Archive
Steps to Protect Trade Secrets
By: Suzan Hixon and Brittany Riley
Developing businesses must take certain measures to protect their brand and products in order to survive. An integral part of these safety measures is the protection of trade secrets. A trade secret is a formula, practice, process, design, instrument, pattern, or compilation of information which is not generally known or reasonably ascertainable, by which a business can obtain an economic advantage over competitors or customers.
The Uniform Trade Secrets Act (UTSA) was enacted in 1979 and amended in 1985 to provide a legal framework for improved trade secret protection. Since trade secret law is a matter of state law, the UTSA is not controlling in every state. Currently the UTSA framework has been enacted in 46 states and the District of Columbia. The prefatory note of the UTSA provides its original motivations:
A valid patent provides a legal monopoly for seventeen years in exchange for public disclosure of an invention. If, however, the courts ultimately decide that the Patent Office improperly issued a patent, an invention has been disclosed to competitors with no corresponding benefit. In view of the substantial number of patents that the courts invalidate, many businesses now elect to protect commercially valuable information by relying on the state trade secret protection law.
Thus, information qualifies as a trade secret only if reasonable efforts are taken to keep it a secret. If reasonable efforts are not employed, the information cannot be enforced as a trade secret. The more efforts taken, the less likely it is that a trade secret will be found unenforceable. Although trade secret law is state specific, there are general guidelines that companies should take to protect their trade secrets:
- Restricting Access to the Trade Secret
In order to maintain the secrecy of a trade secret, the information must be kept in a restricted area. For instance, confidential processes, devices, or information can be kept in restricted areas. Documents or devices should be kept in receptacles such as a lockbox. When trade secrets are maintained on a computer database, measures such as firewalls, cryptology, and passwords should be used to restrict access.
Likewise, restrict personnel having access to trade secret information to only those who need to know. This can be accomplished through the use of keys, passwords, combinations, or other means. Furthermore, visitors should not be allowed to visit areas where trade secrets are performed or kept.
Lastly, the number of confidential information documents should be limited, conspicuously marked “Confidential,” and all unnecessary copies destroyed.
- Using Agreements to Restrict Others From Using or Disclosing the Trade Secret
Generally, companies should be concerned with two types of agreements to protect their trade secret: 1.) employee agreements and 2.) agreements with others given access to trade secret information. Arguably, employees have an implied duty not to use or disclose an employer’s trade secret; however, confidentiality or non-disclosure agreements clarify any ambiguities regarding trade secret status and provide notice to the employee. Some companies find it prudent to require an “exiting” employee to identify his/her new employer and potential employment responsibilities so as to allow notification to the new employer of the use and disclosure restrictions.
A similar agreement should be required for non-employees who have access to trade secrets, such as contractors, suppliers, vendors, or potential licensees.
- Providing Notice of the Trade Secret
Under the UTSA, liability for trade secret misappropriation often turns on the misappropriator’s knowledge that such information was a trade secret. Thus, notice is important to maintaining the confidential status of a trade secret. Along with non-disclosure agreements, employers should consider performing exit interviews for employees ending their employment. During this interview, the employee can be reminded of the significance of the non-disclosure agreement. After the interview, the employer should write a letter summarizing the information discussed in the interview and, if possible, identify all trade secrets of which the employee has knowledge. These steps make it difficult for a former employee to claim that he or she had no reason to know that the information was a trade secret or acquired by improper means.
Employers should also consider providing documents and other things that include trade secrets with legends or sign indicating it is proprietary trade secret information. Likewise, signs should be posted in areas in which trade secret information is kept.
The measures discussed above are not meant to be an exhaustive list of the precautions that should be taken in protecting trade secrets. Hopefully, it will serve to assist businesses in recognizing that insufficient precautions are being taken or that a system should be put in place if trade secret protection is desired. In instituting a system to protect trade secrets, companies should consult with an intellectual property attorney.
