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Frequently Asked Questions


What is a trade secret, and how do I protect a trade secret?

A trade secret is any “information, including a formula, pattern, compilation, program, device, method, technique or process” that has actual or potential economic value by virtue of its being secret, and which you make “reasonable efforts” to maintain a secret.

Trade secret protection is sometimes the best option for intellectual property protection, because it can last forever. If you are actually able to sell and use your invention without revealing certain key details of the invention needed to practice it, then trade secret protection may be available. The key is ensuring that you are making “reasonable efforts” to maintain secrecy. Most of our clients who use trade secret protection engage us to review their procedures and ensure that their efforts to maintain secrecy are sufficient.

It is often not enough to simply download the first nondisclosure agreement you find off the Internet and assume this will protect your trade secret if you get everyone involved to sign it. For instance, we have seen many online nondisclosure agreements that only bind the other party to secrecy for a limited period of time—after this period the other party is free to practice the invention. This is a serious flaw in most cases and would completely undermine the inventor’s rights. There are other examples, but suffice it to say that we generally recommend having an attorney draft, or at least review and edit, any nondisclosure or other secrecy agreement.

One risk of relying on trade secret protection is that it does not protect against copying if another party is able to uncover your secret through reverse engineering. Accordingly, if your invention is a mechanical device, it is very likely that it can be disassembled and reverse engineered. If your invention is a complex formula for a new adhesive, or a complex process that is always performed in secrecy, then your invention is more likely to be a potential option for trade secrecy protection.

We offer:

  • Preparation of nondisclosure and other secrecy-related agreements
  • General consulting and assistance related to preserving trade secret protection

Please contact us to discuss trade secret law and to schedule an appointment.

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What is the proper way to use the ®, TM, and SM symbols for marks?

Most of us understand that the symbols TM and ® are associated with trademarks; however, many do not understand the difference between TM and ®, how to use these properly, and the consequences for failing to do so. Furthermore, many people are unaware of the SM symbol. Here we discuss these three symbols, their significance, and proper use.

® – Registered

The ® symbol is used in the United States (and in many foreign jurisdictions) as an indicator that a mark has been "registered" with the national principal registering office or agency. In the United States the ® symbol is an indicator that a mark has been registered with the U.S. Patent and Trademark Office to be used in conjunction with certain goods or services. Until a mark has been registered, the application is "pending" and the TM or SM symbol should be used instead. A mark holder should not use the ® symbol until the mark is actually registered, because intentionally doing so may be considered fraud and/or false advertising. A mark holder should generally always use the ® symbol after the mark is registered because failing to do so can limit the recovery of damages from trademark infringement to only those damages that occurred after the defendant had actual notice of the registration.

TM – Trademark

The TM symbol stands for "trademark" and may (and should) be used when you are using a mark for goods (as opposed to services) but the mark has not yet federally registered. No filing or application is required to use the TM symbol—as long as you are using a mark for the provision of certain goods, then you can use the TM symbol to put others on notice that you claim state trademark rights in the mark with respect to those goods. State trademark rights are available in every state in the U.S. and are acquired by use of the mark in that state in conjunction with the provision of those goods. If you have filed an application for a federal registration of the mark for the provision of goods, but the application has not yet registered, you should continue to use the TM symbol until the mark registers. If the mark never registers federally, you can generally continue to use the TM symbol, but not the ® symbol.

SM – Service Mark

The SM symbol stands for "service mark" and may (and should) be used when you are using a mark for services (as opposed to goods) but the mark has not yet federally registered. No filing or application is required to use the SM symbol—as long as you are using a mark for the provision of certain services, then you can use the SM symbol to put others on notice that you claim state service mark rights in the mark with respect to those services. State service mark rights are available in every state in the U.S. and are acquired by use of the mark in that state in conjunction with the provision of those services. If you have filed an application for a federal registration of the mark for the provision of services, but the application has not yet registered, you should continue to use the SM symbol until the mark registers. If the mark never registers federally, you can generally continue to use the SM symbol, but not the ® symbol.

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What are the best practices in choosing and using a mark?

1. Don't choose a mark that is confusingly similar to another mark.

Trademark law is generally protective of "prior users" of a mark. When you file for a federal trademark registration, the examining attorney will determine whether your mark (taking into consideration the goods and/or services for which it is used) is close enough to a prior registered mark that it would likely confuse consumers. If so, the examiner will refuse registration.

