Minding Your Own Business Or Keeping Your Trade Secrets Secret

Most businesses have trade secrets. These may consist of any information, including data, formulas, methods, techniques, drawings, financial information or lists of actual or potential customers and suppliers, that generates economic value to your business by reason of the fact that it is secret. To be a trade secret, you have to make reasonable efforts to maintain its secrecy.

Common examples of trade secrets a business could have could include its customer lists, financial plans, marketing plans, formulas, methods and the like. If your business services a particular area and plans to expand into a neighboring area starting on a particular date and plans to advertise in that area beforehand, a competitor would gain an economic advantage by knowing both that date and the new area. If you own a pizza parlor and your pizza has a unique crust that is gaining raves in the local community, the pizza parlor down the street would probably want to obtain your recipe. If you build web sites for businesses and have developed a unique template for doing so that cuts your development time, you have a trade secret.

45 states, including the District of Columbia, have adopted some form of the Uniform Trade Secrets Act that protects rights in trade secrets. Alabama and Massachusetts have their own trade secret statutes and New Jersey, New York, Texas, and Wyoming protect trade secrets under the common law. Under the Uniform Trade Secrets Act you can sue to enjoin or bar the actual or threatened theft of your trade secret and obtain damages for that theft which may include both your actual loss and the unjust enrichment received by the thief. If the theft is willful or malicious a court may even award you your attorney’s fees.

However, before you run out and sue for the misappropriation of your trade secret, you must take reasonable steps to keep that secret secret. Here are some actions that you should consider taking. This list is not intended to be all-inclusive.

Lock it up. If some of your employees (or independent contractors or consultants) are entitled to a little more information than others, password that information, make sure that only those individuals who are entitled to that information have that password and make sure that the only way to get at that information is by using that password. Put in writing instructions to keep that password secret and have everyone with access to that password acknowledge their receipt of that password and agree to keep that password secret in writing as well. Keep a copy of that writing and make sure that writing is signed and dated. A password can be a computer password, a combination on a lock, or the combination to get in the front door. If you don’t want certain employees coming in the building after hours, when your door is locked to your customers make sure that those employees can’t get in as well. Put passwords in your software and on your computers to protect the information inside from unwarranted intrusion. Don’t use passwords that can be easily figured out by strangers and don’t allow copies of them to be written down or lying around. A reminder, a password is useless if it can be bypassed by rebooting the computer.

Don’t put confidential information where everyone can see it. Your customer lists should not be sitting on your receptionist’s desk where anyone checking in can check that list out.

If an employee (or consultant or independent contractor or unpaid intern) leaves your employ, you’ve got to take away his access to your company’s information. That may mean changing all your passwords. Merely giving her password to her replacement without taking it away from her accomplishes nothing if she can still access your premises.

Make consultants, employees, independent contractors, your summer interns and even visitors, in certain circumstances, sign and date non-disclosure and confidentiality agreements. For example, if you’re a web developer and hire a student for the summer to help you, he’s in a position to gain access to your code, templates, customers and software vendors and if you hired really talented help could even hack into your systems. Make him sign and date a non-disclosure and confidentiality agreement. If you’re a contract manufacturer and invite potential customers to view your facilities, they should sign and date a non-disclosure and confidentiality agreement if they’re likely to see how you make what you make and whom you make it for.

New employees should agree in writing to keep your confidential information confidential. This writing may be a separate agreement or be included in an employee manual. If included in an employee manual, they should sign and date a separate page that states that they have read its terms and agree to abide by its terms and you and the employee should keep a copy of that agreement or page. You also need to make sure that your new employees aren’t bound by an agreement with their old employer to keep information confidential that they will need to use in their employment with you. You run the risk that those employees may get sued by their old employer and be barred from using the skills and knowledge that you hired them for.

When an employee leaves, have an exit interview…remind him or her of their duties to keep your information confidential. The non-disclosure and confidentiality agreements that they sign shouldn’t terminate when they do. Don’t give them an opportunity to misappropriate your information. Make sure that when they leave, they leave their keys, copier cards, sales or vendor lists, media containing any data and employee directories with you and return their laptops. Ask them, if they have brought work home in the past, to bring that work back before they leave.

In this era of laptops, PDA’s, e-mail and flash memory, it is no easy task to keep your secrets under lock and key. However, if you take “reasonable efforts under the circumstances to maintain their secrecy or confidentiality,” if they do get out, the law provides that you can get relief. However, if you don’t mind your business, the courts may not come to your rescue when trade secret theft occurs.

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Acquiring and Maintaining a Trademark

Frank Lloyd Wright Home

Apple Store Federal Trademark Registration


Acquiring and maintaining a trademark is much like purchasing and maintaining a home. Before they purchase a home, reasonable buyers will have it inspected. That inspection will, among other items, check the electrical system to see if it is safe and has sufficient capacity for the buyer’s needs, test the HVAC system to see if it is working properly and how long its useful life is, check the roof to make sure that it keeps the elements out and how long it will last, check the plumbing and drainage for leaks and make sure that it functions correctly; and in some areas of the country, inspect for termites and check to make sure that the home is not in a flood plain. The buyer will also have an appraisal done, comparing that house with comparable homes in the same area to confirm that it is priced correctly. Then after they buy that home, they will have to maintain it; fix the fence, maintain the yard, repair the shingles, insulate the windows, replace the appliances, etc.

Intellectual property is like a home. While it is different in that it is intangible property, it is property nevertheless, has value and, like a home, once you purchase it, you need to maintain it to maintain its value.

Trademarks may be generic. “Computer” would be a generic trademark for a computer. They may be descriptive. “Raisin Bran” would be a descriptive trademark for a cereal containing raisins and bran. They may be suggestive. “Roach Motel” would be a suggestive trademark as, while the product is a place that you want roaches to stay in, they generally don’t check out as they would in a motel. They may be arbitrary. “Apple” would be an arbitrary mark for a computer as would be “MacIntosh” and a fanciful mark would be “Exxon” or “Clorox,” i.e., a made-up word.