Protecting Your IP When Pitching to Investors
By: Suzan Hixon and Brittany Riley
Entrepreneurs are often stuck in a detrimental cycle of creating marketable ideas, but being afraid to pitch them when seeking funding. This cycle may be attributed somewhat to insecurity, but a main cause is fear that someone may “steal” the idea. Many entrepreneurs sit around attempting to “start an idea”; however, this approach is faulty in many respects. In order to be successful, these entrepreneurs should be “starting a company” and focusing on the execution of their idea.
Pitching an idea or a company to potential investors is inherently risky, but it is often essential. Therefore, it is imperative that entrepreneurs take certain precautions when making their pitch. First, it is a good idea for entrepreneurs to protect their brand by file for trademark protection, and protecting their creative expressions by filing for copyright registrations. Entrepreneurs should also consider applying the copyright notification symbol (i.e., ©) as well as the trademark notification symbols (i.e., ® for registered trademarks, or ™ for non-registered trademarks). Inventors should apply “patent pending” and/or the patent number, if applicable. These symbols provide notice to potential investors that the entrepreneur recognizes and appreciates intellectual property, and that he is serious about protecting his intellectual property. There are also some more pitch-specific precautions that entrepreneurs can take.
During a pitch, it is important for an entrepreneur to limit what is provided in the “pitch packet.” The entrepreneur should only give the potential investors a general view of his idea. Entrepreneurs should already be cautious in selecting investors to pitch their idea or invention to; nevertheless, they should be careful in what information they disclose. Entrepreneurs should focus on what their idea or company will do, and not exactly on “how” it does it. While revealing too much about an idea is one problem, being too secretive can kill a potential deal, too. If entrepreneurs do not provide potential investors with enough information about the idea, or if he acts too secretive about it and starts throwing non-disclosure agreements around, then the investor will likely show the entrepreneur the door.
Entrepreneurs preparing for a meeting with potential investors can also consider including certain language in their pitch packet establishing the expectation of confidentiality and ownership of the information contained therein. An example:
CONFIDENTIAL INFORMATION FOR YOUR EYES ONLY.
[Entrepreneur’s name/company] respects the intellectual property rights of others, and we ask that you do as well. All materials included within [Name of Pitch Packet], including, but not limited to, names, trademarks, graphics, renderings, code, and text, are the property of [Entrepreneur’s name/company], and are subject to copyright owned by [Entrepreneur’s name/company]. Any reproduction, retransmission, or republication of all or part of any material, document or element is expressly prohibited, unless [Entrepreneur’s name/company] has expressly granted prior written consent to reproduce, retransmit, or republish the material. All other rights reserved.
Including a confidentiality and ownership clause in a pitch packet, similar to the one above, is not a guarantee that someone will not try to steal an entrepreneur’s idea, but it may act as a deterrent and it may provide the entrepreneur with more legal standing to pursue infringers.
Furthermore, entrepreneurs should attempt to establish some level of implied confidential relationships with third parties. This implied confidential relationship occurs when the conduct of the parties indicates that they intend to create one. Creating this type of relationship will give the entrepreneur legal rights similar to those created by a written agreement. However, entrepreneurs should be warned that it is more difficult to prove that such an implied confidential relationship existed. Of course, entrepreneurs can attempt to have investors sign a non-disclosure agreement, establishing the relationship between the parties and binding the investors from disclosing or using the information revealed to them, but it is very unlikely that any investor would consider signing such an agreement, and it could serve to set a negative tone between the parties.
Although there is no guarantee that potential investors will not try to steal an idea pitched to them, being proactive in preparing for a pitch will prepare the entrepreneur for the best course of action for the situation. Thus, entrepreneurs should get out there and create something that may be a good or bad idea, and selectively pitch it to potential investors.
Unusual Trademarks
By: Suzan Hixon and Brittany Riley
Trademarks usually encompass words, logos, and images that are used to identify the source of a product or service. They appeal to our visual sense and our ability to relate what we see as an identifier. However, the scope of trademarks has been expanded to include four of the five senses: hearing, sight, touch, and smell. Companies have successfully registered sound, motion, texture, color, fragrance, product shape, and product packaging through the United States Patent and Trademark Office.
