Can I make someone turn over a domain name for trademark infringement?

The question of if use of a trademark in a domain name is trademark infringement is complicated. Typically domain ownership by itself is not a trademark infringement. Trademark infringement requires use in commerce that is likely to cause a likelihood of confusion. Thus ownership alone is not enough. Our trademark attorneys have handled multiple disputes over domain names.

In the late 1990’s and early 2000’s cybersquatting became a major issue in the U.S. and in the world. In response, the World Intellectual Property Organization (WIPO) instituted the Uniform Domain Name Dispute Resolution Policy (UDRP). The UDRP allows for domain name transfer when the complained of domain is not being used in a trademark manner. The UDRP provides for transfer of a domain if the party claiming a transfer being made shows the following:

(i) the domain name registered by the domain name registrant is identical or confusingly similar to a trademark or service mark in which the complainant (the person or entity bringing the complaint) has rights; and

(ii) the domain name registrant has no rights or legitimate interests in respect of the domain name in question; and

(iii) the domain name has been registered and is being used in bad faith

Typically the first prong is fairly easy to prove for the trademark owner. However, the second two prongs of the test are more difficult. Typically if the domain owner is using the domain at all for a business that is not related to the trademark, the trademark owner will have a difficult time proving a lack of rights or legitimate interest. A further issue in rulings under the UDRP is the requirement of bad faith. The UDRP Policy provides the following nonexclusive reasons for showing bad faith:

(i) Circumstances indicating that the domain name was registered or acquired primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the domain name registrant’s out-of-pocket costs directly related to the domain name; or

(ii) The domain name was registered in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the domain name registrant has engaged in a pattern of such conduct; or

(iii) The domain name was registered primarily for the purpose of disrupting the business of a competitor; or

(iv) By using the domain name, the domain name registrant intentionally attempted to attract for financial gain, Internet users to the registrant’s website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the registrant’s website or location or of a product or service on the registrant’s website or location.

Thus if the domain owner has not done something to harm the trademark owner or to profit from the trademark owner (such as by selling the trademark owner the domain at an exorbitant price), it can be difficult to overcome a showing of bad faith.

If you are having issues as a trademark owner with a domain name infringing your trademark, or alternatively if you are a domain owner receiving allegations from a trademark owner that the trademark owner has rights, please contact one of our attorneys to discuss your options.

Trademarks and CBD

CBD has become very popular in recent years. In 2018 the Federal government removed hemp and hemp products from being a Schedule I drug. However, the Farm Bill did not legalize or allow for the use of CBD as a dietary supplement. Prior to the Farm Bill of 2018, the Trademark Office had been rejecting all CBD trademark applications as being unlawful as a Schedule I drug. Following the 2018 Farm Bill the rejection of CBD trademark applications stopped. However, the Trademark Office began issuing rejections of all orally ingested CBD trademark applications, including for dietary supplements, as being illegal under the Federal Food, Drug, and Cosmetic Act.

The Federal Food Drug and Cosmetic Act (FDCA) prohibits the introduction r delivery for introduction into interstate commerce of a food to which has been added a drug approved under the FDCA or a biological product that may qualify as a drug.

The Trademark Office now rejects trademark applications for oral CBD supplements and food as using a drug because a drug company received approval of a CBD containing drug (namely Epidiolex).

In June of 2020 the Trademark Trial and Appeal Board ruled that these rejections were valid trademark rejections. However, there is hope. Several bills to allow CBD as a supplement under the FDCA have been proposed in Congress. Further, the Trademark Trial and Appeal Board left the door open for an appeal having further proof that CDB was used as an oral supplement prior to Epidiolex.

The trademark attorneys at Shaver and Swanson continue to monitor this rapidly evolving trademark field. Please do not hesitate to contact us to discuss potentially moving forward with CBD or other herbal supplement trademark applications.

Shaver & Swanson, LLP wins award of attorney fees for client in defense of claims of patent infringement.

