You may have seen one of my courses on Lynda.com (now LinkedIn Learning). If you’ve made it through filing your own trademark, you might find yourself asking “what’s next?” I thought I’d push out an article that explains the whole trademark process so that people who can’t afford attorneys can get the resources to figure it out on their own. Check out the article here. I’ve also put a graphic that may help. You can see more about how the trademark process works here.
I’ve posted an article to LinkedIn about the shifting sands of trade secrets and human intellectual capital, here.
While I’m not taking a direct position in the matter, it does raise a very interesting problem that will continue to plague us.
Uber has been sued by Google subsidiary Waymo over allegations related to theft of trade secrets. The case stems from Uber’s acquisition of AI startup Otto.
Otto was founded by Anthony Levandowski after he left Waymo. Waymo believes that Levandowski took trade secrets when he left Waymo to form his own company, and thus when Uber purchased Otto, Uber ended up with Waymo’s trade secrets.
Uber paid $700 million for Otto. Ford invested $1 billion in Argo AI last year. These acquisitions appear to be largely due to the fact that there is a dearth of talent in the AI/self-driving-car industry and the costs of retaining talent.
What I find interesting is whether the value of these acquisitions is really about the underlying technology, or the human resources. Check out the article!
Incorporate and follow the corporate formalities!
Filing a Corporation Online
I am an advocate of filing corporate entities online. Several states have created wonderful online filing systems, including New York, Colorado and Pennsylvania. However, my two states of practice, California, have remained in the dark ages and require paper filings. California takes up to two months to process an LLC, and it cannot be expedited. California does allow expedite service for standard corporations, and if delivered in person to a regional office, can be processed in a week. I say this so that you start off by understanding that in some states you can’t snap your fingers and have a corporation, notably in my home state of California. But, in some states, you can file online and have your articles of incorporation delivered to your email immediately.
Here are a few of the big state’s incorporation sites:
Each state varies in how it processes incorporation documentation. Some states require publication after filing (similar to dba or fictitious name filing rules) where the incorporation is published in a local newspaper for a period of time. Other states require that you obtain a name clearance first. Alabama requires a name clearance, followed by a filing to the county probate court, which then sends the application to the Alabama Secretary of State. You have to send two fees for Alabama, one for probate and one for the Secretary of State.
Most states have a “post filing” fee of some kind. California charges only $20 for an annual statement of information, but a wholly different division of California will send you a bill for $800 for a minimum corporate tax on any pass-through entity in the state that has shareholders or members in the state. Nevada has no such tax, but the annual List of Officers/Members will cost you $125 the first year and $75 each year after that.
States vary of whether the articles of organization or articles of incorporation must be signed by the designated resident agent or not. Most states require that an “organizer” sign the articles, but states like Nevada also require that the resident agent agree to accept the role as resident agent. Some states, such as Minnesota, require that the members/shareholders sign and also submit social security numbers with the organizational forms.
I’m compiling a list of links to Secretary of State websites for all 50 states. I would like to link directly to those that allow online filing as well. If any of my site users know of any state that has easy online filing, shoot me an email with the link.
Finally, once a corporation has been filed and received a filing date from the state, the corporation will need its own tax identification (tax ID number or TIN or TID). The IRS site has an online form for this, which is not too complicated: http://www.irs.gov/Businesses/Small-Businesses-&-Self-Employed/Apply-for-an-Employer-Identification-Number-(EIN)-Online
Register your trademark!
Virtually every business has a trademark. Trademark rights arise when you use something that identifies you as the source of goods or services. The most obvious trademark is the name of your company or the name of your product. But, trademark rights can also arise from the use of unique colors, designs, sounds, and other indicators of the source of a product or service.
Trademark rights arise from use. That’s good and bad. If you are thinking of adopting a trademark, it means that you have to check to see who has used a similar mark first. You can’t just look for who has a registration for a similar mark because someone may have USED a mark and created trademark rights but not bothered to register it. Thus, they have rights, even without a registration. Registration confers additional rights and remedies, but the underlying rights exist separate from registration. But, the fact that trademark rights arise from use can also be good for you. It means that you may have been creating trademark rights in your product name or company name without knowing it, and without filing to register it. Yay! You may have intellectual property rights that you didn’t know about.
But, your rights are limited to the scope of your use. Your rights only extend to your geographic scope of use and for your particular goods and services. How can you expand those rights? You can register your mark federally. I have an article on how to do that, and a screencast as well. Or you can hire an attorney like me to do it for you.
I’ll roll out a few other articles about trademarks, but for now, I hope its a good start. Also, here’s information provided by the USPTO about trademarks.
What is a Trademark?
