Your Trademark Registration May Not Mean You Have Trademark Rights

In the United States, trademark rights belong to the first user of a distinctive trademark in commerce.  These are known as common law trademark rights.  A trademark registration with the United States Patent and Trademark Office (USPTO) is not required.  That said, there are benefits to registering a trademark with the USPTO.  A federal trademark registration affords many benefits, among them is what is known as nationwide priority.  Put simply, a common law trademark affords the trademark owner with rights only in the geographic locations in which the trademark was used (along with offering/providing the underlying goods or services).  A federal trademark registration, on the other hand, affords the trademark owner with nationwide rights, regardless of use in a particular geographic location.  However, there is a caveat.  If a common law trademark owner’s rights predate a federal trademark registrant’s rights in a geographic location, a concurrent use issue may arise.  As you can imagine, this can create headaches given today’s Internet economy.  Nonetheless, this is an example of a situation where the owner of a federal trademark registration may have prior rights in most, but not all, geographic locations in the United States.  How the parties peacefully coexist, if at all, is commonly the impetus for dispute, including litigation.

Here are some trademark tips should you find yourself subject to a concurrent use proceeding or other dispute involving geographical limitations on usage of a trademark:

1. It is important for trademark owners to perform trademark clearance searches prior to commencing use of a trademark in hopes of identifying such common law trademark owners.
2. Despite the United States being a first to use jurisdiction for the establishment of trademark rights, you should file for federal trademark protection as soon as possible in order to avail yourself of nationwide priority.  Keep in mind that one may file an intent to use trademark application with the USPTO, meaning you can apply to register a mark before actual use so long as you have a bona fide intent to use that mark (with proof of the same).
3. In the event of a dispute, priority of use versus priority of application for registration should be analyzed.
4. Recognize that concurrent use agreements can allow peaceful co-existence between competing trademark owners, though they must be properly tailored to account for necessary terms and conditions.
5. A state trademark registration provides little, if any, benefit beyond that afforded under common law.  If you wish to register your trademark, always consider federal trademark registration with the USPTO.

So, remember, just because you own a federal trademark registration does not necessarily mean you have prior trademark rights or ultimate exclusivity of rights to your trademark.  If you find yourself needing trademark advice with respect to trademark searches, trademark registration or a trademark dispute (especially one involving common law priority issues), you can contact a trademark attorney for assistance.

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What is a Provisional Patent Application?

A provisional patent application is a patent filing with the U.S. Patent and Trademark Office (USPTO) that allows you to obtain an effective filing date in a later filed non-provisional patent application, without triggering the start of the patent term (patent term begins on the filing date of a non-provisional patent application).  This is particularly important now that the U.S. has adopted a first to file, instead of first to invent, patent filing system.  Even though a provisional patent application never issues into a patent, it typically provides a quicker and cheaper way to obtain an effective filing date with the USPTO.  Provisional patent applications also allow the term “Patent Pending” to be applied in connection with the description and marketing of an invention.

 

Within 12 months from the date the provisional patent application is filed, a non-provisional patent application must be filed in order to claim priority from the filed provisional patent application and the benefit of the earlier filing date.  However, the non-provisional patent application can only claim priority to subject matter that was originally disclosed in the provisional patent application, not new subject matter introduced in the non-provisional patent application.  As a result, it is critically important that the provisional application describes the invention as fully and completely as required in a non-provisional patent application filing.  An informal or poorly drafted provisional patent application will provide very little (if any) benefit.

 

By filing a provisional patent application, you can establish priority rights to your invention with the USPTO and allow yourself up to 12 months to continue working/improving on the invention and generating any additional versions.  As you make any advances or improvements to your invention, you may consider filing additional provisional patent applications to cover the new subject matter.  Multiple provisional patent applications can be filed within 12 months of the first provisional patent application and one non-provisional patent application can claim priority back to each of the filed provisional patent applications.  Thus, all the versions and aspects of your invention can be bundled together into one non-provisional patent application.

 

For more information regarding filing provisional patent applications with the USPTO, see http://ift.tt/2e2W3G1.

 

The patent attorneys at Traverse Legal can help you draft and file provisional patent applications that fully describe your invention.  Traverse Legal’s patent attorneys will work with you to develop a patent filing strategy that best serves your business and intellectual property goals.  Give us a call today at 866-936-7447 for a free consultation regarding your patent needs.

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Trade Secret Protection

What is a trade secret?  Do I (or my company) own any trade secrets?  If so, how do I enforce my trade secrets?  In order to answer these questions, it is very important to understand the Defend Trade Secrets Act of 2016 (DTSA) and its various protections and obligations.  The DTSA creates a federal cause of action for trade secret misappropriation that mainly mirrors most state law under the Uniform Trade Secrets Act.  An owner of a trade secret that is being misappropriated may bring an action under the DTSA if the trade secret is related to a product or service used in, or intended for use in, interstate or foreign commerce.

 

According to the DTSA, the term “trade secret” refers to all forms and types of information if:

• the owner has taken reasonable measures to keep such information secret; and
• the information derives independent economic value (actual or potential), from not being generally known to, and not being readily ascertainable through proper means by another person who can obtain economic value from the disclosure or use of the information.

 

The DTSA also specifically defines what is meant by the term “misappropriation” of a trade secret and provides examples of what constitutes “improper means” to acquire knowledge of the trade secret.  In order to understand these terms and effectively navigate through the DTSA, it is essential to work with an experienced trade secret law attorney.

 

There are several responses that you and your company should be thinking about in light of the DTSA.  First, you should update all of your employment and non-disclosure agreements to incorporate the appropriate provisions from the DTSA, such as those pertaining to whistleblower immunity.  Second, you should determine what information (if any) could be considered a trade secret.  Third, you should evaluate the protections in place to maintain the confidentiality of those trade secrets.  Lastly, you should develop a course of action for the potential misappropriate of your trade secrets.

 

Let Traverse Legal’s experienced trade secret attorneys guide you through the Defend Trade Secrets Act and assist you with identifying, protecting, and enforcing your trade secrets and other intellectual property.  Give us a call today at 866-936-7447 for a free consultation regarding your trade secret needs.

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