Sound Marks
Some sounds automatically register with us as belonging to a certain product. A certain sound of a quacking duck immediately makes us think of Aflac. “Yahoo!” sung in a yodeling style causes us to picture an internet search engine. Although there are numerous sounds that are associated with certain services and products, not just any sound can be registered. Additionally, the sound cannot be commonplace in that it is normal in the course of operation. The sound must have an “acquired distinctiveness” in that it must be unique and distinctive. A distinctive sound is one that is capable of distinguishing the goods or services upon which it is used from the goods or services of others.
Motion Marks
Motion marks on television and websites can be a very effective marketing tool. Unfortunately, researching motion trademarks in the United States can prove difficult. Although not much information exists regarding registering motion trademarks in the United States because it is rare, motion trademarks may be easier to register than sound trademarks because registrants do not have to prove acquired distinctiveness. The difficulty in registering a motion is in producing the drawings required by the USPTO.
Motion marks also include holograms. A hologram is used to perform the trademark function of uniquely identifying the commercial origin of products or services. In order to register a hologram as a trademark, there must be evidence that consumers would perceive it as an indicator of source. This standard is hard for trademark applicants to meet because the common use of holograms for non-trademark purposes means that consumers are less likely to perceive the use of holograms as trademarks.
Texture Marks
Unlike a motion trademark, to register a texture trademark the registrant must prove that the mark has an acquired distinctiveness. However, a texture trademark has an additional requirement that may lead to difficulty in registration: the texture being registered cannot be a functional feature of the product. For instance, The David Family Group, LLC was able to register a mark that consists of a leather texture wrapping around the middle surface of a bottle of wine. On the other hand, the maker of BAWLS soft drinks was unable to register the bumpy textures of its bottles because the “bumps” served as grippers to keep the bottle from slipping out of consumers’ hands.
Color Marks
In the past, color, by itself and not as part of a design, has been considered incapable as serving as a trademark. The USPTO relied on numerous reasons for this conclusion, mainly mere functionality. Color was viewed as an enhancer of the aesthetic quality of the object or design. These conclusions regarding color marks still remain in some instances; however, a color mark can be registered if it consists solely of one or more colors and is not functional. A color will be deemed functional if it has a utilitarian advantage/purpose, is more economical, or is aesthetically pleasing and helps to improve the salability of a good or service. Companies such as UPS and Christian Louboutin have successfully registered color marks.
Scent Marks
Successful registration of scent marks in the United States has been limited. The doctrine of functionality is the main reason for the restricted registration of fragrances. A seminal case allowed for the registration of scented sewing thread and embroidery yarn; however, at the time of registration, no other company had ever offered these products for registration. Recently, Amyris Biotechnologies, Inc. registered the citrus scent for biofuel.
Conclusion
With ever-changing technology, the registration of non-conventional trademarks is prevalent. Although the requirements for registration can be difficult to achieve, registration of such trademarks is important in protecting entrepreneurs’ rights to their products. The creation of new technology will allow us to see how far trademark protection will span; however, the definition of trademark inherently allows for a wide range of protection and flexibility.
What Trademark Owners Can Learn from Counterfeit Wines
By: Suzan Hixon and Brittany Riley
We usually immediately think of designer purses, shoes, and electronics when talking about counterfeit goods. In the case of logos and brands, counterfeiting results in trademark infringement. However, the illegal imitation of products is expanding to food and drink. Recently, a renowned wine dealer, Rudy Kurniawan, was arrested for auctioning 84 bottles of counterfeit wine purporting to be from Domaine Ponsot in Burgundy, France, which were expected to sell for approximately $600,000. Prosecutors maintain that the wine was not authentic. Unfortunately for Mr. Kurniawan, the crime he is charged with is serious, as the bad-faith sale of any commodity that is known to be a counterfeit, fake or forgery is a felony.