Just like homes, certain trademarks would be appraised as having more value than others. Since a generic trademark can’t be protected; anyone can use it, it would have little or no value for your use as a brand as competitors could use the same term and, therefore, you could never achieve brand recognition for it. A descriptive trademark cannot be registered with the United States Patent and Trademark Office without proof that the relevant purchasing public has come to see that mark as identifying a single source for a product or service. [The advantages of federal registration are that it is prima facie evidence of the validity of that registered mark, the registrant’s ownership of that mark, and of its exclusive right to use that mark throughout the U.S. as well as gives the registrant the right to sue for infringement in federal court. Also, anyone seeking to register a similar mark in the U.S. will find your trademark application or registration in the records of the U.S. Patent and Trademark Office, which should encourage them not to adopt and use a similar mark for similar goods or services.] Therefore, a descriptive mark could best be described as a fixer-upper. Ten years ago, Kellogg’s owned a federal trademark registration for KELLOGG’S RAISIN BRAN and General Mills owned a federal trademark registration for GOLD MEDAL RAISIN BRAN. Both companies were required by the Patent Office to disclaim exclusive rights to the term, RAISIN BRAN, on the ground that that term was descriptive, Like a fixer-upper home, the owner of a descriptive trademark needs to put substantial money into marketing its goods and services under that brand to the point that the relevant purchasing public has come to associate that mark with them and not as a merely descriptive term and to the point that a court or the Patent Office would concur. Like a fixer-upper home, that effort could turn into a money pit and the trademark owner might never reach that goal. Selecting a suggestive mark is like buying a house in a subdivision where property values are stable. You can get a solid house for a very good price, a registrable trademark, that doesn’t require a lot of work to keep up. Since it suggests a quality of your goods, the mark itself, without anything more, will aid in the marketing and selling of your product; you can throw it on a store shelf and with the right label, like a white picket fence, a well-tended lawn and a fresh coat of paint, it will attract buyers. But, like that house in that subdivision, every third house will be pretty much the same, with the result that in the trademark world, there are likely to be similar marks out there, giving you only narrow protection for your mark. Like a house, should you want to sell, if there are other houses in that subdivision that area for sale at the same time, your house is likely to be on the market for a while.

Now an arbitrary or fanciful mark is a different matter. Like a distinctive house, you may have to put some work into it, e.g., a house designed by Frank Lloyd Wright like the one depicted above, but unlike that generic fixer-upper, once you do that, the end result may be one of a kind and worth millions. You are going to have to spend money creating a brand that people will find instantly identifiable and that evokes a particular positive impression in buyer’s minds. Consider what Steve Jobs did when he returned to Apple to create the iMac, the iPhone as well as the interior of the Apple Store. He created products that did not look like any other competitors’ products out there, and, which, while they may not have had some of the features that those other products had, like a fine architect, created a reputation for design that made you want to own those products. It took a great deal of talent and money to get there but today Apple is #1 on Forbes Most Valuable Brands List and is worth close to three-fourths of a trillion dollars.

So, before you select a trademark, remember that intellectual property is like real property. If you do a home inspection or trademark search first to make sure that it is a good property, put money into it to maintain it; you need to police your trademark, watch for copycats and enforce your rights against them by demanding that they cease and desist their use of similar marks for similar products or services, and, start off with a distinctive design (or name), its resale value will be good.

And if you have a very good trademark attorney and a very good architect you can create both a valuable architecturally distinctive building and a valuable distinctive trademark at the same time. See U.S. Trademark Registration #4,277,914 for the design of the Apple Store, above.

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Selecting a Trademark and Creating A Brand Identity

When you create a brand identity, you should think of the trademark that you adopt to identify your product or service and distinguish it from your competitors’ products and services as one tool among others in the toolbox that you use to get purchasers to buy your product or service. Those other tools may include your advertising, how you display your product or service in the marketplace, and how you relate to your customers.

For example, if you are selling beer to men in their twenties, that sector of consumers who usually buy beer, you want to get their attention.  If sex is on men’s minds a good part of the time, then sex is probably a good way to get their attention and, therefore, beer ads frequently display very attractive women showing significant amounts of bare skin in close proximity to bottles of that frothy beverage.

If you are selling frozen pizza, television or print advertising stating that that product is as good as pizzeria pizza will likely bring your pizza to the buyer’s attention but it probably won’t close the sale.  Most pizza consumers who eat pizza out likely assume that frozen pizza is a pale imitation of the real thing.  Therefore, you will need something more to close the sale, to get them to buy your product.  Here, placing the product at the end of the aisle in the supermarket, introducing it at a discount, or providing coupons to the buyer will help close the sale.

And if the product you’re offering isn’t pizza but is instead a new automobile brand from a country that isn’t known for manufacturing automobiles that are sold in the U.S., say China?  Buyers will be justifiably concerned whether the Chinese, who have not been manufacturing cars for export to the United States as long as the Japanese, have the same level of expertise in doing so.  So, how do you get over that hurdle?  Your car make, in the beginning, will not have a good reputation.  It won’t have a bad reputation either, rather, it will have no reputation at all.  So what do you do?  You offer the car buyer a long term and comprehensive warranty on the car, promising to fix the car for free.  By doing this you can immediately tag the product with a brand identity, that of a manufacturer that stands behind its product.

Finally, how you relate to your customers is important.  Suppose you sell a commodity; cellular phone service or airline service, for example, where you have several competitors.  You can compete on price but, if you do so, you run the risk that a competitor will undercut your price and grab your customers.  Or you can make the experience of using your product more enjoyable.  In the case of both cell phones and airlines, one way to do that is to make television available to your customers as part of your product, as both Verizon and Jet Blue have.  However, if you leave your customers sitting in a jetliner for numerous hours out on the runway going nowhere, the entertainment offered by television will soon fade to black as may the goodwill that your brand has appreciated over the years.

Whatever you do to sell your product, you need to call it something.  In selecting a trademark, you need to pick a mark that others in your business are not using.  Otherwise your purchasers may buy your competitor’s product when they mean to buy your product or vice versa and more than likely your competitors will sue you.  Then you should pick a mark that will help sell your product.  Here, you can go two ways; you can pick a mark that describes a desirable feature of your product or you can pick an arbitrary or fanciful mark.

If you go with a descriptive mark, that mark will go to work right away, on its own, and help you sell your product.  For example, suppose you offer an allergy medication that doesn’t make you sleepy and you want to extend that brand to an allergy medication that you take at night that does make you sleepy and to distinguish between the two products you add P.M. to the brand name.  P.M. merely describes when you would take that medication, that is, at night, and therefore, that trademark would be a weak one.  From a marketing standpoint your adoption of such a mark would be fast acting and you could get a lot of initial bang for your marketing bucks;  it would not take a lot of advertising other than putting P.M. on your packaging to identify your product to consumers as a nighttime remedy.  However, because it would be a descriptive mark, your competitors could adopt the same or a similar mark and once this occurs, you will need to come up with some other marketing magic to convince customers that your product is better.

