Thank you again to SCORE for hosting me for "IP 101: Why You Should Care About Your IP". The response was literally overwhelming! We had over six hundred webinar registrants and more than two hundred people attended live – you can listen here. At the end, there were about fifty unanswered questions. I have selected five categories that encompass a dozen questions, representing the various themes, that I'll answer over two posts.
- Common Law TM v. Federal Registration
The majority of the questions were on this topic and the three below summarize the themes:
Q: I have a new online DIY jewelry business and have a unique name, but not sure if I should file for a trademark, as I am not sure how successful the business will be?
A: If you have your name on your website and you are selling the jewelry, you should put the letters TM to establish that this is your brand name. Also, you should figure out the date that you first offered the jewelry for sale under this name and find a specimen of first use (see USPTO site for more info). It's not the same protection as filing for TM with the USPTO but you can then wait and see if it's successful before pursuing the federal TM. All this assumes that you have looked to make sure that no one else is using the name for jewelry on the USPTO and Google.
Q: Please say again about qualifying to use using circle R in terms of location of the business.
A: The TM can be placed without federal registration, but the circle R - ® cannot be used unless you have received a federal TM registration from the USPTO. Also, you cannot apply for federal registration unless you operate and sell across state lines. For example, if you have a restaurant in one city only and never sell outside of 100-mile radius, you likely cannot apply for a federal registered TM.
Q: Could you please give your opinion on "poor-man's trademark" - using the TM or SM symbols when your product/IP is not actually trademarked or service-marked?
A: Of course this is not a legal opinion, as nothing I say is, but I think the "common law" or "poor man's" TM or SM is a great way to start up for two reasons. First, it's free. Second, if your business is new you may change your product or service enough that you would be filing for TM under a different class than your original offering. For example, let's say you originally sold an enterprise downloadable software product and you changed the product to cloud-based software as a service — you would have to re-file in a different classification or class. So consult a legal professional before you move from the "poor man's" TM to filing with the USPTO.
- Trade Secrets as Protection
Trade secrets are the unsung hero in IP protection, in my humble opinion, because if protected properly, they can last forever!
Q: What's the best way to prevent employees from stealing the company's client lists, marketing, and proprietary information and starting a competitive company or work for a competitor. I've used non- compete and non-disclosure employment contracts but doesn't seem to hold much weight?
A: Trade secret law is different state by state but the overall idea is similar: if you have valuable secrets like customer or supplier lists, know-how, recipes, or processes, the first step is to make sure that they are both identified and made known as trade secrets to anyone who has access. From there, all contractors and employees have to have reference to maintaining trade secrets in their contracts. Unfortunately, you would have to enforce these contracts so please seek legal advice.
Q: Do client contact lists fall under IP?
A: Client contact lists can be trade secret IP and are the lifeblood of some companies. Trade secrets vary state by state but the overall concept is that if something is valuable to the business and took effort to create, then it may be considered as a trade secret.
Read Part 2 of the recap Monday.