Unfortunately, instances of “label fraud” are not new to the wine industry. Label fraud is where counterfeit labels from cult wines and other rare and expensive wines are affixed to bottles of less expensive wine and then resold. During the 1980s and 1990s, wine collector Hardy Rodenstock was infamous for selling fake “Jefferson bottles,” rare Bordeaux wines bottled for American President Thomas Jefferson.
At the surface, counterfeit wines seem to only hurt the buyer; nevertheless, label fraud can have serious repercussions for the wine market as a whole. For instance, the presence of counterfeit wines in the market has the greatest potential to impact the wine industry in the areas of financial loss, damage to brand reputation, and liability. The potential cost to vintners has caused them to look to new technologies—from security inks to micro-chipped corks to laser-coded bottles—in order to protect their brands from fraud. Other producers have worked with printers to develop graphics or micro-printed multicolored codes that are only visible with magnification. Some vintners even use holograms or unique etchings on their bottles.
The expansion of fraud within the wine industry can serve as a lesson to all trademark owners. Expanding technology will allow counterfeiters to copy almost any product, especially luxury and high-end products. Trademark owners who are worried that their product will be subject to counterfeit techniques can learn from the wine bottling and labeling industry by applying protective techniques to their own products. The use of micro-chips, microprinted multicolored codes, and holograms can be applied to various products depending on the material and cost. Although the methods used by vintners to protect their brands from fraud may seem expensive and excessive, it evidences how costly and damaging counterfeit products can be to the success of a brand and/or an entire industry.
Pinterest: Pinning it to the User?
By: Suzan Hixon and Brittany Riley
For years, women of all ages have spent countless hours creating collections of ideas in scrapbooks for outfits, future weddings and homes. In the same way that email and Facebook virtually eliminated handwritten letters, scrapbooking in its tangible form is surely dwindling with the creation of the social media site, Pinterest.
Pinterest is an internet based pin-board site where users “pin” their favorite recipes, books, clothes, photos, and quotes on customized “pinboards” for other “pinners” to follow. According to VentureBeat (www.venturebeat.com), Pinterest has become one of the top trafficked social network sites online. However, success is not always sweet.
Pinterest’s increasing popularity creates significant issues in terms of piracy and copyright law. Many Pinterest users post photographs on their pinboards without ownership of the copyright to the image. Thus, questions arise as to the potential for copyright infringement. Unsuspecting pinners use bookmarklet to pin as they browse the web. When they see an image they want to pin, the pinner simply clicks “Pin It” on their browser, designates the board to be pinned, and the image is “magically” transferred it to the designated pinboard. The process is seemingly innocent and all-too easy, but the consequences can be dire.
Pinterest warns users in the Copyright and Trademark section of their site that pinners may receive a notification that a pin has been removed due to a copyright complaint if the content’s owner makes a complaint. Those users who receive numerous copyright complaints can lose their ability to pin new images or, even worse, have their account terminated. Loss of one’s account or pinning capabilities is an insignificant consequence compared to the legal and financial ramifications that users could suffer.
Without the permission of the copyright owner, pinners are arguably infringing images. Pinterest has provided some relief for disgruntled copyright owners through offering a small piece of code that can be added to the head of any page of a website to prevent images from being pinned. However, Pinterest offers no protection for its users. Pinterest is truly pinning it to the user. Pinterest’s Terms of Use section reveals users are solely responsible for what they pin and re-pin. Users must have explicit permission from the owner of the image to post anything. Furthermore, the section reveals that users agree to bear the entire risk “TO THE MAXIMUM EXTENT PERMITTED BY LAW” arising out of use of the site. Users are responsible for paying for their own lawyer and for Pinterest’s lawyer when litigation ensues. They are also saddled with an indemnification clause, which means that users (now defendants) must pay all charges against themselves and Pinterest.