Scott Swanson in conjunction with Rick Martin, has won an award of attorney fees in a patent litigation case on behalf of a client, the defendant and prevailing party in the infringement action.

Previously the District of Colorado had ruled in favor of the firm’s client. The court ruled the client did not infringe one patent and that the claims of the second patent were invalid. Read that decision here.

The Court declared the case exceptional in light of the weak arguments and litigation strategy of the opposition, and awarded nearly $132,000 in legal fees to the firm’s client. Read the decision here.

The opposition was represented by the renowned firm of Knobbe Martens, one of the top three largest Intellectual Property law firms in the country.

Is this trademark letter a scam?

Our trademark attorneys receive questions every week from clients asking if a letter they received requesting payment for a trademark renewal, trademark registration, or trademark database is a trademark scam. The answer is always either yes, this is a scam or well it may be an actual service, but it is completely superfluous.

All official correspondence regarding your trademark application or trademark registration from the United States Trademark Office will be sent by the Trademark Office to your attorney of record. These unofficial services or scams typically avoid sending trademark correspondence to a trademark attorney because the trademark attorney will recognize the letter as a scam or unnecessary trademark service. Our trademark attorneys have seen several recent scams that tell the trademark registrant their trademark registration is expiring, but the scam has the incorrect date or the incorrect registration number. This is a definite scam. Further information can be found on the United States Patent and Trademark Office’s website at .

A benefit of hiring a trademark attorney is that the trademark applicant will know all official trademark correspondence from the Trademark Office will go through the trademark attorney. Thus every letter the trademark owner receives can be discarded as a scam. However, if you still have questions please feel free to contact our office. Our trademark attorneys would be happy to tell you if the letter really is a scam, or if it is official. Also we can provide trademark deadline tracking for when you actually do have to pay a fee to the Trademark Office to renew your trademark registration.

Can I use a dead or cancelled trademark?

Trademarks that are listed as cancelled on the Trademark Office’s database are not always free for use. Trademark rights exist in three forms in the United States: common law trademarks, state registered trademarks, and Federally registered trademarks. A trademark owner may allow a registration to expire because they are not using it, by accident, or because they have other registrations that cover the same material. It is important to consult with a trademark attorney before you adopt an expired trademark, as opposed to after you receive a cease and desist letter from the expired trademark owner’s trademark attorney. The trademark owner may still have common law rights in the trademark or they may have alternate registrations that still arguably cover trademark owner’s rights.

Is there a fee to keep my patent?

Patents are valid for 20 years from the filing date of the first non-provisional patent application to which priority is claimed. After the patent issues, the patent owner must pay a patent maintenance fee in a window between 3 years and 3.5 years after the issue date of the patent, between 7 years and 7.5 years after the issue date of the patent, and between 11 an 11.5 years after the issue date of the patent. The patent maintenance fee can be paid for up to six months after each window with a payment of a surcharge.

The purpose of the patent maintenance fee is to weed out patents that are no longer in use. The patent maintenance fee increases for each window, with approximately a doubling in patent maintenance fee between each successive patent maintenance fee.

A patent attorney can assist you in tracking these fees and may refer you to a patent maintenance fee tracking company to track fees for you.

Who owns the copyright in a photo?

17 U.S. Code § 201(a) sets forth that ownership in the copyright initially is owned by the author or authors of the work. This means the photographer of a photo, the artist who paints or draws a work of art, the author who writes a poem, story, or book, or even the computer programmer who writes code for a program own the work of art. This ownership of the copyright can be transferred via an assignment.

Alternatively if a person is the employee of another and specifically hired to make the work, or the work is commonly made in that type of employment, the employer would own the work under the work made for hire doctrine. Similarly and independent contractor’s work can be classified as a work for hire if a written agreement exists between the independent contractor and the person or company that hired the independent contractor that specifies the work is made for hire. It is vital that this agreement be in writing, so if you are hiring someone to take photos for you, paint a photo, or otherwise create anything artistic for you, get it in writing.

