How to File An Application to Obtain A Trademark Registration in the U.S.

In http://www.chicagotrademarkattorney.net/acquiring-and-maintaining-a-trademark/ I discussed the advantages of obtaining a federal trademark registration in the U.S. To enjoy those advantages, you need to file an application to obtain that registration in the U.S. Patent and Trademark Office.

The first step in filing an application is to check the records of that Office to make sure that that mark is available, i.e., that that mark or a confusingly similar mark is not used on the same or related goods or services. Related goods or services are goods or services that would be sold or used together such that the use of the same or similar name to identify them would cause customer confusion. Since trademark rights in the U.S. are generally based on being the first to use that mark, the exception being that you can file a trademark application based on your intent to use that mark in the future, (See http://www.chicagotrademarkattorney.net/intent-use-mark-must-bona-fide/ ) you should also, at least, check the Internet to see if your proposed mark or a confusingly similar mark is used on related goods. Here, I recommend that you retain the services of an experienced trademark attorney to conduct that search and analyze the results as he or she would be aware of the relevant law and Patent Office practice and, thereby, be able to advise you as to whether your selection and use of a particular trademark or service mark is likely to be approved by that Office and, more importantly, whether in adopting and using that mark you run the risk of a potential legal claim being raised by the owner of another mark.

If your mark is available, in your U.S trademark application you need to identify who the owner of the mark is, who should also be the user of the mark, and list its address, entity type, and then  the state or country under which it is organized, e.g., state of incorporation.

Then you need to identify the mark. If it’s a word or slogan, you can display it in block letters or standard characters, i.e., type it. If it includes a logo, you need to decide if color is an important marketing feature. If it is, the mark should be registered in color. If the design rather than the color is more important or if the logo will appear either on your products or in your marketing materials in more than one color, you should register the mark in black and white. To meet U.S. Patent and Trademark Office requirements you will need to provide a .jpg drawing of your logo scanned at not less than 300 dots per inch and no more than 350 dots per inch, to produce the highest quality image with all lines clean, sharp, and solid, with a  length of no less than 250 pixels and no more than 944 pixels, and a width of no less than 250 pixels and no more than 944 pixels.

Next, whether the mark is a word, slogan or logo, you need to identify what goods or services it is used or intended to be used in connection with (For goods, the mark must be used on packaging or labeling for the product, for services, the mark must be used on advertising for the product, e.g., store signage, brochures, web site, etc.). The Patent and Trademark Office provides a handy list of suggested goods or services for your application at http://idm-tmng.uspto.gov/id-master-list-public.html, By using one of these pre-approved descriptions of your goods and services, you qualify for a reduced government filing fee.

If you are currently using the mark, you need to identify the date when the mark was first used on your goods or in connection with your services and the first date that those goods with labeling or packaging bearing the mark that you want to register were shipped either across state lines or to the U.S. from abroad. For services, advertised on the web, it is sufficient to use the date that the relevant advertising went live on the web, as your first date of use. But note, it is not sufficient that you are advertising the services; on that relevant date you must be providing your services to the public. You also need to prove that you are using your trademark or service mark on the goods or services that you have listed in the application by providing via a .jpg or .pdf file an image of your advertising for your services, for a service mark, or an image of labeling for the product or packaging for the product for a trademark and identify in your application what that proof of use is, e.g., a label, product packaging or a webpage advertising your services.

Note that if your goods and services are in more than one class, you will have to submit additional filing fees. If you use the Patent Office’s suggested list of goods or services, it will identify the applicable class that those particular goods or services are in, and when you complete your application, will calculate the filing fees that you owe. For example, cosmetics are in one class, motor vehicle parts are in another class, financial services are in another class, marketing services are in another class, etc. but most articles of clothing and most electronic goods, because they are related products, would be in the same class, that is, most articles of clothing would be in the same class and most electronic goods would be in the same class.

Finally, you need to sign the application electronically by inserting your name or initials between two slash marks, typing in your name and title and dating the application. If you are not a U.S. resident, you will have to designate a domestic representative in the United States. You pay the government filing fee by credit card online and the Patent Office will acknowledge its receipt of your application by electronic mail to your email address.