On the other hand, you could select an arbitrary or fanciful mark.  A fanciful mark would be a coined word such as Exxon.  An arbitrary mark would be a mark such as Apple which when it is used on computers or personal music players means nothing but has all the meaning in the world when it is applied to fruit.  Initially, when you select such a mark, it would have no immediate significance to consumers.  You would affix it to your product and display it in your advertising and it would, by itself, accomplish nothing in selling your product other than identifying that product as coming from you and not your competitors.  But use the other tools mentioned above to build a strong brand recognition for your product and once consumers recognize your product as working better, looking better or lasting longer than your competitors’ products, that mark will become easily remembered and your rights in it more readily enforced as a fanciful or arbitrary trademark is given greater protection by the courts not only against competitors using the same mark on the same products but against competitors using the same mark on related and, in some cases, if that mark becomes famous, unrelated products.

So what route should you take?  Should you select a descriptive mark for its immediate marketing benefits or a fanciful or arbitrary mark?  You decide, but here are a few examples of fanciful or arbitrary marks; APPLE, STARBUCK’S, GOOGLE, AMAZON, YAHOO, VERIZON, and here are some not so fanciful marks; GENERAL MOTORS, NORTHWEST AIRLINES, UNITED STATES STEEL, TOYS ‘R US.

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The misappropriation of a trade secret may now be enforced in the federal courts. On May 11, 2016 President Obama signed the Defend Trade Secrets Act.

Previously, entities seeking relief for the misappropriation of their trade secrets had to resort to their state courts and state law. Although 48 states have adopted the Uniform Trade Secrets Act in some form, as with any state statute, each of those state’s courts could interpret that state’s version of that Act differently. The exception to this was if you could show diversity jurisdiction, i.e., that the parties involved in the theft of trade secrets were from different states but in many cases trade secrets are stolen by an employee or a local competitor and in those cases federal court relief is unavailable.

This has now changed under the Defend Trade Secrets Act which provides a federal civil remedy for the misappropriation of trade secrets. Note that it does not preempt any preexisting state law remedies. For this reason, a party seeking judicial relief for the misappropriation of trade secrets needs to consider differences in statutes of limitation, attorney’s fees and other available damage relief and make a decision as to whether to file suit in state or federal court.

The Federal Defend Trade Secrets Act provides that, “An owner of a trade secret that is misappropriated may bring a civil action if the trade secret is related to a product or service used in, or intended for use in, interstate or foreign commerce.” There is a three-year statute of limitations from the date on which the misappropriation with respect to which the action would relate is discovered or by the exercise of reasonable diligence should have been discovered.

The term, “Trade Secret” is defined as ” all forms and types of financial, business, scientific, technical, economic, or engineering information, including patterns, plans, compilations, program devices, formulas, designs, prototypes, methods, techniques, processes, procedures, programs, or codes, whether tangible or intangible, and whether or how stored, compiled, or memorialized physically, electronically, graphically, photographically, or in writing if (A) the owner thereof has taken reasonable measures to keep such information secret; and (B) the information derives independent economic value, actual or potential, from not being generally known to, and not being readily ascertainable through proper means by, the public.”

“Misappropriation” is defined as “(A) acquisition of a trade secret of another by a person who knows or has reason to know that the trade secret was acquired by improper means; or “(B) disclosure or use of a trade secret of another without express or implied consent by a person who (i) used improper means to acquire knowledge of the trade secret; (ii) at the time of disclosure or use, knew or had reason to know that the knowledge of the trade secret was (I) derived from or through a person who had used improper means to acquire the trade secret; (II) acquired under circumstances giving rise to a duty to maintain the secrecy of the trade secret or limit the use of the trade secret; or “(III) derived from or through a person who owed a duty to the person seeking relief to maintain the secrecy of the trade secret or limit the use of the trade secret; or “(iii) before a material change of the position of the person, knew or had reason to know that “(I) the trade secret was a trade secret; and (II) knowledge of the trade secret had been acquired by accident or mistake.”

“Improper means” (A) includes theft, bribery, misrepresentation, breach or inducement of a breach of a duty to maintain secrecy, or espionage through electronic or other means; and (B) does not include reverse engineering, independent derivation, or any other lawful means of acquisition.

Remedies for misappropriation of a trade secret under the federal Act include injunctive relief, damages for actual loss caused by the misappropriation, damages for any unjust enrichment caused by the misappropriation of the trade secret that is not addressed in computing damages for actual loss; or in lieu of damages measured by any other methods, the damages caused by the misappropriation measured by imposition of liability for a reasonable royalty for the misappropriator’s unauthorized disclosure or use of the trade secret. If the trade secret is willfully and maliciously misappropriated, exemplary damages may be awarded in an amount not more than 2 times the amount of the damages awarded under the previous provisions.

In addition, in extraordinary circumstances only, a court may, upon ex parte application, issue an order providing for the seizure of property necessary to prevent the propagation or dissemination of the trade secret that is the subject of the action if equitable relief would be inadequate to achieve the purpose of this paragraph because the party to which the order would be issued would evade, avoid, or otherwise not comply with such an order. In order to obtain such relief the requestor must also demonstrate that immediate and irreparable injury will occur if such seizure is not ordered; the harm to the applicant of denying the application outweighs the harm to the legitimate interests of the person against whom seizure would be ordered and substantially outweighs the harm to any third parties who may be harmed by such seizure; and that the applicant is likely to succeed in showing that the information is a trade secret, that misappropriation occurred, that the person against whom the seizure order is sought has actual possession of the trade secret and any property to be seized and equitable relief would be inadequate to achieve the purpose of this paragraph because the party to which the order would be issued would evade, avoid, or otherwise not comply with such an order.

Trade secrets may be disclosed under the Act if made in confidence to a Federal, State, or local government official, either directly or indirectly, or to an attorney; and solely for the purpose of reporting or investigating a suspected violation of law; or “is made in a complaint or other document filed in a lawsuit or other proceeding, if such filing is made under seal.” Also, an individual who files a lawsuit for retaliation by an employer for reporting a suspected violation of law may disclose the trade secret to the attorney of the individual and use the trade secret information in the court proceeding, if the individual files any document containing the trade secret under seal; and does not disclose the trade secret, except pursuant to court order. Note here that “employee” is defined broadly to include “any individual performing work as a contractor or consultant for an employer.”

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Before bringing a new product to market, a certain amount of due diligence is recommended.