Whether or not copyright owners will assert claims for infringement is yet to be seen. It could be argued that Pinterest increases website traffic and sales for owners, but not all copyright owners are retail businesses. Like the defendants in suits associated with Napster, many users are unsuspecting, well-meaning people with little or no legal knowledge. In fact, attorneys and law students alike failed to read the “fine print” when creating their Pinterest account. Now users must decide whether to take a risk and continue to discover and share their favorite images, only pin and re-pin images they own or have permission to use, or delete their account altogether.
If you decide to keep your Pinterest account, be “copyright friendly” and protect yourself by pinning the original source. By ensuring that the image you are pinning goes back to its original site you can help protect yourself from infringement claims. Also, give the original site credit for the image. See http://www.graphicsfairy-crafts.com/2012/03/how-to-find-original-source-of-image-on.html for a great tutorial on how to find the original source of an image!
If you are the owner of an image, watermark your image. Pinterest does not currently permitting the cropping of images; therefore, you should always receive credit as the original owner. If you do not wish for your image to be on Pinterest at all, take advantage of the code that Pinterest offers that can be added to the head of any page of a website to prevent images from being pinned.
Partnership Agreements: A Business Pre-Nup
By: Suzan Hixon and Brittany Riley
Entering into a Pre-nuptial Agreement is viewed by many modern couples as a preparative and cautionary step rather than a forecast for a stormy marriage. However, this trend has not been analogously spilling over into the business realm with the use of Partnership Agreements. Unfortunately, many entrepreneurs form partnerships without entering into Partnership Agreements, basically a business Pre-nup! Business partners worry that defining the terms and charting the course of a corporate breakup will cause tension in the business relationship. Can the awkwardness of having this binding document looming over the business be avoided? Can business partners trust each other knowing that certain actions will most certainly throw them into default and begin the track to the disintegration of the business entity?
The answer is YES! The purpose of a Partnership Agreement is much like the Pre-nuptial Agreement that couples enter into before entering a marriage. It defines the business relationship and maps out how the parties to the agreement shall proceed in the unfortunate event that the relationship or business fails. Like partners in a marriage, business partners do not go into the relationship assuming it is going to fail. However, it is smart to go into any association with a mutual understanding. And a Partnership Agreement (as well as the Pre-nup) serves to solidify that mutual understanding. Similar to a Pre-nuptial Agreement, a Partnership Agreement sets out what the business partners agree to during the course of the business relationship. The Agreement explicitly details the obligations and contributions of each partner to the partnership. It should attempt to cover as many business situations as possible that could arise during the partnership’s life; however, business partners and attorneys cannot see into the future. Partnership Agreements could have holes, and, like a Pre-nup, a truly ironclad Partnership Agreement is rare. Nevertheless, a Partnership Agreement is a great way to make sure there is a meeting of the minds going forward into the relationship.
Thus, certain elements are essential to any partnership agreement, such as the duration of the partnership, the business purpose, each partner’s contribution/compensation, management authority, admittance of new partners, and disposition of the partnership. One of the most important elements of any Partnership Agreement is dispute resolution. This clause stipulates the type of mediation or arbitration to be utilized in the case of disputes that cannot be resolved amongst the partners. It is here that a Partnership Agreement is most similar to a pre-nuptial agreement in its “safeguarding” effect on the relationship. A clause such as a dispute resolution clause acts as an impediment to a hasty “divorce” between partners. Participating in mediation/arbitration is akin to going to marriage counseling in that it causes the parties of the relationship to attempt to resolve their issues before taking the ultimate step of dissolution.
Therefore, it is important for business partners in any form of partnership, whether it is a small start-up business or a large operation, to consider the breadth, boundaries, and limitations of their relationship and to overtly form a goal. Like any marriage, no one wants to fail. On the other hand, one must be realistic and realize that problems will arise and agreement may be difficult to obtain. In these instances, a Partnership Agreement is a valuable and effective tool for resolving such issues. Each partner will enter into the relationship knowing what is expected of him/her and what he/she can expect from other partners and the business entity. Furthermore, partners can rest assured that a system is in place in the event of major disputes that may put the success of the entity in danger. Entering into an agreement before any relationship is not anticipation of an end; rather, it is an exercise of caution, preparation, and hope for a strong relationship by setting goals, expectations, and procedures for resolving conflict at the outset of such an association.