In about three or four months you should hear from the government, either by telephone or by mail, if your trademark registration application has to be corrected or was refused. If you do not hear anything, then you’ll hear that it was approved and published in the U.S. Patent and Trademark Office Official Gazette to give third-parties 30 days to oppose your application. If there is no objection by those third parties, you’ll receive a Certificate of Registration if your application stated that the mark was currently in use or a Notice of Allowance if you intend to use your mark in the future.

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Determining if Your Trademark Has Been Infringed

Section 32 of the U.S. Trademark Act defines (15 U.S.C. sec. 1114) trademark infringement as the unauthorized use of an owner’s mark which is likely to cause confusion, mistake or deception. Among the elements considered in determining whether trademark infringement has taken place are the similarity or dissimilarity of the marks at issue in their entireties as to appearance, sound, meaning and commercial impression and the similarity or dissimilarity of the nature of the goods, that is, whether members of the purchasing public would mistakenly assume that the plaintiff’s goods or services originate with, are sponsored by, or are in some way associated with the goods sold under the defendant’s trademark. As to the similarity of the marks in question, the Patent Office has held that it may be sufficient that two marks look the same or sound the same or mean the same to find likelihood of confusion See In re White Swan, Ltd., 8 USPQ2d 1534 (TTAB 1988).

There traditionally have been three routes to proving likelihood of confusion; (1) a consumer survey, which is expensive and inherently raises issues about sample size, the manner of display of the marks at issue, and the relevancy of the population surveyed, that is, are they likely to be the purchases of the trademarked products at issue; (2) evidence of actual confusion, if it can be found or (3) the finding of a clear inference of confusion based on a comparison of the conflicting marks and how they are used. At least in this Federal Circuit, the 7th, proof of intentional copying only creates a presumption of likelihood of confusion, rather it is just one of several factors to be weighed in determining whether there is a likelihood of confusion and infringement has taken place. See Schwinn Bicycle Co. v. Ross Bicycles, Inc., 870 F.2d. 1176 (1989).

All of which brings me to the “book,” an image of which appears below, which I received from Chofn Intellectual Property, a Chinese trademark firm, by one of its authors, Tingxi Huo, entitled Classification of Similar Goods and Services for Registration of Marks in the Peoples Republic of China.

Chinese Classification of Similar Goods and Services for Registration of Marks

Let’s assume that you have two similar marks; they may sound the same or they may look the same. You next need to determine if they are used on sufficiently related goods as to cause infringement. Here’s where Mr. Huo’s book makes that determination. Say the services at issue are “Providing on-line videos, non-downloadable.” You will find those services in that book, which is in both English and Chinese, on page 345, listed in English in alphabetical order. To the right of that listing of services is a four-digit code, in this case “4105.” Turning to page 599 of Mr. Huo’s book, you will find the start of a little more than one page of related services. These run from “Entertainment service” to “Movie studios services” to “Production of radio and television programmes” to Rental of videotapes” to “Videotaping” to “Production of music,” which is a rather thorough listing of related services, which if sold under the same or similar mark to the one alleged to be infringed for providing on-line videos, would be likely to cause confusion, mistake or deception.

Let’s pick another example, “Mobile Phones.” “Mobile Telephones” may be found on page 317 of the book, to the right of which may be found the code “0907.” That code may be found on pages 478-479 of the book next to such related goods as “Antennas,” “Transmitters of electronic signals,” “Video telephones,” “Navigation apparatus for vehicles,” “Cordless telephones,” “Radio Pagers,” “Satellite navigational apparatus,” [Most smartphones have GPS] and “Wearable activity trackers,” which when used with a mobile phone can transmit notifications from that phone to your wrist.

Or let’s pick an everyday item like Lipstick, found on page 307 of the “book” next to the code “0306.” That code may be found on page 428 of the book next to a host of items generally sold together by the same maker such as “Nail polish,” “Make-up,” “Mascara,” “Lip glosses,” and “Sunscreen preparations.”

