New Year, New Trademark Fees

As an entrepreneur, your brand is critical to your company's image and growth. One of the most important parts of your brand is your trademark. Trademarks are the words, symbols, phrases, and other designations that communicate that your products and services come from you.

One of the best ways to protect your trademark in the United States is through filing a federal trademark application with the United States Patent and Trademark Office (USPTO). The cost to do so is about to get higher because the USPTO is raising a number of its fees on January 14, 2017.  

Of note, the fee for an initial application filed using the USPTO's electronic system will increase from $325 to $400.  The fee for an initial application filed on paper is going from $375 to $600. You can read more about the other fee increases in the announcement on the USPTO's website.

If you'd like to get your federal trademark applications filed before the fee increases, please reach out to us by clicking here. We're happy to help you save every penny you can before the fees go up!

What is a Trade Secret and How Can I Use it to Protect My Technology?

Oftentimes, people come to me wanting to know about patenting their inventions, but few people have considered other alternatives for their creations. One alternative that is often ignored is trade secret protection. Virtually any information that is valuable to a business and gives it a competitive advantage could be a trade secret.

The Uniform Trade Secrets Act (UTSA), which applies in some form in 47 states in the United States, says that a trade secret is:

  • information, including a formula, pattern, compilation, program, device, method, technique, or process;
  • that derives independent economic value, actual or potential, from not being generally known to or readily ascertainable through appropriate means by other persons who might obtain economic value from its disclosure or use; and
  • is the subject of efforts that are reasonable under the circumstances to maintain its secrecy.

In plain English, if you have something that is valuable because other people don't know about it, and you take certain steps to keep it secret, you have trade secret information. Examples of trade secrets include:

  • Google's search engine algorithm,
  • WD-40's formula,
  • the recipe for Twinkies and Krispy Kreme's doughnut glaze, and
  • the method for getting "nooks and crannies" in Thomas' English Muffins.

Trade secret protection may be a viable option for your products, inventions, or other information. Here are some benefits to using trade secret law to protect your invention:

  1. Trade secret protection could potentially last a really, really, long time - maybe forever. Trade secret protection lasts as long as your information remains secret, while a patent generally only lasts for 20 years from the date the application is filed. If you think about the world's most valuable trade secrets, they've been around for a long time - think KFC's fried chicken recipe (more than 70 years old), Coca-Cola's secret formula (more than 100 years old), the method for making Zildjian cymbals (more than 400 years old).
  2. Trade secret protection is relatively inexpensive to obtain, and the protection is immediate. As long as you maintain reasonable efforts to keep your information secret, it is protected - and this happens automatically. This may not require outrageous upfront costs. You will need to have good confidentiality and non-disclosure agreements in place, as well as other policies that protect your trade secrets, but compared to patent protection, the startup costs are significantly lower. To get a patent you have to file a patent application with the United States Patent and Trademark Office (probably through a lawyer), which can be very expensive and take a long time.
  3. Your information is, well, SECRET. With trade secret protection, nothing gets filed with the government and no one gets the blueprint for your valuable information. If you apply for a patent, you have to tell everyone how to make your exact invention, so that in 20 years when your patent expires, everyone can make the same thing without fears of being sued.
  4. More stuff can be protected through trade secret law than patent law. Certain things are not patentable in the United States Patent and Trademark Office. Trade secret law essentially welcomes everything that has value and is kept confidential. Where this becomes quite important is with computer software (hey, my app developers!). It has become increasingly difficult to get a software patent in the United States given some recent case law from the United States Supreme Court. As such, trade secret protection may be an option for those types of inventions.

Final point:

Though most states use some form of the UTSA referenced above, each state may apply and interpret the UTSA in different ways. So, what works in one state may not work in another. If you have trade secret related questions, you'll need to consult with a lawyer licensed in your state about specifics. If we can help you in the states where we have licensed attorneys, please reach out to us here.



What Does it Mean to "Use" a Trademark?

As I've written about elsewhere, the three requirements for trademark protection are use, distinctiveness, and non-functionality. The requirement of "use" can really trip people up.  These three simple letters are actually pretty complicated when it comes to trademark law. I'll explain some of the basics below, but keep in mind this stuff has a lot of nuances. 