A likelihood of consumer confusion is based, in part, on similarity in sight, sound, and meaning, and taking into consideration the goods/services of both marks.

It is often not sufficient to simply search for your exact mark on the USPTO website, and if you don't find that exact mark, conclude that your mark can be registered. A mark that is one letter off (or a few letters off) can prevent you from registering, and yet it can be difficult to find all of these other marks if all you do is search for your exact mark. Additionally, the goods and services for which a mark is registered have an effect on whether the marks are likely to be confused.

For example, assume you want to register the mark GLADIATOR for motorized bicycles, and assume that there is a prior registered mark GLADIATOUR for tour vans. If you simply search for the mark GLADIATOR on the USPTO website you may not encounter the GLADIATOUR mark at all, and so may be surprised when, after you file an application, the examiner rejects your mark based on the GLADIATOUR mark. Additionally, whether or not the marks are likely to cause consumer confusion is based partly on the goods and services for which they are being used. In this case the GLADIATOUR mark is being used for tour vans, while the GLADIATOR mark is being used for motorized bicycles, and there may be arguments that could be made to convince an examiner that, because of differences in the goods, the marks are not likely to be confused by consumers.

2. Choose a mark that is inherently distinctive.

Some marks are inherently stronger than others. When selecting a mark to use for your goods or services, consider that the "strength" of a mark falls along the following spectrum (beginning with the strongest): Fanciful, Arbitrary, Suggestive, Descriptive, and Generic.

Fanciful Marks - A fanciful mark is a mark that has no meaning apart from its use as a mark and that does not inherently suggest or convey to the mind of the consumer what the goods or services might be. An example is KODAK used for camera related goods.

Arbitrary Marks - An arbitrary mark has a common meaning outside its use as a mark, but its use as a mark has no relation to the common meaning. An example is the mark APPLE used for computer and phone related goods.

Suggestive Marks – Suggestive marks do not immediately convey the meaning of the goods or services for which they are used, but they suggest them to the mind of the consumer. An example may be SQUEAKOZ! for pet toys that make a squeaky noise.

Descriptive Marks – These are marks that merely describe something related to your goods or services. For instance, the mark LITTLE RED PILLS for cough medicine in the form of small red pills could be considered a descriptive mark. Descriptive marks are not considered inherently distinctive, and because of this, cannot be registered on the principal register until they have “acquired” sufficient distinctiveness through use of the mark and by consumers beginning to recognize the mark as an indicator of certain goods/services.

Generic Marks – Generic marks are marks that are incapable of serving a trademark function because they are the common or generic name for the goods or services. For example, you cannot register the word IBUPROFEN for ibuprofen pills because it is the common name for the goods.

In general, the higher up the spectrum your mark is, the stronger your mark and the more likely it will be “distinctive” enough to merit registration, all other considerations aside. The first three categories: Fanciful, Arbitrary, and Suggestive marks, are considered “inherently distinctive.”

There is often a tug-of-war between a company’s marketing team and its legal team when it comes to trademarks. The marketing team wants to choose marks that immediately convey the idea of the goods or services to the mind of consumers, while the legal team prefers marks that are stronger and more easily protected. In general, we suggest that stronger marks (Fanciful, Arbitrary, and Suggestive) are capable of conveying the idea of the goods or services to the minds of consumers as they are continually used (similar to how the word APPLE and KODAK now immediately convey to the minds of consumers phone and computer related goods and camera and printer related goods, respectively). However, if some middle ground must be found, we suggest choosing marks that are suggestive of the goods or services instead of being merely descriptive of them.

3. Use your mark as an adjective, never as a noun.

On your website, and in all your marketing and promotional materials, you should never use your mark as a noun, but only as an adjective. For example, if your mark is SQUEAKOZ! for toys that make a squeaky noise, your website and promotional materials should never say things like “buy your pet a SQUEAKOZ!” but, instead, should always include a descriptive noun next to the mark such as “buy your pet a SQUEAKOZ! toy.” When you use the mark as a noun you are using it in a descriptive way, and this can reduce the strength of your mark. It may also lead the examining attorney to reject your mark. We have seen an examining attorney look at a trademark applicant's website and, upon finding that the applicant was using the mark as a noun, reject registration on the principal register on the basis that the mark was merely descriptive of the goods or services.

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