Now, what if all of this information was computerized. If software can do voice recognition, you can set up parameters by which that software will determine if two words sound alike, image processing software such as Google Images can determine if two marks look alike and word processing software contains a thesaurus function that determines which words carry the same meaning. Put it all together and in the not too distant future trademark infringement decisions may be rendered by computers eliminating both Patent Office trademark examiners and judges.

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Why It Is Important to Register Your Trademark Abroad

Most countries outside the United States do not require that you use your trademark in that country in order to obtain exclusive rights in that mark in that country. All you have to do to obtain those rights is to register your mark in that country. Nothing more is required. Therefore, if you are considering doing business in a registration-first country, or even if that is a mere possibility, you should register your mark there early. Otherwise, a cybersquatter or even a potential distributor who gets wind of your potential intent to do business in that country can register your mark there and force you to litigate or buy your own mark back before you can use your own mark to do business in that country. See http://t.co/jMvinPQjfi

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Self-Driving Cars and Where They Should Be Tested

In a New Year’s Eve story, the New York Times described Arizonans attacking Waymo’s self-driving cars in Chandler by pelting them with rocks, slashing tires, trying to run them off the road and threatening the humans riding inside testing those vehicles. See http://nyti.ms/2RkP4ji Why did Waymo decide to test its cars in such a hostile environment? It did so because in Chandler, Arizona the roads are wide, well-marked, hardly ever covered by rain or snow, the sidewalks are rarely traversed by pedestrians and there are few over-hanging trees casting shadows in the desert environment. See http://www.wired.com/story/32-hours-chandler-arizona-self-driving-capital/

To the contrary, self-driving cars should be tested and able to be autonomous in truly hostile environments; at night, in rainstorms, on black ice, and in those situations where human drivers are likely to be stressed, tired, visually impaired, intoxicated or irrational, in other words, where they should turn the wheel over to a more intelligent, rational driver, i.e., a robot and not in Chandler where they could drive a car with their eyes closed. Here are just a few examples of situations where I’d love to see a self-driving car be successfully tested:

The 405 freeway between the San Fernando Valley and LAX at any time when you’re trying to catch a flight and traffic is gridlocked which is just about any time. Will the car know to inch itself over to the right lane, exit off the interstate and find its way onto Sepulveda Blvd. so that you will catch your flight?

Exit onto Storrow Drive in Boston during rush hour and ask a fellow Bostonian to let it merge onto that road. As a human I could not complete that task in a reasonable period of time.

Drive the Belt Parkway in Brooklyn, where lane markings end at the occasional drawbridge, numerous large potholes dot the pavement, sections of which are joined together by large humps, and where the act of changing lanes requires pointing your car at the front fender of the car in the adjacent lane and praying that that driver surrenders first.

Navigating the 401 from Windsor to Toronto, Canada where the posted speed limit (in kilometers) is 62 m.p.h. but the actual speed driven is somewhere in the mid-70’s. In fact, the actual speed vs. posted speed issue may be a problem for any self-driving car driving between the Appalachians and the Sierra Nevada mountains in the U.S. complicated by factoring in for the possibility of state trooper vehicles parked behind overpasses.

Driving at night through rural areas where the occasional deer may decide to cross the interstate just as you’re rounding a bend on an ascending curve or driving on parts of the old federal highway system; those four lane roads marked with a “US” route number where there is a wide grassy median often filled with three feet of brush from which could leap anything or anyone, including, in one case, while I was driving in Pennsylvania, a flock of teenage girls running to an ice cream stand across the road.

Oh, and I forgot Midtown Manhattan, Washington Circle, DuPont Circle, Logan Circle or any of those other circles in Washington, D.C., where the vehicular concept of “right of way” is even more difficult to comprehend than the similar named political concept.

So, Waymo, you’ve got a way more to go before I would say your vehicles are ready for a national roll-out

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CAN YOU LIVE WITHOUT THE INTERNET?