Scandalous and Immoral Trademarks
By: Suzan Hixon and Brittany Riley
Trademark law is a heavily regulated field. Those wishing to register a mark must file an application and respond to an Office Action detailing certain issues with their mark that may prevent registration. However, regulation of trademarks extends far beyond the process of registration in that Section 2(a) of the Trademark Act, 15 U.S.C. 1052(a), is an absolute bar to the registration of immoral or scandalous matter. Case law has defined such matter as that which is shocking to the sense of propriety and offensive to the conscience or moral feelings or calling out for condemnation. For instance, immoral or scandalous matter is that which would be regarded as vulgar by a substantial component of the general public. This analysis includes consideration of who the likely viewers. If an applicant seeks registration of mark that will be in viewed in grocery stores, then the USPTO examining attorney may consider whether parents shopping with their children would find it inappropriate to expose their children to such a mark.
A number of applicants have been found to be in violation of this provision. Most notable are the musical group, LMFAO, and lesbian motorcycle club, “Dykes of Bikes.” In 2003, the San Francisco Women’s Motorcycle Contingent filed an application for the mark DYKES ON BIKES. The group was sent numerous Office Actions and filed responses to each. In 2006, the organization won the battle to trademark DYKES ON BIKES,” having struggled for 3 years to persuade the PTO that the element “dyke” was not offensive to the lesbian community. This success was achieved after a prolonged court battle involving testimony on the word’s changing role in the lesbian community, thus the Trademark Trial and Appeal Board permitted the group to register its name. In the same manner and more recently, the electronic pop group, LMFAO, struggled to trademark its moniker. In 2008, the band originally attempted to obtain federal trademark registration its name. However, the USPTO examining attorney, who claimed that the trademark consisted of “immoral, deceptive, or scandalous matter”, refused the group’s application. LMFAO has since filed four applications attempting to trademark their name. This time, they have taken note that they are more likely to be successful in registering their mark if it does not contain an alleged curse word. The applications reveal that the term LFMAO stands for “laughing my freaking ass off” rather than the other “F word” that would lead to the denial of their applications.
The prosecution history of the trademarks DYKES ON BIKES and LMFAO leads to important questions regarding government regulation. If an examining attorney refuses a mark based on it being immoral or scandalous, he/she must provide support of that refusal through evidence that a substantial portion of the general public would consider the mark to be scandalous in the context of contemporary attitudes and the relevant marketplace. Still the question remains, whether the USPTO should be defining the general public’s moral compass? This question is important when one considers that other portions of intellectual property are not subject to the same amount of policing. For instance, LMFAO could file a patent for certain items, such as sex toys, that the general public may consider equally as scandalous. In a society filled with people of different religions, political affiliations, and beliefs, it is difficult to form a correct answer. What may be immoral to some can be perfectly normal and acceptable to others.
Trademarking Baby Names
By Suzan Hixon and Brittany Riley
Radio Inspektor, Apple, Seven Sirius, CoCo, Banjo, Alcamy, Dweezil, Moon Unit, and Diva Muffin. No, these are not the names of the latest technology companies or fashion design houses; rather, they are the given names of children born to celebrities. Following suit in the modern quest to develop the most unique baby name, singers Beyonce and Jay-Z named their daughter, born January 7, 2012, Blue Ivy Carter. The proud parents continued in their efforts to promote and protect their “brand” by filing for Federal trademark protection of the name of their daughter under Beyonce’s company, BGK Trademark Holdings.