For example, before marketing a product or service; whether a financial product, a toy, a new restaurant, mobile phone app or anything else, it is recommended that you conduct a search of the records of the U.S. Patent and Trademark Office to make sure that no one has registered that product or service name or mark or a confusingly similar mark for the same or similar products or services. See http://www.uspto.gov/trademarks-application-process/search-trademark-database

If a logo is a critical part of that mark, the U.S. Patent and Trademark Office database should be searched for similar designs which may be claimed by a potential Plaintiff as a basis for an assertion that in commencing the use of your design you have infringed its design.

Google’s search engine may be utilized as well as registration is not a prerequisite for asserting trademark rights in the U.S.

It is, of course, recommended that you secure the services of experienced trademark counsel and have experienced trademark counsel conduct that search as experienced trademark counsel should be familiar with the relevant case law and, therefore, be able to determine the likelihood that a court would consider your proposed name to be a violation of another party’s rights.

If you have an invention, whether it be a Process, namely a mode of treatment of certain materials to produce a given result, a Machine, namely a concrete thing, consisting of parts, or of certain devices and combination of devices intended to perform some function and produce a certain effect or result, an article of Manufacture, namely an article produced from raw or prepared materials by giving to these materials new forms, qualities, properties, or combinations, whether by hand labor or by machinery or a Composition of matter, namely compositions of two or more substances and all composite articles, whether they be the results of chemical union, or of mechanical mixture, or whether they be gases, fluids, powders or solids, then you could have patentable subject matter (See https://www.uspto.gov/web/offices/pac/mpep/s2106.html) and should, again, conduct a search to ensure that that subject matter of your invention does not involve the making, using, selling, or offering to sell another’s invention which is the subject of prior and currently active patent protection.

Again, as with trademarks, there are databases that are available to begin that search. For example, you can search the U.S. Patent and Trademark Office’s database for patents assigned to your competitors or patents with titles that suggest the subject matter of your invention. You can also search https://scholar.google.com/ for relevant patents to your invention.

However, note here that I do not practice Patent Law and therefore recommend that you secure the services of an experienced patent attorney who can conduct that search and who would be familiar with the relevant case law as to what constitutes patentable subject matter as well as, through his or her knowledge of the relevant technology, could determine whether your invention would be a violation of another party’s rights.

If your invention constitutes patentable subject matter or your brand name is available for protection in the U.S. Patent & Trademark Office, or if, you are offering your product or services to customers outside the United States, available for protection in the relevant trademark and patent offices of those other countries in which you are doing business I strongly recommend that you protect that subject matter or name with that Office and offices.

Copyrights are another story, however. The Stanford University Libraries have put out a handy little guide on searching the records of the Copyright Office. See http://fairuse.stanford.edu/overview/copyright-research/searching-records/ Herein, lies the due diligence problem. The Copyright Office database will provide you with an often vague title of a work, the copyright claimant, the date the Copyright Registration was effective, the date of creation of the copyrighted article, the date of publication of the article, i.e., the distribution of copies or phonorecords of a work to the public by sale or other transfer of ownership, or by rental, lease, or lending and the name of the author but it won’t provide you with an image of what was deposited with the application for Copyright Registration. Without that image, there is no way to determine if what you have created is a copy of a protected work. While Copyright Infringement requires not just that your work and the copyrighted work be substantially similar but that you had access to that work in creating your own, i.e., you copied the other party’s work, there may be circumstances where your lack of access to the similar work may not protect you from an infringement claim. See, for example, Selle v. Gibb, 741 F.2d 896, 901 (1984) where the federal Seventh Circuit Court of Appeals wrote, “If, however, the plaintiff does not have direct evidence of access, then an inference of access may still be established circumstantially by proof of similarity which is so striking that the possibilities of independent creation, coincidence and prior common source are, as a practical matter, precluded. If the plaintiff presents evidence of striking similarity sufficient to raise an inference of access, then copying is presumably proved simultaneously, although the fourth element (substantial similarity) still requires proof that the defendant copied a substantial amount of the complaining work.”

Herein lies the due diligence problem. Since everything from advertisements to maps to bumper stickers to dolls to toys to wall-covering designs to games to greeting cards to jewelry designs to posters to photographs to sculptures to architectural plans to computer software and any graphics generated thereby may be the subject of copyright, how can you tell if your product is not a copy of something that’s already out there. See http://www.copyright.gov/circs/circ40.pdf You can search the relevant marketplace, either in its bricks and mortar form or its on-line form but then you can only make an educated guess that any similar product out there is the subject of a copyright registration. Of course, if the brand name of the similar product is identical to its title in the Copyright Office database and the ownership of the product is the same both in that database and on the product’s packaging I would be careful, as that would be a good sign that your product may be the subject of someone’s copyright claim and I would make sure that the products were not substantially similar. Again, here I would recommend that an experienced copyright lawyer compare the two products and assess the validity of the potential copyright claim. But all you would have is an educated guess. To view the actual game, toy, photograph, software or jewelry design that is the subject of that copyright claim, your request for copies of deposits should be submitted to the Records Research and Certification Section. Note that the Copyright Office does not retain all works deposited for copyright registration. Also note that that Office will provide certified or uncertified copies of published or unpublished works deposited in connection with a copyright registration and held in the Office’s custody only when one of the following three conditions has been met:

(1) Written authorization is received from the copyright claimant of record or the owner of any of the exclusive rights in the copyright, as long as this ownership can be demonstrated by written documentation of the transfer of ownership.

(2) The Copyright Office Litigation Statement Form is completed and received from an attorney or authorized representative in connection with litigation, actual or prospective, involving the copyrighted work. The following information must be included in such a request: (a) the names of all parties involved and the nature of the controversy, and (b) the name of the court in which the actual case is pending. In the case of a prospective proceeding, the requestor must give a full statement of the facts of controversy in which the copyrighted work is involved, attach any letter or other document that supports the claim that litigation may be instituted, and make satisfactory assurance that the requested reproduction will be used only in connection with the specified litigation.

(3) A court order is issued for a reproduction of a deposited article, facsimile, or identifying portion of a work that is the subject of litigation in its jurisdiction. The order must be issued by a court having jurisdiction over a case in which the copy is to be submitted as evidence. A request for copies of works deposited in connection
with a copyright claim should be accompanied by whatever material is necessary to show that one of the three conditions given above has been met.

So while due diligence is always recommended, conducting the necessary due diligence may not be easy or cheap.


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You should police your trademarks! As I noted in http://www.chicagotrademarkattorney.net/acquiring-and-maintaining-a-trademark/ prior to selecting a trademark for either goods or services or, and you need to consider this, purchasing a domain name for those goods or services as that domain name is likely to incorporate your trademark, you should conduct a trademark search to make sure that that mark is available for your use not only as a domain name but also to identify your goods or services. That search should not only include the specific goods or services that you intend to use your mark on or in connection with but any related goods or services or potential goods or services that you may wish to use that mark on in the future. For example, you would want to know if a name is available for use on comic books, movies and television shows based on those comic books as well as on action figures based on the characters found in those books, movies and television shows.