It is also important to note that typically buying a physical representation of a work or even the original itself does not transfer ownership of the underlying copyright. If you buy a work, such as a photo, painting, or book, you cannot reproduce the work beyond what is considered a “fair use” under the Copyright Act, unless the purchase documents specifically state that a copyright assignment is included or a license to reproduce is included.

How long does it take to get a trademark registration?

From the time a trademark attorney files your application it typically takes between three (3) to six (6) months for the Trademark Examining Attorney at the Trademark Office to examine your trademark application. If the trademark examining attorney does not have any issue with the trademark application, the application will typically pass to the trademark publication phase. The trademark examining attorney may issue an objection or rejection to your application over the form or substance of the application. If this occurs the trademark applicant will have six (6) months to either appease the trademark examining attorney’s form objections and to try and overcome any substantive trademark rejections, such as if the trademark examining attorney believes there will be a likelihood of confusion between your trademark application and a preexisting trademark application or registration.

At the trademark publication phase, the trademark application publishes for third party opposition. If no third party trademark users object to the application, it typically takes about eleven (11) weeks from the date of publication for the trademark application to issue into a registration. Our firm’s trademark attorneys have extensive experience in obtaining Trademark registrations.

Do I need a patent attorney?

Patent attorneys can help streamline the patent process and help you get a patent with a lot less headache.  A patent application is a legal document that concludes with a set of claims. These claims are typically written in legal jargon and can be difficult to write and difficult to understand.  The claims are also the primary aspect of the patent application that is examined by the Patent Office examiner, who is typically a patent agent or patent attorney.  The claims also legally define what you are entitled to keep others from doing.

In the opinion of our patent attorneys, it is important to hire a patent attorney or agent to help you write the claims so that you obtain a legally sufficient and valuable asset in your patent.  This can save you time, money in the long run, and hopefully provide you with a more valuable asset for your business and protect your invention from patent infringement.

How long does it take a patent attorney to get a patent?

The answer to this question is that it depends.  The United States Patent Office has a wide variety of art groups to which patent examiners, who are typically patent agents or patent attorneys, are assigned to.  Some art units take longer to examine patent applications than others likely due to either a lower number of patent examiners or a higher number of applications.  Typically these patent groups are more complex mechanical, electrical, or biotechnology groups.  Typically it takes twelve to eighteen months from when one of our patent attorneys files a patent application for the Patent Office to initiate substantive examination of the application.  The patent examiner assigned to the patent application examines the application as to form and as to substance. Some patent applications filed by our attorneys issue without any major substantive or form rejections and some incur such rejections or objections.  This is highly dependent on the art unit to which the application is assigned, the subjectivity of the examiner assigned, and often the complexity of the field.  If a rejection is issued the patent attorney has three months to respond to the government rejection.  Often the patent application issues after a first response is filed; however it can take several attempts to negotiate coverage before the patent attorney obtains an issued patent.  The time frame is typically extended if the patent attorney files a provisional patent application first, which is not examined by the Patent Office for the twelve (12) months it is pending.

Do I need a patent to be able to make something?

As Patent Attorneys we are often asked the question: Do I need a patent to make my product?  The answer to the question is no, you do not need a patent to make something.  A patent provides the negative right to prevent others from making, using, selling, or offering to sell the invention.  A patent does not provide any right to you to make, use, sell, or offer to sell an invention.

For example, a question often faced by our patent attorneys is the following:  If Company A is making product X, can I get a patent on an improvement to product X?  The answer to this question is it depends on if the improvement is patentable or not.  In the U.S. the questions are is the improvement novel? and is the improvement nonobvious? (in Europe this second question is did the improvement require an inventive step?

The next question typically asked is if I get a patent can I make the product?  The answer to this question depends on if Company A has a patent or not.  If they do, you cannot make, use, sell, or offer to sell whatever their patent claims without running the risk of infringing that patent.  It would be a good idea for you to have a patent attorney analyze your product and any patent allegedly covering the product.  It is possible to get a patent on an improvement, but not be able to make the base device because another company owns one or more patents on the device.