The short answer to that question is no. Most people can’t live without access to the world’s knowledge, most recorded music, on-call transport, the world’s largest retail store, Facebook, Twitter, Instagram, instantaneous traffic and weather reports, etc., all of which can be found on the Internet. Just ask the President of the United States, who can’t stay off his Twitter Account, or the six billion people who are estimated to own smartphones by 2020. See http://www.cnbc.com/2017/01/17/6-billion-smartphones-will-be-in-circulation-in-2020-ihs-report.html

If you can order dinner on GrubHub, get a ride on Uber or Lyft, and do your shopping on Amazon, why bother to learn how to drive a car. “in 2014, just 24.5 percent of 16-year-olds had a license, a 47-percent decrease from 1983, when 46.2 percent did. And at the tail end of the teen years, 69 percent of 19-year-olds had licenses in 2014, compared to 87.3 percent in 1983, a 21-percent decrease.” Maybe one reason young people are no longer getting drivers licenses is they don’t need to go to the mall to go shopping or to go to the mall to hang out with their friends, assuming their mall still exists. See http://en.wikipedia.org/wiki/Category:Defunct_shopping_malls_in_the_United_States and http://www.theatlantic.com/technology/archive/2016/01/the-decline-of-the-drivers-license/425169/ Why visit with your friends in person when you can use FaceTime?

The mobile device that sits in your hand carries great power but like anything with great power it carries great danger as well. With the ability to access the world’s knowledge, its goods and services, your friends and relatives as well as your financial information it gives you amazing powers.

But there are dangers as well. See http://www.wired.com/story/app-permissions/ For example, on my Android phone, Amazon’s app can access my device’s location, identify when I’m on a call, access my contacts, pictures, music documents and other files stored on my device and even in the cloud, and record sound using the microphone. My Facebook app can access my calendar as well as my pictures, music documents and other files stored on my device and even in the cloud. My Fitbit app can access my location, identify when I am on a call as well as access my contacts, pictures, music documents and other files stored on my device and even in the cloud as well my device’s camera and if I want to access my wearable Fitbit device and use that app I cannot delete those settings. My bank’s app will access my device’s current location, identify when I am on a call, access my contacts and record sound using the device’s microphone and I cannot delete those settings and use that app. My Spotify app will access my device’s location, identify when I am on a call, as well as access my contacts, pictures, music documents and other files stored on my device and even in the cloud. And, again, I can’t change those settings. My smartphone is designed to locate me, the names of my friends, record my voice, potentially access images of my family and whereabouts, learn my future plans and even listen in on my conversations and, unless I’m willing to not use my Fitbit device, enjoy Spotify or bank online, etc., i.e., exchange my smartphone for a flip phone, by using that device, the control that I think it gives me, I have, in fact, granted to larger entities; a big bank, Spotify, Facebook, Amazon, etc. over which I have no control. By using that device, I have willingly become a character in a Black Mirror episode.

See the Black Mirror episodes Nosedive, Shut Up and Dance, and Hang the D.J.

Maybe, the Godfathers of Tech knew something we didn’t realize. See
http://nyti.ms/2JkjOdJ

So what to do? Maybe we can live without the Internet, that is, the Internet that exists as we use it today. And what would that future Internet look like? Can we enjoy the power that it provides without the surveillance that it provides to the powers that designed it? I suggest that we pay for its convenience. Before the Internet, I used a service called Lexis/Nexis. There were no ads and I could retrieve articles from almost any newspaper or scientific publication in the world as well as any published court case. The cost for this, which my employer paid, was not cheap (There was an annual subscription.) and while Lexis/Nexis knew what I was reading and how long I was on line; after all, I was paying for the ability to read what they provided to me, they couldn’t access anything else on my computer. Similarly, if you have a “dumb” TV and Cable, you can access HBO, Showtime, Comedy Central, FX, etc., and pretty safely assume that unless you purchase a movie that your Cable TV provider probably doesn’t know what you’re watching and, if they do, at least they are not peering into your living room or obtaining the names of the people watching Sunday Night Football with you. Hell, Blockbuster knew what movies you were watching and your public library knows what books you are reading.

