your customer’s trust with a USPTO trademark registration.
Online trademark registration websites charge around $50 fees for online filing, but anyone can use the USPTO online application system online for free. ↩︎
Most Intellectual Property (IP) attorneys can provide competent consultation on trademark issues. ↩︎
Lately, the automotive industry is under a fierce competition for developing autonomous (self-driving) vehicles. Automotive companies around the world, including GM and Ford of North America; Daimler, BMW, VW Group of Europe; Toyota of Japan; and Hyundai Automotive Group of South Korea, are just a few examples, and technological innovations to enable autonomous vehicles are brought about in Silicon Valley as well.
Hence, it is not a surprise that the intellectual property (“IP”) lawsuit between Google and Uber, who are leading the research and development of autonomous vehicles in Silicon Valley, caught the public’s attention. Google, through Waymo (an autonomous car development company owned by Google’s parent company Alphabet Inc.), alleged that a former engineer of Google stole a large amount of computer files containing trade secrets and illegally provided them to Uber.
Stealing technologies, know-hows, and customer information from competitors through industrial espionage or other illegal means are hardly new. However, the scope and extent of the damages that can be done by those illegal activities are ever increasing due to the advancement of data storage technology. News coverage on the issue is somehow limited to high-tech espionage across the borders like the semiconductor trade secrets sold to China, but the problem is not limited to big corporations or within the high-tech industry.
For example, a design and specification of a new product, customer information, or production or purchasing information can be stored in a USB thumb drive and handed over to a competing business, which results in a substantial profit loss to a company or business owner. It is typical to have a non-disclosure agreement with employees for a relatively large company, but even without a non-disclosure, confidential information that has an economic value of its own can be protected by the trade secret law.
Last year, the Defend Trade Secrets Act of 2016 was enacted by the federal government, which is likely to bring many positive changes.
An example of such change is the lawsuit between Google and Uber. This lawsuit is one of the first trade secret infringement lawsuits brought under the federal law and will likely become a precedent that could affect many cases to follow if it goes to the trial. Here comes the summary of the case.
First, Google learned from its supplier that Uber’s LiDAR design is strikingly similar to Google’s patented technology. Autonomous vehicles recognize their surroundings through a LiDAR, which stands for Light Detection and Ranging.
Google secured a forensic evidence that a former engineer, who now works at Uber, downloaded a large quantity of computer files related to the LiDAR technology while he was still working at Google.
In response, Uber claimed that it developed its LiDAR technology independently, but without a hard evidence to support the claim, the evidences are in favor of Google’s claim of trade secret infringement.
If Google prevails in the lawsuit, the court may issue an injunction that forbids Uber from utilizing the LiDAR technology, which would likely hamper Uber’s development of a self-driving car. Considering the economic value of the LiDAR technology, which is said to be more than a billion dollars, the monetary damages can be a considerable burden to Uber. In addition, depending on the results of a separate criminal trial, the engineer can face an imprisonment up to ten years or heavy fines.
Now, what would be the lesson for the beauty supply industry that can be learned from the Google vs. Uber case? You look at IP litigations worth billions of dollars or the litigation cost over millions of dollars let alone the cost of security systems to protect trade secrets, and you quite reasonably think you cannot afford a trade secret. Nevertheless, there are measures you can take to have your sensitive information protected as a trade secret at almost no cost.
First, you need a thoughtfully drafted confidentiality policy such as “the customer list and the pricing information of products are confidential and must be disclosed only to the owner and the manager during two years from the creation of the relevant information.” You will not prevail at the court with an overbroad policy statement like “everything related to the business is confidential.” By simply placing a policy statement on the first page (or header/footer) of relevant documents, you can officially set forth the policy.
Second, work computers and storage devices such as laptops and flash drives must be owned by the company, and you should restrict the use of employees’ personal devices or accounts to access or store company data. Without such policy, it would be hard to pinpoint the records of access and download related to illegal activities.
Third, when you notice a breach of confidential information, you should preserve the evidence and report to the authority as quickly as possible. (Reference: Reporting Intellectual Property Crime) You will need to file a civil action against the perpetrator for an injunction or to claim monetary damages, but individuals and organizations who misappropriate a trade secret with a criminal intent are also subject to criminal penalties.
It is already proven by the experience of many companies and security experts that you can greatly reduce a trade secret infringement by educating employees about the seriousness of the offense and spending a reasonable time and effort to secure your confidential information.
A provisional patent application does not become an issued patent. It actually just sit in the USPTO without being examined for potential issuance. Then, what a provisional patent application do? It basically earns time to decide whether you should go forward with obtaining patent for an invention.
How it goes?
You basically disclose your invention in writing, send the document to the USPTO where it will be time-stamped, and your priority date for establishing “who invented first” is valid for a year.
If you file a non-provisional application within the year, your application will undergo examination and eventually can get issued to become a patent.
Why it matters?
Well, you usually don’t know if your invention is going to be something you can and want to profit from at the time you come up with your invention. Provisional applications require lower cost to prepare (by lawyers) and file with the USPTO compared to non-provisionals. Hence, you save money while preventing others from taking your idea away.
In practice,
It could be a routine practice to file a provisional first, followed by a non-provisional in an almost full year. It just makes sense to be cautious before incurring a significant financial burden. However, in some cases, an inventor may intentionally delay the examination of the patent by filing provisionals because they believe the application has very low likelihood to become an issued patent.
Lastly,
As soon as you file a provisional application, your invention is “Patent Pending” just like non-provisional applications. It usually means that you can start disclosing and selling your invention without worries about someone running to the USPTO to steal your idea!
A trademark is a mark you use in order to identify your good or service.
For instance, IPfever is a trademark as it’s associated with services and contents offered at IPfever.com. If a law professor wants to start a blog about IP, she shouldn’t name it IPfever. Such naming would mislead people to think that the blog was associated with IPfever.
But, on the other hand, if a medical researcher encounters a feverish symptom related to Information Profession, she’s free to call it “IP fever,” to publish a paper titled “IP fever,” and so on. There’s no problem with such designation because the trademark IPfever, at the moment, has nothing to do with medical diagnosis.
So, you can freely catch an IPfever, and you may sell an IPfever brand roasted coffees. But you may not provide an IPfever service if that’s related to what is offered on ipfever.com.
That’s a brief overview of what trademark does and doesn’t. Let’s find out more.