Assuming that your search discloses that that name is available, you should register it with the U.S. Patent and Trademark Office. The advantages of federal registration are that it is prima facie evidence of the validity of that registered mark, the registrant’s ownership of that mark, and of its exclusive right to use that mark throughout the U.S. as well as gives the registrant the right to sue for infringement in federal court. Also, anyone seeking to register a similar mark in the U.S. will find your trademark application or registration in the records of the U.S. Patent and Trademark Office, which should encourage them not to adopt and use a similar mark for similar goods or services.

As to that latter point, sometimes a party may go ahead and seek to register a similar trademark or service mark for related goods to your own even if your mark appears in the Patent Office’s records. Hopefully, that Office will decide that the earlier filing of your own similar trademark bars the registration of that later filed mark and the subsequent filer of the similar mark gives up on its similar mark and decides to register a different mark that is unlikely to be confused with your mark. But sometimes the U.S. Patent and Trademark Office Trademark Examiner may conclude that that subsequent filer’s mark is not confusingly similar to your mark and allow it to proceed to publication. How would you know about this? One way is to review the Patent Office Trademark Official Gazette published electronically by that Office every Tuesday. This document may be found at https://www.uspto.gov/learning-and-resources/official-gazette/trademark-official-gazette-tmog Note that I review that Gazette weekly for any client marks that are the subject of either pending applications or registrations before that Office and that I do not charge for that service. An alternative means of finding similar marks to your own that may have been published by the Office and may cause confusion among your customers is to hire a firm that watches the records of that Office for filed and published marks. Corsearch, Corporation Service Company and Thomson Compumark are well-known companies that provide this service.

An easy way to potentially determine if another business is using your mark even if they haven’t filed an application to register it is to search the term at issue using the Google search engine, click on “News” and click on “Create Alert” at the bottom of the page. Once this is done, Google will send you an email every day alerting you of any news items involving that term that its search engine generates.

Two final points to remember; (1) there is a significant advantage to filing a trademark application in the U.S. based on your intent-to-use your mark in the U.S. rather than waiting until you are already marketing your goods and services in the U.S. as, assuming that you commence the use of your trademark during the life of your intent-to-use application, your trademark rights will start from the date that you filed your trademark application in the U.S. Patent & Trademark Office rather than the date that you first started using that mark in connection with the marketing of your goods and services and, therefore, even though that new product is merely a glint in your eye, by filing an application to register its name with the Patent Office, you will as of that date obtain trademark rights in it and (2) you need to be consistent in policing your mark. Every time you find the same or confusingly similar mark either filed for used for your goods or services or related goods or services, you need to object to that use.

The reason for this is that the courts have held that in the case of a weak mark, competitors may come closer to a particular owner’s identical mark than would be the case with a strong mark without violating that owner’s rights. See SURE-FIT PRODUCTS CO. V. SALTZSON DRAPERY CO., 117 USPQ 295 (C.C.P.A. 1958). If there are many similar third-party marks out there, then your mark will be deemed weak and the courts will likely allow other similar marks to coexist with your own. However, if you’re the first one to use that mark and object each time another party seeks to or uses a similar mark, then your mark will stand alone both in the records of the Patent Office and in the marketplace, it will be considered a strong mark and the courts will assist you in blocking any infringers of it as long as you have not abandoned your use of it. Policing a mark does not mean that you must sue every potential infringer that pops up. If you have a good case of likely confusion against each potential infringer and you are the senior user of the mark at issue, I have found that a strongly worded demand letter will often make the infringer go away. You may have to be willing to compromise; e.g., give the infringer a reasonable period, usually a few months, to cease its use, allow it to continue that use but in a manner that makes confusion unlikely, e.g. limiting their sales to a different marketplace or to different consumers, or even granting them a license to continue to use your mark if they assign their ownership in the mark to you in exchange for them paying a royalty.

Pursuing such a campaign may not be cheap in the short-run but by continually asserting your trademark rights in your brand against the world, that brand will grow as a property and should someone seek to acquire it, assuming that you wish to sell it, the financial rewards can be quite remunerative.

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The Future is here as long as you agree to its Terms and Conditions and sign a Release. See the retina scan used by James T. Kirk and found on your smartphone. See https://youtu.be/6JDLrTmLo8M  &  https://youtu.be/pJjwfrN6hTs Also see the Illinois Biometric Information Privacy Act.

That statute states that  a “Biometric Identifier,” which may include a retina scan, an iris scan, fingerprint, voice print or scan of your hand or face geometry” in possession of a private entity, i.e., not the government, may not be collected, captured or purchased from a person unless that person is informed in writing that that identifier is being stored, is informed in writing of the specific purpose and length of time for which that identifier is being stored and used, and the person whose “Biometric Information” is being stored or collected provides to the collector a written release. In addition, that “Biometric Information” may not be sold, or leased and it may not be disclosed or disseminated unless the subject of that Information consents to that disclosure or that disclosure is required by law or is used in the completion of a financial transaction authorized by the subject of that Information.

In addition, the private entity in possession of that “Biometric identifier” must store, transmit and protect it from disclosure in a manner that is the same as or more protective than the manner in which it stores, transmits and protects other confidential and sensitive information. Further it must develop a written policy made available to the public establishing a retention schedule and guidelines for permanently destroying those identifiers when the initial purpose for collecting and obtaining them has been satisfied or within three years of the subject’s last interaction with the private entity, whichever occurs first.

Financial institutions are excluded from the terms of this Act. Persons aggrieved by a violation of this Act may seek damages of $1,000 for a negligent violation or $5,000 for a reckless violation or their actual damages, if greater.

This Act, which was enacted almost ten years ago, in October of 2008 (Perhaps our legislature could see the smartphone future.) has suddenly become relevant when Google recently came out with an app which matches user’s uploaded selfies with portraits or faces depicted in works of art. See the following example retrieved from http://www.chicagotribune.com/business/ct-biz-google-art-selfies-20180116-story.html

Google app


Because the individual’s “face geometry” was required to utilize this app, it is not available for use in Illinois as is Nest’s doorbell feature incorporating a camera that can recognize a visitor.