Can I protect my invention in a foreign country?

Patents provide protection typically on a country by country basis.  A United States patent provides protection in the U.S. whereas Canadian patents provide protection in Canada and Chinese patents provide protection in China.  One limited exception is for European patents, which we can file and prosecute in as a single application and subsequently validate in each European country where protection is sought. A European Unified Patent System is also being developed, but the institution date of this unified patent system is not currently known.

Shaver & Swanson, LLP patent attorney  have sought and obtained patent protection for clients in a wide variety of foreign countries.  Typically these patent applications descend from a first U.S. application, although our patent attorneys have filed via our network of foreign agents simultaneously in foreign countries and in the U.S.

Example countries where our patent attorneys have obtained patent protection include Australia, Mexico, New Zealand, China, Japan, South Korea, Mexico, Canada, and in countries throughout Europe.  Our patents attorneys maintain a broad network of patent attorneys and patent agents throughout the world.

I have been selling my product for five years can I get a patent?

The patent system is an exchange between the Federal Government and the inventor.  In exchange for publicly disclosing his or her invention in a patent, the U.S. provides the inventor with (at current) a 20 year pseudo monopoly on the invention.  The patent grant provides the right to keep others, for example, from making, selling, using, the invention.  If the invention is already in the public domain, there is no incentive for the Patent Office and the Federal Government to grant these patent rights.

However, the U.S. provides a one year grace period to inventors. If an inventor publicly discloses his or her invention today, the inventor has one year to file a patent application.  In some foreign countries, including in European countries and the European Union, there is no grace period.  Canada utilizes a modified grace period of six months.

There are exceptions to the public disclosure, including if the disclosure was for experimental purposes or if the disclosure was not sufficient for members of the public to determine what constitutes the patentable invention.

Thus if it is possible for a third party to easily copy your invention, it is a good idea to seek patent protection before the grace period runs out.

What is copyrightable?

In order to obtain a copyright the work must have a modicum of creativity. This barrier is low, although it does prevent copyright protection in short phrases, business names, and ideas.  Copyright protection applies to a specific photograph, but it does not prohibit another from using his or her own photograph to take the same photo.  Copyright protection provides the right to prevent copying, hence the term copyright.

Photographs, books, novels, short stories, poems, songs, and melodies can all be protected by copyright.  Similarly camouflage patterns can be protected by copyright.  A design or character (such as a figure) that a business uses as its trademark may also be protected by copyright.

The team at Shaver & Swanson, LLP has handled a large number of trademark cases and can efficiently and affordably help you protect your trademarks. copyrights, and patentable ideas.

My trademark application is being opposed what can I do?

After your trademark application is approved by a Trademark Office Examining Attorney, it publishes in the Official Gazette for 30 days for third party opposition.  During this time any third party that believes it will be harmed by the issuance of your trademark application can file an opposition to your trademark.  A trademark opposition is similar to a lawsuit, with a formal Notice of Opposition that serves the same function as a Complaint in a lawsuit.  After the Notice of Opposition, the trademark applicant has approximately thirty (30) days to respond or the opposition will be sustained and the trademark application will be deemed abandoned.

Many companies utilize trademark monitoring companies to monitor the Official Gazette as well as the Internet for third party use of potentially confusing trademarks.  These companies often zealously guard their trademark rights as trademark rights are maintained on more or less a “use it or lose it” basis.  These companies are often amicable toward a resolution that will allow you to continue to use your mark and even to obtain a registration.  We have negotiated many mutual consent to use and register agreements between our clients and third parties.  If you are faced with a Notice of Opposition or even a Notice of Cancellation, our trademark attorneys can assist you in resolving the situation or in fighting for your rights.  Please contact us to discuss your case.

Can I use the same business name as someone else?