So, here’s what I propose. A subscription-based Internet. If you want just a browser and email, you can purchase that; if you want Facebook, Spotify, Google Maps, Google Hangouts, your bank’s app, Amazon, Netflix, etc., you would pay for those packages. In return for the money that Facebook, Spotify, Google, Bank of America, Amazon, Netflix, etc., makes from your subscriptions, there would be limits on what information they could gather from you. For example, Facebook could obtain your profile and the names of your friends, if you opt to provide the latter. In addition, you could opt into advertising which would be limited to advertising based on your newsfeed. For example, if you have a dog or post your vacation photos, Facebook could provide advertising for pet supplies or travel offers but not political ads or Russian bots. In the case of Spotify, it would be entitled to a list of the music and performers you listen to and could provide information to you as to when those performers have concerts in your area or suggest similar music to what you are listening to. They would have no further access to your device or your data. Google would be entitled through the use of anonymous cookies to provide advertising on its site relevant to your searches; they already can learn your location, your operating system and the device on which you are searching, but would have no further access to your data, e.g., being able to identify you personally and determine what you are searching. Your bank would have access only to the financial information that you supply to them and to your smartphone camera for the purpose of depositing checks, limited to from the time you log in to the time that you log out. At no time could an app access your device’s location, identify when you are on a call, access your contacts, pictures, music documents and other files stored on your device and even in the cloud, unless that information is necessary to the operation of the relevant app, e.g., Dropbox, Google Maps, Waze or a Weather App. I see no reason why an app would need to identify when you are in a call except for the limited technical purpose, if you are listening to Spotify or watching a You Tube or Netflix video, to resume the audio or video transmission when your call ends.

Wrapped up in the ability to order dinner on GrubHub, get a ride on Uber or Lyft, and do your shopping on Amazon is the sense of control, but the reality is on today’s World Wide Web, someone else is on the line listening; you have no control. If we don’t have the option to get that control back, we may become willing to trade-in our smartphones for dumbphones. “Security and privacy offer more reasons to consider a dumbphone. Smartphones are sophisticated tracking devices. GPS and motion sensors, along with the always-on internet servicing dozens of apps doing unspecified processing in the background make these devices encyclopedias of their users’ actions and behavior. While the cellular network can always be used to determine a handset’s location, the granularity and accuracy of its physical tracking is limited compared to a GPS device. And given recent examples of border agents demanding access to travelers’ smartphones, feature phones might become standard equipment for frequent travelers.” See http://www.theatlantic.com/technology/archive/2017/02/the-wisdom-of-the-dumbphone/518055/ & http://www.makeuseof.com/tag/best-flip-phone/

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THESE ARE THE INTELLECTUAL PROPERTY LAW AND CORPORATE LAW SERVICES THAT MY FIRM PROVIDES

These are the Intellectual Property Law and Corporate Law services that my firm provides:

Corporate Formation

We will conduct a search and advise you as to whether your proposed corporate name is also available as a domain name.

We will advise you as to which domain names you should register to protect yourself against cybersquatting.

We will conduct a trademark search to determine if your proposed corporate name is available for your use as a trademark and is registrable with the United States Patent and Trademark Office, thus offering you national protection for that name.

We can incorporate your entity in Illinois as a corporation or form it as a limited liability company as well as advise you as to which entity form best meets your needs.

Internet Services

We can prepare the necessary language for your website to protect you against potential liability, set forth terms of use and provide your customers and clients with the necessary privacy policy language.

Where appropriate, we can assist you to register your domain names with the Library of Congress, thereby providing you with additional protection against potential infringement claims.

If an infringement problem does arise, we can take action against the infringer to stop those infringing activities as well as defend you against claims of infringement arising from your adoption and use of your domain name.

Trademark Services

We can assist you in the creation of strong brand names and logos to offer you the broadest protection for your corporate, product and service names and logos, including conducting searches to ensure that those names and logos are available for your use and registration as trademarks and service marks.

We can register your corporate and product names, including your logos and trade dress, as appropriate and necessary to provide you with nationwide protection for those names, logos and trade dress as well as register those names and logos abroad, if necessary, to protect your names and logos against foreign infringement.