A trademark is a word, phrase, symbol, and/or design that identifies and distinguishes the source of the goods of one party from those of others. The application for the trademark BLUE IVY CARTER is currently pending registration with the USPTO, and BGK Trademark Holdings received an Office Action in a mere 12 days after the application was filed. One issue with the application is that “a written consent, personally signed by the individual whose name, signature, or portrait appears in the mark, authorizing applicant to register the identifying matter as a trademark with the USPTO.” Clearly, Blue Ivy cannot sign on her own behalf. Thus, her parents will have to provide consent.
To lay people, this seems to be an excessive step. However, by filing for trademark protection of the mark BLUE IVY CARTER, Beyonce and Jay-Z have staked their claim in the business world. The trademark does not prevent other parents from following suit with the unique moniker; rather, it precludes entrepreneurs from profiting from the name. According to the USPTO website, the trademark BLUE IVY CARTER covers goods and services such as fragrances/cosmetics, baby carriages, key chains, books, bags, clothing (children and adult), hair accessories, and entertainment services. In order to obtain and maintain a federal trademark registration, BGK Trademark Holdings will eventually have to use and continue to use the mark in commerce. Therefore, Beyonce and Jay-Z must be very busy formulating ways to market their new addition.
So did Beyonce and Jay-Z go too far? Is this just another instance of celebrity egocentrism? Obtaining a trademark for their daughter’s name was probably a smart move in order to protect against economic exploitation. Such a protective action is based on the assumption that entrepreneurs would attempt to profit from their daughter’s name. It seems that Beyonce and Jay-Z were smart (or forward-thinking and intelligent attorneys) as CBH by Benton Clothier LLC in Long Island, New York applied to trademark “Blue Ivy Carter Glory IV” on January 20, 2012, a mere six days before BGK Trademark filed its application, and only 13 days after Blue Ivy’s birth. This application is also currently pending until the USPTO receives a letter detailing the applicant’s response to the issues found within the application.
Beyonce and Jay Z have possibly opened the floodgates to celebrity baby name trademarks. The application process has been much shorter than what most attorneys and applicants are used to. BGK has 6 months to respond to the issues brought up in that Office Action, such as likelihood of confusion. It will be interesting to see how CBH by Benton Clothier LLC responds to the office action and how it deals with the consent issue that BGK Trademark Holdings should be able to overcome.
Smooth Criminal: Michael Jackson’s Patent for “Method and means for creating anti-gravity illusion”
For any of you all who were born pre-1980, we’ve all seen. Michael Jackson’s sweet lean move during his rendition of “Smooth Criminal” on stage and in his videos. This move is actually protected by US Patent Number 5,255,452 “Method and means for creating anti-gravity illusion.” Translation: special loafers fitted with heels that can slot into the stage floor to allow the wearer to lean forward, at gravity-defying angles. The patented system uses a notched bracket that rises from the floor of the stage, and into which specially designed shoes can latch. The patent refers to similar arrangements on astronauts’ shoes, for use in zero-gravity. And you thought the only thing Jackson left behind was his music?!
The moral of the story? Patent protection for your inventions may NOT be so obvious.
The patent issued on October 26, 1993, so will soon be expired. Let’s just keep our fingers crossed that Justin Beiber doesn’t start using this in his concerts!
Choosing a Trademark for your Company, Service or Product? A Few Tips!
United States trademark law recognizes a “spectrum of distinctiveness,” a sliding scale of protectability, where the more distinct and unique the term, the easier it is for the owner to claim and be granted exclusive trademark rights for that term. Trademarks fall somewhere on this scale of distinctiveness, ranging from “coined”, which is the strongest, to “generic”, which is worthless:
COINED – Very Strong/Valuable (invented/made up words such as STARBUCKS and KODAK)
ARBITRARY – Strong/Valuable (words/images without connection to THE goods or services, such as APPLE and BLACKBERRY)
SUGGESTIVE – Good Value (words/images that allude to the goods or services but do not describe them such as GREYHOUND and PUP-PERONI, my personal favorite!)