In the United States, you don't get a trademark just by saying you have one - you have to stake your claim in it through something called "use in commerce." This is true whether or not you register your trademark with your specific state or with the nationwide US Patent and Trademark Office (there's an exception to this if you're filing something called an "intent to use" trademark application - I'll address this in another post). The legal rule on this states that:

The term “use in commerce” means the bona fide use of a mark in the ordinary course of trade, and not made merely to reserve a right in a mark. For purposes of this chapter, a mark shall be deemed to be in use in commerce—

(1) on goods when—

(A) it is placed in any manner on the goods or their containers or the displays associated therewith or on the tags or labels affixed thereto, or if the nature of the goods makes such placement impracticable, then on documents associated with the goods or their sale, and

(B) the goods are sold or transported in commerce, and

(2) on services when it is used or displayed in the sale or advertising of services and the services are rendered in commerce, or the services are rendered in more than one State or in the United States and a foreign country and the person rendering the services is engaged in commerce in connection with the services.

What does all of this legal terminology mean in plain English? Essentially, if you're selling a product, the trademark has to be placed on those products, or the product's packaging, while you're selling and/or advertising it. If you're providing services (as opposed to selling products), the trademark has to be displayed during the sale or advertising of your services. 

Use cannot be sporadic, occasional, or casual. If you're staking a claim in a trademark, make sure that your use is consistent in all forms. You want to use the same colors, size, font, placement, etc. each time you place the trademark on something. If there's ever a question about whether you've used the trademark in the appropriate way, this will help.

The words "in commerce" mean that you've actually sold something. The trademark rules require that your goods have been sold or transported, or that your services have actually been rendered to others.

With sales, they must be real, legitimate sales where money is exchanged with someone outside of your business. It won't fly if you're just selling a "sham" product/service here and there, or shipping things within your company to your sales reps. But, small companies, don't get worried - if you're a small business without a lot of sales, this is okay. The law requires your good faith, legitimate, bona fide efforts, not millions of dollars of sales.

You want to keep track of this kind of thing and document when and where you're using the trademark in the legal way. If you decide to register your trademark, the application will ask for the first day (month, day and year) that you used your trademark in commerce.

For a federal trademark application through the US Patent and Trademark Office, you'll also be required to prove your use through something called a "specimen," which shows your trademark's use in commerce. Here's some guidance from the US Patent and Trademark Office on what is considered an appropriate specimen:

Appropriate For Goods: Usually, a specimen for a mark used on goods shows the mark as it appears on the actual goods, or on labeling or packaging for the goods. For example, your specimen may be a tag or label displaying the mark, or a photograph showing the mark on the goods or its packaging. A website is an acceptable specimen if the mark appears near a picture of the goods (or a text description of the goods) and your customers can order the goods from the website. A website that merely advertises the goods is not acceptable.

Inappropriate For Goods: Invoices, announcements, order forms, leaflets, brochures, publicity releases, letterhead, and business cards generally are not acceptable specimens for goods.

Appropriate For Services: A specimen for a mark used in connection with services must show the mark used in providing or advertising the services.  For example, your specimen may be a photograph of a business sign,  a brochure about the services, an advertisement for the services, a website or webpage, a business card, or stationery showing the mark.  The specimen must show or contain some reference to the services, that is, it is not just a display of the mark itself.

Inappropriate For Services: Printer’s proofs for advertisements or news articles about your services are not acceptable because they do not show your use of the mark.

State applications may have different rules - you should check the rules of your state if you go that route.

I hope this helps -- if you want to schedule a consultation to get your specific questions answered, please contact us here.





How to Get a Trademark In Your State

If you have a brand name or logo for your business, you may want to consider protecting it. As I've written about elsewhere, there are three basic ways to protect this kind of thing: common law protection, state trademark registration, or federal trademark registration. Federal trademark registration is the most expensive. 

For the entrepreneur/startup who isn't quite ready to plunk down a few thousand dollars on a federal trademark application, a state application is usually a lot cheaper and may serve your purposes for the short (or long term). If you plan on operating solely in your state, a state trademark will protect your brand or logo within your state's borders.

Each state has different application requirements. You can find links to your state's trademark information below.