By the way, Texas has a similar law. If you think this is an example of government intrusion, consider this. If your Social Security Number is stolen, you can change it. If your face or fingerprints are stolen, fixing that “identity theft” will be more difficult. See https://youtu.be/95VvTW1FvS8



The “Double Irish” is neither two shots of Jameson’s nor a shot of Tullamore in a glass of Guinness. Instead it is a tax avoidance scheme used by scores of American companies including Allergan, Facebook and Google in which that company sets up a subsidiary that employs people in Ireland and routes the profits made by that subsidiary to another Irish subsidiary that consists solely of a mailbox address in an offshore tax haven like the Caymans.

By convincing the Irish government that it is managed and controlled abroad, an American company such as Apple or the ones mentioned above can largely escape paying Irish income tax. And at the same time since American law provides that subsidiaries are tax residents of the United States only if they are incorporated here an Apple can therefore defer paying corporate taxes on any income generated by its foreign subsidiaries if those profits stay offshore. Thus, by shifting assets to its Irish subsidiary, for corporate tax purposes, those profits are in a “no man’s land” for purposes of tax avoidance, stateless and therefore not payable to any jurisdiction under its tax laws.

In May 2013 a U.S. Senate Investigative Committee found that Apple was attributing billions of dollars in profits each year to three Irish subsidiaries that declared “tax residency” nowhere in the world. Apple reports that nearly 70% of its worldwide profits are earned offshore. By October 2013 Apple had accumulated over 100 billion dollars in offshore cash, mostly in its Irish subsidiaries on which it paid almost no corporate income tax.

Well, all things must come to an end. European regulators are trying to force such countries as Ireland, Belgium, Luxembourg and the Netherlands to collect back taxes from companies that utilized such schemes. Apple, for example, is being pursued for over fourteen billion dollars in back taxes after the E.U. ruled that the above tax scheme amounted to illegal state aid from the Irish government. As a result, that government is planning to phase out the “Double Irish” at the end of 2020. Note, however, that since Apple has a real subsidiary in Cork, Ireland that employs over 6,000 people which serves as its European headquarters, those employees pay taxes and spend money in Ireland and, therefore, contribute to the Irish economy. See http://www.businessinsider.com/apples-growing-irish-empire-in-pictures-2016-2?r=UK&IR=T/#this-map-shows-where-apples-european-headquarters-is-in-relation-to-its-proposed-data-centre-and-the-irish-outposts-of-other-silicon-valley-giants-1

So, what does Apple do? It moves the tax home of two of its Irish companies, Apple Sales International and Apple Operations International to the island of Jersey in the English Channel, which typically does not tax corporate income. See https://en.wikipedia.org/w/index.php?title=Jersey&oldid=809711261But Apple kept a third subsidiary, Apple Operations Europe, as resident in Ireland. Why? One possible reason is that while Ireland did away with the “Double Irish,” it expanded its tax deductions for companies that move their intellectual property rights in their patents and trademarks into Ireland such that an Irish company that spent fifteen billion dollars buying such rights, even from a fellow subsidiary, could claim a billion-dollar tax deduction each year for 15 years.

According to the New York Times article discussed in this post (See https://nyti.ms/2j5C8OM), according to a former I.R.S. official, based on Apple’s American securities filings, he estimated that by moving its intellectual property into Ireland to take advantage of the latter deduction that transfer was worth about $200 billion dollars.

The 2005 American Bar Association publication, Fundamentals of Intellectual Property Valuation, states “if one were to value companies in which the brand identity overarches everything else, then a market capitalization methodology might be used.” Using Coca-Cola as an example, that publication notes that “it is a company with a single umbrella brand under which virtually all other activities and intellectual property are gathered. The Coca-Cola name covers the technical know-how imbedded in the proprietary recipe, processing methods, and subbrands like Diet Coke.” Using that analysis, given Coke’s 2004 total capitalization of approximately 138 billion dollars, its tangible assets were only 29 billion and the remaining value of its business may be attributed to its intangible assets and goodwill; the key intangible asset, the Coca-Cola brand would be worth 109 billion of the 138 billion dollars.

60% of Apple’s revenue in 2016 was generated by iPhone sales (See http://www.businessinsider.com/apple-iphone-sales-as-percentage-of-total-revenue-chart-2017-1) , a product that is manufactured for it by two Taiwanese companies. See https://en.wikipedia.org/wiki/IPhone#Production So, plant and equipment, labor, and similar balance sheet items as well are outsourced off of Apple’s balance sheet for its most important product. See https://www.apple.com/

So, while the double Irish may be being phased out, because the largest piece of Apple’s valuation, its intangible intellectual property, is still subject to a giant tax deduction by the Irish government, the bite in the apple found on Apple’s logo won’t be the bite mark of an Irish tax collector anytime soon.




On September 7th of this month, the New York Times reported that hackers had gained access to Equifax’s data containing, among other information, the Social Security numbers and driver’s license numbers of potentially 143 million Americans. In addition that report stated that, “Equifax also houses much of the data that is supposed to be a backstop against security breaches. The agency offers a service that provides companies with the questions and answers needed for their account recovery, in the event customers lose access to their accounts.” “If that information is breached, you’ve lost that backstop, said Patrick Harding, the chief technology officer at Ping Identity, a Denver-based identity management company.” See https://nyti.ms/2xSMUL6

Which brings me back to a piece I wrote two and a half years ago entitled “Securing Your Data.” See http://www.chicagotrademarkattorney.net/securing-your-data/ It may be a good time to revisit that blog post. That post referred to a post I had written on August 6, 2014 reporting another story in the New York Times that “hundreds of millions of email addresses and other types of personal identification were found in the hands of Russian hackers.” The writer of that story wrote, “assume that your personal information is stolen, and recommended that you change your password for sites that contain sensitive information like financial or credit card data.”

So, three years later, with the Equifax hack, what have we learned about cybersecurity? ASSUME THAT YOUR PERSONAL INFORMATION IS STOLEN!” And, what did the last Presidential election teach us, “the Russians are good hackers!” Obviously, we could have figured that out reading the Times two years before. So, should we throw up our hands and just assume that all is lost and wait to lose our identity as well?

Well, all is not lost. As we have learned from the F.B.I. in their investigation of the San Bernardino mass shooting case, encrypt your data on your cell phone. Make sure that you don’t exchange sensitive data on a public wi-fi system and make sure that your home and business systems utilize an encryption key. If you store data in the cloud, Edward Snowden has recommended that you use Spider Oak, an online backup and file hosting service that uses encrypted cloud storage and client-side encryption key creation.  See https://en.wikipedia.org/w/index.php?title=SpiderOak&oldid=794905942  And Ed Snowden knows something about hacking. After all, he hacked the National Security Agency.