We can maintain your existing portfolio of registered and applied-for service marks and trademarks.

We can take action against potential infringers of your marks as well as defend you against claims of infringement, including trademark, service mark and trade dress infringement.

Trade Secret Services

We can create a plan to ensure that your vital corporate information, including marketing plans, product development plans, supplier and customer information, formulas, data, etc. are kept confidential and protectible as trade secrets.

To do this, we can provide you with the necessary Employment Agreements, Confidentiality Agreements, Non-Disclosure Agreements, etc. to protect that information and ensure that you have a legal remedy if that information falls into the wrong hands.

Copyright Services

We can register your computer software, writings, musical compositions, art, photographs and product designs, to the extent that U.S. law may protect the latter, with the U.S. Copyright Office so as to provide you with the right to sue for infringement of these works should infringements occur.

We can defend you against claims of copyright infringement of such works as well as assert such claims as necessary to protect your rights.

Working with Patent Counsel, we can assist you to determine how you may best protect your products, designs, and formulations against infringement through either copyright, patent or trademark protection.

Other Legal Services

We can prepare by-laws for your newly-formed corporation or an operating agreement for your limited liability company.

Should you decide to sell your business, we can prepare both asset and stock purchase agreements, where appropriate to effectuate said sale.

As noted above, we can prepare a wide range of business agreements for your use, including but not limited to Employment Agreements, Confidentiality Agreements, Non-Disclosure Agreements, Operating Agreements, License Agreements, Manufacturing Agreements, Vendor Agreements, Internet Provider Agreements, Supplier Agreements, Model Releases, Settlement Agreements, etc.

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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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THE DEFEND TRADE SECRETS ACT

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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DUE DILIGENCE BEFORE BRINGING A NEW PRODUCT TO MARKET

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 http://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 http://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!

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 http://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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Using Trademarks Creatively to Build Your Brand Identity

Good advertising combined with a distinctive trademark can help create a successful brand. In my blog entry entitled Acquiring and Maintaining a Trademark” (See http://www.chicagotrademarkattorney.net/acquiring-and-maintaining-a-trademark/)
I wrote about the advantages of adopting an arbitrary trademark. An arbitrary mark would be a mark such as APPLE which when it is used on computers or cellphones 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. However, if you pick the right trademark and combine it with the right marketing and that brand could become famous. Here are some examples of combining a strong creative trademark with creative fadvertising.

A ”mustang” is a free-roaming horse of the American west that first descended from horses brought to the Americas by the Spanish. Mustangs are often referred to as wild horses. See http://en.wikipedia.org/w/index.php?title=Mustang&oldid=849322344 The first successful affordable American-made sporty car, the Mustang, was based on the Ford Falcon, an economy car that got 30 m.p.g. in 1961. But redesign it, name it after a wild
horse and create the right ads; a mermaid for the male consumer and a hunky cowboy for the female consumer and you have America’s best-selling sports car.

“Cahoots” is defined as “colluding or conspiring together secretly” which is a theme that is much in the news lately. So, if you’re going to brand a new line of ice cream flavors why not play on that theme with the trademark, SCOOPS IN CAHOOTS, with flavors like “Bust Out the Butterscotch” or “This Mint is Money” as one of my clients did. See http://www.scoopsincahoots.com/

And if you are going to come up with a name for a virtual assistant that sits in your home,  listens to your voice and lets you order a pizza, even in Australia, why not call it by the distinctive easy to remember and “friendly sounding” female name ALEXA, as Amazon did, a girl’s name meaning “helper and defender of mankind.” See http://www.babycenter.com/baby-names-alexa-177.htm

If you can think of some good ideas and have a product or service to offer, let me know and I’ll help protect your brand from intellectual property theft.

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BEWARE! THE ILLINOIS “BIOMETRIC INFORMATION PRIVACY ACT”

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 http://youtu.be/6JDLrTmLo8M  &  http://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 http://youtu.be/95VvTW1FvS8

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HOW MOVING I.P. ASSETS OFFSHORE CAN REDUCE YOUR TAX LIABILITY

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 http://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 http://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 http://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 http://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.

 

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