A trademark is either a word, phrase, symbol or design, or combination of words, phrases, symbols or designs, which identifies and distinguishes the source of the goods or services of one party from those of others. A service mark is the same as a trademark except that it identifies and distinguishes the source of a service rather than a product. Throughout this letter the terms “trademark” and “mark” are used to refer to both trademarks and service marks whether they are word marks or other types of marks. Normally, a mark for goods appears on the product or on its packaging, while a service mark appears in advertising for the services.
A trademark is different from a copyright or a patent. A copyright protects an original artistic or literary work; a patent protects an invention.
Establishing Trademark Rights
Trademark rights arise from either (1) actual use of the mark, or (2) the filing of a proper application to register a mark in the Patent and Trademark Office (“PTO”) stating that the applicant has a bona fide intention to use the mark in commerce regulated by the U.S. Congress. Federal registration is not required to establish rights in a mark, nor is it required to begin use of a mark. However, federal registration can secure benefits beyond the rights acquired by merely using a mark. For example, the owner of a federal registration is presumed to be the owner of the mark for the goods and services specified in the registration, and to be entitled to use the mark nationwide.
There are two related but distinct types of rights in a mark: the right to register and the right to use. Generally, the first party who either uses a mark in commerce or files an application in the PTO has the ultimate right to register that mark. The PTO’s authority is limited to determining the right to register. The right to use a mark can be more complicated to determine. This is particularly true when two parties have begun use of the same or similar marks without knowledge of one another and neither has a federal registration. Only a court can render a decision about the right to use, such as issuing an injunction or awarding damages for infringement. It should be noted that a federal registration can provide significant advantages to a party involved in a court proceeding. The PTO cannot provide advice concerning rights in a mark. Only a private attorney can provide such advice.
Unlike copyrights or patents, trademark rights can last indefinitely if the owner continues to use the mark to identify its goods or services. The term of a federal trademark registration is 10 years, with 10‑year renewal terms. However, between the fifth and sixth year after the date of initial registration, the registrant must file an affidavit setting forth certain information to keep the registration alive. If no affidavit is filed, the registration is canceled.
Protect Your Website!
How do I protect my website?
There are a lot of us out there in the small business world that have our own websites. So, I get a lot of questions about how to protect a website. Before I tell you how to protect your website, I have to ask a question that most people miss: CAN you copyright your website? To answer this question, we have to look at how your website was created, and talk about the various aspects of your site.
Most websites are made up of several distinct pieces that are merged by Internet protocols into what we see and experience in a website. These “pieces” are generally: 1.) text written uniquely for the site; 2.) graphics; 3.) photographs; 4.) code (HTML, Java, ASP, various scripting codes, etc.); and 5.) data and database functions.
The starting point for an inquiry about copyright law flows from the definition: “an original work of authorship” that is “fixed in tangible form.” To “own” the copyright, the claimant needs to be the creator (author/designer), or acquire right by contract in the form of “work for hire” or “assignment” of rights. Let me use my own site for an example of the analysis:
||My text is an original work of authorship, fixed in tangible form (typed on my blog!)
||I wrote my own text, I am the creator
||My graphics are original works of authorship, and as one can see my website, the graphics are fixed in tangible form
||I did not design the graphics, but paid someone: did I get a “work for hire” [no]; did I get an assignment [no]
||My photos are original works of authorship, fixed in tangible form
||I took the only photos that are on my site (or my wife did and we own them jointly as part of owning our site)
||My code is an original work of authorship, fixed in tangible form: choose “view source” to see it in tangible form
||I did not write my code, it is a mix of WordPress code, and a template designed by a benevolent designer, both of whom granted me (an anyone) royalty free licenses to use the code
||My data is not an original work of authorship! Data is an assembly of non-original information and is not copyrightable; to the extent that the data uses a database application (programming code), it is copyrightable as an original work of authorship
||I can’t copyright the data, but I might be able to protect it by not allowing users to get to it, and by having an agreement on my site that says that “users of this site may not download my data” [or something more lawyer-ish]; to the extent that there is database programming being utilized its not mine, but granted by license
The upshot is this: most of us own our content in terms of text, and not much else. As such, the content can be copyrighted. However, determining what to copyright and how to copyright it is the subject of my Post on copyrighting a blog: the approach to copyright filing depends on how dynamic your content is, how often you update it and how broad you want to protect it.
If you did design your own photos or graphics, then you have two levels of copyright to consider:
- copyrighting the whole site along the same lines as a children’s book: text, graphics and photos; AND
- copyrighting the individual images to the extent that each one might be a separate “original work of authorship” that is “fixed in tangible form” prior to and separate from your website.
As I discuss in the Post on copyrighting your blog, one might even copyright individual articles separately from a “whole site” copyright registration if the individual articles have a life independent of the blog or website.
Mine do! Don’t copy mine please…but please feel free to link to me and pimp out the blog. I offer this stuff for free to my users after almost 10 years of billing people $400/hour for it.