We frequently are asked by clients or potential clients if they can use a trademark or business name that is the same as a pre-existing company.  The answer is that it depends.  Trademark law protects the source identifying function of a trademark, trade name, product trade dress, or any other “name, symbol, or device, or any combination thereof” that is “likely to cause confusion, or to cause mistake, or to deceive as to the origin, sponsorship, or approval of his or her goods, services, or commercial activities by another person.”  See 15 U.S.C. 1125.

Thus the typical test for trademark infringement is if there is a “likelihood of confusion” between the marks.  Each Federal Court of Appeals has developed its own test for likelihood of confusion; in the Ninth Circuit the test is called the “Sleekcraft Test” as the likelihood of confusion test for trademark infringement is set forth in the case of  AMF Inc. v. Sleekcraft Boats, 599 F.2d 341, 348-49 (9th Cir. 1979).  The factors of the Sleekcraft Test are as follows (as taken from the Ninth Circuit Model Jury Rules):

(1) Strength or Weakness of the Plaintiff’s Mark. The more the consuming public recognizes the plaintiff’s trademark as an indication of origin of the plaintiff’s goods, the more likely it is that consumers would be confused about the source of the defendant’s goods if the defendant uses a similar mark.

(2) Defendant’s Use of the Mark. If the defendant and plaintiff use their trademarks on the same, related, or complementary kinds of goods there may be a greater likelihood of confusion about the source of the goods than otherwise.

(3) Similarity of Plaintiff’s and Defendant’s Marks. If the overall impression created by the plaintiff’s trademark in the marketplace is similar to that created by the defendant’s trademark in [appearance] [sound] [or] [meaning], there is a greater chance [that consumers are likely to be confused by defendant’s use of a mark] [of likelihood of confusion]. [Similarities in appearance, sound or meaning weigh more heavily than differences in finding the marks are similar.]

(4) Actual Confusion. If use by the defendant of the plaintiff’s trademark has led to instances of actual confusion, this strongly suggests a likelihood of confusion. However actual confusion is not required for a finding of likelihood of confusion. Even if actual confusion did not occur, the defendant’s use of the trademark may still be likely to cause confusion. As you consider whether the trademark used by the defendant creates for consumers a likelihood of confusion with the plaintiff’s trademark, you should weigh any instances of actual confusion against the opportunities for such confusion. If the instances of actual confusion have been relatively frequent, you may find that there has been substantial actual confusion. If, by contrast, there is a very large volume of sales, but only a few isolated instances of actual confusion you may find that there has not been substantial actual confusion.

(5) Defendant’s Intent. Knowing use by defendant of the plaintiff’s trademark to identify similar goods may strongly show an intent to derive benefit from the reputation of the plaintiff’s mark, suggesting an intent to cause a likelihood of confusion. On the other hand, even in the absence of proof that the defendant acted knowingly, the use of plaintiff’s trademark to identify similar goods may indicate a likelihood of confusion.

(6) Marketing/Advertising Channels. If the plaintiff’s and defendant’s [goods] [services] are likely to be sold in the same or similar stores or outlets, or advertised in similar media, this may increase the likelihood of confusion.

(7) Consumer’s Degree of Care. The more sophisticated the potential buyers of the goods or the more costly the goods, the more careful and discriminating the reasonably prudent purchaser exercising ordinary caution may be. They may be less likely to be confused by similarities in the plaintiff’s and defendant’s trademarks.

(8) Product Line Expansion. When the parties’ products differ, you may consider how likely the plaintiff is to begin selling the products for which the defendant is using the plaintiff’s trademark. If there is a strong possibility of expanding into the other party’s market, there is a greater likelihood of confusion.