And, as for your other data, you can buy a back-up hard drive or a USB key and maintain a spare copy of your photos and important documents and e-mails. I save these documents and e-mails in .PDF format so that they are easily accessible as software versions change or in the event that I or someone else who needs access to those files in the future is using a different OS from the one that I am using now. Don’t carry the back-up with you; if at home, keep it in a locked fire-safe box and, if you are leaving town for an extended period, and you have a safe-deposit box, put it there. If the back-up is in the office, at least keep it in a secure locked drawer, and if you can do it safely, bring it home on weekends and on vacation and follow the procedure noted above. Encrypt access to the back-up drive if possible. If you’re going on vacation or working at a Starbuck’s leave the backup disk in one of the safe locations noted above.  Also, perform a back-up every day that you use your computer.  You cannot remotely hack a safe-deposit box, a fire-safe box or your front door unless you have an app remote-controlled lock.  See https://www.wired.com/2013/06/smart-locks/ which I wouldn’t recommend that you purchase. See “Russian hackers” and “Equifax” above.

And as for those questions and answers needed for recovery of your online accounts, have fun with them. As I suggested previously, play with them. For example, you went to Pyongyang on your honeymoon, your dog’s name is FreddyMercury, the first car that you owned was a Tucker, you were born in the Damascus Hospital for the Criminally Insane, your elementary school was the Chernobyl grammar school and the city you’d most like to visit is Mogadishu. Answers like these will be more difficult to guess than if your dog’s name is Fluffy, your first car was a Ford, you were born in St. Joseph’s Hospital and the city you’d most like to visit is Paris. Don’t everyone use these examples or they won’t work.

Pick a strong password with a combination of numbers and letters, capitals and small letters and punctuation marks that you can remember. Use at least eight or more characters. Don’t use the same user name/password combination for multiple websites but pick something you can remember as using an online password manager to store your passwords is risky. Like anything else in the cloud it can be hacked. If you use passwords to access your bank accounts and your medical records as well as pay your credit card accounts, many of which are probably linked, a hacker can access those records and potentially empty those accounts. And who doesn’t want to have their gynecological or urological results revealed?

Use two-factor authentication. This works with Google. If someone tries to access your Google account on another computer, including you, Google will send a one-time code via text message to your cell phone. If you happen to be using checking your Gmail in a public library, this can be embarrassing. You then enter that code to log in. Two-factor authentication should become standard as it essentially generates a random multi-digit number that you must key in to gain entrance to a web site that resides in the cloud

Also, if your cell phone has a “kill switch,” activate it so that in the event it is stolen it becomes useless as a key to your personal records located in the cloud.

The lesson of the Equifax episode should be if information is really personal and of an intimate nature or otherwise potentially embarrassing or, for whatever reason, you are never going to want to disclose it to the world, don’t put it in the cloud. As I wrote previously, would you hand over the keys to your home to someone who knocks on your door and promises that he’ll take care of your house? I doubt it. People ensure the security of their home to either companies with a long-standing reputation for safety or leave their keys with a trusted neighbor or relative whom they know very well. The value of your investment account or bank account or personal reputation, all of which may be accessed by someone with your password, may be much greater than that of your house. Would you leave your password with a company that may not be around in three years? It looks like Equifax many not be. They had the records of half of America and lost them. Oops!

And, finally, what you do with your life is your business and everyone else’s. Your work history is in your LinkedIn account as are all of the names of your work and professional associates. Your marital status is on your Facebook page as are pictures of your kids, where you went on vacation, your spouse as well as posts about your politics, lists of your friends, etc. What once would have taken extensive efforts by an authoritarian state’s internal police force to learn about you, you have freely volunteered to the world.

So, while you may worry about your records with Equifax, it doesn’t take a hacker to learn the other intimate details of your life.


How Trying Is Trying A Case

The following chart identifies a few major Chicago law firms, how disputes were resolved, if resolved, and, when cases went to trial, how long it took to reach a resolution. The period covered is 2000 through today and the source of the chart is yesterday’s Crain’s Chicago Business.


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The 1986 Computer Fraud and Abuse Act (18 U.S.C. § 1830) made criminal intentionally accessing a protected computer without authorization or exceeding authorized access to that computer and thereby obtaining information from it. The Act defines a “protected computer” as any computer which is used in or affects interstate or foreign commerce or communication. Therefore, the Act applies to any computer or even a smartphone connected to the Internet. See http://www.chicagotrademarkattorney.net/9th-circuit-rules-california-dreamin-online-not-a-federal-crime/.

Violations of the Act also include knowingly causing the transmission of code, and as a result of such conduct, intentionally causing damage without authorization to a protected computer as well as trafficking in a password or similar information through which a computer may be accessed without authorization. It is also a violation of the Act to access a computer with the intent to extort from any person any money or other thing of value, or demand or request money or other thing of value in relation to damage to a protected computer. So ransomware is covered by this statute as well.

If the value of the information exceeds $5,000.00, punishment may include a fine or imprisonment for up to five years.

Violations of this Act may be a civil offense as well. There’s a two-year statute of limitations which commences upon the date of the act complained of or the date of discovery of the damage and compensatory damages or injunctive relief may be sought. To obtain relief there must be at least a $5,000 loss or the modification of a medical exam or diagnosis or physical injury to a person or a threat to public health or safety or damage affecting 10 or more protected computers and recoverable losses may include response costs, restoration of data or programs, lost sales or advertising from a website or harm to reputation or goodwill.

Cases have held that it is not a civil violation of the Act when revenue is lost due to theft of proprietary data if the Plaintiff still had access to the data just as it had before the Defendant’s actions. Also, one does not appear to have a civil claim under the Act if the misappropriated data remains intact on the originating computer. On the other hand, having a single user subscription to an online publication and providing the confidential username and password to that subscription to numerous other employees for two and a half years has been held to constitute unauthorized access or access in excess of authorization to a computer system that can be redressed under the Act.