DESCRIPTIVE – Weak/Low Value (words/images that refer to the character or quality of the goods or services, or an ingredient or aspect of them, such as JUICY STEAK)
GENERIC – Worthless (words/images that are names of the goods or services in any language)
The mark you choose should be strong, not just for registration purposes, but for the purposes of value and enforcement. Even a registered mark, if descriptive, may not be sufficient to prevent others from using the mark in association with those services because it will be difficult to enforce “fair use” of the mark for other purposes. Initially, you may be tempted to use a descriptive mark. However, keep in mind that the most valuable marks in the world reside on the upper end of the scale (i.e., “coined” and “arbitrary”). Coined and arbitrary marks are generally the easiest to register because there is no connection between the mark and the goods or services (as is the case with descriptive and generic marks), but they may present a marketing challenge when trying to educate the public about your company, goods or services.
Companies may choose a descriptive trademark even though it is a weak mark because there are marketing benefits to using a mark that describes the product. The USPTO generally hesitates to allow registration of a descriptive trademark because it describes all other competing products too. While descriptive trademarks have an initial marketing ease, there are many disadvantages to using them. These include increased costs of trying to register descriptive trademarks, which are routinely rejected by trademark offices worldwide. In the event that the owner of a descriptive trademark is not able to develop secondary meaning in the trademark (consider the now-registered mark HONEY BAKED HAM COMPANY), the mark is not protectable and consequently the owner will not be able to prevent others, even competitors, from using the same or similar terms.
Suggestive trademarks often strike the perfect balance, protectable as trademarks while still suggesting characteristics of the company, goods or services.
Surnames
When creating your trademark, it is important to avoid marks which are the full name or a surname of an individual living or who has died in the last 30 years. In certain circumstances, it is possible to obtain registration of a surname as a trademark, particularly with permission of the individual (Taylor Swift owns the mark TAYLOR SWIFT). If you file to register a mark which appears to be someone’s name, you may be required to swear under oath that no such person exists, that the person is long dead, or to supply a written permission from the person named.
Expansion
Avoid names that include a geographic area. Besides being easy to forget, and difficult to protect under trademark law, a geographical name may no longer fit if your business expands its sales or service area. Especially if you plan to sell products on the Internet, you should think twice about giving your business a geographic identifier.
Also, don’t limit expanded product lines, and don’t choose a name that might not be representative of future products or services. Also, consider choosing a mark which lends itself to becoming a “family” of marks. For example, MCDONALD’S, MCMUFFIN, MCRIB, etc.
Scandalous Marks
Believe it or not, the USPTO has been granted the subjective task of deciding what is scandalous or disparaging material. Obsenities and racial or ethnic epithets are often rejected by the USPTO, and, due to it’s subjective nature, many marks actually get registered which are arguably scandalous or disparaging.
Insignia
Avoid insignia of a government agency, or of certain organizations protected by law, such as the insignia or name of the FBI, Olympics, etc.
“Clever” Misspellings of Otherwise Unusable Marks.
I have a lot of clients ask if they can use fun spellings and iterations of marks that would otherwise not be available. Please keep in mind that this does not avoid the original problem with the mark. You probably could not get a registration for “DISNEE”, as it is too close to the famous mark DISNEY. Also, descriptive mark like “speedy” for a fast car is not registrable if you write it “spee-dee”. Similarly, if “Tomato” is generic for tomato, then so is “Toomatoe”.
Conduct a Search
After you’ve chosen one or more marks that seem possible, and before settling on a trademark and commencing any marketing efforts or spending any marketing dollars, make sure you do a cursory trademark search, by seaching Google and the USPTO website. You may also want to search WHOIS, for purposes of domain name availability. Because so many domain names are now unavailable (at least for a reasonable cost), then you may want to check what is available before settling on a trademark.
Keep in mind that searching on your own has its inherent limitations, and it’s wise, should the cursory search be “clear,” to utilize a third party search firm to search for marks that could be listed in business databases and used at common law. Such a comprehensive search will also check state databases for use of the mark as corporations or LLCs, for example.