(9) Other Factors. (any other factors the jury may consider)

Typically the first four factors above are the most important factors.  If the trademarks are the same or very similar, the senior trademark is strong conceptually, and the goods are the same or very similar, there is a higher chance a court or the Trademark Office will find a likelihood of confusion.  Conversely if the senior trademark is weak and the goods are not related, there is a lower chance of a finding of a likelihood of confusion.  The likelihood of confusion test is a sliding scale that assesses all of these factors to determine if there is a likelihood of confusion between two trademarks (or event the same trademark on two goods).  Because this test is very factually intensive and requires a significant amount of legal analysis, we recommend that if you have a question regarding the selection of your trademark and if it creates a likelihood of confusion, to contact one of our trademark attorneys.

t-shirt slogans, designs, and trademarks

We are often asked by clients “can I trademark my t-shirt design?”

The answer to this question is that it depends.  Trademarks protect the source identifying function of a name, word, or symbol.  Thus if you use a name that identifies the source of your t-shirt or clothing, you likely can obtain a trademark registration on the name.  However, on the opposite end of the spectrum, if you are using a design or slogan as a purely ornamental feature of the t-shirt, the trademark office likely will reject your trademark application as being ornamental.  The Trademark Manual of Examination and Procedure (TMEP) provides the following guidance on the spectrum of ornamental registrations:

  • (1) Ornamental matter that serves as an identifier of a “secondary source” is registrable on the Principal Register. For example, ornamental matter on a T-shirt (e.g., the designation “NEW YORK UNIVERSITY”) can convey to the purchasing public the “secondary source” of the T-shirt (rather than the manufacturing source). Thus, even where the T-shirt is distributed by a party other than that identified by the designation, sponsorship or authorization by the identified party is indicated.
  • (2) Ornamental matter that is neither inherently distinctive nor a secondary source indicator may be registered on the Principal Register under §2(f), if the applicant establishes that the subject matter has acquired distinctiveness as a mark in relation to the goods.
  • (3) Ornamental matter that is neither inherently distinctive nor an indicator of secondary source, and has not acquired distinctiveness, but is capable of attaining trademark significance, may be registered on the Supplemental Register in an application under §1 or §44 of the Trademark Act.
  • (4) Some matter is determined to be purely ornamental and, thus, incapable of trademark significance and unregistrable on either the Principal Register or the Supplemental Register.

If you do receive an ornamental rejection, the United States Patent and Trademark Office provides guidance for overcoming the rejection.  Additionally, the attorneys at Shaver and Swanson have successfully argued against ornamental rejections for clients in prosecuting trademarks in the Trademark Office and are available to assist you with prosecuting your trademark application.

If you do have a new design to utilize on your t-shirt, it may also be possible to seek copyright protection for your design, but this applies only to designs as opposed to slogans, phrases, or words.

Copyright infringement of building or house plans

Can I get a copyright in house plans or building plans?

The short answer to this question is yes.  However, the copyright only extends to those elements of the buildings plans that are original.  Determining what is an original element can be a complicated legal question.  While a

What is copyright infringement of a house plan or building plan?

In order to prove copyright infringement, the copyright owner must prove that the accused copied the protected elements of the copyrighted work.  Any copying of non-original material or material that is in the public domain is not included in copyright infringement.  To determine copyright infringement, a court or jury determines if the two works are substantially similar and thus if there was wrongful copying of the copyrighted work.  The test for substantial similarity, according to one court, is whether “the ordinary observer, unless he set out to detect the disparities, would be disposed to overlook them, and regard their aesthetic appeal as the same.”

The amount of protectable elements in a building plan or house plan typically depends on how original or complex that building plan or house plan is.  For example, the Guggenheim Museum in New York City would be considered a complex architectural work.  However it is substantially more difficult to find protectable elements in the house plans for a middle class home in what is considered a “cookie cutter subdivision.”  Further, the more unique a house plan is the easier it is to prove wrongful copying whereas the less unique and/or more generic a house plan is, the harder it is to prove wrongful copying.