The 9th Circuit in the Nosal case took a limited view of the applicability of the Act holding that it “target[s] the unauthorized procurement or alteration of information, not its misuse or misappropriation” and interpreted the statute’s meaning of “exceeding authorized access” to exclude violations of use restrictions. See U.S. v. Nosal, 676 F.3d 854. That Circuit has held that a claim under the statute depends on whether a person has received permission to use the computer for any purpose or if an employer has rescinded permission to access the computer and the defendant uses the computer anyway. In the latter case the defendant would be liable but in the former case he would not be. In the 9th Circuit civil liability under the statute has been interpreted to apply to violations of technical rules, not written ones, i.e., the Computer Fraud and Abuse Act is intended to punish hacking or the circumvention of technical access barriers and not violations of use restrictions. As I wrote in http://www.chicagotrademarkattorney.net/9th-circuit-rules-california-dreamin-online-not-a-federal-crime/ in Nosal Judge Kozinski wrote, “Minds have wandered since the beginning of time and the computer gives employees new ways to procrastinate, by chatting with friends, playing games, shopping or watching sports highlights. Such activities are routinely prohibited by many computer-use policies, although employees are seldom disciplined for occasional use of work computers for personal purposes. Nevertheless, under the broad interpretation of the [Computer Fraud and Abuse Act], such minor dalliances would become federal crimes.”

But, beware, here in Illinois, the Seventh Circuit Court of Appeals has taken a broader interpretation as to the applicability of the Computer Fraud and Abuse Act in civil cases, holding whenever an employee breaches his duty of loyalty or a contractual obligation to his employer and has knowingly accessed that employer’s computer without authorization or has exceeded his authorized access he is liable under the Act, or otherwise acquires an adverse interest to the employer, the employee’s authorization to access information stored on an employer’s computer terminates, and all subsequent access is unauthorized or exceeds the scope of authorization even if that access is still technologically enabled. In other words, one is civilly liable whether one accesses a computer without authorization or uses such access to obtain or alter information in the computer that the accesser is not entitled so to obtain or alter. See International Airport Centers, LLC v. Citrin, 440 F.3d 418 (7th Cir. 2006).

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Before you use an image make sure that you have the right to do so. See https://t.co/0MG0G3QSJk for some essential information on this.

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There are Dangers Lurking in the “Internet of Things!”

There are dangers lurking in the “Internet of Things!”

In the“The Internet of Things,” everything “from meat thermometers monitored with a smartphone to Wi-Fi-equipped dog collars, devices and services in homes and businesses are increasingly being connected to the Internet.” “Devices on the market or the drawing board include smart door locks, toothbrushes, wristwatches, fitness trackers, smoke detectors, surveillance cameras, ovens, toys and robots.” See http://on.wsj.com/1dGJNXC In this world of the “Internet of Things” you’d enter a hotel room where the lights, the stereo, and the window shade adjust to your preferences before you even walk in, your home air conditioning system will start-up when you leave your office at night, your dog’s collar will notify you if your dog leaves your yard, your in-ground sprinkler system will monitor the weather forecast so as not to turn on if it rains and your refrigerator will remind you when you are out of beer.

The data generated by such devices might become a privacy threat, for example, your Nest thermostat has a feature called “Auto-Away” that learns when you’re not home.

More importantly, these devices can be doorways for hackers to hack into your computer network. See http://nyti.ms/1e6rDSe As reported in the New York Times, by infecting with malware the online menu of a Chinese restaurant that was popular with employees, attackers got a foothold into an oil company’s vast computer network. Hackers got access to Target’s customers’ credit card records through its heating and cooling system. Researchers testing computer security got into Google’s Australia headquarters’ network through its building management vendor. Researchers at universities in Canada and Israel were able to hack the Philips Hue smart light bulbs in an office building and by compromising a single light bulb were able to infect a large number of nearby lights within minutes from a car 229 feet away. Philips subsequently fixed the vulnerability with a patch. See https://nyti.ms/2jErU5K

In the most famous example of an Internet of Things hack, web sites, including those of Twitter, Netflix, Spotify, Airbnb, Reddit, Etsy, SoundCloud and The New York Times, were brought down last October via an attack on a company called Dyn, located in New Hampshire, that managed the DNS address servers for those web sites. Those servers match domain names to their associated IP addresses so that when you type a domain name into your web browser’s address bar, your computer contacts that DNS server and asks what IP address is associated with that domain name. In that attack, those web site servers were attacked through a massive distributed denial of service attack utilizing hundreds of thousands of internet-connected devices like cameras, baby monitors and home routers that had been infected without their owners’ knowledge and software that allowed the hacker to command them to flood a target with overwhelming traffic. See https://nyti.ms/2klxPKG

In the Internet of Things, your air conditioner shouldn’t be talking to your point of sale device. Corporations should set up their networks so that access to sensitive data is sealed off from third-party systems and remotely monitored with advanced passwords and technology that can identify anomalous traffic.

At home you should establish and set strong passwords for all of your devices, regularly update your software for your smart home devices and set up separate Wi-Fi networks for your computing devices, i.e., your computer, tablet and smart phone and those other devices like your thermostat, refrigerator and bathroom scale.

Remember, Edward Snowden was a third-party contractor working for Booz Allen Hamilton inside the NSA’s Hawaii regional operations center.

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You can file an application to register a trademark in the United States (1) based on a corresponding foreign application or registration to register that same mark for the same goods, (2) your current use of your mark on the goods or services identified in your trademark application which, in the case of goods, must be sold in interstate or foreign commerce and in the case of services must be rendered in commerce that may be regulated by Congress, although offering services via the Internet has been held to constitute use in commerce, or (3) based on your bona fide intent to use your mark on the goods or services identified in your application in the future.

The benefit of filing an application on the latter basis is that it allows you to reserve rights in a trademark before you use that mark in connection with a product or service and, once that mark is in use and you obtain your federal registration, your trademark rights would be deemed to start, not on the date that you first used that mark in connection with that product or service, but rather on the date that you filed your trademark application based on your intent-to-use your mark in the future. However, that application must be based on your “bona fide” intent to use that mark in the future. “Bona Fide” is defined in Merriam-Webster’s dictionary as “made in good faith without fraud or deceit.” See https://www.merriam-webster.com/dictionary/bona%20fide

“Bona fide” intent is important as an Opposer can challenge the registration of your application before the Patent Office’s Trademark Trial and Appeal Board if it can prove that your intent was not “bona fide.” To prove that your intent is “bona fide” you should have documentary evidence of that intent. See M.Z. Berger & Co. v. Swatch AG, 787 F.3d 1368 (Fed. Cir. 2015). So, at the time that you file an intent-to-use trademark application you should have in your possession a business plan, marketing plan, internal correspondence discussing the prospective trademark and the goods and services in connection with which it is intended to be used; if you have simultaneously applied for a domain name, corporate name or LLC name identical to your proposed mark, that is helpful as is the existence of drawings or product prototypes bearing the mark. If you have a proposed brand in mind, you probably have had some prior discussions concerning that name which may be written down or found on an email somewhere. It is important to retain evidence of those disucssions or plans in the event that your bona fides are challenged.

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