For example, in Zalewski v. Cicero Builder Dev., Inc., the Second Circuit court of appeals noted that generalized notions of where to place functional elements, how to route the flow of traffic, and … methods of construction” are un-protectable. Architects cannot claim that good engineering is original to them—or at least can get no copyright protection for it and there is no copyright in a building plan’s design parameters. Constraints placed on an architect by the way her client plans to use the building do not originate with the architect.  The Second Circuit went on to hold that the architect can get no credit for putting a closet in every bedroom, a fireplace in the middle of an exterior wall, and kitchen counters against the kitchen walls. Furthermore, the overall footprint of the house and the size of the rooms are “design parameters” dictated by consumer preferences and the lot the house will occupy, not the architect.  Similarly features that are features of all homes of a certain style are not copyrightable.

The attorneys at Shaver & Swanson, LLP have handled numerous cases involving allegations of copyright infringement of house plans and/or building plans for both Plaintiffs and Defendants.  If you have any questions regarding copyrights in house plans and/or building plans, please do not hesitate to contact us.

Is this trademark bill I received a scam?

We frequently are asked by clients if a trademark bill they received in the mail or through fax is a real bill.  Typically these direct bills are scams, but if you receive a notice you should double check with your trademark attorney to be certain it was not an error on behalf of the U.S. Patent and Trademark Office or a miss-sent communication from a foreign trademark office.

When we file your trademark application with the U.S. Patent and Trademark Office, we designate our office to receive all further official correspondence.  While we list our office for correspondence, the Trademark Office publishes your trademark application, along with your address, which third parties can obtain through the Trademark Office’s website.  There are a wide range of different third parties with different offered “services” from including your trademark in their publication to being a direct scam in which the third party seeks payment from you for some alleged service it provided.

The U.S. Patent and Trademark Office maintains a list of non-USPTO solicitations here.  If you are contacted by any of the listed companies, do not pay the bill they send you.

In sum, you should view any third party trademark bill as being a scam unless proven otherwise.  Do not pay any “bill” you directly receive without first discussing the bill with your trademark attorney.

Should I get a patent or keep my invention secret?

Inventors and companies often ask if they should file for a patent or keep their invention secret and protect it as a trade secret.  The answer depends on the facts of each situation.

Patent protection is federally provided right that an individual or company files an application to obtain.  Patents give the patent holder certain quasi-monopoly rights in the invention, including the rights to keep others from making, selling, importing, or offering to sell the patented invention.  However, patents come with a cost both monetarily and in that patents only have a limited lifespan of 20 years.  Patents can be particularly important, for example, if a product is simple to reverse engineer, in technical fields in which there are low barriers to entry, or if it is not possible to keep the idea a “secret”.

In contrast to patent law, trade secret protection is generally protected by state law.  Under Idaho Code 48-801(5)Trade secrets can include any “information, including a formula, pattern, compilation, program, computer program, device, method, technique, or process that:

a)  Derives independent economic value, actual or potential, from not being generally known to, and not being readily ascertainable by proper means by, other persons who can obtain economic value from its disclosure or use; and

b)  Is the subject of efforts that are reasonable under the circumstances to maintain its secrecy.

Factors that courts generally consider in determining if information qualifies as a trade secret include:

  • The extent to which the information is known outside of the claimant’s business
  • The extent to which it is known by employees and others in the claimant’s business
  • The extent of measures taken by the claimant to keep the information secret
  • The value of the information to the claimant’s business and in the industry.
  • The amount of money and effort need to develop the information.
  • The difficulty a third party would face in independently developing the information.

Trade secrets are theoretically protectable indefinitely, however trade secret protection is very limited and difficult to prove.  Trade secret protection does not prevent third parties from reverse engineering the idea to determine the composition of the “secret”.  Trade secret protection only provides protection against misappropriation  of trade secrets, meaning only if a third party actual misappropriates the trade secret (meaning only if the third party steals the secret or obtains the trade secret knowing or having reason to know that the trade secret was misappropriated through improper means.  The Uniform Trade Secret Act (UTSA) has been enacted by numerous states (forty or more) including the state of Idaho.  Idaho’s trade secret act is located at Chapter 8 of Title 48 of Idaho Code, and can be found here.